Ex Parte Fain et al

Patent Trial and Appeal Board

Feb 28, 2017

12108070 (P.T.A.B. Feb. 28, 2017)

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.
12/108,070 04/23/2008 Sean Bedilion Fain 960296.00672.P06382US 1866
26710 7590
QUARLES & BRADY LLP
Attn: IP Docket
411 E. WISCONSIN AVENUE
SUITE 2350
MILWAUKEE, WI 53202-4426
EXAMINER
CHAO, ELMER M
ART UNIT PAPER NUMBER
3777
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEAN BEDILION FAIN, KRISHNA N. KUPRAD,
and XU ZHAI1
Appeal 2015-005667
Application 12/108,070
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN,
and TIMOTHY G. MAJORS, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims that have
been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
STATEMENT OF THE CASE
Appellants’ “invention relates to a system and method for imaging
breast using a magnetic resonance imaging (MRI) system.” (Spec. 13.)
1 Appellants identify the Real Party in Interest as the Wisconsin Alumni
Research Foundation (WARE). (Br. 2.)
Appeal 2015-005667
Application 12/108,070
Claims 1—21 are on appeal. Claim 1 is illustrative:
1. An RF coil for use with a magnetic resonance imaging
(MRI) system, the RF coil comprising:
a frame comprising:
an opening at a first end having a first cross-
sectional area configured to receive a body part to be
imaged using the MRI system;
a frame body extending along a central axis of the
frame from the first end toward a second end having a
second cross-sectional area smaller than the first cross
sectional area to form a tapered cup-shaped frame;
a plurality of openings formed in the frame body to
provide access from an exterior of the frame body to the
body part arranged in an interior of the frame;
a conductor coupled to the frame and extending about the
frame to form a tapered solenoid shape comprising:
a first loop arranged proximate to the first end of the
frame and extending in a first plane substantially
transverse to the central axis of the frame;
a second loop arranged proximate to the second end
of the frame and extending in a second plane substantially
parallel to the first plane and transverse to the central axis
of the frame;
at least one leg connecting the first loop and the
second loop and extending neither perpendicular nor
parallel to the central axis of the frame; and
wherein at least a portion of the plurality of
openings formed in the frame body is accessible between
the first loop and the second loop.
(Br. 24 (Claims App’x).)
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Application 12/108,070
The claims stand rejected as follows:2
I. Claims 1—6, 20, and 21 under 35 U.S.C. § 103(a) over Su ’717,3
Su ’962,4 and Su ’178.5
II. Claim 4 under 35 U.S.C. § 103(a) over Su ’717, Su ’962, Su
’178, and Eydelman.6
III. Claims 7—19 under 35 U.S.C. § 103(a) over Su ’717, Su ’962,
Su ’178, and Chowdhury.7
IV. Claim 17 under 35 U.S.C. § 103(a) over Su ’717, Su ’962, Su
’178, Chowdhury, and Eydelman.
REJECTION I
Claims 1,3, and 6:
Appellants argue the patentability of these claims together. We select
claim 1 as representative. Claim 1 requires, among other things, “a frame
body extending along a central axis of the frame from the first end toward a
second end having a second cross-sectional area smaller than the first cross
sectional area to form a tapered cup-shaped frame,” and “a conductor
coupled to the frame and extending about the frame to form a tapered
solenoid shape.” (Br. 24 (Claims App’x).)
2 The rejection of claim 1 under 35 U.S.C. § 112, first paragraph, has been
withdrawn. (See Ans. 3.)
3 Su, US 6,163,717, issued Dec. 19, 2000 (“Su ’717”).
4 Su, US 6,198,962 Bl, issued Mar. 6, 2001 (“Su ’962”).
5 Su et al., US 6,701,178 B2, issued Mar. 2, 2004 (“Su ’178”).
6 Eydelman, US 6,023,166, issued Feb. 8, 2000 (“Eydelman”).
7 Chowdhury et al., US 5,363,845, issued Nov. 15, 1994 (“Chowdhury”).
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Application 12/108,070
The Examiner finds that
Su ’717 teach[es] an RF coil for use with a magnetic resonance
imaging (MRI) system, the RF coil comprising: a frame (fig. 1)
comprising: an opening at a first end having a first cross-
sectional area configured to receive a body part to be imaged
using the MRI system (fig. 1, item 16a); a frame body extending
along a central axis of the frame from the first end (fig. 1, item
2a) toward a second end (fig. 1, refer to the end closer to item 4)
having a second cross-sectional area smaller than the first cross
sectional area (fig. 1, the cross sectional area bounded by item 4
is smaller than the cross sectional area of item 2a); a plurality of
openings formed in the frame body to provide access from an
exterior of the frame body to the body part arranged in an interior
of the frame (col. 2, lines 34—38).
