Ex Parte Graw

Patent Trial and Appeal Board

Apr 20, 2015

10383280 (P.T.A.B. Apr. 20, 2015)

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.
10/383,280 03/07/2003 Ansgar Graw 2003P03416 US 1853
7590 04/20/2015
Siemens Corporation
Intellectual Property Department
170 Wood Avenue South
Iselin, NJ 08830
EXAMINER
PARK, PATRICIA JOO YOUNG
ART UNIT PAPER NUMBER
3777
MAIL DATE DELIVERY MODE
04/20/2015 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 ANSGAR GRAW
________________

Appeal 2014-006747
Application 10/383,280
Technology Center 3700
________________

Before JENNIFER D. BAHR, PHILLIP J. KAUFFMAN, and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 8, 10‒14, and 19‒23. App. Br. 1. Claims 1‒7, 9, and
15‒18 were canceled. App. Br. 1. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 This application was the subject of prior Appeal No. 2010-004742, mailed
June 8, 2012, which affirmed the Examiner’s rejection of claims 8 and 10‒
18 involving a different primary reference.

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Application 10/383,280

THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to diagnostic imaging
equipment, and more particularly relates to those parts of diagnostic imaging
equipment that physically support the patient while the patient is undergoing
an imaging study.” Spec. 1:4‒7. Independent claim 8, reproduced below, is
illustrative of the claims on appeal:
8. A nuclear radiation imaging system comprising:
a patient support having a patient chair, a base, and a
joint connected at one end to the base and at the other end to the
patient chair, said patient chair having a relatively vertical
loading position from which a patient is loaded into said patient
chair, and a relatively horizontal imaging position for imaging
of a patient loaded into said patient chair, wherein said patient
chair pivots about said joint from said relatively vertical loading
position to said relatively horizontal imaging position after said
patient has been loaded into said patient chair from said
relatively vertical loading position;
a gantry; and
a pair of nuclear radiation detectors mounted at right
angles to each other, said pair of detectors being movably
mounted to the gantry such that the pair of detectors may be
moved from a patient loading position enabling a patient to be
loaded into said patient chair while in said relatively vertical
loading position, wherein said patient loading position of said
pair of detectors does not enable imaging of a patient, to a
patient imaging position enabling a patient to be imaged by said
pair of detectors, wherein said patient imaging position of said
pair of detectors does not enable loading of a patient into said
patient chair from said relatively vertical loading position.
REFERENCES RELIED ON BY THE EXAMINER
Yoshida US 5,008,624 Apr. 16, 1991
Kulpa US 5,249,838 Oct. 5, 1993
Fleury US 5,594,251 Jan. 14, 1997
Maor US 5,811,813 Sept. 22, 1998
2

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Application 10/383,280

Cabral US 6,217,214 B1 Apr. 17, 2001
Damadian ’5742 US 6,934,574 B1 Aug. 23, 2005
Damadian ’0083 US 7,123,008 B1 Oct. 17, 2006

THE REJECTIONS ON APPEAL
Claims 8, 19, and 21 are rejected under pre-AlA 35 U.S.C. § 103(a) as
unpatentable over Maor and Damadian ’008. Final Act. 5.
Claims 10 and 11 are rejected under pre-AlA 35 U.S.C. § 103(a) as
unpatentable over Maor, Damadian ’008, and Yoshida. Final Act. 7.
Claims 10 and 12‒14 are rejected under pre-AlA 35 U.S.C. § 103(a)
as unpatentable over Maor, Damadian ’008, Damadian ’574, and Kulpa.
Final Act. 7.
Claim 20 is rejected under pre-AlA 35 U.S.C. § 103(a) as
unpatentable over Maor, Damadian ’008, and Fleury. Final Act. 8.
Claims 22 and 23 are rejected under pre-AlA 35 U.S.C. § 103(a) as
unpatentable over Maor, Damadian ’008, and Cabral. Final Act. 9.
ANALYSIS
Background
Independent claim 8 recites a patient support having a “vertical
loading position” in which the patient is loaded into the radiation imaging
system, and also a “horizontal imaging position” in which the patient is
imaged by the radiation imaging system. Claim 8 further recites a pair of
radiation detectors “mounted at right angles to each other” with the pair
2 Both the Examiner and Appellant identify this reference as “Damadian
’574.” Final Act. 7‒8; App. Br. 4, 10. We do the same.
3The Examiner identifies this reference as “Damadian ’008.” Final Act. 5‒
10. We do the same. Appellant identifies this reference as “Damadian.”
App. Br. 4‒12.
3

