Ex Parte Graw

Patent Trial and Appeal Board

Sep 30, 2016

11158639 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111158,639 0612212005
28524 7590 10/04/2016
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
FIRST NAMED INVENTOR
Ansgar Graw
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.
2004P03251 USOl 9775
EXAMINER
LAURITZEN, AMANDA L
ART UNIT PAPER NUMBER
3737
NOTIFICATION DATE DELIVERY MODE
10/04/2016 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):
ipdadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANSGAR GRAW
Appeal2014-008165
Application 11/158,639
Technology Center 3700
Before ANNETTE R. REIMERS, THOMAS F. SMEGAL, and
ERIC C. JESCHKE, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-008165
Application 11/158,639
STATEMENT OF THE CASE 1,2
Ansgar Graw (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner's decision to reject under 35 U.S.C. § 103(a): (1) claims 1, 4, 20,
21, 35, 36, 42--45, and 49 as unpatentable over Sugahara (US 5,464,014; iss.
Nov. 7, 1995) and Lavin (US 5,991,947; iss. Nov. 30, 1999); (2) claims 2, 3,
5, 7, 10, 13-15 as unpatentable over Sugahara, Lavin, and Garrard (US
2003/0001097 Al; pub. Jan. 2, 2003); (3) claim 6 as unpatentable over
Sugahara, Lavin, Garrard, and Pearlman (US 5,199,438; iss. Apr. 6, 1993);
and (4) claims 17-19 and 46--48 as unpatentable over Sugahara, Lavin, and
Lomanto (US 6,205,355 Bl; iss. Mar. 20, 2001). Claims 8, 9, 11, 12, 22-34,
and 37--41 have been cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE and enter NEW GROUNDS OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Appellant submitted an Amendment to the claims in the Response After
Final Action. See Response After Final Act. 2-7 (filed Dec. 23, 2013). In the
Advisory Action, the Examiner indicated that the proposed amendment
"[would] be entered." Adv. Act. 1 (mailed Jan. 27, 2014). The claim set
before us for review is the one submitted with the Appeal Brief. See Appeal
Br. 14--17, Claims App.
2 The Examiner addresses priority of the subject application in the Final
Rejection. See Final Act. 6-8 (mailed Oct. 23, 2013). Appellant does not
address priority of the subject application in the Appeal Brief or Reply Brief.
Accordingly, priority of the subject application is not before us for review.
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Application 11/158,639
CLAIMED SUBJECT MATTER
The claimed subject matter relates to "medical imaging systems."
Spec. 1 :8, Figs. 2 and 3A.
Claims 1, 35, and 43 are the independent claims on appeal. Claims 1
are 35 are illustrative of the claimed subject matter and recite:
1. A medical imaging system with an integrated body monitoring
device, comprising:
a movable platform for supporting a patient during image
acquisition;
a connector mounted to the movable platform and configured to
connect to electrodes attached to the patient via leads, the connector
being mounted such that it moves together with the movable platform;
an image acquisition device for the acquisition of images of the
patient upon the platform;
a body monitoring device for the monitoring of a body function
of the patient during image acquisition via signals from said
electrodes, said body monitoring device being configured to receive
said signals through a communication medium coupled to said
connector;
a control system for controlling operation of both said image
acquisition device and said body monitoring device; and
a user interface, coupled to said control system, from which a
user is able to operate both said image acquisition device and said
body monitoring device.
35. A medical imaging system with an integrated body monitoring
device, comprising:
a movable platform for supporting a patient during image
acquisition;
an image acquisition device for the acquisition of images of the
patient upon the platform;
a support mechanism for said image acquisition device; and
a body monitoring device mounted to the movable platform and
configured to receive monitoring signals from a wire coupled to the
patient and to process said signals for monitoring of a body function
of the patient during image acquisition.
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Application 11/158,639
ANALYSIS
Obviousness over Sugahara and Lavin
Claims 1, 4, 20, and 21
The Examiner finds that Sugahara discloses the limitations of claim 1
except the moveable platform having "a connector (such as an electrical
outlet) or a communication medium (such as a wired or wireless
communications device) coupled with the connector." Final Act. 12-14.
The Examiner finds Lavin teaches a moveable platform "provided
with electrical outlets on the platform front end (along with electrical
utilities) that are capable of connection with ECG electrodes." Id. at 14.
Best seen in Figure 5 of Lavin, electrical alternating current power outlets
1343 are located on a front end panel of the moveable platform. See Final
Act. 14.
