13169812 (P.T.A.B. Aug. 22, 2016)

Ex Parte Derakhshan et al

Patent Trial and Appeal BoardAug 22, 2016

13169812 (P.T.A.B. Aug. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/169,812 06/27/2011 45436 7590 08/24/2016 DEAN D, SMALL THE SMALL PA TENT LAW GROUP LLC 225 S. MERAMEC, STE. 725T ST. LOUIS, MO 63105 FIRST NAMED INVENTOR Mark Derakhshan 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. 247460 (553-1681) 2601 EXAMINER MCDUFFIE, MICHAEL D ART UNIT PAPER NUMBER 3632 NOTIFICATION DATE DELIVERY MODE 08/24/2016 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): Docket@splglaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARK DERAKHSHAN, LONGZHI JIANG, WILLIAM EINZIGER, XIAOXUE DIAO, BENJAMIN GRONEMEYER, and ERMAN CITIRIK Appeal 2014-007987 1,2 Application 13/169,812 Technology Center 3600 Before BIBHU R. MOHANTY, PHILIP J. HOFFMANN, and ROBERT J. SILVERMAN, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 1-8, 10, and 12-20. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 Our decision references Appellants' Specification ("Spec.," filed June 27, 2011) and Appeal Brief ("Br.," filed Jan. 2, 2014), as well as the Examiner's Answer ("Answer," mailed May 12, 2014). 2 "The real party in interest ... is General Electric Company." Br. 3. Appeal2014-007987 Application 13/169,812 According to Appellants, the invention is directed "to an apparatus for supporting, and [a] method for forming a support for[,] a superconducting magnet in a Magnetic Resonance Imaging (MRI) system." Spec. i-f 1. Independent claims 1, 14, and 20 are the only independent claims under appeal. See Br., Claims App. We reproduced claim 1 in the Analysis section, below, as representative of the appealed claims. REJECTIONS AND PRIOR ART The Examiner rejects claims 1, 7, 8, 12, and 13 under 35 U.S.C. Â§ 102(b) as anticipated by Ueda (US 4,658,170, iss. Apr. 14, 1987). The Examiner rejects claims 2---6, 10, and 14--20 under 35 U.S.C. Â§ 103(a) as unpatentable over Ueda. See Answer 2---6. ANALYSIS Independent claim 1 recites the following: 1. A coil support arrangement for a superconducting magnet, the coil support arrangement comprising: a main former body having a plurality of channels between end flanges; a splint coupled to the main former body between the end flanges; and a load spreader coupled to the main former body adjacent one or more of the ends of the splint, and having a gap between the one or more ends of the splint and the load spreader. Br., Claims App. Appellants argue that Ueda does not teach the claimed "gap between the one or more ends of the splint and the load spreader." See 2 Appeal2014-007987 Application 13/169,812 id. at 13-18. ivfore specifically, Appellants contend, among other arguments, that [in Ueda] [t]he gap is within the element 23 (interpreted as the load spreader) and not between the element 23 and ends of the element 22 (interpreted as the splint). Thus, the gap is not provided as required by the claims. The gap of Ueda is within the load spreader and not between the load spreader and one or more ends of the splint and cannot be between at the ends of the splint. The claims do not recite a gap within the load spreader or under the splint, which is what Ueda teaches. Id. at 1 7-18 (emphasis added). In response, the Examiner finds that "[b ]ased on the Examiner's interpretation ... , there is a gap located between one of the ends of the splint 22 and the load spreader 23 of Ueda (as seen in Fig. 6)." Answer 7. Based on our review of Ueda, and in particular Ueda's Figure 6, we determine that the Examiner fails to establish by a preponderance of the evidence that Ueda teaches a gap between an end of the splint and the load spreader. We note that a relevant definition of "end" is "the part of an area that lies at the boundary."3 Further, Appellants' Brief (see Br. 7) cites a portion of the Specification that states the claimed gap "is an axial gap" (Spec. i-f 33). Although we determine that Ueda shows, in Figure 6, a gap between a surface of insulating cover 22 (that the Examiner finds teaches the claimed splint) and retaining member 23 (that the Examiner finds teaches the claimed load spreader), the figure does not show a gap between an axial boundary part of cover 22 and member 23. 3 http://www.merriam-webster.com/dictionary/end (last accessed August 10, 2016). 3 Appeal2014-007987 Application 13/169,812 Based on the foregoing, we do not sustain the anticipation rejection of independent claim 1. We also do not sustain the anticipation rejection of claims 7, 8, 12, and 13 that depend from claim 1. Further, we do not sustain the obviousness rejection of independent claims 14 and 21, inasmuch as the Examiner relies on Ueda to disclose a similar gap recited in each independent claim. Finally, we do not sustain the obviousness rejection of claims 2---6, 10, and 15-19 that depend from the independent claims. DECISION We REVERSE the Examiner's anticipation and obviousness rejections of claims 1-8, 10, and 12-20. REVERSED 4