Ex Parte Renz et al

Patent Trial and Appeal BoardMar 1, 2016

12314059 (P.T.A.B. Mar. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/314,059 12/03/2008 30596 7590 03/03/2016 HARNESS, DICKEY & PIERCE, PLC P.O.BOX 8910 RESTON, VA 20195 FIRST NAMED INVENTOR Wolfgang Renz UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 32860-00151 O/US 7943 EXAMINER CHAO, ELMER M ART UNIT PAPER NUMBER 3777 NOTIFICATION DATE DELIVERY MODE 03/03/2016 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): dcmailroom@hdp.com siemensgroup@hdp.com pshaddin@hdp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WOLFGANG RENZ and STEP AN STOCKER Appeal2014-001672 Application 12/314,059 Technology Center 3700 Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and JACQUELINE T. HARLOW, Administrative Patent Judges. PERCURIAM DECISION ON APPEAL 1 This Appeal under 35 U.S.C. Â§ 134(a) involves claims 1-10 and 12- 17 (App. Br. 8-18). Examiner entered rejections under 35 U.S.C. Â§ 102(b) and 35 U.S.C. Â§ 103(a). We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 Appellants identify the Real Party in Interest as Siemens Aktiengesellschaft (App. Br. 4). Appeal2014-001672 Application 12/314,059 STATEMENT OF THE CASE Appellants' invention relates to "a device for superposed magnetic resonance and positron emission tomography imaging" (Spec. i-f 2). Independent claim 1 is representative and reproduced in the Claims Appendix of Appellants' Appeal Brief. Claims 1, 10, and 14 stand rejected under 35 U.S.C. Â§ 102(b) as being anticipated by Krieg. 2 Claims 1, 2, 8, 10, 12, and 14 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over the combination of Krieg and Cherry. 3 Claim 4 stands rejected under 35 U.S.C. Â§ 103(a) as unpatentable over the combination of Krieg, Cherry, and Hayes. 4 Claims 3, 5, 6, 15, and 17 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over the combination of Krieg, Cherry, Applicants' Admitted Prior Art (AAPA), and Hayes. Claims 7 and 16 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over the combination of Krieg, Cherry, AAP A, Hayes, and Beaumont. 5 Claims 9 and 13 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over the combination of Krieg, Cherry, and Beaumont. 2 Krieg et al., US 2006/0251312 Al, published Nov. 9, 2006. 3 Cherry et al., US 2008/0214927 Al, published Sept. 4, 2008. 4 Hayes, US 2001/0035504 Al, published Nov. 1, 2001. 5 Beaumont, US 4,639,672, issued Jan. 27, 1987. 2 Appeal2014-001672 Application 12/314,059 Anticipation: ISSUE Does the preponderance of evidence relied upon by Examiner support Examiner's finding that Krieg teaches Appellants' claimed invention? FACTUAL FINDINGS (FF) FF 1. We adopt Examiner's findings concerning the scope and content of the prior art (Ans. 2-10), and repeat the following findings for emphasis. FF 2. Krieg suggests a "[ c ]ombined positron emission tomography and magnetic resonance tomography unit for imaging an examination object in an examination space" in which "a high frequency shield [is] arranged between the gradient coil system and the high frequency antenna device" "and is provided, at least on the side facing the high frequency antenna device, with a shielding cover" (Krieg Abstract; see also Ans. 2). FF 3. Krieg' s Figure 1 is reproduced below: FIG 1 ~_.:ri-~ -- 720 ,,,~.. .~722 S~?;p~v 21 -12 \ ' 22 3 Appeal2014-001672 Application 12/314,059 "11'IG. 1 is a schematic of a cross section of a combined PET/MRT unit for imaging an examination object" having "a gradient coil system 22," "a high frequency shield 21," a "PET unit part 10," and a "shielding cover 30" (Krieg i-fi-158---60; see also Ans. 2). FF 4. Krieg's Figure 3 is reproduced below: FIG 3 r-----------------------~ i' 1c1 ~ . .-m I Â· ' I 1~Â·1 I IE 11 I l It 1Â· I l!j I i: 11 i ~2 t 1 JI 1 l II / i I t . Â·I Ill i ~ 6~1: Di 510 ~ t ~ ! i J I Â·L:J~:r I â€¢ _hl_ ~1 Hlr~t~ ~Â· --,lo-'---l'JH-l.:l:-Â· : 'f'-Â·21 Â·nO ~ ' .,.. _;. â€¢ .. Â·Â·- EVA~ I ) :! i ~ ---....... Â· '1,,.,...,.,.,., 6"!0i ' ' I II ii l . { 13 I 1 I ) I 11 1 Â·1-1 ' 121 ' I I! ' 1 I ll ' i i 122 i Ii f 71"! I ll I I ''[ I I I I I f L-----------------------J Figure 3 illustrates that "[ t ]he electric PET signals pass to an evaluation unit 711 that is connected via a signal line 610 to a connection 13 of the PET unit part 10" (Krieg i161; see also Ans. 2). FF 5. The Specification suggests that [i]t will be understood that when an element is referred to as being "connected," or "coupled," to another element, it can be directly connected or coupled to the other element or intervening elements may be present. In contrast, when an element is referred to as being "directly connected," or "directly coupled," to another element, there are no intervening elements present. Other words used to describe the relationship between elements should be interpreted in a like fashion (e.g., "between," versus "directly between," "adjacent," versus "directly adjacent," etc.). (Spec. i120; see also Ans. 11.) 