Ex Parte Sellers

Patent Trial and Appeal Board

Mar 25, 2013

10707907 (P.T.A.B. Mar. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MICHAEL BEN SELLERS
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Appeal 2010-006412
Application 10/707,907
Technology Center 3700
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Before: STEFAN STAICOVICI, JOHN W. MORRISON, and
NEIL T. POWELL, Administrative Patent Judges.

MORRISON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-3, 5-7, 12-18, and 21-24.1 We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
CLAIMED SUBJECT MATTER
The claims are directed to a gradient coil assembly and a method for
assembling the gradient coil assembly. Spec., para. [0002]. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A gradient coil assembly for use in an MRI device,
comprising:
a gradient tube extending along an axis, the tube
including first and second gradient coils and a conductive
compound disposed between the first and second gradient coils,
the conductive compound being a glue, and a chemical
hardening compound disposed in the glue, and a plurality of
conductive particles disposed substantially uniformly within the
glue, at least a portion of the plurality of conductive particles
being in a range of 1-10µm in diameter, a volume percentage of
the plurality of conductive particles is 0.1% or less of a volume
of the conductive compound such that a current flowing
through the conductive compound is limited to less than 10
microamps to reduce electrostatic discharges in the glue.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lehne
Doty
Dietz
US 5,235,283
US 5,530,355
US 6,642,717 B2
Aug. 10, 1993
Jun. 25, 1996
Nov. 4, 2003
Wang US 2004/0225213 A1 Nov. 11, 2004

1 Claims 4, 8-11, 19, and 20 have been cancelled. App. Br. 4.
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REJECTIONS
The following rejections are before us for appeal:
Claims 1, 2, 6, 7, 12-15, 17, 18, 21, 22, and 24 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Dietz and Wang.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dietz, Wang, and Doty.
Claims 5 and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dietz, Wang, and Lehne.

ANALYSIS
Obviousness over Dietz and Wang
Addressing claim 1, the Examiner determines that
It would have been obvious to one of ordinary skill
in the art at the time of the invention to modify the
coated gradient coils of Dietz et al. '717 in view of
the coatings of Wang et al. '213. The motivation to
modify Dietz et al. '717 in view of Wang et al. '213
would have been to select any resin mixture from a
finite list of well-known resin mixtures commonly
used in the art to be used with MRI with
reasonable expectations of success, as taught by
Wang et al. '213 [0242].
Ans. 4. Appellant counters that there is no motivation to combine Dietz and
Wang. App. Br. 10. Appellant’s argument appears to be holding the
Examiner to the old TSM standard; such a standard is not required. KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 415 (2007) ("We begin by rejecting
[TSM]"). The proper inquiry is whether the Examiner has articulated
adequate reasoning based on a rational underpinning to explain why a person
of ordinary skill in the art would have been led to combine Dietz and Wang.
See KSR, 550 U.S. at 418 (Rejecting the rigid requirement of a teaching,
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suggestion or motivation to combine known elements in order to show
obviousness, but nonetheless making clear that “rejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness” (citing In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006))).
Here, the Examiner provides the reasoning that it is rational to select
“any resin mixture from a finite list of well-known resin mixtures commonly
used in the art to be used with MRI with reasonable expectations of
success.” We agree. It is reasonable to use the resin of Wang, which is used
to bind materials exposed to MRI signals in a medical device, to bind
materials within the magnetic resonance apparatus exposed to similar MRI
signals of Dietz. See e.g., Wang, para. [0164]. Therefore, we find no error
in the Examiner’s articulated reasoning to combine Dietz and Wang.
Appellant next contends that
neither reference recognizes the problem being
solved by the claimed invention. In particular,
neither reference recognizes that high-voltage
potentials induced in a resin between first and
second gradient coils can undesirably cause
electrostatic discharges in air bubbles within the
resin resulting in undesirable bursts of
electromagnetic radiation. The undesirable bursts
of electromagnetic radiation causes a "snowy"
image in an MRI machine.
App. Br. 11. Appellant further contends that “Wang et al. is not even
directed toward a magnetic resonance imaging machine. In contrast, Wang
et al. is directed to an implantable device. Accordingly, applicant submits
that one skilled in the art would not look to Wang et al. in an attempt to
modify the teachings of Dietz et al.” Id.
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It appears that Appellant is arguing that Wang is not analogous art.
“The analogous-art test requires that the Board show that a reference is
either in the field of the applicant’s endeavor or is reasonably pertinent to the
problem with which the inventor was concerned in order to rely on that
reference as a basis for rejection.” Kahn, 441 F.3d at 986-87 (citing In re
Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992)).
In this case, Wang is pertinent to the problem with which the inventor
is concerned. As stated above, the polyester of Wang is used in an
environment where it is exposed to MRI signals. See Wang, para. [0039]. A
binder used in the MRI machine of Dietz would require the same technical
solution addressed in Wang, i.e., the binder must be able to operate in an
environment with MRI signals. Furthermore, Wang teaches a coating for
“reduction or elimination of disruption and distortion of a magnetic-
resonance image.” Reply Br. 4-5 citing Wang, para. [0164]. Therefore, one
skilled in the art would consider Wang when choosing a binder which would
be exposed to MRI signals which would not distort an MRI image. Thus,
we are not persuaded by Appellant’s argument that Wang is not analogous
art. For the foregoing reasons, we find no error in the Examiner’s
combination of Dietz and Wang.

