Ex Parte Spahn

Board of Patent Appeals and Interferences

Aug 11, 2010

10950015 (B.P.A.I. Aug. 11, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/950,015 09/24/2004 Martin Spahn P04,0374 5072
26574 7590 08/12/2010
SCHIFF HARDIN, LLP
PATENT DEPARTMENT
233 S. Wacker Drive-Suite 6600
CHICAGO, IL 60606-6473
EXAMINER
KAO, CHIH CHENG G
ART UNIT PAPER NUMBER
2882
MAIL DATE DELIVERY MODE
08/12/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MARTIN SPAHN
____________________

Appeal 2009-013534
Application 10/950,0151
Technology Center 2800

____________________

Before JOHN C. MARTIN, MARC S. HOFF,
and BRADLEY W. BAUMEISTER, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL2

1 The real party in interest is Siemens Aktiengesellschaft.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or filing a request for rehearing, as
recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper
delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode)
shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-013534
Application 10/950,015

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 2, and 4-15.3 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s invention relates to an x-ray apparatus having an x-ray
source and a radiation detector. The radiation detector includes a housing
having a detector plate disposed at the front side of the housing and a flat
screen supplied with the image signals from the detector plate, disposed at
the rear side of the housing for displaying the x-ray image. The flat screen
includes a touch panel located within it. (Fig. 2, Spec. 5:15-6:8).
Claim 1 is exemplary:
1. An x-ray apparatus comprising:
an x-ray source that emits x-rays;
a radiation detector comprising a housing having a front side and a
backside a detector plate disposed at said front side of said housing for
detecting said x-rays and generating electrical signals corresponding thereto,
a circuit board in said housing carrying electronics for processing said
electrical signals to generate output signals representing an x-ray image, and
a flat screen supplied with said output signals and disposed at said backside
of said housing for displaying said x-ray image, said flat screen comprising a
touch panel within the flat screen;
a controllable component, remote from said radiation detector,
operable by an entry made via said touch panel to set at least one parameter
associated with generation of said x-ray image; and
a wireless communication link between said radiation detector and
said controllable component for forwarding entries made via said touch
panel to said controllable component, said wireless communication link
comprising a wireless transmitter carried by said circuit board in said
housing of said radiation detector and a wireless receiver at said controllable
component.

3 Claim 3 has been cancelled.
2
Appeal 2009-013534
Application 10/950,015

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:4
McEvoy US 5,844,961 Dec. 1, 1998
Shoji US 6,344,652 B1 Feb. 5, 2002
Ganin US 2002/0085672 A1 Jul. 4, 2002
Spahn US 2002/0150214 A1 Oct. 17, 2002
Schmitt US 2003/0108154 A1 Jun. 12, 2003
Barber US 6,590,958 Jul. 8, 2003

Claims 1, 2, 6, 7, 9, 10, and 13-15 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Barber in view of Schmitt and Spahn.
Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barber in view of Schmitt, Spahn, and Shoji.
Claims 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barber in view of Schmitt, Spahn, and McEvoy.
Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barber in view of Schmitt, Spahn, and Ganin.
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Appeal Brief (filed December 18, 2006) and the
Examiner’s Answer (mailed June 12, 2007) for their respective details.

ISSUE
Appellant contends that the teachings of Barber, Schmitt, and Spahn
do not present a prima facie case of obviousness for the radiation detector
portion in that none of the references disclose the claimed touch panel within
the flat screen (App. Br. 8). Appellant argues that Barber discloses that the

4 The Examiner does not recite a Prior Art Listing in the “Evidence Relied
Upon” section but does recite the prior art references that he relies upon in
the “Grounds of Rejection” section (Ans. 3).
3
Appeal 2009-013534
Application 10/950,015

touch screen panel is in a specially-designed supporting frame 106 and that
Schmitt does not disclose a flat panel display (App. Br. 8-9). Appellant
asserts further that the Examiner has used impermissible hindsight since the
references disclose unrelated teachings and those skilled in the art did not
have the insight to incorporate the touch panel within the flat panel display
screen (App. Br. 9, 10, and 15). Finally, Appellant argues that numerous
modifications would have to be made to combine Barber and Schmitt and, as
such, there would be no motivation to combine the references (App. Br. 10-
11).
Appellant’s contentions present us with the following issue: Do the
references disclose an x-ray apparatus including a radiation detector having
a flat screen display disposed on the backside of the housing of the radiation
detector, wherein the flat screen display includes a touch panel disposed
within the flat screen display?

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Barber
1. Barber discloses an x-ray apparatus including a detector
assembly 16 that includes a flat panel x-ray detector 14 on a first surface,
held within a supporting frame 106. The top side of the frame 106 includes
a flat panel display 116 and a touch screen panel 118 (Figs. 1, 2, and 3; col.
4, ll. 58-67; col. 5, ll. 1-4, 22-25).
4
Appeal 2009-013534
Application 10/950,015

Schmitt
2. Schmitt discloses an x-ray apparatus including a computer 19 in
communication with a display device 21 that includes two picture screens:
one for the display of the currently acquired x-ray image (B and B′) and
another for the user interface using a touch screen or mouse pointer (Fig. 1,
paras. [0034] and [0039]). Display device 21 may alternatively have only a
single monitor (for example, as a split screen) that, in addition to displaying
a user interface, displays images B that assist in the operation (para. [0034]).
Spahn
3. Spahn discloses an x-ray apparatus including a radiation
receiver 5 including a transmission and reception unit 9 for wireless
transmission of x-ray images to a control device 2 having a transmission and
reception unit 8 (Fig. 2; paras. [0022], [0023], and [0025]).

