Ex Parte Butzine et al

Patent Trial and Appeal Board

Sep 21, 2016

13449080 (P.T.A.B. Sep. 21, 2016)

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.
13/449,080 04/17/2012 Jonathan Mark Butzine 242633-5/GEMS:0393-1/YOD 5503
68174 7590 09/22/2016
GE HEALTHCARE
c/o FLETCHER YODER, PC
P.O. BOX 692289
HOUSTON, TX 77269-2289
EXAMINER
NGUYEN, NAM V
ART UNIT PAPER NUMBER
2682
MAIL DATE DELIVERY MODE
09/22/2016 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 JONATHAN MARK BUTZINE and
JEREMY PATRICK HANNON
____________________

Appeal 2015-005460
Application 13/449,080
Technology Center 2600
____________________

Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2015-005460
Application 13/449,080
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1–
3, 6–13, and 15–23. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The invention relates to an X-ray imaging system that uses a handheld
interface device and is configured to track the location of the handheld
interface device (Spec. ¶ 5). Claim 1 reproduced below, is illustrative of the
claimed subject matter:
1. An X-ray system comprising:

an imaging system including a source of X-ray radiation,
an X-ray image receptor, control circuitry for controlling the
source of X-ray radiation, and a wireless interface; and

a handheld interface device configured to communicate
wirelessly with the imaging system, wherein the handheld
interface device is configured to communicate wirelessly with
the imaging system to communicate a signal to initiate an X-ray
exposure, and wherein the handheld interface device comprises
a tracking device located within the handheld interface device;

wherein the imaging system is configured to track a
location of the handheld interface device via the tracking device
and to use the location as an input for at least one control function
of the imaging system.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Makrinos
Uzuyama
Haumann
US 5,206,894
US 5,416,819
US 6,285,742 B1
Apr. 27, 1993
May 16, 1995
Sept. 4, 2001
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Application 13/449,080
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Kemink
Hills
Mazess
Butzine
US 6,563,430 B1
US 6,581,000 B2
US 6,608,884 B1
US 8,174,358 B2
May 13, 2003
June 17, 2003
Aug. 19, 2003
May 8, 2012

REJECTIONS
The Examiner made the following rejections:
Claims 1–3, 6–11, 13, 15, 16, and 18–21 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Haumann, Makrinos, Hills, and
Mazess.
Claims 12 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Haumann, Makrinos, Hills, Mazess, and Kemink.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Haumann, Makrinos, Hills, Mazess, and Uzuyama.
Claims 1–3, 6–13, and 15–23 stand rejected under the non-statutory
ground of obviousness-type double patenting over U.S. Patent 8,174,358 B2
to Butzine in view of Hills.

