Ex Parte Akers

Board of Patent Appeals and Interferences

Mar 15, 2010

10383096 (B.P.A.I. Mar. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DOUGLAS W. AKERS
____________

Appeal 2009-005691
Application 10/383,096
Technology Center 3600
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Decided: March 15, 2010
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Before: WILLIAM F. PATE, III, JENNIFER D. BAHR, and STEFAN
STAICOVICI, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Douglas W. Akers (Appellant) appeals under 35 U.S.C. § 134 (2002)
from the Examiner’s decision rejecting claims 1-10. The Examiner has
withdrawn claims 11-27 from consideration. No other claims are pending in
the application. We have jurisdiction over this appeal under 35 U.S.C. § 6
(2002).

The Invention
Appellant’s claimed invention is directed to a method for performing
non-destructive testing of materials using positron annihilation. Spec. 2,
para. 3.
Independent claim 1, reproduced below, is illustrative of the claimed
subject matter.
1. A method for evaluating a material specimen,
comprising: bombarding the material specimen
with neutrons to create prompt gamma rays within
the material specimen, some of the prompt gamma
rays being emitted from the material specimen,
some of the prompt gamma rays resulting in the
formation of positrons within the material
specimen by pair production; detecting at least one
emitted prompt gamma ray; detecting at least one
emitted annihilation gamma ray resulting from the
annihilation of a positron; and calculating positron
lifetime data based on the detected emitted prompt
gamma ray and the detected emitted annihilation
gamma ray.
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The Rejections
Appellant seeks review of the Examiner’s rejections of:
(1) claims 1-10 under 35 U.S.C. § 112, second paragraph, as being
indefinite;
(2) claims 1-10 under 35 U.S.C. § 112, first paragraph, as containing
subject matter which was not described in the Specification so as
to enable one skilled in the art to make and/or use the invention;
and
(3) claim 3 under the judicially created doctrine of double patenting
as not being patentable over claim 2 of Application 10/788,743.1

SUMMARY OF DECISION
We AFFIRM.

ISSUES
1.1 Does the recitation of a step of calculating positron lifetime data
in claim 1 and a step of processing the detected emitted
annihilation gamma rays with a Doppler-broadening algorithm in
claim 3, without limitations as to which of the plurality of known
positron lifetime and Doppler-broadening algorithms is to be
selected and the constants and parameters to be used in fitting
those algorithms, render claims 1-10 vague, indefinite, and
incomplete, as asserted by the Examiner? See Ans. 9-10; App. Br.
25-27.

1 This rejection is no longer a provisional rejection because Application
10/788,743 has matured into US Patent 7,630,469 B2.
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1.2 Does the breadth of the steps of detecting “at least one” emitted
prompt gamma ray and “at least one” emitted annihilation gamma
ray in claim 1 render claims 1-10 indefinite. See Ans. 10; App.
Br. 27-28.
2 Do claims 1-10 contain subject matter which was not described in
the Specification so as to enable one skilled in the art to make
and/or use the invention? See Ans. 3-9; App. Br. 13-23.
3 Does claim 3 stand properly rejected under the judicially created
doctrine of double patenting? See Ans. 10-11 and 25; App. Br.
28-29.

