ASPECT IMAGING LTD.

Patent Trials and Appeals Board

Jan 31, 2020

13903050 - (D) (P.T.A.B. Jan. 31, 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.
13/903,050 05/28/2013 Uri RAPOPORT P-79886-US 4350
69139 7590 01/31/2020
LOEB & LOEB, LLP
321 NORTH CLARK
SUITE 2300
CHICAGO, IL 60654-4746
EXAMINER
COOK, CHRISTOPHER L
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
01/31/2020 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):
CHPATENT@LOEB.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte URI RAPOPORT
Appeal 2018-005560
Application 13/903,050
Technology Center 3700
Before JENNIFER D. BAHR, LINDA E. HORNER, and
MICHELLE R. OSINSKI, Administrative Patent Judges.
BAHR, 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, 5, 9, 11, 13, 14, 23, and 24. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Aspect
Imaging Ltd. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
Appellant’s invention is directed to “an interfacing system and a
reversible method thereof, for providing neonates and premature-babies a
predefined, continuous, stabilized, non-interrupted environment within
scanning or imaging-devices, such as MRI & CT, during the entire process
of imaging or scanning, usually having an ambient environment unsuitable
for said neonates and premature-baby.” Spec. ¶ 1. Claims 1 and 23 are
independent. Claim 1, reproduced below, is representative of the claimed
subject matter.
1. A neonate incubator for inserting a neonate into an imaging
device having a bore, the neonate incubator comprising:
a movable bed that translates between the neonate
incubator and a bore of the imaging device, the movable bed for
accommodating said neonate, wherein the movable bed is
planar and configured to allow the neonate to rest on the
movable bed continuously before, during and after imaging,
a life support system to provide said predefined
life-support environmental conditions in said neonate incubator;
a first opening with at least one gasket surrounding said
opening, the first opening dimensioned to allow moving said
movable bed therethrough and to mate with a second opening
of the imaging device such that pre-defined life-support
conditions are achievable and maintainable when the moveable
bed is inserted within said bore of said imaging device;
wherein said at least one gasket is reversibly and
hermetically connected around said second opening and to
hermetically seal said bore when said neonate incubator and
said imaging-device are brought together and said first opening
is juxtaposed with said second opening.
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EVIDENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Proctor US 6,193,285 B1 Feb. 27, 2001
Rohling US 2002/0173717 A1 Nov. 21, 2002
Feenan US 2007/0232894 A1 Oct. 4, 2007
Radko US 2011/0048424 A1 Mar. 3, 2011
Dumoulin 22 US 2014/0357981 A1 Dec. 4, 2014
Dumoulin US 2014/0364722 A1 Dec. 11, 2014

REJECTIONS
I. Claims 1, 4, 5, 9, 11, 13, 14, 23, and 24 stand rejected under
35 U.S.C. § 112, second paragraph, as indefinite.
II. Claims 1, 4, 5, 9, 11, 13, 14, 23, and 24 stand rejected 35 U.S.C. § 103(a)
as unpatentable over Dumoulin, Feenan, Rohling, and Proctor.
III. Claims 1, 4, 5, 9, 11, 13, 14, 23, and 24 stand rejected 35 U.S.C. § 103(a)
as unpatentable over Dumoulin, Radko, Rohling, Feenan, and Proctor.
IV. Claims 1, 4, 5, 9, 11, 13, 14, 23, and 24 stand rejected 35 U.S.C. § 103(a)
as unpatentable over Dumoulin, Dumoulin 2, Rohling, Feenan, and
Proctor.
OPINION
Rejection I—Indefiniteness
The Examiner rejected claims 1, 4, 5, 9, 11, 13, 14, 23, and 24 under
35 U.S.C. § 112, second paragraph, as indefinite. Final Act. 2–3. Appellant

