SIEMENS HEALTHCARE GMBH

Patent Trials and Appeals Board

Dec 10, 2020

2020002515 (P.T.A.B. Dec. 10, 2020)

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.
15/813,784 11/15/2017 FRANZ DIRAUF 2017P01239 7580
24131 7590 12/10/2020
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, FL 33022-2480
EXAMINER
ALAM, MIRZA F
ART UNIT PAPER NUMBER
2689
NOTIFICATION DATE DELIVERY MODE
12/10/2020 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@patentusa.com
office@patentusa.com
vrahimis@patentusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANZ DIRAUF, ROBERT KAGERMEIER, and
JOERG HOFMANN

Appeal 2020-002515
Application 15/813,784
Technology Center 2600

Before JEAN R. HOMERE, MICHAEL J. STRAUSS, and
MICHAEL J. ENGLE, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s rejection of claims 1–6, 8–10, 12, 14, and 16–24, all of the
claims pending.2 Appeal Br. 1. We have jurisdiction under
35 U.S.C. § 6(b). We reverse.

1 We refer to the Specification filed Nov. 15, 2017 (“Spec.”); the Final
Office Action, mailed May 21, 2019 (“Final Act.”); the Appeal Brief, filed
Oct. 21, 2019 (“Appeal Br.”); the Examiner’s Answer, mailed Dec. 10, 2019
(“Ans.”); and the Reply Brief, filed Feb. 10, 2020 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Siemens Healthcare GmbH of
Erlangen, Germany, as the real party-in-interest. Appeal Br. 1.
Appeal 2020-002515
Application 15/813,784

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II. CLAIMED SUBJECT MATTER
According to Appellant, the claimed subject matter relates to portable
expansion unit (1) including retaining device (2) adjustable for secure
fastening to portable operating unit (3) to control medical device (8) (e.g., an
x-ray machine). Spec. ¶¶ 2, 7, 34–36, Fig. 2, Fig. 4.
Figures 2 and 4, reproduced and discussed below, are useful for
understanding the claimed subject matter:

Figure 2 above illustrates expansion unit (1) including retaining device (2)
adjustable to a size of flat operating unit (3) detachably fastened thereto.
Spec. ¶¶ 12, 33–35.

Figure 4 above illustrates expansion unit (1) including communication
modules (4, 5) for controlling medical device (8). Id. ¶¶ 38, 40, 43.

Appeal 2020-002515
Application 15/813,784

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In particular, expansion unit (1) further includes first communication
module (4) for data connection with medical device (8) to trigger release of
radiation from medical device (8) as well as to control movement of the
medical device (8), and second communication module (5) to exchange data
with operating unit (3). Id. ¶¶ 38, 40, 43, Fig. 4.
Claims 1 and 14 are independent. Claim 1, reproduced below with
disputed limitations emphasized, is illustrative:
1. A portable expansion unit for controlling functions of a
medical device, the expansion unit comprising:
a retaining device to be adjusted to a size of a flat, portable
operating unit of the medical device, said retaining device being
configured to mechanically connect the expansion unit detachably to
the portable operating unit, the, portable operating unit being a tablet
computer or a smartphone; and
a first communication module configured to establish a data
connection with the medical device to control at least one function
selected from the group consisting of triggering a release of radiation
from the medical device and controlling a movement of the medical
device; and
a second communication module configured to exchange data
with the portable operating unit.

Appeal Br. 35 (Claims App.).
III. REFERENCES
The Examiner relies upon the following references.3
Name Reference Date
Altounian US 2006/0066438 A1 Mar. 30, 2006
Wilson US 2008/0144777 A1 June 19, 2008

3 All reference citations are to the first named inventor only.
Appeal 2020-002515
Application 15/813,784

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IV. REJECTION4
The Examiner rejects claims 1–6, 8–10, 12, 14, and 16–24 under
35 U.S.C. § 103 as being unpatentable over the combined teachings of
Altounian and Wilson. Final Act. 4–13.
V. ANALYSIS
Appellant argues, inter alia, that the Examiner erred in finding that
the combination of Altounian and Wilson teaches or suggests “a retaining
device to be adjusted to a size of a flat, portable operating unit [e.g., tablet
computer, smartphone]”, as recited in independent claims 1 and 14. Appeal
Br. 10. In particular, Appellant argues that Altounian’s disclosure of a tablet
computer that snaps into flexible docking station does not teach a docking
station to be adjusted to the size of the tablet computer. Id. (citing Altounian
¶ 23).
Appellant’s argument is persuasive of reversible Examiner error.
As a preliminary matter, we note the disputed claim limitation recites
the capability of performance of a future event (to be adjusted to the size).
Appellant’s Specification nonetheless states the following:
[T]he novel device comprises a retaining device which can be
adjusted to the size of a flat, portable operating unit of the medical
device, said retaining device being embodied to mechanically connect
the expansion unit detachably to the operating unit, and a (first)
communication module, which is embodied to establish a safety-
related data connection with the medical device.
Spec. ¶ 12 (Emphasis added).

4 The Examiner withdraws the indefiniteness rejection previously entered
against claims 1–6, 8–10, 12, 14, and 16–24. Ans. 3.
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Application 15/813,784

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Under the broadest reasonable interpretation, consistent with the
Specification, we construe the disputed limitation to require a retaining
device adjustable to the size of the flat portable operating unit. Altounian
states the following:
Tablet computer 10 snaps into flexible docking station 100 and
permits a rotation of tablet computer 10 from a portrait to a
landscape viewing perspective for meeting a wide variety of
application needs. In addition, flexible docking station 100 permits
writing on the tablet computer screen 14 using a digitizer pen, at any
angle, as well as storing flat for improved portability of the entire unit.
Although not shown, flexible docking station 100 also includes three
USB ports, an IEEE 1394 port, a VGA port, an RJ-45 Ethernet input,
an Audio Output, and a microphone port. When combined with a
keyboard and optical disk drive, flexible docking station 100 provides
full desktop computing functionality through table computer 10.

Altounian ¶ 23 (Emphasis added).
Although Altounian’s flexible docking station permits rotation of the
tablet computer from a portrait to a landscape viewing perspective for
meeting a wide variety of application needs, it falls short of teaching that the
docking station can be adjusted to the size of the tablet computer. At best,
Altounian teaches a rotatable docking station to reposition the angle of the
tablet computer, but not one which is adjustable to fit the size of the tablet
computer. Accordingly, we agree with Appellant that the Examiner’s
proposed combination of Altounian and Wilson would not have taught or
suggested the disputed limitation. Because Appellant has shown at least one
reversible error in the Examiner’s obviousness rejection of independent
claims 1 and 14, we do not reach Appellant’s remaining arguments.
Accordingly, we do not sustain the Examiner’s obviousness rejection of
independent claims 1 and 14, each of which includes the argued disputed
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Application 15/813,784

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limitation. Likewise, we do not sustain the rejections of dependent claims
2–6, 8–10, 12, and 16–24, which also recite the disputed limitation.

VI. CONCLUSION
We reverse the Examiner’s rejection of claims 1–6, 8–10, 12, 14, 16–
24.

VII. DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
1–6, 8–10,
12, 14,
16–24
103 Altounian, Wilson
1–6, 8–10,
12, 14, 16–
24

REVERSED