Claim 1
Appellants argue that the combined teachings of Dietz and Wang do
not disclose “a volume percentage of the plurality of conductive particles is
0.1% or less of a volume of the conductive compound such that a current
flowing through the conductive compound is limited to less than 10
microamps to reduce electrostatic discharges in the glue,” as called for by
claim 1. App. Br. 12-13.
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Addressing claim 1, the Examiner finds only limited discussion in the
Specification of the claim limitation related to the 10 microamp current in
the conductive compound. Ans. 10. The Specification provides “[t]he
conductive compound layers 30, 32 preferably limit a current flowing
through layers 30, 32 to less than 10 microamps.” Spec., para. [0020]. The
Examiner then concludes that
This passage provides no indication of a criticality
of the volume percentage of the conductive
particles to "preferably" limit a current to less than
10microamps. Therefore, the examiner maintains
the grounds that Dietz in view of Wang teach the
above alleged deficiency because the combination
teaches as known optimizing particulate
conductive particles concentration in a conductive
compound for the purpose of limiting or tempering
electrical and thermal current, and thus reducing
electrical discharge (see for example: Dietz: col. 3,
II. 16-29 or Wang: 0010; 0164). See In re Aller,
220 F.2d 454, 456, 105 USPQ 233,235 (CCPA
1969).
Ans. 10. Appellant does not advance any argument that would persuade us
that the 10 microamp current limitation is critical. We agree with the
Examiner that “it is not made clear by the claim language or specification
why it would not be obvious to achieve 0 microamp current flow through a
compound (corresponding to the claimed less than 10 microamps) by
reducing a conductive particle volume concentration to 0%.” Id. We further
agree with the Examiner that the combined teachings of Dietz and Wang
disclose the claimed conductive compound, namely, glue/hardening
agent/conductive particles of 1-10 micrometers in diameter. See Ans. 8-9.
Lastly, each of Dietz and Wang teaches optimizing the concentration of
particles to limit electrical discharge. See Ans. 9; see also Dietz, col. 3, ll.
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21-29 and Wang, para. [0164]. Thus, we consider achieving a current of less
than 10 microamps to be the product of routine optimization of the volume
percentage of the plurality of conductive particles rather than innovation.
See e.g., In re Applied Materials, Inc., 692 F. 3d 1289, 1294-98 (Fed. Cir.
2012). Therefore, we agree with the Examiner that it would have been
obvious for a person skilled in the art to achieve a 10 microamp current
through an optimization process. See Ans. 10. As such, we find no error in
the Examiner’s conclusion that there is no criticality to the 10 microamp
current limitation and that it would have been obvious to a person of
ordinary skill in the art to optimize “particulate conductive particles
concentration in a conductive compound for the purpose of limiting or
tempering electrical and thermal current, and thus reducing electrical
discharge.” Id. Thus, we sustain the rejection of claim 1, and claims 2, 6,
and 7 which are not separately argued.

