11906172 (P.T.A.B. Apr. 10, 2014)

Ex Parte Boyden et al

Patent Trial and Appeal BoardApr 10, 2014

11906172 (P.T.A.B. Apr. 10, 2014)

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. 11/906,172 09/28/2007 Edward S. Boyden 0606-002-029-000000 4454 44765 7590 04/11/2014 THE INVENTION SCIENCE FUND CLARENCE T. TEGREENE 11235 SE 6TH STREET SUITE 200 BELLEVUE, WA 98004 EXAMINER HO, ALLEN C ART UNIT PAPER NUMBER 2882 MAIL DATE DELIVERY MODE 04/11/2014 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 PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte EDWARD S. BOYDEN, RODERICK A. HYDE, MURIEL Y. ISHIKAWA, EDWARD K.Y. JUNG, ERIC C. LEUTHARDT, ROBERT W. LORD, NATHAN P. MYHRVOLD, DENNIS J. RIVET, MICHAEL A. SMITH, CLARENCE T. TEGREENE, THOMAS A. WEAVER, CHARLES WHITMER, LOWELL L. WOOD JR., and VICTORIA Y.H. WOOD ____________________ Appeal 2013-007519 Application 11/906,172 Technology Center 2800 ____________________ Before RICHARD E. SCHAFER, JOHN G. NEW, and HUNG H. BUI, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON APPEAL Appellants1 seek our review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1-26 and 28-59. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.2 1 The real party of interest is Searete LLC, an affiliate of Intellectual Ventures Management, LLC. Appeal 2013-007519 Application 11/906,172 2 STATEMENT OF THE CASE Appellants’ Invention Appellants’ invention relates to methods and apparatus (e.g., an x-ray fluorescence visualizer, imager, or information provider) for x-ray fluorescence imaging of an individual (e.g. a person or animal) to selectively display first and second differentiable partial element compositions (e.g. amounts of first and selected elements, chemicals, implants, and/or biological materials) within the individual. See Spec. 13, and Abstract. Claims on Appeal Claims 1 and 52 are the independent claims on appeal. Claim 1 is illustrative of Appellants’ invention and is reproduced below with disputed limitations emphasized and some paragraphing added: 1. A method, comprising: selective X-ray fluorescence visualizing, imaging, or information providing of an at least some matter of an at least a portion of an individual that at least partially indicates a first differentiable partial element composition of the at least some matter of the at least the portion of the individual, wherein the selective X-ray fluorescence visualizing, imaging, or information providing selectively displays the first differentiable partial element composition of the at least some matter of the at least the portion of the individual at least partially responsive to a first single input energy event based at least partially on an at least some first input energy being applied to the at least some matter of the at least the portion of 2 Our decision refers to Appellants’ Appeal Brief filed October 29, 2012 (“App. Br.”); Reply Brief filed May 20, 2013 (“Reply Br.”); Examiner’s Answer mailed March 19, 2013 (“Ans.”); Final Office Action mailed December 29, 2011 (“Final Rej.”); and the original Specification filed September 28, 2007 (“Spec.”). Appeal 2013-007519 Application 11/906,172 3 the individual, and the selective X-ray fluorescence visualizing, imaging, or information providing selectively displays a second differentiable partial element composition of the at least some matter of the at least the portion of the individual that is interpretable distinctly from the first differentiable partial element composition. Evidence Considered Wang US 5,044,001 August 27, 1991 McInerney US 5,105,452 April 14, 1992 Hartley US 5,293,415 March 8, 1994 Ninomiya US 5,481,109 January 2, 1996 Onoguchi US 6,052,431 April 18, 2000 Marrs US 6,115,452 September 5, 2000 Kubo US 6,479,227 B1 November 12, 2002 Mueller US 6,697,453 B1 February 24, 2004 Kumakhov US 6,754,304 B1 June 22, 2004 Sato US 6,798,863 B2 September 28, 2004 Grodzins US 6,801,595 B2 October 5, 2004 Foland US 7,809,104 B2 October 5, 2010 Examiner’s Rejections (1) Claims 1-4, 8, 9, 11-22, 25, 26, 28-31, 36-39, 42-44, 49, 50, [52],3 53, and 55-57 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kumakhov and Wang. Ans. 5-12. (2) Claims 5-7 and 32-34 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kumakhov, Wang, and Ninomiya. Ans. 12-13. (3) Claim 10 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Kumakhov, Wang, and Hartley. Ans. 13-14. 3 Independent claim 52 was not identified but was also rejected under 35 U.S.C. § 103(a) as being unpatentable over Kumakhov and Wang. See Ans. 8-10. Appeal 2013-007519 Application 11/906,172 4 (4) Claims 23 and 24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kumakhov, Wang, and McInerney. Ans. 14. (5) Claim 35 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Kumakhov, Wang, and Grodzins. Ans. 15. (6) Claim 40 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Kumakhov, Wang, and Onoguchi. Ans. 15-16. (7) Claim 41 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Kumakhov, Wang, and Marrs. Ans. 16. (8) Claims 45-48 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kumakhov, Wang, and Mueller. Ans. 16-17. (9) Claim 51 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Kumakhov, Wang, and Sato. Ans. 17-18. (10) Claims 54 and 58 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kumakhov, Wang, and Kaiser. Ans. 18-19. (11) Claim 59 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Kumakhov, Wang, and