(Final Act. 7.)
The Examiner finds that Su ’717
fail[s] to explicitly teach a conductor coupled to the frame and
extending about the frame to form a solenoid shape comprising:
a first loop arranged proximate to the first end of the frame and
extending in a first plane substantially transverse to the central
axis of the frame; a second loop arranged proximate to the second
end of the frame and extending in a second plane substantially
parallel to the first plane and transverse to the central axis of the
frame; at least one leg connecting a first loop and a second loop;
and wherein at least a portion of the plurality of openings formed
in the frame body is accessible between the first loop and the
second loop.
(Id. at 7—8.)
The Examiner turns to Su ’962 and finds that it teaches
a conductor (fig. 5) coupled to the frame (col. 5, lines 43 49) and
extending about the frame to form a solenoid shape (fig. 5)
comprising: a first loop arranged proximate to the first end of the
frame and extending in a first plane substantially transverse to
the central axis of the frame (fig. 5, item 11); a second loop
arranged proximate to the second end of the frame and extending
in a second plane substantially parallel to the first plane and
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Application 12/108,070
transverse to the central axis of the frame (fig. 5, item 27a & b);
at least one leg connecting a first loop and a second loop (fig. 5,
item 12).
(Id. at 8.)
The Examiner concludes that it would have been obvious to
place the claimed solenoid coil arrangement taught by Su ’962’s
fig. 5 within Su ’717’s frame wherein the plurality of openings
formed in the frame body is accessible between the first loop and
the second loop in order to provide a support structure adapted
for imaging the breast(s) (Su ’962, col. 5, lines 43^49) while
allowing the body part to pass entirely through the coils (Su[]
’962, col. 5, lines 39-42) and to allow for increased accessibility
to the breast tissues for efficient interventional MR imaging (Su
’717, abstract, last sentence).
(Id.)
The Examiner finds that Su ’717 and Su ’962 fail to teach “the frame
body having a second cross-sectional area smaller than the first cross
sectional area and thereby forming a tapered cup-shaped frame with non­
parallel and nonperpendicular legs.” (Id. at 9.)
The Examiner turns to Su ’ 178 and finds that it teaches “a solenoid
breast coil with a lower solenoidal section with a smaller diameter than the
upper section (fig. 6, not shown but described by the accompanying
disclosure in col. 9, lines 42-48).” (Id.)
The Examiner concludes that it would have been obvious to
include the frame body having a second cross-sectional area
smaller than the first cross sectional area and thereby forming a
tapered cup-shaped frame with non-parallel and non­
perpendicular legs. Such a modification would provide a frame
and coil arrangement that can conform better to the breast being
imaged and fit closer against the breast tissues (col. 9, line 44).
(Id. at 9-10.)
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The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that Su ’717, Su ’962, and Su ’178
would have rendered claim 1 obvious?
Findings of Fact
1. Su’717 teaches
A pair of RF quadrature detection coils are fitted in an
open support structure that allows easy diagnostic access to all
tissue areas of the human female breast when performing
interventional MRL . . . The upper bi-planar section includes
two circular openings for accepting the breasts. ... In a
preferred embodiment, two complete MRI quadrature detection
coils are supported by the structure and each of the vertical
support legs house a pair of conductors forming part of a
quadrature detection coil winding. The use of quadrature
detection coils increases MRI signal detection efficiency and the
open structural support arrangement allows increased
accessibility to the breast tissues for efficient interventional MR
imaging and easy cleaning after use.
(Su ’717 Abstract; see also Final Act. 7—8.)
2. Figure 1 of Su ’717 is reproduced below:
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10
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Appeal 2015-005667
Application 12/108,070
Figure 1 shows
a dual breast MRI receive coil support structure 1 comprising a
“V”-shaped upper bi-planar portion 2, a bottom flat planar
section 3, eight vertical leg portions 4 between the upper and
bottom planar sections, and a base housing portion 5, below the
bottom planar section.
The planar upper section 2 comprises left and right planar
sections 2a, 2b that are mirror symmetrical along center line 11.
