RaPID Medical Technologies, LLC

Patent Trials and Appeals Board

Dec 9, 2020

2019004804 (P.T.A.B. Dec. 9, 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.
14/846,882 09/07/2015 Vicko Gluncic RaPID-1B-552-12815 6427
77741 7590 12/09/2020
Brannon Sowers & Cracraft PC
47 South Meridian Street
Suite 400
Indianapolis, IN 46204
EXAMINER
SAINI, AMANDEEP SINGH
ART UNIT PAPER NUMBER
2661
NOTIFICATION DATE DELIVERY MODE
12/09/2020 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@bscattorneys.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VICKO GLUNCIC, GADY AGAM, MARIO MORIC, and
SHIRLEY VIRGINIA RICHARD
Appeal 2019-004804
Application 14/846,882
Technology Center 2600
Before ADAM J. PYONIN, JOHN R. KENNY, and
DAVID J. CUTITTA II, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Herein, “Appellant” refers to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as RaPID Medical
Technologies, LLC. Appeal Br. 1.
Appeal 2019-004804
Application 14/846,882

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STATEMENT OF THE CASE
Introduction
The Application is directed to “coordinat[ing] existing medical
procedures and protocols with image detection software to integrate and
enhance the identification of [implanted medical devices] and the detection
of [retained surgical items] that had previously been unattainable.”
Spec. ¶ 69. Claims 1–20 are pending; claims 1, 8, and 15 are independent.
Appeal Br. 11–13. Claim 1 is reproduced below for reference (some
formatting and emphasis added):
1. A method for performing a medical procedure on a patient
by an attending physician
wherein a scan is taken of the patient specifically for the
identification of an implanted medical device prior to the medical
procedure,
the scan being taken with specific scan parameters
different than that of a diagnostic scan, and
an evaluation of the scan is presented to the attending
physician prior to the medical procedure.
References and Rejections2
Claims 1–6, 8–13, and 15–19 are provisionally rejected on the ground
of nonstatutory double patenting in view of Application No. 14/846,880.
Non-Final Act. 6.3

2 The Examiner has withdrawn the rejection of the claims under 35 U.S.C.
§ 101. See Ans. 3
3 Although Appellant does not identify any appeals related to this proceeding
(see Appeal Br. 2), we note a notice of appeal was filed for Application No.
14/846,880 on August 20, 2018 (prior to the filing date of the Appeal Brief
in this proceeding). In view of the double patenting rejection, it appears that
appeal should have been identified as a related appeal to this proceeding.
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Claims 1–6, 8–13, and 15–19 are rejected under 35 U.S.C. § 103 as
obvious in view of Gluncic (WO 2013/082289 Al; June 6, 2013) and
Shapiro (US 2009/0252285 A1; Oct 8, 2009). Non-Final Act. 8–13.
Claims 7, 14, and 20 are rejected under 35 U.S.C. § 103 as obvious in
view of Gluncic, Shapiro, and Claus (US 2012/0093383 A1; Apr. 19, 2012).
Non-Final Act. 14, 15.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. Arguments Appellant could have made but chose not to make
are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv).

Combination of Cited References
Appellant argues “[t]he rejection of Claims 1-20 under 35 U.S.C.
§ 103 as being unpatentable over Gluncic . . . in view of Shapiro et al. . . .
are inadequate based on fact and law.”4 Appeal Br. 8. According to
Appellant, the “Gluncic invention used ordinary diagnostic scans to analyze
and identify or detect,” and provides “no disclosure, teaching, or suggestion
of using a scanning power level different than a diagnostic scan to enhance
the identification or detection as in the presently claimed invention.” Id. at
8, 9.5 Appellant contends the Examiner has not provided a sufficient reason
to combine Gluncic with Shapiro in the manner claimed, because “an artisan