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being movably mounted to a gantry. This claim also states that “wherein
said patient loading position of said pair of detectors does not enable
imaging of a patient,” and, conversely, “wherein said patient imaging
position of said pair of detectors does not enable loading of a patient.”
Appellant’s Specification identifies a problem with right-angle
detectors (as recited here) being that “a detector 46 may be in the way of
patient chair 52 when it is moved from loading to imaging position.” Spec.
5:15‒21. To resolve this problem, Appellant’s Specification states that “the
detector 46 may have to be moved to a loading position to allow patient
access to the patient chair 52 and to allow the patient chair 52 to be moved
into imagining position.” Spec. 5:21‒23. For one embodiment, Appellant’s
Specification states that “any degree of freedom [of movement] may be
incorporated into the gantry 48 and detector 46.” Spec. 5:26‒27. In another
embodiment (see Figures 10 and 11), Appellant’s Specification states that
“base unit 108 [i.e., the device supporting detector 104] may move toward
and away from the patient support 106,” and also that detector 104 is
mounted to the base unit via an armature in such a way that both the
armature and the detector may separately rotate. Spec. 5:28‒6:1.
Appellant’s Specification states that “[t]hese three freedoms of movement
allow the detector[] 104 to be placed at any needed height and distance from
the patient.” Spec. 6:2‒3. Appellant’s Specification also describes a
“patient chair 122 [that] may rotate.” Spec. 6:8. No other discussion is
provided in Appellant’s Specification regarding the claim limitations of
patient loading but not patient imaging, and, conversely, patient imaging but
not patient loading, other than involving the relative movement between the
imaging device/detector and the patient chair. See Spec. 6:11‒32. Nor does
4