The Examiner concludes that it would have been obvious "to modify
the patient table of the imaging/body monitoring system of Sugahara with
that of [Lavin], to include electrical outlets coupled with communications
ports provided on the moveable patient support, to minimize the need for
individual connection of accessory devices to wall outlets and to provide
movement of accessory lines with the movement of the table." Id. In other
3 As pointed out by Appellant (see Appeal Br. 9; see also Reply Br.4), the
electrical outlet 92 and communications port 94 in Figure 4 of Lavin,
explicitly cited by the Examiner in the Final Action (see Final Act. 14; see
also Ans. 16), are not located on the front end of the plaiform opposite the
umbilicus; rather, these features are located on the exterior of the mobile
medical unit and connect to the umbilicus. Note feature 68 in Figure 1 of
Lavin.
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Application 11/158,639
words, the Examiner's proposed combination mounts electrical outlets with
communication ports to a patient table thereby replacing the need for wall
outlets. See Appeal Br. 6; see also Final Act. 14; see also Ans. 14.
Appellant contends that the proposed modification does not result in
the claimed invention. See id. at 5, 7. Specifically, Appellant contends:
[T]he claimed invention still would not be attained even if the
modification as proposed in the final rejection were to be made. Claim
1 requires a connector mounted to a movable platform and configured
to connect to electrodes attached to the patient via leads.
Id. at 7; see also Reply Br. 6.
The Examiner does not respond to Appellant's argument in the
Examiner's Answer. However, the Examiner appears to address this point at
other stages of prosecution. On page 2 of the Advisory Action, the
Examiner states "[t]he connector(s) of [Lavin], even when modifying the
table of Sugahara, are fully CAP ABLE OF connecting to electrodes attached
to a patient." The Examiner also maintains the interpretation of "connector"
under 35 U.S.C. 112, 6th paragraph, to include electrical power outlets is
valid. See Final Act. 3; see also Ans. 10, 17.
We agree with Appellant that the Examiner has not demonstrated that
the proposed combination results in the claimed invention. As pointed out
by Appellant, claim 1 requires that the mounted connector be "configured to
connect to electrodes attached to the patient via leads." Appeal Br. 7. The
Examiner finds that Lavin's electrical power outlets mounted onto
Sugahara's patient platform are "fully capable" of connecting to electrodes,
but the Examiner does not articulate any further reasoning explaining how
this function is achieved. Adv. Act. 2. Further, as pointed out by Appellant
on page 7 of the Appeal Brief, claim 1 requires patient leads to be coupled to
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Application 11/158,639
a monitoring device. Specifically, claim 1 recites "a body monitoring device
for the monitoring of a body function of the patient during image acquisition
via signals from said electrodes, said body monitoring device being
configured to receive said signals through a communication medium coupled
to said connector." The Examiner does not explain how Sugahara's device,
if the connector was a powered outlet, could perform this function (i.e., how
Sugahara's leads could be connected to electrodes on a patient and a
powered outlet while still being able to transmit signals of a body function to
a body monitoring device). Also, as pointed out by Appellant, connecting
the leads to a powered outlet would destroy the device for its intended
purpose. See Reply Br. 8.
Appellant further contends that the Examiner's interpretation of the
claim limitation term "connector" under 35 U.S.C. 112, 6th paragraph to
include an electrical power outlet is improper. Reply Br. 4. Appellant
contends that Lavin does not disclose a connector as claimed. Specifically,
Appellant contends:
[T]he electrical outlets disclosed by Lavin are 115 volt AC outlets. To
the contrary, the connectors of the present invention are not electrical
power outlets. They are electrical connectors in the sense that ECG
electrodes attached to the patient are connected to the connectors, from
which electrical impulses generated by the heart are forwarded to
monitoring equipment. The Examiner apparently misconstrued the term
"electrical connector" in the specification as meaning an electrical
power outlet.
Id.; see also Spec., page 9, 11. 14--17.
If the claim limitation invokes 35 U.S.C. § 112, sixth paragraph, the
claim limitation must "be construed to cover the corresponding structure,
material, or acts described in the specification and equivalents thereof." 35
U.S.C. § 112, sixth paragraph; see also In re Donaldson Co., 16 F.3d 1189,
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Application 11/158,639
1193 (Fed. Cir. 1994) (en bane). Upon review of the Specification and the
figures (see Spec., page 911. 14--17; see also Fig. 3, at 141), a person of
ordinary skill in the art would not have understood Lavin's alternating
current power outlet to be a corresponding structure or equivalent of an
"electrical connector or outlet" into which ECG wires are plugged. We
agree with Appellant that the Examiner has misinterpreted the claim
limitation "connector" to include an electrical power outlet. For these
reasons, the Examiner has not properly articulated a rejection in which the
proposed combination includes the claimed connector and the function of
the connector being configured to connect to electrodes attached to the
patient via leads.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of claims 1, 4, 20, and 21 as unpatentable over
Sugahara and Lavin.