The slight “V”-shape of the bi-planar upper section increases the
clearance between the upper and bottom sections at both left and
right sides of the coil support structure 1 to enhance accessibility
to the breasts from these sides.
(Su ’717 3:60-4:4; see also Final Act. 7.)
3. Figure 4 of Su ’717 is reproduced below:
Figure 4.
Figure 4 shows “an RF quadrature signal detection coil 18” in which “[e]ach
quadrature coil comprises two individual MR receive coils 20a, 206” and
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Appeal 2015-005667
Application 12/108,070
“[vjertical conductor portions of quadrature coil windings 13.” (See Su ’717
4:60—5:6; see also Ans. 3—4.)
4. Su ’962 teaches “[a]n RF quadrature detection coil for
interventional MRI comprises two nested orthogonal coils having generally
rectangular shape in profile, each coil providing one ‘channel’ of signal for
quadrature detection.” (Su ’962 Abstract; see also Final Act. 8.)8
5. Figure 3 of Su ’962 is reproduced below:
«flf. 3
flop Vies)
Figure 3 shows that a “PC board [17] provides a supporting substrate for the
semi-circular coil sections 11.” (Su ’962 4:63—64; see also id. at 4:58, Ans.
3—4.)
8 Su ’962 discloses that it is related to and incorporates by reference the
entirety of US Application No. 09/198,967, which issued as Su ’717. (See
Su ’962 1:6-10.)
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Application 12/108,070
6. Su ’962 teaches that “[ijmproving coil performance, such as the
signal-to-noise ratio and uniformity of interventional MR reception coils,
would increase the depth to which tissue can be clearly imaged.” (Su ’962
1:57—60; see also Final Act. 10.)
7. Figure 5 of Su ’962 is reproduced below:
Fig. 5
Figure 5 shows an “RF quadrature detection coil winding arrangement 25”
(Su ’962 5:29), having “a top arcuate section 11,” “straight sided sections
12” {id. at 4:18—19), and “conductor winding pairs 21a, 21V {id. at 5:33; see
also Final Act. 8—9).
8. Su ’962 teaches “circular openings in the nested coils provide a
cylindrical passageway through the coils so that an object (such as a body
part) may pass entirely through the coils” and that “[t]he quadrature
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Application 12/108,070
detection coil arrangement disclosed herein may be enclosed in a suitable
open structure support frame.” (Su ’962 5:38-45; see also Final Act. 8—9.)
9. Su ’ 178 teaches “[a]n inherently de-coupled sandwiched
solenoidal array coil (SSAC) is disclosed for use in receiving nuclear
magnetic resonance (NMR) radio frequency (RF) signals in both horizontal
and vertical-field magnetic resonance imaging (MRI) systems.” (Su ’178
Abstract; see also Final Act. 9.)
10. Figure 6 of Su ’ 178 is reproduced below:
Figure 6 shows
a basic SSAC comprising coils 1 and 2 is fitted over and
surrounds the breast of a prone patient laying in an MRI
apparatus. Sandwiched coil 2 of the SSAC surrounds the center
portion of breast 3 while sections la and lb of coil 1 surround
the upper and lower portions.
(Su ’178 9:31—35; see also Final Act. 9.)
11. Su’178 teaches
Lower solenoidal section la of coil 1 could also be configured to
have a smaller diameter than upper section lb so that it can fit
closer against the breast tissues. In that case, as in the previous
embodiment, additional conductive windings (turns) would be
Fig. 6
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Appeal 2015-005667
Application 12/108,070
needed in the smaller diameter section to improve signal strength
and to balance the magnetic flux with section lb.
(Su ’178 9:42-48; see also Final Act. 9, Ans. 3.)
DISCUSSION
We agree with the Examiner that claim 1 would have been obvious
over Su ’717, Su ’962, and Su ’178. We address below Appellants’
arguments.
Appellants contend that
[t]he Examiner repeatedly cited to items 4 and 2a of Su ’717 as
teaching the claimed sequentially decreasing cross-sectional
areas, but Su ’717 clearly fails to teach or suggest the claimed
tapered cup-shaped frame, as claimed. Rather, Su ’717 teaches
a non-tapered, cylindrical shaped frame defined by openings 16a
and 16b, in conjunction with four vertical leg portions (8) parallel
to one another. See, Su ’717, 4:37—41, Figs. 1 and 4. The
Examiner continually dismissed the above facts, and asserted
that the tapered cup-shaped frame was an obvious design choice,
“given that it is primarily the shape of the anatomical portion
being imaged that would direct one of ordinary skill in the art to
design the coil in such a manner.”