Claim 13
Regarding claim 13, Appellant generally argues that the references do
not teach the limitations of claim 13, without advancing any specific
argument. App. Br. 13. See 37 C.F.R. § 41.37(c)(1)(vii) (“A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.”) For the reasons stated
above with respect to claim 1, we sustain the rejection of claim 13, and
claims 14, 15, 17, and 18 which depend therefrom and are not separately
argued.

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Claim 12
Addressing claim 12, the Examiner determines that
the combination of Dietz and Wang teach the
presently claimed potting compound (i.e. the glue
{Wang: 0242}, the chemical hardening compound
{Dietz: col. 2, ll. 56-col. 3, l. 10; col. 3, ll. 43- 55},
the plurality of conductive particles of 1-10
micrometer diameter configured to limit current
{Dietz: col. 3, ll. 26-30; claim 5}). Regarding the
silver or gold particle limitation, the previous
office action repeatedly maintains that the
combination of Dietz and Wang teaches the use of
gold or silver particles (see Wang: 0322; 0338).
Ans. 11. The Appellant argues that Dietz fails to teach silver or gold
particles and Wang fails to teach a gradient coil assembly. App. Br. 14. We
are not persuaded by Appellant’s argument, because it attacks Dietz and
Wang individually when the rejection as articulated by the Examiner is
based on a combination of Dietz and Wang. See In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986). Thus, we do not sustain the rejection of
claim 12.

Claim 21
Addressing claim 21, Appellant advances the same arguments that
were presented for the rejection of claim 1. App. Br. 14-15. For the reasons
stated above, we sustain the rejection of claim 21, and claims 22 and 24
which depend therefrom and are not separately argued.

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Obviousness over Dietz, Wang, and Doty
Addressing claim 3, the Examiner determines that
It would have been obvious to one of ordinary skill
in the art at the time of the invention to modify the
coated gradient coils of Dietz et al. '717 in view of
Wang et al. '213 with the use of carbon particles of
Doty '355. The motivation to modify Dietz et al.
'717 in view of Wang et al. '213 with Doty '355
would have been to aid in casting or curing, as
taught by Doty '355 (col. 14, l. 57- col. 15, l. 13).
Ans. 5. Appellant counters there is “no proper motivation has been
identified for combining Dietz et al., Wang et al., and Doty et al. in an
attempt to solve a problem that none of the references recognize.” App. Br.
16. However, Appellant fails to address the Examiner’s rationale to
combine the references that the “carbon particles” would “aid in casting and
curing.” Again, Appellant’s argument appears to be holding the Examiner to
the old TSM standard; such a standard is not required. KSR at 415 ("We
begin by rejecting [TSM]"). Each of the other arguments fail for the same
reasons stated above with regard to the rejection of claim 1. As such, we
sustain the rejection of claim 3.

Obviousness over Dietz, Wang, and Lehne
Addressing claims 5 and 23, the Examiner provides the following
articulation to support the combination of Dietz, Wang and Lehne
the motivation to modify Dietz in view of Wang
would have been achieve a lower conductivity by
optimizing the composition of Dietz with the lower
concentration ranges of Wang. Furthermore, the
motivation to modify Dietz in view of Wang with
the bisphenol-A resin in an epoxy resin of Lehne et
al. is obvious because Lehne is in the same field of
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endeavor, MRI gradient coil assemblies with the
use of epoxy resins having reduced current flow-
through (Lehne: abstract, col. 5, ll. 31-36). The
motivation to modify Dietz in view of Wang and
Lehne would have been to aid in casting or curing,
as taught by Lehne (Lehne: col. 4, ll. 39-58).
Ans. 15. Appellant once more challenges the underlying combination of
Dietz and Wang, but fails to challenge the Examiners rationale to combine
those references with Lehne. App. Br. 17-18. For the same reasons as
discussed above with regard to the rejection of claim 1, we sustain the
rejection of claim 5 and 23.

DECISION
For the above reasons, the Examiner’s rejections of claims 1-3, 5-7,
12-18, and 21-24 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

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