Ex Parte Sanpitak

Patent Trial and Appeal BoardApr 27, 2016

11691568 (P.T.A.B. Apr. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111691,568 03/27/2007 28524 7590 04/29/2016 SIEMENS CORPORATION INTELLECTUAL PROPERTY DEPARTMENT 3501 Quadrangle Blvd Ste 230 Orlando, FL 32817 FIRST NAMED INVENTOR Patanit Sanpitak 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. 2006P22868US 5885 EXAMINER LEE, SHUNK ART UNIT PAPER NUMBER 2884 NOTIFICATION DATE DELIVERY MODE 04/29/2016 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): ipdadmin.us@siemens.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PAT ANIT SANPIT AK Appeal2014-004634 Application 11/691,568 Technology Center 2800 Before JOHN A. JEFFERY, BARBARA A. BENOIT, and DAVID C. McKONE, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL This application returns to us after we affirmed the Examiner's rejection of then-pending claims 1-10. Ex parte Sanpitak, No. 2011-003384 (PTAB May 8, 2013). Prosecution reopened after that Decision, and Appellant now appeals under 35 U.S.C. Â§ 134(a) from the Examiner's subsequent decision to reject claims 1, 3-7, 9, 10, and 19-23. Claims 2, 8, 11-18, and 24--26 were cancelled. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. STATEMENT OF THE CASE Appellant's invention provides a contactless interface for providing electrical power and communication between a gamma camera and an Appeal2014-004634 Application 11/691,568 interchangeable collimator via circuit assemblies with respective inductive traces and optical receiver/transmitters. See generally Spec. 3. Claim 1 is illustrative: 1. A contactless interface for providing a power supply and communication between a gamma camera system and an interchangeable collimator, comprising: a first printed circuit assembly mounted on a circuit board provided on said interchangeable collimator, including a first optical transmitter/receiver for communicating with another optical receiver/transmitter, a storage medium for storing identification information pertaining to said interchangeable collimator, and a first microcontroller for controlling operation of said transmitter/receiver and controlling reading and writing of information from and to said storage medium; a first inductive trace formed on a side of said circuit board opposite to said first printed circuit assembly; and a second printed circuit assembly mounted on a second circuit board provided on a camera head of said gamma camera system, including a second optical transmitter/receiver for communicating with said first optical transmitter/receiver, and a second microcontroller for controlling operation of said second transmitter/receiver; a second inductive trace formed on a side of-said second circuit board opposite to said second circuit assembly, for producing a near-field electromagnetic coupling and electrical power transfer with said first inductive trace; a second microcontroller for controlling operation of said second transmitter/receiver; said interchangeable collimator being configured to be securely fastened to said camera head whereby said first microcontroller reads information from said storage medium and transmits said read information to said second optical transmitter/receiver through said first optical transmitter/receiver. 2 Appeal2014-004634 Application 11/691,568 THE REJECTIONS The Examiner rejected claims 1, 3-7, 9, 10, and 19-23 under 35 U.S.C. Â§ 112, first paragraph 1 as failing to comply with the written description requirement. Final Act. 2-3. 2 The Examiner rejected claims 1, 3, 4, 6, 7, 9, 10, and 19-22 under 35 U.S.C. Â§ 103(a) as unpatentable over Dina (US 6,055,062; Apr. 25, 2000), Englehardt (US 5,196,682; Mar. 23, 1993), and Appellant's Admitted Prior Art ("APA"). Final Act. 4--9. The Examiner rejected claims 5 and 23 under 35 U.S.C. Â§ 103(a) as unpatentable over Dina, Englehardt, APA, and Kim (US 2005/0023148 Al; Oct. 6, 2005). THE WRITTEN DESCRIPTION REJECTION The Examiner finds that there is no written description of the recited first and second printed circuit assemblies (PCAs) mounted on associated circuit boards of a gamma camera and collimator, respectively, with first and second inductive traces formed on a side of the circuit board opposite to its respective PCA, as claimed. Final Act. 2-3; Ans. 2---6. Although the Examiner acknowledges that a PCA is more than a printed circuit, the 1 The Leahy-Smith America Invents Act ("AIA"), Pub. L. No. 112-29, 125 Stat. 284, 287-88 (2011), revised 35 U.S.C. Â§Â§ 112 and 103, effective March 16, 2013. Because the patent at issue was filed before March 16, 2013, our references toÂ§Â§ 112 and 103 in this decision are to the pre-AIA version, which is consistent with the Examiner's usage. 2 Throughout this opinion, we refer to (1) the Final Rejection mailed September 6, 2013 ("Final Act."); (2) the Appeal Brief filed December 6, 2013 ("App. Br."); (3) the Examiner's Answer mailed December 30, 2013 ("Ans."); and ( 4) the Reply Brief filed February 2 8, 2014 ("Reply Br."). 