IN RE ROEMER
| Citation | 59 USPQ2d 1527,258 F.3d 1303 |
| Parties | (Fed. Cir. 2001) IN RE ROEMER 00-1159 DECIDED: |
| Decision Date | 24 July 2001 |
| Court | United States Courts of Appeals. United States Court of Appeals for the Federal Circuit |
Boris Haskell, Paris and Haskell, of Arlington, Virginia, argued for appellants.
William LaMarca, Associate Solicitor, Office of the Solicitor, U.S. Patent and Trademark Office, of Arlington, VA, argued for appellee. With him on the brief were John M. Whealan, Solicitor; Stephen Walsh, and Linda Moncys Isacson, Associate Solicitors.
Before MICHEL, LOURIE, and RADER, Circuit Judges.
In a patent interference proceeding, the Board of Patent Appeals and Interferences held the claims of Dr. Peter B. Roemer's reissue patent application unpatentable over United States Patent No. 4,595,899 (the Smith patent). Punchard v. Roemer v. Mansfield, Patent Interference No. 102,854 (Sept. 29, 1999). Because the Board erred in determining that the Smith patent precludes patentability for claims 1-4, 33, and 34 of the Roemer reissue application, this court reverses that portion of the Board's judgment. Because the Board did not construe claims 5 and 7-15 of the Roemer reissue application nor review their patentability over the Smith patent, this court vacates the portion of the Board's judgment holding these claims unpatentable.
United States Patent No. 4,737,716 (the Roemer patent) lists Dr. Roemer and John S. Hickey as inventors. The Roemer patent discloses a set of shielded gradient coils for nuclear magnetic resonance imaging (MR). A typical MR apparatus includes a large magnet, a radio frequency (RF) producing coil, and gradient coils. The magnet produces a magnetic field that causes the spin vectors of certain protons (e.g.,13C, 1H, 31P) in a sample to orient themselves with the field, thus creating a "background" field. The RF coil then pulses energy at the sample, causing the protons to flip their spin directions at various energies, depending on the proton's environment. When the energy pulse is turned off, the flipped protons realign themselves with the background field, thereby releasing the energy absorbed when flipping. The gradient coils provide a linear (x,y,z) reference so the machine can detect the exact location of these energy releases. The MR apparatus then measures this released energy and converts it into an image.
Since the early 1980s, when nuclear magnetic resonance became a diagnostic tool for the human body, MR equipment and techniques have undergone continuous improvements of image quality, acquisition speed, and quantitative accuracy. To enhance the efficiency of the MR apparatus, the main magnet is generally located close to the imaging volume (e.g., the space occupied by the patient). Locating the magnet close to the imaging volume, however, also brings the magnet close to the gradient coil. The changing magnetic fields from the gradient coil induce eddy currents from nearby conducting media. These eddy currents have an adverse effect on the spatial and temporal quality of the background magnetic field, thereby distorting image quality and accuracy.
The Roemer patent discloses and claims a solution to this problem. As depicted in cross-section below, around the imaging volume 45 lies RF coil 42, surrounded by the gradient coil set 41, and further surrounded by the main magnet 40. The gradient coil set includes a gradient coil and a second coil having an opposite current to the gradient coil, located between the gradient coil and the main magnet. This opposing current coil essentially cancels out the current of the gradient coil thereby preventing eddy current effects on the main magnet.
[Tabular or Graphical Material Omitted]
Claim 1 of the Roemer patent recites:
1. A gradient coil set for an MR apparatus comprising a plurality of radially disposed fingerprint coils adapted to be placed within a main field magnet, each of said coils adapted to provide a respective surface current distribution, the total magnetic field resulting from the coaction of said surface current distribution having a predetermined gradient in a predetermined single dimension within a predetermined area inside said coil set and a substantially zero value outside said coil set, whereby magnetic forces between said coil set and said field magnet are substantially eliminated.
(Emphasis added). The Roemer patent issued on April 12, 1988.
