Ex Parte Majewski et al

Patent Trial and Appeal Board

Sep 14, 2017

13467196 (P.T.A.B. Sep. 14, 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.
13/467,196 05/09/2012 Jim Majewski 84846-4002 ADB 3196
23529 7590 09/18/2017
A OF ^ COMPANY TN C EXAMINER
2157 Henderson Highway
WINNIPEG, MB R2G1P9
GUPTA, VANI
CANADA ART UNIT PAPER NUMBER
3786
NOTIFICATION DATE DELIVERY MODE
09/18/2017 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
following e-mail address(es):
u spto @ adeco .com
djones @ adeco.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JIM MAJEWSKI and STEVEN MOFFATT
Appeal 2015-007889
Application 13/467,196
Technology Center 3700
Before EDWARD A. BROWN, BRANDON J. WARNER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jim Majewski and Steven Moffatt (“Appellants”) appeal under 35
U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1,5,7, and
10.1 Appeal Br. 5—6.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants submit the real party in interest is IMRIS Incorporated. Appeal
Br. 1.
2 We treat Appellants’ statement in the Claims Appendix that claim 1 is
cancelled as a typographical error. See Appeal Br. 15 (Claims App.).
Appeal 2015-007889
Application 13/467,196
THE CLAIMED SUBJECT MATTER
Appellants’ invention is directed “to a head clamp for use in imaging
by magnetic resonance (MRI) and X-Ray of patient.” Spec. 1,11. 6—7.
Claim 1, reproduced below, is illustrative of the claimed subject matter.
1. A head fixation device for use in imaging of a part
of a patient using Magnetic Resonance and X-ray imaging, the
device comprising:
first and second skull engaging clamp members arranged
so as to engage the skull from opposite sides so as to locate the
skull therebetween and defining a transverse axis extending
between the clamp members;
a generally C-shaped support including a base generally
parallel to the transverse axis and first and second legs connected
to the base at inner ends of the first and second legs and extending
away from the base to the clamp members attached to outer ends
of the first and second legs at respective sides of the skull;
the generally C-shaped support having an inner generally
C-shaped surface facing inwardly toward the skull and an outer
generally C-shaped surface facing outwardly away from the
skull;
and an adjustment system for providing an adjustment
movement which causes movement of at least one of the clamp
members inwardly and outwardly relative to the other so as to
change a clamping force applied to the skull;
wherein the C-shaped support member comprises:
a generally C-shaped inner band adjacent the skull
and defining said inner generally C-shaped surface;
a generally C-shaped outer band generally
following the shape of inner band and defining said outer
generally C-shaped surface;
and a plurality of bars extending between the inner
band and the outer band;
each of the bars being arranged so as to join the
generally C-shaped inner band and the generally C-shaped
outer band in end edges of the bar transverse to the inner
and outer surfaces;
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Application 13/467,196
wherein the bars extend diagonally back and forth between the
bands so as to meet at the end edges in apexes at the inner and outer
bands;
so that the inner and outer bands and the diagonal bars
therebetween define a truss.
REJECTIONS
1) Claims 1, 7, and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Dinkier (US 5,537,704, issued July 23, 1986)
(“Dinkier”), Dinkier (US 2009/0306662 Al, published Dec. 10,
2009) (“Dinkier II”), and Cosman (US 2004/0015176 Al,
published Jan. 22, 2004).
2) Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Dinkier, Dinkier II, Cosman, and Dinkier (US 2008/0251086 Al,
published Oct. 16, 2008) (“Dinkier III”).
DISCUSSION
Rejection 1
The Examiner finds that Dinkier discloses most of the limitations of
claim 1 except for “the C-shaped support member comprises a plurality of
spaced bars extending between the inner band and the outer band.” Final
Act. 2—5. The Examiner finds that Dinkier II discloses “a plurality of bars
[3 8 A and 38B] extending between the inner band and the outer band of a C-
shaped structure,” but that Dinkier in view of Dinkier II does not teach the
truss structure recited in claim 1. Id. at 5—6 (citing Dinkier II, FiglA). The
Examiner then turns to Cosman, which, the Examiner determines, discloses
the importance of a truss structure formed by “crisscrossing bars” in order
“‘to make the [structure] self-contained, self-supporting, lightweight, and
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Application 13/467,196
strong.’” Id. at 6 (citing Cosman, Figs. 1A, IB, | 64). The Examiner
reasons it would have been obvious to combine Dinkier’s structure with the
multiple bands disclosed in Dinkier II “and arrange them in crisscrossing
fashion so as to form trusses” to “obtain a lightweight yet strong skull. . .
structure that would be easier for the user to handle” due to the “finger
grips” of Dinkier II. Id. at 6—7. The Examiner then concludes that the
combination of Dinkier, Dinkier II, and Cosman would have been obvious in
order to “optimize the device’s performance in terms of providing support to
the patient’s skull.” Id. at 7.
Appellants first contend that Dinkier II’s grip areas 38A and 38B do
not correspond to the “diagonal bars forming the truss as defined in claim
1.” Appeal Br. 7. Appellants argue that grip areas 38A and 38B are “holes
through the legs of the C-shaped support or ... a plate of [sic] flange lying
at right angles to the inner and outer bands and in a center plane of the C-
shaped support.” Id. Appellants also argue that neither Dinkier nor
Dinkier II discloses a “truss defined by the three components of the inner
and outer bands and the bars.” Id. at 11. This contention is not persuasive
for several reasons. First, we note that Dinkier II discloses that elements
38A and 38B extend upward between the inner and outer bands of the C-
shaped structure formed by elements 30A and 3OB. See Dinkier II, Fig. 1 A.
Appellants, however, do not persuasively explain why elements 38A and
38B in Dinkier II do not correspond to the limitation in claim 1 of “a
plurality of bars extending between the inner band and the outer band.”
Second, the Examiner relies on Cosman to modify the orientation of the bars
