Ex Parte 5838758 et al

Board of Patent Appeals and Interferences

Jan 27, 2012

90007594 (B.P.A.I. Jan. 27, 2012)

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.
90/007,594 06/17/2005 5838758 25960-023 6302
7590 01/27/2012
Randy J. Pritzker, Esq.
WOLF GREENFIELD & SACKS P.C.
Federal Reserve Plaza
600 Atlantic Avenue
Boston, MA 02210
EXAMINER
RUBIN, MARGARET R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
01/27/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte L-3 Communications Security and Detection Systems, Inc.1,
Appellant and Patent Owner
____________

Appeal 2011-010509
Reexamination Control No. 90/007,594
Patent 5,838,7582
Technology Center 3900
____________

Before SALLY C. MEDLEY, KARL D. EASTHOM, and KEVIN F.
TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge

DECISION ON APPEAL
L-3 Communications Security and Detection Systems, Inc., Appellant,
appeals under 35 U.S.C. §§ 134(b) and 306 from a final rejection of claims
38-43, 45, 46, 51/38, 52/51/38, 53/51/38, 55/38, 61-68, 74 -91, 93, and 94.
Claims 1-91, 93, and 94 are pending and subject to reexamination. Claims
1-37, 44, 47-50, 51/48, 52/51/48, 53/51/48, 54, 55/48, 56-60, and 69-73 have
been confirmed (Ans. 2, 6). Claims 38-43, 45, 46, 51/38, 53/51/38, 55/38,
61-68, 74-91, 93, and 94 have been rejected and are appealed.

1 L-3 Communications Security and Detection Systems, Inc. is the Patent
Owner and the real party in interest (App. Br. 1).
2 Issued November 17, 1998, to Kristoph D. Krug and Jay A. Stein.
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We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We AFFIRM-IN-PART.

STATEMENT OF THE CASE3
This proceeding arose from a request for ex parte reexamination filed
on behalf of Reveal Imaging Technologies, Inc. on June17, 2005, of United
States Patent 5,838,758 (the '758 Patent), based on U.S. Patent Application
08/403,277 filed March 13, 1995. The application was stated to be a
continuation of application 08/165,737, filed December 10, 1993, now U.S.
Patent No. 5,490,218, which was a continuation of application 07/566,083,
filed August 10, 1990, now U.S. Patent No. 5,319,547.
The '758 Patent was asserted in L-3 Communications Security and
Detection Systems, Inc. v. Reveal Imaging Technologies, Inc., CA No. 04-
11884 NG (Mass. 2004), where that case was settled (App. Br. 1).

CLAIMED INVENTION
Appellant’s invention relates to a device and method for inspection of
baggage and other objects (col. 1, ll. 1-22). With respect to the instant
claims, the system employs an X-ray inspection unit and a computed
tomographic (CT) scanner, where data from the X-ray inspection unit are

3 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed July 19, 2010) and Reply Brief (“Reply Br.,” filed November 22,
2010), and the Examiner’s Answer (“Ans.,” mailed September 21, 2010).
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used to indicate whether a suspect package or suitcase warrants further
inspection by CT scanning (col. 32, ll. 19-44).
We take independent claim 38 to be representative:
38. A system for detecting a specific material of interest
within a package or suitcase comprising:
a conveyor for sequentially moving a package or
suitcase
an X-ray inspection unit constructed to acquire X-ray
transmission data of said package or suitcase and indicate from
said transmission data a suspect package or suitcase that
warrants further detailed inspection by CT scanning,
said conveyor further moving said suspect package or
suitcase to a CT scanner, and
said CT scanner constructed to CT scan said suspect
package or suitcase to detect presence of said specific material
of interest.
(App. Br., Claims Appendix A)

REJECTIONS OVER ART & §112, 1st Paragraph
The prior art references relied upon by the Examiner in rejecting the
claims are:
Steele 4,803,639 Feb. 7, 1989
Burnett 4,870,667 Sep. 26, 1989
Stein 5,044,002 Aug. 27, 1991

F. Roder, “Principles, History, and Status of Duel-Energy
Computerized Tomographic Explosives Detection,” 13(3) J. Testing &
Evaluation 211-216 (May 1985) (“Roder”).
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B. W. Henderson, “High-Speed X-Ray CT Scanner Could Meet
FAA’s Explosive Detection Requirements,” Aviation Week & Space
Technology 78-79 (November 13, 1989) (“Henderson”).
The Examiner maintained rejections of the claims on the following
bases:
 claims 83, 90, and 91 under 35 U.S.C. §112, first paragraph as failing
to comply with the written description requirement (Ans. 6-14)4;
 claims 38-41, 43, 46, 51/38, 52/51/38, 53/51/38, 55/38, 61-64, 67, 68,
74, 75, 78-89, 93, and 94 under 35 U.S.C. § 103(a) as being
unpatentable over Steele, Roder, and Henderson (Ans. 15-39);
 claims 42, 65, 66, 68, 76, and 77 under 35 U.S.C. § 103(a) as being
unpatentable over Steele, Roder, Henderson, and Stein (Ans. 40-41);
 claim 45 under 35 U.S.C. § 103(a) as being unpatentable over Steele,
Roder, Henderson, and Burnett (Ans. 41-43); and
 claims 38-42, 55/38, and 84 under 35 U.S.C. § 103(a) as being
unpatentable over Henderson, and Stein (Ans. 43-48).
The Examiner also relies upon the following, at least in part, in
making the above rejections:
 Affidavit of Norbert J. Pelc in Support of Defendant’s Motion for
Summary Judgment regarding U.S. Patent Nos. 5,838,758 and
5,642,393, entered into the record May 9, 2006, (Evidence Appx.,
Exhibit 7).

4 In the Final Office Action, claims 68 and 73 were also rejected under 35
U.S.C. §112, first paragraph as failing to comply with the written description
requirement, but the rejection of those claims was withdrawn (Ans. 6).
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Appellant relies upon the following evidence in rebuttal to the
Examiner’s rejections:
 Declaration of Boris Oreper, dated December 18, 2008, (Evidence
Appx., Exhibit 1) (“Oreper Decl.”).
 Aspects of Explosion Detection v-ix, 72-80, 102-111, 131-145
(Maurice Marshall & Jimmie C. Oxley eds., Elsevier 2009) (Evidence
Appx., Exhibit 2).
 McGraw-Hill Dictionary Of Scientific And Technical Terms 454
(MCGraw-Hill 6th ed. 2003) (Evidence Appx., Exhibit 3).

ISSUES
Appellant argues that the Examiner erred in rejecting claims 83, 90,
and 91 as lacking proper written description because the Examiner has not
taken into account what one of skill in the art would have reasonably
concluded from the originally filed specification (App. Br. 7).
Appellant also argues that none of the prior art references discloses an
X-ray system capable of clearing bags in a system when combined with a
CT scanner (App. Br. 11). Appellant argues that the Examiner has ignored
and deemed irrelevant numerous statements in the Oreper Declaration which
undercut the factual basis of the instant obviousness rejections (id.).
The Examiner finds that Appellant has “redefined the word ‘indicate’
in a manner contrary to its original usage in the base patent specification”
(Ans. 59), and not in the sense of an indicator that an item could be non-
suspect (Ans. 10-11), such that there is no support for the functions recited
in claims 83, 90, and 91. The Examiner also disagrees with Appellant that
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the prior art references fail to teach or suggest all of the elements of the
claims (Ans. 60-61), and also finds that the prior art references disclose the
required operations necessary to construct a useful system, which runs
counter to the findings of the Oreper Declaration (Ans. 62-63).
Of the three independent claims rejected over prior art, Appellant
primarily argues the merits of independent claim 38, and argues that the
rejection of independent claims 80 and 61 should be reversed for the same
reasons (App. Br. 38, 42). Thus, we take claim 38 to be representative of
claims 61, and 80, as well as other claims not argued separately. See 37
C.F.R. § 41.37(c)(1)(vii). Appellant separately argues the merits of
dependent claims 46, 51, 64, 67, 82 and 83 (App. Br. 33-37, 39-41), where
those claims were only rejected over Steele, Roder, and Henderson under 35
U.S.C. § 103, where we address the rejection of those claims separately.
We have considered in this decision only those arguments that
Appellant actually raised in the Briefs. Arguments which Appellant could
have made but chose not to make in the Briefs are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii).
The issues arising from the respective positions of Appellant and the
Examiner, which we consider herein, are:
(i) Did the Examiner error in finding that claims 83, 90, and 91 fail
to comply with the written description requirement of 35 U.S.C. §112, first
paragraph?
(ii) Do the combinations of Steele, Roder, and Henderson, and
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Henderson and Stein, render claim 38 obvious under 35 U.S.C. § 103?
(iii) Does the combination of Steele, Roder, and Henderson render
claims 46, 51, 64, 67, 82 and 83 obvious under 35 U.S.C. § 103?