(Br. 8—9.) Appellants further argue that
even assuming that Su ’178 discloses a lower solenoidal coil
section with a smaller diameter than the upper section, Su ’178
fails to disclose, teach or suggest the claimed “tapered cup­
shaped frame.” Rather, Su ‘178 simply discloses that two
separate coils of differing sizes can be used, not a “frame body
extending along a central axis of the frame from the first end
toward a second end having a second cross-sectional area smaller
than the first cross sectional area to form a tapered cup-shaped
frame,” as claimed.
(Id. at 9.)
These arguments are unpersuasive.
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Application 12/108,070
Su ’962 teaches a “PC board [17] provides a supporting substrate for
the semi-circular coil sections 11.” (FF 5.) Su ’178 teaches
Lower solenoidal section la of coil 1 could also be configured to
have a smaller diameter than upper section lb so that it can fit
closer against the breast tissues. In that case, as in the previous
embodiment, additional conductive windings (turns) would be
needed in the smaller diameter section to improve signal strength
and to balance the magnetic flux with section lb.
(FF 11.) As the Examiner explains, “Su ’178, col. 9, lines 42-48 [] teaches
that one of ordinary skill in the art would find it obvious to use a tapered
coil.” (Ans. 3; FF 11.) The Examiner further explains that
both Su ’962 and Su ’717 already teach coils coupled to frames
(see Su ’962’s fig. 3 & 4 for the coil/frame combination; see Su
’717’s fig. 4 for the coil and fig. 1 for the frame which is shaped
according to the coil). Since Su ’178 teaches the tapering of the
coils, one of ordinary skill in the art would find it obvious to taper
the frame as well since the frames of the Su ’962 and Su ’717 is
designed as a compliment to the coil and if the coil is tapered, it
would likewise be obvious to taper the frame as well.
(Ans. 3^4; FF 2—3, 5, 11.) “Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references []. [The reference] must be read,
not in isolation, but for what it fairly teaches in combination with the prior
art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellants contend that
the Examiner asserted that the “feature of being ‘cup-shaped’ and
having a ‘frame body extending neither perpendicular nor
parallel to the central axis of the frame[’] is considered merely a
design choice and not a functionally [sic] different than Su ’717
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Application 12/108,070
in view of Su 962 ’s invention.” Appellants continue to disagree
with the Examiner both procedurally and substantively.
(Br. 9.) Appellants also argue that “the Examiner provided no motivation or
reasoning to make the changes to Su ’717 as put forth in the Office Action.”
(Id. at 10.)
These arguments are also unpersuasive. The cup-shaped and tapering
features are discussed above and Su ’178 expressly teaches a taper-shaped
cup provides for a closer fit against the breast tissues, which provides
sufficient reason for the skilled artisan to adopt this design. (FF 11.)
Concerning the “at least one leg connecting the first loop and the second
loop and extending neither perpendicular nor parallel to the central axis of
the frame” feature of the claims, the Examiner points out the following:
Su ’178, in col. 9, lines 42-48 already discloses coils that taper
to the shape of the breast (e.g. decreasing diameter for coils
extending toward the nipple). Thus, if the coils are tapered, the
legs of the coils that function to connect the coils then must (or
at least is very likely) to go in a diagonal direction (i.e.
nonperpendicular and non-parallel). Imagine connecting two
rings of different diameters, the shortest distance for the
connection would be a non-perpendicular / non-parallel line from
one edge of the ring to the other edge. Thus, one of ordinary skill
in the art would find this feature to be obvious at least due to that
reason. As far as the distinction Appellant continue to make
between the “frame” legs versus the “coil” legs, Examiner notes
that in this field, as pointed out. . ., the frame shape is determined
by the coil shape. Thus, if the coil legs are diagonal, then the
frame legs are likely to be diagonal. A testament to the
consistency of this statement is further illustrated by Appellant’s
own invention of fig. 5, which shows both the frame and coil in
the same tapered configuration. The frame is known to exist as
a primary support for the coil, so to dispute that the prior art does
not explicitly teach the frame being tapered is considered an
argument that ignores the common sense of one of ordinary skill
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Application 12/108,070
in this art given the evidence that Su ’ 178 teaches the tapering of
the coils.