2 For convenience, we adopt the nomenclature used by the Examiner in
identifying this reference, as well as the other Dumoulin reference. See
Final Act. 10.
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does not present any substantive arguments contesting these rejections;
rather, Appellant states that “Appellant will make any necessary claim
amendments to address the deficiencies after the appeal, during regular
prosecution, after the prior art rejections are overcome.” Appeal Br. 3; see
Ans. 2 (stating that the rejections under 35 U.S.C. § 112, second paragraph,
are maintained). Accordingly, Appellant has waived any argument of error
in the rejections of 1, 4, 5, 9, 11, 13, 14, 23, and 24 under 35 U.S.C. § 112,
second paragraph, and we, therefore, summarily sustain these rejections.
See In re Berger, 279 F.3d 975, 984, 985 (Fed. Cir. 2002) (holding that the
Board did not err in sustaining a rejection under 35 U.S.C. § 112, second
paragraph, when the applicant failed to contest the rejection on appeal);
Manual of Patent Examining Procedure (MPEP) § 1205.02 (9th ed. rev.
08.2017 Jan. 2018) (“If a ground of rejection stated by the examiner is not
addressed in the appellant’s brief, appellant has waived any challenge to that
ground of rejection and the Board may summarily sustain it, unless the
examiner subsequently withdrew the rejection in the examiner’s answer.”).
Rejections II–IV—Obviousness
For each of the obviousness rejections, Appellant argues all of the
claims together. See Appeal Br. 6 (stating that “claim 23 defines patentable
subject matter, for the same reasons described above with respect to claim 1”
and that “[t]he dependent claims are allowable because they incorporate
each of the limitations of the respective base claims”). We decide the appeal
of each of the obviousness rejections on the basis of independent claim 1,
and claims 4, 5, 9, 11, 13, 14, 23, and 24 stand or fall with claim 1.
See 37 C.F.R. § 41.37(c)(1)(iv) (providing that when multiple claims subject
to the same ground of rejection are argued as a group by the appellant, the
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Board may select a single claim from the group to decide the appeal with
respect to the group as to the ground of rejection on the basis of the selected
claim alone).
For each of the obviousness rejections, the issue presented in this
appeal is whether the Examiner erred in determining it would have been
obvious to add a gasket to Dumoulin’s incubator 130 surrounding the
opening created when front panel 136 is flipped down, as illustrated in the
annotated figure on pages 5, 9, and 12 of the Final Action, to hermetically
seal the scanning chamber/bore when incubator 130 and the imaging device
are brought together “in order to better maintain the equalized life-support
environmental conditions when the incubator is ‘wheeled up’ to the MRI
system.” See Final Act. 5, 8, 12; Appeal Br. 4–6. We discuss all of the
obviousness rejections together because the pertinent arguments of
Appellant and findings and reasoning of the Examiner are the same for each
of these rejections.
The Examiner found that Dumoulin discloses a neonate incubator
substantially as recited in claim 1, with the exception of a gasket
surrounding the first opening (i.e., the opening created when front panel 136
is flipped down) that is reversibly and hermetically connected around the
opening to bore 105 of the imaging device (MRI scanner 102) to
hermetically seal the bore when the neonate incubator and the imaging
device are brought together and the first opening is juxtaposed with the
second opening. See Final Act. 3–4, 6–7, 10. The Examiner also found that
it is not clear whether Dumoulin’s “MRI bore is hermetically sealed with
said life-support environmental conditions.” Id. at 4, 7, 10.
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The Examiner relied on Feenan for its teaching of the importance of
equalizing the environments of the neonate incubator and the MRI system
prior to scanning when imaging neonates, but found that “it is unclear if
Feenan’s MRI bore includes a sealed bore in order to facilitate the
aforementioned equalization.” Final Act. 4 (italics omitted), 8, 11–12. The
Examiner relied on Rohling for its teaching of using a closed magnet bore in
MRI imaging of a neonate associated with an incubator. Id. at 4, 8, 11. In
view of the combined teachings of Dumoulin, Feenan, and Rohling, the
Examiner determined “it would have been obvious to one skilled in the art to
have ensured that the MRI bore described by Dumoulin was closed and
equalized as described by Feenan and Rohling in order to expand the life-