4 Claims 7, 14, and 20 are separately rejected. See Non-Final Act. 14.
Appellant does not address the rejection of claims 7, 14, 20 in view of
Gluncic, Shapiro, and Claus.
5 We note present claim 1 does not recite a power level.
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skilled in this art would find the diagnostic CT scan procedure of Shapiro to
be incompatible with the more timely requirements of the medical
procedures recited by the pending Claims, and thus the Examiner’s position
lacks any reasoning to sustain the rejection.” Reply Br. 2.
We are not persuaded the Examiner’s rejection is in error. “In
determining whether the subject matter of a patent claim is obvious. . . .
[w]hat matters is the objective reach of the claim.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 419 (2007). Further, “the problem motivating the
patentee may be only one of many addressed by the patent’s subject matter,”
and “[u]nder the correct analysis, any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a
reason for combining the elements in the manner claimed.” Id. at 420.
Here, the Examiner finds, and Appellant does not challenge, that Gluncic
teaches all limitations of the claim other than the claimed “scan being taken
with specific scan parameters different than that of a diagnostic scan.” See
Non-Final Act. 4; Appeal Br. 8, 9; Gluncic Fig. 6. The Examiner finds one
of ordinary skill would combine Gluncic’s method with Shapiro’s teachings
regarding varying power levels as scan parameters, to “allow for the
configuration of the scan power to effectively image the implanted medical
device.” Non-Final Act. 4; Shapiro ¶ 24; see also Ans. 6 (Finding the prior
art teaches that “exposing a patient to a high power scan . . . is not
necessary.”).
Appellant demonstrates no error in the Examiner’s combination.
Gluncic teaches using “[p]attern recognition software/algorithms . . . in the
detection of objects . . . . in radiological images” (Gluncic ¶ 88), “which may
impact the treatment strategy/clinical course for a particular patient”
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(Gluncic ¶ 22). See Gluncic Fig. 6, ¶¶ 9, 11; Non-Final Act. 8, 9. Gluncic,
however, is silent with respect to the scan parameters (such as power levels)
used in obtaining the radiological images. Shapiro teaches “emit[ting] an X-
ray beam having low power relative [to] each of the other sources when used
for the preliminary and/or tracking scans, and high power when used for the
diagnostic scan.” Shapiro ¶ 24; Non-Final Act. 9. Shapiro, as cited by the
Appellant, explains that it “is beneficial to reduce the over-all radiation dose
applied to the patient.” Shapiro ¶ 57; Reply Br. 2 (“Shapiro only mentions
low power for preliminary or tracking scans, scans which are used to
determine the best intensity for performing the complete diagnostic scan
(e.g., see Shapiro at [0056], [0057], and [0059].”). Appellant fails to provide
evidence or sufficient technical reasoning to persuade us that Shapiro’s
teachings are incompatible with the processes taught by Gluncic. Rather, we
agree with the Examiner that one of ordinary skill would use relatively lower
power scan parameters (as taught by Shapiro) in performing Gluncic’s
object detection method, to configure the scan power properly without
exposing a patient to a high power scan. See Non-Final Act. 4; Ans. 6.
Appellant provides a Declaration, which states Shapiro “is unrelated
to the detection of retained foreign objects (or RFO’s)” and “provides no
insight into the best power level for an RFO scan.” Declaration of Joy
Sclamberg, item 5. We note, however, claim 1 does not recite the best
power level, only that the scan parameters are different from other
parameters. More importantly, we do not find the Declaration persuasive of
Examiner error. That Shapiro teaches using low power scans for
preliminary or tracking scans (see Shapiro ¶ 24)—as opposed to identifying
implanted objects in a person—is not determinative of error in the
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Examiner’s finding that one of ordinary skill would have combined Gluncic
with Schapiro in the manner claimed.
The consequent legal question, here, is what parameters, such as
power level, an artisan of ordinary skill would have chosen when running
Gluncic’s scans. Shapiro’s teachings of varying the scan power leads to the
conclusion that using low power scans would have been obvious to a person
of ordinary skill. See Non-Final Act. 4; Shapiro ¶¶ 24, 57; cf. KSR, 550 U.S.
at 424–25 (“the question was where to attach the sensor. . . . [t]he
consequent legal question, then, is whether a pedal designer of ordinary skill
starting with Asano would have found it obvious to put the sensor on a fixed
pivot point”). Thus, we do not find the Examiner errs in finding the
limitations of claim 1 to be obvious in view of the combination of Gluncic
and Shapiro.
We sustain the Examiner’s obviousness rejection of independent
claim 1, and of the remaining claims for which Appellant does present
separate substantive arguments.

Official Notice
With respect to the Examiner’s taking of Official Notice, Appellant
states “any alleged factual statements made in the rejections of the
03/20/2017 office action have all been challenged in Applicant's response of
06/24/2017.” Appeal Br. 9, 10. Appellant further states the Examiner’s
assertions “do not put [Appellant] on notice of the basis for the grounds of
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rejection and cannot satisfy these requirements” for Official Notice. Id. at
10.
Appellant does not identify the claims at issue, the particular
limitations that may be missing in the cited references, or otherwise show
error in the Examiner’s findings. We note the appeal “brief should not
incorporate or reference previous responses.” MPEP § 1205.02. Based on
the record before us, Appellant has not presented sufficient analysis that
rises to the level of an argument for separate patentability of the claims, let
alone present persuasive arguments showing the Examiner’s taking of
official notice is in error. See 37 C.F.R. § 41.37(c)(1)(iv); cf. In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011). Accordingly, we do not find the
Examiner errs.

Double Patenting
Appellant does not challenge the Examiner’s double patenting
rejection. See Appeal Br. 6–10; Ans. 10. Therefore, we summarily sustain
this rejection.

Claim Definiteness
Claim 1 recites “A method for performing a medical procedure on a
patient.” The claim, however, does not appear to actively recite any steps.
Rather, the claim includes a wherein clause regarding a “scan being taken . .
. prior to the medical procedure.” In the event of further prosecution, the
Examiner may wish to determine whether claim 1 is indefinite for lacking
sufficient clarity regarding the scope of the claimed invention. See, e.g.,
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MPEP § 2173.05(q) (“Attempts to claim a process without setting forth any
steps involved in the process generally raises an issue of indefiniteness.”).

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 8–13,
15–19
nonstatutory
double patenting
Application No.
14/846,882
1–6, 8–13,
15–19

1–6, 8–13,
15–19
103 Gluncic, Shapiro 1–6, 8–13,
15–19

7, 14, 20 103 Gluncic, Shapiro,
Claus
7, 14, 20
Overall
Outcome
1–20

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED