Ex Parte Alagappan et alDownload PDFPatent Trial and Appeal BoardMay 29, 201813481323 (P.T.A.B. May. 29, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/481,323 05/25/2012 45436 7590 05/31/2018 DEAN D. SMALL THE SMALL PA TENT LAW GROUP LLC 225 S. MERAMEC, STE. 725T ST. LOUIS, MO 63105 FIRST NAMED INVENTOR Vijayanand Alagappan 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. 258070 (553-1798) 2551 EXAMINER HOFFMAN, JOANNE M ART UNIT PAPER NUMBER 3737 NOTIFICATION DATE DELIVERY MODE 05/31/2018 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@splglaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte VIJA Y ANAND ALA GAPP AN, FRASER ROBB, MIGUEL ANGEL NAVARRO II, CRAIG WILLIAM CUL VER, VICTOR TARACILA, JOHN EDWARD FERUT, SARAH GRACE LEVERSEE, and SANJAY G. MATHIAS Appeal2017-005866 Application 13/481,323 1 Technology Center 3700 Before FRANCISCO C. PRATS, JOHN G. NEW, and TIMOTHY G. MAJORS, Administrative Patent Judges. PRATS, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. § 134(a) involves claims to a magnetic resonance imaging (MRI) system adjustable for different patient head sizes, as well as claims to methods of using the system. The Examiner rejected the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b ). We reverse. 1 Appellants state that the "real party in interest is General Electric Company, having a place of business at 1 River Road, Schenectady, New York 12345." Appeal Br. 4. Appeal2017-005866 Application 13/481,323 STATEMENT OF THE CASE The following rejections are before us for review: (1) Claims 1-3, 5, 6, 9-13, 15, and 18-20, under 35 U.S.C. § 103(a) as being obvious over Calderon,2 Driemel, 3 and Hand4 (Ans. 2-11); (2) Claims 4 and 14, under 35 U.S.C. § 103(a) as being obvious over Calderon, Driemel, Hand, and Chan5 (Ans. 11-12); and (3) Claims 7, 8, 16, and 17, under 35 U.S.C. § 103(a) as being obvious over Calderon, Driemel, Hand, and Vij 6 (Ans. 12-13). Claim 1 illustrates the appealed subject matter, and reads as follows: 1. A system for magnetic resonance imaging (MRI) of anatomy including a head, the system comprising: a base member removably mountable to an MRI table, the base member configured to support at least one of an upper body and a head; a plurality of support members movably fixed to the base member and configured to translate laterally across a width of the MRI table across a surface of the base member, the support members releasably securable to the base member in a plurality of positions along the surface of the base member; a posterior reception unit fixed in position to the base member, the posterior reception unit configured for abutment with a posterior portion of a human head and comprising at least one radio frequency (RF) receive coil disposed within the posterior reception unit; and a plurality of articulable reception units movable with respect to the posterior reception unit from an open position to a 2 US 2007/0191706 Al (published Aug. 16, 2007). 3 US 2008/0007259 Al (published Jan. 10, 2008). 4 US 2004/0168253 Al (published Sept. 2, 2004). 5 US 2005/0107686 Al (published May 19, 2005). 6 US 5,370,118 (issued Dec. 6, 1994). 2 Appeal2017-005866 Application 13/481,323 plurality of closed pos1t10ns, the articulable reception units mounted physically separately and independently from each other to corresponding support members of the plurality of support members movably fixed to the base member, wherein the open position corresponds to a position wherein a head may be inserted or removed between the articulable reception units, and the plurality of closed positions correspond to a respective plurality of positions wherein the articulable reception units are proximate to a corresponding respective plurality of differently sized heads, each articulable reception unit comprising at least one radio frequency (RF) receive coil disposed within a body, the body configured for abutment with a portion of a head, wherein the plurality of articulable reception units are releasably secured in the plurality of closed positions by at least one of the plurality of support members. Appeal Br. 29 (some paragraphing and indentation added). STANDARD OF REVIEW As stated in Jn re Oetiker, 977F.2d1443, 1445 (Fed. Cir. 1992): [T]he examiner bears the initial burden . . . of presenting a prima facie case of unpatentability .... After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument. OBVIOUSNESS The Examiner's Prima Facie Case In rejecting claims 1-3, 5, 6, 9-13, 15, and 18-20 over Calderon, Driemel, and Hand, the Examiner cited Calderon as describing an MRI system having nearly all of the features required by the claims. Ans. 2-3. The Examiner conceded, however, that Calderon differs from the rejected claims in not describing its MRI system as including a plurality of support 3 Appeal2017-005866 Application 13/481,323 members movably fixed to a base member, the support members being configured to translate across the surface of the base member. Id. at 3. As evidence that, despite that difference, the MRI systems and methods of Appellants' claims would have been obvious, the Examiner cited Driemel as disclosing the use of support members meeting the requirements of the rejected claims in MRI systems. Id. at 3--4. The Examiner cited Hand as also disclosing support members encompassed by Appellants' claims. Id. at 4--5. Based on the cited references' combined teachings, the Examiner concluded that it would have been obvious to "use the teachings of Driemel to modify Calderon to include moveable/adjustable housing with coils to fit the head. Doing so is beneficial as 'the optimal adjustment to the respective head size achieves an improved signal-to-noise ratio since the proximity to the head allows higher signal intensity' [Driemel i-f 10]." Id. at 5. The Examiner reasoned further that "Driemel teaches multiple methods of moving the [device's] hous[ing] parts. Therefore, the simple substitution of a known element for another for movement of pieces produces a predictable result that is obvious." Id. Still further, the Examiner reasoned, it would have been obvious to "use the teachings of Hand to modify Calderon to include a support member movably fixed to a base member. The motivation for doing so is to allow adjustments for different sized patients." Id. Analysis In KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), although the Supreme Court emphasized "an expansive and flexible approach" to the obviousness question, id. at 415, the Court also reaffirmed the importance of 4 Appeal2017-005866 Application 13/481,323 determining "whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue." Id. at 418 (emphasis added). Thus, the "mere fact that the prior art may be modified in the manner suggested by the Examiner does not make the modification obvious unless the prior art suggested the desirability of the modification." In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992). Moreover, "[i]t is impermissible to use the claimed invention as an instruction manual or 'template' to piece together the teachings of the prior art so that the claimed invention is rendered obvious." Id. Ultimately, therefore, "[i]n determining whether obviousness is established by combining the teachings of the prior art, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art." In re GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir. 1995) (internal quotations omitted). In the present appeal, having carefully considered the arguments and evidence advanced by Appellants and the Examiner, Appellants persuade us that the Examiner has not shown by a preponderance of the evidence on this record that the cited references would have rendered obvious the systems and methods recited in Appellants' claims. In particular, Appellants persuade us (see Appeal Br. 15-20) that the Examiner has not explained adequately why, in the absence of impermissible hindsight, the combination of Calderon, Driemel, and Hand would have suggested fixing the movable members of Driemel' s device to the base of Calderon's apparatus, in a manner encompassed by Appellants' independent claims 1, 12, and 18. 5 Appeal2017-005866 Application 13/481,323 As seen above, Appellants' claim 1 recites a system for performing MRI scans. Appeal Br. 29. The system includes a base member configured to support a patient's head or upper body. Id. The system of claim 1 also includes a plurality of support members which are movably fixed to the base member. Id. Claim 1 requires the support members to be configured to translate laterally across a width of the MRI table across a surface of the base member, and to be releasably securable to the base member in a plurality of positions along the surface of the base member. Id. Reception units that each include at least one radio frequency (RF) coil are mounted to each of the releasably securable support members. Id. Claim 12 recites a system with essentially the same features as claim 1, additionally specifying that the support members are "side support members" that are releasably securable to the base member along laterally extending side tracks. Id. at 32. Claim 18 recites a method of performing an MRI, which requires providing support members which are movably mounted to a base member, essentially the same arrangement recited in claim 1. Turning to the prior art, the Examiner identified Calderon's transfer board 14 as corresponding to the base member of the MRI system recited in Appellants' claims. See Ans. 2-3; see also Calderon i-f 46 ("patient 12 rests on the transfer board 14" (discussing Fig. 1) ). As noted above, the Examiner relied upon Driemel as evidence that it would have been obvious to modify Calderon's device to have RF coil-containing, releasably securable supports mounted to the base member, as recited in Appellants' claims. See Ans. 3--4. 6 Appeal2017-005866 Application 13/481,323 We acknowledge Driemel' s disclosure of an adjustable head coil that enables optimal MRI scans of patient's heads. Driemel i-f 10. In one embodiment relied upon by the Examiner, Driemel's device is formed of two coil-containing sections ("housing parts 2 and 3") that are moved closer together and farther apart from each other to allow close fitment of the device to the patient's head. Id. i-f 40 ("The housing parts 2 and 3 are guided in linear guides 11, which are shown only in outlines, wherein they may be moved along the arrow A by a slide 12 that is also only shown in outlines." (describing Fig. 2)). Driemel explains further: The capacity of the housing parts to move toward each other can be achieved in different ways in all exemplary embodiments as can the corresponding actuator. Thus a linear guide, a gear or a transformation of a gear to a linear guide are conceivable. A slide or a hand wheel for example are conceivable as the actuator. Id. i-f 48. We are not persuaded that Driemel's vague disclosure of using linear guides and a variety of actuators to move the two sections of its head coil closer together and farther apart is sufficiently specific to suggest that its head coil should also be releasably secured to a head-supporting member, such as Calderon's transfer board 14, in the manner recited in Appellants' claims. Nor does the Examiner identify in Driemel any disclosure specifically suggesting that its adjustable head coil should be releasably secured to a head-supporting component of an MRI machine. To the contrary, as Appellants contend (see Appeal Br. 15), Driemel's head coil appears to be a wearable device that is affixed to the patient's head (Driemel i-f 16) and then "inserted in a magnetic resonance unit" (id. i-f 19). 