Ex Parte Korver et al

Board of Patent Appeals and Interferences

Aug 12, 2008

10368923 (B.P.A.I. Aug. 12, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte CLAYTON P. KORVER and VINCE S. HURSH
__________

Appeal 2008-1831
Application 10/368,923
Technology Center 3700
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Decided: August 12, 2008
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Before DEMETRA J. MILLS, ERIC GRIMES, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a device
for positioning a patient for treatment which the Examiner has rejected as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Appeal 2008-1831
Application 10/368,923

Background
“Patient positioning systems are used for accurate and reproducible
positioning of a patient for radiation therapy, diagnostic imaging, surgery,
and other medical procedures. During these procedures, it is important to
immobilize a part or parts of the patient's body” (Spec. 1). The Specification
notes that “[o]ne example of such a patient positioning system is the Exact
Indexed Immobilization system . . . The Exact system utilizes a tabletop with
indentations along opposite sides, and a lock bar extending across the
tabletop with a disk at each end adapted to be received in opposing
indentations” (Spec. 1).
Statement of the Case
The Claims
Claims 1-18 are on appeal. We will focus on claims 1 and 14, which
are representative and read as follows:

1. A device for positioning a patient for treatment
comprising:
a table for supporting the patient, the table having
opposite sides with indexing nodules extending outwardly
along each side;
a lock bar having opposite ends with a recess
extending outwardly on each end to retentively engage
opposing pairs of the nodules on each side of the table; and
a patient restraint member mated to the lock bar.

14. The device of claim 1 wherein the nodules and
recesses are each defined by a surface portion of a sphere.

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Application 10/368,923

The prior art
The Examiner relies on the following prior art references to show
unpatentability:
Tang US 6,161,237 Dec. 19, 2000
Kolody US 6,598,275 B1 Jul. 29, 2003

The issues
The rejection as presented by the Examiner is as follows:
Claims 1-18 stand rejected under 35 U.S.C. § 103(a), as being obvious
over Tang and Kolody (Ans. 3).
35 U.S.C. § 103(a) rejection over Tang and Kolody
The Appellants argue that “each of independent claims 1, 8 and 13
require indexing nodules or male projections extending outwardly along
each side or edge of the table, and outwardly extending recesses or female
recesses on the ends of the lock bar to receive or engage the male nodules”
(App. Br. 5). Appellants contend that these “limitations are not met by
either the Tang or Kolody references, relied upon by the Examiner in the
obviousness rejection of the claims” (App. Br. 5).
The Examiner argues that it is a “mere reversal of parts to place the
nodules on the side of the table versus on the side of the lock bar and to
place the recesses in the locking bar versus the recess being on the side of
the table.” (Ans. 3.)
Appellants then address the Examiner’s reasoning regarding reversal
of parts, arguing that “[a]s the Federal Circuit has explained, rearrangement
of parts does not create obviousness when the parts have considerable
differences. Kegel Co. Inc. v. AMF Bowling Inc., 127 F.3d 1420, 44
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Application 10/368,923

U.S.P.Q.2d (BNA) 1123 (Fed Cir. 1997)” (App. Br. 6). Appellants also
contend that the “continuous rail and clamp arrangement of Kolody does not
provide the repeatability and accurate placement of discrete nodules and
recesses” (App. Br. 7). Appellants argue that “[a] mere reversal of parts
would have placed the ball 28 from the Tang bar 18 onto the sides of the
table. As seen in Figures 2 and 3 of the present application, the sides of the
table 12 do not have balls thereon” (App. Br. 9).
The Examiner responds that “one of ordinary skill in the art would
recognize that the circular nodules disclosed by Tang could be spherical
shaped as taught by Tang and Kolody” (Ans. 3). The Examiner argues that
Kolody provides “a teaching to provide nodules on the side of a table. The
nodules are inserted into a recess on the side of the table. Also, Tang teaches
that the nodules (28) can be any shape as long as they provide a snap fit.”
(Ans. 4).
In view of these conflicting positions, we frame the obviousness issue
before us as follows:
Would it have been obvious to a person of ordinary skill to modify
Tang to utilize indexing nodules that extend outwardly and engage a lock
bar in the place of inwardly extending nodules in view of Kolody?
Findings of Fact (FF)
1. Tang teaches that the “interlock system of the present invention
is particularly useful for accurate and repeatable patient positioning for
radiation therapy treatment” (Tang, col. 2, ll. 29-31).
2. Tang teaches a “table base or carriage 10 is provided with a
tabletop 12 . . . . The tabletop 12 has a plurality of notches 16 along the
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Application 10/368,923