of Dinkier II to be diagonal and thereby define a truss with the inner and
outer bands as required in claim 1. See Final Act. 6—7. Consequently, this
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Application 13/467,196
contention is neither commensurate with the scope of claim 1 nor responsive
to the rejection.
Appellants next contend that Cosman’s rods are not structural, do not
connect inner and outer bands as recited in claim 1, and do not extend in the
direction of right angles to the center line of the support. Appeal Br. 8. The
Examiner responds that Cosman discloses “that the trusses are used ‘to make
the [structure] self-contained, self-supporting, lightweight and strong . . .
Ans. 11 (citing Cosman | 64). The Examiner also notes that claim 1
does not require “that the trusses must form at right (i.e.[,] 90 degree)
angles.” Id. at 12. The Examiner also notes that Dinkier, as modified by
Dinkier II, provides the “C-shaped outer and inner band structure” and
Cosman “is simply used to provide the limitation of the zig-zag arrangement
of the bars to form this truss structure.” Id. at 12. Appellants’ contention is
not persuasive because Paragraph 64 of Cosman discloses that the zig-zag
rod configuration is structural, the Examiner does not rely on Cosman for
disclosure of the inner and outer bands, and claim 1 does not require that the
plurality of bars be arranged at right angles to the center line of the support.
Appellants’ third contention is that the key point of the truss recited in
claim 1 is not strength but “to provide the reduction in image interference
that is obtained by this arrangement of the material.” Appeal Br. 10—11.
The Examiner responds that Appellants are arguing an intended use of the
claimed device, which “is not presented in the claims as structural
limitations.” Ans. 14. The Examiner also notes that claim 1 does not recite
that the truss arrangement is provided for “something other than support or
strength.” Id. at 14. We are not persuaded by this contention because it
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does not apprise us of a structural difference between claim 1 and the
combination of teachings from the prior art.
Appellants’ final contention is that there is no suggestion in Cosman
that the rods of Cosman “should be used in Dinkier or Dinkier II to replace
the center flange of the C-shaped support shown therein.” Appeal Br. 8.
The Examiner responds that the rods of Cosman are not used in the rejection
to replace the flange or plate of Dinkier, but rather “to further modify
Dinkier II such that the Dinkier II[’s] 38A and 38B spaced bars may include
the zig-zag bars 21, 22, 23 or truss arrangement of Cosman.” Ans. 13. This
contention is not persuasive because there does not have to be a specific
suggestion in the prior art that the rods of Cosman should be used to modify
the structure of Dinkier II. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
419 (2007) (“The obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation.”). Rather, the
rejection must be based on “articulated reasoning with some rational
underpinning.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)). Appellants fail to persuasively apprise us of error in the Examiner’s
factual findings or rationale, noted above, for the combination of Dinkier,
Dinkier II, and Cosman, which we determine to be reasonable and supported
by rational underpinnings. See KSR, 550 U.S. at 416 (“[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results”). We, thus, sustain the
rejection of claim 1.
With respect to claim 10, Appellants first contend that Dinkier
discloses an adjustment component 54 located at the outer end of the legs
contrary to the recitation in claim 10 that “there is no component of the
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adjustment system at the outer ends of the legs.” Appeal Br. 12 (citing
Dinkier, Fig. 1) (emphasis omitted). The Examiner responds that “the
rejection of claim 10 is based on the rejection of claim [7] and in the
rejection of claim 7, it is stated that the adjustment system comprises
bottom subsystem or mechanism (20) that adjusts the width of the C-
shaped support at the base of the C-shaped support so as to increase the
distance between the legs of the C-shaped support.” Ans. 14—15; see also
Final Act. 8—9. While we appreciate Appellants’ reference to element 54, the
Examiner’s rejection relies only on the adjustment mechanism 20 shown at
the bottom of Dinkler’s Figure 1 as corresponding to the adjustment system
recited in claim 10. Appellants’ argument is not persuasive because it does
not address the Examiner’s rejection or explain why Dinkler’s adjustment
mechanism 20 has “no component... at the outer ends of the legs.”
Appellants also contend that Dinkier’s manually operable adjustment
pin 37 is “located at the center of the base and NOT at the bottom of one
leg” as required in claim 10. Appeal Br. 13. The Examiner responds that, in
Dinkier, “the bottom of each leg . . . (versus top of leg or arm) meets at the
(bottom) center of the C-shaped base.” Ans. 16. We are not persuaded by
Appellants’ contention. Appellants’ contention merely points out what claim
1 states, i.e., “the manually graspable portion is located ... at the bottom of
one leg.” Appellants do not adequately explain why Dinkier’s manually
operable pin 37 is not located “at the bottom” of one leg, or provide
persuasive argument why the Examiner’s finding that Dinkler’s pin 37 is
located “at the bottom” of one leg is erroneous. Appeal Br. 13; Final Act. 8—
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9; Ans. 16. As Appellants do not apprise us of error, we sustain the rejection
of claim 10. See In reLovin, 652 F.3d 1349, 1356 (Fed. Cir. 2011).
Claim 7 depends from claim 1. Appeal Br. 15 (Claims App.).
Appellants do not argue separately for the patentability of claim 7. Id. at 6.
We sustain the rejection of claim 7 for the same reasons discussed for claim
1.
Rejection 2
Appellants do not address the rejection of claim 5 as unpatentable
over Dinkier, Dinkier II, Cosman and Dinkier III. Appeal Br. 6—13. We,
therefore, sustain the rejection of claim 5.
DECISION
The Examiner’s decision rejecting claims 1,5,7, and 10 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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