In 1989, Dr. Roemer filed a reissue application in which he copied claims of United States Patent No. 4,733,189 (the Punchard patent) to William F.B. Punchard and Robert D. Pillsbury. Similar to the Roemer patent, the Punchard patent discloses and claims a MR apparatus and method for suppressing eddy currents by constructing an active shield of secondary coils around the gradient producing coils. Dr. Roemer requested the United States Patent and Trademark Office (USPTO) to declare an interference between the Roemer reissue application and the Punchard patent. The examiner formulated a count with language identical to the Punchard patent's claim 15, which Dr. Roemer added as claim 27 to the Roemer reissue application. The count recites:
A method of suppressing eddy currents induced in components of a magnetic resonance imaging system by electromagnetic gradient-producing elements, the method comprising:
disposing an active electromagnetic shield element about each of said gradient-producing elements in a magnetic resonance imaging system, and driving said active shield element with a current of opposite direction to minimize the external field of said gradient-producing element.
During the interference proceeding, the USPTO administrative patent judge found the count unpatentable over the Smith patent. The Smith patent also discloses shielding a MR apparatus with the use of a second set of coils. According to the Smith patent, a set of coils may surround the outside of the main magnet to produce a counter magnetic field. The shield in the Smith patent has a different purpose from the Roemer invention. Specifically, the Smith invention provides far field magnetic shielding to protect the room in which the MR apparatus is located from adverse magnetic effects.
The patent judge concluded that all pertinent claims of the Punchard patent, and thus all of Dr. Roemer's copied claims, correspond to the count. The patent judge then held all these claims unpatentable over Smith. Dr. Punchard requested the patent judge to add the rest of the claims of the Roemer reissue application to the interference, to find that all of the Roemer reissue application claims correspond to the count, and to add United States Patent No. 4,978,920 (the Mansfield patent) to the interference.
The Mansfield patent also discloses and claims screening coils that surround a gradient coil to reduce eddy current effects. After the patent judge redeclared the interference, adding the Mansfield patent, Dr. Roemer amended his reissue application to add two claims similar to claim 20 of the Mansfield patent. One such claim, which Dr. Roemer added as claim 33, recites:
33. A gradient coil system for use in an NMR apparatus including a coil set for producing a desired gradient magnetic field within a defined volume, said coil set comprising:
a first coil situated at a first location which defines the volume and at least one second coil situated at a second location, which embraces the volume,
the first coil having a first predetermined pattern of conductors to produce a first current distribution within the first coil to produce a first magnetic field, said at least one second coil having a second predetermined pattern of conductors to produce a second current distribution within the second coil to produce a second magnetic field, and
wherein the second magnetic field produced by the second coil coacts with the first magnetic field produced by the first coil such that the resultant magnetic field on the opposite side of the second coil to the first coil is substantially zero, and the resultant magnetic field on the opposite side of the first coil to the second coil constitutes the desired gradient magnetic field, and in which the first and second predetermined patterns of conductors are different from each other and in which the first current distribution is different from the second current distribution.
The other claim, which Dr. Roemer added as claim 34, is almost identical to claim 33 but recites a plurality of second coils, as opposed to "at least one second coil."
As noted above, the patent judge had designated the count unpatentable over Smith. In a departure from normal interference procedure, the parties then conceded that "whichever claims [of the patents and application at issue] properly . . . designated as corresponding to the count are unpatentable over Smith." The Board concluded that all of the Roemer reissue application claims (and, therefore, all of the claims copied from the Punchard and Mansfield patents) correspond to the unpatentable count. Only Dr. Roemer has appealed this determination. This court has jurisdiction to hear the present appeal under 28 U.S.C. § 1295(a)(4)(A).
This court reviews legal questions, such as obviousness, without deference. In re Gartside, 203 F.3d 1305, 1316, 53 USPQ2d 1769, 1776 (Fed. Cir. 2000). This court reviews the Board's underlying factual findings for substantial evidence. Id. The proper construction of either a claim or a count is a question of law that this court reviews without deference. DeGeorge v. Bernier, 768 F.2d 1318, 1321, 226 USPQ 758, 760 (Fed. Cir. 1985).
"A count defines the interfering subject matter between two or more applications or between one or more applications and one or more patents." 37 C.F.R. § 1.601(f). Typically, the USPTO determines which claims correspond to the count in order to determine the subject...
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