support environment into the scanner.” Id. at 4 (italics omitted). Further,
the Examiner determined “it would have been obvious to a person skilled in
the art to have sealed the MRI bore described by Dumoulin as described by
Rohling in order to expand the life-support environment into the scanner,”
especially in view of Feenan’s teaching of the importance of equalizing an
MRI environment when imaging neonates.” Id. at 8, 11–12 (italics omitted).
The Examiner found that “Proctor teaches a flexible gasket system for
joining two structures in an air-tight fashion.” Final Act. 5, 8, 12 (italics
omitted). The Examiner determined that “it would have been obvious to a
skilled artisan to have included any conventional, cooperating gasket means,
such as the flexible gasket system described by Proctor[,] in order to better
maintain the equalized life-support environmental conditions when the
incubator is ‘wheeled up’ to the MRI system.” Id. (italics omitted). The
Examiner added that “the proposed modification would hermetically seal the
scanning chamber (e.g. closed bore) as claimed.” Id. (referring to an
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annotated figure on pages 5, 9, and 12 of the Final Action identifying the
closed bore and the location of the gasketing system to be added to
Dumoulin).
Appellant argues that one of ordinary skill in the art would not need to
look to Proctor for sealing an MRI bore because “Feenan provides a solution
to the difference of environment between an incubator and imaging device,
which is each having their own environmental controls,” thereby obviating
the need for hermetic sealing, such as a gasket. Appeal Br. 5. Appellant
contends that Feenan’s reference to “equalizing” the environments within
the incubator and the MRI system “merely means that the atmosphere
between the MRI and incubator is made equal and is not the same thing as a
shared atmosphere within a hermetically sealed space.” Id. Appellant cites
apertures in Feenan’s bulkhead 504 as “further suggesting that Feenan’s
‘equalization’ has nothing to do with creating a shared atmosphere as is done
in [Appellant’s] claimed invention.” Id. at 5–6; see Feenan, Fig. 5; ¶¶ 78–82
(describing carriage 111 as including front bulkhead 502 and rear bulkhead
504 connected by carriage support 506). Similarly, Appellant contends that
Rohling’s closed magnet teaching requires that the patient be placed within
the magnet and then the magnet door be closed, further suggesting an MRI
environment that is separate from the incubator environment, rather than
shared with the incubator environment. Reply Br. 2.
Appellant’s arguments regarding Feenan and Rohling suggesting an
MRI environment separate from the incubator environment are unavailing
because they are not responsive to the rejections, which propose to modify
Dumoulin’s neonate incubator and transfer table assembly apparatus, not the
apparatus of either Feenan or Rohling. As is apparent from Figures 1b, 1c,
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and 2, Dumoulin’s transfer table assembly 200 “creates an MR compatible
extension to the incubator that the baby can be moved into without being
detached from patient monitoring or life support systems.” Dumoulin ¶ 28.
In other words, Dumoulin’s transfer table assembly 200, which is connected
to incubator 130 and brought into the bore of the imaging system with the
infant placed therein for imaging, is not sealed off from incubator 130 either
before or during imaging. See, e.g., id. ¶ 38 (stating that “baffles may be
provided to route heated air from the incubator 130 into and through the
transfer table assembly 200”). Thus, even if Appellant is correct that neither
Feenan nor Rohling teaches the MRI bore and the incubator having a shared
environment, this would not undercut the Examiner’s reasoning in reaching
a conclusion of obviousness because the Examiner does not propose
modifying Feenan or Rohling, but, rather, proposes modifying Dumoulin.
See Ans. 6 (emphasizing that Dumoulin is the primary reference and there is
no suggestion in the rejections to modify Feenan).
Moreover, the issue of whether or not the environment for the neonate
within the MRI bore is shared with the environment within the incubator is
not inherently germane to the issue of the need or desirability of a gasket to
hermetically seal the bore. The gasketing system to be added to Dumoulin
would hermetically seal the scanning chamber (i.e., the MRI bore), as well
as any environment that is in communication with the scanning chamber,
such as the transfer table assembly and the incubator, from the external
