Ex Parte Hamill et alDownload PDFPatent Trial and Appeal BoardFeb 18, 201612558159 (P.T.A.B. Feb. 18, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/558, 159 09/11/2009 28524 7590 02/22/2016 SIEMENS CORPORATION INTELLECTUAL PROPERTY DEPARTMENT 3501 Quadrangle Blvd Ste 230 Orlando, FL 32817 FIRST NAMED INVENTOR James J. Hamill 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. 2008Pl 7473US01 5880 EXAMINER CARREIRO, CAITLIN ANN ART UNIT PAPER NUMBER 3772 NOTIFICATION DATE DELIVERY MODE 02/22/2016 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 JAMES J. HAMILL and CARL ERIC ARNSDORFF Appeal2013-008181 Application 12/558,159 1 Technology Center 3700 Before STEFAN STAICOVICI, BRANDON J. WARNER, and RICHARD H. MARSCHALL, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE James J. Hamill and Carl Eric Amsdorff (Appellants) appeal under 35 U.S.C. § 134 from the Examiner's decision finally rejecting claims 1-20. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). SUMMARY OF DECISION We REVERSE. According to Appellants, the real party in interest is Siemens Medical Solutions USA, Inc. Appeal Br. 1 (filed Nov. 19, 2012). Appeal2013-008181 Application 12/558,159 INVENTION Appellants' invention relates to "a constraint for constraining a patient during a medical procedure, for example an imaging process." Spec. i-f 2 and Fig. 5. Claims 1 and 11 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A constraint to constrain a patient with respect to a field of view of a medical imaging procedure, the constraint compnsmg: a main body having a substantially arcuate shape, a first end, and second end, said main body being adapted to constrain said patient to lie within a determinable area with respect to said field of view, so as to reduce artifacts in image reconstruction; and at least one coupler at about one of the first end or second end of the main body with said coupler adapted to attach the constraint to a bed or treatment pallet prior to the medical imaging procedure. REJECTIONS The following rejections are before us for review: 2 I. The Examiner rejected claims 1, 9--11, 19, and 20 under 35 U.S.C. § 102(b) as anticipated by Mun (US 2002/0196906 Al, pub. Dec. 26, 2002). II. The Examiner rejected claims 2-5 and 12-15 under 35 U.S.C. § 103(a) as unpatentable over Mun and D' Avignon (US 3,545,739, iss. Dec. 8, 1970). 2 The Examiner's objection to Appellants' Drawings (see Final Act. 2, mailed June 19, 2012) is a petitionable matter and not an appealable matter and thus, is not within the jurisdiction of the Board. See In re Mindick, 371 F.2d 892, 894 (CCPA 1967). 2 Appeal2013-008181 Application 12/558,159 III. The Examiner rejected claims 8 and 18 under 35 U.S.C. § 103(a) as unpatentable over Mun and Salatka (US 2002/0134390 Al, pub. Sept. 26, 2002). IV. The Examiner rejected claims 6, 7, 16, and 17 under 35 U.S.C. § 103(a) as unpatentable over Mun and Smith (US 2005/0083207 Al, pub. Apr. 21, 2005). ANALYSIS The anticipation rejection The Examiner finds that Mun's shield 28 constitutes a constraint, as called for by each of independent claims 1 and 11. See Final Act. 4---6 (citing Mun, Fig. 1). According to the Examiner, Mun's shield 28 "inherently restricts a patient within a determinable area of the field of view of the CT scanner in order to ensure that imaging will be successful." Ans. 18 (mailed Apr. 8, 2013). Specifically, the Examiner explains that: 1'. Jr • • ,. 11 1 ,.. • • 1 ,1 ,.. iv1un 1s spec1nca11y usea ror 1magmg ana rnererore, it can be inferred that when in use, the device restricts movement of a patient within a determinable area of the field of view of the CT scanner because without doing so the imaging would not be successful because during imaging a patient needs to be positioned within the field of view of the scanner in order for imaging to be successful, and therefore, a device used for positioning a patient for such imaging, like the device of Mun, inherently restricts a patient within a determinable are of the field of view of the CT scanner in order to ensure that imaging will be successful. Id. (emphasis added). 3 Appeal2013-008181 Application 12/558,159 In relying upon the theory of inherency, the Examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). In this case, the question raised is whether Mun's shield 28, as shown in Mun's Figure 1, necessarily includes a constraint that constrains a patient to lie within a determinable area with respect to a field of view, as called for by each of independent claims 1 and 11. While the Examiner is correct that Mun's shield 28 can be used to constrain a patient, we do not agree with the Examiner's assessment that Mun's shield necessarily constrains a patient within a determinable area with respect to the field of view, as recited in the claims. Although we appreciate that Mun's shield 28 allows a patient to "fit within the bore of a CT gantry" (see Mun i-f 34) this does not necessarily mean that the patient lies within a determinable area with respect to the field of view. For example, Appellants' Specification describes a patient that lies within the bore of an imaging machine but still lies outside the field of view of the machine. See Spec. i-f 21; Figs. 6A, 6B. Moreover, we note that Mun's shield 28 is described as an optional safety feature for protecting the patient from coming in contact with the bore of the CT gantry 9. See Mun i-fi-1 32- 34. Thus, the Examiner's finding that Mun's shield 28 constitutes a constraint that constrains a patient within a determinable area with respect to the field of view is mere speculation and conjecture based on an unfounded assumption that a patient who fits within the bore of a CT gantry inherently lies within a determinable area with respect to the field of view. However, as shown above, this is not necessarily so. 4 Appeal2013-008181 Application 12/558,159 In conclusion, for the foregoing reasons, we do not sustain the rejection of independent claims 1 and 11, and claims 9, 10, 19, and 20 depending therefrom, respectively, under 35 U.S.C. § 102(b) as anticipated by Mun. The obviousness rejections The Examiner's use of the disclosures of D' Avignon, Salatka, and Smith do not remedy the deficiencies of Mun as described supra. See Final Act. 7-15. Accordingly, for the same reasons as discussed above, we also do not sustain the rejections under 35 U.S.C. § 103(a) of claims 2-5 and 12- 15 as unpatentable over Mun and D 'Avignon; of claims 8 and 18 as unpatentable over Mun and Salatka; and of claims 6, 7, 16, and 17 as unpatentable over Mun and Smith. SUMMARY We REVERSE the Examiner's decision to reject claims 1-20. REVERSED 5 Copy with citationCopy as parenthetical citation