ANALYSIS
The Obviousness Rejections
The Examiner finds the combination of Haumann, Makrinos, Hills,
and Mazess discloses all the limitations of independent claim 1, including
that Hills teaches “the handheld interface device comprises a tracking device
located within the handheld interface device,” and that Mazess teaches “the
imaging system is configured to track a location of the handheld interface
device via the tracking device” (see Final Act. 3–6). In combining the Hills
reference with Hamann and Makrinos, the Examiner concludes it would
have been obvious to use Hills’ position tracking module in Haumann’s C-
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arm X-ray device with remote control because it “would provide the exact
position location of the medical device to control and trigger the functions of
the medical device” (Final Act. 5).
Appellants contend “Hills is completely silent with regard to the
tracking device being disposed within a handheld interface device that
wirelessly interfaces with an imaging system” (App. Br. 9). Further,
Appellants contend “the Examiner’s reasoning for modifying the remote
control with the tracking device in Haumann is flawed. Specifically, if the
remote control of Haumann wirelessly communicated with the C-arm X-ray
device . . . knowing the position of the user handling the remote control
would not provide the exact position of the C-arm X-ray device.” Id. We
agree with Appellants.
Hills discloses a “position tracking device 14 may be configured to
receive the indication that is transmitted by the distance sensor 12 and, based
thereon, determine the real-time position of the user 18” (Hills col. 3, ll. 50–
53). Further, Hills discloses the position tracking device “may be embodied
as, for example, a mobile computing device such as a laptop computer or a
personal digital assistant” (Hill col. 3, ll. 53–55). Even if we agree with the
Examiner that Hills teaches a “handheld interface device comprises a
tracking device located within the handheld interface device,” as recited in
claim 1, Hill does not relate to tracking a handheld interface device that “is
configured to communicate wirelessly with the imaging system to
communicate a signal to initiate an X-ray exposure,” as also recited in claim
1. Although Mazess teaches tracking the location of a physician’s head-
mounted display for use with a fluoroscopic X-ray machine (Mazess col. 4,
ll. 36–39), this is performed in order to “present an orientationally accurate
image corresponding to the head mount wearer’s field of view” (Mazess
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Abstract). Accordingly, Mazess suggests a tracking feature for a head-
mounted display in the context of an imaging system, but does not suggest a
tracking feature in a handheld interface device that communicates with an
imaging system to initiate an X-ray exposure, as claimed.
While we find the Examiner has not shown there to be a suggestion in
the cited prior art for implementing Hills’ tracking device in a handheld
device for initiating an X-ray exposure, we note that “the analysis need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for [the Board] can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In this case, however,
the Examiner’s conclusion of obvious fails to provide a satisfactory rationale
for implementing Hills’ tracking device in a handheld device configured “to
communicate a signal to initiate an X-ray exposure,” as recited in claim 1.
The Examiner’s statement that combining Hills with Haumann “would
provide the exact position location of the medical device to control and
trigger the functions of the medical device” (Final Act. 5) does not reflect
the inferences or creativity of a person of ordinary skill in the art. To the
contrary, it is not clear how a tracking device in a handheld interface device
would aid in locating the position of a medical device that the handheld
interface device was intended to control. Rather, a tracking device on the
handheld interface device would only aid in locating the position of the
handheld interface device. Therefore, one of ordinary skill in the art would
not have been motivated to combine Hills with Haumann for the reason
provided by the Examiner.
We are, therefore, constrained by the record to find the Examiner
erred in rejecting independent claim 1, independent claims 11 and 18 which
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recite commensurate limitations, and dependent claims 2, 3, 6–10, 12, 13,
15–17, and 19–23 for similar reasons.

The Double Patenting Rejection
For the double patenting rejection, Appellants rely on the same
arguments regarding Hills discussed above with respect to the obviousness
rejection of claim 1 (see App. Br. 13). However, the arguments directed to
Hills presented for the obviousness rejection do not carry the same
persuasive weight when considering U.S. Patent 8,174,358 B2 to Butzine,
which forms the basis of the double patenting rejection (see Final Act. 10–
11). Butzine’s claim 1 recites “the imaging system is configured to track a
location of the handheld interface device,” which is the feature we find
missing from the prior art combination of the obviousness rejection
discussed above. In the double patenting rejection, the Examiner finds
Butzine’s only shortcoming is not explicitly reciting a tracking device in the
handheld interface device, and relies on Hills for disclosing a tracking
device (Final Act. 11). The Examiner does not need to show that it would
have been obvious to track a handheld interface device configured for use
with an imaging system, as is the case with the obviousness rejection.
Rather, the Examiner only need show it would have been obvious to use a
tracking device to perform location tracking. Appellants’ arguments (see
App. Br. 7–9) do not show the Examiner failed in this respect.
We are, therefore, not persuaded the Examiner erred in rejecting claim
1, and claims 2, 3, 6–13, and 15–23 not specifically argued separately.
CONCLUSIONS
Under 35 U.S.C. § 103(a), the Examiner erred in rejecting claims 1–3,
6–13, and 15–23.
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Under the doctrine of non-statutory obviousness-type double
patenting, the Examiner did not err in rejecting claims 1–3, 6–13, and 15–23.

DECISION
For the above reasons, the Examiner’s decision rejecting claims 1–3,
6–13, and 15–23 is affirmed.
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