Ex Parte Akers

Board of Patent Appeals and Interferences

May 25, 2011

11626473 - (D) (B.P.A.I. May. 25, 2011)

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.
11/626,473 01/24/2007 Douglas W. Akers B-390D1 1284
4347 7590 05/25/2011
BATTELLE ENERGY ALLIANCE, LLC
P.O. BOX 1625
IDAHO FALLS, ID 83415-3899
EXAMINER
PALABRICA, RICARDO J
ART UNIT PAPER NUMBER
3663
MAIL DATE DELIVERY MODE
05/25/2011 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 DOUGLAS W. AKERS
____________________

Appeal 2009-011915
Application 11/626,473
Technology Center 3600
____________________

Before: WILLIAM F. PATE III, JENNIFER D. BAHR, and
STEFAN STAICOVICI, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-011915
Application 11/626,473
2
STATEMENT OF CASE
Douglas W. Akers (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s rejection of claims 1, 5, 6, 7, and 21 under 35 U.S.C. § 112,
second paragraph, as being indefinite; and rejections under 35 U.S.C.
§ 103(a) of claims 1, 6, 7, and 21 as being unpatentable over Blatchley1,
Nuclides and Isotopes2, Lidsky3, and either Alvarez ’714 or IAEA
Photonuclear Library5; of claim 3 as being unpatentable over Blatchley,
Nuclides and Isotopes, Lidsky, either Alvarez ’71 or IAEA Photonuclear
Library, and Akers6; of claim 4 as being unpatentable over any of Blatchley,
Zerda7, Alex8, Grosskreutz9, or Smith10 in view of Nuclides and Isotopes,
Lidsky, any of Alvarez ’71, Alvarez ‘7911, and IAEA Photonuclear Library,
and further in view of Huang12; and of claim 5 as being unpatentable over
Blatchley, Nuclides and Isotopes, Lidsky, Alvarez ’71 or IAEA
Photonuclear Library, and Huang. The Examiner has withdrawn the
rejection under 35 U.S.C. § 112, first paragraph. See Ans. 13. We have
jurisdiction under 35 U.S.C. § 6(b).

1 US 4,835,390, iss. May 30, 1989.
2 F. William Walker et al., Nuclides and Isotopes, 4, 5, 20, 23, 25 (14th ed.
1989).
3 US 6,208,704 B1, iss. Mar. 27, 2001.
4 R.A. Alvarez et al., Photoneutron Cross Sections for 23Na and 25Mg, 4 Phy.
Rev. C, 1673-79 (Nov. 1971).
5 IAEA Photonuclear Data Library at 104, 147, 153 (http://www-
nds.iaea.org/photonuclear/)(last visited Aug. 27, 2007).
6 US 7,231,011 B2, iss. Jun. 12, 2007.
7 US 4,897,549, iss. Jan. 30, 1990.
8 US 4,064,438, iss. Dec. 20, 1977.
9 US 3,593,025, iss. Jul. 13, 1971.
10 US 7,041,508 B2, iss. May 9, 2006.
11 R.A. Alvarez et al., Photoneutron Cross Sections for 55Mn and 59Co, 20
Phy. Rev. C, 128-138 (Jul. 1979).
12 US 5,530,245, iss. Jun. 25. 1996.
Appeal 2009-011915
Application 11/626,473
3
We AFFIRM-IN-PART.

The claims are directed to a non-destructive testing apparatus. Claim
1, reproduced below, is illustrative of the claimed subject matter:
1. Non-destructive testing apparatus, comprising:
a photon source;
a source material, configured to emit positrons in
response to bombardment of said source material with photons
from said photon source, said source material being
positionable adjacent a specimen, so that the specimen is
exposed to at least some of the positrons emitted by said source
material, the specimen emitting annihilation gamma rays in
response to exposure to the at least some of the positrons
emitted by said source material, said source material
comprising material in a solid state and being conformable so
that at least a portion of said source material may be conformed
to at least a portion of the specimen; and
a detector system, configured to detect annihilation
gamma rays emitted by the specimen and being positionable
adjacent the specimen.