DISCUSSION
Issue 1.1
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). “The primary purpose of the definiteness requirement is to ensure
that the claims are written in such a way that they give notice to the public of
the extent of the legal protection afforded by the patent, so that interested
members of the public, e.g., competitors of the patent owner, can determine
whether or not they infringe.” All Dental Prodx, LLC v. Advantage Dental
Products, Inc., 309 F.3d 774, 779-80 (Fed. Cir. 2002).
The Examiner has not alleged, much less shown, that a person of
ordinary skill in the art would not have understood what is meant by
“calculating positron lifetime data” and “Doppler-broadening algorithm.”
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Indeed, the many articles cited on page 3 and discussed on pages 5-8 of the
Answer, and the Grosskreutz2 and Zerda3 patents discussed by Appellant on
page 15 of the Appeal Brief, establish that these data processing techniques
were quite familiar to those of ordinary skill in the field of non-destructive
material evaluation. The fact that the claims refer to calculating positron
lifetime data and a Doppler-broadening algorithm broadly, rather than
limiting the method to the use of a particular one of the plurality of known
positron lifetime algorithms and a particular one of the plurality of known
Doppler-broadening algorithms, with specified constants and other
parameters, is a matter of breadth, not indefiniteness. Merely that a claim is
broad does not mean that it is indefinite. See In re Johnson, 558 F.2d 1008,
1016 n.17 (CCPA 1977); In re Miller, 441 F.2d 689, 693 (CCPA 1971); In
re Gardner, 427 F.2d 786, 788 (CCPA 1970).
The basis of the Examiner’s indefiniteness rejection appears to be that
the details of the positron lifetime and Doppler-broadening algorithms are
not sufficiently described in Appellant’s Specification so as to enable one of
ordinary skill in the art to make and/or use the claimed invention without
undue experimentation, rather than that a person of ordinary skill would not
understand what is claimed, that is, the metes and bounds of the claimed
subject matter. The rejection cannot be sustained on this basis, as the
enablement requirement is separate and distinct from the definiteness
requirement of 35 U.S.C. § 112.