(Ans. 4-5; FF 2-3, 5, 7, 10-11.) See In re Merck & Co., 800 F.2d at 1097.
Accordingly, we affirm the rejection of claim 1 over Su ’717, Su ’962,
and Su ’178. Because Appellants do not argue claims 3 and 6 separately, we
affirm the rejection of claims 3 and 6 as well.
Claim 2:
Appellants contend that
[t]he Su References fails [sic] to teach or suggest the
“RF coil of claim 1 wherein the conductor further comprises a
third loop arranged between the first loop and the second loop
and extending in a third plane substantially parallel to the first
plane and the second plane and transverse to the central axis of
the frame,” as recited in Claim 2.
(Br. 10.) More particularly, Appellants argue that
[t]he Examiner, in pointing only to Fig. 6 for support, has ignored
the portion of the Su ’178 specification that corresponds to Fig.
6. Specifically, Su ’178 states that Fig. 6 discloses two separate
coils (elements 1 and 2), stating that “[sjandwiched coil 2 of the
SSAC surrounds the center portion of breast 3 while sections la
and lb of coil 1 surround the upper and lower portions.” Su ’178,
9:26—35 (emphasis added). Thus, it is clear that Su ’178 is not
teaching, as asserted by the Examiner, a third loop arranged
between the first loop and the second loop, but rather a second
coil disposed between the first and second loop of a first coil.
Furthermore, Su ’178 goes on to state that “coils 1 and 2 of the
SSAC are connected to appropriate input data acquisition
channels of the horizontal field MRI system,” further
demonstrating that Su ’178 teaches a second coil and not a third
loop positioned between a first and second loop of a first coil. Su
’178, 9:39-41 (emphasis added).
(Id. at 10-11.)
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These arguments are unpersuasive. As the Examiner explains,
Appellant seems to be inferring some narrow type of definition
for “third loop” which is improper. A “third loop”
is taught by Su ’178’s fig. 6, whether or not it is connected to
the other loops. Examiner notes that the claims do not preclude
the [third] loop being connected or disconnected from the other
loops.
(Ans. 5; FF 10.) “[L]imitations are not to be read into the claims from the
specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). See
also In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[Appellant’s
arguments fail from the outset because . . . they are not based on limitations
appearing in the claims.”).
Claims 4 and 5:
Claim 4 recites “[t]he RF coil of claim 1 wherein the coil is
configured to operate as both a transmit coil and a receive coil.” Claim 5
recites “[t]he RF coil of claim 4 wherein the coil is configured to create a
homogenous B1 excitation field and a homogenous reception field.” (Br. 25
(Claims App’x).)
Concerning claim 4, the Examiner asserts that “although Su [’962]’s
disclosure does not explicitly teach the step of using the coils as a transmit
coil, such a function is capable of being done with the proper electronics
connected to the coil.” (Final Act. 10; see also Ans. 5.)
We are not persuaded. On this record, the Examiner failed to
establish an evidentiary basis to support a conclusion that the coils of Su
’717, Su ’962, or Su ’178 are capable of operating as both a transmit coil and
a receive coil (see also Br. 11). A prima facie case of obviousness “requires
a suggestion of all limitations in a claim,” CFMT, Inc. v. Yieldup Int'l Corp.,
349 F.3d 1333, 1342 (Fed. Cir. 2003) and “a reason that would have
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prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007).
We thus reverse the rejection of claim 4 over Su ’717, Su ’962, and Su
’178. Because of its dependency on claim 4, we reverse the rejection of
claim 5 as well.
Claim 20:
Claim 20 recites “[t]he patient support system of claim 8 wherein the
frame body is configured to rotate bi-directionally and in a complete circle
about the central axis of the frame.” (Br. 29 (Claims App’x (emphasis
added)).)
Because claim 20 depends on claim 8, and claim 8 was not rejected
based on Su ’717, Su ’962, and Su ’178, the rejection of this claim is
reversed.
Claim 21:
Appellants contend that “the Examiner provided no basis for the
proposed combination of Su ’717 and Su ’962. It is only when viewing Su
’717 and Su ’962 in view of the present application that any sort of
reasoning to combine can be found.” (Br. 14.)
