Ex Parte Kruip

Patent Trial and Appeal Board

Feb 3, 2014

11917959 (P.T.A.B. Feb. 3, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MARCEL JAN MARIE KRUIP
__________

Appeal 2012-001910
Application 11/917,959
Technology Center 3700
__________

Before ERIC GRIMES, JEFFREY N. FREDMAN, and
JAMES C. HOUSEL, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to particle
radiation therapy equipment. The Examiner rejected the claims as lacking
descriptive support and as anticipated. We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse.

1 Appellant identifies the Real Party in Interest as Siemens Plc.
(see App. Br. 1).
Appeal 2012-001910
Application 11/917,959

2
Statement of the Case
Background
“According to the present invention, MRI imaging at the same time as
particle radiation therapy is enabled by providing an MRI system which
operates with a magnetic field in a transverse direction . . . parallel to the
intended direction of application of the beam of charged particles” (Spec. 3,
ll. 10-13). The Specification teaches that this arrangement minimizes “the
interference of the magnetic field with the charged particle beam while
allowing access to the patient” (Spec. 3, ll. 13-15).
The Claims
Claims 1-11 are on appeal. Claim 1 is representative and reads as
follows:
1. Particle radiation therapy equipment arranged to apply
a charged particle beam in a predetermined direction (Z) to a
region of application, said equipment comprising:
a charged particle beam source arranged to direct a
charged particle beam in the predetermined direction; and
magnetic field generation means for generating a
magnetic field in an imaging volume which includes the
region of application, at the same time that the charged
particle beam is applied; wherein
the magnetic field generation means comprises coils
that are arranged so as to provide access to the region of
application for the charged particle beam, and to provide a
homogeneous magnetic field in the region of application of
the charged particle beam;
said magnetic field is directed substantially in the
predetermined direction;
the coils are non-planar, and are arranged on a tubular
former; and
the predetermined direction is perpendicular to the
axis of the tubular former.
Appeal 2012-001910
Application 11/917,959

3

The issues
A. The Examiner objected to claims 1-11 under 37 CFR 1.75(d)(1) as
failing to provide proper antecedent basis (Ans. 5).
B. The Examiner rejected claims 1-11 under 35 U.S.C. § 102(b) as
anticipated by Bucholz2 (Ans. 6-10).
A. Written Description3
The Examiner finds that “Claims 1 and 7 recite ‘non-planar’ coils
however this term is not addressed in the specification and lacks antecedent
basis in the disclosure” (Ans. 5).
Appellant contends that “the term ‘non-planar’ was included in the
claims as initially filed, including the priority document, and has been
maintained through two Office Actions and responsive Amendments”
(Reply Br. 2).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that the phrase “non-planar” lacks either
antecedent basis or descriptive support in the Specification?
Findings of Fact
1. Originally filed claim 1 recites “[p]article radiation therapy
equipment . . . comprising magnetic field generation means . . . wherein the

2 Bucholz et al., US 2004/0199068 A1, published Oct. 7, 2004.
3 Ordinarily an objection is petitionable, and a rejection is
appealable to the Board. However, when the issue of new matter
presented is the subject of both an objection and a rejection, the
issue is appealable. In this case, the Examiner identified the
objection as a “New Ground of Rejection”, and the antecedent
basis issue is, therefore, relevant as an issue of new matter.
Appeal 2012-001910
Application 11/917,959

4
coils are non-planar, the coils are arranged on a tubular former” (Spec. 12,
ll. 3-14; emphasis added).
Principles of Law
Disclosure in an originally filed claim satisfies the written description
requirement. See In re Gardner, 480 F.2d 879, 880 (CCPA 1973) (“Under
these circumstances, we consider the original claim in itself adequate
‘written description’ of the claimed invention. It was equally a ‘written
description’ ... whether located among the original claims or in the
descriptive part of the specification.”).
Analysis
The phrase “non-planar coils” finds express descriptive support and
antecedent basis in the originally filed claim 1 (FF 1). Originally filed
claims are part of the Specification and may be relied upon by a patent
applicant for either antecedent basis or descriptive support of a claim term or
phrase. Gardner, 480 F.2d at 880.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that the phrase “non-planar” lacks either antecedent basis or descriptive
support in the Specification.
B. 35 U.S.C. § 102(b) over Bucholz
The Examiner finds that Bucholz teaches
particle radiation therapy equipment arranged to apply a
charged particle beam in a predetermined direction (Z) to a
region of application (Figures 1-4, 10-11 and Paragraphs 44-
47), comprising a charged particle beam source arranged to
direct a charged particle beam in the predetermined direction
. . . further comprising magnetic field generation means for
Appeal 2012-001910
Application 11/917,959

