Ex Parte Brill et al

Board of Patent Appeals and Interferences

Mar 15, 2012

10372260 (B.P.A.I. Mar. 15, 2012)

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.
10/372,260 02/25/2003 Norbert Brill 1685
58687 7590 03/16/2012
DUBOIS, BRYANT, CAMPBELL & SCHWARTZ, LLP
700 LAVACA STREET
SUITE 1300
AUSTIN, TX 78701
EXAMINER
KISH, JAMES M
ART UNIT PAPER NUMBER
3737
MAIL DATE DELIVERY MODE
03/16/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NORBERT BRILL, JORG FREIDINGER,
DICK VAN RIJN, WILFRIED SENN, and
MANFRED BAUR
____________

Appeal 2010-003712
Application 10/372,260
Technology Center 3700
____________

Before JENNIFER D. BAHR, EDWARD A. BROWN, and
JAMES P. CALVE, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003712
Application 10/372,260

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the decision of the
Examiner rejecting claims 1, 4-9, 11, 12, 14, and 19. Claims 2, 3, 10, 13,
and 15-18 have been cancelled. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
THE INVENTION
Claim 1 illustrates the claimed subject matter on appeal:
1. A medical system comprising
a locating device, wherein said locating device is able to
locate conditions on or in a patient to be treated,
a therapy device, wherein said therapy device is able to
generate acoustic waves and focus said waves into the body
of said patient to be treated,
a positioning device, wherein said positioning device is
able to position said patient to be treated, power supply
devices, for said locating device, said therapy device and
said positioning device, wherein said locating device, said
therapy device, said positioning device and said power
supply devices are accommodated in a common equipment
carrier, said locating device and said therapy device being
adjustable relative to each other; and
a projected floor area of said locating device, said
therapy device, said positioning device, and said power
supply devices which does not substantially exceed in length
and width a projected floor area of a standard hospital bed.

REJECTIONS
Claims 1, 4, 5, 14, and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bauer (US 5,488,951; iss. Feb. 6, 1996), Cabral (US
6,059,455; iss. May 9, 2000), and Honda (US 2002/0115917 A1; pub. Aug.
22, 2002).

Appeal 2010-003712
Application 10/372,260

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Claims 6 and 7 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Bauer, Cabral, Honda, and Rattner (US 5,703,922; iss. Dec. 30, 1997).
Claims 8, 9, 11, and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bauer, Cabral, Honda, and Haumann (US 6,201,983; iss.
Mar. 13, 2001).
ISSUE
Whether the combination of Bauer, Cabral, and Honda discloses a
locating device, a therapy device, a positioning device, power supply
devices, and a common carrier with a projected floor area that does not
substantially exceed the projected floor area of a standard hospital bed?
ANALYSIS
Claims 1, 4, 5, 14, and 19 as obvious over Bauer, Cabral & Honda
Appellants argue claims 1, 4, 5, 14,1 and 19 as a group. See App. Br.
4-9. We select claim 1 as representative. See 37 C.F.R. 41.37(c)(1)(vii)
(2011). Claims 4, 5, 14, and 19 stand or fall with claim 1.
The Examiner found that Bauer discloses a locating device, a therapy
device, and a positioning device, but not power supply devices contained on
a common equipment carrier. Ans. 3-4. The Examiner found that Cabral
discloses an imaging system, positioning device, electrical components, and
control systems, and other components with a floor area that does not exceed
the floor area of a standard hospital bed, and integration of a workstation and
base portion into a single rolling hardware assembly. Ans. 4-5, 8-9. The
Examiner found that Honda discloses a mobile medical system for treatment

1 We understand Appellants’ omission of claim 14 in the statement of the
grounds of rejection to be reviewed on appeal (App. Br. 3) and in the
arguments contesting the rejection (App. Br. 4) to have been inadvertent.
See App. Br. 2 (identifying claim 14 as being involved in the appeal).
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and imaging with fully contained power systems. Ans. 5. The Examiner
determined that it would have been obvious to provide Bauer with a single
rolling assembly and foldable patient support, as taught by Cabral, and to be
independent of outside resources and power sources, as taught by Honda, to
provide a self-contained, transportable, mobile treatment system. Ans. 5, 8.
Appellants argue that none of Bauer, Cabral, and Honda individually
discloses a locating device, therapy device, positioning device, and power
supply devices in a common carrier with the claimed projected floor area.
App. Br. 5-6. These arguments are not persuasive because the Examiner
relied on the combination of Bauer, Cabral, and Honda to disclose these
features. Ans. 4-5, 7-9; see In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986) (citation omitted).
Appellants also argue that Cabral has electro-mechanical components,
control systems, and other components, not electrical components, and the
plug in and run feature strongly suggests that a power supply device is not
included in the system. App. Br. 5. This argument is not persuasive because
the Examiner relied on Cabral to disclose an integrated system with integral
patient support and the claimed projected floor area and on Honda to
disclose a medical system with fully contained power supplies. Ans. 4-5, 8.
Appellants further contend that Honda discloses an aggregation of
commonly controlled electronic equipment on a cart but is outside the field
of a portable device on which a patient is positioned. App. Br. 6. We are
not persuaded by this argument because the Examiner relied on Bauer and
Cabral to disclose medical systems with a patient positioning device and on
Honda to disclose power supply devices on a single carrier. Ans. 3-4, 8.
Honda’s mobile system includes various imaging and treatment devices with
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power supplies fully contained on a common cart 21. Ans. 5, 8. The
Examiner’s interpretation is reasonable and consistent with Appellants’
Specification which discloses a carrier 10 shaped as a horizontal rectangle
that carries the entire system. Spec. 10, ll. 12-15. The locating device 18,
20, therapy device 26, positioning device 32, 34, 36, and housing 16 are
located on the carrier 10. Spec. 10, ll. 19-27; figs. 1-8. The housing 16
accommodates the electrical supply and electronic control circuit of the
locating and therapy devices. Spec. 11, ll. 30-36. We agree with the
Examiner that Honda positions locating and therapy devices and their power
supplies on a common carrier 21 and that it would have been obvious to
modify Bauer in this manner to improve the mobility and utility of the
system. Ans. 5, 8; see App. Br. 6 (arguing that Bauer, Cabral, and Honda do
not disclose power supply devices on the equipment carrier).
Appellants also argue that there is no suggestion in the prior art that
the combination of Bauer, Cabral, and Honda would fall within a projected
floor area of a standard hospital bed, which Appellants disclose as having a
length of 1920 mm and width of 980 mm. App. Br. 7-8. This argument is
not persuasive because Cabral discloses that the system’s width is 0.81 m
(801 mm) when the positioning device is collapsed and illustrates the size of
the system with regard to a patient. Cabral, col. 2, ll. 1-23; col. 3, ll. 23-34;
figs. 1, 2; Ans. 4-5, 8-9. The Examiner also found that Bauer and Honda
disclose systems that take up less floor space than standard hospital beds
(Ans. 9) and Appellants have not shown error in any of these findings.
Appellants also argue that “there must be some reason, suggestion, or
motivation found in the prior art whereby a person of ordinary skill in the
field of the invention would make the combination” and there is no such
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suggestion to combine the references to yield the claimed medical system.
App. Br. 8-9. This argument is not persuasive because the Supreme Court
rejected the rigid requirement of a teaching, suggestion, or motivation to
combine known elements in order to show obviousness. KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 383, 418-19 (2007); see Ans. 10. The Examiner’s
reason for combining teachings of Bauer, Cabral, and Honda is supported by
a rational underpinning (see Ans. 4, 8-9) and Appellants have not persuaded
us of error in the Examiner’s findings or conclusion of obviousness. As
such, we sustain the rejection of claims 1, 4, 5, 14, and 19.
Claims 6 and 7 as obvious over Bauer, Cabral, Honda & and Rattner
Appellants argue that Rattner does not disclose surface parts that do
not extend beyond the equipment carrier in the transport position as called
for in claim 6. App. Br. 9. This argument is not persuasive because the
Examiner relied on Rattner to modify the foldable patient support of Cabral
to fold upwardly and determined that this modification would have been
obvious to provide more versatile patient bearing possibilities. Ans. 6.
Cabral’s foldable patient supports 34, 36 do not extend beyond the carrier
(e.g., wheels 24) when in a folded position. Cabral, fig. 1. Moreover, the
Examiner found that Rattner’s surface portions 12, 13 have outer channels
15, 17 that accept accessory parts and serve as carriers, and the surface
portions 12, 13 do not extend beyond the channels. Ans. 10-11. Appellants
have not persuaded us of error in the Examiner’s findings or determination
of obviousness. App. Br. 9. As such, we sustain the rejection of claim 6 and
of claim 7, for which Appellants have not asserted any separate argument.2

2 We understand Appellants’ omission of claim 7 in the statement of grounds
of rejection on appeal (App. Br. 3) and in the arguments contesting the
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Claims 8, 9, 11, and 12 as obvious over Bauer, Cabral, Honda & Haumann
Appellants argue claims 8, 9, 11, and 12 as a group. App. Br. 10-11.
We select claim 8 as representative. Claims 9, 11, and 12 stand or fall with
claim 8. Appellants argue that there is no teaching, suggestion, or incentive
to combine Bauer, Cabral, Honda, and Haumann. App. Br. 10. Appellants
argue that Haumann is directed to simplifying an interconnection of separate
devices whereas the present invention claims a locating device, a therapy
device, a positioning device, and power supply devices incorporated into a
common equipment carrier. App. Br. 10, 11. As a result, Appellants argue
that the Examiner’s reason for modifying the electronics of Bauer, Cabral,
and Honda with the teachings of Haumann to simplify construction and
avoid tripping would provide no incentive to modify the electronics of these
references. App. Br. 10-11.
The Examiner’s reason for modifying Bauer, Cabral, and Honda with
the teachings of Haumann to simplify construction of the system electronics
and reduce the number of leads and connecting cables to reduce a risk of
tripping over leads and cables is supported by a rational underpinning. Ans.
6-7, 11 (citing col. 7, ll. 4-6; fig. 3). Haumann interconnects and integrates
different devices and their power supplies as called for in claim 8 to provide
a simplified connection for common data exchange and power supply. Ans.
6; Haumann, col. 1, l. 66 to col. 2, l. 3. Appellants have not persuaded us of
error in the Examiner’s findings or conclusion of obviousness. As such we
sustain the rejection of claims 8, 9, 11, and 12.

rejection (App. Br. 9) to have been inadvertent. See App. Br. 2 (identifying
claim 7 as being involved in the appeal).
Appeal 2010-003712
Application 10/372,260

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CONCLUSION
The combination of Bauer, Cabral, and Honda discloses a locating
device, a therapy device, a positioning device, power supply devices, and a
common carrier with a projected floor area that does not substantially exceed
the projected floor area of a standard hospital bed.

DECISION
The rejection of claims 1, 4, 5, 14, and 19 under 35 U.S.C. § 103(a) as
unpatentable over Bauer, Cabral, and Honda is AFFIRMED.
The rejection of claims 6 and 7 under 35 U.S.C. § 103(a) as
unpatentable over Bauer, Cabral, Honda, and Rattner is AFFIRMED.
The rejection of claims 8, 9, 11, and 12 under 35 U.S.C. § 103(a) as
unpatentable over Bauer, Cabral, Honda, and Haumann is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

JRG