Ex Parte Sanpitak

Patent Trials and Appeals Board

Jun 27, 2019

11691568 - (D) (P.T.A.B. Jun. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/691,568 03/27/2007
28524 7590 07/01/2019
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
07/01/2019 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):
ipdadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte P ATANIT SANPITAK
Appeal2017-009982
Application 11/691,568
Technology Center 2800
Before HUNG H. BUI, MICHAEL M. BARRY, and
DAVID J. CUTITTA II, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 3-7, 9, 10, and 19-23, which constitute all pending claims. See
Final Act. l; App. Br. 16-19 (Claims App'x). We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing was held on June 10, 2019.
We reverse.
1 Appellant indicates this application has been the subject of two prior
appeals: 2011-003384 (PTAB 2013) and 2014-004634 (PTAB 2016). See
App. Br. 1.
2 Appellant identifies Siemens Medical Solutions USA, Inc. as the real
parties in interest. App. Br. 1.
Appeal2017-009982
Application 11/691,568
Introduction
Appellant's disclosure "relates to interfaces for collimator
identification and patient contact sensing in nuclear medical imaging
apparatus such as a gamma camera." Spec. 1. The claimed invention
provides a contactless interface for providing electrical power and
communication between a gamma camera and an interchangeable collimator
via circuit assemblies with respective inductive traces, optical receiver/
transmitters, and other components. 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 provided on said
interchangeable collimator, said first printed circuit assembly
including
a first circuit board,
a first optical transmitter/receiver mounted on a
first side of said first circuit board for communicating
with another optical receiver/transmitter,
a storage medium mounted on said first side of
said first circuit board for storing identification
information pertaining to said interchangeable collimator,
a first microcontroller mounted on said first side of
said first circuit board for controlling operation of said
transmitter/receiver and controlling reading and writing
of information from and to said storage medium, and
a first inductive trace formed on a side of said first
circuit board opposite to said first side of said first circuit
board; and
a second printed circuit assembly provided on a camera
head of said gamma camera system, said second printed circuit
assembly including
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Application 11/691,568
a second circuit board,
a second optical transmitter/receiver mounted on a
first side of said second circuit board for cornrnunicating
with said first optical transmitter/receiver,
a second rnicrocontroller mounted on said first side
of said second circuit board for controlling operation of
said second transmitter/receiver, and
a second inductive trace formed on a side of said
second circuit board opposite to said first side of said
second circuit board, for producing a near-field
electromagnetic coupling and electrical power transfer
with said first inductive trace;
said interchangeable collimator being configured to be
securely fastened to said camera head whereby said first
rnicrocontroller reads information from said storage rnediurn
and transmits said read information to said second optical
transmitter/receiver through said first optical transmitter/
receiver.
App. Br. 16-17 (Claims App'x).
Rejections and References
The Examiner rejected claims 1, 3, 4, 7, 9, 10, and 19-22 under pre-
AIA 35 U.S.C. § 103(a) over Dina et al. (US 6,055,062; Apr. 25, 2000),
Partovi (US 2007/0182367 Al; Aug. 9, 2007), Nakama et al. (US 5,929,598;
July 27, 1999), and Appellant's Admitted Prior Art ("AP A"). Final Act.
2-8.
The Examiner rejected claims 5 and 23 under 35 U.S.C § 103(a) over
Dina, Partovi, Nakama, APA, and Kirn (US 2005/0223148 Al; Oct 6, 2005).
Final Act. 8-9.
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Application 11/691,568
The Examiner rejected claim 6 under 35 U.S.C § 103(a) over Dina,
Partovi, Nakama, APA, and Englehardt (US 5,196,682; Mar. 23, 1993).
Final Act. 9-10.
ANALYSIS3
In rejecting claim 1, the Examiner found, inter alia, Dina's contactless
interface between a printer and a printer accessory teaches a printed circuit
assembly that includes components which provide the recited functionality
of the claimed transmitter/receivers, microcontrollers, and storage medium.
Final Act. 2-4. The Examiner found, however, that Dina's disclosure of
inductive coils "for producing a near-field electromagnetic coupling and
electrical power transfer," as claim 1 recites, does not teach using an
"inductive trace" for the coupling and power transfer. Id. The Examiner
