Ex Parte Lipsky

Board of Patent Appeals and Interferences

Nov 23, 2009

10369343 (B.P.A.I. Nov. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM LIPSKY
____________

Appeal 2009-005385
Application 10/369,343
Technology Center 3600
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Decided: November 23, 2009
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Before: MURRIEL E. CRAWFORD, JENNIFER D. BAHR, and STEVEN
D.A. McCARTHY, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
William Lipsky (Appellant) appeals under 35 U.S.C. § 134 (2002)
from the Examiner’s decision rejecting claims 3-10, which are the only
claims pending in the application. We have jurisdiction over this appeal
under 35 U.S.C. § 6 (2002).

The Invention
Appellant’s claimed invention is directed to “a support carriage
apparatus for suspending and mobilizing a plurality of overhead medical
instruments in an operating room to increase footprint floor space efficiency
and to facilitate different surgical procedures in a single operating room.”
Spec. 1:4-7.
Claim 9, reproduced below, is representative of the claimed subject
matter.
9. An operating room facility having a structural
ceiling, comprising:
an operating table located in the operating
room; and apparatus in the operating room for
supporting a plurality of overhead medical
instruments and for moving each of said medical
instruments between a first position in proximity
of the operating table and a second position out of
proximity of the operating table, said apparatus
comprising:
a set of primary rails connected to the
operating room at a location above the
operating table; and
a plurality of support carriages
engaging the set of primary rails, said
support carriages being movable in a
horizontal direction parallel to the set of
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primary rails, each support carriage
comprising: (i) a set of secondary rails
arranged perpendicular to the set of primary
rails; and (ii) a trolley engaging the set of
secondary rails, said trolley for supporting a
medical instrument and being movable in a
horizontal direction parallel to the set of
secondary rails.

The Rejections
The Examiner relies upon the following as evidence of
unpatentability:
Jako US 4,503,854 Mar. 12, 1985
Morris US 5,456,655 Oct. 10, 1995
Tachi US 6,027,247 Feb. 22, 2000

Appellant seeks review of the Examiner’s rejections under 35 U.S.C.
§ 103(a) of claims 6, 9, and 10 as being unpatentable over Tachi and Morris;
and claims 3-5, 7, and 8 as being unpatentable over Tachi, Morris, and Jako.

SUMMARY OF DECISION
We AFFIRM.