3 Appeal2014-004634 Application 11/691,568 Examiner nonetheless finds that the Specification does not describe a first circuit printed on the side of a first circuit board opposite to another first circuit board side having an inductive trace, nor is the disclosed optical transmitter/receiver 203 a PCA. Ans. 4---6. Appellant argues that, in light of the Specification, a PCA comprises (1) a printed circuit (i.e., conductive traces on a board), and (2) electronic components mounted on the board and interconnected by the conductive traces. App. Br. 5-7; Reply Br. 2--4. According to Appellant, the Examiner erroneously ignores the term "assembly" in the recited PCA that includes the components in addition to the printed circuit board on which the components are mounted. Reply Br. 2. As such, Appellant contends, this "assembly of components" 203 is mounted on a side of the board opposite to that where inductive traces 209 are formed as shown in Figures 3 and 4 of the present application. App. Br. 7. ISSUE UnderÂ§ 112, first paragraph, has the Examiner erred in rejecting claim 1 by finding that the original disclosure lacks written description of the recited first and second PCAs mounted on associated circuit boards of a gamma camera and collimator, respectively, with first and second inductive traces formed on a side of the circuit board opposite to its respective PCA? ANALYSIS We begin by noting that, in addition to the written description rejection, the Examiner also objects to the Specification for essentially the same reasons. See Final Act. 2. Although objections are typically 4 Appeal2014-004634 Application 11/691,568 petitionable matters (unlike appealable rejections), when a new matter issue is the basis for both an objection and a rejection, the issue is appealable. See Manual of Patent Examining Procedure (MPEP) Â§ 2163.06(II). Accordingly, we address both the objection and the rejection in this appeal. Turning to the merits, claim 1 recites, in pertinent part, a first PCA mounted on a circuit board on a collimator, where a first inductive trace is formed on a side of the first board opposite to the first PCA. Similarly, the claim recites a second PCA mounted on a second circuit board on a camera head, where a second inductive trace is formed on a side of the second board opposite to the second PCA. 3 To satisfy the written description requirement, the disclosure must reasonably convey to skilled artisans that Appellant possessed the claimed invention as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). As noted above, a key aspect of this issue turns on the meaning of the recited PCAs. We, therefore, begin by construing this term. Appellant's Figure 1 shows a known gamma camera apparatus 20 with a camera head 28 and an attached, exchangeable collimator 30. Spec. 1:25-27. As shown in Appellant's Figure 2, both the collimator and camera head of the known system have associated PCAs, namely collimator PCA 101 and camera head PCA 107. Spec. 2:12-20. The collimator PCA contains a memory chip 102 and includes electrical signal mating contacts 3 Although claim 1 recites that the second inductive trace is formed on a side of the second circuit board opposite to said second circuit assembly-not said printed circuit assembly-we nonetheless presume that this second circuit assembly corresponds to the second PCA in light of the disclosure and this antecedent reference. 5 Appeal2014-004634 Application 11/691,568 103 that mate with corresponding spring-loaded contacts 109 on the camera head PCA. Spec. 2: 13-17. The camera head PCA also includes a signal cable 111 connected to a data processor in the apparatus housing. Spec. 2:17-19. Appellant's Figures 3 and 4 show the improvement to the prior art system of Figures 1 and 2, and illustrate the contactless interface of the claimed invention as shown below. FIG. 3 Appellant's Figure 3 showing contactless interface of claimed invention As shown above, Figure 3 shows a collimator PCA 201 and a camera head PCA 207. Notably, the collimator PCA not only includes an optical transmitter/receiver 203, but also includes other components, such as microcontroller 301 and inductive trace or coil 205, as indicated by the components within the dashed box for numeral 201 in Figure 4. Accord Spec. 4: 10-15 (noting, among other things, that PCA 201 contains an inductive trace or coil 205); 5:9-11. Similarly, the camera head PCA not 6 Appeal2014-004634 Application 11/691,568 only includes transmitter/receiver components 211, but also additional components, such as microcontroller 303 and inductive trace or coil 209, as indicated by the components within the dashed box for numeral 207 in Figure 4. Accord Spec. 4:24 ("PCA 207 further contains an inductive trace or coil 209."); 5:9--11. These components for both the camera head PCA 207 and collimator PCA 201 are shown in Appellant's Figure 4 reproduced below. 207 201 I t ' ' -~------------------~----~---~------------- ~--------------------------J ____________ , : COLLIMATOR ID 209 ! 205 COLLIMATOR ID i INTERFACE ! : ROLLER : JUUL _.............__, ' I I ' I ' I ' ~-~: I 211 : 203 ' I ' ' ~~I~,', -f M I _(1 L[_ f1---..l..-!_ !---+-----' ! : Âµ/ i 'I Ill! J#K ' '' ÂµC UART 105 PATIENT TOUCH PAD SENSOR INPUT FROM I