Ex Parte Boernert et al

Patent Trial and Appeal Board

Apr 4, 2016

12997020 (P.T.A.B. Apr. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/997,020 12/09/2010 Peter Boernert
24737 7590 04/06/2016
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
P.O. BOX 3001
BRIARCLIFF MANOR, NY 10510
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.
2008P00535WOUS 3493
EXAMINER
SELKIN, SAUREL J
ART UNIT PAPER NUMBER
3737
NOTIFICATION DATE DELIVERY MODE
04/06/2016 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):
debbie.henn@philips.com
marianne.fox@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER BOERNER T and
JOHANNES ADRIANUS OVERWEG1
Appeal2014-002783
Application 12/997,020
Technology Center 3700
Before KEN B. BARRETT, AMANDA F. WIEKER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
WIEKER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Peter Boemert and Johannes Adrianus Overweg ("Appellants") appeal
under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1--4
and 7-19.2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the Real Party in Interest is Koninklijke Philips
Electronics, N.V. App. Br. 3.
2 In the Final Office Action, the Examiner indicated that claims 5 and 6 were
objected to, but include allowable subject matter. Final Act. 10.
Appeal2014-002783
Application 12/997,020
CLAIMED SUBJECT MATTER
The invention concerns radiation therapy. Spec. 3 :20. Claim 1 is
illustrative of the subject matter on appeal, and recites:
1. A radiation therapy method comprising:
performing radiation therapy by applying a pulsed beam of
ionizing radiation to a region of a subject during pulse intervals;
acquiring a dataset of magnetic resonance (MR) imaging
data samples from the region of the subject over one or more
MR sampling intervals that are longer than the pulse intervals,
the one or more MR sampling intervals overlapping at least
some of the pulse intervals; and
reconstructing the dataset without the measured MR
imaging data samples acquired during acquisition times that
overlap pulse intervals to generate a reconstructed MR image.
Oct. 16, 2012, Claims 1 (emphasis added). 3 Independent claim 12 contains
language similar to that emphasized above in claim 1. Id. at 4--5.
REJECTIONS
The claims stand rejected as follows:
I. Claims 1, 10, 12, 13, and 16-19 under 35 U.S.C. § 103(a) as
unpatentable over Wagshul (US 2001/0049474 Al, pub. Dec. 6,
2001) and Fallone (US 2009/0149735 Al, pub. June 11, 2009).
3 On March 23, 2013, after the Final Office Action, Appellants filed an
amendment to the claims. The Examiner denied entry. Adv. Act. 2-3
(denying entry for purposes of appeal and noting that claim 20 "would
require new search and consideration"); see also Appeal Br. 3. Therefore,
the claims on appeal are those that were pending at the time of the Final
Office Action, e.g., claims 1-19, as filed on October 16, 2012.
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Appeal2014-002783
Application 12/997,020
II. Claims 2--4, 8, 9, 14, and 15 under 35 U.S.C. § 103(a) as
unpatentable over Wagshul, Fallone, and Stemmer (US
2008/0021304 Al, pub. Jan. 24, 2008).
III. Claim 7 under 35 U.S.C. § 103(a) as unpatentable over
Wagshul, Fallone, Stemmer, and Seo (US 5,378,986, iss. Jan. 3,
1995).
IV. Claim 11 under 35 U.S.C. § 103(a) as unpatentable over
Wagshul, Fallone, and Dempsey (US 2005/0197564 Al, pub.
Sept. 8, 2005).4
ANALYSIS
Independent claims 1 and 12 recite "one or more MR sampling
intervals that are longer than the pulse intervals."
The Examiner finds that Wagshul discloses this limitation, stating that
"different duration[ s] of intervals can be used." Final Act. 5 (citing Wagshul
i-f 18); see also Ans. 2-3 (providing an annotated version of Wagshul's
Figure 2, which purports to identify "pulse" and "sampling" intervals). In
the Examiner's Answer, the Examiner also concludes that "Wagshul
discloses that a user may determine the timing of operations of the device
which would, at the very least render the claim limitation obvious." Ans. 2.
4 Appellants present argument directed to the Examiner's interpretation of
"radiation therapy subsystem" as claim language that invokes 35 U.S.C.
§ 112, sixth paragraph. See Appeal Br. 5-8, and Reply Br. 4; cf Final Act.
2-3, and Ans. 2. The Examiner's position on claim construction is not a
rejection of claims and is not dispositive to any issue before us on appeal.
Therefore, we decline to reach it.
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Appeal2014-002783
Application 12/997,020
We agree with Appellants' argument (Appeal Br. 10-11; Reply Br.
5---6) that the Examiner's finding regarding the cited portions of Wagshul is
in error. We have reviewed these portions and we fail to see, and the
Examiner has not explained adequately, how the cited portions of Wagshul
disclose MR sampling intervals that are longer than the pulse intervals.
Specifically, Wagshul's paragraph 18 states that the "nature and timing of
the operations in an MRI scan can vary from scan to scan," but does not
discuss the relative durations between MR sampling intervals and pulse
intervals, or that the MR sampling interval could be longer than the pulse
interval. Appeal Br. 10-11. Furthermore, the Examiner has not identified
any disclosure in Wagshul' s paragraph 18 that supports the Examiner's
annotations to Wagshul's Figure 2. Reply Br. 6. Finally, the Examiner has
not provided articulated reasoning with rational underpinning to support the
conclusion that Wagshul' s disclosure "would, at the very least render the
claim limitation obvious" over the prior art. See Ans. 2.
The Examiner does not rely on Fallone, Stemmer, Seo, or Dempsey to
cure these defects. Final Act. 5-9. Therefore, we reverse the Examiner's
rejection of independent claims 1 and 12 as unpatentable over Wagshul and
Fallone, and the rejections of dependent claims 2--4, 7-11, and 13-19, each
of which incorporates this limitation.
DECISION
The Examiner's rejection of claims 1, 10, 12, 13, and 16-19 under
35 U.S.C. § 103(a) as unpatentable over Wagshul and Fallone is
REVERSED;
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Appeal2014-002783
Application 12/997,020
the Examiner's rejection of claims 2--4, 8, 9, 14, and 15 under 35
U.S.C. § 103(a) as unpatentable over Wagshul, Fallone, and Stemmer is
REVERSED;
the Examiner's rejection of claim 7 under 35 U.S.C. § 103(a) as
unpatentable over Wagshul, Fallone, Stemmer, and Seo is REVERSED;
the Examiner's rejection of claim 11 under 35 U.S.C. § 103(a) as
unpatentable over Wagshul, Fallone, and Dempsey is REVERSED.
REVERSED
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