environment. The proposed gasketing system would neither cause the
scanning chamber environment to be shared with the incubator environment
nor seal the scanning chamber from the incubator environment.
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Appellant argues that “[t]he combination of Proctor into the cited
references is impermissible hindsight.” Appeal Br. 5. According to
Appellant:
Although useful in a HVAC context, Proctor has no relevance
in the MRI neonatal care and/or incubator context. Means for
creating a hermetically sealed environment using tools from the
HVAC art would only have been considered by [one of
ordinary skill] in the art of MRI of neonates, if at all, after the
combination was decided on, to seal the incubator to the MRI,
i.e., in hindsight.
Id.
Although Appellant does not expressly assert that Proctor is not
analogous art to Appellant’s invention, the Examiner interprets Appellant’s
statement that “Proctor has no relevance in the MRI neonatal care and/or
incubator context” as arguing that Proctor is not analogous art. See Ans. 8.
Our reviewing court has established two criteria for determining whether
prior art is analogous, namely, “(1) whether the art is from the same field of
endeavor, regardless of the problem addressed, and (2) if the reference is not
within the field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved.” Scientific Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355,
1359 (Fed. Cir. 2014) (citing In re Clay, 966 F.2d 656, 658–59 (Fed. Cir.
1992)). To the extent that Appellant’s “no relevance” statement constitutes
an argument that Proctor is not analogous art, it appears to address only the
first criterion in the analogous art inquiry, namely, whether the art is from
the same field of endeavor. However, Appellant’s argument does not
address whether Proctor satisfies the second criterion, namely, whether it is
reasonably pertinent to the particular problem with which Appellant is
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involved. The Examiner finds that “Proctor is reasonably pertinent to the
problem faced by the inventor (e.g. joining two structures in an air-tight or
hermetic[] fashion).” Ans. 8 (italics omitted). Appellant does not
specifically contest this finding. See Reply Br. passim. Accordingly,
Appellant does not apprise us of error in the Examiner’s determination that
Proctor is analogous art.
As for Appellant’s assertion of hindsight, Appellant does not identify
any flaw in the Examiner’s reasoning or point to any knowledge relied on by
the Examiner that was gleaned only from Appellant’s disclosure and that
was not otherwise within the level of ordinary skill in the art at the time of
the invention, thereby failing to support Appellant’s hindsight assertion. See
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (“Any judgment on
obviousness is in a sense necessarily a reconstruction based upon hindsight
reasoning, but so long as it takes into account only knowledge which was
within the level of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant’s disclosure,
such a reconstruction is proper.”). The Examiner reasoned that it would
have been obvious to include gasketing on Dumoulin’s apparatus in the
location shown in the annotated figure on pages 5, 9, and 12 of the Final
Action “in order to better maintain the equalized life-support environmental
conditions when the incubator is ‘wheeled up’ to the MRI system.” Final
Act. 5, 8, 12. The Examiner explains that “[t]he gasket system, when fitted
to the modified system described by Dumoulin, Feenan and Rohling system
would enhance the system’s ability to maintain the appropriate environment
for the neonate by forming an air-tight connection.” Ans. 8 (italics omitted).
As explained in more detail below, this reasoning takes into account
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knowledge that was within the level of ordinary skill in the art at the time of
Appellant’s invention.
In particular, Feenan teaches the importance of providing a controlled
environment in which environmental factors, including temperature,
humidity, and oxygenation, are controlled by the incubator control module
to match those in the incubator “so as to limit trauma to the neonate during
scanning.” Feenan ¶ 53; see also Rohling ¶ 2 (teaching that “[a] typical
incubator is adapted to maintain temperature, humidity and other
environment aspects” and that, “during imaging, the infant must be
maintained in a similar environment (temperature, humidity, and the like)
along with the required life-support mechanisms for the duration of the
imaging session, which typically lasts more than one hour”). As is well