This argument is unpersuasive because the Examiner reasoned that it
would have been obvious to
place the claimed solenoid coil arrangement taught by Su ’962’s
fig. 5 within Su ’717’s frame wherein the plurality of openings
formed in the frame body is accessible between the first loop and
the second loop in order to provide a support structure adapted
for imaging the breast(s) (Su ’962, col. 5, lines 43^49) while
allowing the body part to pass entirely through the coils (Su[]
’962, col. 5, lines 39-42) and to allow for increased accessibility
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to the breast tissues for efficient interventional MR imaging (Su
’717, abstract, last sentence).
(Final Act. 8.) See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997)
(“[Attorney argument [is] not the kind of factual evidence that is required to
rebut a prima facie case of obviousness”).
We recognize, but are not persuaded by, Appellants’ contention that
Su ’962 fails to teach or suggest any coil including a “solenoid,”
or any structure that reflects a solenoid geometry. To the
contrary, Figs. 1, 2, 5, and 6 of Su ’962 consistently illustrate
non-solenoid shapes. Specifically, Su ’962 shows perpendicular
or birdcage-type coil architectures distinctly different from the
solenoid shaped conductor of Claim 21, as would be known by
one having ordinary skill in the art.
(Br. 14.) We recognize, but are not persuaded by, Appellants’ contention
that
as explained in the specification, the “solenoid shape” of the coil
provides B1 field homogeneity not achieved with prior-art
systems, such as the art cited, that employ perpendicular or
birdcage-type coil architectures. The present application
describes the advantages of the claimed solenoid design,
including better homogeneity, symmetrical access to the breast,
and so on. See Specification, ^fl[ [0039], [0048], and [0060].
(Id.) As the Examiner explains, “at least to Su ’178, [] uses the word
‘solenoidaF in the title of the patent, let alone showing the shape in several
of the figures, including fig. 6.” (Ans. 6; see also FF 9). Moreover, while
the Specification’s H 39, 48, and 60 discuss the solenoid shape which can
provide homogenous B1 excitation and reception fields, the claims and
Specification do not define “solenoid” to exclude “perpendicular or
birdcage-type coil architectures.” See In re Van Geuns, 988 F.2d at 1184
and In re Self, 671 F.2d at 1348.
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REJECTION II
In regard to claim 4, the Examiner makes an alternative rejection
based on the combination of Su ’717, Su ’962, Su ’178, and Eydelman.
(Final Act. 11.) The Examiner finds that Eydelman teaches “a MRI breast
coil arrangement where the coil can be used as both a transmit coil and a
receive coil (col. 1, lines 1—10),” and concludes that it would have been
obvious to “include using the coil as both a transmit coil and receive coil so
that two separate coils do not have to be used for the transmit and receive
operations (col. 1, lines 7—10).” (Final Act. 11.)
Appellants do not provide separate argument regarding this rejection.
We thus affirm the rejection of claim 4 over Su ’717, Su ’962, Su ’178, and
Eydelman based on the Examiner’s findings, reasoning, and conclusion of
record.
REJECTION III
Claims 8—19:
Claim 8 requires, among other things, “a frame body extending along
a central axis of the frame from the first end toward a second end having a
second cross-sectional area smaller than the first cross sectional area, the
frame body rotatable about rotational axis extending along the central axis.”
(Br. 26 (Claims App’x).)
The Examiner acknowledges that Su ’717, Su ’962, and Su ’178 “fail
to explicitly teach a patient bed coupled to first and second RF coils.” (Final
Act. 12.)
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The Examiner turns to Chowdhury and finds that it “teaches a patient
bed coupled to first and second RF coils (for ‘patient bed’ refer to fig. 1,
items 12, 28, 30, 26; for ‘first and second RF coils’ refer to fig. 1 item 20 for
both the left and right breasts).” (Id.)
The Examiner concludes that it would have been obvious to “include
using a patient bed coupled the first and second RF coils in order to provide
a comfortable (col. 4, line 64 — col. 5, line 10) and to properly accommodate
the patient during an MRI imaging procedure of the breasts (col. 3, lines 38—
56).” (Id.)
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that Su ’717, Su ’962, Su ’178,
and Chowdhury would have rendered claim 8 obvious?
DISCUSSION
Appellants contend that “[t]he art of record fails to teach such a
rotatable arrangement and, indeed, the Examiner continued to provide no
indication as to how the cited prior art discloses a frame coupled to a bed
that is ‘rotatable about the rotation axis extending along the central axis,’ as
claimed.” (Br. 15.)