ISSUES
Appellant argues independent claims 9 and 10 together, and relies on
the arguments presented for claims 9 and 10 in contesting the rejection of
dependent claims 3-8. Thus, in accordance with 37 C.F.R. § 41.37(c)(1)(vii)
(2007), we select claim 9 as the representative claim to decide the appeal of
the rejection of claims 6, 9, and 10, with claims 6 and 10 standing or falling
with claim 9. Inasmuch as Appellant has not presented any separate
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arguments against the rejection of claims 3-5, 7, and 8 as being unpatentable
over Tachi, Morris, and Jako, our conclusion with respect to the rejection of
claim 9 is also dispositive with respect to the rejection of claims 3-5, 7, and
8.
The following issues are raised in this appeal:
1. Has Appellant shown reversible error in the Examiner’s finding that
Tachi discloses an operating room facility, as called for in claim 9
(see App. Br. 9)?
2. Has Appellant shown that the Examiner erred in concluding that Tachi
and Morris, in combination, render obvious an apparatus for
supporting a plurality of medical instruments and for moving said
instruments between a first position in proximity of the operating table
and a second position out of proximity of the operating table, as called
for in claim 9 (see App. Br. 10)? This issue turns, in particular, on
whether Tachi and Morris teach or render obvious an overhead
apparatus capable of supporting a medical instrument and moving it to
a position out of the proximity of the operating table. See id.
3. Has Appellant demonstrated that the Examiner failed to articulate a
reason with rational underpinning for combining Tachi and Morris, so
as to establish a prima facie case of obviousness of the subject matter
of claim 9? See App. Br. 11-12.
4. Has Appellant demonstrated that proper consideration of all of the
evidence, including both the references relied upon by the Examiner
and the Declarations of William Lipsky, M.D., M. Bowes Hamill,
M.D., and Bernard Godley, M.D., does not lead to the conclusion that
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the subject matter of claim 9 would have been obvious. See App. Br.
13-16.
FACTS PERTINENT TO THE ISSUES
FF1 Tachi describes a pair of rails 260, 262 and a support carriage
252 movable along the rails for supporting an X-ray apparatus
250 from the ceiling. Tachi, col. 2, ll. 64-66. This arrangement
makes it possible to arrange the X-ray apparatus 250
“separately from the bed 10,” thereby opening up the
circumference of the bed to enable the doctor to move easily
and approach the patient. Id, col. 3, ll. 3-10. The extension of
support rails 260, 262 well beyond the table 12, as depicted in
the top view of figure 18 of Tachi, shows that Tachi’s overhead
support system has the capability to move the X-ray apparatus
to a position out of proximity of the table.
FF2 Tachi also teaches that the ceiling-mounted support
arrangement (see FF1) facilitates securement of “a space in
which other medical treatment tools are placed.” Id., col. 3, ll.
11-13.
FF3 Tachi describes providing means for permitting the doctor to
select from among a plurality of previously set moving speeds
of the table 12 of the bed 10 while taking X-rays, so as to
reduce the doctor’s load so that “the doctor can concentrate on
medical treatment, such as a surgical operation.” Id., col. 7, ll.
3-10.
FF4 Tachi also points out that due to advances in medical science, it
is often necessary to confirm a condition of a patient, or the
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state and position of a medical instrument, by means of X-rays
during a surgical operation. Id., col. 9, ll. 5-9.
FF5 Tachi’s disclosure of taking X-rays during a surgical operation
(see FF3 and FF4) teaches, or at least strongly suggests, the
installation and use of Tachi’s ceiling-mounted rails and
carriage for supporting the X-ray apparatus and other medical
tools in an operating room.
FF6 Tachi’s rail and carriage system for movably supporting the X-
ray apparatus 250 comprises a set of X-direction rails 260, 262
secured to the ceiling, a set of Y-direction rails 264, 266
supported on rails 260, 262 for movement along rails 260, 262
in the Y-direction, and a carriage 252 supported on the rails
264, 266 for movement along rails 264, 266 in the X-direction.
Id., col. 8, ll. 3-17; fig. 1. Thus, Tachi describes a single
carriage (Y-direction rails 264, 266) engaging the set of rails
260, 262, with a trolley engaging the Y-direction rails 264, 266
of the carriage. Further, Tachi describes an embodiment in
