Ex Parte Dalpiaz et al

Board of Patent Appeals and Interferences

Jan 26, 2009

10644992 (B.P.A.I. Jan. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MICHAEL DALPIAZ, ULRICH SCHULZE-GANZLIN,
WERNER GUNTHER, and JURGEN ZIMMERMANN
____________________

Appeal 2008-3709
Application 10/644,9921
Technology Center 2800
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Decided: January 26, 2009
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Before KENNETH W. HAIRSTON, JOHN A. JEFFERY, and MARC S.
HOFF, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claim 1-4, 6-19, and 21-29.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Application filed August 21, 2003. The real party in interest is Sirona
Dental Systems GmbH & Co. KG.
2 Claims 5 and 20 have been canceled.
Appeal 2008-3709
Application No. 10/644,992

Appellants’ invention relates to a system and method for positioning a
dental X-ray apparatus. The system includes a keyboard and display, and a
pointing apparatus for selecting an area of a displayed X-ray image. The
system further includes a storage area which stores at least one digitized X-
ray image and information concerning the X-ray apparatus. In a preferred
embodiment, the information concerning the X-ray apparatus relates to
coordinates of trajectories stored in relation to the digitized X-ray image
(Spec. 2-4).
Claim 1 is exemplary:
1. A system for positioning a dental X-ray apparatus, comprising:
an input and output device for interactive control,
a storage area, in which at least one panoramic digitized dental X-ray
image and information concerning the dental X-ray apparatus assignable to
the digitized dental X-ray image are stored,
a computer interface, via which information can be interchanged with
the dental X-ray apparatus,
means for selecting areas in the digitized dental X-ray image, and
a processing unit which effects calculations based on the digitized
dental X-ray image, the relevant information concerning the dental X-ray
apparatus, and the selected area, in order to ascertain control data for
controlling the dental X-ray apparatus such that the selected area is covered
when a new dental X-ray image is made, the information concerning the X-
ray apparatus comprises coordinates of a trajectory which have been saved
in relation to the digitized X-ray image, the processing unit further effects
calculations of the trajectory which gives knowledge of movement of the
dental X-ray apparatus carried out at a certain point of time.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Relihan US 6,233,310 B1 May 15, 2001
Milnes US 6,463,121 B1 Oct. 8, 2002
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Application No. 10/644,992

Claims 1-4, 6-9, 11, 12, 14-19, 21, 22, 24, 25, and 27-29 stand
rejected under 35 U.S.C. § 102(e) as being anticipated by Milnes.
Claims 10, 13, 23, and 26 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Milnes in view of Relihan.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Appeal Brief (filed September 13, 2007), the Reply
Brief (filed December 17, 2007), and the Examiner’s Answer (mailed
October 15, 2007) for their respective details.
ISSUE
The principal issue in the appeal before us is:
Did Appellants demonstrate that the Examiner erred in finding that
Milnes teaches a processing unit which effects calculations based on, inter
alia, information concerning the coordinates of a trajectory of the X-ray
apparatus which have been saved in relation to a digitized X-ray image?

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. According to Appellants, the invention concerns a system and
method for positioning a dental X-ray apparatus. The system includes a
keyboard and display, and a pointing apparatus for selecting an area of a
displayed X-ray image (Spec. 2).
2. The system further includes a storage area which stores at least
one digitized X-ray image and information concerning the X-ray apparatus.
3
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Application No. 10/644,992

In a preferred embodiment, the information concerning the X-ray apparatus
relates to coordinates of trajectories stored in relation to the digitized X-ray
image (Spec. 4).
Milnes
3. Milnes teaches a system and method for interactively
processing a selection point for an X-ray exposure based on a previous X-
ray exposure (col. 1, ll. 50-52).
4. Milnes teaches that “X-ray gantry and table positions are stored
automatically as part of capturing the first exposure” (col. 4, ll. 13-14).
Relihan
5. Relihan teaches an exposure management and control system
and method for x-ray technique selection (col. 1, ll. 66-67).
Dictionary definition of “trajectory”
6. “Trajectory” is defined as:
1. The curve described by a projectile, rocket, or the
like, in its flight.
2. The path described by a body moving under the
action of given forces.

The Random House College Dictionary, Revised Edition, 1984.