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Appellant indicate that these limitations are achieved other than via the
movement of these devices.
The rejection of claims 8, 19, and 21
as unpatentable over Maor and Damadian ’008
The Examiner primarily relies on Maor for disclosing a movable
right-angle, gantry mounted, imaging system that enables a patient to be
loaded in a vertical position but during which the detector is such that it
“does not enable imaging,” and conversely, enables a patient to be imaged
by the detectors but that such arrangement “does not enable loading of a
patient.” Final Act. 5‒6. However, claim 8 also recites a patient support
“having a chair, a base, and a joint connected at one end to the base and at
the other end to the patient chair.” The Examiner acknowledges that “Maor
fails to explicitly disclose the patient support used in the nuclear radiation
system” (Maor’s discussion of a patient support is limited) and relies on
Damadian ’008 for disclosing same. Final Act. 6. The Examiner also finds
that Damadian ’008 additionally discloses a “vertical loading position,” a
“horizontal imaging position,” a “patient chair pivoting about the joint,” and
an “imager gantry.” Final Act. 6. The Examiner concludes that it would
have been obvious to “substitute the patient support of a patient chair fixed
to an imager gantry base of Damadian ’008 for the patient support of Maor
to obtain the predictable result of supporting the patient.” Final Act. 6. The
Examiner also addresses how it would have likewise been obvious “to have
a pivotable patient support for the purpose of viewing changes in position of
a body structure due to distortion[s]” caused by “the influence of gravity
(col. 5 line[s] 55‒58 of Damadian ’008).” Final Act. 6‒7.
Maor Figure 1 clearly depicts right-angle gamma cameras 12 and 13
having many different degrees of movement with respect to the patient. In
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fact, Maor’s arrows 24, 26, 28, 30, and 31 illustrate five distinct freedoms of
movement these cameras have. See also Maor 3:50‒62. Maor further
discusses the ability to move the “L-shaped assembly” “closer to the patient”
as well as “orbiting the cameras about the patient” as needed (such
movement including moving “the L-shaped assembly horizontally or
vertically”). Maor 3:54; 3:62‒65. In fact, Maor states that “control of the
gamma camera unit to describe the motions indicated is well known to those
skilled in the art.” Maor 3:66‒67. While Maor describes patient imaging
“in any patient position” (Maor 4:38), Maor is somewhat wanting regarding
a discussion of patient loading (although it is not disputed that a patient must
be loaded onto a support in order to image the patient). However, Damadian
’008, relied on by the Examiner for its patient support, describes a patient
loading position where “the carriage optionally may be disposed so as to
position the patient support outside of the magnet” (Damadian ’008,
11:28−29). From the above, the Examiner ascertained that Maor and
Damadian ’008, when combined for the reasons stated, disclose both patent
loading and patient imaging and that these positions are accomplished via
relative movement between the patient chair and the imaging
device/detector. Final Act. 5‒7.
The Examiner’s findings are not unreasonable. We have reviewed
Appellant’s arguments and contentions pertaining to this rejection in detail
(see Appeal Br. 4‒10 and Reply Br. 1‒3) and we are not persuaded that the
numerous degrees of movement expressed and illustrated in Maor and
Damadian ’008 fail to teach or suggest those same degrees of movement
described in Appellant’s Specification, and recited in independent claim 8.
Stated another way, Appellant does not persuasively indicate how the prior
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art combination of Maor and Damadian ’008 is not “‘made to,’ ‘designed to’
or ‘configured to’ perform the claimed function.” Reply Br. 1 (referencing
In re Giannelli, 739 F.3d 1375 (Fed. Cir. 2014). In other words, Appellant’s
arguments directed to Maor’s lack of “patient loading or patient imaging
positions” and the lack of a reason to “‘substitute’” Damadian ’008’s patient
support “for the undisclosed ‘patient support’ of Maor” (App. Br. 6; see also
id. at 8 and Reply Br. 2) is not persuasive of Examiner error based on the
above findings and conclusions. Other assertions by Appellant, such as the
modification being “unsatisfactory for its intended purpose” (App. Br. 7;
Reply Br. 2), or challenging the Examiner’s finding that “having the ability
to acquire images in any patient position does not equate to not having the
ability to be in a position which does not enable imaging of a patient” (App.
Br. 8), are likewise not persuasive for the reasons expressed by the
Examiner. Ans. 9. Appellant’s remaining arguments (directed to Damadian
’008 pertaining to a Magnetic Resonance Imaging (“MRI”) apparatus4 (App.
Br. 8‒9, 10, Reply Br. 3), and the discussion of Damadian ’008’s Figures 1
and 8 (App. Br. 9; Reply Br. 3)) are likewise not persuasive that the
Examiner erred in rejecting claim 8 based on substituting the patient support
of Damadian ’008 in place of the limited disclosure of same in Maor in order
to obtain “the predictable result of supporting the patient” and also to
provide a “pivotable patient support” that can accommodate changes in body
positions due to the influence of gravity. Final Act. 6‒7.
4 This argument requires a special note in that Appellant’s own Specification
acknowledges that Appellant’s device can be used with MRI systems. Spec.
7:4‒6.
