General Electric Company

Patent Trials and Appeals Board

Feb 2, 2022

2021003231 (P.T.A.B. Feb. 2, 2022)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/420,344 01/31/2017 Stephane Graziani 282585-US-1 | GEMS:0697 5415 68174 7590 02/02/2022 GE HEALTHCARE c/o FLETCHER YODER, PC P.O. BOX 692289 HOUSTON, TX 77269-2289 EXAMINER MIDKIFF, ANASTASIA ART UNIT PAPER NUMBER 2884 NOTIFICATION DATE DELIVERY MODE 02/02/2022 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): docket@fyiplaw.com rariden@fyiplaw.com robinson@fyiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEPHANE GRAZIANI Appeal 2021-003231 Application 15/420,344 Technology Center 2800 BEFORE BEVERLY A. FRANKLIN, MICHAEL P. COLAIANNI, and BRIAN D. RANGE, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a) (2012). Appellant identifies the real party in interest as General Electric Company. Appeal Br. 1. Appeal 2021-003231 Application 15/420,344 2 CLAIMED SUBJECT MATTER Claim 1 is illustrative of Appellant’s subject matter on appeal and is set forth below: 1. A mobile X-ray system comprising: a movable base; a robotic arm mounted on the movable base; an X-ray source attached to the robotic arm; a radiation detector; one or more user interfaces; and a controller configured to determine a position of the X-ray source and a position of the detector and to automatically move both the base and the robotic arm to align the X-ray source with the detector. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Perkins US 2010/0324380 A1 Dec. 23, 2010 Bouvier US 2013/0003939 A1 Jan. 3, 2013 Ancar US 2015/0049862 A1 Feb. 19, 2015 REJECTIONS 1. Claims 1-8 and 11-17 are rejected under 35 U.S.C. § 103 as being unpatentable over Bouvier in view of Ancar. 2. Claims 9, 10, 18, and 19 are rejected under 35 U.S.C. § 103 as being unpatentable over Bouvier, as modified by Ancar for claims 1 and 11 above, and further in view of Perkins. Appeal 2021-003231 Application 15/420,344 3 OPINION We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). Upon review of the evidence and each of the respective positions set forth in the record, we find that the preponderance of evidence supports Appellant’s position in the record. Accordingly, we reverse each of the Examiner’s rejections on appeal essentially for the reasons set forth in the record by Appellant, and add the following for emphasis. We refer to pages 3-7 of the Answer regarding the Examiner’s stated position for Rejection 1. Therein, the Examiner proposes to modify Bouvier according to Ancar by replacing the type of robotic arm of Bouvier with the multi-jointed articulated arm of Ancar so that the modified Bouvier’s X-ray source can be moved into alignment with the detector via separate movement of the X-ray source on said arm. Ans. 4. Appellant argues, inter alia, that Bouvier discloses an X-ray machine 10 that includes a C-arm 13 having an X-ray tube 11 and a detector 12 disposed on opposite ends of the C-arm 13 so that X-rays emitted by the X- ray tube 11 are detected by the detector 12. Bouvier, ¶¶ 31 and 32, Figure 2. Appeal Br. 5. Appellant argues that the X-ray tube 11 and detector 12 in Bouvier are already aligned and the only movement disclosed is the detector 12 towards the X-ray tube 11 via a lift 19. Bouvier, ¶ 32. Appeal Br. 5. Appeal 2021-003231 Application 15/420,344 4 Appellant argues that there is no need to move both a base and robotic arm to align the tube 11 and detector 12 in Bouvier since they are always aligned, much less determine the position of the tube 11 and the detector 12 for moving a base and a robotic arm for alignment purposes. Appeal Br. 5. We are persuaded by this line of argument. Setting forth a prima facie case of obviousness requires establishing that the applied prior art would have provided one of ordinary skill in the art with an apparent reason to modify the prior art to arrive at the claimed invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In the instant case, because the X-ray source and detector of Bouvier are already aligned, the Examiner’s proposed modification of Bouvier appears to be premised on an impermissible use of hindsight after review of Appellants’ disclosure rather than on a supported reason to modify Bouvier available to an ordinarily skilled artisan and consistent with the teachings thereof. KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (The fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning”; citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966) (warning against a “temptation to read into the prior art the teachings of the invention in issue”)). In view of the above, we reverse Rejection 1. We reverse Rejection 2 for the same reasons (the Examiner does not rely upon the additionally applied reference of Rejection 2 to cure the stated deficiencies with regard to Rejection 1). Appeal 2021-003231 Application 15/420,344 5 CONCLUSION We REVERSE the Examiner’s decision. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-8, 11-17 103 Bouvier, Ancar 1-8, 11- 17 9, 10, 18, 19 103 Bouvier, Ancar, Perkins 9, 10, 18, 19 Overall Outcome 1-19 REVERSED