2 US Patent 3,593,025, issued Jul. 13, 1971.
3 US Patent 4,897,549, issued Jan. 30, 1990.
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Issue 1.2
Independent claim 1, from which claims 2-10 depend, is directed to a
method for evaluating a material specimen by detecting “at least one
emitted prompt gamma ray” and “at least one emitted annihilation gamma
ray” (emphasis added) and calculating positron lifetime data based on the
detected emitted prompt gamma ray and detected emitted annihilation
gamma ray. Thus, claim 1 includes within its scope a method of evaluating
a material specimen on the basis of one detected emitted prompt gamma ray
and one detected emitted annihilation gamma ray. This is a matter of
breadth, not indefiniteness. While the breadth of claims 1-10 might be such
that the full scope of the claimed invention is not enabled (see Ans. 10), this
does not render the claims indefinite. Accordingly, the rejection cannot be
sustained on this basis.
Issue 2
The Examiner has articulated several bases for concluding that the
subject matter of claims 1-10 is not described in Appellant’s Specification so
as to enable a person of ordinary skill in the art to make and/or use the
invention as required by the first paragraph of 35 U.S.C. § 112. See Ans. 3-
9. One of these bases is that Appellant’s Specification does not provide
enablement for the full scope of the claims. See Ans. 9. The Examiner
contends that the Specification, while perhaps being enabling for detection
and analysis of data based on a plurality of emitted prompt gamma rays and
a plurality of emitted annihilation gamma rays, does not disclose the
invention so as to enable a person of ordinary skill in the art to practice the
invention by detecting only one emitted prompt gamma ray and one emitted
annihilation gamma ray. Id.
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Appellant does not dispute the Examiner’s conclusion that Appellant’s
disclosure does not enable one of ordinary skill in the art to practice the
invention by detecting only one emitted prompt gamma ray and one emitted
annihilation gamma ray. See App. Br. 21-23. In fact, Appellant concedes
that “persons having ordinary skill in the art will recognize that a plurality of
gamma rays will need to be detected in order to collect meaningful data.”
App. Br. 21-22. Appellant asserts that because the claim language “at least
one” encompasses detection of a plurality of prompt gamma rays and
annihilation gamma rays, the Examiner must demonstrate that all other
possible detection alternatives, including those involving a plurality of
prompt gamma rays and annihilation gamma rays, are inoperative or not
enabled. App. Br. 22.
The enablement provision of 35 U.S.C. § 112, first paragraph,
requires the specification of a patent application to describe the invention,
and the manner and process of making and using it, “in such full, clear,
concise, and exact terms as to enable any person skilled in the art to which it
pertains, or with which it is most nearly connected, to make and use the
same.” “The enablement requirement ensures that the public knowledge is
enriched by the patent specification to a degree at least commensurate with
the scope of the claims.” Nat’l Recovery Techs., Inc. v. Magnetic Separation
Sys., Inc., 166 F.3d 1190, 1195-96 (Fed. Cir. 1999). Accordingly, the
specification must provide sufficient teaching such that one skilled in the art
could make and use the full scope of the invention without undue
experimentation. CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1338
(Fed. Cir. 2003).
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The full scope of the claimed invention must be
enabled. The rationale for this statutory
requirement is straightforward. Enabling the full
scope of each claim is “part of the quid pro quo of
the patent bargain.” A patentee who chooses
broad claim language must make sure the broad
claims are fully enabled. “The scope of the claims
must be less than or equal to the scope of the
enablement” to “ensure[] that the public
knowledge is enriched by the patent specification
to a degree at least commensurate with the scope
of the claims.”
Sitrick v. Dreamworks, LLC, 516 F.3d 993, 999 (Fed. Cir. 2008) (citations
omitted).
Appellant is correct that an application for patent need not necessarily
provide an enabling disclosure of every embodiment of the claimed
invention. See CFMT, 349 F.3d at 1339 (“where a patent discloses several
alternative combinations of methods (as most systems claims will), the party
asserting inoperability must show that all disclosed alternatives are
inoperative or not enabled”). In this case, however, Appellant has not
provided any enabling disclosure of any embodiment of a method for
evaluating a material specimen by calculating positron lifetime data based
on only one detected emitted prompt gamma ray and one detected emitted
annihilation gamma ray, which is explicitly included within the scope of
claim 1, as well as claims 2-10. In fact, as noted above, Appellant has
conceded that persons of ordinary skill in the art will recognize that a
plurality of gamma rays will need to be detected in order to practice
Appellant’s invention. As such, Appellant has conceded that the disclosure
of the present application does not provide an enabling description for the
full scope of Appellant’s claims. Appellant, having chosen the broad claim
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language, must make sure that the broad claims are fully enabled. In this
case, as conceded by Appellant, the scope of the claims, by encompassing a
method wherein one emitted prompt gamma ray and one emitted
annihilation gamma ray are detected, is not less than or equal to the scope of
the enablement, as required by the first paragraph of 35 U.S.C. § 112.
We sustain the rejection of claims 1-10 under the first paragraph of 35
U.S.C. § 112, first paragraph, as containing subject matter which was not
described in the Specification so as to enable one skilled in the art to make
and/or use the invention.
Issue 3
Appellant does not point out any error in the rejection of claim 3
under the judicially created doctrine of double patenting, and, in particular,
does not assert any reason why the subject matter of claim 3 in the present
application is patentably distinct from that of claim 2 in US Patent 7,630,469
B2. In fact, Appellant states that assuming a “standard” double patenting
rejection, and not a double patenting rejection based on the facts of In re
Schneller, was intended, “Appellant does not traverse [the rejection] and
agrees to file a terminal disclaimer in the appropriate application at the
appropriate time.” App. Br. 28-29. As pointed out by the Examiner (Ans.
25), the Examiner has not relied upon the facts or holding in In re Schneller
in making the rejection. See Ans. 11.
For the above reasons, Appellant has not persuaded us that the
Examiner improperly rejected claim 3 under the judicially created doctrine
of double patenting.

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CONCLUSIONS
1.1 The recitation of a step of calculating positron lifetime data in
claim 1 and a step of processing the detected emitted annihilation
gamma rays with a Doppler-broadening algorithm in claim 3,
without limitations as to which of the plurality of known positron
lifetime and Doppler-broadening algorithms is to be selected and
the constants and parameters to be used in fitting those algorithms,
does not render claims 1-10 vague, indefinite, and incomplete, as
asserted by the Examiner.
1.2 The breadth of the steps of detecting “at least one” emitted prompt
gamma ray and “at least one” annihilation gamma ray in claim 1
does not render claims 1-10 indefinite.
2 The record before us establishes that claims 1-10 contain subject
matter which was not described in the Specification so as to
enable one skilled in the art to make and/or use the invention.
3 Claim 3 stands properly rejected under the judicially created
doctrine of double patenting.

DECISION
The Examiner’s decision is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).
AFFIRMED

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Alan D. Kirsch
BBWI
PO BOX 1625
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