Ex Parte Schmand et al

Patent Trial and Appeal Board

Mar 16, 2015

11532665 (P.T.A.B. Mar. 16, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MATTHIAS J. SCHMAND, RON GRAZIOSO, RONALD NUTT,
ROBERT E. NUTT, NAN ZHANG, JAMES LUKE CORBEIL,
RALF LADEBECK, MARKUS VESTER, GUNTER SCHNUR,
WOLFGANG RENZ, HUBERTUS FISCHER, and
BERND J. PICHLER
____________

Appeal 2012-007968
Application 11/532,665
1

Technology Center 3700
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Before BIBHU R. MOHANTY, BART A. GERSTENBLITH, and
KEVIN W. CHERRY, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Matthias J. Schmand, et al. (“Appellant”) appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision rejecting claims 1–9 and 19–21. We
have jurisdiction under 35 U.S.C. § 6(b).

1
Appellants identify Siemens Medical Solutions USA as the real party in
interest. Appeal Br. 2.
Appeal 2012-007968
Application 11/532,665

2
Claimed Subject Matter
Claims 1, 19, 20, and 21 are the independent claims on appeal.
Claim 1 is illustrative of the claimed subject matter and is reproduced below.
1. A combined positron emission tomography (PET) and
magnetic resonance imaging (MRI) apparatus, comprising:
an MR scanner including a magnet for generating a
magnetic field for inducing NMR signals from nuclei of a
subject to be imaged within a field of view of said MR scanner;
and
a PET detector module including a scintillator and a
solid-state photodetector having a photodetecting surface
optically coupled to said scintillator, said PET detector module
being retractably disposed within said magnetic field, both said
scintillator and said solid-state photodetector being disposed
within said magnetic field with said photodetecting surface
being fixed parallel to said magnetic field.
Appeal Br. 13, Claims App.
Rejections
Appellants seek review of the following rejections, each made under
35 U.S.C. § 103(a):
I. Claims 1–5, 9, and 19 are rejected as unpatentable over
Hammer (US 4,939,464, iss. July 3, 1990) and Schlyer
(US 2005/0113667 A1, pub. May 26, 2005);
II. Claims 20 and 21 are rejected as unpatentable over Hammer,
Schlyer, and Moyers (US 2003/0213913 A1, pub. Nov. 20, 2003);
III. Claim 6 is rejected as unpatentable over Hammer, Schlyer, and
Eberhard (US 2003/0194050 A1, pub. Oct. 16, 2003); and
IV. Claims 7 and 8 are rejected as unpatentable over Hammer,
Schlyer, and Carroll (US 6,054,705, iss. Apr. 25, 2000).
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SUMMARY OF DECISION
We AFFIRM-IN-PART.
ANALYSIS
Rejection I
The Examiner concludes that the combination of Hammer and Schlyer
would have rendered the subject matter of claims 1–5, 9, and 19 obvious to
one of ordinary skill in the art at the time of the invention. Ans. 4–6.
Appellants raise several arguments in response to this rejection.
2

First, Appellants assert that Hammer’s photomultiplier tubes are located
outside of the MRI cylindrical magnet and, thus, outside of the magnetic
field. Appeal Br. 7; see Reply Br. 2 (discussing Hammer’s unmodified PET
detector means 12).
We agree with Appellants. The Examiner’s rejection, however, relies
upon a modification of Hammer in light of Schlyer’s teaching of using
avalanche photodiode (“APD”) arrays within a magnetic field. Ans. 5–6.
Accordingly, Appellants’ argument regarding Hammer’s placement of the
photomultiplier tubes is not responsive to the combination proposed by the
Examiner and, thus, is unpersuasive.
Second, Appellants contend that Schlyer’s photoconducting surface of
the photodetector of the PET scanner “is neither fixed nor parallel to a
magnetic field of an MRI scanner.” Appeal Br. 7; see Reply Br. 3 (“The

