Carestream Health, Inc.

Patent Trials and Appeals Board

Dec 1, 2020

2020000520 (P.T.A.B. Dec. 1, 2020)

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.
14/611,298 02/02/2015 Michael C. Lalena 100199 9914
70523 7590 12/01/2020
Carestream Health, Inc.
ATTN: Patent Legal Staff
150 Verona Street
Rochester, NY 14608
EXAMINER
MIDKIFF, ANASTASIA
ART UNIT PAPER NUMBER
2884
MAIL DATE DELIVERY MODE
12/01/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL C. LALENA and JOHN L. PETRUCCI
____________

Appeal 2020-000520
Application 14/611,298
Technology Center 2800
____________

Before JAMES C. HOUSEL, N. WHITNEY WILSON, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, 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 1–7, 9–18, 22, and 23. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Carestream Health, Inc. as the real
party in interest. Appeal Br. 1.
Appeal 2020-000520
Application 14/611,298

2
The invention relates “to methods and apparatus for automatically
positioning the x-ray source and detector based on exam type and patient
characteristics.” Spec. 1. Claim 1 illustrates the invention (formatting
added):
1. An x-ray imaging system comprising:
a moveable x-ray source;
a source transport apparatus configured to automatically
move and position the x-ray source in response to a received
source positioning signal;
electronic memory comprising information identifying a
first exam type and a second exam type different than the first
exam type, the electronic memory further comprising a first
source height magnitude corresponding to the first exam type
and a second source height magnitude corresponding to the
second exam type, wherein the first source height magnitude is
different than the second source height magnitude; and
a processor communicatively coupled to the source
transport apparatus, the processor programmed to:
receive data identifying an exam type, the
identified exam type comprising the first exam type or the
second exam type;
retrieve the first source height magnitude or the
second source height magnitude corresponding to the identified
exam type; and
provide the source positioning signal to the source
transport apparatus, the source positioning signal based on the
retrieved source height magnitude,
wherein the source transport apparatus is configured to
automatically move and position the x-ray source at a height
matching the retrieved source height magnitude, whereby the
source is positioned to begin the identified exam type.

Appeal 2020-000520
Application 14/611,298

3
Independent claim 12 recites a method for acquiring an x-ray image of
a patient using the x-ray imaging system of claim 1.
Appellant requests review of the Examiner’s rejection of claims 1–7,
9–18, 22, and 23 under 35 U.S.C. § 103 as unpatentable over Li (US
2005/0041768 A1, published February 24, 2005), Lalena (US 2011/0311026
A1, published December 22, 2011), and Kamiya (US 2013/0077744 Al ,
published March 28, 2013). Appeal Br. 5; Final Act. 2.
Preliminary matter
Appellant presents arguments only for independent claims 1 and 12
under separate headers. See generally Appeal Br. Appellant, however,
raises an issue of clarity regarding the Examiner’s reliance on Kamiya with
respect to claims 1 and 12. Id. at 13, 24. As the Examiner explains in the
Answer, Kamiya’s teachings are only relevant to the subject matters of
dependent claims 22 and 23. Ans. 12. While we agree that any question as
to the applicability of Kamiya would have been avoided had the Examiner
followed established USPTO policy (Appeal Br. 13, 24; Ans. 12), we find
that the Examiner’s statement in the Answer makes it clear that the rejection
of independent claims 1 and 12 is based only on the combined teachings of
Li and Lalena. Therefore, we limit our discussion to Appellant’s arguments
directed to these references.
Because the arguments for claims 1 and 12 are substantively the same
(see generally Appeal Br.), we select claim 1 as representative of the subject
matter claimed and decide the appeal as to all grounds of rejection based on
the arguments Appellant makes in support of the patentability of claim 1.

Appeal 2020-000520
Application 14/611,298

4
OPINION
After review of the respective positions the Appellant provides in the
Appeal and Reply Briefs and the Examiner provides in the Final Action and
the Answer, we affirm the Examiner’s prior art rejection of claims 1–7,
9–18, 22, and 23 based on the fact-finding and the reasons the Examiner
provides. We add the following for emphasis.
Independent claim 1
Claim 1 recites an x-ray imaging system, an apparatus, having an
electronic memory comprising information that relates exam types to height
magnitudes, as exemplified by Table 1 in the Specification (Spec. 12), from
which a processor retrieves data to provide a source positioning signal,
which is based on the retrieved source height magnitude, to a source
transport apparatus configured to automatically move and position the x-ray
source at a height matching the retrieved source height magnitude to begin
the identified exam type.
The Examiner finds that Li teaches an x-ray imaging system that
differs from the subject matter of claim 1 in that Li does not specifically
retrieve patient and exam type data from electronically stored data
(memory). Final Act. 2–4. The Examiner finds that Lalena teaches an x-ray
imaging system with moving source/detector components and having a
computer control system that retrieves patient and exam type data, including
height settings, from a database (memory) to plan a desired source trajectory
for an imaging session. Final Act. 4; Lalena ¶¶ 38, 40–41, 48. The
Examiner finds that Lalena teaches using the retrieved data to capture new
images of the patient. Final Act. 4; Lalena ¶¶ 50–52. The Examiner
determines that it would have been obvious to one of ordinary skill in the art
Appeal 2020-000520
Application 14/611,298

5
to incorporate a database (electronic memory) in Li’s x-ray imaging system
to facilitate the mapping of imaging trajectories by retrieving the relevant
exam parameters and patient data and to provide accurate information in an
automated fashion. Final Act. 4.
Appellant argues that Li does not suggest an electronic memory to
store data of different sternum heights2 that can be accessed by the processor
at a later time to automatically position a suitably configured x-ray source
for x-ray imaging a patient. Appeal Br. 8–9. Appellant also contends that Li
fails to disclose a processor capable of retrieving the patient and exam type
data to provide a source positioning signal based on the retrieved source
height magnitude to a source transport apparatus and automatically move the
x-ray source to a desired position. Id. at 9–10.
Appellant’s arguments do not identify error in the Examiner’s
determination of obviousness for the reasons the Examiner presents.
As the Examiner explains, Li was not relied upon to teach or suggest
the use of an electronic memory in an x-ray imaging system. Ans. 8.
Instead, the Examiner relies on the teachings of Lalena to meet this claimed
feature. Id. at 9. Thus, Appellant’s arguments do not address adequately the
rejection the Examiner presents. It is well settled that nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re
Keller, 642 F.2d 413, 425–26 (CCPA 1981) (citations omitted) (“The test

2 The discussion of sternum heights is in reference to Li’s example. Li ¶¶ 35
(Table 1), 36.
Appeal 2020-000520
Application 14/611,298

6
[for obviousness] is what the combined teachings of the references would
have suggested to those of ordinary skill in the art.”).
Appellant argues that Lalena does not suggest that position
information for an x-ray source may be stored and later accessed and used to
automatically position a suitably configured x-ray source for obtaining x-ray
images of a patient. Appeal Br. 12. According to Appellant, the position
information of an x-ray source (or any other portion of the mobile imaging
system) is not part of the exposure parameters disclosed in Lalena. Id.
These arguments are also unpersuasive of reversible error in the
Examiner’s determination of obviousness.
As the Examiner explains, and Appellant acknowledges, Lalena
discloses an x-ray imaging system where a technician can select prior
parameters from a desirable prior image stored in the database and have a
mobile x-ray unit automatically set to the same parameters as the prior
image. Ans. 10–11; Appeal Br. 11–12; Lalena ¶¶ 46, 51. Thus, contrary to
Appellant’s assertion, Lalena teaches a database that stores position
information for an x-ray source that can later be accessed and used to
automatically position a suitably configured x-ray source for obtaining x-ray
images of a patient. Appellant’s arguments fail to explain persuasively how
the claimed electronic memory differs from Lalena’s database.
To the extent that Appellant argues that the cited art does not teach a
processor that accesses an electronic memory to retrieve patient and exam
type data to determine how to position an x-ray source, the Examiner finds
that Li teaches a processor coupled to a source transport apparatus that
positions an x-ray source based patient and exam type data. Final Act. 3; Li
¶¶ 27, 28, 31–36. Given that Lalena discloses a database from which a
Appeal 2020-000520
Application 14/611,298

7
technician can retrieve parameters settings from a stored prior image to
automatically set the x-ray imaging system to the same parameters as the
prior image for subsequent imaging (Ans. 10–11; Appeal Br. 11–12; Lalena
¶¶ 46, 51), Appellant has not explained adequately why one skilled in the
art, using no more than ordinary creativity, would not have been capable of
adapting Li’s x-ray imaging system to incorporate an electronic memory, as
taught by Lalena, so that Li’s processor can access the requisite patient and
exam type data to automatically set the x-ray imaging system for subsequent
imaging. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.”); see also In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985)
(presuming skill on the part of one of ordinary skill in the art).
Arguments not specifically addressed are deemed not persuasive for
the reasons the Examiner presents.
Accordingly, we affirm the Examiner’s prior art rejection of claims 1–
7, 9–18, 22, and 23 for the reasons the Examiner presents and we give
above.

Appeal 2020-000520
Application 14/611,298

8
DECISION SUMMARY

In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–7, 9–18,
22, 23
103 Li, Lalena, Kamiya 1–7, 9–18,
22, 23

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED