Ex Parte 7236563 et al

Patent Trial and Appeal Board

Jul 28, 2017

96030013 (P.T.A.B. Jul. 28, 2017)

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.
96/030,013 06/04/2015 7236563 810.0001 7553
76277 7590 07/31/2017
IP LEGAL SERVICES, LLC
P.O. Box 651325
Sterling, VA 20165
EXAMINER
GAGLIARDI, ALBERT J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
07/31/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VATECHEWOO HOLDINGS COMPANY, LTD.
Appellant and Patent Owner
____________

Appeal 2017-008944
Reexamination Control 96/030,013
Patent 7,236,563 B2
Technology Center 3900
____________

Before STEPHEN C. SIU, ERIC B. CHEN, and JEREMY J. CURCURI,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2017-008944
Reexamination Control 96/030,013
Patent 7,236,563 B2

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This is an appeal under 35 U.S.C. §§ 134(b) and 306 from the final
rejection of claims 1–6, 8–10, 12, and 13. Claims 7 and 11 have been
cancelled. Claims 1–12 have been amended and new claim 13 has been
added during the reexamination proceeding.1 We have jurisdiction under
§§ 134(b) and 306.
We affirm.

STATEMENT OF THE CASE
Reexamination Proceedings
A request for supplemental examination of U.S. Patent No. 7,236,563
B2 (the ’563 patent) was filed on June 4, 2015, and assigned Reexamination
Control No. 96/030,013.
The ’563 patent, entitled “Combined Panoramic and Computed
Tomography Photographing Apparatus,” issued June 26, 2007, to Yong-
Jae Sa, Jae-Yoon Park, Young-Gyun Jin, and Tae-Woo Kim, based on
Application No. 11/298,754, filed Dec. 9, 2005.
The ’563 patent is said to be assigned to Vatech Company, Ltd., said
to be the assignee and real party in interest.

1 Patent Owner’s After-Final Amendment, filed September 16, 2016,
amending claims 1–3, 5, 9, and 13 was not entered by the Examiner.
(Advisory Act. 3.)
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The Claims
Independent claim 1 is exemplary, with disputed limitations in italics
and with underlining and bracketing to indicate claim amendments:
1. A combined panoramic and computed tomography
photographing apparatus comprising:
an X-ray light source part to generate [for generating] X-
rays;
an X-ray sensor part having a panoramic sensor and[/or]
a CT sensor, the X-ray sensor part to detect [for detecting] X-
rays [which] that are generated by [from] the X-ray light source
part and pass through an object;
a rotary arm having [for arranging] the X-ray light source
part and the X-ray sensor part arranged thereon in such a way as
to be opposed to each other;
a rotary arm supporting member to support [for
supporting] the rotary arm; and
an X-ray light source part driving means mounted at a
location where the rotary arm and the X-ray light source part
are connected with each other,
wherein a distance between the X-ray light source part
and the X-ray sensor part arranged opposed to each other with
respect to the rotary arm is a variable distance, wherein the X-
ray sensor part position is fixed on the rotary arm, and
wherein the X-ray sensor part rotates on an eccentric
axis located at a predetermined point between (i) the CT sensor
and (ii) a central point located between the panoramic sensor
and the CT sensor, and the X-ray light source part [is
configured for movement] moves in a direction
[to get near to] toward the X-ray sensor part or in a
direction [to get] away from the X-ray sensor part without
regard to the rotary arm[, wherein the X-ray sensor part
includes a first sensor mounting part for mounting the
panoramic sensor and a second sensor mounting part for
mounting the CT sensor].
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Reexamination Control 96/030,013
Patent 7,236,563 B2

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The Rejections
Claims 1–6, 8–10, 12, and 13 stand rejected under 35 U.S.C. § 305 as
enlarging the scope of the claims being reexamined.
Claims 1–6, 8–10, 12, and 13 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.2
Claims 1–6, 8–10, 12, and 13 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Erhardt (US 7,798,708 B2; Sept. 21, 2010).
Claims 1–6, 8–10, 12, and 13 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Erhardt, Tanaka (EP 1457155 A1; Sept. 15, 2004) and
Mason-Hing (Lincoln C. Manson-Hing, PANORAMIC DENTAL RADIOGRAPHY
51 (1979)).
The Examiner has withdrawn the rejection of claims l–6, 8–10, 12,
and 13 under 35 U.S.C. § 112, first paragraph, for lack of enablement.
(Ans. 24.)

2 Other than arguing that “[e]ntry of such [after-final] amendment would
have obviated this [§ 305] rejection, since claims 1-3, 5 and 9 could not be
said to be enlarged in scope or encompass embodiments broader than the
originally issued independent claims” and “[e]ntry of such [after-final]
amendment would have obviated this [§ 112] rejection, since claims 1-3, 5
and 9 could not be said to recite any features broader than the scope of the
originally issued claims,” Patent Owner does not present any substantive
arguments with respect to the rejections of claims 1–6, 8–10, 12, and 13
under 35 U.S.C. §§ 112 and 305. (Br. 9.) Thus, any such arguments are
deemed to be waived.
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Patent 7,236,563 B2

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ANALYSIS
Patent Owner’s After-Final Amendment
Initially, we note that Patent Owner takes issue with the Examiner’s
refusal to enter an amendment after final for claims 1–3, 5, 9, and 13. (Br. 9,
11.) Decisions within the Examiner’s discretion, such as whether or not to
enter an amendment after final rejection, are reviewed only by way of
petition, not appeal. See In re Berger, 279 F.3d 975, 984–85 (Fed. Cir.
2002) (Examiner’s refusal to enter amendment after final may be the subject
of a petition, but may not be reviewed by the Board); 37 C.F.R. § 1.127
(“From the refusal of the primary examiner to admit an amendment, in
whole or in part, a petition will lie to the Director under § 1.181.”). Because
the Examiner’s refusal to enter an amendment after final is a petitionable,
rather an appealable matter, this issue is not before us and we express no
opinion as to its propriety.

§ 103 Rejection—Erhardt
We are persuaded by Patent Owner’s arguments (Br. 11–13) that
Erhardt would not have rendered obvious independent claim 1, which
includes the limitation “wherein the X-ray sensor part rotates on an eccentric
axis located at a predetermined point between (i) the CT sensor and (ii) a
central point located between the panoramic sensor and the CT sensor.”
The Examiner found that the camera of Erhardt, having a first image
detector mounted on a board, as illustrated in Figure 2A, corresponds to the
limitation “panoramic sensor” and having a second image detector mounted
on the rear side such board, also illustrated in Figure 2A, corresponds to the
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Patent 7,236,563 B2

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limitation “CT sensor.” (Ans. 11.) The Examiner further found that the
eccentrically mounted camera of Erhardt, as illustrated in Figure 5,
corresponds to the limitation “wherein the X-ray sensor part rotates on an
eccentric axis located at a predetermined point between (i) the CT sensor
and (ii) a central point located between the panoramic sensor and the CT
sensor.” (Id. at 13–14.) In particular, the Examiner found that “it is . . .
considered that the choice of a particular relative location of the eccentric
axis relative to the x-ray sensors would have been an obvious and
predictable design choice within the skill of a person of ordinary skill in the
depending on the needs of the particular application” and “[t]his is
particularly true in view of the express teaching by Erhardt of an
eccentrically located axis of rotation for positioning x-ray sensors so as to
achieve a desired amount of displacement of the x-ray sensors.” (Id.) We
do not agree.
Erhardt relates to an X-ray system which is “used to produce dental
panoramic tomographic images.” (Col. 1, ll. 11–12.) In one embodiment,
Figure 2A of Erhardt illustrates camera 21, in which first image detector 4
and second image decor 5 are mounted on board 3 (col. 5, ll. 25–28), with
such detectors being oriented back-to-back (col. 4, ll. 37–38). In another
embodiment, Figure 5 of Erhardt illustrates camera 55, which is rotated
about center of eccentricity 59, such that image detector 4 is closer to X-ray
fan beam 54.3 than the image detector 5. (Col. 7, ll. 31–35.) Figure 5 of
Erhardt further illustrates that first image detector 4 and second image 5 are
adjacent to one another. (See Fig. 5.)
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Although the Examiner proposes to modify Figure 5 of Erhardt with
camera 21, as illustrated in Figure 2B, and moving center of eccentricity 59
as “an obvious and predictable design choice” (Ans. 13–14), the Examiner
has not demonstrated that such modification would have been obvious to one
of ordinary skill in the art. In particular, Figure 5 of Erhardt illustrates that
first image detector 4 and second image detector 5 are adjacent to each other
(see Fig. 5) and that center of eccentricity 59 is selected such that image
detector 4 is closer to X-ray fan beam 54.3 than the image detector 5 (col. 7,
ll. 31–35). However, the Examiner has not provided any articulated
reasoning with some rationale underpinning as to why one of ordinary skill
in the art would: (i) replace camera 55 of Erhardt, which has adjacent
detectors, with camera 22 of Figure 2B, which has back-to-back detectors;
and (ii) move center of eccentricity 59 to a position between first image
detector 4 and second image detector 5 of camera 22.
Accordingly, we are persuaded by Patent Owner’s argument that “the
Examiner makes the merely conclusory statement that use of ‘an eccentric
rotation axis would have been obvious to a person of ordinary skill in the
art’” (Br. 12–13) and “although the camera of Erhardt is rotated about the
rotation axis, Erhardt fails to show that the rotational movement of the X-
ray sensor part results into alternately opposing one of the sensors to the X-
ray light source part” (id. at 12).
Therefore, we do not sustain the rejection of independent claim 1
under 35 U.S.C. § 103(a). Claims 2–4 depend from independent claim 1.
We do not sustain the rejection of claims 2–4 under 35 U.S.C. § 103(a) for
the same reasons discussed with respect to independent claim 1.
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Independent claims 5, 9, and 13 recite limitations similar to those
discussed with respect to independent claim 1. We do not sustain the
rejection of claims 5, 9, and 13, as well as dependent claims 6, 8–10, and 12,
for the same reasons discussed with respect to claim 1.

§ 103 Rejection— Erhardt, Tanaka, and Mason-Hing
We do not sustain the rejection of claims 1–6, 8–10, 12, and 13 under
35 U.S.C. § 103(a) as unpatentable over Erhardt, Tanaka, and Mason-Hing,
for the same reasons discussed with respect to rejection of claims 1 and 3
under 35 U.S.C. § 103(a) as unpatentable over Erhardt.

DECISION
The Examiner’s decision rejecting claims 1–6, 8–10, 12, and 13 under
35 U.S.C. § 305 is affirmed.
The Examiner’s decision rejecting claims 1–6, 8–10, 12, and 13 under
35 U.S.C. § 112, first paragraph, is affirmed.
The Examiner’s decision rejecting claims 1–6, 8–10, 12, and 13 under
35 U.S.C. § 103(a) is reversed.

AFFIRMED

Appeal 2017-008944
Reexamination Control 96/030,013
Patent 7,236,563 B2

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PATENT OWNER:

IP LEGAL SERVICES, LLC
P.O. Box 651325
Sterling VA 20165

ACP