then found that implementing the recited coupling and power transfer using
inductive traces and circuit boards, as recited by claim 1, was known to and
within the level of skill of an ordinary artisan. Ans. 2-3; Final Act. 4-6
(both citing Partovi and Nakama).
Based on these teachings, the Examiner concluded it would have been
obvious to modify Dina to use inductive traces on circuit boards, along with
the other claimed circuit components, as recited, because "[ o ]ne of ordinary
skill in the art could have substituted" the known technology. Ans. 2-3;
Final Act. 4-6 (both citing KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416
(2007) ("[W]hen a patent claims a structure already known in the prior art
that is altered by the mere substitution of one element for another known in
3 Because we reverse the Examiner based on a dispositive limitation, we
decline to opine on all issues raised by Appellant.
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Application 11/691,568
the field, the combination must do more than yield a predictable result."
(citing United States v. Adams, 383 U.S. 39, 40 (1966))).
Appellant contends the Examiner fails to articulate a sufficient reason
for why an ordinarily skilled artisan would have modified Dina as the
Examiner proposes. App. Br. 7-14; Reply Br. 1-6. Appellant argues there
are significant power usage differences between Dina's printer accessory
and the battery-powered devices of Partovi and Nakama, and, therefore,
there would be no reason to replace Dina's ferromagnetic coils with
inductive traces, as proposed by the Examiner.
Appellant's argument is persuasive. "[A] patent composed of several
elements is not proved obvious merely by demonstrating that each of its
elements was, independently, known in the prior art." KSR, 550 U.S. at 418.
In other words, the mere fact that elements can be combined is not, in itself,
a reason to combine them. Rather, an obviousness rejection must explain
the reasoning by which those findings support the Examiner's conclusion of
obviousness. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324,
1328-30 (Fed. Cir. 2009); see also Plantronics, Inc. v. Aliph, Inc., 724 F.3d
1343, 1354 (Fed. Cir. 2013) (the mere fact that elements separately existed
in the cited prior art is not sufficient to render the invention obvious; for a
legal conclusion of obviousness to be proper, there must be proof of a
legally sufficient "reason to combine"); Unigene Labs., Inc. v. Apotex, Inc.,
655 F. 3d 1352, 1360 (Fed. Cir. 2011) ("Obviousness requires more than a
mere showing that the prior art includes separate references covering each
separate limitation in a claim under examination."). "[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
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Application 11/691,568
underpinning to support the legal conclusion of obviousness." In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at
418. The reasoning is important "because inventions in most, if not all,
instances rely upon building blocks long since uncovered, and claimed
discoveries almost of necessity will be combinations of what, in some sense,
is already known." Id. at 418-19.
Here, the rejection fails to meet this required standard. On the record
before us, the Examiner posits essentially that one of ordinary skill could
have made the above-discussed substitution of inductive trace technology for
coil-based technology, based simply on the ordinarily skilled artisan's
ordinary, common-sense knowledge. Final Act. 5-6 ("In this case, one of
ordinary skill in the art could have substituted known conventional coils ...
for the coils of Dina et al. and the results of the substitution would have been
predictable."). Common sense and common knowledge can be utilized "to
inform the analysis of obviousness" but only "if explained with sufficient
reasoning." See Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324,
1329 (Fed. Cir. 2009). Appellant counters that the facts at hand demonstrate
the skilled artisan would not have been led to make the proposed
substitution, because there would have been no reason to consider the "low
power" inductive traces as a substitute for the "high power" coils of Dina.
Based on the record before us, we find Appellant's position the more
persuasive, and we do not sustain the Examiner's 35 U.S.C. § 103(a)
rejection of claim 1. For the same reason we do not sustain the rejection of
the other, analogous independent claim 19; we likewise therefore do not
sustain the rejections of the dependent claims 3-7, 9, 10, and 20-23.
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DECISION
We reverse Examiner's rejection of claims 1, 3-7, 9, 10, and 19-23
under pre-AIA 35 U.S.C. § 103(a).
REVERSED
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