FINDINGS OF FACT
1. The '758 Patent is directed to a device and method for inspection
of baggage and other objects (col. 1, ll. 1-22).
2. The Specification of the '758 Patent provides that it is known to
inspect objects, including baggage, using single or dual-energy x-
rays to present images of the objects with shadings representing
mass density opaqueness of those objects (col. 1, ll. 18-29).
3. The Specification of the '758 Patent provides that the system
employs an X-ray inspection unit and a CT scanner, where data
from the X-ray inspection unit are used to indicate whether a
suspect package or suitcase warrants further inspection by CT
scanning (col. 32, ll. 19-44).
4. Steele discloses an x-ray inspection system for manufactured parts
which performs manual or automatic inspections through digital
fluoroscopy computed tomography (Abs.). Steele discloses the
applicability of such a system to detect flaws in aircraft engine
parts such that flaws detected in digital fluoroscopy images can be
further examined to further examine the area of interest through a
computed tomography image (col. 54, l. 66 – col. 55, l. 19).
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5. Steele provides that for a large volume of parts, CT scanning of all
parts is impractical, such that screening for defect presence using
digital fluoroscopy and then the use of a CT scan at the determined
location is desirable (col. 41, ll. 50-56).
6. Roder discloses the processes involved in the automated detection
of explosives concealed in suitcases or packages using dual-energy
computerized tomography (Abs.).
7. Henderson discloses the use of a high-speed X-ray computed
tomography (CT) system that can reliably detect small amounts of
explosive material in checked baggage (col. 1, p. 78). Henderson
also discusses the use of thermal neutron analysis (TNA) systems
which were approved by the Federal Aviation Administration
(FAA) (id.). Henderson also provides that the CT system can be
used as a secondary inspection device that would work with the
TNA (col. 2-3, p. 78).
8. Henderson also provides that the CT scanning system will
“automatically flag[s] explosives in red on a screen for the operator
or sound[s] an alarm in its fully automatic mode” (col. 3, p. 78).
9. Henderson also discloses that in a first step, a projection scan, like
those performed by concourse scanners, is used to locate areas of
high density within the bag (col. 3, p. 78), with subsequent CT
scanning used to indicate the type and configuration of the
suspected explosive (col. 3, p. 78 – col. 1, p. 79).
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10. Stein discloses a baggage inspection system which allows for the
detection of the presence of a reference material contained in the
baggage (Abs.) using a dual-energy scanner (col. 1, ll. 30-37). By
comparison of the atomic number of objects in the baggage with a
reference atomic number, contraband material can be made to
stand out in the image and be recognizable by the operator (col. 6,
ll. 50-68).

PRINCIPLES OF LAW
“To render a later invention unpatentable for obviousness, the prior art
must enable a person of ordinary skill in the field to make and use the later
invention.” In re Kumar, 418 F.3d 1361, 1369 (Fed. Cir. 2005) (citing
Beckman Instruments, Inc., v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed.
Cir. 1989) and In re Payne, 606 F.2d 303, 314-15 (CCPA 1979)).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007).

