Ex Parte Timinger

Patent Trial and Appeal Board

Sep 6, 2016

13133236 (P.T.A.B. Sep. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/133,236 06/07/2011 Roiger Timinger
24737 7590 09/08/2016
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2008P01623WOUS 1477
EXAMINER
BRUTUS, JOEL F
ART UNIT PAPER NUMBER
3777
NOTIFICATION DATE DELIVERY MODE
09/08/2016 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):
marianne.fox@philips.com
debbie.henn@philips.com
patti. demichele@Philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HOLGER TIMINGER
Appeal2014-008768
Application 13/133,236
Technology Center 3700
Before ERIC B. GRIMES, ULRIKE W. JENKS, and
ROBERT A. POLLOCK, Administrative Patent Judges.
PERCURIAM
DECISION ON APPEAL
This is a decision on appeal 1 under 35 U.S.C. § 134 from the
Examiner's rejection of claims 1-7. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We reverse.
STATEMENT OF THE CASE
The Specification discloses an arrangement for magnetic particle
imaging (MPI) (Spec. 1) "wherein the imaging resolution of MPI systems is
improved and the spatial selectivity can be adapted according to the desired
1 Appellant identifies the Real Party in Interest as Koninklijke Philips N.V.
(App. Br. 3).
Appeal2014-008768
Application 13/133,236
application" (id. at 2). The arrangement can be used to examine "objects-
e.g. human bodies-in a non-destructive manner ... and with a high spatial
resolution" (id. at 1 ).
Claim 1, the only independent claim, reads as follows:
1. An arrangement for at least one of influencing and detecting
magnetic particles in a region of action, comprising:
selection means having three magnetic selection field generation
means, one for each main spatial direction, each magnetic selection field
generation means generating a selection field component of a static magnetic
gradient field having a pattern in space of a magnetic field strength such that
a first sub-zone having a low magnetic field strength and a second sub-zone
having a higher magnetic field strength are formed in the region of action,
drive means changing the position in space of the two sub-zones in the
region of action by a magnetic drive field so that a magnetization of the
magnetic material changes locally, and
control means controlling the magnetic selection field generation
means of said selection means to individually set the gradient strength of the
selection field components generated by said magnetic selection field
generation means thereby setting the gradient strength and the direction of
the gradient of the static magnetic gradient field.
The claims stand rejected as follows:
8 Claims 1-5 under 35 U.S.C. § 112, second paragraph;
.. Claims 1--4 and 7 under 35 U.S.C. § 102(b) in vievv ofGleich2;
8 Claim 5 under 35 U.S.C. § 102(b) or, in the alternative, under 35
U.S.C. § 103(a), in view of Gleich; and
.. Clairn 6 under 35 U.S.C. § 103(a) in view of Gleich and Watkins. 3
2 Gleich, US 2006/0211939 Al, published Sept. 21, 2006.
3 Watkins et al., US 2004/0220468 Al, published Nov. 4, 2004.
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Appeal2014-008768
Application 13/133,236
I.
The Examiner has rejected claims 1----5 under 35 U.S.C. § 112, second
paragraph, on the basis that it is unclear whether the "means" limitations of
claims 1-5 invoke 35 U.S.C. § 112, sixth paragraph (Ans. 2---6).
Appellant responds that the claims have been amended "to more
particularly point out and distinctly claim the subject matter of claims 1-5"
in a manner that does not invoke 35 U.S.C. § 112, sixth paragraph (Reply
Br. 9).
We reverse the rejection. Use of the \vord "means" creates a
rebuttable presumption that the inventor intended to invoke § 112, sixth
paragraph. Personalized Media Commc 'ns, LLC v. Int 'l Trade Comm 'n, 161
F.3d 696, 703-704 (Fed. Cir. 1998). That "presumption can be rebutted
where the claim; in addition to the functional language, recites structure
sufficient to perform the claimed function in its entirety." Altiris, Inc. v.
Symantec Corp., 318 F.3d 1363, 1375 (Fed. Cir. 2003).
Here, claim 1 recites selection means, magnetic selection field
generation means, drive means, and control means, limitations in which
each claim limitation is set forth as a means that performs a particular
function. Thus, the presumption that these limitations invoke 35 U.S.C.
§ 112, sixth paragraph, applies. None of these claim limitations are further
limited by the recitation of any structure, and certainly no structure that is
"sufficient to perfonn the claimed function in its entirety." Altiris, 318 F.3d
at 1375. Thus, the presumption that the inventor intended to invoke § 112,
sixth paragraph, has not been rebutted.
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Application 13/133,236
However, although we disagree with Appellant's position that the
claims do not invoke 35 U.S.C. § 112, sixth paragraph, the Examiner has
not shown that the Specification fails to describe structures that correspond
to each of the recited means. As discussed in more detail below, the
Specification describes structures that correspond to the "selection means
having three magnetic selection field generation means" (i.e., "selection
means 21 O") as seen at least in Figures 6 and 8 and on pages 11-13, and
describes structures that correspond to the recited "drive means" ("drive
means 220") at least on page 8. The Specification also describes structure
corresponding to the recited "control means" ("control means 7 6") at least
on page 11.
Because we conclude that the claims do, in fact, invoke 35 U.S.C.
§ 112, sixth paragraph, and the Examiner has not shown that the
Specification does not describe adequate structures corresponding to each of
the recited means, we reverse the rejection under 35 U.S.C. § 112, second
paragraph.