OPINION
The Indefiniteness Rejection
The basis of the Examiner’s rejection is that the metes and bounds of
“at least a portion” cannot be determined, because this terminology “can be
interpreted in a plurality of ways, e.g., a point, a line, etc.” Ans. 3. We
agree with the Examiner that the terminology “at least a portion” is very
broad. Nevertheless, as correctly pointed out by Appellant on page 16 of the
Appeal Brief, merely that a claim is broad does not mean that it is
necessarily indefinite. See In re Johnson, 558 F.2d 1008, 1016 n.17 (CCPA
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1977); In re Miller, 441 F.2d 689, 693 (CCPA 1971); In re Gardner, 427
F.2d 786, 788 (CCPA 1970). We do not sustain the Examiner’s rejection.
The Rejections of Claims 1, 5, 6, 7, and 21
Claim 1 requires that the source material comprise material that is in a
solid state and “conformable so that at least a portion of said source material
may be conformed to at least a portion of the specimen.” Claim 21 requires
that the source material means comprise matter “in a solid state for
conforming at least a portion of said source material means to at least a
portion of the specimen.”
The Examiner construes the “conformable” and “for conforming”
limitations of claims 1 and 21 as requiring no more than point contact
between the source material and the specimen. See Ans. 6.
Even taking into account that the claims require conformability of
only “at least a portion of said source material” to “at least a portion of the
specimen,” the Examiner’s construction is unreasonably broad, especially in
light of Appellant’s Specification. In paragraph 24, Appellant’s
Specification equates the term “conformable” to a capability to be “readily
conformed or ‘molded’ to the specimen being tested.” In paragraph 33, the
Specification describes comprising the source material of a flexible material
so that it may be “conformed or shaped to the particular specimen.”
Additionally, in paragraph 47, the Specification refers to “conform[ing] or
mold[ing]” the source material to the specimen. Thus, consistent with
Appellant’s Specification, we construe claims 1 and 21 as requiring that the
source material be in a solid state in which it has the capability to be molded
so that at least a portion thereof takes on the same or similar shape as the
specimen being tested. Inasmuch as a single point has no shape, single point
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contact of the source material to the specimen is insufficient to constitute
conformance or molding of the source material to the specimen.
Alternatively, the Examiner points out that Blatchley describes an
embodiment in which the positron source 3 is “embedded directly in the
vessel wall.” Ans. 6; Blatchley, col. 4, ll. 36-37. The Examiner found that
when Blatchley’s positron source 3 is embedded in “the wall of the
specimen, a point, part of a line or part of an area of this source inherently
assumes the shape or contour of the specimen.” Ans. 14. This position is
untenable for several reasons. First, as pointed out by Appellant on page 5
of the Reply Brief, Blatchley’s vessel wall is not the specimen. Rather, the
fluid flowing through the vessel is the specimen. See Blatchley, col. 3, ll. 1-
3 (noting that the detector uses the radiation to monitor fluid flow).
Additionally, as discussed above, single point contact of the source material
to the specimen is insufficient to constitute conformance or molding of the
source material to the specimen. Finally, Blatchley specifically teaches that,
in the embedded embodiment, the positron source must be sealed, to protect
it from the fluid stream (the specimen). Blatchley, col. 4, ll. 38-41. This
description does not provide any reasonable basis to support a finding that
the embedded source material, or any portion thereof, necessarily, or
inherently, would be conformable, i.e., capable of taking on the shape of, the
specimen, or any portion thereof. Indeed, in Blatchley’s testing apparatus,
such conformability of the embedded source material would not be required,
as the fluid will take on the shape of the vessel in which it is contained.
For the above reasons, we reverse the Examiner’s rejection of claims
1 and 21 and of claims 6 and 7, which depend from claim 1.
In rejecting claim 5, the Examiner does not rely on Huang for any
teaching that would overcome the deficiency in the rejection of claim 1,
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from which claim 5 depends, or articulate any reason as to why it might have
been obvious to further modify Blatchley so as to make up for this
deficiency. Thus, we also reverse the rejection of claim 5.
The Rejection of claim 3
Appellant argues that the Examiner has failed to conduct an “‘explicit
analysis’” to support the conclusion that it would have been obvious to use a
copper material as the source (positron-emitting) material of Blatchley.
App. Br. 25. We do not agree.
The Examiner made specific findings and articulated reasoning as to
why it would have been obvious to produce the positron emitter of Blatchley
