Ex Parte Spahn

Patent Trial and Appeal Board

Mar 21, 2013

11580768 (P.T.A.B. Mar. 21, 2013)

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.
11/580,768 10/13/2006 INV001Martin Spahn 2005P14444US 5976
22116 7590 03/21/2013
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
SONG, HOON K
ART UNIT PAPER NUMBER
2882
MAIL DATE DELIVERY MODE
03/21/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARTIN SPAHN
____________

Appeal 2010-008620
Application 11/580,768
Technology Center 2800
____________

Before DENISE M. POTHIER, BRUCE R. WINSOR, and
JOHN A. EVANS, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 16-18 and 20-35.
1
Claims 1-15 and 19 have been
canceled. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm-in-part.

1
Throughout this opinion, we refer to the Appeal Brief (App. Br.) filed
October 28, 2009; (2) the Examiner’s Answer (Ans.) mailed April 30, 2010;
and (3) the Reply Brief (Reply Br.) filed May 24, 2010.
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Application 11/580,768

2
Invention
Appellant’s invention relates to a more precise medical imaging
system for preventing collisions with the patient and devices. See Spec.
¶¶ 0003, 0006, 0010-11. Claim 16 is reproduced below with certain
disputed limitations emphasized:
16. A medical imaging system, comprising:
a moveable part that moves respective to an object;
a sensor connected to the movable part that detects a surface of the
object; and
a control device linked to the sensor that calculates a distance
between the moveable part and the surface of the object according to
the detection and controls a movement of the moveable
part based on the distance.

The Examiner relies on the following as evidence of unpatentability:
Rasche US 2001/0005410 A1 June 28, 2001
Jensen US 6,814,489 B2 Nov. 9, 2004
Sukovic US 2005/0054915 A1 Mar. 10, 2005
Oota US 2005/0117703 A1 June 2, 2005
Tani US 2005/0171644 A1 Aug. 4, 2005

The Rejections
Claims 16-18, 20, 21,
2
25, 27, 28, and 31-35 are rejected under 35
U.S.C. § 102(b) as anticipated by Tani. Ans. 3-6.
Claims 16, 17, 25, 26, and 29 are rejected under 35 U.S.C. § 102(b) as
anticipated by Oota. Ans. 6.
Claims 22-24 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Oota and Sukovic. Ans. 7.

2
The Examiner has a typographical error in the heading, referring to claims
“2-21.” Based on the body of the rejection and given that claims 2-15 have
been canceled, we presume the Examiner was referring to claims 20 and 21.
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Claim 29 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Oota and Jensen. Ans. 7.
Claim 30 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Oota and Rasche. Ans. 8.

THE ANTICIPATION REJECTION OVER TANI
Regarding independent claims 16 and 31, the Examiner finds that
Tani discloses a control device that calculates the distance between a
moveable part and a surface of an object according to the detection and
controls a moveable part based on the distance. Ans. 6, 9-10 (citing
¶¶ 0028, 0043-46). The Examiner admits that Tani does not disclose a
medical imaging system but states that this recitation is only located in the
preambles of claims 16 and 31, concluding that the recitation to the medical
imaging system is not considered to be a structural limitation. Ans. 8-11.
Appellant argues Tani (1) is not a medical imaging system but a
mobile robot cleaner (App. Br. 5-6) and (2) does not disclose a controller
that calculates the distance between the moveable part and an object’s
surface according to the detection and controls the moveable part based on
the distance (App. Br. 5-6).

ISSUES
(1) Under § 102, has the Examiner erred in rejecting claim 16 by
finding: (a) the preamble is not a structural limitation and (b) Tani discloses
a control device linked to the sensor that calculates a distance between the
moveable part and the surface of the object according to the detection and
controls a movement of the moveable part based on the distance?
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(2) Under § 102, has the Examiner erred in rejecting claim 31 by
determining the preamble of “[a]n anti-collision method for a medical
imaging system comprising a movable part moved about a patient” does not
limit the claim?