which a plurality of pieces of medical equipment (the X-ray
apparatus 250, monitor 400, and proximal operator console
500) are supported on the single set of X-direction rails 260,
262, to render the structure simple and inexpensive. Id., col.
11, ll. 36-46; fig. 18. Tachi does not specifically describe a
plurality of support carriages engaging the set of primary rails,
with each said support carriage comprising a set of secondary
rails perpendicular to the first set of rails and a trolley engaging
the set of secondary rails, as called for in claim 9.
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FF7 Morris describes a somewhat more elaborate ceiling-mounted
support system comprising a set of primary rails (side rails 14
and 16), and a plurality of carriages (heavy glide rails 18 and
accessory rails 60), each of which could include two laterally
spaced-apart runners 30, 32, supported via rollers 24 for
movement along the length of side rails 14 and 16. Morris, col.
6, ll. 25-27, 37-39, and 64-66; col. 7, ll. 3-9; col. 8, ll. 3-6; figs.
1 and 5. A support carrier 28 is mounted for movement back
and forth along the runners 30, 32 of heavy glide rail 18. Id.,
col. 7, ll. 13-17; fig. 1. Accordingly, Morris describes a support
system which is capable of independently supporting a plurality
of pieces of hospital equipment for independent movement on a
single set of primary ceiling-mounted rails.
FF8 Morris teaches that an IV fluid reservoir/pump unit 68 can be
mounted in the overhead support system. Id., col. 8, ll. 25-30;
fig. 5. As illustrated in figure 5, the overhead support system of
Morris permits suspended medical equipment, such as the IV
fluid reservoir/pump unit 68, for example, to be moved up and
down and back and forth, as shown by arrows, between a
position in proximity of the bed and a position out of proximity
of the bed.
FF9 A person of ordinary skill in the medical equipment art would
have understood, at the time of Appellant’s invention, that IV
fluid reservoir/pump units are commonly used during surgical
operations.
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FF10 Morris teaches that the overhead support system addresses the
problem of floor clutter in hospital rooms by providing
organization and facilitating accessibility for hospital staff. Id.,
col. 2, ll. 53-57; col. 4, ll. 53-56.
FF11 The Examiner reasoned that it would have been obvious to
modify Tachi by substituting the overhead support system of
Morris to provide “a system that provides organization to an
operating room such that unneeded clutter may be removed
from floors which would allow the items supported to be
accessible to any point within the rooms, even adjacent to the
walls therefore out of proximity to the table.” Ans. 5.
FF12 The Declaration of William Lipsky (Appellant) states that
ophthalmic operating rooms, and in fact most operating rooms
which are set up for microscopes, are inefficiently organized,
because microscopes take up too much room, and tend to
obstruct the movement of other pieces of equipment. Lipsky
Decl., para. 2. The Lipsky Declaration further states that it is
common to hear operating room personnel muttering that the
microscope always seems to be in the way. Id.
FF13 The Lipsky Declaration states that a prior art ceiling mount
ophthalmic microscope supplied by Zeiss has not been widely
accepted or successful, because it does not permit the
microscope to be moved sufficiently out of the way of other
surgeons, and does not allow for easy ceiling mounting of
operating room lights. Id., para. 3.
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FF14 The Declarations of Bernard Godley, M.D., Ph.D. and M.
Bowes Hamill, M.D. both state that the problems described by
the Lipsky Declaration existed in ophthalmic operating rooms
and operating rooms in general for “a substantial number of
years” prior to Appellant’s invention. Godley Decl., para. 3;
Hamill Decl., para. 3.
FF15 According to the Godley and Hamill Declarations, Appellant’s
overhead support apparatus constitutes a “unique” and
“wonderful” solution to a long-standing and ongoing problem
that, to Declarants’ knowledge, had never been solved by
anyone prior to Appellant’s invention. Godley Decl., para. 4;
Hamill Decl., para. 4.
FF16 Appellant has not presented any evidence that the inventors of
the linear solution supplied by Zeiss mentioned in the Lipsky
Declaration (see FF13) were attempting to solve the problem
discussed by the Lipsky, Godley, and Hamill Declarations (see
FF12 and FF14), much less any evidence of the efforts and
resources expended in developing that arrangement.

