Franz Fadler et al.Download PDFPatent Trials and Appeals BoardOct 1, 201912877649 - (D) (P.T.A.B. Oct. 1, 2019) Copy Citation 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. 12/877,649 09/08/2010 Franz Fadler 11371-469 (2009P06850 US) 3565 58898 7590 10/01/2019 Lempia Summerfield Katz LLC 20 South Clark Suite 600 CHICAGO, IL 60603 EXAMINER COOK, CHRISTOPHER L ART UNIT PAPER NUMBER 3793 NOTIFICATION DATE DELIVERY MODE 10/01/2019 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): docket-us@lsk-iplaw.com mail@lsk-iplaw.com pair_lsk@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRANZ FADLER and OLIVER HORNUNG Appeal 2019-002514 Application 12/877,649 Technology Center 3700 Before EDWARD A. BROWN, BRETT C. MARTIN, and MICHELLE R. OSINSKI, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant,1 Franz Fadler et al., appeals from the Examiner’s decision to reject claims 1, 3–6, and 8–20. Claims 2 and 7 were cancelled during prosecution. App. Br. 12–13. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Siemens Aktiengesellschaft. App. Br. 2. Appeal 2019-002514 Application 12/877,649 2 CLAIMED SUBJECT MATTER The claims are directed “to an apparatus for medical examinations.” Spec. ¶ 2. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An apparatus for medical examinations, the apparatus comprising: a first arm rotatably attached to a stand, the first arm including a cylindrical body at a first end of the first arm, the cylindrical body having a center and a side wall, the first arm being rotatably attached to the stand so that the first arm, with the cylindrical body, is rotatable about an axis that extends through the center of the body and an area for examining a patient, such that the first arm is not rotatable relative to the body, the first arm being configured to carry one of a radiation source and a radiation detector; and a second arm that is rotatable about the axis, the second arm being movably disposed on an outer surface of the side wall of the body and being translatable along the side wall, such that when the second arm translates along the side wall, the second arm rotates about the axis relative to the body, the second arm extending away from the outer surface of the side wall to an arm section configured to carry the other of the radiation source and the radiation detector, the area for examining the patient being disposed between the radiation source and the radiation detector. REFERENCES The prior art relied upon by the Examiner is: Lieutaud US 4,979,196 Dec 18, 1990 Yamakawa Crain US 6,373,060 B1 US 6,637,936 B2 Apr. 16, 2002 Oct. 28, 2003 Appeal 2019-002514 Application 12/877,649 3 REJECTIONS Claims 1, 3–6, 10–13, and 17–20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Crain and Yamakawa. Non-Final Act. 3. Claims 8, 9, 11, 14–16, and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Crain, Yamakawa, and Applicant’s Admission of the prior art. Non-Final Act. 7. Claims 1, 3–6, 10–13, and 17–20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Crain, Yamakawa, and Lieutaud. Non- Final Act. 8. Claims 8, 9, 11, 14–16, and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Crain, Yamakawa, Lieutaud, and Appellant’s Admission of the prior art. Non-Final Act. 10. Claims 1, 3–6, and 8–20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 21–36 of copending Application No. 15/175,028. Non-Final Act. 13. OPINION Obviousness The Examiner finds that Craig discloses a first arm 18, a second arm 20, and a base 22. Non-Final Act. 3, 4 (Examiner’s annotated Craig Fig. 4). Appellant argues, inter alia, that the combination of Crain and Yamakawa “would not teach or disclose one of the robot arms 18, 20 being movably disposed on an outer surface of a side wall of a cylindrical body of the other of the robot arms 18, 20, as required by claim 1.” Reply Br. 4. As Appellant points out, “base 22 is not part of either of the robot arms 18, 20.” Id. The Examiner proposes moving arms 18, 20 from the top surface of base Appeal 2019-002514 Application 12/877,649 4 22 to the perimeter, as well as changing the connection from an articulating joint as in Crain to a sliding joint as in Yamakawa. See, e.g., Ans. 11. In this fashion, both arms 18, 20 would then rotate around the base, which would allow for a variety of arm configurations. The problem with the Examiner’s modification is that claim 1 requires one of the arms to be “movably disposed on an outer surface of the side wall of the body” and “translatable along the side wall” of the first arm. As shown in Appellant’s drawings, cylindrical body 3 is part of, for example, first arm 1. See Fig. 3. This construction allows the second arm to rotate around body 3 to change its position relative to first arm 1. The Examiner’s combination, however, makes both arms movable with regard to a completely separate base 22. In this manner, neither arm is part of the base and so rather than one arm moving with regard to the other arm and its affixed base, both arms may move separately relative to each other and to the base. Even if this modified structure may somehow be an improvement over Appellant’s claimed device to the extent it may allow for even more flexibility in positioning around the base, it does not meet the claim language at issue. All of the obviousness rejections rely on this same error and so we do not sustain any of the four obviousness rejections for the same reason. Double Patenting The Examiner provisionally rejected all of the pending claims on the basis of nonstatutory double patenting in view of claims 21–36 of copending Application No. 15/175,028. Final Act. 13. Appellant does not contest this rejection. Because this rejection is provisional, we decline to reach it. We leave it to the Examiner to determine at the time when any claims of this Appeal 2019-002514 Application 12/877,649 5 application are otherwise in condition for allowance whether the obviousness-type double patenting rejection remains proper. See Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010) (precedential). The Manual of Patent Examining Procedure (MPEP) § 804(I)(B)(1)(b) (9th ed., January 2018 [R-08.2017]) provides guidance to examiners as to the handling of provisional nonstatutory double patenting rejections. DECISION The Examiner’s obviousness rejections are REVERSED and we do not reach the double patenting rejection. DECISION SUMMARY Claims Rejected Basis Affirmed Reversed 1, 3–6, 10– 13, 17–20 § 103 Crain and Yamakawa 1, 3–6, 10– 13, 7–20 8, 9, 11, 14–16, 20 § 103 Crain, Yamakawa, and Applicant’s Admission of the prior art 8, 9, 11, 14–16, 20 1, 3–6, 10– 13, 17–20 § 103 Crain, Yamakawa, and Liuteaud 1, 3–6, 10– 13, 17–20 8, 9, 11, 14–16, 20 § 103 Crain, Yamakawa, Lieutaud, and Applicant’s Admission of the prior art 8, 9, 11, 14–16, 20 1, 3–6, 8– 20 Provisional nonstatutory double patenting over Application No. 15/175,028 Overall Outcome 1, 3–6, 8– 20 REVERSED Copy with citationCopy as parenthetical citation