7 Appeal2017-005866 Application 13/481,323 Responding to Appellants' arguments in that regard, the Examiner advances an alternative rationale in which one half of Driemel' s head coil is interpreted as corresponding to the base member of Appellants' claims, and the other half of the head coil as corresponding to the support member of Appellants' claims. Ans. 15-16. As Appellants point out, however (Reply Br. 3-5), the base member of Appellants' claims must be mountable to an MRI table (see Appeal Br. 29 (claim 1); id. at 31(claim12)), or in a fixed position relative to the posterior support element (id. at 34 (claim 18) ). Thus, even if the Examiner's alternative claim interpretation were reasonable, the Examiner's posited new rationale fails to explain with adequate specificity how or why the cited portions of Driemel teach or suggest each of the features of the rejected claims, arranged as in the claims, even when combined with Calderon. We acknowledge Hand's disclosure, cited by the Examiner, of the use of width-adjustable, releasably securable, cushions for supporting the sides of a patient on a transporting bed. Hand, Figs. 17, 18; see also id. i-fi-1 62-63 (discussing movable side supports shown in Fig. 18). Even assuming, however, that Appellants' claims encompass the adjusting mechanisms shown in Hand, the Examiner does not explain specifically how or why Hand's disclosure of adjustable side cushions for a patient bed would have suggested that Driemel's MRI head coil should be releasably secured to a head-supporting component of an MRI machine, as required by Appellants' claims. We acknowledge the Examiner's contention that obviousness "may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or 8 Appeal2017-005866 Application 13/481,323 motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art." Ans. 16. (citing In re Fine, 837 F.2d 1071 (Fed. Cir. 1988); In re Jones, 958 F.2d 347 (Fed. Cir. 1992); KSR, 550 U.S. 398). In that regard, the Examiner contends as follows: [T]he use of coils and imaging is well-known in the art of MRI. Furthermore, it is well-known that a patient would lay on a bed when going to an MRI/CT examination and does not stand while doing this. One of ordinary skill would be able to combine Calderon which depicts a patient in a support for imaging with the head having the coils surrounding it for analysis as seen in Driemel. Further as seen in Fig. 6 it appears that the patient is prone and not upright and therefore would b[e] lying down and as this is for an MR device as seen in the title and patients lie in MR devices on of ordinary skill would be able to combine these references where it would be obvious to use Driemel to teach the supports and moving along a base member. Id. at 16-17. We are not persuaded. Our reviewing court has recently reversed conclusions of obviousness made by this Board where, as here, the proponent of obviousness relied on ordinary creativity and/or common sense to establish the obviousness of a claim element missing from the prior art. See DSS Technology Management, Inc. v. Apple Inc., 885 F.3d 1367 (Fed. Cir. 2018); see also Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355 (Fed. Cir. 2016). In DSS, the court explained that ordinary creativity and/or common sense may be used to supply a missing claim element only when the missing element is "unusually simple and the technology particularly straightforward." 885 F.3d at 1374 (quoting Arendi, 832 F.3d at 1362). 9 Appeal2017-005866 Application 13/481,323 The court explained further that ordinary creativity and/or common sense "cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art references specified." Id.; see also id. at 1374--75 ("In cases in which 'common sense' is used to supply a missing limitation, as distinct from a motivation to combine, ... our search for a reasoned basis for resort to common sense must be searching.") (quoting Arendi, 832 F.3d at 1363). In the present case, it might be true that it was generally known that patients lie down during MRI scans, and that the use of coils in MRI procedures was well known. We are not persuaded, however, that the Examiner has explained sufficiently why those facts would have suggested to an ordinary artisan that Driemel's wearable device should be releasably secured to a head-supporting component of an MRI device in a manner encompassed by Appellants' claims. In sum, for the reasons discussed, we are not persuaded that the Examiner has advanced a sufficient evidentiary basis for concluding that the claimed devices and methods would have been obvious in view of Calderon, Driemel, and Hand. In particular, for the reasons discussed, we are not persuaded that the Examiner has advanced a sufficient evidence-based explanation as to why the cited combination of references would have suggested, to a person having ordinary skill in this art, fixing the movable members of Driemel' s device to the base of Calderon's apparatus, in a manner encompassed by Appellants' independent claims 1, 12, and 18. We, therefore, reverse the Examiner's rejection of claims 1, 12, and 18, and their dependent claims, Calderon, Driemel, and Hand. 10 Appeal2017-005866 Application 13/481,323 The Examiner rejected claims 4, 7, 8, 14, 16, and 17, which all depend directly or ultimately from either claim 1 or claim 12, over the base combination of Calderon, Driemel, and Hand discussed above, in further combination with either Chan or Vij, which were cited show that claims 4, 7, 8, 14, 16, and 17 recite obvious variations of the invention recited in claims 1 and 12. Ans. 11-14. Because the Examiner does not explain, nor do we discern, how or why the additionally cited references remedy the deficiencies discussed above of Calderon, Driemel, and Hand as to claims 1 and 12, we also reverse the Examiner's obviousness rejections of claims 4, 7, 8, 14, 16, and 17. SUMMARY For the reasons discussed, we reverse each of the Examiner's obviousness rejections. REVERSED 11 Copy with citationCopy as parenthetical citation