4 Appeal2014-001672 Application 12/314,059 ANALYSIS Appellants' independent claim 1 requires, inter alia, "the first shield being connected to the second shield to form a shield which is at least partially encapsulates [sic] the PET unit" (see Appellants' claim 1 ). We recognize, but are not persuaded by, Appellants' contention that Krieg does not teach "the first shield being connected to the second shield" because "[a]s shown in FIG. 3 of Krieg, a signal line 610 passes through the screen 21 to an evaluation unit 711 (not connected to the screen 21)," and that "since the line 610 is not connected to the screen 21, the screen 21 is also not connected to the screen 30" (App. Br. 8-10). We agree with Examiner that "the interpretation of the limitation 'connected' should be made appropriately in view the disclosure of the instant application" in which the Specification suggests that "when an element is referred to as being 'connected,' or 'coupled,' to another element, it can be directly connected or coupled to the other element or intervening elements may be present" (Ans. 11; FF 5 (emphasis added)). As Examiner explains, [r]eferring to Krieg's fig. 1, it should be clear that at the very least the first shield (item 21) and the second shield (item 30) are connected by way of at least intervening elements that are necessary to hold the entire PET/MRI imager as shown in fig. 1 structurally together. The entire imaging system of fig. 1 is considered an integrated PET MRI imaging system, and therefore every part within the system is in some way connected structurally, albeit indirectly at times, to every other part of the integrated system. Therefore, the two shields, items 21 and 30, MUST be connected to each other, even if through intervening elements. (Ans. 12.) Therefore, we are not persuaded by Appellants' intimation to the contrary. 5 Appeal2014-001672 Application 12/314,059 We recognize, but are not persuaded by, Appellants' contention that, in reference to Krieg's Figure 3, "[w]ith a conducting connection between the signal line 610 and the screen 21, the screening effect could not be realized usefully and all data would furthermore also be transmitted to the screen 21, which does not make sense" (App. Br. 10-11). Claim 1 does not require any degree of "screening effect" or data transmission. "[L ]imitations are not to be read into the claims from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). See also In re Self, 671F.2d1344, 1348 (CCPA 1982) (Appellants "arguments fail from the outset because [] they are not based on limitations appearing in the claims."). Therefore, we are not persuaded by Appellants' intimation to the contrary. We recognize, but are not persuaded by, Appellants' contention that claim 1 requires "that the first and second shields are connected to form a shield which at least partially encapsulates the PET unit" but "[t]he Examiner does not establish how this indirect connection [in Krieg] would form a shield" (Reply Br. 3). We note that the claim recites "at least partially encapsulates" and not "mostly or fully encapsulates," or the like, and that, as Examiner points out the PET unit [of Krieg is] arranged within the gradient coil and including a first shield against radiofrequency radiation which, in part, surrounds the PET unit (e.g. fig. 1, item 30, 'in part, surrounds the PET unit' is met because shield 30 surrounds at least one entire inner side of PET unit 10), and a second shield against radio frequency radiation being arranged on the gradient coil [], the first shield being connected to the second shield (e.g. fig. 3) to form a shield which is at least partly closed (the 6 Appeal2014-001672 Application 12/314,059 combination of fig. 1, items 21 and 3 0 at least partially encapsulate PET unit 10). (Ans. 2 (emphasis added); FF 2-3.) Therefore, we are not persuaded by Appellants' intimation to the contrary. We note that, with respect to Appellants' arguments against the rejection of claim 2 (App. Br. 11-12), Examiner indicates that claim 2 is no longer rejected as being anticipated by Krieg (Ans. 10-11). We, therefore, affirm the rejection of claims 1 and 10. Claim 14 is dependent on claim 2, but claim 2 is no longer included in this anticipation rejection. Therefore, we reverse the rejection of claim 14 as being anticipated by Krieg. Obviousness: ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? FACTUAL FINDINGS FF 6. Cherry suggests "an integrated PET-MRI system that minimizes electromagnetic interference between the PET components and the MRI components," that "[b ]y keeping the photodetectors and associated circuitry outside of the central region of the magnetic field, the integrated PET-MRI scanner reduces the electromagnetic interference (EMI) between the PET scanner and the MRI scanner," and "a shield configured to shield the photodetectors and associated circuitry of the PET scanner from the RF signals generated by the RF coils of the MRI" (Cherry i-fi-f 15, 16, 33; see also Ans. 3). 