2
Appellants do not separately argue claims 1–5, 9, and 19. Appeal Br. 6–
10; Reply Br. 1–4. We select claim 1 as representative. Accordingly,
claims 2–5, 9, and 19 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
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Answer does not address the ‘fixed’ requirement and does not show that any
PET detector of Schlyer is fixed with respect to the magnetic field.”).
We agree with Appellants that Schlyer’s photoconducting surface is
not fixed, but, again, this argument is not responsive to the Examiner’s
proposed combination of the teachings of the references because the
Examiner relies upon Hammer as disclosing the fixed element of the claims.
Ans. 6. Additionally, the Examiner finds that the photodetector of Schlyer
when placed within the MR scanner is parallel to the magnetic field because
“the PET is configured as a ring within the magnet of [the] MRI scanner
which itself forms a ring around the PET detector ring.” Id. This finding is
supported by Schlyer’s disclosure and Appellants’ argument does not
explain why such configuration does not disclose the parallel relationship
claimed. Accordingly, Appellants’ argument is not persuasive.
Third, Appellants contend that Hammer’s “scintillator crystal ring 24
as shown is permanently installed inside the magnet 2 and is not retractable
with respect to the magnetic field of the magnet 2, or otherwise.” Appeal
Br. 10. Appellants acknowledge that Hammer discloses that the crystal ring
may “rotate, rotate-translate, or wobble-rotate,” but assert that “none of these
described movements constitute retraction with respect to the magnetic field,
because such movements are disclosed as imaging techniques and thus are
carried out within the magnetic field.” Id.; Reply Br. 3–4 (“the PET detector
of Hammer is permanently installed and is not retractable”). Appellants
further assert that the Examiner’s reliance upon Schlyer as disclosing this
element of claim 1 is erroneous because Schlyer’s teaching was in the
context of a particular embodiment and if said embodiment were employed
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in the context of Hammer, the combination would lack the fixed parallel
surface limitations of the claim. Reply Br. 4.
The Examiner relied upon Hammer and Schlyer, apparently in the
alternative, as each disclosing a retractable PET detector. Ans. 5. The
Examiner relied upon the above-quoted teaching regarding Hammer’s
crystal ring, finding that it “is moveable and therefore retractable from the
magnet.” Id. Additionally, the Examiner relied upon Schlyer, finding that it
discloses that the PET system must be compact and easy to take in and out
of the MR scanner. Id.
We agree with Appellants that simply because Hammer discloses that
the crystal ring is moveable does not necessarily mean that it is retractable
from the magnetic field as recited in claim 1. With respect to the
Examiner’s reliance upon Schlyer, however, Appellants’ argument—that
Schlyer’s disclosure, which is included in the “Background of the Invention”
section of Schlyer’s written description, is limited to a particular
embodiment—is not persuasive.
Schlyer is directed to a “combined PET/MRI scanner” (Schlyer, Title)
and generally discloses that combining different imaging modalities “is not a
trivial task” (id. ¶ 19). To overcome what Schlyer describes as a “practical
issue,” Schlyer explains that “[t]he PET system must be compact to fit inside
the relatively narrow bore of most MR systems, it must be easy to take in
and out of the MR scanner and it must be accurately located relative to the
MR system to permit direct image registration.” Id. In light of the above
discussion, we do not agree with Appellants that one of ordinary skill in the
art would have understood Schlyer’s recommendation regarding “easy to
take in and out” to be limited to any one particular embodiment. Rather, as
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the Examiner found, in light of that teaching, one of ordinary skill in the art
would have been prompted to combine such benefit with the teachings of
Hammer.
Accordingly, Appellants’ argument is not persuasive.
Rejection II
The Examiner concludes that the combination of Hammer, Schlyer,
and Moyers would have rendered the subject matter of claims 20 and 21
obvious to one of ordinary skill in the art at the time of the invention.
Ans. 6–7. The Examiner states that the limitations of claims 20 and 21 “are
taught as set forth by the above teaching.” Id. at 7. The Examiner, however,
then finds that Hammer’s photodetector means 16 is located outside of the
magnetic field. Id. Thus, in combining Moyers’s teaching with Hammer
and Schlyer, the Examiner appears to rely upon the location of photodetector
means 16 from Hammer. See id. at 7, 12.
Appellants assert that Moyers does not suggest or disclose sampling
and digitizing the outputs of the PET module outside of the magnetic field.
