Ex Parte Akers

Board of Patent Appeals and Interferences

May 31, 2005

10269807 (B.P.A.I. May. 31, 2005)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DOUGLAS W. AKERS
____________
Appeal No. 2005-0855
Application No. 10/269,807
____________
HEARD: May 18, 2005
____________
Before PATE, MCQUADE, and BAHR, Administrative Patent Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Douglas W. Akers originally took this appeal from the final
rejection (mailed June 16, 2003) of claims 1 and 8 through 39,
all of the claims pending in the application. After the
appellant’s main and reply briefs (filed October 3, 2003 and
January 13, 2004) and an examiner’s answer (mailed December 1,
2003) had been made of record, the examiner issued an Office
action (mailed February 25, 2004) reopening prosecution and
entering superseding rejections of all of the claims. Pursuant
to 37 CFR § 1.193(b)(2)(ii), the appellant then submitted a
request that the appeal be reinstated (filed April, 14, 2004) and
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Application No. 10/269,807
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a supplemental brief (filed August 2, 2004). The examiner,
implicitly granting the request, entered a second answer (mailed
September 14, 2004) and forwarded the application to this Board
for review of the new rejections of claims 1 and 8 through 39.
THE INVENTION
The invention relates to “methods . . . for performing non-
destructive testing of materials using positron annihilation”
(specification, page 1). Representative claim 1 reads as
follows:
1. A method, comprising:
determining whether a specimen to be tested includes at
least one positron emitter therein that will be activated in
response to photon bombardment;
selecting a positron emitter to be activated;
determining a threshold photon energy required to activate
the selected positron emitter;
determining a half-life of the selected positron emitter;
and
when the half-life of the selected positron emitter is less
than a selected half-life, then performing a rapid
activation/analysis process, said rapid activation/analysis
process comprising:
activating for an activation time the selected positron
emitter by bombarding the specimen with photons having energies
at least as great as the threshold photon energy;
detecting for a detection time gamma rays produced by
annihilation of positrons with electrons in the specimen; and
repeating said steps of activating for an activation time
and detecting for a detection time until detecting a sufficient
number of gamma rays to determine at least one material
characteristic of said specimen;
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1 In the Office action which reopened prosecution, claims 1
and 8 through 10 additionally stood rejected under 35 U.S.C.
§ 112, first paragraph, as being based on a specification which
fails to comply with the written description requirement. Upon
reconsideration, the examiner has withdrawn this rejection (see
page 2 in the second answer). Presumably, the examiner also has
withdrawn any reasoning relating to the two remaining rejections
(continued...)
when the half-life of the selected positron emitter is
greater than or equal to the selected half-life, then performing
a normal activation/analysis process, said normal
activation/analysis process comprising:
activating the selected positron emitter by bombarding the
specimen with photons having energies at least as great as the
threshold photon energy; and
detecting gamma rays produced by annihilation of positrons
with electrons in the specimen.
THE REJECTIONS
Claims 1 and 8 through 39 stand rejected under 35 U.S.C.
§ 112, first paragraph, as being based on a specification which
fails to comply with the enablement requirement.
Claims 1 and 8 through 39 also stand rejected under 35
U.S.C. § 112, second paragraph, as failing to particularly point
out and distinctly claim the subject matter the appellant regards
as the invention.
Attention is directed to the main, reply and supplemental
briefs and the second answer for the respective positions of the
appellant and the examiner regarding the merits of these
rejections.1
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1(...continued)
which was set forth in the Office action but not restated in the
second answer (see Ex parte Emm, 118 USPQ 180, 181 (Bd. App.
1957)).
DISCUSSION
I. Preliminary matter
In the supplemental brief (see pages 3, 4 and 17) and second
answer (see pages 11 and 12), the appellant and the examiner
debate the propriety of the Office action which reopened
prosecution subsequent to appeal. As this matter is not directly
connected with the merits of any issue involving a rejection of
claims, it is reviewable by petition to the Director rather than
by appeal to this Board (see In re Hengehold, 440 F.2d 1395,
1403-04, 169 USPQ 473, 479 (CCPA 1971), and hence will not be
further addressed in this decision.
II. The 35 U.S.C. § 112, first paragraph, rejection
The dispositive issue with respect to the enablement
requirement of 35 U.S.C. § 112, first paragraph, is whether the
appellant's disclosure, considering the level of ordinary skill
in the art as of the date of the application, would have enabled
a person of such skill to make and use the claimed invention
without undue experimentation. In re Strahilevitz, 668 F.2d
1229, 1232, 212 USPQ 561, 563-64 (CCPA 1982). In calling into
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question the enablement of the disclosure, the examiner has the
initial burden of advancing acceptable reasoning inconsistent
with enablement. Id.
The examiner considers the appellant’s disclosure to be non-
enabling in four respects:
. . . There is neither an adequate description nor
enabling disclosure as to what is encompassed by the
term, “activating a positron emitter”. A “positron
emitter” is inherently already activated, i.e., it is
radioactive.
At best, the use of the term “activating a
positron emitter” is superfluous.
At worst, the term would imply that a positron
emitter is either being transformed to another positron
emitter or its energy level is further raised by the
energy of the activating photon. There is no support
in the specification for either one of these two
alternatives [second answer, page 3];
There is neither an adequate description nor
enabling disclosure as to how and in what manner
potential interferences in the data are accounted for
in the analysis. For example, Claim 1 recites the step
of bombarding the specimen with photons at least as
great as the threshold photon energy required to
activate the selected positron emitter and detecting
gamma rays produced by annihilation of positrons with
elections in the specimen.
