Ex Parte Herold et al

Patent Trial and Appeal Board

Jun 30, 2016

12994014 (P.T.A.B. Jun. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121994,014 11/22/2010 Mark Douglas Herold
24737 7590 07/05/2016
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2008P00495WOUS 1121
EXAMINER
COLEY, ZADE JAMES
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
07/05/2016 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):
marianne.fox@philips.com
debbie.henn@philips.com
patti. demichele@Philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK DOUGLAS HEROLD and DANIEL DAVID WDKINS
Appeal2014-000804
Application 12/994,014
Technology Center 3700
Before ERIC B. GRIMES, ULRIKE W. JENKS, and
ROBERT A. POLLOCK, Administrative Patent Judges.
PERCURIAM
DECISION ON APPEAL
This is a decision on appeal 1 under 35 U.S.C. § 134 from the
Examiner's rejection of claims 5-8, 10-16, 21, 22, and 24--26. We have
jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
STATEMENT OF THE CASE
The Specification discloses "an apparatus for illuminating the interior
of a medical imaging device. The application subject matter finds particular
use with computed tomography (CT) imaging devices" (Spec. 1 :6-8).
1 Appellants identify the Real Party in Interest as Koninklijke Philips
Electronics N.V. (App. Br. 2.)
Appeal2014-000804
Application 12/994,014
Claim 6 is representative of the claims on appeal and reads as follows:
6. A scanning tube illumination apparatus for use in a medical
imaging apparatus and comprising:
a scanning tube having a side wall; and
at least one light source which emits light that travels through the side
wall of the scanning tube thereby illuminating the side wall;
wherein the scanning tube has an outer surface and wherein the at
least one light source is adapted to rotate around the scanning tube to emit
light that enters the side wall of the scanning tube through the outer surface
and travels through the side wall thereby illuminating the side wall.
The claims stand rejected as follows:
Claims 5-7, 11-16, 21, and 24--26 under 35 U.S.C. § 102(e) in view
of Trowell;2
Claims 8 and 22 under 35 U.S.C. § 103(a) in view of Trowell and
Gala· 3
'
Claim 10 under 35 U.S.C. § 103(a) in view of Trowell and Mattson;4
and
Claims 6 and 21under35 U.S.C. § 102(b) in view ofWatanabe. 5
I.
The Examiner has rejected claims 5-7, 11-16, 21, and 24--26 as
anticipated by Trowell (Final Rej. 6 2--4). The Examiner has also rejected
claims 8 and 22 as obvious in view of Trowell and Gala (id. at 5---6). The
2 Trowell et al., WO 2008/017879 A2, published Feb. 14, 2008.
3 Gala, US 4,070,568, issued Jan. 24, 1978.
4 Mattson et al., US 6,426,991 Bl, issued July 30, 2002.
5 Watanabe et al., US 5,336,897, issued Aug. 9, 1994.
6 Office Action mailed March 28, 2013.
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Application 12/994,014
same issue is dispositive for both of these rejections, and we will consider
them together.
The issue presented is: Does the evidence of record support the
Examiner's finding that Trowell discloses a scanning tube illumination
apparatus that comprises a light source that "is adapted to rotate around the
scanning tube to emit light that enters the side wall of the scanning tube
through the outer surface," as required in claim 6 (emphasis added)?
The Examiner finds that Trowell discloses a scanning tube
illumination apparatus that meets all of the limitations of claim 6 (Final Rej.
2-3). With regard to the "adapted to rotate" limitation, the Examiner
reasons that "the lights can be repositioned which allows them to be able to
rotate around the tube" (id. at 3). More specifically, the Examiner reasons
that, during manufacture of Trowell' s apparatus, before the light sources are
fixed in place, they can be moved and therefore are capable of being rotated
around the tube (id. at 7).
Appellants argue that the "adapted to rotate" limitation is not "a mere
recitation of 'intended use' of the claimed invention" (App. Br. 4).
Appellants argue that Trowell does not disclose "a light source which is
adapted to rotate around a scanning tube to emit light that enters the side
wall of the scanning tube through the outer surface" and therefore does not
anticipate the claims (id. at 5).
We agree with Appellants that the Examiner has not adequately
shown how Trowell discloses the apparatus of claim 6. The claim 6
recitation that "the at least one light source [] adapted to rotate around the
scanning tube" is a structural limitation. "[D]uring examination
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Application 12/994,014
proceedings, claims are given their broadest reasonable interpretation
consistent \vith the specification." In re Hyatt, 211F.3d1367, 1372 (Fed.
Cir. 2000). Here, the Specification discloses that light sources are mounted
to a rotating gantry and are adapted to rotate in concert with a X-ray source
or X-ray detector unit around a scanning tube. Thus, the broadest reasonable
interpretation of claim 6 that is consistent with the Specification is that the
claim language in question is a structural limitation.
Trowell does not disclose such a light source. "A claim is anticipated
only if each and every element as set f01ih in the claim is found, either
expressly or inherently described, in a single prior art reference." Verdegaal
Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). Trowell
discloses a light source that is positioned within the scanning tube
illumination apparatus during construction of the light source. That is,
Trowell discloses a light source that is ernbedded within the bodv coil
~· ~
former of the body coil assembly (Trowell, Fig. 4; coL 8. L 11 to coL 9,
l. 15). Trowell also discloses a light source that is positioned between the
body coil former 28 and the coils 30 of the body coil assembly (id. at Fig. 5,
col. 10, 1. 23 to col. 11, 1. 36.). Thus, Trowell discloses that the lights are
