Ex Parte KANE et al

Patent Trials and Appeals Board

May 6, 2019

13460274 - (D) (P.T.A.B. May. 6, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/460,274 04/30/2012
78145 7590 05/08/2019
Murabito, Hao & Barnes LLP (Varian)
111 North Market Street
Suite 700
San Jose, CA 95113
FIRST NAMED INVENTOR
Richard KANE
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.
VAR-11-054-US 5330
EXAMINER
SONG, DAEHO D
ART UNIT PAPER NUMBER
2141
NOTIFICATION DATE DELIVERY MODE
05/08/2019 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):
ipdocket@varian.com
Officeaction@mhbpatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD KANE, BRIAN SP A TOLA,
and JULIE CLIFT
Appeal2018-002715
Application 13/460,274
Technology Center 2100
Before JOSEPH L. DIXON, DENISE M. POTHIER, and
CATHERINE SHIANG, Administrative Patent Judges.
POTHIER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1,2 appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 2, and 4--24. Appeal Br. 3. Claim 3 has been canceled
and claim 22 is indicated as allowable if rewritten in independent form to
include all the limitations of the base claim and any intervening claims. Id.
We affirm in part.
1 Throughout this opinion, we refer to the Final Action (Final Act.) mailed
April 21, 2017, the Appeal Brief (Appeal Br.) filed September 19, 2017, the
Examiner's Answer (Ans.) mailed November 15, 2017, and the Reply Brief
(Reply Br.) filed January 16, 2018.
2 Appellants identify the real party in interest as Varian Medical Systems,
Inc. Appeal Br. 1.
Appeal2018-002715
Application 13/460,274
BACKGROUND
"Proton therapy is a type of external beam radiation therapy" that
irradiates diseased tissue using a particle accelerator, such as a cyclotron.
Spec. ,r 2. Clinical institutions typically have only one cyclotron shared
among practitioners due to its high costs. Id. ,r 3. Conventional proton
beam-sharing systems have problems. Id. ,r,r 3--4. Appellants' invention
relates "[t]o overcom[ing] the difficulties inherent in conventional proton
therapy sharing systems," by using "new techniques for automating and
visualizing these procedures." See id. ,r 6.
Independent claim 1 reads as follows:
1. A system comprising:
a plurality of integrated beam request panels, an
integrated beam request panel of the plurality of integrated
beam request panels being configured to execute:
a beam request interface operable by a user to
submit a beam request for use of a shared proton beam
into a beam request queue, and to select a priority for the
beam request from a plurality of priorities;
a beam request display operable to display, in a
graphical user interface, a beam request queue
comprising an arranged order of beam requests submitted
from the plurality of integrated beam request panels, an
indication of a position in the beam request queue once
the beam request is submitted, and an estimated time
until the shared proton beam will be available for the
beam request submitted from the beam request interface
of the corresponding integrated beam request panel; and
a particle accelerator configured to generate the shared
proton beam and to distribute the shared proton beam to a
plurality of treatment rooms in a sequence based on the beam
request queue.
Appeal Br. 26 (Claims App.).
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Application 13/460,274
The Examiner rejects the pending claims under pre-AIA 35 U.S.C.
§ I03(a). Final Act. 2-11. We address the rejections based on the
arguments identified by Appellants.
OBVIOUSNESS REJECTION OVER LEYMAN AND TACHIBANA
Claims 1, 2, 4--9, and 14--21 are rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Leyman (US 2007 /0018121 Al, published
Jan. 25, 2007) and Tachibana (US 2012/0253545 Al, published Oct. 4,
2012). Final Act. 2-8.
Claims 1, 2, 4-9, and 14-20
Appellants argue independent claim 1 and do not argue claims 2, 4--9,
and 14--20 separately. Appeal Br. 12-17, 24. We select independent claim
1 as representative. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner found Leyman teaches many of claim 1 's limitations.
