Ex Parte Awan et al

Patent Trial and Appeal Board

Sep 21, 2016

12362664 (P.T.A.B. Sep. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/362,664 0113012009
27367 7590 09/21/2016
WESTMAN CHAMPLIN & KOEHLER, P.A.
SUITE 1400
900 SECOND A VENUE SOUTH
MINNEAPOLIS, MN 55402
FIRST NAMED INVENTOR
Shakil Ahmed Awan
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.
E89.12-0010 1528
EXAMINER
SONG,HOONK
ART UNIT PAPER NUMBER
2884
MAILDATE DELIVERY MODE
09/21/2016 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 SHAKIL AHMED AW AN
and ADRIAN MAXWELL SMITH1
Appeal2015-003763
Application 12/362,664
Technology Center 2800
Before BRADLEY R. GARRIS, MICHAEL P. COLAIANNI, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner's
rejection under 35 U.S.C. § 103(a) of claims 1-19, 25, and 26 as
unpatentable over Brown (EP 0314231 A2, published May 3, 1989) in view
of Palanker (US 2005/0090875 Al, published April 28, 2005). We have
jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 Elekta AB is identified as the real party in interest. Br. 3.
Appeal2015-003763
Application 12/362,664
Appellants claim a plurality of leaves (100, 102) for a multi-leaf
collimator (independent claim 1) as well as the collimator itself (remaining
independent claim 2) wherein each leaf comprises a leaf structure having a
fluorescent marker (118) secured thereto (Fig. 2).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. A plurality of leaves for a multi-leaf collimator for radiotherapeutic
apparatus, each leaf comprising a leaf structure having a shape
suitable for use as a leaf in a multi-leaf collimator and a fluorescent
marker secured to the leaf structure, and each leaf being movable with
respect to a frame of the multi-leaf collimator for limiting
or extending a radiation field.
Appellants do not present separate arguments specifically directed to
dependent claims 3-19, 25, and 26 (Br. 9-14). As a consequence, these
dependent claims will stand or fall with their parent independent claims of
which claim 1 is representative.
The Examiner concludes that it would have been obvious to replace
the retro-reflector of Brown's collimator with a fluorescent material in view
of Palanker' s teaching to use a retro-reflector or preferably a fluorescent
material for tracking the position of a retinal prosthesis (Final Action 2-3).
Appellants contest this obviousness conclusion by arguing "[t]he use
of the fluorescent markers, rather than a retro reflective type marker as is
common in the prior art, requires a modified illumination source and
camera" (Br. 9) and that "[t]he illumination source and camera of Brown
would not function for position detection in the apparatus of the claimed
invention, nor would the apparatus disclosed in Brown function as does the
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Appeal2015-003763
Application 12/362,664
present invention with the fluorescent markers in place of the retroreflective
markers" (id.).
Appellants' argument is not persuasive because it is premised on an
incorrect test for obviousness. "The test for obviousness is not whether the
features of the secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed invention must
be expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425 (CCPA
1981 ). Appellants fail to explain why the combined teachings of Brown and
Palanker would not have suggested modifying Brown as necessary for
effecting use of Palanker' s fluorescent material.
Appellants also argue that the rejection is improper on the ground that
Palanker is non-analogous art because it is not within their field of endeavor
and is not reasonably pertinent to the particular problem with which they are
involved (Br. l 0).
We agree that Palanker is not within Appellants' field of endeavor.
However, for the reasons detailed in the Answer, we fully share the
Examiner's determination that Palanker is reasonably pertinent to the
problem addressed by Appellants (Ans. i-f bridging 3--4). The following
comments are added for emphasis and completeness.
"A reference is reasonably pertinent if ... it is one which, because of
the matter with which it deals, logically would have commended itself to an
inventor's attention in considering his problem." In re Clay, 966 F.2d 656,
659 (Fed. Cir. 1992).
According to Appellants, "the problem with which the applicant is
concerned is the accuracy of leaf position tracking in a multi-leaf collimator
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Appeal2015-003763
Application 12/362,664
during the delivery of radiation for therapeutic treatment" (Br. 12).
However, such a narrow description confines the problem to Appellants'
multi-field collimator field of endeavor, thereby essentially eliminating the
reasonably-pertinent test. Furthermore, this narrow description is
inconsistent with the Specification which characterizes Appellants'
invention as providing "a solution to problems that arise in machine vision
applications in hostile or otherwise difficult environments, such as the
interior of a radiotherapeutic apparatus" (Spec. 1: 11-14 (emphasis added)).
Rather, we agree with the Examiner that Appellants' problem relates
to system confusion caused by stray light and/or stray reflections in prior art
systems using reflectors (Ans. 3 (citing Spec. 3 :21-23)) which Appellants
solve by using a fluorescing marker to obtain increased contrast compared to
simple reflection or retro-reflection arrangements (id. (citing Spec. 4: 15-
16)). Similarly, there is persuasive merit in the Examiner's determination
that Palanker is reasonably pertinent to this problem because Palanker
teaches using a retro-reflector or fluorescent material (id. (citing Palanker
i-f 33)) and, like Appellants, teaches a preference for fluorescent material in
order to improve contrast (id. (citing Palanker i-f 34)). For these reasons,
Palanker logically would have commended itself to an inventor's attention in
considering the problem of increasing the contrast of simple reflection or
retro-reflection arrangements.
In summary, Palanker is analogous art because it is reasonably
pertinent to the particular problem with which Appellants are involved.
The decision of the Examiner is affirmed.
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Appeal2015-003763
Application 12/362,664
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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