Ex Parte Gleich

Patent Trial and Appeal Board

Mar 26, 2013

10552808 (P.T.A.B. Mar. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte BERNHARD GLEICH
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Appeal 2011-006617
Application 10/552,808
Technology Center 3700
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Before TONI R. SCHEINER, STEPHEN WALSH, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a device
for examination and use of an electrical field in a magnetic gradient field.
The Examiner has rejected the claims as obvious. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.

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Application 10/552,808

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STATEMENT OF THE CASE
Claims 1-14 are on appeal. Claim 1, the only independent claim on
appeal, is representative and reads as follows:
1. A device (1) for examination and use of an electrical field in
a magnetic gradient field, containing magnetic particles in an
examination area of an object under examination, comprising
a. at least one first arrangement (2) for determining the
spatial distribution of magnetic particles in at least one
examination area of the object under examination, comprising a
means (14) for generating a magnetic field with such a spatial
magnetic field strength profile that a first sub-zone with low
magnetic field strength and a second sub-zone with higher
magnetic field strength are produced in at least one examination
area, a means for detecting signals which depend on the
magnetization in the object under examination, especially in the
examination area, influenced by a local change in the particles,
together with a means for evaluating the signals to obtain
information about the, especially time-variable, spatial
distribution of the magnetic particles in the examination area;
and
b. at least one second arrangement (8), comprising at
least one electrical transmit and/or receive unit (6), comprising
at least one voltage generator (22), at least one terminal contact
(18) connected to the voltage generator and applicable and/or
fastenable to an object under examination, and a ground
terminal (20) applicable and/or fastenable to an object under
examination.

The sole rejection before us for review is the Examiner‟s rejection of
claims 1-14 under 35 U.S.C. § 103(a) as allegedly being obvious over
Kraus
1
and Wang.
2

1
Kraus, Jr., et al., US 6,470,220 B1, issued Oct. 22, 2002.
2
Wang, et al., US 6,940,286 B2, issued Sep. 6, 2005.
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Issue
The Examiner finds that “Kraus does not suggest the second
arrangement of Claim 1,” but that this deficiency is cured by Wang (Ans.
4). The Examiner finds that Wang discloses the “at least one second
arrangement, comprising at least one electrical transmits and/or receive unit,
comprising: at least one voltage generator ... and at least one terminal
contact” as recited in claim 1 (id.).
The Examiner does not dispute that Wang fails to disclose a ground
terminal in contact with an object under examination. Rather, the Examiner
finds that the ground terminal element of the second arrangement would
have been an “obvious matter of design choice, as it would have been well
known to one of ordinary skill in the art, to include a ground terminal for
safety reasons so as to not electrocute a patient during examination” (id.).
The Examiner contends that “the claim language does not specify that the
ground terminal must be connected to the object of interest, but rather that it
is applicable and/or fastenable to the object” and “[t]herefore, the claim
language is broad enough to encompass either the connection of the ground
terminal to the patient or the application of the ground terminal within the
vicinity of the patient” (id. at 7).
Appellants contend that there is no evidence presented to substantiate
the Examiner‟s claim that the ground terminal is “merely a design choice”
(App. Br. 7). The Examiner‟s rationale of “preventing electrocution of a
patient would direct one skilled in the art to not connect the ground terminal
to the patient for safety‟s sake; whereas claim 1 specifically features this
connection” (id.). Appellants further contend “the broad interpretation that
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Application 10/552,808

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the ground terminal is applicable within the vicinity of the patient is not
reasonable in view of the specification as filed” (id. at 9).
Notably, ground terminal 20 is shown in Fig. 2. The voltage
present between signal terminal contact 18 and ground terminal
contact is detected by means of a voltage measuring apparatus.
The ground terminal contact 20 is clearly shown in contact, and
not merely in vicinity of the patient.
(Id.)
The issue presented is:
Does the evidence of record support the Examiner‟s finding that the
phrase “ground terminal (20) applicable and/or fastenable to an object under
examination” recited in claim 1 encompasses an embodiment having the
ground terminal merely in vicinity of the patient?
Findings of Fact
The following findings of fact (“FF”) are supported by a
preponderance of the evidence of record.
FF1. Figure 2 of the Specification is reproduced below.

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“FIG. 2 shows a transmit unit 16 of the transmit and receive unit 6 in
the form of a voltage generator 22, as may be used for example for local
conductivity measurement” (Specification 18, ll. 33-34). “[O]nly two
terminal contacts 18 and 20 are shown, of which one is the signal terminal
contact 18 and the other the ground terminal contact 20, which are connected
via leads to a voltage generator 22” (id. at 18, l. 35, to 19, l. 2).
Principles of Law
The Board “determines the scope of claims in patent applications not
solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction „in light of the specification as it would be
interpreted by one of ordinary skill in the art.”‟ Phillips v. AWH Corp., 415
F.3d 1303, 1316 (Fed. Cir. 2005) (quoting In re Am. Acad. of Sci. Tech. Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004). “Importantly, the person of ordinary
skill in the art is deemed to read the claim term not only in the context of the
particular claim in which the disputed term appears, but in the context of the
entire patent, including the specification.” Id. at 1313. See also, In re Hyatt,
211 F.3d 1367, 1372 (Fed. Cir. 2000) (“[D]uring examination proceedings,
claims are given their broadest reasonable interpretation consistent with the
specification.”).
Analysis
We find that the balance of the evidence supports Appellant‟s
position. While the use of both “applicable” and “fastenable” inserts some
ambiguity into claim 1, we find that, when interpreted in light of Figure 2 of
the Specification (see, e.g., FF1) and within the context of claim 1, both
terms refer to the attachment of the ground terminal to the object under
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examination. Specifically, the depiction of the invention in Figure 2 and the
use of the term “fastenable” in the claim supports Appellant‟s argument that
claim 1 specifically features a ground terminal in contact with the object
under examination. The Examiner has not established that the cited
combination of references discloses a ground terminal in contact with the
object under examination as recited in claim 1.
Conclusion of Law
The preponderance of evidence on this record supports the
Examiner‟s finding that the combination of Kraus and Wang fails to render
claim 1 obvious. Claims 2-14 fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii).
SUMMARY
We reverse the rejection of claims 1-14 under 35 U.S.C. § 103(a) as
allegedly being obvious over Kraus and Wang.
REVERSED

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