Final Act. 2-3 (citing Leyman ,r,r 2, 15, 28-29, 38--41, 46-50, Figs. 2-5,
7-11). The Examiner turned to Tachibana in combination with Leyman to
teach the display operable to display "an estimated time until the shared
proton beam will be available for the beam request submitted from the beam
request interface of the corresponding integrated beam request panel" in
claim 1. Id. at 4 ( citing Tachibana ,r,r 6, 16, 23).
Appellants contend Tachibana teaches away from displaying "an
estimated time" (Appeal Br. 12-14) and fails to teach the recited "estimated
time" (id. at 15-17). The issue before us is: has the Examiner erred in
rejecting claim 1 under§ I03(a) by concluding Leyman and Tachibana
collectively would have taught or suggested "a beam request display
operable to display, in a graphical user interface, ... an estimated time until
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Application 13/460,274
the shared proton beam will be available for the beam request submitted
from the beam request interface of the corresponding integrated beam
request panel"?
ANALYSIS
On the record, we find no Examiner error in the rejection of
representative independent claim 1. At the outset, we highlight that the
Examiner relies on Leyman's Figures 7 through 11 in the rejection. Final
Act. 3. Leyman's Figures 7 through 11 show a "Waiting duration"
displayed in its software interface for particle beam requests and treatment
as a time metric (e.g., 2:02). See Leyman ,r,r 1-2, 14, 42, Figs. 7-11.
However, Leyman does not describe the "Waiting duration" in detail. See,
e.g., id. ,r,r 46-50. Given the time stamps shown in Leyman's Figures 7-8
below "Mode: Manual,", the "Waiting duration" may be a time duration
since the beam request was made and not "an estimated time until the shared
proton beam will be available for the beam request" as recited in claim 1.
Nonetheless, Tachibana teaches predicting a predicted waiting time
for an irradiation request, which at least suggests an estimating a time until a
proton beam will be available for the beam request. See Tachibana ,r,r 6, 38.
Tachibana explains the predicted waiting time information can be useful to a
practitioner to predict beam allocation and prepare medical treatment
appropriately. Id. ,r 16; see also Final Act. 4. Tachibana thus suggests to an
ordinary artisan determining "an estimated time until the shared proton beam
will be available for the beam request" as claim 1 recites. See Ans. 4
( discussing a practitioner identifying an estimated wait time).
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Tachibana further teaches using this information to determine whether
the predicated waiting time is greater than the maximum allowable waiting
time. Id. ,r,r 6, 16, 38. We disagree with Appellants (Appeal Br. 12-14) that
this additional teaching in Tachibana discourages an artisan from
determining a predicated waiting time or otherwise leads an artisan in
direction divergent from the determining the predicated waiting time. See In
re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Indeed, as noted above,
Tachibana suggests determining a predicted waiting time for a beam request
is helpful to practitioners in preparing appropriate medical treatment ( e.g.,
used to determine whether to advance a request in the waiting list).
Tachibana ,r,r 6, 16, 38.
Furthermore, when combining Tachibana's teachings with Leyman's
display that includes waiting times, the combination would have improved
upon Leyman's display and would have predictably yielded no more than an
ordinary artisan would have expected----displaying "an estimated time until
the shared proton beam will be available for the beam request submitted
from the beam request interface of the corresponding integrated beam
request panel" as recited in claim 1 so as to assist a practitioner in predicting
"the beam allocation so as to prepare medical treatment appropriately."
Final Act. 4.
In the Final Action's Response to Arguments section, the Examiner
appears to state alternatively, a presented maximum allowable waiting time
for proton beam availability is an estimated waiting time for proton beam
availability. See Final Act. 12. Based on this alternative statement,
Appellants contend the maximum allowable waiting time is not equivalent to
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Application 13/460,274
the recited "estimated time." Appeal Br. 15-16; see Reply Br. 12-16. This
argument is unavailing.