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ANALYSIS
(i) 35 U.S.C. §112, First Paragraph, Written Description
Claims 83, 90, and 91
Appellant argues that the Examiner erred in rejecting claims 83, 90,
and 91 as lacking proper written description because the Examiner has not
taken into account what one of skill in the art would have reasonably
concluded from the originally filed Specification (App. Br. 7). More
specifically, Appellant argues that the Specification makes clear by not
employing the CT scanner to scan particular items of baggage, those items
would be considered non-suspect (App. Br. 10).
The Examiner finds that Appellant has “redefined the word ‘indicate’
in a manner contrary to its original usage in the base patent specification”
(Ans. 59), and that the Specification only uses “indicate” in the active sense
(Ans. 60) and not in the sense of an indicator that an item could be non-
suspect (Ans. 10-11). We do not agree.
In the context of the Specification, we find that “suspect” and “non-
suspect” would be binary indications provided to items. In other words, we
find that the ordinary meaning of “non-suspect” would be not suspect. The
Specification does not suggest other labels that should be applied to items,
such as providing a degree of “suspectness,” or perhaps suspect but subject
to verification. As such, “non-suspect” would be considered the opposite of
“suspect,” such that items that would not be sent on for scanning by the CT
scanning would be non-suspect. While the Examiner focuses on the
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signaling aspect of determining an item to be suspect (Ans. 11), we do not
find claims 83, 90, and 91 as providing any such background or aspect. As
such, we find that the Examiner erred in finding claims 83, 90, and 91 as
lacking proper written description support under 35 U.S.C. §112, first
paragraph.

(ii) Obviousness Under 35 U.S.C. § 103 of Claim 38
Steele, Roder, and Henderson
Appellant argues that the system resulting from the combination of
Steele, Roder, and Henderson would not have an X-ray unit that functions as
recited in the rejected claims (App. Br. 23-25). More specifically, Appellant
argues that the Examiner erred in ignoring statements in the Oreper
Declaration that describe how the resulting combination would have
functioned, and that the proposed combined system would not have been
capable of indicating certain items of baggage as warranting further
inspection (App. Br. 25-26). The Examiner finds that the x-ray inspection
unit provided in the combination would need to perform the functional
limitations of the claims, but need not do more (Ans. 71-72). We agree with
the Examiner.
Henderson discloses that a projection scan is used to locate areas of
high density within the bag (FF 7), which we take to be equivalent to
indicating that certain items within baggage warrant further inspection.
While Appellant may believe that such functionality would not be present in
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the system resulting from the combination of Steele, Roder, and Henderson,
we do not find such to be persuasive.
Turning specifically to the Oreper Declaration, Appellant argues that
the Examiner has not properly considered the statements therein, specifically
¶5, which provides that none of the references provides an x-ray unit capable
of functioning as an effective pre-screener to identify bags that warrant
further inspection (App. Br. 26). While Oreper provides such an opinion in
¶5, he also provides in ¶7 that Henderson allows for the CTX 5000 to be
used in a two-stage baggage inspection system with the TNA system, such
that we do not find that Mr. Oreper is speaking about the overall function of
pre-screening. In other words, since Henderson is acknowledged to teach
pre-screening, of some sort, Mr. Oreper must be commenting of the efficacy
or throughput ability of any x-ray units in Steele, Roder, or Henderson to
serve as pre-screeners. However, in considering the validity of such
assertions, we must examine the assumptions made.
The efficacy and throughput ability of any inspection system would be
dependent on the particular environment in which the inspection system is
utilized. A large metropolitan airport would have different criteria than
screening being carried out at a small town municipal building. What might
be insufficient performance in one location may be in excess of what is
needed in another. Since claim 38 does not provide any specific criteria for
speed or accuracy, we find that Mr. Oreper’s statements in ¶5 to be overly
general with respect to the combination applied against that claim. We do
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not find that Mr. Oreper’s opinions speak to the various types of the system
to which claim 38 might cover. Thus, while we do not discount Mr.
Oreper’s opinion, it is not persuasive to show that the Examiner (Ans. 51-
52) erred in finding the proposed combination obvious.
Appellant also argues that asserted references fail to teach or suggest a
device that could function as an effective pre-screener for a CT scanner
(App. Br. 28), and that the alleged combination would require every bag to
be scanned by both the first and second stages, as opposed to the system
recited in claim 38 (App. Br. 29). We have addressed this issue supra, and
find that the use of pre-screening is contemplated by the combination of
Steele, Roder, and Henderson, and would not require that every bag must be
scanned by a CT scanner.
Appellant also relies on the Oreper Declaration to show that the flaw
analysis techniques of Steel could not be used in a baggage inspection
system resulting from the combination of Steele, Roder, and Henderson.
Specifically referencing ¶8 of that Declaration, Appellant argues that Steele
relies upon a known, good standard, which is not applicable to baggage
inspection with items having various shapes and sizes (App. Br. 30). We do
not, however, agree.
It would be error to find that a person of ordinary skill attempting to
solve a problem will be led only to those elements of prior art designed to
solve the same problem. KSR at 420. We find that one of ordinary skill in
the art would not have to adopt the comparison standard from Steele to
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implement the judicious use of CT scanning based on the results of a first
stage as taught by Steele. Ordinary skilled artisans are not automatons that
must implement all aspects of various references into a system resulting
from a combination. This is especially true when the other references cited,
namely Roder and Henderson, explicitly discuss detection of explosives and
other contraband in baggage. Thus, while we acknowledge that Mr. Oreper
is correct that not all x-ray units are the same and that the system in Steele
functions as described (Oreper Decl. ¶8), we do not agree that the exact
system of Steele must be implemented in a combined system of Steele,
Roder, and Henderson.
We also note that Appellant asserts that the Examiner’s Answer
withdraws a prior line of reasoning for the rejections and presents an entirely
new line of reasoning that is flawed and unsupported by the record (Reply
Br. 5-13). Appellant alleges that the Examiner’s statements that one of
ordinary skill in the art could have used Steele’s techniques to identify
bullets and guns based on shape is a departure from the Examiner’s prior
position (Reply Br. 6-7). We would agree with Appellant that this would be
“a significant departure from the position taken by the Examiner in the Final
Office Action,” and throughout the reexamination proceedings (Reply Br.
7), if we found this to be the shift that Appellant appears to believe it to be.
We do not.
The Examiner has not withdrawn any line of reasoning, and we find
the Examiner’s comments to be taken in addition to the line of reasoning
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adopted in the prior art rejections. The Answer provides a rationale that the
claims do not preclude the x-ray inspection unit from identifying a suspect
item based on comparisons with known objects (Ans. 61). We do not find
this statement to be incorrect, as claim 38 does not require more, and we find
the Examiner as responding to the arguments of Appellant (App. Br. 18-19).
The Examiner is finding, in other words, that even if Steele uses a known
standard, claim 38 does not distinguish over systems that use known
standards. We have reviewed Appellant’s arguments about the Examiner’s
new findings in their Reply Brief, but we do not find them to be persuasive
in that we agree with the Examiner’s original, and not controverted,
reasoning supplied in the prior art rejections.