PRINCIPLES OF LAW
“A rejection for anticipation under section 102 requires that each and
every limitation of the claimed invention be disclosed in a single prior art
reference.” See In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007)
(quoting In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994)).
“Anticipation of a patent claim requires a finding that the claim at issue
‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc., 190 F.3d
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Application No. 10/644,992

1342, 1346 (Fed. Cir. 1999) (quoting Titanium Metals Corp. v. Banner, 778
F.2d 775, 781 (Fed. Cir. 1985)).
Analysis of whether a claim is patentable over the prior art under 35
U.S.C. § 102 begins with a determination of the scope of the claim. We
determine the scope of the claims in patent applications not solely on the
basis of the claim language, but upon giving claims their broadest reasonable
construction in light of the specification as it would be interpreted by one of
ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). The properly interpreted claim must then be
compared with the prior art.
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1734
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 127 S.Ct. at 1734 (“While the sequence of these questions might
be reordered in any particular case, the [Graham] factors continue to define
the inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
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art,” id. at 1739, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
“the principles laid down in Graham reaffirmed the ‘functional approach’ of
Hotchkiss, 11 How. 248.” KSR, 127 S.Ct. at 1739 (citing Graham v. John
Deere Co., 383 U.S. 1, 12 (1966)) (emphasis added)), and reaffirmed
principles based on its precedent that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” Id. The Court explained:

When a work is available in one form of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.

Id. at 1740. The operative question in this “functional approach” is thus
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.
ANALYSIS
Claims 1-4, 6-9, 11, 12, 14-19, 21, 22, 24, 25, and 27-29
Claims 1 and 16, the only independent claims in the application, both
recite calculation (or computation) based on, inter alia, a digitized dental
X-ray image and relevant information concerning a dental X-ray apparatus
in order to ascertain control data for controlling the X-ray apparatus such
that a selected area is covered when a new dental X-ray image is made, the
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Appeal 2008-3709
Application No. 10/644,992

information concerning the X-ray apparatus comprising coordinates of a
trajectory which have been saved in relation to the digitized X-ray image,
the processing unit further effecting calculations of the trajectory which
gives knowledge of movement of the dental X-ray apparatus (emphasis
added).
The Examiner argues that because Milnes teaches storing the
positions of the X-ray gantry and table along with data from the first X-ray
exposure (Ans. 9), and further teaches that the processing unit moves the
X-ray apparatus to the selected area to acquire the next X-ray image (Ans.
9), Milnes’s processor “must calculate a trajectory that consists of positions
of the X-ray apparatus as a function of time” (Ans. 10).
Whether the processor of Milnes calculates a trajectory for the X-ray
apparatus to follow, however, is not directly relevant to whether Milnes
teaches the limitations of the claimed invention. Milnes teaches an
embodiment in which “X-ray gantry and table positions are stored
automatically as part of capturing the first exposure” (FF 4). One may fairly
infer that Milnes teaches that coordinates of the position of the X-ray gantry
and table, as of the moment of the first X-ray exposure, are saved in relation
to the digitized X-ray image.
Claims 1 and 16 require the coordinates of a trajectory, rather than a
position. Because the term “trajectory” refers to a path or curve described by
a moving body (FF 6), one must refer to a bare minimum of two positions of
a moving body in order to describe a trajectory. Milnes contains no teaching
of saving the coordinates of two or more positions of a moving body in
relation to a digitized X-ray image. Milnes therefore does not teach all the
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limitations of claim 1 or claim 16. We thus find error in the Examiner’s
rejection of claims 1 and 16, as well as the rejection of claims 2-4, 6-9, 11,
12, 14, 15, 17-19, 21, 22, 24, 25, and 27-29 which depend therefrom, under
35 U.S.C. § 102.
Claims 10, 13, 23, and 26
These claims stand rejected as unpatentable over the combination of
Milnes and Relihan. We have reviewed the patent to Relihan and find that it
does not cure the deficiencies of Milnes, explained supra with respect to
independent claims 1 and 16, from which these claims depend. We therefore
reverse the rejection of claims 10, 13, 23, and 26, for the reasons expressed
with respect to claims 1 and 16, supra.
CONCLUSIONS OF LAW
Appellants demonstrated that the Examiner erred in finding that
Milnes teaches a processing unit which effects calculations based on, inter
alia, information concerning the coordinates of a trajectory of the X-ray
apparatus which have been saved in relation to a digitized X-ray image.
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Appeal 2008-3709
Application No. 10/644,992

ORDER
The Examiner’s rejection of claims 1-4, 6-19, and 21-29 is reversed.

REVERSED

ELD

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