known in the art, temperature, as well as other environmental factors, must
be controlled to within very strict tolerances of a steady state in accordance
with established standards applicable for neonates. See, e.g., Spec. ¶ 3. A
person having ordinary skill in the art of neonatal incubators would have
appreciated that providing an air-tight, hermetically sealed environment for
the neonate within the MRI bore during scanning would greatly facilitate, if
not be critical and indispensable for, maintaining environmental factors
within such tolerances. “A person of ordinary skill is also a person of
ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 421(2007). What a reference teaches or suggests must be
examined in the context of the knowledge, skill, and reasoning ability of a
skilled artisan and is not limited to what a reference specifically “talks
about” or what is specifically “mentioned” or “written” in the reference.
Syntex (U.S.A.) LLC v. Apotex, Inc. 407 F.3d 1371, 1380 (Fed. Cir. 2005).
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Indeed, Rohling evidences that it was conventional in the art to
provide a sealed environment for the neonate during scanning. See Rohling
¶ 20. Rohling provides a sealed environment for the neonate by supporting
the neonate in a self-contained, sealed enclosure in a magnet of an MRI
system during imaging. Id. ¶¶ 5, 20. Rohling’s enclosure 150 is “adapted to
maintain an environment prescribed for neonates.” Id. ¶ 18.
Unlike Rohling’s apparatus, Dumoulin discloses a transfer table
assembly 200 that is not a sealed enclosure. See, e.g., Dumoulin ¶ 43
(describing a transfer table assembly, in one embodiment, in the form of an
open isolette and, in another embodiment, as enclosed with a cover open on
the ends (Figs. 1b, 1c, 1d). In order to provide a sealed environment for the
neonate, when placed in an open isolette form of table transfer assembly, a
person having ordinary skill in the art would have understood that the bore
itself would have to be sealed and, further, that, with the transfer table
assembly extending from incubator 130 and into the opening of the bore, it
would be necessary to form a seal between the bore opening and the
incubator opening. Thus, despite Appellant’s assertion to the contrary, a
person having ordinary skill in the art of neonate MRI scanning apparatus
would have looked to conventional sealing means, such as the gasketing
arrangement taught by Proctor, for forming an air-tight seal between two
structures mated together in designing an incubator and transfer table
assembly like that of Dumoulin for use with a closed MRI machine.
Appellant contends that “the figures of Dumoulin show a square
incubator is rolled up to a circular magnet, suggesting that there isn’t a
gasket, as the shapes are clearly mismatched.” Reply Br. 1. To the extent
that Appellant may be suggesting that providing a gasket surrounding the
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incubator opening and connected around the MRI bore opening when the
incubator and MRI device are brought together would not be feasible,
Dumoulin discloses end plate 210, with a circular opening (i.e., a shape
matching the MRI bore), to provide additional structural support and keep
incubator 130 enclosed when front panel 136 is not in position. Dumoulin
¶ 33; Fig. 2.
For the above reasons, Appellant does not apprise us of error in the
Examiner’s determination that it would have been obvious to add a gasket to
Dumoulin’s incubator 130 surrounding the opening created when front panel
136 is flipped down, as illustrated in the annotated figure on pages 5, 9, and
12 of the Final Action, to hermetically seal the scanning chamber/bore when
incubator 130 and the imaging device are brought together, and, thus, does
not apprise us of error in the rejections of claim 1 under 35 U.S.C. § 103(a).
Accordingly, we sustain each of the rejections of claim 1, as well as claims
4, 5, 9, 11, 13, 14, 23, and 24, which fall with claim 1, under
35 U.S.C. § 103(a).
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1, 4, 5, 9, 11,
13, 14, 23, 24
112, second
paragraph
Indefiniteness 1, 4, 5, 9, 11,
13, 14, 23, 24

1, 4, 5, 9, 11,
13, 14, 23, 24
103(a) Dumoulin, Feenan,
Rohling, Proctor 
1, 4, 5, 9, 11,
13, 14, 23, 24

1, 4, 5, 9, 11,
13, 14, 23, 24
103(a) Dumoulin, Radko,
Rohling, Feenan,
Proctor
1, 4, 5, 9, 11,
13, 14, 23, 24

1, 4, 5, 9, 11,
13, 14, 23, 24
103(a) Dumoulin,
Dumoulin 2,
Rohling, Feenan,
Proctor
1, 4, 5, 9, 11,
13, 14, 23, 24

Overall
Outcome
1, 4, 5, 9, 11,
13, 14, 23, 24

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