ANALYSIS
Claims 16-18, 20, 21, 25, 27, and 28
Based on the record before us, we find no error in the Examiner’s
rejection of illustrative claim 16. Concerning the preamble term, “[a]
medical imaging system,” in claim 16, “[w]hile there is no simple test for
determining when a preamble limits claim scope, . . . [there are] some
general principles to guide that inquiry.” Am. Med. Systems, Inc. v. Biolitec,
Inc., 618 F.3d 1354, 1358 (Fed. Circ. 2010) (citation omitted). “[T]he
preamble may be construed as limiting ‘if it recites essential structure or
steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.’”
Id. (citation omitted). Conversely, a “preamble is not regarded as limiting,
however, ‘when the claim body describes a structurally complete invention
such that deletion of the preamble phrase does not affect the structure or
steps of the claimed invention.’” Id. at 1358-59 (citation omitted).
As the Examiner indicates (Ans. 9), the phrase “medical imaging
system” is only found in the preamble of claim 16. The claim’s body sets
forth the complete invention and does not refer back to the medical imaging
system, such that the deletion of the preamble does not affect the structure of
the claimed invention. That is, when viewing claim 16 as a whole, its
preamble is not found to recite essential structure, such that its recitation is
necessary to give meaning to the claim. Rather, the preamble “‘merely gives
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a descriptive name to the set of limitations in the body of the claim that
completely set forth the invention.’” Am. Med. Systems, 618 F.3d at 1359
(citation omitted). We therefore agree with the Examiner (see Ans. 9) that
the preamble is not a structural limitation and at best is considered an
intended use limitation.
Given this claim construction, we see no error in the Examiner using
Tani, which admittedly (see Ans. 8-9) is not a medical imaging system, to
reject claim 16. Even if we were to consider the preamble an intended use
recitation, there is nothing structurally in Tani’s device which would prevent
this device from being used within a medical application, including imaging,
and is capable of (a) determining the distance between a moving part and an
object and (b) moving components based on this distance. Thus, we find
Tani’s device has the ability to be used in a medical imaging system to
control and move a “moveable part” relative to an object and detect its
distance from an object as recited.
Concerning the “control device” limitation, Appellant argues that
Tani’s controller 43 only controls the movement of moveable part and the
sensor – not the control device – calculates the distance between the
moveable part and the object’s surface. See App. Br. 5-6. Tani discloses
that the sensors (12a-c) detect obstacles and measure the distance to the
obstacles (e.g., an object’s surface) from a main body 2 (e.g., a moveable
part (see e.g., ¶ 0040)). ¶ 0028. Yet, as the Examiner notes, the sensor feeds
this optical information to controller 43 for further processing the distance.
See Ans. 9-10. For example, Tani’s controller 43 includes a cleaning
operation control unit 44 and a mapping information creating unit 45, which
further process (e.g., calculates) the distance information to determine the
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moving direction and movement of the main body 2. See Ans. 9-10
(discussing ¶¶ 0043-46).
We find this position reasonable and consistent with the disclosure.
The examples in disclosure discuss that the sensor determines the distance
between a moveable part and the object and transmits this distance
information to the control device, which in turn, controls a moveable part
(e.g., part 5) according to the distance. See Spec. ¶ 0023 (stating “sensors 4
allow corresponding distances between the moveable parts 5 and the surface
of the patient 3 to be detected”), ¶ 0024 (stating “distance data of the sensors
4 is transmitted to the control device 2”), ¶ 0025 (describing “[p]osition
detectors . . . with the first sensor part 8a establishing an electromagnetic
field, which is correspondingly detected in the second sensor part 8b with
the movement of the moveable part 5, so that position changes can be
determined”), ¶ 0026 (describing “[s]ensors 4 are also positioned here on
exposed points of the moveable part 5 and measure the distance to the
patient 3.”). Thus, based on the broadest reasonable construction that is
consistent with the disclosure, we find that Tani discloses a control device
that calculates a distance between a moveable part (e.g., 2) and an object’s
surface (e.g., an obstacle) according to the detection and controls the
moveable part’s movement based on the distance. See id.
Additionally and as to the Examiner’s point that the optical sensor
detects the optical information (Ans. 10), Tani’s sensors technically function
to detect the position of the objects. Separate components are used to
calculate the distance between the moveable part (e.g., 2) and the object’s
surface (e.g., an obstacle). We also agree with the Examiner (Ans. 12) that
the claims do not recite a “single” control device. As such, any part of the
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sensor that “measures” the distance (see ¶ 0028) can be considered a part of
a control device as broadly as recited and consistent with the disclosure.
Lastly, regarding claim 20, Appellant repeats the argument related to
the functions of the control device and the sensors. See App. Br. 7. For the
reasons discussed above, we are not persuaded. See also Ans. 11-12.
Accordingly, Appellant has not persuaded us of error in the rejection
of independent claim 16 and claims 17, 18, 20, 21, 25, 27, and 28 not
separately argued with particularity.

Claims 31-35
We reach the opposite conclusion for claim 31. Claim 31, in contrast
with claim 16, recites a moveable part both in the preamble and the body of
the claim. The preamble recites “for a medical imaging system comprising a
mov[e]able part,” and the body recites, “a sensor connected to the
mov[e]able part,” “calculating a distance between the moveable part . . .,”
and “controlling a movement of the moveable part based on the calculated
distance by the control device to prevent a collision of the moveable part
with the external object.” Given that the “moveable part” is recited both in
the preamble and the body, we find that the moveable part is structure that
gives meaning to the claim.
Additionally, the moveable part is recited as component of a medical
imaging system. To be sure, the phrase to the “medical imaging system” is
located only in the preamble. However, to divorce the recited imaging
system from its moveable part would be to ignore the claim 31’s limitations
as a whole and is an unreasonably broad construction. We therefore
disagree with the Examiner (Ans. 10) that the “medical imaging system” is
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not a limitation in claim 31. Furthermore, because the Examiner admits
Tani does not disclose a medical imaging system (Ans. 8), we will not
sustain the rejection of claim 31 under anticipation.
For the foregoing reasons, Appellant has persuaded us of error in the
rejection of independent claim 31 and dependent claims 32-35 for similar
reasons.