The Examiner asserts that “[t]he rotational aspect of the frame is not
limited by the claims to overcome the interpretation of rotating the entire
device of the Su references.” (Ans. 6.) According to the Examiner,
Appellants’ “arguments are unpersuasive for reasons similar to those
explained . . . with respect to claim 20.” (Id.) With respect to claim 20, the
Examiner asserts that
Appellant is arguing a functional limitation that is already met by
the Su references since any of the frame/coil devices of the Su
references can be picked up and rotated. Claim 20 merely states
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“wherein the frame body is configured to rotate []bi-directionally
and in a complete circle about the central axis of the frame”.
Nowhere is there any further structural or functional limitation
that may be interpreted to define where or how the rotation can
preclude rotating the entire device about the central axis of the
frame.
(Id. at 5—6.)
We conclude that Appellants have the better position.
Although claim 8 recites that “the frame body [is] rotatable about
rotational axis extending along the central axis,” it also recites “a frame body
extending along a central axis of the frame from the first end toward a
second end having a second cross-sectional area smaller than the first cross
sectional area.” Thus, the frame is rotatable about the rotational axis
extending along the central axis of the frame, as opposed to any other
rotation axis belonging to the claimed patient support system or bed. This is
consistent with Appellants’ description of Figure 6, in which “the RF coil
300 can be rotated about the rotational axis 328.” (See Spec. Fig. 6,1 58.)
We thus agree with Appellants that
the Examiner stated that “Applicants have not properly claimed
the invention to actually limit the rotation of the imaging coil
with respect to a proper reference point.” Final Office Action, p.
5. Again, Appellant is unsure how to address this assertion, other
than to say that the claim language clearly recites that the frame
body is rotatable about a rotational axis which extends along the
central axis. See, Claim 8. This clearly provides the required
structure by stating that the frame body rotates about an axis, and
that rotational axis extends along the central axis of the frame.
(Br. 17.) “The protocol of giving claims their broadest reasonable
interpretation during examination does not include giving claims a legally
incorrect interpretation.” In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir.
2009). Even if the claim limitation in question partly invokes functional
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terminology, the structure that is recited must still be capable of performing
the recited function. On this record, the Examiner did not establish an
evidentiary basis to support a conclusion that the cited references teach or
make obvious a frame body that is capable of rotating about its rotational
axis. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) and In re
Swinehart, 439 F.2d 210, 213 (CCPA 1971).
We thus reverse the rejection of claim 8 based on Su ’717, Su ’962,
Su ’ 178, and Chowdhury. Because they depend from claim 8, we reverse
the rejection claims 9—29 as well.
Claim 7:
Because Appellants do not argue the rejection of this claim, we
summarily affirm the rejection of claim 7 over Su ’717, Su ’962, Su ’178,
and Chowdhury.
REJECTION IV
Claim 17 depends from claim 8. Based on the combination of Su
’717, Su ’962, Su ’178, Chowdhury, and Eydelman, the Examiner concludes
that it would have been obvious to “include using the coil as both a transmit
coil and receive coil so that two separate coils do not have to be used for the
transmit and receive operation (col. 1, lines 7—10)” as recited in claim 17.
(Final Act. 16.) The Examiner, however, failed to establish that Eydelman
makes up for the deficiency in the combination of Su ’717, Su ’962, Su ’178,
and Chowdhury as discussed above with respect to claim 8.
We thus reverse the alternative rejection of claim 17 over Su ’717, Su
’962, Su ’178, Chowdhury, and Eydelman.
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CONCLUSION OF LAW
We affirm the rejection of claims 1—3, 6, and 21 under 35 U.S.C.
§ 103(a) over Su ’717, Su ’962, and Su ’178. We reverse the rejection of
claims 4, 5, and 20 over Su ’717, Su ’962, and Su ’178.
We affirm the rejection of claim 4 under 35 U.S.C. § 103(a) over Su
’717, Su ’962, Su ’178, and Eydelman.
We affirm the rejection of claim 7 under 35 U.S.C. § 103(a) over Su
’717, Su ’962, Su ’178, and Chowdhury. We reverse the rejection of claims
8—19 over Su ’717, Su ’962, Su ’178, and Chowdhury.
We reverse the rejection of claim 17 under 35 U.S.C. § 103(a) over Su
’717, Su ’962, Su ’178, Chowdhury, and Eydelman.
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)(iv).
AFFIRMED-IN-PART
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