11445569 (B.P.A.I. Apr. 24, 2012)

Ex Parte Cherepy et al

Board of Patent Appeals and InterferencesApr 24, 2012

11445569 (B.P.A.I. Apr. 24, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte NERINE J. CHEREPY and DERRICK T. SPEAKS ________________ Appeal 2010-010716 Application 11/445,569 Technology Center 1700 ________________ Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and LINDA M. GAUDETTE, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1 and 3-5. Claims 6-19, which are all of the other pending claims, have been withdrawn from consideration by the Examiner. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a coating. Claim 1 is illustrative: Appeal 2010-010716 Application 11/445,569 2 1. A coating for a surface that has an alpha or beta radioactively contaminated area for the detection of alpha or beta radiation from the contaminated area using an UV viewer, comprising: a coating adapted to be operatively connected to the surface, phosphor/scintillator particles carried by said coating that causes UV emissions when the alpha or beta radiation from the contaminated area strikes the phosphor/scintillator particles and provides an indication of the alpha or beta radioactively contaminated area, and an UV viewer for detecting said UV emissions when the alpha or beta radiation from the contaminated area strikes the phosphor/scintillator particles. The References V.G. VASIL’CHENKO AND A.S. SOLOV’EV, Properties of Composite Scintillators in Static and Dynamic States, 46 INST. & EXP. TECH. 758-64 (2003). Y. ZORENKO ET AL., Luminescence of Sc-related centers in single crystalline films of Lu3Al5O12 garnet, 2 PHYS. STAT. SOL. 105-08 (2005). HUI-LI LI ET AL., Fabrication of Transparent Cerium-Doped Lutetium Aluminum Garnet Ceramics by Co-Precipitation Routes, 89 J. AM. CERAM. SOC. 2356-58 (2006). The Rejections The claims stand rejected as follows: claims 1 and 3-5 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the Appellants regard as the invention, claims 1 and 3-5 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description Appeal 2010-010716 Application 11/445,569 3 requirement, claims 1 and 4 under 35 U.S.C. § 102(b) over Vasil’chenko, and claims 1 and 3-5 under 35 U.S.C. § 103 over Zorenko in view of Li. OPINION We affirm the rejection under 35 U.S.C. § 112, second paragraph, and procedurally reverse the other rejections. The Appellants’ claim 1, which is the sole independent claim, claims “[a] coating for a surface that has an alpha or beta radioactively contaminated area for the detection of alpha or beta radiation from the contaminated area using an UV viewer”, but recites in the body of the claim, as an element of the claimed coating, “an UV viewer for detecting said UV emissions when the alpha or beta radiation from the contaminated area strikes the phosphor/scintillator particles.” The Examiner argues that “the claims are indefinite as they seek to define a coating that comprises both a coating and a UV viewer, where this UV viewer has always been defined as an apparatus or entity separate from the coating” (Ans. 9). The Appellants point out that their Specification discloses that “[i]n one embodiment the present invention utilizes a UV viewer for monitoring the coating to detect the radiological substances” (Br. 14). That excerpt indicates that the UV viewer is separate from the coating, whereas the Appellants’ claim 1 recites the UV viewer as a component of the coating. The Appellants refer also to other portions of their Specification and then assert that the claims are not indefinite (Br. 14-15; Reply Br. 5-6). The Appellants’ Specification indicates that the UV viewer is separate from the coating (Spec. ¶ 0009; Fig. 1, coating (104) and UV viewer (106)). Appeal 2010-010716 Application 11/445,569 4 Claim 1, however, recites the UV viewer as a component of the coating. Hence, the meaning of claim 1 is unclear. Accordingly, we affirm the rejection under 35 U.S.C. § 112, second paragraph. In some instances it is possible to make a reasonable, conditional interpretation of claims adequate for the purpose of resolving patentability issues to avoid piecemeal appellate review. In the interest of administrative and judicial economy, this course is appropriate wherever reasonably possible. See Ex parte Saceman, 27 USPQ2d 1472, 1474 (Bd. Pat. App. & Int. 1993); Ex parte Ionescu, 222 USPQ 537, 540 (Bd. App. 1984). In other instances, however, it may be impossible to determine whether or not claimed subject matter is anticipated by or would have been obvious over references because the claims are so indefinite that considerable speculation and assumptions would be required regarding the meaning of terms employed in the claims with respect to the scope of the claims. See In re Steele, 305 F.2d 859, 862 (CCPA 1962). The above-discussed claim language renders the Appellants’ claim 1 and its dependent claims sufficiently indefinite that neither a determination of whether the Appellants were in possession of the claimed subject matter under 35 U.S.C. § 112, first paragraph, nor application of the prior art to the claims is possible. On this basis, we do not sustain the rejections under 35 U.S.C. §§ 112, first paragraph, 102(b) and 103. This reversal is not a reversal on the merits of the rejections but, rather, is a procedural reversal predicated upon the indefiniteness of the claims. DECISION/ORDER The rejection of claims 1 and 3-5 under 35 U.S.C. § 112, second paragraph, is affirmed. The rejections of claims 1 and 3-5 under Appeal 2010-010716 Application 11/445,569 5 35 U.S.C. § 112, first paragraph, written description requirement, claims 1 and 4 under 35 U.S.C. § 102(b) over Vasil’chenko, and claims 1 and 3-5 under 35 U.S.C. § 103 over Zorenko in view of Li are procedurally reversed. It is ordered that 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). AFFIRMED tc 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. 11/445,569 06/02/2006 Nerine J. Cherepy IL-11582 8457 24981 7590 04/24/2012 Lawrence Livermore National Security, LLC LAWRENCE LIVERMORE NATIONAL LABORATORY PO BOX 808, L-703 LIVERMORE, CA 94551-0808 EXAMINER HOBAN, MATTHEW E ART UNIT PAPER NUMBER 1734 MAIL DATE DELIVERY MODE 04/24/2012 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)