Henderson and Stein
Appellant argues that the Examiner’s combinations of Henderson and
Stein would have resulted in several hypothetical systems that would have
looked and functioned very differently and Appellant chooses to address
their apparent faults separately (App. Br. 43). With respect to joining the
projection scanner of Henderson to the CT scanner of Henderson, Appellant
argues that the Oreper Declaration provides a factual basis that such a
system would not function as the Examiner alleges (App. Br. 44-48). More
specifically, Appellant suggests such a combination would require at least
one CT scan on each bag (App. Br. 45-46). The Examiner finds that such a
construction is not necessary in that Henderson clearly provides for not
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using a CT scanner as a first line screener but only as a “second check” for
suspect bags (Ans. 80-81). We agree with the Examiner.
Henderson clearly provides a teaching of the use of a CT system as a
secondary inspection device (FF 7), as used in conjunction with the TNA
system, such that CT scans need not be performed on each bag. The
Examiner’s calculations for the systems described in Henderson, i.e.,
meeting the required throughput of the systems (Ans. 80), are convincing
and we do not find that the overall teachings of Henderson would require
that each bag receive a CT scan. While Mr. Oreper concludes that each “bag
must still be CT scanned” (Oreper Decl. ¶7), he also allows that Henderson
allows for the CTX 5000 to be used in a two-stage baggage inspection
system with the TNA system (id.). Taken together, we find that one of
ordinary skill in the art would have found it obvious to use the system to pre-
screen and not require a CT scan of each bag. As we do not the package or
suitcase decisions recited in claim 38 to require more, we find no error in the
Examiner’s rejection.
With respect to joining the TNA system of Henderson to the CT
scanner of Henderson, Appellant argues that such a hypothetical system
would not teach or suggest all of the elements of claim 38 (App. Br. 48-52).
Based on the Oreper Declaration, the TNA system would not use x-rays to
clear bags (App. Br. 49-51), and would not comport with the requirements of
claim 38 (App. Br. 51-52). We agree, but we do not find that is what the
Examiner is advocating. The Examiner identifies the use of the TNA and
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CT systems in their respective roles (Ans. 45), and does discuss “join[ing]
either the projection scanner or TNA of Henderson . . . to the CT scanner of
Henderson using a conveyor” (id.). However, we take the Examiner’s
reasoning to be addressing the obviousness of using a conveyor between two
units, and not that the TNA and CT combination would teach or suggest all
of the elements of claim 38.
Lastly, with respect to the joining of the x-ray scanner of Stein to the
CT scanner of Henderson, Appellant argues that one of ordinary skill in the
art would not have constructed such a system and any such system would be
distinguishable from claim 38 (App. Br. 52). Appellant argues that the
system in Henderson already performs pre-screening, so that there would be
no need to provide another “front end” to such a system (App. Br. 53). We
do not agree.
Henderson provides that a projection scan, like those performed by
concourse scanners, is used to locate areas of high density within the bag
(FF 9), which Appellant calls pre-screening. It may not be clear that the
“concourse scanners” are traditional x-ray inspection devices, although we
find that they would have suggested the same to persons of ordinary skill in
the art. Nonetheless, the use of the x-ray inspection devices of Stein, in
place of the concourse scanners of Henderson, would have been obvious and
remove any doubt about the functioning of the combined system. As such,
we do not find the combination as requiring duplication of pre-screening,
and we find no error in the Examiner’s analysis.
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Appellant also argues that the x-ray unit of Stein would have been too
slow to have performed as a pre-screener for the CT scanner disclosed in
Henderson (App. Br. 53). Here, we agree with the Examiner (Ans. 71-72),
as discussed supra, that the x-ray inspection unit provided in the
combination would need to perform the functional limitations of the claims,
but need not do more. Claim 38 does not recite an operational speed and we
find that one of ordinary skill in the art would have been acquainted with the
operational capacities of the technologies in the cited references to make the
combined system function per that claim. Security operations in general can
have several requirements, and an overall throughput clearance rate at a busy
airport may not be specific to all operations. As such, we do not find
Appellant’s arguments to be persuasive.
In addition, Appellant argues that the x-ray inspection unit of Stein is
not capable of indicating a suspect package because the human operator
makes such an indication, and the unit does not perform the same (App. Br.
55). Appellant appears to suggest that the “indicate” function of the X-ray
inspection unit of claim 38 must be accomplished without human
interaction, which we do not find claim 38 to require. This again does not
take into account what Appellant has already acknowledged, that inspection
of baggage using x-rays to present images with indications about those
objects was known in the prior art (FF 2). Taking these known procedures
along with the disclosures of Henderson and Stein, we agree with the
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Examiner that it would have been obvious to utilize an x-ray inspection unit
that indicates the detection of suspect objects.
Appellant also repeats that the system of Henderson and Stein would
require the x-raying and CT scanning of every bag, which does not comport
with the recitations of claim 38 (App. Br. 56). As we have discussed supra,
we do not agree and continue to find that Henderson’s teaching of the use of
a CT system as a secondary inspection device (FF 7) would have motivated
one of ordinary skill in the art to perform CT scanning of bags deemed
necessary. As such, we do not find Appellant’s arguments regarding defects
in the rejection applying Henderson and Stein to be convincing.