PRINCIPLES OF LAW
On the issue of obviousness, the Supreme Court has stated that “the
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). Further, the Court stated “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416.

ANALYSIS
Claims 1, 2, 6, 7, 9, 10, and 13-15
We select claim 1 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
5
Appeal 2009-013534
Application 10/950,015

Representative claim 1 recites “a radiation detector comprising a
housing … and a flat screen … disposed at said backside of said housing for
displaying said x-ray image, said flat screen comprising a touch panel within
the flat screen.”
We do not consider Appellant’s arguments, supra, to be persuasive to
show Examiner error. Specifically, Barber discloses a flat panel x-ray
detector surface 14 on the backside of the detector assembly 16 disposed
within a supporting frame 106 (FF 1). Barber also discloses that the frame
106 includes a flat panel display 116 and a touch screen panel 118 (FF 1).
Schmitt discloses a monitor having a split screen that displays x-ray images
in one area and a user interface touch screen panel in another area (FF 2).
Spahn discloses an x-ray apparatus having a transmission and reception unit
9 that transmits the x-ray images back to control device 2 through
transmission and reception unit 8 (FF 3).
We find that all of the references are in the same field of endeavor,
and not, contrary to Appellant’s argument, merely “separate and unrelated
teachings.” Although the touch panel of Barber is located within the frame
106, we agree with the Examiner’s finding that it would have been obvious
to a person of ordinary skill in the art to modify the flat panel display 116 of
Barber so as to include the touch panel of Schmitt, since one would have
been motivated to make such a modification to reduce the number of
components needed (Ans. 4, FF 1).
We also agree with the Examiner’s finding that such modification
would have only involved knowledge which was within the level of ordinary
skill in the art at the time the claimed invention was made. Schmitt provides
6
Appeal 2009-013534
Application 10/950,015

ample evidence that incorporating touch panels within displays was well
known in the relevant art at the time the invention was made (Ans. 10-11).
Further, we agree with the Examiner’s finding that it would have been
obvious to modify the apparatus of Barber with the wireless communication
of Spahn to achieve the advantage of easier manipulation of the device (Ans.
5, FF 1 and 3).
Therefore, we find that the Examiner has established the prima facie
obviousness of the claims, because the combination of Barber, Schmitt, and
Spahn disclose an x-ray apparatus including a radiation detector having a flat
screen comprising a touch panel disposed within the housing of the radiation
detector. As a result, we will sustain the Examiner’s § 103 rejection of
representative claim 1 and that of dependent claims 2, 6, 7, 9, 10, and 13-15.
Claims 4 and 5
Appellant argues that claims 4 and 5 are patentable over the cited
prior art because the claim depends from claim 1 and because Shoji does not
cure the deficiencies asserted with respect to the Barber, Schmitt, and Spahn
reference (App. Br. 13).
As noted supra, however, we find that the combined disclosures of
Barber, Schmitt, and Spahn teach all the features of claim 1. We, therefore,
affirm the Examiner’s rejection of claims 4 and 5 under 35 U.S.C. § 103, for
the same reasons expressed with respect to parent claim 1, supra.
Claim 8
Appellant argues that claim 8 is patentable over the cited prior art
because the claim depends from claim 1 and because McEvoy does not cure
the deficiencies asserted with respect to the Barber, Schmitt, and Spahn
reference (App. Br. 13).
7
Appeal 2009-013534
Application 10/950,015

As noted supra, however, we find that the combined disclosures of
Barber, Schmitt, and Spahn teach all the features of claim 1. We, therefore,
affirm the Examiner’s rejection of claim 8 under 35 U.S.C. § 103, for the
same reasons expressed with respect to parent claim 1, supra.
Claims 11 and 12
Appellant argues that claim 11 and 12 are patentable over the cited
prior art because the claim depends from claim 1 and because Ganin does
not cure the deficiencies asserted with respect to the Barber, Schmitt, and
Spahn reference (App. Br. 13).
As noted supra, however, we find that the combined disclosures of
Barber, Schmitt, and Spahn teach all the features of claim 1. We, therefore,
affirm the Examiner’s rejection of claims 11 and 12 under 35 U.S.C. § 103,
for the same reasons expressed with respect to parent claim 1, supra.

CONCLUSION
The references suggest an x-ray apparatus including a radiation
detector having a flat screen display disposed on the backside of the housing
of the radiation detector, wherein the flat screen display includes a touch
panel disposed within the flat screen display.

ORDER
The Examiner’s rejection of claims 1, 2, and 4-15 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)(1)(v) (2010).

8
Appeal 2009-013534
Application 10/950,015

AFFIRMED

ELD

SCHIFF HARDIN, LLP
PATENT DEPARTMENT
233 S. Wacker Drive-Suite 6600
CHICAGO, IL 60606-6473
9