Ex Parte Fehre et al

Patent Trial and Appeal Board

Aug 15, 2017

13615292 (P.T.A.B. Aug. 15, 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.
13/615,292 09/13/2012 Jens Fehre 11371-12088A(2011P08922
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EXAMINER
20 South Clark
Suite 600
NGANGA, BONIFACE N
CHICAGO, IL 60603 ART UNIT PAPER NUMBER
3769
NOTIFICATION DATE DELIVERY MODE
08/17/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JENS FEHRE, ANDREAS LIMMER, RALF NANKE, and
MANFRED SECHSER1
Appeal 2016-005221
Application 13/615,292
Technology Center 3700
Before DONALD E. ADAMS, JOHN E. SCHNEIDER,
and TIMOTHY G. MAJORS, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
medical examination system which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the Real Party in Interest as Siemens
Aktiengesellschaft. Br. 2.
Appeal 2016-005221
Application 13/615,292
STATEMENT OF THE CASE
The Specification describes a medical examination system which uses
lights on the system to help identify an element of the system to be moved.
Spec. 1 8.
Claims 1, 3—11 and 18—28 are on appeal. Claim 1 is representative of
the rejected claims and reads as follow:
1. A system comprising:
at least one medical device comprising at least one device
component;
a selection element operable to select a movement axis, a
movement direction, or the movement axis and the movement
direction for a defined movement of the at least one device
component;
an activatable lighting element positioned on the medical
device at the movement axis or along the movement direction,
the activatable lighting element operable to identify the
movement axis, the movement direction, or the movement axis
and the movement direction; and
an actuation element operable to release the identified
movement axis, the identified movement direction, or the
identified movement axis and the identified movement
direction, so that a desired movement of the at least one device
component is performable;
wherein the desired movement of the at least one device
component is not performed until the movement axis
corresponding to the desired movement, the movement
direction corresponding to the desired movement, or the
movement axis and the movement direction corresponding to
the desired movement have been selected via the selection
element and have been identified by the activatable lighting
element on the medical device.
2
Appeal 2016-005221
Application 13/615,292
The claims stand rejected as follows:
Claims 1,3,4, 6, 8, 9, and 21—28 has been rejected under 35 U.S.C.
§ 103(a) as unpatentable over Quaet-Faslem2 in view of Siemens3 and
Schwieker.4
Claim 5 has been rejected under 35 U.S.C. § 103(a) as unpatentable
over Quaet-Faslem in view of Schwieker.
Claims 7, 11, 18, and 20 have been rejected under 35 U.S.C. § 103(a)
as unpatentable over Quaet-Faslem in view of Lifshitz.5
Claims 10 and 19 have been rejected under 35 U.S.C. § 103(a) as
unpatentable over Quaet-Faslem in view of Gross.6
DISCUSSION
Clams 1, 3, 4, 6, 8, 9, and 21—28
Issue
The issue is whether a preponderance of evidence supports the
Examiner’s conclusion that claims 1, 3, 4, 6, 8, 9, and 21—28 would have
been obvious over Quaet-Faslem combined with Siemens and Schwieker.
The Examiner finds that Quaet-Faslem discloses a system comprising
a medical device having the components recited in claim 1. Final Act. 4.
2 Quaet-Faslem et al., US 2009/0062638 Al, published Mar. 5, 2009
(“Quaet-Faslem”).
3 Siemens, Streamlining workflow and outstanding image quality in the OR,
ARCADIS Varic, http://www.siemens.com/healthcare (April 2008)
(“Siemens”).
4 Schwieker et al., US 2005/0228263 Al, published Oct. 13, 2005
(“Schwieker”).
5 Lifshitz, US 2008/0317216 Al, published Dec. 25, 2008 (“Lifshitz”).
6 Gross et al., US 2009/0185662 Al, published July 23, 2009 (“Gross”).
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Appeal 2016-005221
Application 13/615,292
The Examiner finds that the system disclosed in Quaet-Faslem comprises a
“selection element (operating element 50, Fig. 6 [0039]) operable to select a
movement axis, a movement direction, or the movement axis and the
movement direction for a defined movement of the at least one device
component ([0015]).” Id. The Examiner goes on to find that the system
uses “color coding indicating which operating element is assigned to a
system component and [0041]); an activatable lighting element positioned
on the medical device ([0016] a light element that corresponds to the color
coding of the real system.” Id. The Examiner finds that Siemens discloses a
system similar to that recited in Quaet-Faslem, where individual axes and/or
individual movement directions are identified by color-coded scales that
match the corresponding colors of the respective brakes. Id. at 5. The
Examiner concludes that
it would have been obvious to one of ordinary skill in the art at
the time the invention was made to apply the color-coded scales
on system components of the system of Quaet-Faslem, so as to
allow for identification of individual movement axes and/or
individual movement direction of each system component.
Additionally, since Quaet-Faslem teaches that advantageous
identification can be guaranteed in the dark if the operating
element has an illumination device that corresponds to the color
coding of the real system component [0016] and wherein the
requirement that the appropriate system becomes illuminated
[0041], one of ordinary skill in the art at the time the invention
was made would have found it obvious to incorporate a light
element with the color-coding scale that identifies individual
movement axes and/or individual movement direction of
system components, to allow for visual identification of the
color coding scale in the dark.
Id. at 5—6.
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Application 13/615,292
Appellants contend that the references do not teach or suggest an
activatable lighting element located on the medical device at the movement
axis or along the movement direction. Br. 8. Appellants contend that
Quaet-Faslem only teaches locating a lighting element on the controller and