7 Appeal2014-001672 Application 12/314,059 FF 7. Cherry's Figure 3 is reproduced below: PS:r sc..-.Nr.Jâ‚¬R INSf:R.i ~Q_Q FIG.3 Figure 3 shows that "the PET electronics on each side of PET scanner insert 300 are actually enclosed by two cylinders of metal housings, which comprise an outer metal shielding 312 and an inner metal shielding 314, and two plastic rings 316" and that the "plastic rings 316 are covered with copper conductive tapes, which make contact with both cylinders of metal shieldings, thereby creating a complete shielding enclosure for the PET electronics" (Cherry i-f 106; see also Ans. 3--4). FF 8. Hayes suggests "RF shields [that] are particularly suited for use in magnetic resonance imaging (MRI) systems" and that "[ t ]he RF magnetic shields may include a dielectric layer having conductive regions separated by non-conductive regions on each side thereof to form a plurality of capacitive elements" (Hayes Abstract; see also Ans. 5). 8 Appeal2014-001672 Application 12/314,059 FF 9. Hayes' Figure 1 is reproduced below: J?j(J l .... ~"' Figure 1 shows an "MRI scanner 10" having "an RF magnetic coil 26," and an "RF magnetic endcap shield 60," in which "[t]he endcap shield 60 includes an inside surface 60A and an outside surface 60B" (Hayes i-fi-1 31, 34; see also Ans. 5). ANALYSIS The combination of Krieg and Cherry: Based on the combination of Krieg and Cherry, Examiner concludes that, at the time of Appellants' invention was made, it would have been prima facie obvious to "have a first shield that surrounds the PET unit and directly galvanically coupled to the second shield in order to shield the PET components from RF signals generated from RF coil of the MRI ... , and to allow for better image quality" (Ans. 3; citing Cherry i-fi-133, 106). Appellants contend that Cherry does not disclose connecting a first screen for a PET unit and a second screen for a gradient coil, so as to form at least a partially closed screen. More specifically, the PET unit according to Cherry is already provided with a closed screen unit, namely the screens 314 and 312. 9 Appeal2014-001672 Application 12/314,059 Consequently, if one of ordinary skill in the art were to combine Krieg with Cherry, the combination would result in either (1) two separate screens as disclosed in Krieg, or (2) a single closed screen unit, as disclosed in Cherry. (App. Br. 14; see also Reply Br. 4--5.) Appellants then argue that, consequently, "Cherry also fails to provide that the shields are 'directly coupled galvanically via a connecting part"' (App. Br. 15; see also Reply Br. 4--5). We are not persuaded. We agree with Examiner that "Appellant[ s] already recognize[] that Cherry identifies two separate shields separately in Cherry: item[s] 312 and 314" and that "Li]ust because Cherry's shields are connected to provide a fully enclosed shielding unit does not mean that they can no longer be identified as two separate shields" (Ans. 13). Moreover, Appellants do not provide any evidentiary basis to support the conclusion that the combination of Krieg and Cherry "would result in either (1) two separate screens as disclosed in Krieg; or (2) a single closed screen unit; as disclosed in Cherry" (App. Br. 14). See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) ("[A]ttomey argument [is] ... not the kind of factual evidence that is required to rebut a prima facie case of obviousness"). To the extent that Appellants argue "Cherry also fails to provide that the shields are 'directly coupled galvanically via a connecting part"' (App. Br. 15), such arguments do not address Krieg' s teaching of using two shields (FF 2--4) and the teachings of Cherry (FF 6-7). As Examiner explains, Cherry does teach that the two shields are connected conductively (i.e. galvanically) by copper tapes thereby creating a complete shielding enclosure (e.g. [] "covered with copper conductive tapes . . . thereby creating a complete shielding enclosure"). Therefore one of ordinary skill in the art would find 10 Appeal2014-001672 Application 12/314,059 it obvious to apply this same method of utilizing copper tapes to conductively (i.e. galvanically) couple the two shields of Krieg together in order to shield the PET components better from MRI interference signals. (Ans. 14; citing Cherry i-fi-133, 106.) "Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references[]. [The reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The combination of Krieg, Cherry, and Hayes: Based on the combination of Krieg, Cherry, and Hayes, Examiner concludes that, at the time Appellants' invention was made, it would have been prima facie obvious to "use an endcap made of capacitive elements to couple the first and second shields in order to block the magnetic component perpendicular to the endcap" (Ans. 5; citing Hayes Abstract). Appellants contend that [t]he fact that the internal structure of the RF shield 60 [of Hayes] is embodied (according to paragraph [0036]) in such a way that conducting regions 64 on both sides of the high- RF shield 60 overlap, is not connected to the feature of a capacitive connection between two high-frequency screens that are assigned to two different components. (App. Br. 16-17; see also Reply Br. 5-6.) Appellants argue that Hayes teaches a single shield and that the combination of Cherry and Hayes would result in a single shield (Reply Br. 5---6). Appellants contend that 11 Appeal2014-001672 Application 12/314,059 "[t]herefore, Hayes fails to disclose or suggest the 'the first and the second shields are coupled via a capacitive element"' (App. Br. 17). We are not persuaded. Initially, we note that claim 4 does not require that the first and the second shields are directly coupled. Moreover, this argument is unpersuasive as it fails to account Krieg' s contribution to the combination of Krieg, Cherry, and Hayes as discussed above (see Ans. 15 ("Krieg already teach[ es] the first and second shields (fig. 1, items 21 and 30)"). See In re Merck & Co., 800 F.2d at 1097. The combination of Krieg, Cherry, AAP A, and Hayes: As set forth above, we found no deficiency in the combination of Krieg and Cherry as it relates to claims 1 and 2. Therefore, we are not persuaded by Appellants' contention regarding claim 1 (see App. Br. 17 ("AAP A fails to overcome the disclosure and suggestion deficiencies of Krieg in view of Cherry [] with respect to claim 1 ") ). Appellants do not dispute the merits of Examiner's combination of Hayes with Krieg and Cherry as it relates to the rejection of claim 3 (see id.). Thus, Appellants fail to establish error in Examiner's prima facie case as it relates to the rejection of claim 3 . The combination of Krieg, Cherry, AAP A, Hayes, and Beaumont: Appellants' fail to explain why "Beaumont fails to overcome the [] deficiencies" in the combination of Krieg, Cherry, AAP A, and Hayes, as it relates to the rejection of claim 7 (see App. Br. 18; cf Ans. 7; see generally Ans. 9--10). In addition, having found no deficiency in the combination of 12 Appeal2014-001672 Application 12/314,059 Krieg and Cherry as it relates to claims 1 and 2, we are not persuaded by Appellants' contentions to the contrary (App. Br. 18). The combination of Krieg, Cherry, and Beaumont: Regarding the rejection of claim 9, Appellants contend that "Beaumont fails to overcome the disclosure and suggestion deficiencies of Krieg [and] Cherry[] with respect to claim 1" (App. Br. 18). Having found no deficiency in the combination of Krieg and Cherry as it relates to claims 1 and 2, we are not persuaded by Appellants' contention to the contrary. CONCLUSION OF LAW The preponderance of the evidence relied upon by Examiner supports a conclusion of anticipation with respect to claims 1 and 10. The rejection of claim 1under35 U.S.C. Â§ 102(b) as being anticipated by Krieg is affirmed. Because they were not separately argued, claim 10 falls with claim 1. The rejection of claim 14 under 35 U.S.C. Â§ 102(b) as being anticipated by Krieg is reversed. The preponderance of the evidence relied upon by Examiner supports a conclusion of obviousness. The rejection of claim 1 under 35 U.S.C. Â§ 103(a) as unpatentable over the combination of Krieg and Cherry is affirmed. Claims 2, 8, 10, 12, and 14 are not separately argued and fall together with claim 1. The rejection of claim 4 under 35 U.S.C. Â§ 103(a) as unpatentable over the combination of Krieg, Cherry, and Hayes is affirmed. 13 Appeal2014-001672 Application 12/314,059 The rejection of claim 3 under 35 U.S.C. Â§ 103(a) as unpatentable over the combination of Krieg, Cherry, AAP A, and Hayes is affirmed. Claims 5, 6, 15, and 17 are not separately argued and fall with claim 3. The rejection of claim 7 under 35 U.S.C. Â§ 103(a) as unpatentable over the combination of Krieg, Cherry, AAP A, Hayes, and Beaumont is affirmed. Claim 16 is not separately argued and falls with claim 7. The rejection of claim 9 under 35 U.S.C. Â§ 103(a) as unpatentable over the combination of Krieg, Cherry, and Beaumont is affirmed. Claim 13 is not separately argued and falls with claim 9. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 14