Ex Parte Sanpitak

Patent Trial and Appeal Board

Apr 27, 2016

11691568 (P.T.A.B. Apr. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111691,568 03/27/2007
28524 7590 04/29/2016
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
FIRST NAMED INVENTOR
Patanit Sanpitak
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.
2006P22868US 5885
EXAMINER
LEE, SHUNK
ART UNIT PAPER NUMBER
2884
NOTIFICATION DATE DELIVERY MODE
04/29/2016 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 PAT ANIT SANPIT AK
Appeal2014-004634
Application 11/691,568
Technology Center 2800
Before JOHN A. JEFFERY, BARBARA A. BENOIT, and
DAVID C. McKONE, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
This application returns to us after we affirmed the Examiner's
rejection of then-pending claims 1-10. Ex parte Sanpitak, No. 2011-003384
(PTAB May 8, 2013). Prosecution reopened after that Decision, and
Appellant now appeals under 35 U.S.C. § 134(a) from the Examiner's
subsequent decision to reject claims 1, 3-7, 9, 10, and 19-23. Claims 2, 8,
11-18, and 24--26 were cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b ). We affirm.
STATEMENT OF THE CASE
Appellant's invention provides a contactless interface for providing
electrical power and communication between a gamma camera and an
Appeal2014-004634
Application 11/691,568
interchangeable collimator via circuit assemblies with respective inductive
traces and optical receiver/transmitters. See generally Spec. 3. Claim 1 is
illustrative:
1. A contactless interface for providing a power
supply and communication between a gamma camera system and
an interchangeable collimator, comprising:
a first printed circuit assembly mounted on a circuit board
provided on said interchangeable collimator, including
a first optical transmitter/receiver for communicating with
another optical receiver/transmitter,
a storage medium for storing identification information
pertaining to said interchangeable collimator, and
a first microcontroller for controlling operation of said
transmitter/receiver and controlling reading and writing of
information from and to said storage medium;
a first inductive trace formed on a side of said circuit board
opposite to said first printed circuit assembly; and
a second printed circuit assembly mounted on a second
circuit board provided on a camera head of said gamma camera
system, including
a second optical transmitter/receiver for communicating
with said first optical transmitter/receiver, and
a second microcontroller for controlling operation of said
second transmitter/receiver;
a second inductive trace formed on a side of-said second
circuit board opposite to said second circuit assembly, for
producing a near-field electromagnetic coupling and electrical
power transfer with said first inductive trace;
a second microcontroller for controlling operation of said
second transmitter/receiver;
said interchangeable collimator being configured to be
securely fastened to said camera head whereby said first
microcontroller reads information from said storage medium and
transmits said read information to said second optical
transmitter/receiver through said first optical
transmitter/receiver.
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Appeal2014-004634
Application 11/691,568
THE REJECTIONS
The Examiner rejected claims 1, 3-7, 9, 10, and 19-23 under 35
U.S.C. § 112, first paragraph 1 as failing to comply with the written
description requirement. Final Act. 2-3. 2
The Examiner rejected claims 1, 3, 4, 6, 7, 9, 10, and 19-22 under 35
U.S.C. § 103(a) as unpatentable over Dina (US 6,055,062; Apr. 25, 2000),
Englehardt (US 5,196,682; Mar. 23, 1993), and Appellant's Admitted Prior
Art ("APA"). Final Act. 4--9.
The Examiner rejected claims 5 and 23 under 35 U.S.C. § 103(a) as
unpatentable over Dina, Englehardt, APA, and Kim (US 2005/0023148 Al;
Oct. 6, 2005).
THE WRITTEN DESCRIPTION REJECTION
The Examiner finds that there is no written description of the recited
first and second printed circuit assemblies (PCAs) mounted on associated
circuit boards of a gamma camera and collimator, respectively, with first and
second inductive traces formed on a side of the circuit board opposite to its
respective PCA, as claimed. Final Act. 2-3; Ans. 2---6. Although the
Examiner acknowledges that a PCA is more than a printed circuit, the
1 The Leahy-Smith America Invents Act ("AIA"), Pub. L. No. 112-29, 125
Stat. 284, 287-88 (2011), revised 35 U.S.C. §§ 112 and 103, effective March
16, 2013. Because the patent at issue was filed before March 16, 2013, our
references to§§ 112 and 103 in this decision are to the pre-AIA version,
which is consistent with the Examiner's usage.
2 Throughout this opinion, we refer to (1) the Final Rejection mailed
September 6, 2013 ("Final Act."); (2) the Appeal Brief filed December 6,
2013 ("App. Br."); (3) the Examiner's Answer mailed December 30, 2013
("Ans."); and ( 4) the Reply Brief filed February 2 8, 2014 ("Reply Br.").
3
Appeal2014-004634