(iii) Obviousness under 35 U.S.C. § 103, Steele, Roder, and
Henderson
Claims 46, 51, 64, 67, and 82
With respect to claims 46, 51, 64, 67, and 82, Appellant argues that
the techniques disclosed in Steele, for automatically determining whether a
flaw exists in a manufactured part, would not have been perceived as having
application to the detection of explosives (App. Br. 34-36; Reply Br. 14-15).
The Examiner finds that the X-ray technology disclosed by Steele could be
applied for such purposes (Ans. 75). We agree with the Examiner.
Claims 46, 51, 64, 67, and 82 are all concerned with determining a
physical property or specific material, where that specific material can be an
explosive material. The claims all require a system capable of such
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discrimination and Appellant has not shown that the X-ray technology of
Steele is incapable of such discrimination. Additionally, since the passage
of X-rays varies based on the material upon which they impinge,
differentiating materials should be possible to some degree in the system of
Steele. Appellant also argues that the Examiner has adopted a “new line of
reasoning” requiring comparison with known shapes, which would not allow
for material determinations (Reply Br. 14). However, as discussed supra,
we do not find the Examiner has adopted a new line of reasoning and
continue to find that the X-ray technology of Steele is capable of material
discernment required by the claims.
Appellant also argues that it is not clear what reference the Examiner
is finding the functionalities recited in the claims (App. Br. 37), and that the
rejection is internally inconsistent (App. Br. 34, 36). With respect to the
former, Appellant argues that only Steele provides for a highlighted image,
and that image is only of a flaw in a manufactured part, such that one of
ordinary skill in the art would not have applied the same in a baggage
inspection system for detecting explosives in bags (App. Br. 37). However,
as discussed supra, we find similarities in detecting a flaw and detecting a
suspect item through the use of X-rays. Thus, analogously, highlighting a
flaw in a manufactured part would suggest highlighting of a suspect item
with detected materials in the combined system of Steele, Roder, and
Henderson.
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Appellant also argues that the rejection is internally inconsistent (App.
Br. 34, 36), because the Examiner finds it obvious that Steele’s techniques
could be applied to find explosives in baggage, but that Steele is not relied
upon for operating on baggage (id.). We do not, however, find this to be
inconsistent because Roder discloses the detection of explosives in suitcases
or packages (FF 6), and Steele is applied in combination with Roder. Thus,
the application of Steele’s techniques would have been motivated by Roder
and Steele, by their disclosures, and would have suggested the use in
baggage screening. As such, we find no error in the Examiner’s positions.
Appellant also argues that it is not clear from the rejection why one of
ordinary skill in the art would have included the relied-upon functionalities
of Steele into the combined system (App. Br. 33, 35, 39). As discussed
supra, we find that both Roder and Henderson suggest the detection of items
in baggage and packages and the use of Steele to remove undesirable
backgrounds from images would be identified by one of ordinary skill in the
art as being useful in such a process. While Appellant argues that the
Examiner provided no reasoning as to why that functionality should be
included in the combined system (App. Br. 34), we find the Examiner’s
reasoning to be clear (Ans. 29-30). As such, we do not find that the
Examiner erred in the rejection.
Appellant also argues that the Examiner has ignored the Oreper
Declaration in that the flaw detection process of Steele would not work for
identifying explosives (App. Br. 36, 40). Appellant argues that ¶8 of that
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Declaration speaks directly to whether one of ordinary skill in the art would
have used the flaw analysis techniques to detect explosives in baggage and
should be dispositive (id.). We do not agree. As stated supra, we continue
to find that the Oreper Declaration is not sufficient to overcome the
obviousness rejection of claims 46, 51, 64, 67, and 82, for the same reasons
provided above with respect to the rejection of claim 38.