by bombarding a target material with photons. See Ans. 5-6, and 7.
Appellant has not specifically challenged the Examiner’s findings,
reasoning, or conclusion. The Examiner further found that Akers teaches
Cu-62 is a suitable positron source for non-destructive testing. Ans. 9.
Additionally, the Examiner found that that Cu-63 is a target material for
producing Cu-62 by photon irradiation, and that IAEA Photonuclear Library
teaches that Cu-63 has a comparable photonuclear cross section to Na-23 (a
target material for producing Na-22 by photon irradiation). Id. Appellant
has not contested these findings.
In light of the above, the Examiner’s conclusion, articulated on page
10 of the Answer, that it would have been obvious to use copper (Cu-63) as
the source material to be bombarded with photons, with Cu-62 as the
positron emitter, in place of the illustrative positron emitting element Na-22
disclosed by Blatchley in column 4, lines 46-48, has rational underpinnings.
This modification would merely involve the substitution of one known
positron emitter (Cu-62) for another known positron emitter (Na-22) using a
source material having a comparable photonuclear cross section to the
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source material for producing Na-22. “[W]hen a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416
(2007).
Appellant argues that the Examiner has not properly considered the
claim as a whole, but, rather has embarked on an “element-by-element”
analysis. App. Br. 25. This boilerplate argument is unconvincing, as it fails
to specifically point out error in the Examiner’s detailed findings, reasoning,
and conclusions articulated on pages 4-6, 7, 9, and 10 of the Answer.
We sustain the rejection of claim 3.
The Rejection of Claim 4
Claim 4 calls for the source material to have “a thickness in a range of
about 0.025 mm to about 1 mm.”
The Examiner found that Blatchley, Zerda, Alex, and Grosskreutz fail
to disclose the thickness of the source material 3. Ans. 10.
The following quotation from In re Woodruff, 919 F.2d 1575, 1578
(Fed. Cir. 1990), is applicable here:
The law is replete with cases in which the difference between
the claimed invention and the prior art is some range or other
variable within the claims. [Citations omitted.] These cases
have consistently held that in such a situation, the applicant
must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results
relative to the prior art range.
Moreover, as pointed out in In re Huang, 100 F.3d 135, 139 (Fed. Cir.
1996),
even though applicant's modification results in great
improvement and utility over the prior art, it may still not be
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patentable if the modification was within the capabilities of one
skilled in the art, unless the claimed ranges “produce a new and
unexpected result which is different in kind and not merely in
degree from the results of the prior art.” [Citation omitted.]
As noted by the Examiner on page 12 of the Answer, Appellant
discloses in paragraph 33 of the Specification that the thickness of the sheet
or foil source material “is not particularly critical, and may comprise any of
a range of thicknesses.” See Ans. 12.
The Examiner additionally found that Huang teaches that source
volume (surface area and thickness) determines or relates to the strength
(i.e., activity) of the source. Id. Stated differently, the Examiner found that
thickness is a result effective variable.
The Examiner reasoned that, given the lack of a showing of any
criticality to the thickness of the source material, the dimensions of the
source material, including its thickness, are a matter of design choice
determined by design constraints such as the size and type of specimen to be
tested and the specimen characteristics to be evaluated. Ans. 12, 13. Based
on our findings above, we find no error in the Examiner’s conclusion that
the claimed source material thickness does not patentably distinguish over
the applied prior art. As we found above, Appellant has not shown that the
claimed thickness is critical, or achieves any unexpected result. Further, the
sizing of the source material would appear to be well within the technical
grasp of a person of ordinary skill in the art, taking into account overall scale
of the testing apparatus, type and size of specimen to be tested, and
characteristics to be tested, as pointed out by the Examiner. As a general
rule, the discovery of an optimum value of a result effective variable is
ordinarily within the skill of the art, and thus usually obvious. Pfizer, Inc. v.

Appeal 2009-011915
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Apotex, Inc., 480 F.3d 1348, 1368 (Fed. Cir. 2007) (citing In re Boesch, 617
F.2d 272, 276 (CCPA 1980) and In re Aller, 220 F.2d 454, 456 (CCPA
1955)).
We sustain the Examiner’s rejection of claim 4.

DECISION
For the above reasons, the Examiner’s decision is affirmed as to
claims 3 and 4 and reversed as to claims 1, 5, 6, 7, and 21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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