5
generating a magnetic field in an imaging volume which
includes the region of application at the same time that the
charged particle beam is applied (Paragraphs 3 and 44-47),
wherein the magnetic field generation means comprises coils
arranged to provide access to the region of application for
the charged particle beam, and to provide a homogeneous
magnetic field in the region of application of the charged
particle beam, said magnetic field being directed
substantially in the predetermined direction, wherein the
coils are non- planar, the coils are arranged on a tubular
former, and the predetermined direction is perpendicular to
the axis (X) of the tubular former

(Ans. 6-7). The Examiner relies upon the prior art, including Knuettel,4 to
establish that non-planar coils and tubular formers were known (see Ans. 11-
13).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Bucholz anticipates a magnetic field
generation means where “the coils are non-planar, and are arranged on a
tubular former” as required by claim 1?
Findings of Fact
2. Bucholz teaches a “system which coordinates proton beam
irradiation with an open magnetic resonance imaging (MRI) unit to achieve
near-simultaneous, noninvasive localization and radiotherapy of various cell
lines in various anatomic locations by maintaining coincidence between the
target and the proton beam” (Bucholz 1 ¶ 0003).
3. Bucholz teaches that:

4 Knuettel et al., U.S. 4,490,675, issued Dec. 25, 1984.
Appeal 2012-001910
Application 11/917,959

6
The proton beam generated by a medical cyclotron has
similar biological activity for the destruction of tumors as
standard radiation therapy techniques to target a fixed tumor
site with minimal radiotoxicity to the surrounding normal
tissues. Because protons of a specific energy have a specific
penetration depth, adjusting the specific energy of the
protons manipulates the distance the proton beam travels
into the patient.

(Bucholz 1 ¶ 0005).
4. Figures 3 and 4 of Bucholz are reproduced below:

Appeal 2012-001910
Application 11/917,959

7
“FIG. 3 is a block diagram . . . in which the patient support is adjusted
during irradiation to maximize the time the treatment volume and target are
coincident or adjacent. . . . FIG. 4 is a lateral elevation view of the patient
support showing the patient on the platform of the patient support” (Bucholz
2 ¶¶ 0030-0031).
5. Bucholz teaches that “[w]hile open MRI units are required in
the preferred embodiment of the present invention, it is acknowledged that
other embodiments of the present invention may be compatible with
standard, closed-bore MRI units” (Bucholz 2 ¶ 0044)
6. Bucholz teaches that
A patient 142 has tumorous tissue, such as a target
146, to be irradiated by a proton beam 111. A proton beam
radiating apparatus 110 located outside of a pair of magnets
116 of an MRI unit 156 emits the proton beam 111 which
first passes through an optional water attenuator 112. The
proton beam 111 then passes through an optional beam pipe
114 located within one of the magnets 116 before entering
the patient 142. The proton beam 111 focuses on a treatment
volume 144 within the patient 142 and is activated when the
treatment volume 144 is at least partially coincident with the
target 146. The attenuator 112 and beam pipe 114 are used,
if needed, to position the treatment volume 144 between the
magnets 116. Activation of the proton beam radiating
apparatus 110 occurs through the use of an activation signal
153 received from a controller 150. The controller 150 sends
the activation signal 153 when body images 154 received
from the MRI unit 156 indicate that the target 146 as defined
by a reference image 152 from an earlier MRI scan overlaps
the treatment volume 144. The reference images 152 reside
in memory accessible by the controller 150.

(Bucholz 2-3 ¶ 0046).
Appeal 2012-001910
Application 11/917,959

8
7. Bucholz teaches that:
The patient 142 rests on a patient support 130
comprising a substantially horizontal platform 134
supported by a pair of upright supporting mechanisms 136
on either end of the platform 134 (e.g., head and toe)
connected to a base frame 148 on casters. The patient
support 130 resides between the magnets 116 of the MRI
unit 156. The patient support 130 adjusts within an XYZ-
axis coordinate system. The X-axis extends side to side
along the width of the patient 142. The Y-axis extends front
to back along the depth of the patient 142, substantially
perpendicular to the base frame 148. The Z-axis, as shown
in FIG. 4, extends from head to toe along the longitudinal
axis defining the height of the patient 142.

(Bucholz 3 ¶ 0047).
8. Figure 1 of Knuettel is reproduced below:

“FIG. 1 is a longitudinal sectional view of a first embodiment of the
electromagnet” (Knuettel, col. 5, ll. 4-5).
9. Knuettel teaches that:
The electromagnet illustrated in FIG. 1 comprises a
cylindrical field coil 1 having correction or error coils 2 and
3 disposed at each end and concentrically surrounding the
Appeal 2012-001910
Application 11/917,959

9
field coil 1. The coils 1 to 3 are enclosed in a cylindrical
shell 4 made of soft iron, with a clearance between the inner
surface of the shell and the coils 1 to 3. The length L of the
cylindrical shell 4 slightly exceeds the length of the
cylindrical coil 1. The coils 1 to 3 are wound upon cores 6
and 7 which are supported and simultaneously centered with
respect to the cylindrical shell by spacer discs 8. It is also
possible to have the annular iron discs 5 take over the
function of supporting and centering the cores 6 and 7. The
cores 6 and 7 and the spacer discs 8 are made of
nonmagnetic materials, such as aluminum or bronze.
Mounted in the openings of the annular disc 5 are tubular
projections or studs 9, which are also made of iron and
whose diameter is slightly less than the diameter of the
cylindrical coil 1. The length L of the cylindrical shell 4 and
the interior diameter d of the tubular stud 9 are substantially
determined by the dimensions of the body to be examined
and the degree of homogeneity required of the magnetic
field. Considering the dimensions involved in examining the
human body, the space requirements of the electromagnet of
FIG. 1 are relatively low, and in any event are substantially
less than the space required for a conventional Helmholtz
Double Coil apparatus.