THE ANTICIPATION REJECTION OVER OOTA
Regarding illustrative claim 16, the Examiner maps the recited
moveable part to Oota’s elements 2 and 5, the recited object to Oota’s
element 150, and the recited control device to Oota’s elements 6 and 10.
Ans. 6, 12-13.
Appellant argues Oota fails to disclose a control device detecting the
distance between the moveable part and the object but rather the distance
measurement part 6 detects the distance between an x-ray generating part 1
and the patient 150. App. Br. 7 (citing ¶ 0032). Appellant further asserts
that Oota does not teach the system controller 10 controls the x-ray
generating part 1 based on the distance. App. Br. 8.

ISSUE
Under § 102, has the Examiner erred in rejecting claim 16 by finding
that Oota discloses a control unit that calculates a distance between the
moveable part and the surface of the object according to the detection and
controls a movement of the moveable part based on the distance?

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ANALYSIS
Based on the record before us, we find no error in the Examiner’s
rejection of independent claim 16 which calls for a control device that
calculates a distance between the moveable part and the surface of the object
according to the detection and controls a movement of the moveable part
based on the distance. The Examiner explains that the control unit includes
both the distance detection part 6 and the system controller 10 and does not
rely on one component to perform the functional limitations (e.g.,
calculating and controlling) in claim 16. See Ans. 12. (stating “distance
measurement part 6 and system controller 10 as whole is considered to
constitute the claimed control device[.]”)
We find this position reasonable. Courts have “repeatedly
emphasized that an indefinite article ‘a’ or ‘an’ in patent parlance carries the
meaning of ‘one or more’ in open-ended claims containing the transitional
phrase ‘comprising.’” KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351,
1356 (Fed. Cir. 2000). Thus, the phrase, “a control device” recited in
claim 16, can reasonable be mapped to more than one component or, as the
Examiner found, to the distance measurement part 6 and the system
controller 10 collectively.
The Examiner explains how these elements perform the functions of:
(1) calculating a distance between the moveable part and the surface of the
object according to the detection and (2) controlling a movement of the
moveable part based on the distance. See Ans. 12-13. In particular, while
Appellant focuses on paragraph 32 of Oota (App. Br. 7), Oota also discloses
the sensor part 26 measuring the distance between the patient 150 and the
X-ray detecting part 2. See Ans. 12 (citing ¶ 0034). The Examiner further
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finds that a CPU (e.g., 67), which is part of the distance detection part (see
¶ 0045; Fig. 4), stores such information (see Ans. 12-13 (citing ¶ 0055); see
also ¶¶ 0044-45, 0051-55; Figs. 1, 4), which is used for further processing.
This includes using the information to move a C-arm and the X-ray
detecting part 2. See Ans. 12-13 (citing ¶ 0065); see also ¶ 0041; Fig. 1.
Based on the above discussion when addressing Tani, we find Oota discloses
the control device (e.g., 6, 10) further calculates a distance between a
moveable part and an object’s surface and controls the moveable part’s
movement based on this distance. Also, as discussed above, given the
disclosure’s examples of the sensor determining the distance (see Spec.
¶¶ 0023-26), we find it reasonable to find the components of a sensor that
determine distance between a part and object’s surface to be a feature of the
recited “control device.”
For the foregoing reasons, Appellant has not persuaded us of error in
the rejection of independent claim 16 and claims 17, 25, 26, and 29 not
separately argued with particularity.

THE OBVIOUSNESS REJECTIONS
For each of the obviousness rejections, Appellant refers to the
previous arguments of claim 16. App. Br. 8-9. The issues before us, then,
are the same as those in connection with claim 16, and we refer Appellant to
our previous discussion. Appellant further asserts for these rejections that
the rejected claims are patentable “based on [their] own merits.” App.
Br. 8-9. However, Appellant fails to elaborate any further concerning these
purported merits. Based on the record, we therefore are not persuaded of
error in the rejections of claims 22-24, 29, and 30.
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CONCLUSION
Under § 102, the Examiner did not err in rejecting claims 16-18, 20,
21, and 25-29 but erred in rejecting claims 31-35.
Under § 103, the Examiner did not err in rejecting claims 22-24, 29,
and 30.

DECISION
The Examiner’s decision rejecting claims 16-18 and 20-30 is
affirmed.
The Examiner’s decision rejecting claims 31-35 is reversed.
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-IN-PART

kis