Ex Parte Alagappan et al

Patent Trial and Appeal Board

May 29, 2018

13481323 (P.T.A.B. May. 29, 2018)

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