Foland. Ans. 19. Issues on Appeal Based on Appellants’ arguments, the dispositive issue on appeal is whether the Examiner erred in rejecting claims 1-4, 8, 9, 11-22, 25, 26, 28- 31, 36-39, 42-44, 49, 50, [52], 53, and 55-57 under 35 U.S.C. § 103(a) as being unpatentable over Kumakhov and Wang. In particular, the issue turns on: (1) Whether the Examiner has provided an articulate reasoning to combine Kumakhov and Wang. App. Br. 10-11 and 16-17. Appeal 2013-007519 Application 11/906,172 5 (2) Whether the Examiner’s proposed combination of Kumakhov and Wang renders the method of Kumakhov inoperable and therefore unsatisfactory for its intended purpose. Id. at 12-13 and 17-19. (3) Whether the Examiner’s proposed combination of Kumakhov and Wang changes the principle of operation of Kumakhov. Id. at 13-15 and 19-20. ANALYSIS § 103 Rejection of Claims 1-4, 8, 9, 11-22, 25, 26, 28-31, 36-39, 42-44, 49, 50, [52], 53, and 55-57 over Kumakhov and Wang With respect to Appellants’ independent claims 1 and 52, the Examiner finds Kumakhov discloses a method that comprises selective “x- ray fluorescence visualizing, imaging, or information providing . . . indicates a first composition (first density) . . . a second composition (second density).” Ans. 5-6 (citing Kumakhov, col. 7, ll. 40-43; col. 8, ll. 10-58). The Examiner also finds Wang discloses the selective x-ray fluorescence visualizing, imaging, or information providing of a specific element and the selective display of an image specific to the element (i.e., different elements on a specimen). Ans. 6 (citing Wang, col. 7, l. 11 – col. 8, l. 6; and col. 9, l. 61 – col. 10, l. 7). Based on such factual findings, the Examiner concludes that: [i]t would have been obvious . . . to selectively provide x- ray fluorescence visualizing, imaging, or information providing of a first differential partial element composition and a second differential partial element composition of the at least some matter of the at least the portion of the individual and to selectively display the first differentiable partial element composition and the second differential partial element composition of the at least some matter of the at least the Appeal 2013-007519 Application 11/906,172 6 portion of the individual, since a person would be motivated to +identify and/or map various element compositions in the individual. Id. at 7 (emphasis added). Appellants do not dispute the Examiner’s factual findings regarding Kumakhov and Wang. Instead, Appellants dispute the Examiner’s rationale for combining Kumakhov and Wang, i.e., that a person skilled in art would be motivated to identify and/or map various element compositions in the individual. App. Br. 10-11 and 16-17. In particular, Appellants argue that there is no reason to combine Kumakhov and Wang because: (1) the -- Examiner’s proposed combination would “accrue an attribute of Wang,” which states that “[f]lourescent x-rays characteristic of a specific chemical element may be detected and a signal produced which is representative of the concentration of the specific chemical element in the specimen,” and “resulting signals produced are representative of changing concentrations of different elements throughout a region of the specimen” and (2) the Examiner fails to show why accrual of the cited attribute of Wang would motivate a person of skill in the art to make the proposed combination. Id. at 11 (citing Wang, col. 7, 11. 25-28; and col. 8, ll. 4-6). Appellants further contend that the Examiner’s proposed combination of Kumakhov and Wang would render the method of Kumakhov inoperable, and therefore unsatisfactory for its intended purpose, because Kumakhov and Wang describe apparatuses that are mechanically incompatible. Id. at 12-13 and 17-19. According to Appellants, the x-ray optical systems of Kumakhov and Wang are not mechanically compatible because Kumakhov appears to require relative motion between an “object under study” and the Appeal 2013-007519 Application 11/906,172 7 “X-ray optical system,” whereas Wang does not appear to allow such relative motion between the “object under study” and the “X-ray optical system.” Id. at 12, 17 (citing Kumakhov, col. 8, ll. 17-20; and Wang, col. 8, ll. 16-66). Similarly, Appellants also contend that the Examiner’s proposed combination of Kumakhov and Wang would change the principle of operation of Kumakhov. Id. at 13-15 and 19-20. According to Appellants, Kumakhov’s principle of operation is based on Compton scattering, whereas Wang relies on x-ray fluorescence. Id. at 13, 19 (citing Kumakhov, col. 8, ll. 52-58; and Wang, col. 7, ll. 11-31). Appellants argue that x-ray fluorescence and Compton scattering are distinct physical processes and that a proposed modification that relies upon x-ray fluorescence would change the principle of operation of a Compton scattering invention. Id. at 14, 20. We are not persuaded by Appellants’ arguments. First, we recognize that the Examiner must articulate some “reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). However, such a reason to combine teachings from the prior art “may be found in explicit or implicit teachings within the references themselves, from the ordinary knowledge of those skilled in the art, or from the nature of the problem to be solved.” WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). “Under the correct [obviousness] analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). In the instant appeal, the Examiner has provided a rationale supporting the obviousness conclusion, i.e., to Appeal 2013-007519 Application 11/906,172 8 identify and/or map various element compositions in the individual, as suggested by Wang. Ans. 7, 10. Appellants have not demonstrated the Examiner’s rationale is erroneous or why a person of ordinary skill in the art would not have reached the conclusions reached by the Examiner. See DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (“[T]he proper question is whether the ordinary artisan possesses knowledge and skills rendering him capable of combining the prior art references.”). Consequently, we are not persuaded that the Examiner failed to articulate a rationale for combining Kumakhov and Wang. Moreover, as correctly found by the Examiner, Kumakhov discloses an x-ray optical system and a corresponding method to detect Compton radiations and x-ray fluorescence, as shown in FIG. 1, reproduced below. FIG. 1 of Kumakhov shows an x-ray optical system 8. As shown in FIG. 1 of Kumakhov, the x-ray optical system 8 includes an x-ray source 1 and an x-ray detector 6 to detect secondary scattered radiation (coherent and non-coherent Compton radiation, and fluorescent radiation) at a point 4 of focus on an object 5 positioned by means 10. Ans. Appeal 2013-007519 Application 11/906,172 9 20-21 (citing Kumakhov, col. 7, ll. 40-43; col. 8, ll. 10-24, and l. 39 – col. 20, l. 30). As acknowledged by the Examiner, Kumakhov does not describe a specific type of x-ray detector used in the x-ray optical system and how compositions can be identified based on x-ray fluorescence. Id. at 21. Wang is cited for disclosing the use of an energy-sensitive x-ray detector to detect fluorescent x-rays that are characteristics of a specific chemical element. Id. (citing Wang, col. 7, l. 11 – col. 8, l. 13). We find that the combination of Kumakhov and Wang involves nothing more than a simple substitution of well known, interchangeable x-ray detection techniques to yield predictable results. See KSR, 550 U.S. at 417. In particular, the Supreme Court has explained: When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. Id. In the present appeal, the invention of Appellants’ claims 1 and 52 simply seeks to selectively display multiple components, i.e., first and second elements of an object. We find such an improvement involves no more than the predictable use of known elements according to their established functions. Accordingly, we agree with the Examiner that these Appeal 2013-007519 Application 11/906,172 10 teachings, all in the context of Appellants’ invention, are properly combinable. Ans. 21. Second, we do not find any evidence in the record to support Appellants’ contention that the combination of Kumakhov and Wang would render the method of Kumakhov inoperable for its intended purposes, or would change the principle of operation of Kumakhov. As correctly recognized by the Examiner, “it is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. U. S., 702 F.2d 1005, 1013 (Fed. Cir. 1983); In re Andersen, 391 F.2d 953, 958 (CCPA 1968) (parallel citations omitted)); see also In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). The combined teachings of Kumakhov and Wang would suggest to those skilled in the art to replace an x-ray detector as disclosed by Kumakhov with an energy-sensitive x-ray detector as disclosed by Wang in order to detect fluorescent x-rays and the information they contain on the characteristics of a specific chemical element. We have not been directed to evidence establishing that such a replacement would have any impact on any relative motion between an “object under study” and the “X-ray optical system,” as argued by Appellants. Appeal 2013-007519 Application 11/906,172 11 Compton scattering serves as one way in which x-rays can interact with matter, which results in a decrease in energy (increase in wavelength) of an x-ray photon. X-ray florescence is another. Kumakhov teaches that both forms of secondary radiation may be used for imaging. See Kumakhov, col. 2, ll. 50-52. Appellants have not presented sufficient evidence or arguments to persuade us one skilled in the art would not have been familiar with both techniques and their respective benefits. The combination of Kumakhov and Wang would not render the method of Kumakhov inoperable for its intended purposes or significantly change the principle of operation of Kumakhov because both references are directed to the formation of images from secondary x-rays. Thus, we conclude that Kumakhov and Wang are properly combinable. For the reasons set forth above, we find no reversible error in the Examiner’s position and, as such, sustain the Examiner’s obviousness rejection of Appellants’ independent claim 1 and 52 over Kumakhov and Wang. With respect to dependent claims 2-26, 28-51, and 53-59, Appellants present no separate patentability arguments. For the same reasons discussed, we also sustain the Examiner’s obviousness rejections of claims 2-26, 28-51, and 53-59. CONCLUSION On the record before us, we conclude that the Examiner has not erred in rejecting claims 1-26 and 28-59 under 35 U.S.C. § 103(a). DECISION Appeal 2013-007519 Application 11/906,172 12 As such, we AFFIRM the Examiner’s final rejection of claims 1-26 and 28-59. 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 bar