II.
The Examiner has rejected claims 1--4 and 7 under 35 U.S.C. § 102(b)
as anticipated by Gleich (Ans. 7-9). The Examiner has also rejected claim 5
under 35 U.S.C. § 102(b), or alternatively under 35 U.S.C. § 103(a), in view
of Gleich (Ans. 9-10), and claim 6 under 35 U.S.C. § 103(a) in view of
Gleich and Watkins (Ans. 10-11). The same issue is dipositive for all of
these rejections, and we will consider them together.
The Examiner finds that Gleich discloses an arrangement meeting all
of the limitations of claim 1, including "selection means having three
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Appeal2014-008768
Application 13/133,236
magnetic selection field generation means (coils, fig 1, 0012), one for each
main spatial direction" (id. at 7). Specifically, the Examiner finds that
"Gleich discloses ... three pairs of coils ( 4, 5, and 6)" (id. at 12).
Appellant argues that Gleich does not disclose selection means
"having three magnetic selection field generation means, one for each main
spatial direction," as recited by claim 1 (App. Br. 10). Rather, Appellant
argues, Gleich describes "a single ( 1) magnetic field generation means 3
including a pair of opposing coils 3a/3b ... [and] fails to describe,
expressly or inherently, the use of three (3) pairs of opposing coils 3a/3b"
(id.). Appellant argues that the magnetic selection field generation means of
claim 1 is described in the Specification as "three (3) pairs of opposed coils,
three (3) pairs of opposed permanent magnets or any other three (3)
magnetic selection field generation means" (id. at 10-11 ).
We agree with Appellant that the Examiner has not adequately
explained how Gleich discloses the claimed arrangement comprising
"selection means having three magnetic selection field generation means,
one for each main spatial direction." Figure 1 of Gleich is shown below:
Figure 1 shows "an apparatus for performing the method according to
[Gleich's] invention" (Gleich i-f 21). "A first pair of coils 3 comprises the
two windings 3a and 3b of identical construction that are arranged coaxially
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Appeal2014-008768
Application 13/133,236
above and below the patient and through which currents of equal size but
opposite directions of circulation flow." (Id. i-f 32).
Similarly, Appellant's Specification states that the claimed
arrangement comprises "selection means 210 compris[ing] a first pair of
coils 21 O', 21 O", each comprising two identically constructed windings 21 O'
and 210" which are arranged coaxially above and below the patient 350 and
which are traversed by equal currents, especially in opposed directions"
(Spec. 6). Thus, the pair of coils 3a/3b in Gleich corresponds to the pair of
coils 210'/21 O" in Appellant's Specification.
Gleich discloses that "[i]f a further magnetic field is superimposed on
the gradient magnetic field in the region of action, then the zone 301 shifts in
the direction of this further magnetic field" (Gleich i-f 34). Similarly,
Appellant's Specification states that"[ w ]hen a further magnetic field- in the
following called a magnetic drive field 221 is superposed on the magnetic
selection field 210 (or gradient magnetic field 210) in the region of action
300, the first sub-zone 301 is shifted ... in the direction of this magnetic
drive field 221" (Spec. 8).
Gleich discloses that, "[t]o generate ... variable magnetic fields for
any desired direction in space, three further pairs of coils are provided. Pair
of coils 4, having windings 4a and 4b, ... [and] two further pairs of coils
having windings Sa, Sb and 6a, 6b" (Gleich i-fi-135, 36). Similarly,
Appellant's Specification states that "to generate ... magnetic drive fields
221 for any given direction in space, there are provided three further coil
pairs, namely a second coil pair 220', a third coil pair 220" and a fourth coil
pair 220"' which together are called drive means 220" (Spec. 8). Thus, the
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Appeal2014-008768
Application 13/133,236
coil pairs 4a/4b, 5a/5b, 6a/6b in Gleich correspond to coil pairs 220', 220",
220"' in Appellant's Specification. These coil pairs constitute an
embodiment of the "drive means" of claim 1, rather than the "selection
means."
Appellant's Specification also discloses "arrangements of the
selection means 21 O" in Figures 6 and 8 (Spec. 12). Figure 6 is shown
below:
~210c
210c~----
FIG.6
Figure 6 shows an embodiment of the selection means of the
invention (id. at 6). The Specification states that "[ t ]he selection means 210
are realized by three magnetic coil pairs 21 Oa, 21 Ob, 21 Oc, surrounding the
region of action 300, wherein the coil pairs are arranged perpendicular to
each other, one for each spatial direction (x, y, z)" (id. at 12). Gleich does
not disclose any similar arrangement for its coil pair 3a/3b, which
correspond to selection means 210 in Appellant's Specification.
Thus, reading claim 1 in light of the Specification, Gleich's coil pairs
4a/4b, 5a/5b, 6a/6b correspond to the recited "drive means" rather than the
"selection means." Therefore, Gleich does not disclose an arrangement that
comprises, in addition to the recited drive means, "selection means having
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Application 13/133,236
three magnetic selection field generation means, one for each main spatial
direction," as required by claim 1.
Thus, we reverse the rejection of independent claim 1 and dependent
claims 2--4 and 7 under 35 U.S.C. § 102(b). The rejections of claims 5 and 6
rely on the same reasoning as discussed above with regard to claim 1; thus,
we also reverse these rejections.
SUMMARY
We reverse all of the rejections on appeal.
REVERSED
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