Claims 35, 36, 42-45, and 49
Claim 35 requires "a body monitoring device mounted to the movable
platform." See Appeal Br. 16, Claims App. The Examiner states that
display monitor 34/34a in Sugahara, mounted to the wall, can be considered
"mounted with the moveable platform, albeit in a configuration that is
indirect." Ans. 17. As pointed out by Appellant, it is unreasonable to
interpret an ECG mounted to the wall as being mounted to the movable
platform. Reply. Br. 7. Further, the lead wires of the ECG cannot be
considered as the body monitoring device as alleged by the Examiner,
because claim 35 also requires that the body monitoring device be
"configured to receive monitoring signals from a wire coupled to the
patient." See Appeal Br. 16, Claims App. (emphasis added). Thus, it would
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be unreasonable to interpret the leads as the body monitoring device,
because the lead wires cannot receive monitoring signals from themselves.
Further, the Examiner's discussion of Lavin's EKG leads being the claimed
body monitoring device is unpersuasive. Ans. 17-18. The Examiner has
stated that Lavin is only being relied upon for adding electrical outlets to
patient platforms and no modification of Sugahara's leads is required
("Lavin is not relied upon to modify anything BUT the table to provide one
or more connector(s), as claimed, (i.e., electrical outlets) mounted to the
patient platform"). Adv. Act. 2; see also Final Act. 3.
For this reason, we agree with Appellant that the Examiner has not
met the burden of showing that Sugahara and Lavin disclose a body
monitoring device mounted to the movable platform, and has apprised us of
error.
Similarly, claim 43 requires "a body monitoring device mounted in or
on the support mechanism." See Appeal Br. 17, Claims App. As pointed out
by Appellant (see Appeal Br. 11; see also Reply Br. 7), the Final Action and
Answer failed to make a prima facie case of obviousness as it has not shown
where this limitation is taught by Sugahara as modified by Lavin. See Final
Act. 15. The Examiner does not address this specific claim limitation
requiring the body monitoring device to be mounted in or on the support
mechanism anywhere in the Final Action or Answer. See Final Act. 15; see
also Ans. 18.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of claims 35, 36, 42--45, and 49 as unpatentable over
Sugahara and Lavin.
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Application 11/158,639
Obviousness over Sugahara and Lavin and any of Garrard,
Pearlman, and Lomanto
Claims 2, 3, 5-7, 10, 13-15, 17-19, and 46--48
The Examiner's rejections of claims 2, 3, 5, 7, 10, 13-15 as
unpatentable over Sugahara, Lavin, and Garrard; claim 6 as unpatentable
over Sugahara, Lavin, Garrard, and Pearlman; and claims 1 7-19 and 46-48
as unpatentable over Sugahara, Lavin, and Lomanto are each based on the
same unsupported findings and conclusions discussed above in reference to
claims 1and45. See Final Act. 16-18. The Examiner does not rely
Garrard, Pearlman, or Lomanto in any way that would cure the deficiencies
discussed supra. For reasons similar to those discussed above for claims 1
and 45, we likewise do not sustain the Examiner's rejection of claims 2, 3, 5,
7, 10, 13-15 as unpatentable over Sugahara, Lavin, and Garrard; claim 6 as
unpatentable over Sugahara, Lavin, Garrard, and Pearlman; and claims 1 7-
19 and 46-48 as unpatentable over Sugahara, Lavin, and Lomanto.
NEW GROUNDS OF REJECTION
Obviousness over Sugahara
Pursuant to our authority under 37 C.F.R. § 41.50(b ), we reject claims
1, 35, and 43 under 35 U.S.C. § 103(a) as unpatentable over Sugahara.
Claim 1
As already set forth by the Examiner, Sugahara discloses claim 1
substantially as claimed. 4 Sugahara discloses a mounted connector (see Fig.
