2020004153 (P.T.A.B. Mar. 22, 2021)

General Electric Company et al.

Patent Trials and Appeals BoardMar 22, 2021

2020004153 (P.T.A.B. Mar. 22, 2021)

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. 15/109,414 06/30/2016 Bernard BOUVIER 270298-US-2 (GEMS:0632) 6215 68174 7590 03/22/2021 GE HEALTHCARE c/o FLETCHER YODER, PC P.O. BOX 692289 HOUSTON, TX 77269-2289 EXAMINER WILLIAMS, MAURICE L ART UNIT PAPER NUMBER 3611 NOTIFICATION DATE DELIVERY MODE 03/22/2021 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@fyiplaw.com rariden@fyiplaw.com robinson@fyiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BERNARD BOUVIER and FRANCOLS KOTIAN Appeal 2020-004153 Application 15/109,414 Technology Center 3600 Before BRETT C. MARTIN, WILLIAM A. CAPP, and LEE L. STEPINA, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–4 and 6–15. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies General Electric Company as the real party in interest. Appeal Br. 1. Appeal 2020-004153 Application 15/109,414 2 CLAIMED SUBJECT MATTER The claims are directed to a mobile base including an air cushion platform and designed to receive a medical imaging system, such as an X- ray machine. Spec. 1:4–7, 3:9–14. Claims 1, 7, and 10 are independent, and claim 1, reproduced below with emphasis added, is illustrative of the claimed subject matter. 1. A mobile base integral with a medical imaging machine or on which a medical imaging machine is to be mounted, comprising: an air cushion platform configured to generate a layer of pressurized air that directly contacts the ground to form an air cushion between the air cushion platform and the ground when pressurized air is supplied so that movability of the air cushion platform is improved relative to the movability of the air cushion platform when pressurized air is not supplied, the air cushion platform being further configured to maintain the mobile base and its medical imaging machine stable on the ground when not supplied with pressurized air; and an apron that surrounds the air cushion platform, wherein the apron is configured to come into contact with the ground to limit air exhaust when the air cushion is formed. Appeal Br. 10 (Claims App.). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Cockerell US 3,442,348 May 6, 1969 Muller US 3,726,493 Apr. 10, 1973 Thompson US 3,893,538 July 8, 1975 Juergen ’7842 DE 102005052784 B3 Nov. 5, 2005 2 Our citations to the text of Juergen ’784 are to the English-language translation of this reference provided by the Examiner. Appeal 2020-004153 Application 15/109,414 3 REJECTIONS I. Claims 1–4, 6–8, and 10–15 are rejected under 35 U.S.C. § 103(a) as unpatentable over Juergen ’784, Thompson, and Cockerell. II. Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over Juergen ’784, Thompson, Cockerell, and Muller. OPINION Rejection I (Juergen ’784, Thompson, and Cockerell) The Examiner relies on Juergen ’784 to disclose many of the elements recited in claim 1, but relies on Thompson to teach an apron. Final Act. 2–4. The Examiner relies on Cockerell to teach a system that generates a layer of pressurized air that directly contacts the ground to form an air cushion. Id. at 4; see also Ans. 8 (“the Cockerell reference was incorporated as it clearly illustrates the path of the pressurized air to the ground (shown by arrows exiting device)).” The Examiner reason it would have been obvious to modify Juergen as taught by Cockerell in order to yield the predictable result of using a lifting means with an air re-use system which would improve the efficiency of the vehicle by reducing the amount of supplied air that escapes from the device and to provide a plurality of air tunnels in order to provide balanced distribution of the air cushion. Id. at 5. Appellant contends that Juergen ’784 discusses an air cushion only in the context of air bags 10 and 11, and the Examiner does not set forth any rationale as to why a person of ordinary skill in the art would have been motivated to replace air bags 10 and 11 of Juergen ’784 with a system that pressurizes a layer of air so that directly contacts the ground. Appeal Br. 7. Appellant asserts that the Examiner’s stated rationale (improving the Appeal 2020-004153 Application 15/109,414 4 efficiency of the vehicle by reducing the amount of air that escapes) applies only after air bags 10 and 11 have already been replaced with a system in which air directly contacts the ground to form an air cushion. The Examiner responds by reiterating reusing air would improve efficiency by reducing the amount of escaping air. See Ans. 9–10. The Examiner also states, “Applicant has not provided evidence that the use of air bags inherently prevents air from escaping. To the contrary, because air cushion devices use a layer of air to transport a device, it is possible for air to escape and providing a system that reuses the pressurized air would improve the function of the device.” Ans. 9–10. We agree with Appellant that the Examiner’s rationale regarding the teachings of Cockerell does not address why it would have been obvious to modify air bags 10 and 11 of Juergen ’784 such that an air cushion is formed with a layer of pressurized air that directly contacts the ground. The Examiner’s discussion of improving efficiency by reducing the amount of air that escapes assumes that air escapes from air bags 10 and 11 of Juergen ’784. However, the Examiner does not adequately explain how air would escape from air bags in this manner absent an additional change in Juergen ’784’s system from reliance on air bags to reliance on a system similar to that disclosed by Cockerell. In other words, the Examiner sets forth reasoning for reusing air when a system uses pressurized air that makes direct contact with the ground, but the Examiner does not set forth any reasoning for modifying Juergen ’784’s system to use pressurized air in this way such that the efficiency benefit touted by the Examiner would be relevant. Accordingly, we do not sustain the Examiner’s rejection of claim 1, and claims 2–4 and 6 depending therefrom, as unpatentable over Juergen ’784, Thompson, and Cockerell. Appeal 2020-004153 Application 15/109,414 5 Independent claims 7 and 10 recite substantially similar language to that discussed above regarding claim 1. See Appeal Br. 11–12 (Claims App.). Accordingly, for the same reasons, we do not sustain the Examiner’s rejection of claims 7 and 10, and associated dependent claims 8 and 11–15, as unpatentable over Juergen ’784, Thompson, and Cockerell. Rejection II (Juergen ’784, Thompson, Cockerell, and Muller) The Examiner does not use the teachings of Muller in any manner that would remedy the deficiency discussed above regarding Rejection I. See Final Act. 4–5. Accordingly, for the same reasons, we do not sustain Rejection II. NEW GROUND OF REJECTION We enter a new ground of rejection of claims 1, 7, and 10 as anticipated by Juergen, DE 42 24 614 B4, April 29, 2004 (hereinafter, “Juergen ’614”).3 Claim 1 Regarding claim 1, Juergen ’614 discloses a mobile base integral with a medical imaging machine or on which a medical imaging machine is to be mounted (“[t]he invention relates to a vehicle for a mobile X-ray diagnostic device for automatic method on a floor.”). Juergen ’614 ¶ 1; see also id. ¶¶ 10, 11. Juergen ’614 describes an air cushion platform configured to generate a layer of pressurized air that directly contacts the ground to form an air cushion between the air cushion platform and the ground when pressurized air is supplied so that movability of the air cushion platform is 3 Juergen ’614 is discussed in paragraph 3 of Juergen ’784. Our citations to the text of Juergen ’614 are to the English-language translation of Juergen ’614 provided herewith. Appeal 2020-004153 Application 15/109,414 6 improved relative to the movability of the air cushion platform when pressurized air is not supplied. See id. ¶¶ 10–11, Fig. 3. Specifically, Juergen ’614 states, “[t]he X-ray diagnostic device (30) facilitates the movement of the carriage by creating an air cushion (34) on which the carriage can be moved below the carriage,” and “[t]he air passes through the nozzles (32) between the underside of the car and the floor, creating the air cushion.” Id. ¶ 11. Juergen ’614 further discloses that its air cushion platform is further configured to maintain the mobile base and its medical imaging machine stable on the ground when not supplied with pressurized air. Id. (“After the trolley has been adjusted, the compressed air generation is switched off and the trolley frame sinks to the floor.”). Juergen ’614 also discloses an apron that surrounds the air cushion platform, and Juergen ’614’s apron is configured to come into contact with the ground to limit air exhaust when the air cushion is formed. Id. (“In order to prevent dust from being whirled up in the operating room, a circumferential apron (33) is attached around the air outlet gap (37).”). Figure 3 of Juergen ’614 depicts apron 33 touching the ground. Accordingly, Juergen ’614 teaches all the elements of claim 1, and we enter a new ground of rejection of claim 1 under 35 U.S.C. § 102(a)(1) as anticipated by Juergen ’614. Claim 7 Juergen ’614 also discloses all of the elements required by claim 7. Claim 7 differs from claim 1 by reciting a mobile base in the body of the claim rather than the preamble. Paragraphs 1, 10, and 11 of Juergen ’614 meet this claim requirement. See also Juergen ’614, Fig. 3. Claim 7 further requires “a compressor configured to supply the mobile base with pressurized air.” Appeal Br. 11 (Claims App.). Juergen ’614 discloses “a circumferential apron (33) is attached around the air outlet gap (37), which Appeal 2020-004153 Application 15/109,414 7 forms an enclosed space (36) with the floor and the trolley frame, from which the air is passed to the compressor to generate the overpressure is fed back in the volume (35).” Accordingly, we enter a new ground of rejection of claim 7 under 35 U.S.C. § 102(a)(1) as anticipated by Juergen ’614. Claim 10 Juergen ’614 also discloses all of the elements required by claim 10. Claim 10 differs from claim 1 by reciting, in its body, a mobile base that is integral with the medical imaging machine or configured to support the medical imaging machine when mounted thereon. Appeal Br. 11–12 (Claims App.). As discussed above regarding claim 7, paragraphs 1, 10, and 11 of Juergen ’614 meet this claim requirement. Accordingly, we enter a new ground of rejection of claim 10 under 35 U.S.C. § 102(a)(1) as anticipated by Juergen ’614. Claims 2–4, 6, 8, 9, and 11–15 Although we decline to reject dependent claims 2–4, 6, 8, 9, and 11–15 under our discretionary authority under 37 C.F.R. § 41.50(b), we emphasize that our decision does not mean the remaining claims are patentable. Rather, we merely leave the patentability determination of these claims to the Examiner. See MPEP § 1213.02. Appeal 2020-004153 Application 15/109,414 8 CONCLUSION The Examiner’s rejections are reversed, and we enter a new ground of rejection of claims 1, 7, and 10 as anticipated by Juergen ’614. DECISION SUMMARY Claims Rejected 35 U.S.C. § Basis Affirmed Reversed New Ground 1–4, 6–8, 10–15 103(a) Juergen ’784, Thompson, Cockerell 1–4, 6–8, 10–15 9 103(a) Juergen ’784, Thompson, Cockerell, Muller 9 1, 7, 10 102(a)(1) Juergen ’614 1, 7, 10 Overall Outcome 1–4, 6–15 1, 7, 10 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: Appeal 2020-004153 Application 15/109,414 9 (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). REVERSED; 37 C.F.R. § 41.50(B)