Ex Parte Dusch

Board of Patent Appeals and Interferences

Feb 28, 2011

11085925 (B.P.A.I. Feb. 28, 2011)

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.
11/085,925 03/22/2005 Birgit Dusch 2003P17949US 6444
7590 02/28/2011
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
PHONGSVIRAJATI, POONSIN
ART UNIT PAPER NUMBER
3686
MAIL DATE DELIVERY MODE
02/28/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BIRGIT DUSCH
____________

Appeal 2009-010998
Application 11/085,925
Technology Center 3600
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-010998
Application 11/085,925
2

STATEMENT OF THE CASE
Birgit Dusch (Appellant) seeks our review under 35 U.S.C. § 134
(2002) of the final rejection of claims 10-29. We have jurisdiction under 35
U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.2

THE INVENTION
The invention relates “to a medical examination and/or treatment
apparatus implemented to carry out various patient-related machine
activities, particularly of image acquisition and/or analysis and/or storage, in
the context of patient examination and/or treatment or subsequent processing
and/or documentation of examination and/or treatment information.”
Specification 1:5-10.
The sole independent claim 10, reproduced below, is illustrative of the
subject matter on appeal.
10. A medical examination or treatment device for executing a
machine-based medical examination or treatment procedure
including a plurality of machine activities, comprising:
a recording device for detecting and storing a start and an
end of at least one of the machine activities using start and end
trigger signals representing, respectively, the start and the end
of the at least one machine activity;

2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Jul. 9, 2009) and Reply Brief (“Reply Br.,” filed Dec. 15, 2009),
and the Examiner’s Answer (“Answer,” mailed Oct. 15, 2009).
Appeal 2009-010998
Application 11/085,925
3
a database for storing financial cost information related
to the plurality of machine activities;
a processing device for calculating financial costs related
to the at least one machine activity using the database; and
a screen device for displaying the calculated financial
costs, wherein the processing device is configured to calculate
the financial costs subsequent to the end of the at least one
machine activity using the end trigger signal for initiating the
calculating of the financial costs.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Strawder US 2002/0010395 A1 Jan. 24, 2002
The following rejection is before us for review:
1. Claims 10-29 are rejected under 35 U.S.C. §102(b) as being
anticipated by Strawder.

ISSUE
The main issue is whether Strawder describes, expressly or inherently,
the recording and processing device elements of the claimed device.3

3 We note that the Appellant includes an argument disputing the
appropriateness of the refusal to enter an amendment under 37 CF 1.116.
App. Br. 12-13. However, this is an objection that is a petitionable matter
and not an appealable matter. Accordingly, we will not address the
argument. See Manual of Patent Examining Procedure (MPEP) § 1201 (8th
ed., Rev. 7, Jul. 2008).
Appeal 2009-010998
Application 11/085,925
4
FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Examiner’s
Answer. Additional findings of fact may appear in the Analysis below.