4 "[T]he primary reference to Sugahara is relied upon for disclosure of 1) a
moveable patient platform in conjunction with 2) ECG monitoring of a patient
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la, "preamplifier" 6). The connector is configured to connect to electrodes
( 5) attached to the patient via leads ( 4 leads are connected to electrodes on
Fig. la). The body monitoring device (ECG) is configured to receive said
signals through a communication medium (see wire at "B" that extends from
preamplifier 6 to ECG 7) coupled to the connector. Sugahara discloses the
claimed invention except Sugahara does not explicitly disclose that the
mounted connector "moves together with the movable platform." Although
it is not specifically discussed in Sugahara, it would have been obvious to
one of ordinary skill in the art at the time the invention was made to
construct the device of Sugahara having the patient platform with the
mounted connector being able to move vertically, allowing the patient to
more easily get on or off the platform. Further, Appellant's Specification,
on page 9, lines 18-23, suggests that up-and-down movement in a generally
vertical direction is known in the art.
Claims 35 and 43
Sugahara discloses claim 3 5 substantially as claimed, as discussed
supra. See note 4. A support mechanism (1) houses the image acquisition
device. Further, the preamplifier 6 of Fig. la may be considered as part of
the body monitoring device 5 as recited in claim 35 (note claim 35 does not
(in which the ECG system is the 'body monitoring device,' as claimed) that
includes 'electrodes attached to the patient via leads' as claimed in and
disclosed in Sugahara. Third, not particularly contested by Appellant,
Sugahara is additionally relied upon for disclosure of the 3) image acquisition
device, 4) control system, 5) user interface." Adv. Act. 2
5 Appellant's Specification on page 12, lines 1-7 supports the interpretation
that a component of the ECG may be considered as the body monitoring
device for claims 35 and 43 ("an ECG device 140, which may include some
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require "a connector" as in claim 1 ). Preamplifier 6 is mounted to the
platform, which would have been obvious to modify to move vertically, as
discussed supra. Preamplifier 6 is configured to receive monitoring signals
from a wire (leads coupled to electrodes 5) coupled to the patient and to
process said signals (from electrodes 5) for monitoring of a body function of
the patient during image acquisition.
Similarly, regarding claim 43, Sugahara discloses the claimed
invention including a body monitoring device (a component of the ECG,
preamplifier 6 is considered as the body monitoring device as recited in
claim 43). Preamplifier 6 is configured to receive monitoring signals from a
wire coupled to the patient and to process said signals for monitoring of a
body function of the patient during image acquisition. Sugahara fails to
disclose that the body monitoring device is mounted on the support
mechanism 1; rather, Sugahara's body monitoring device is shown mounted
to the platform/under the platform (Fig. la) or unmounted (Fig. 4, at 49). It
would have been obvious to one having ordinary skill in the art at the time
the invention was made to relocate Sugahara's body monitoring device 6 to
be mounted on the support structure 1 instead of being mounted to the
platform/under the platform (Fig. la) or unmounted, since it has been held
that rearranging parts of an invention involves only routine skill in the
art. In reJapikse, 181F.2d1019 (CCPA 1950). Further, the rearrangement
would not alter the functionality of the device.
Accordingly, for the reasons discussed supra, we determine that
independent claims 1, 35, and 43 are unpatentable over the teachings of
or all of the components of a standard ECG device (such as, e.g., a processor,
ECG hardware, ECG software, etc.")).
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Application 11/158,639
Sugahara.
DECISION
We REVERSE the decision of the Examiner to reject claims 1, 4, 20,
21, 35, 36, 42--45, and 49 as unpatentable over Sugahara and Lavin.
We REVERSE the decision of the Examiner to reject claims 2, 3, 5, 7,
10, and 13-15 as unpatentable over Sugahara, Lavin, and Garrard.
We REVERSE the decision of the Examiner to reject claim 6 as
unpatentable over Sugahara, Lavin, Garrard, and Pearlman.
We REVERSE the decision of the Examiner to reject claims 17-19
and 46--48 as unpatentable over Sugahara, Lavin, and Lomanto.
We enter new grounds of rejection, pursuant to 37 C.F.R. § 41.50(b),
of claims 1, 35, and 43 under 35 U.S.C. § 103(a) as set forth supra. 6
This decision contains NEW GROUND OF REJECTION pursuant to
37 C.F.R. § 41.50(b), which provides that "new ground[s] of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) provides "new ground[s] of rejection pursuant to
this paragraph shall not be considered final for judicial review." 37 C.F.R.
§ 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new grounds of rejection to avoid termination of
the appeal as to the rejected claims:
6 The exercise of authority under 3 7 C.F .R. § 41.50(b) to enter a new ground
of rejection is discretionary. As such, with respect to the remaining pending
claims in the present application, no inference should be drawn from a failure
to exercise that discretion. See Manual of Patent Examining Procedure
§ 1213.02, 9th Ed. (March 2014).
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Application 11/158,639
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
REVERSED; 37 C.F.R. § 41.50(b)
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