opposite sides . . . . The notches 16 serve as indexes for repeated treatment
of individual patients” (Tang, col. 2, ll. 35-40).
3. Tang teaches a “lock bar 18 includes a male extension 28,
preferably in the shape of a ball” (Tang, col. 2, ll. 45-46).
4. Tang teaches that the “male extension 28 of the lock bar 18 may
take shapes other than spherical, as shown in the drawings, with the
alternative shapes providing a snap-fit connection between the lock bar 18
and the notches 16 of the tabletop 12” (Tang, col. 2, ll. 48-52).
5. Tang teaches that the “lock bar 18 also includes a pair of
upwardly extending studs 32 . . . . The studs 32 are adapted to matingly
register with holes 20B of the patient restraint device 20 so that the device
20 is positioned on the lock bar 18” (Tang, col. 2, ll. 52-56).
6. Kolody discloses a table 60 which has an outwardly extending
engagement element 76 (see Kolody, fig. 4).
Discussion of 35 U.S.C. § 103(a) over Tang and Kolody
Claim 1
Tang teaches a device for positioning a patient for treatment
comprising a table with indexing nodules (FF 1-2). Tang teaches that the
indexing nodules engage with a lock bar by a snap fit connection (FF 3-4).
Tang teaches that the shape of the engagement element may vary (FF 4).
Tang teaches that the lock bar is mated to a patient restraint member (FF 5).
The Examiner acknowledges that Tang does not teach an indexing
nodule which extends outwardly, but rather teaches only an inward indexing
nodule (Ans. 3). The Examiner relies upon Kolody for the disclosure that
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engagements between examining tables and bars may use outwardly
extending engagement elements (FF 6).
The obviousness case rests on whether a person of ordinary skill in the
art would have considered it obvious to modify Tang to use an outwardly
extending nodule for engagement in the place of an inwardly extending
nodule.
We conclude that the Examiner has set forth a prima facie case that
claim 1 would have been obvious to the ordinary artisan in view of Tang and
Kolody. In KSR, the Supreme Court indicated that “[w]hen a work is
available in one field of endeavor, design incentives and other market forces
can prompt variations of it, either in the same field or a different one. If a
person of ordinary skill can implement a predictable variation, §103 likely
bars its patentability.” KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1740
(2007). In the instant case, substituting an outwardly extending nodule, as
shown by Kolody, for the inwardly extending nodule of Tang would have
been a known and predictable variant snap-fit engagement method (see FF
3-6).
While we agree with Appellants that “there is no mechanical rule that
reversal of parts is automatically obvious” (App. Br. 6), the Supreme Court
noted that “[a] person of ordinary skill is also a person of ordinary creativity,
not an automaton.” KSR, 127 S. Ct. at 1742. In the context of the instant
invention, reversal of parts for engagement to switch the male engagement
part of Tang for the female part without any alteration in the function of the
parts represents a situation where the “combination of familiar elements
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according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR, 127 S. Ct. at 1739.
We are not persuaded by Appellants’ arguments that “Kolody also
does not teach nodules and recesses. The accessory clamp 114 in Kolody
attaches to a continuous single-sided rail 70” (App. Br. 7). In our opinion,
when Kolody teaches an outwardly extending engagement element, even as
part of a continuous rail, this reasonably demonstrates to the ordinary
practitioner that an inwardly extending nodule of Tang would function if
reversed (FF 5-6).
We are also not persuaded by Appellants’ argument that a “‘mere
reversal’ of parts would place semi-cylindrical notches on the bar, which has
not happened in the present invention, as is clear from the drawings” (App.
Br. 8). In fact, Tang teaches that the male extension is ball shaped, which
would be “hemispherical” (FF 3). Consequently, reversing the elements of
Tang as indicated by Kolody would reasonably be expected to result in the
ball “male” element being placed at the nodule positions with a female ball