built into a non-rotating component of the apparatus rather than being
adapted to rotate around the scanning tube as recited in claim 6.
Thus, we reverse the rejection of claim 6 and dependent claims 5, 7,
and 11-16 as being anticipated by Trowell.
Independent claim 21 is similar to claim 6 and is directed to a medical
imaging apparatus with an illumination apparatus that comprises a scanning
tube and at least one light source, wherein "the at least one light source is
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Appeal2014-000804
Application 12/994,014
adapted to rotate around the scanning tube." As discussed above, we have
concluded that the Examiner has not persuasively shown that Trowell
discloses a light source that is adapted to rotate around the scanning tube.
Thus, for the reasons discussed above, we also reverse the rejection of claim
21 and dependent claims 24--26 as being anticipated by Trowell.
The Examiner has also rejected claims 8 and 22 under 35 U.S.C.
§ 103(a) as obvious in view of Trowell and Gala (Final Rej. 5). Claims 8
and 22 depend from claims 6 and 21, respectively, and further require that
"at least a portion of the side wall is etched." The Examiner relies on
Trowell as discussed above and cites Gala only for the dependent claim
limitation. We reverse the rejection of claims 8 and 22 for the reasons
discussed above.
II.
The Examiner has rejected claim 10 under 35 U.S.C. § 103(a) as
obvious in view of Trowell and Mattson (Final Rej. 5). Claim 10 depends
from claim 6 and further requires that "the at least one light source is
adapted to rotate in concert with at least one x-ray source or at least one x-
ray detector unit that is also adapted to rotate around the scanning tube."
As discussed above, Trowell does not disclose a light source that is
adapted to rotate around a scanning tube, as required by claim 6. The
Examiner cites Mattson for teaching "an x-ray source (16) and an x-ray
detector (20) that rotate around a scanning tube" (Final Rej. 6).
We agree with Appellants, however, that the Examiner has not
adequately explained how Trowell and Mattson would have made obvious
the apparatus of claim 10. As recognized by the Examiner, Trowell
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Application 12/994,014
discloses that the scanning tube (i.e., the body coil assembly 24) itself
comprises the light source. Thus, if one were to modify Mattson's
apparatus, the modification would add lights to the tube that surrounds the
examination area, such that the lights would be part of the scanning tube,
rather than "adapted to rotate around the scanning tube to emit light that
enters the side wall of the scanning tube through the outer surface and
travels through the side wall thereby illuminating the side wall," as required
by claim 6 and thus by claim 10.
We therefore reverse the rejection of claim 10 as being obvious in
view of Trowell and Mattson.
III.
The Examiner has rejected claims 6 and 21under35 U.S.C. § 102(b)
as anticipated by Watanabe (Final Rej. 4). The Examiner finds that
Watanabe discloses an apparatus that meets the limitations of claims 6 and
21 (id. at 4--5).
Appellants argue that Watanabe's apparatus does not comprise "at
least one light source which emits light that travels through the side wall of
the scanning tube thereby illuminating the side wall," as required by claim 6
(App. Br. 8). Appellants argue that the ordinary artisan would understand
that the "term 'illuminate' in the claims ... means capable of perception by
a human" (id. at 10). Appellants argue that "the dictionary definition of
'illuminate' is 'to give physical light to; supply with light; light up; make
bright with light; bathe in light."' (Id.) Appellants argue that the "passage
of x-rays through the side wall is not perceptible by a human, and ... is not
an 'illumination' of the side wall" (id.).
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Application 12/994,014
We agree with Appellants that the Examiner has not adequately
explained how Watanabe discloses "a scanning tube having a side wall; and
at least one light source which emits light that travels through the side wall
of the scanning tube thereby illuminating the side wall." The Specification
makes clear that "light" does not include X-rays. The Specification states:
The light sources 210 of the illustrated embodiment are light
emitting diodes (LED). It should be understood, however, that
additional light source types may be utilized in additional
embodiments, such as gas discharge, including fluorescent or
neon, electroluminescent, incandescent, including halogen, or
other suitable light source types. The illuminating light provided
by the light sources 210 may be continous [sic] or noncontinous
[sic]. The light sources 210 may emit a single color of light, such
as white, or a variety of different colors of light, such as red,
green, blue or any other color.
(Spec. 4:14--20.)
The Specification also states that "[p ]referably, the light sources are
selected and adapted so that the x-ray scatter related to the light sources does
not adversely effect [sic] the imaging quality of the medical imaging
system." (Id. at 4: 1-3.) Thus, the Specification makes a distinction between
"light sources" and X-rays.
The Examiner has not established that the broadest reasonable
inteqJretation of '"at least one light source which emits light," in light of the
Specification, would include X-rays.
Thus, we reverse the rejection of claims 6 and 21 as being anticipated
by Watanabe.
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Application 12/994,014
SUMMARY
We reverse the rejection of claims 5-7, 11-16, 21, and 24--26 under
35 U.S.C. 102(e).
We reverse the rejection of claims 6 and 21under35 U.S.C. 102(b).
We reverse the rejection of claims 8, 10, and 22 under 35 U.S.C. 103(a).
REVERSED
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