ANALYSIS
Claim 10 is drawn to a device comprising (a) a recording device; (b) a
database; (c) a processing device; and, (d) a screen device. According to the
Examiner, the elements of the device claimed are expressly described in
paragraphs 7 and 58-60 of Strawder. Answer 3-4. The Appellant disputes
only that elements (a) and (c) are not taught there. App. Br. 6-7. See also
Reply Br. 2-3. Accordingly, we take as accepted that Strawder describes
elements (b) and (d).
As to the (a) recording device, the Appellant argues that Strawder
does not describe a recording device for “detecting and storing a start and an
end of at least one of the machine activities using start and end trigger
signals” (App. Br. 6, emphasis original). Strawder ([0058]) describes a
technologist entering via a keyboard into a computer the time an
examination is started. “The technologist presses a button to signal
computer 60 when the examination is completed. The technologist inputs
computer 60 with the time the examination ends.” ([0059]). The Appellant
challenges the conclusion that this disclosure describes the recording device
as claimed. According to the Appellant, “[n]one of that is the same as using
trigger signals to store start and end of machine activities.” App. Br. 6-7.
The argument does not persuade us as to error in the Examiner’s
finding that Strawder describes the recording device as claimed.
Appeal 2009-010998
Application 11/085,925
5
The argument seeks to distinguish the recording device as claimed
from that of Strawder based on what it does. But “apparatus claims cover
what a device is, not what a device does,” Hewlett-Packard Co. v. Bausch &
Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). The Appellant does not
explain what makes the recording device as claimed different from that of
Strawder based on what it is. The Specification is not helpful. It is
illustrated in Figure 1 as a box labeled “5” within a larger box labeled “3.”
The associated disclosure simply states that “computing device 3 has device
5 for determining the start and end of machine activities as part of the
examination ... .” Specification 10:29-30. Accordingly, the recording device
is reasonably broadly construed to cover a computer that is capable of
“detecting and storing a start and an end of at least one of the machine
activities using start and end trigger signals” (claim 10). We are unable to
see the difference between such a computer and the one Strawder describes
which is capable of detecting and storing responses from a keyboard
corresponding to the start and end of an examination activity. We think it is
reasonable to conclude that the Strawder computer reads on the claimed
recording device. Accordingly, the burden shifts to the Appellant to show a
structural difference. Cf. In re Best, 562 F.2d 1252, 1255 (CCPA 1977)(“its
fairness is evidenced by the PTO's inability to manufacture products or to
obtain and compare prior art products”). In that regard, no structural
difference has been shown.
We reach the same conclusion as to (c) the processing device as
claimed. In light of the Specification (11:10-15), the processing device as
claimed reasonably broadly covers a computer configured in such a way that
it is capable of calculating “the financial costs subsequent to the end of the at
Appeal 2009-010998
Application 11/085,925
6
least one machine activity using the end trigger signal for initiating the
calculating of the financial cost” (claim 10). (We are unable to see the
difference between a computer capable of performing that function and the
one Strawder ([0060]) describes which is capable of calculating cost based
on the time of duration of the examination, the duration of which is
determined by detecting start and end times. We think it is reasonable to
conclude that the Strawder computer reads on the claimed processing device.
Accordingly, the burden shifts to the Appellant to show a structural
difference. In that regard, no structural difference has been shown.
Accordingly, we will sustain the rejection of claim 10.
We will also sustain the rejection of dependent claims 11-29. The
Appellant challenges the rejection of each of claims 13-15, 18-24, and 26-29
(App. Br. 9-10) but the arguments in support thereof do not explain the
structural difference between the claimed device and that of Strawder. They
are thus unpersuasive as to error in their rejection as anticipated by Strawder.
Furthermore, some of arguments with respect to some of these claims simply
state, in whole or in part, that the references do not disclose or suggest
certain claimed features – without responding to the Examiner's reasoning in
establishing a prima facie case of obviousness (e.g., see App. Br. 9:
“According to claim 19, which depends from claim 18, the processing
device is configured to calculate financial costs related to the suggested
further activities. This combination is not taught by the prior art.”; cf.
Answer 5). “It is not the function of this court to examine the claims in
greater detail than argued by an appellant, looking for nonobvious
distinctions over the prior art.” In re Baxter Travenol Labs, 952 F.2d 388,
391 (Fed. Cir. 1991). See also In re Wiseman, 596 F.2d 1019, 1022 (CCPA
Appeal 2009-010998
Application 11/085,925
7
1979) (arguments must first be presented to the board). A general allegation
that the art does not teach any of the claim limitations is no more than
merely pointing out the claim limitations. A statement which merely points
out what a claim recites will not be considered an argument for separate
patentability of the claim. 37 C.F.R. § 41.37(c)(1)(vii).

DECISION
The rejection of claims 10-29 under 35 U.S.C. §102(b) as being
anticipated by Strawder is affirmed.

AFFIRMED

mev

SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN NJ 08830