(Knuettel, col. 5, ll. 17-43).
Principles of Law
“A single prior art reference that discloses, either expressly or
inherently, each limitation of a claim invalidates that claim by anticipation.”
Perricone v. Medicis Pharmaceutical Corp., 432 F.3d 1368, 1375 (Fed. Cir.
2005).
Analysis
Appellant contends that there “is no suggestion in Bucholz et al. of
such an arrangement which uses non-planar coils mounted on a tubular
Appeal 2012-001910
Application 11/917,959

10
former” (App. Br. 13). Appellant contends that “no such conventional MRI
system has been known heretofore which is capable of achieving a magnetic
field which is parallel to the direction of propagation of the radiation beam,
and at the same time permits the direction of propagation of the radiation
beam to be perpendicular to the axis of the tubular former” (App. Br. 12-13).
The Examiner responds that:
It is well known in the art that “standard, closed-bore
MRI units” are tubular in nature and therefore inherently
disclose “non-planar” coils (as the coils encompass the
structure of the closed bore) and a “tubular former” (which
could be any portion of the closed bore itself, including a
plastic casing or a structural element, both of which are
inherently present in the “standard, closed-bore MRI units”
disclosed in Paragraph 44).

(Ans. 11). The Examiner finds that “[a]lthough Bucholz’s disclosure of
‘standard, closed-bore MRI units’ does not explicitly disclose that the coils
are ‘non-planar’ and that the ‘non-planar coils are arranged on a tubular
former’, it has been known in the art that ‘standard, closed-bore MRI units’
inherently disclose non-planar coils and tubular formers for decades” (Ans.
13).
We find that Appellant has the better position. The Examiner
expressly acknowledges that Bucholz does not teach “non-planar coils” or
arrangement of these coils on a “tubular former” as required by claim 1 (see
Ans. 13). The Examiner relies upon the prior art, including Knuettel, to
establish that such non-planar coils and tubular formers were known (see
Ans. 11-13).
Appeal 2012-001910
Application 11/917,959

11
We find the Examiner’s arguments unpersuasive. We do not find that
the Examiner has established that Knuettel teaches “non-planar coils” as
required by claim 1, since the cited figure and portion of Knuettel do not
state or clearly describe coils which are non-planar (FF 8-9). Knuettel
teaches “coils 1 to 3 are wound upon cores 6 and 7 which are supported and
simultaneously centered with respect to the cylindrical shell by spacer discs
8” (Knuettel, col. 5, ll. 24-27; FF 9), but Knuettel provides no express
indication that these coils are non-planar.
Even if we accept the Examiner’s statements at face value, that
Knuettel discloses “non-planar coils” and a “tubular former”, the Examiner
has not established that all standard, closed bore MRI units disclosed by
Bucholz necessarily rely upon “non-planar coils” and a “tubular former”.
The instant rejection is one of anticipation, not obviousness, so each and
every limitation of claim 1 must be found either expressly or inherently in
the teaching of Bucholz. Perricone, 432 F.3d at 1375. The Examiner
acknowledges that the “non-planar coil” limitation is not expressly found in
Bucholz (see Ans. 13).
Therefore, the Examiner must establish that the standard, closed bore
MRI units in the prior art inherently comprise “non-planar coils”. The
disclosure of a particular embodiment of Knuettel does not establish that
fact. “Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set of
circumstances is not sufficient.” MEHL/Biophile Intern. Corp. v. Milgraum,
192 F.3d 1362, 1365 (Fed. Cir. 1999). In this case, the Examiner has not
established that Bucholz necessarily and inherently teaches “non-planar
Appeal 2012-001910
Application 11/917,959

12
coils” and a “tubular former” as required by claim 1. Claim 7, the only other
independent claim, also requires “non-planar coils” and a “tubular former.”
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Bucholz anticipates a magnetic field generation means where “the coils
are non-planar, and are arranged on a tubular former” as required by claims
1 and 7.
SUMMARY
In summary, we reverse the objection of claims 1-11 under 37 CFR
1.75(d)(1) as failing to provide proper antecedent basis.
We reverse the rejection of claims 1-11 under 35 U.S.C. § 102(b) as
anticipated by Bucholz.

REVERSED

lp