How Prosecution History Can Support a Motivation to Combine
Briefly

Here, the patentee claimed a radiation therapy invention, but included references to imaging devices in its IDS. That inclusion (along with some other evidence) led to an inference that PHOSITA would generally be motivated to combine art across these two fields.
Grady, which disclosed an X-ray imaging device with the X-ray tube mounted on a sliding arm connected to rotating support rings. This was an imaging device. Ruchala, which disclosed a radiation therapy device using a linear accelerator (linac) as the radiation source, where the linac rotates around the patient to deliver the radiation dose. This was a therapy device.
Using the Prosecution History to Find an Implicit Motivation to Combine A key dispute in Elekta was whether a person having ordinary skill would have been motivated to combine references from different fields - here, imaging and therapy. Elekta argued that a key difference made the imaging art inapplica
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