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Appellant does not separately argue dependent claims 19 and 21 (both
of which depend directly from claim 8) and hence, Appellant’s contentions
discussed supra regarding errors made by the Examiner in rejecting claims
8, 19, and 21 are likewise not persuasive.
The rejection of (a) claims 10 and 11 as unpatentable over Maor,
Damadian ’008, and Yoshida; (b) claims 10 and 12‒14 as unpatentable over
Maor, Damadian ’008, Damadian ’574, and Kulpa; and (c) claim 20 as
unpatentable over Maor, Damadian ’008, and Fleury
While the above claim sets are rejected under different combinations
of prior art, Appellant groups the rejections together and contends that the
rejections are “improper and unsustainable” because “[n]one of the
secondary prior art references overcome the basic deficiency” of claim 8
with respect to Maor and Damadian ’008. App. Br. 10; Reply Br. 4. In view
of the above, Appellant’s contention is not persuasive the Examiner erred in
rejecting these claims based on their respectively identified prior art.
The rejection of claims 22 and 23
as unpatentable over Maor, Damadian ’008, and Cabral
In addressing the rejection of the only other independent claim (i.e.,
claim 22), Appellant contends that the rejection is also “in error and properly
subject to reversal.” App. Br. 11; Reply Br. 4. Appellant contends that this
is the case “for the reasons explained above” and Appellant again contends
that “Maor does not disclose a system where patient imaging is not enabled
when a patient is in a relatively vertical position in a support.” App. Br. 11.
As previously indicated, this contention is not persuasive of Examiner error.
Furthermore, in addressing the additional art to Cabral, Appellant
acknowledges that Cabral “may disclose moving an imager from a patient
loading position to a patient imaging position, wherein the patient loading
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position may not enable imaging of a patient.” App. Br. 11; Reply Br. 4.
Nevertheless, Appellant contends that Cabral’s disclosure relates to a
specific “x-ray bone densitometry apparatus” and that this disclosed
radiation imaging usage “does not mean that it would have been obvious to
modify Maor to incorporate a patient loading position in which imaging of a
patient is not enabled.” App. Br. 11; Reply Br. 4. Appellant’s attempt to
associate the field of use of Cabral with what Cabral admittedly discloses is
not persuasive that the Examiner erred in concluding that combining Cabral
with the teachings of Maor and Damadian ’008 would have been obvious
“for the purpose of making patient loading particularly convenient (col. 9
line 32‒34 of Cabral).”5 Final Act. 10.
In summary, and as previously indicated, Appellant’s arguments in
view of the teachings of Maor, Damadian ’008, and Cabral, whether
presented in Appellant’s Appeal Brief (see App. Br. 4‒12) or in Appellant’s
Reply Brief (see Reply Br. 1‒6), are not persuasive of Examiner error.
However, Appellant has also submitted, under the heading
“Secondary Considerations,” what is identified as “[s]econdary evidence
of non-obviousness in the form of Exhibit 1 filed with the RCE under Rule
114 [and which] is also part of the record.” App. Br. 12. Appellant
contends that this Exhibit 1 “is a brochure of the Siemens c.cam nuclear
cardiology system, which represents the commercialization of the claimed
invention” and invites the Examiner to view “page 4 of the brochure” where
5 Appellant also contends that “it appears that the only reason Cabral has
been cited is as a result of an automated search for the keyword phrase
‘patient loading’ as appears in the text of Cabral. Cabral is otherwise
irrelevant to the claimed invention, irrelevant to Maor and irrelevant to
Damadian.” App. Br. 12.
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“the Siemens c.cam has been internationally recognized for its design
innovation by many organizations.” App. Br. 12. Appellant also identified
“the following comments on the c.cam by independent third parties [which]
were presented in the Rule 114 amendment filed in the present application.”
App. Br. 12. No further discussion of this submission or these comments is
provided by Appellant (in other words, Appellant does not discuss this
assertion of secondary consideration in the Reply Brief).
We can find no indication that the Examiner ever addressed what was
pointed out and submitted by Appellant. Our reviewing court has repeatedly
held that evidence relating to all four Graham factors—including objective
evidence of secondary considerations—must be considered before
determining whether the claimed invention would have been obvious to one
of skill in the art at the time of invention. See Transocean Offshore
Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349
(Fed. Cir. 2012); see also Mintz v. Dietz & Watson, Inc., 679 F.3d 1372,
1379 (Fed. Cir. 2012) (collecting cases). See also In re Piasecki, 745 F.2d
1468, 1472 (Fed. Cir. 1984) (discussing the requirement to re-evaluate all
facts in evidence when prima facie obviousness is established and evidence
is submitted in rebuttal) (citing In re Rinehart, 531 F.2d 1048, 1052 (CCPA
1976)).
Accordingly, despite our analysis above regarding the art relied upon,
because there is no indication that the submission or the indicated comments
were ever considered, we reverse the Examiner’s rejections of claims 8, 10‒
14, and 19‒23 strictly for this reason.

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DECISION
The Examiner’s rejections of claims 8, 10‒14, and 19‒23 are
reversed.
REVERSED
llw
11