. . . [T]here is no support as to how one would
differentiate between the signals from the selected
positron emitter and from the non-selected ones [second
answer, pages 6 and 7];
There is neither an adequate description nor
enabling disclosure as to how and in what manner one
should select an algorithm from a plurality of
available algorithms, modify/manipulate the selected
algorithm and evaluate the constants in the selected
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algorithm to fit Appellant’s situation. Appellant
himself admits in the specification that there is not
only one known algorithm but rather a plurality of
known positron lifetime algorithms (e.g. see paragraph
0058), Doppler broadening algorithms (paragraph 0057)
and three-dimensional imaging algorithms (e.g., see
paragraph 0060).
. . . There is no support as to how and in what
manner one selects the specific algorithm to use for
the two activation/analysis processes, to evaluate
requisite constants and to modify the selected
algorithm to Appellant’s situation [second answer, page
7];
and
There is neither an adequate description nor
enabling disclosure as to how and in what manner one
can determine when the half-life of the selected
positron emitter is less than a selected half-life
(sic), where the composition of the specimen is unknown
and it is this composition that is desired to be
determined. The same lack of support exists for the
determination of when the half-life of the selected
positron emitter is more than a selected half-life
(sic) [second answer, page 8].
A fair assessment of the appellant’s disclosure shows that
the references therein to “activating” a positron emitter through
photon bombardment of the specimen would be understood by the
artisan as synonymous with “producing” or “forming” the positron
emitter from a stable precursor. For example, the specification
states that “photons 16 from the photon source 12 produce such
neutron-deficient isotopes . . . referred to herein in the
alternative as ‘positron emitters’” (page 7, emphasis added), and
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that “one way for generating positrons is through the formation
within the specimen 18 of neutron-deficient isotopes, i.e.,
positron emitters” (page 20, emphasis added). In the same vein,
the specification describes Tables I and II (on pages 21 and 22)
as identifying “those isotopes that may be converted into
positron emitters by photon bombardment” (page 20, emphasis
added). Thus, even if the appellant’s description of
“activating” a positron emitter is somewhat inaccurate as urged
by the examiner, it is so only in the most hyper-technical sense.
Read in context, the appellant’s terminology would not pose any
enablement problem from the perspective of a person having
ordinary skill in the art.
The examiner’s concerns as to possible interference between
respective signals produced by the selected positron emitter and
non-selected positron emitters and as to the half-life of the
selected positron emitter also are unfounded, primarily because
they are not commensurate with the scope of the invention
disclosed and claimed by the appellant. In this regard, the
claims do not exclude the activation of multiple positron
emitters, and indeed the appellant’s specification (see pages 8,
13 and 14) actually allows for such activation. The claims also
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do not require the composition of the specimen to be unknown, and
are not directed to a method for determining the composition of
the specimen.
Finally, while the appellant’s disclosure does not convey
much detail as to the various algorithms described therein, these
algorithms admittedly are generally known in the art. The
examiner has failed to advance any cogent reasoning as to why the
disclosure would not have enabled a person having ordinary skill
in the art to employ these algorithms, without undue
experimentation, to the extent required by the appealed claims.
Hence, the examiner’s position that the appellant’s
disclosure, considering the level of ordinary skill in the art as
of the date of the application, would not have enabled a person
of such skill to make and use the claimed invention without undue
experimentation is not well taken. Therefore, we shall not
sustain the standing 35 U.S.C. § 112, first paragraph, rejection
of 1 and 8 through 39.
III. The 35 U.S.C. § 112, second paragraph, rejection
The second paragraph of 35 U.S.C. § 112 requires claims to
set out and circumscribe a particular area with a reasonable
degree of precision and particularity. In re Johnson, 558 F.2d
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1008, 1015, 194 USPQ 187, 193 (CCPA 1977). In determining
whether this standard is met, the definiteness of the language
employed in the claims must be analyzed, not in a vacuum, but
always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted by
one possessing the ordinary level of skill in the pertinent art.
Id.
The examiner views the appealed claims to be indefinite for
reasons essentially similar to those listed above in connection
with the enablement rejection. In this regard, the examiner
points to the claim limitations relating to (1) the activation of
a positron emitter, (2) the positron lifetime, Doppler
broadening, three-dimensional imaging and activation/analysis
process algorithms and (3) the determination of the half-life of
the selected positron emitter (see pages 9 through 11 in the
second answer). For the reasons explained previously, the
limitations pertaining to the activation of a positron emitter
would have been readily understood by the artisan when read in
light of the underlying specification. Furthermore, the
examiner’s criticisms of the claim limitations pertaining to the
algorithms and the half-life of the selected positron emitter
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focus on the breadth of these limitations. It is well settled,
however, that mere breadth does not equate to indefiniteness.
In re Miller, 441 F.2d 689, 169 USPQ 597, 600 (CCPA 1971).
Accordingly, the examiner’s contention that the appealed claims
are indefinite is unpersuasive.
Thus, we shall not sustain the standing 35 U.S.C. § 112,
second paragraph, rejection of claims 1 and 8 through 39.
SUMMARY
The decision of the examiner to reject claims 1 and 8
through 39 is reversed.
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Application No. 10/269,807
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REVERSED
WILLIAM F. PATE, III )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. MCQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
JPM/kis
Appeal No. 2005-0855
Application No. 10/269,807
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