engagement element functioning on the lock bars (FF 3-6). This is
particularly evident since Tang teaches that the “male extension 28 of the
lock bar 18 may take shapes other than spherical” (Tang, col. 2, ll. 48-49).
We also reject Appellants’ argument that “obviousness cannot be
established without evidence of a motivating force” (App. Br. 10). “The
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR, 127 S. Ct. at 1741. In
our opinion, the ordinary practitioner would have found the reversal of parts
of the Tang indexing nodules obvious, particularly in light of the
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engagement mechanism of Kolody, since the ordinary practitioner would
have recognized that the snap-fit attachment could function with either a
male or female indexing nodule (see FF 4-6).
Appellants also argue that the Langton declaration overcomes the
obviousness rejection since a comparison of the Tang table and what
Appellants characterize as the “indexing system of the present invention”
(App. Br. 12) shows reduced attenuation relative to the Tang table (see
Langton Dec. ¶ 4). However, the Langton Declaration is not addressed to
the differences between the claimed invention and the prior art.
The Langton Declaration does not explain whether the materials of
which the Tang table and the tested table differ in any way other than the
locking bar mechanism and indexing nodules (see Langton Dec. ¶ 3-5).
Appellants’ Specification suggests that “solid material on the edges of the
Exact tabletop increases attenuation due to the increased density of the
material, relative to the foam core of the tabletop” (Spec. 2:8-9). However,
the claims include no limitations regarding the materials used on the edge of
the tabletops whatsoever, so that the asserted unexpected results are not
commensurate in scope with the claim. See In re Harris, 409 F.3d 1339,
1344 (Fed. Cir. 2005)(“The Board also correctly reasoned that the showing
of unexpected results is not commensurate in scope with the degree of
protection sought by the claimed subject matter”).
The Langston declaration also shows that the prior art panel was
superior at 6 MV while the “claimed” panel was superior art 18 MV (see
Langton Dec. 3). There is no explanation of this in the Declaration or
Specification.
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Additionally, the Langton Declaration does not describe the results as
unexpected, rather simply identifying the results as “improved” (see Langton
Dec. ¶ 5). To the extent that the improved attenuation is simply due to the
reduction in blocking mass resulting from the rearrangement of parts, the
result would be the expected result. “Expected beneficial results are not
evidence of nonobviousness”. See In re Skoner, 517 F.2d 947, 950 (CCPA
1975).
Claim 14
Appellants argue that the subject matter of claim 14 differs from that
of the prior art in that “the recesses are defined by a surface portion of a
sphere” (App. Br. 13). While Appellants acknowledge that in Tang, “the
male members are spherical balls, and their female recesses are semi-
cylindrical” (App. Br. 13), Appellants conclude that these are not “semi-
spherical in shape” (App. Br. 13).
Appellants’ Specification indicates that “[w]hile the nodules 20 are
shown in the drawings as being spherical in shape, it is understood that the
nodules may have other shapes” (Spec. 4:1-2). In the absence of any
specific definition of either “surface portion of a sphere” (claim 14) or
“semispherical” (Claim 16), we give this term its broadest reasonable
interpretation. See, e.g., 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.”). We disagree
with Appellants’ conclusion that Tang does not teach components which are
broadly “spherical”, since the spherical balls are reasonably construed as
having a “suface portion of a sphere” and being “semispherical” (FF 3-4).
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CONCLUSION
In summary, we affirm the rejection of claims 1 and 14 under 35
U.S.C. § 103(a). Pursuant to 37 C.F.R. § 41.37(c)(1)(vii)(2006), we also
affirm the rejections of claims 2-13 and 15-18 as these claims were not
argued separately.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).
AFFIRMED

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