provides no guidance or suggestion to locate the lighting element on the
movement axis or along the movement direction. Br. 9.
Appellants also contend that there in nothing in the references to teach
or suggest the limitation calling for the movement of the device component
not occurring until identified by the lighting element. Br. 11.
Principles of Law
“[T]he adaptation of an old idea or invention . . . using newer
technology that is commonly available and understood in the art” would be
obvious to persons of ordinary skill in that art. Leapfrog Enterprises, Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).
[W]hile an analysis of obviousness always depends on evidence
that supports the required Graham factual findings, it also may
include recourse to logic, judgment, and common sense
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Application 13/615,292
available to the person of ordinary skill that do not necessarily
require explication in any reference or expert opinion.
Perfect Web Technologies, Inc. v. Infousa, Inc., 587 F.3d 1324, 1329 (Fed.
Cir. 2009).
Analysis
We adopt the Examiner’s findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer regarding this rejection. We find the Examiner has established that
the claims would have been obvious over Quaet-Faslem combined with
Siemens and Schwieker. Appellants have not produced evidence showing,
or persuasively argued, that the Examiner’s determinations on obviousness
are incorrect. Only those arguments made by Appellants in the Brief have
been considered in this Decision. Arguments not presented in the Brief are
waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2015). We have identified claim 1
as representative; therefore, all claims fall with claim 1. We address
Appellants’ arguments below.
Appellants contend that the references do not teach or suggest “an
activatable lighting element positioned on the medical device at the
movement axis or along the movement direction, as recited in claim 1.” Br.
8. Appellants argue that while Quaet-Faslem teaches the use of a light color
which corresponds to the color coding of the real system component to be
controlled, the color lights are on the operating lever. Id. at 8. Appellants
argue that nothing in Quaet-Faslem teaches placing a lighting element at the
movement axis or along the movement direction. Id. Appellants argue that
Siemens only teaches the use of color coding at specific locations on the
device, there is no suggestion that the color coding be illuminated. Id.
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Appellants contend that the teachings of the references cannot be combined.
Id.
We are not persuaded by Appellants’ arguments. Siemens teaches the
use of color coding of brakes and scales for each movement direction which
corresponds to the color of certain handles and brakes. Siemens 14. Quaet-
Faslem teaches the use of colored lights which correspond to the color of the
system component to be controlled. Quaet-Faslem || 16 and 33. Quaet-
Faslem teaches that the use of colored lights will facilitate operation in the
dark. Quaet-Faslem 116. We agree with the Examiner that one skilled in
the art at the time the invention was made would have found it obvious to
use colored lights in the color-coding scale of Siemens to allow visualization
in the dark. Ans. 5. This is a common sense adaptation of a known system
with known technology, and the Examiner has provided persuasive
reasoning to explain why the art would have predictably been combined in
this way. Leapfrog Enterprises, Inc, 485 F.3d at 1162; Perfect Web
Technologies, Inc. v. Infousa, Inc., 587 F.3d at 1329.
Appellants next argue that the references do not teach the movement
is not performed until the desired movement is selected and identified by
illumination. Br. 12. We are not persuaded. As the Examiner has noted:
In the modified system of Quaet-Faslem, when an operating
element is selected, a corresponding scale that identifies a
movement axis and/or movement direction on system
component would be illuminated, thus identifying a movement
axes and/or movement direction, prior to the brakes being
released. See Quaet-Faslem [0039-0043] the brake is released
after the operating element has been selected.
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Application 13/615,292
Ans. 12—13. We agree with the Examiner that the limitation that movement
would not occur until the movement is selected and the device is illuminated
naturally flows from the teaching of Quaet-Faslem. Id.
Appellants have also contended that the Examiner has engaged in
impermissible use of hindsight in making his rejection. Br. 10—11. We
continue to be unpersuaded.
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.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). In the present case,
the Examiner used what was known in the art to reach a conclusion of
obviousness.
The combined teaching of Quaet-Faslem and AAPA suggest to
those of ordinary skill in the art to identify movement axis and
or movement direction using a color coded scale on medical
instrument such as those disclosed by Quaet-Faslem, and to
guarantee identification in the said scale in the dark, using of an
activatable light source.
Ans. 12.
Conclusion of Law
We conclude that a preponderance of the evidence supports the
Examiner’s conclusion that claim 1 would have been obvious over Quaet-
Faslem combined with Siemens and Schwieker. Claims 3, 4, 6, 8, 9, and
21—28 have not been argued separately and therefore fall with claim 1. 37
C.F.R. §41.37(c)(l)(iv).
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Claims 5, 7, 10, 11, and 18—20
Regarding these claims, Appellants have only argued that the
additional references do not correct the deficiencies of Quaet-Faslem,
Siemens and Schwieker. See, e.g., Br. 13. As discussed above, we are
unpersuaded of a deficiency with the combination of Quaet-Faslem,
Siemens, and Schwieker. Therefore, we affirm the rejection of these claims.
SUMMARY
We affirm the rejections under 35 U.S.C. § 103(a).
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).
AFFIRMED
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