Appeal Br. 10. Appellants also contend that the Examiner did not address
these limitations of claims 20 and 21. Id.; Reply Br. 4.
We agree with Appellants that the Examiner does not make an express
finding that the detected outputs are sampled and digitized outside of the
magnetic field. Even if we assume that the Examiner intended to rely upon
Hammer’s photodetector means 16 located outside of the magnetic field (as
discussed above), that would (a) contradict the Examiner’s findings from
Rejection I (to which the Examiner referred and relied upon in the context of
this rejection) and (b) fail to show that (i) the “PET detector module . . . [is]
disposed within said magnetic field” as recited by claim 20 and (ii) the “PET
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detector module . . . [is] disposed within said field of view” as recited by
claim 21.
Accordingly, we do not sustain Rejection II.
Rejection III
The Examiner concludes that the combination of Hammer, Schlyer,
and Eberhard would have rendered the subject matter of claim 6 obvious to
one of ordinary skill in the art at the time of the invention. Ans. 7–8. The
Examiner finds that Eberhard discloses a “silicon photodetector in a
combined NMR and PET[,]” and that one of ordinary skill in the art would
have been motivated to combine Eberhard’s teaching of a silicon
photodetector with Hammer and Schlyer “because they can operate without
performance degradation in magnetic fields.” Id. at 8.
Appellants assert that the Examiner has not provided support for the
finding that silicon photodetectors can operate without performance
degradation in magnetic fields. Reply Br. 5.
We agree. Even if silicon photodetectors can, in fact, operate without
performance degradation in magnetic fields, the Examiner has not provided
support, by citation or otherwise, for the finding. Accordingly, we do not
sustain Rejection III.
Rejection IV
The Examiner concludes that the combination of Hammer, Schlyer,
and Carroll would have rendered the subject matter of claims 7 and 8
obvious to one of ordinary skill in the art at the time of the invention.
Ans. 8–9. The Examiner finds that Hammer does not disclose a voltage
sensitive preamplifier. Id. at 8. The Examiner finds that Carroll discloses a
voltage sensitive preamplifier “for collecting an electric charge generated by
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the photodetector in response to scintillation events[,]” and that one of
ordinary skill in the art would have been motivated to add a voltage
amplifying device to the combination of Hammer and Schlyer “in order to
provide high gain and achieve low noise to keep the overall system
quiescent current as low as practical.” Id. at 9 (citing Carroll, 9:28–45).
Appellants assert that the Examiner’s rationale for the combination is
erroneous because “[n]o problem with the prior art detectors of Hammer or
Schlyer is identified for which the proposed modification would have been
recognized as a solution.” Appeal Br. 11. In their Reply Brief, Appellants
further contend that Carroll’s disclosure is limited to the specific system
described therein and that the discussion upon which the Examiner relies
refers to a “detector-probe preamplifier” rather than a voltage-sensitive
preamplifier. Reply Br. 6.
Appellants do not separately argue claims 7 and 8. Appeal Br. 11;
Reply Br. 4. We select claim 7 as representative. Accordingly, claim 8
stands or falls with claim 7. See 37 C.F.R. § 41.37(c)(1)(vii).
Claim 7 depends from claim 1 and further recites “a preamplifier for
collecting an electric charge generated by said solid-state photodetector in
response to scintillation events.” Appeal Br. 14, Claims App. First, that
Carroll does not explicitly state that the disclosed detector-probe
preamplifier is a voltage-sensitive preamplifier is of no moment because
claim 7 does not recite a voltage-sensitive preamplifier.
3
Second, Carroll’s

3
Although the Examiner did not rely upon Schlyer for this teaching, and
neither do we, it bears note that Schlyer discloses that “signals from the
APD detector array 22 are preferably inputted into a charge sensitive
preamplifier 76.” Schlyer ¶ 126.
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detector-probe preamplifier collects an electric charge generated by a
photodetector as found by the Examiner. See, e.g., Carroll, 9:23–40. Third,
the Examiner provided a reason with a rational underpinning as to why one
of ordinary skill in the art would have been prompted to combine a
preamplifier, as described in Carroll, with the teachings of Hammer and
Schlyer. Ans. 9.
Accordingly, Appellants’ arguments are not persuasive.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1–5, 7–9 and
19.
We REVERSE the Examiner’s decision rejecting claims 6, 20, and
21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART
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