The rejection-not the alternative mapping in the Examiner's
Response to Arguments----describes the estimated time in Tachibana as "a
predicted waiting time of an irradiation request" (Final Act. 4), not the
maximum allowable waiting time. Moreover, as discussed above, the
Examiner further explains in the Answer that Tachibana identifies an
estimated time "until the beam will be available" and predicts "the time
when the beam is allocated" based on the maximum allowable waiting time.
Ans. 4 (citing Tachibana ,r,r 20, 23).
Even assuming, without agreeing, the Examiner has mapped the
recited "estimated time" to Tachibana' s maximum allowable waiting time as
asserted, Tachibana's maximum allowable waiting time is "an estimated
time until the shared proton beam will be available for the beam request" in
at least one scenario. This scenario is the situation where the maximum
allowable waiting time also happens to be the waiting time until the beam is
actually available. As such, Tachibana suggests at least one situation where
it estimates a "time until the shared proton beam will be available for the
beam request" as representative claim 1 recites.
In the Reply Brief, Appellants indicate that maximum allowable
waiting time and the predicted required time can be manually or
automatically set. Reply Br. 13, 15 (citing Tachibana ,r,r 30-31). Although
Appellants focus on the maximum allowable waiting time (see id.), we note
Tachibana teaches automatically setting the predicted required time until use
of the allocated beam to a chamber ends and the allocated beam to the next
chamber is allowed based on energy and intensity beam information.
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Tachibana ,r,r 30-31. This further suggests to an ordinary skilled artisan a
process for determining an estimated time until the beam will be available
for a request to assist in scheduling beam allocation. See id. We thus
disagree Tachibana only teaches when a request must be fulfilled as argued.
Reply Br. 13. Rather, Tachibana also teaches estimating the time "until the
shared proton beam will be available for the beam request submitted from
the beam request interface of the corresponding integrated beam request
panel" as claim 1 recites to assist in scheduling beam allocation.
For the foregoing reasons, Appellants have not persuaded us the
Examiner erred in rejecting representative independent claim 1 and claims 2,
4--9, and 14--20, which are not argued separately.
Claim 21
Claim 21 depends from claim 1 and further recites, in pertinent part,
"the beam request display is further operable to display an arranged order of
beam requests submitted as a plurality of silhouettes." Appeal Br. 34
(Claims App.). The Examiner relies on Leyman's Figures 7-11 to teach this
claimed feature (Final Act. 8) and explains that the multiple silhouettes are
the outline frames in Leyman's beam scheduler as shown in Figures 7 and 8
(Final Act. 13; Ans. 5). Appellants argue the figures do not depict
silhouettes. Appeal Br 18-19; Reply Br. 17-18. We agree with Appellants.
During examination of a patent application, a claim is given its
broadest reasonable construction "in light of the specification as it would be
interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citation omitted). The
Specification does not define "silhouette" but describes and shows human
silhouettes (e.g., 309) in an arranged order. Spec. ,r 46, Fig. 3. Although
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Application 13/460,274
this informs our construction of the recited phrase, we decline to import such
an embodiment into claim 1, which fails to recite "human" silhouettes.
Even so, ordinary meanings for "silhouette" include "a likeness cut
from dark material and mounted on a light ground or one sketched in outline
and solidly colored in" or "the outline of a body viewed as circumscribing a
mass."3 Notably, the Specification does not show silhouettes as dark
material mounted on a light ground or an outline solidly colored but does
show a likeness of a body. Spec., Fig. 3. As such, a silhouette includes a
likeness or a body outline.
Leyman' s windows or boxes, such as those labelled "3" and "1" in
Figure 7, include an outline that frames the box. See Leyman, Fig. 7. But
these boxes are not a likeness or a body outline. See id. We therefore
disagree Leyman teaches or suggests displaying "silhouettes" based on its
ordinary meaning in light of the disclosure as it would be interpreted by an
ordinary skilled artisan. As such, Leyman does not teach or suggest a
display "operable to display an arranged order of beam requests submitted as
a plurality of silhouettes" as claim 21 recites.