Claim 83
With respect to claim 83, Appellant argues that the claim requires that
the CT scanner is not employed to scan non-suspect items of baggage, and
that Henderson only provides such functionality is provided through
performance of TNA (App. Br. 40-41). Appellant further argues that the
“Aspects of Explosion Detection” article cited details that the x-ray aspects
in TNA would not provide evidence of whether a bag was suspect or non-
suspect (App. Br. 41). While not disputing either fact, we continue to find,
as discussed supra, that the combination of Steele, Roder, and Henderson
provides for first-stage, x-ray screening, and would have been used in place
of TNA in the system of the combination. As such, we find no error in the
rejection of claim 83.

CONCLUSIONS
We conclude that: (i) the Examiner erred in finding that claims 83, 90,
and 91 fail to comply with the written description requirement of 35 U.S.C.
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§112, first paragraph; (ii) the combinations of Steele, Roder, and Henderson,
and Henderson and Stein renders independent claim 38 obvious over 35
U.S.C. § 103; and (iii) the combination of Steele, Roder, and Henderson
render claims 46, 51, 64, 67, 82 and 83 obvious under 35 U.S.C. § 103.

DECISION
We affirm the Examiner’s decision to reject claims 38-43, 45, 46,
51/38, 52/51/38, 53/51/38, 55/38, 61-68, 73-89, 93, and 94, and we reverse
the Examiner’s decision to reject claims 90 and 91.

AFFIRMED-IN PART

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rvb

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