PRINCIPLES OF LAW
Obviousness
Section 103 forbids issuance of a patent
when “the differences between the subject matter
sought to be patented and the prior art are such that
the subject matter as a whole would have been
obvious at the time the invention was made to a
person having ordinary skill in the art to which
said subject matter pertains.”
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KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, (3) the level of ordinary
skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)
Rejections on obviousness grounds must be supported by “some
articulated reasoning with some rational underpinning” to combine the
known elements in the manner required in the claim at issue. Id. at 418.
However, “the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” Id.
Long-felt, unsolved need
The relevance of long-felt need and the failure of others to the issue of
obviousness depends on several factors. First, the need must have been a
persistent one that was recognized by those of ordinary skill in the art.
Orthopedic Equipment Co. v. All Orthopedic Appliances, Inc., 707 F.2d
1376, 1382 (Fed. Cir. 1983); see also In re Gershon, 372 F.2d 535, 539
(CCPA 1967). An argument based upon long-felt need must be
accompanied by evidence that demonstrates the existence of a problem
which was of concern in the industry and has remained unsolved over a long
period of time. See Vandenberg v. Dairy Equip. Co., 740 F.2d 1560, 1567
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(Fed. Cir. 1984). This can be accomplished, for example, by the testimony
of experts in the industry, or publications and the like, which speak to the
duration and extent of the problem, and of the substantial effort and
resources which had been expended during that time in attempts to solve the
problem. See Railroad Dynamics, Inc. v. Stuki Co., 579 F. Supp. 353, 363
(E.D. Pa. 1983), aff'd 727 F.2d 1506 (Fed. Cir. 1984). Second, the long-felt
need must not have been satisfied by another before the invention by
applicant. Newell Companies v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed.
Cir. 1988) (“[O]nce another supplied the key element, there was no long-felt
need or, indeed, a problem to be solved.”) Third, the invention must in fact
satisfy the long-felt need. In re Cavanagh, 436 F.2d 491, 496 (CCPA 1971).
“[L]ong-felt need is analyzed as of the date of an articulated identified
problem and evidence of efforts to solve that problem.” Texas Instruments,
Inc. v. United States Int'l Trade Comm'n, 988 F.2d 1165, 1178 (Fed. Cir.
1993). This can be demonstrated, for example, by evidence establishing
commercial success and that the industry purchased the claimed invention
because it satisfied the long-felt need. See W.L. Gore & Associates, Inc. v.
Garlock, Inc., 721 F.2d 1540, 1555 (Fed. Cir. 1983).