Accordingly, Appellants have persuaded us of error for claim 21.
OBVIOUSNESS REJECTION OVER LEYMAN, TACHIBANA,
AND WOODWARD
Claims 23 and 24 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Leyman, Tachibana, and Woodward (US 2002/0099363
3 Silhouette, Merriam-Webster Online Dictionary, available at
https://www.merriam-webster.com/dictionary/silhouette (defs. 1-2) (last
visited April 25, 2019).
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Application 13/460,274
Al, published July 25, 2002). Final Act. 10-11. Appellants argue claims 23
and 24 separately. Appeal Br. 20-23. However, Appellants present similar
argument for both claims. See id. That is, Appellants contend "there
appears to be no motivation to make the proposed modification of Leyman
and Tachibana in view of Woodward" for claim 23 (id. at 20) and "the
rejection provides no motivation to make the proposed modification of
Leyman and Tachibana in view of Woodward" for claim 24 (id. at 22)
( underlining omitted).
ISSUE
For claims 23 and 24, does the Examiner articulate a reason to
combine Leyman, Tachibana, and Woodward supported with some rational
underpinning to justify the obviousness conclusion?
ANALYSIS
We find the Examiner has provided the requisite rationale to combine
Leyman, Tachibana, and Woodward to justify the obviousness conclusion.
Notably, the Court in KSR International Co. sets for an expansive and
flexible approach to the obviousness question, which includes more than the
"teaching, suggestion, and motivation" test (TSM test) Appellants discuss in
the Appeal Brief. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,415
(2007); see Appeal Br. 21 ( quoting from In re Kahn, 441 F .3d 977, 986
(Fed. Cir. 2006)). "[I]nstead, there must be some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness."
KSR, 550 U.S. at 418 (quoting from Kahn, 441 F.3d at 988).
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Regarding claim 23 and as noted by the Examiner (Ans. 5---6), the
Examiner articulated a reason with some rational underpinning for the
obviousness conclusion. Specifically, the rejection states:
[I]t would have been obvious to one having ordinary skill in the
art at the time the invention was made to modify the system,
disclosed in Leyman and Tachibana, to include [the features of
claim 23] for the purpose of providing convenience and
promoting efficiency for an attending physician or other
provider of the treatment, as taught in Woodward.
Final Act. 11; id. at 10 ( citing Woodward ,r 103). Thus, we are unpersuaded
by Appellants' contention.
As for claim 24, we agree the Final Action does not provide a
reasoning to combine Woodward's teaching with Leyman and Tachibana
specifically for this claim. Final Act. 11. However, when addressing both
claims 23 and 24, the Examiner explains in the Answer that the proposed
combination promotes efficient treatment and accounts for variations in
treatment parameters. Ans. 5---6 ( citing Woodward ,r,r 103-104 ). Thus, the
Examiner additionally articulated a reason with some rational underpinning
to support the obviousness conclusion of claims 23 and 24. See id.
Appellants do not respond to the Examiner's explanation in the Reply Brief.
See generally Reply Brief.
Based on the record, we sustain the rejection of claims 23 and 24.
THE REMAINING OBVIOUSNESS REJECTION
Claims 10-13 are rejected under 35 U.S.C. § I03(a) as unpatentable
over Leyman, Tachibana, and Fujimaki (US 2004/0200983 Al, published
Oct. 14, 2004). Final Act. 8-10. Appellants have not separately argued this
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rejection. Appeal Br. 24. For reasons discussed above when addressing
representative claim 1, from which claims 10-13 depend indirectly,
Appellants have not persuaded us the Examiner erred in rejecting claims
10-13.
DECISION
We affirm the Examiner's rejections of claims 1, 2, 4--20, 23, and 24
under§ 103.
We reverse the Examiner's rejection of claim 21 under § 103.
Claim 22 has been indicated as allowable if rewritten in independent
form to include all the limitations of the base claim and any intervening
claims.
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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