Application 11/691,568
Examiner nonetheless finds that the Specification does not describe a first
circuit printed on the side of a first circuit board opposite to another first
circuit board side having an inductive trace, nor is the disclosed optical
transmitter/receiver 203 a PCA. Ans. 4---6.
Appellant argues that, in light of the Specification, a PCA comprises
(1) a printed circuit (i.e., conductive traces on a board), and (2) electronic
components mounted on the board and interconnected by the conductive
traces. App. Br. 5-7; Reply Br. 2--4. According to Appellant, the Examiner
erroneously ignores the term "assembly" in the recited PCA that includes the
components in addition to the printed circuit board on which the components
are mounted. Reply Br. 2. As such, Appellant contends, this "assembly of
components" 203 is mounted on a side of the board opposite to that where
inductive traces 209 are formed as shown in Figures 3 and 4 of the present
application. App. Br. 7.
ISSUE
Under§ 112, first paragraph, has the Examiner erred in rejecting
claim 1 by finding that the original disclosure lacks written description of
the recited first and second PCAs mounted on associated circuit boards of a
gamma camera and collimator, respectively, with first and second inductive
traces formed on a side of the circuit board opposite to its respective PCA?
ANALYSIS
We begin by noting that, in addition to the written description
rejection, the Examiner also objects to the Specification for essentially the
same reasons. See Final Act. 2. Although objections are typically
4
Appeal2014-004634
Application 11/691,568
petitionable matters (unlike appealable rejections), when a new matter issue
is the basis for both an objection and a rejection, the issue is appealable.
See Manual of Patent Examining Procedure (MPEP) § 2163.06(II).
Accordingly, we address both the objection and the rejection in this appeal.
Turning to the merits, claim 1 recites, in pertinent part, a first PCA
mounted on a circuit board on a collimator, where a first inductive trace is
formed on a side of the first board opposite to the first PCA. Similarly, the
claim recites a second PCA mounted on a second circuit board on a camera
head, where a second inductive trace is formed on a side of the second board
opposite to the second PCA. 3
To satisfy the written description requirement, the disclosure must
reasonably convey to skilled artisans that Appellant possessed the claimed
invention as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). As noted above, a key
aspect of this issue turns on the meaning of the recited PCAs. We, therefore,
begin by construing this term.
Appellant's Figure 1 shows a known gamma camera apparatus 20
with a camera head 28 and an attached, exchangeable collimator 30.
Spec. 1:25-27. As shown in Appellant's Figure 2, both the collimator and
camera head of the known system have associated PCAs, namely collimator
PCA 101 and camera head PCA 107. Spec. 2:12-20. The collimator PCA
contains a memory chip 102 and includes electrical signal mating contacts
3 Although claim 1 recites that the second inductive trace is formed on a side
of the second circuit board opposite to said second circuit assembly-not
said printed circuit assembly-we nonetheless presume that this second
circuit assembly corresponds to the second PCA in light of the disclosure
and this antecedent reference.
5
Appeal2014-004634
Application 11/691,568
103 that mate with corresponding spring-loaded contacts 109 on the camera
head PCA. Spec. 2: 13-17. The camera head PCA also includes a signal
cable 111 connected to a data processor in the apparatus housing. Spec.
2:17-19.
Appellant's Figures 3 and 4 show the improvement to the prior art
system of Figures 1 and 2, and illustrate the contactless interface of the
claimed invention as shown below.
FIG. 3
Appellant's Figure 3 showing contactless interface of claimed invention
As shown above, Figure 3 shows a collimator PCA 201 and a camera
head PCA 207. Notably, the collimator PCA not only includes an optical
transmitter/receiver 203, but also includes other components, such as
microcontroller 301 and inductive trace or coil 205, as indicated by the
components within the dashed box for numeral 201 in Figure 4. Accord
Spec. 4: 10-15 (noting, among other things, that PCA 201 contains an
inductive trace or coil 205); 5:9-11. Similarly, the camera head PCA not
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Appeal2014-004634
Application 11/691,568
only includes transmitter/receiver components 211, but also additional
components, such as microcontroller 303 and inductive trace or coil 209, as
indicated by the components within the dashed box for numeral 207 in
Figure 4. Accord Spec. 4:24 ("PCA 207 further contains an inductive trace
or coil 209."); 5:9--11. These components for both the camera head PCA
207 and collimator PCA 201 are shown in Appellant's Figure 4 reproduced
below.
207 201
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