ANALYSIS
Tachi’s disclosure of taking X-rays during a surgical operation
teaches, or at least strongly suggests, the installation and use of Tachi’s
ceiling-mounted rails and carriage for supporting the X-ray apparatus and
other medical tools in an operating room. FF5. Even assuming these
teachings are not sufficient to anticipate an operating room having ceiling-
mounted rails and carriage for supporting the X-ray apparatus and other
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medical tools in an operating room, they are certainly sufficient to render
obvious the installation and use of Tachi’s ceiling-mounted rails and
carriage for supporting the X-ray apparatus and other medical tools in an
operating room. Consequently, Appellant has not shown reversible error in
the Examiner’s finding that Tachi discloses an operating room facility, as
called for in claim 9.
The extension of support rails 260, 262 well beyond the table 12, as
depicted in the top view of figure 18 of Tachi (see FF1), establishes that
Tachi’s apparatus is capable of supporting a medical instrument and moving
it to a position out of proximity of the operation table. Appellant’s argument
to the contrary is not well founded, and thus is not persuasive. Moreover,
even if Tachi’s apparatus were not capable of moving a medical instrument
to a position out of proximity of the operation table, the system of Morris
has such capability (see FF8). Thus, Tachi and Morris, in combination as
proposed by the Examiner (see FF11), render obvious an overhead apparatus
capable of supporting a medical instrument and moving it to a position out
of proximity of the operation table.
Both Tachi and Morris provide ceiling-mounted support systems for
supporting medical apparatus in such a way that they can be moved out of
the way, to a position not in proximity of the table or bed, when not being
used, in order to promote organization and reduce clutter in hospital rooms,
in order to enable doctors and other hospital personnel to move easily and
approach the patient. See FF1, FF8, and FF10. Moreover, both Tachi and
Morris recognize that it may be advantageous to provide overhead support
for a variety of medical tools and equipment (see FF2, FF5, FF6, and FF7),
including equipment commonly used in operating rooms (see FF3, FF4,
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FF8, and FF9). Tachi does not specifically describe a plurality of support
carriages engaging the set of primary rails, with each said support carriage
comprising a set of secondary rails perpendicular to the first set of rails and a
trolley engaging the set of secondary rails, as called for in claim 9. See FF6.
Morris, on the other hand, describes a support system which is capable of
independently supporting a plurality of pieces of hospital equipment on
carriages each comprising a set of secondary rails, for independent
movement on a single set of primary ceiling-mounted rails. See FF7. As
such, the modification of Tachi proposed by the Examiner (see FF11) is
nothing more than the simple substitution of one known element for another
or the mere application of a known technique to a piece of prior art ready for
the improvement. See KSR, 550 U.S. at 417. The modification would
accommodate a plurality of independently supported pieces of medical
equipment for movement along a set of primary rails and in a direction
perpendicular to the set of primary rails in order to organize and avoid
unnecessary clutter in the operating room so that the doctor can more easily
access the patient. Therefore, the Examiner’s articulated reason for
combining Tachi and Morris has rational underpinning.
Appellant relies on the Lipsky, Godley, and Hamill Declarations as
evidence that the subject matter of claim 9 would not have been obvious. In
particular, Appellant argues that these Declarations establish that
Appellant’s invention solved a long-felt and unsolved need in the art. App.
Br. 15. These Declarations, however, fall short in many respects.
First, the Declarations do not provide any quantitative evidence as to
the duration of the problems attested to therein (see FF12 and FF14), aside
from characterizing it as “a substantial number of years” (see FF14). As
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such, these attestations are entitled to little weight. Furthermore, these
declarations do not demonstrate that the problems were of such concern in
the industry as to arouse much more reaction than muttering by operation
room personnel (see FF12). In particular, the declarations do not speak to
efforts and resources expended by others in attempts to solve these
problems. While the Lipsky Declaration mentions a linear solution supplied
by Zeiss (see FF13), Appellant has not presented any evidence that the
inventors of the linear solution supplied by Zeiss were attempting to solve
the problems discussed by the Lipsky, Godley, and Hamill Declarations,
much less any evidence of the efforts and resources expended in developing
that arrangement (see FF16).
Second, the arrangement of Tachi seemingly provided a solution to
the problems alluded to in the Lipsky, Godley, and Hamill Declarations,
prior to the invention by Appellant. See FF1-FF3 and FF5. In particular,
Tachi’s ceiling-mounted rail and carriage system permits medical
equipment, such as heavy X-ray apparatus, to be supported from the ceiling
and moved in two dimensions to a position away from the operating table
when not in use.
Appellant also urges that the praises and tributes of the Godley and
Hamill Declarations for Appellant’s invention are evidence of the
nonobviousness of Appellant’s invention. App. Br. 16. Appellant is
certainly correct that evidence such as praise for and tributes to Appellant’s
invention must be taken into account in weighing whether the subject matter
of the claims would have been obvious at the time of the invention. See,
e.g., Litton Systems, Inc. v. Honeywell, Inc., 87 F.3d 1559, 1569 (Fed. Cir.
1996). In this case, however, the benefits attributed to Appellant’s invention
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by the Godley and Hamill Declarations (see FF15) hardly seem unique or
unexpected in light of the disclosures of Tachi and Morris. Expected
beneficial results are evidence of obviousness just as unexpected beneficial
results are evidence of unobviousness. See Ex parte Novak, 16 USPQ2d
2041, 2043 (BPAI 1989), aff'd mem., 899 F.2d 1228 (Fed. Cir. 1990); In re
Skoner, 517 F.2d 947, 950 (CCPA 1975).
Having considered all the evidence presented by Appellant against
obviousness and weighing all the evidence anew, it is our conclusion that the
evidence for obviousness outweighs the evidence against obviousness. See
In re Fenton, 451 F.2d 640, 643 (CCPA 1971) (the court balanced the Patent
Office’s case against the strength of appellant's objective evidence of non-
obviousness); see also Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d
1157, 1162 (Fed. Cir. 2007) (“given the strength of the prima facie
obviousness showing, the evidence on secondary considerations was
inadequate to overcome a final conclusion that [the claimed subject matter]
would have been obvious.”)

CONCLUSIONS
1. Appellant has not shown reversible error in the Examiner’s finding
that Tachi discloses an operating room facility, as called for in claim
9.
2. Appellant has not shown that the Examiner erred in concluding that
Tachi and Morris, in combination, render obvious an apparatus for
supporting a plurality of medical instruments and for moving said
instruments between a first position in proximity of the operating table
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and a second position out of proximity of the operating table, as called
for in claim 9.
3. Appellant has not demonstrated that the Examiner failed to articulate a
reason with rational underpinning for combining Tachi and Morris, so
as to establish a prima facie case of obviousness of the subject matter
of claim 9.
4. Appellant has not demonstrated that proper consideration of all of the
evidence, including both the references relied upon by the Examiner
and the Declarations of William Lipsky, M.D., M. Bowes Hamill,
M.D., and Bernard Godley, M.D., does not lead to the conclusion that
the subject matter of claim 9 would have been obvious.

DECISION
The Examiner’s decision is affirmed.
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)(1)(iv) (2007).
AFFIRMED

hh

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