Ex Parte Fukuda et al

Patent Trial and Appeal Board

Nov 27, 2017

14009047 (P.T.A.B. Nov. 27, 2017)

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.
14/009,047 09/30/2013 Kentaro Fukuda 1272-0194PUS1 9190
127226 7590 11/29/2017
BIRCH, STEWART, KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
EXAMINER
JO, TAEHO
ART UNIT PAPER NUMBER
2884
NOTIFICATION DATE DELIVERY MODE
11/29/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENTARO FUKUDA, NORIAKI KAWAGUCHI,
AKIRA YOSHIKAWA, TAKAYUKI YANAGIDA, and
YUI YOKOTA1
Appeal 2017-005637
Application 14/009,047
Technology Center 2800
Before TERRY J. OWENS, CHRISTOPHER C. KENNEDY, and
AVELYN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL2
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 7, 8, and 21—24. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify the real parties in interest as Tokuyama Corporation
and Tohoku University. Appeal Br. 3.
2 In our Decision we refer to the Specification filed September 30, 2013
(“Spec.”), the Final Office Action appealed from mailed December 31, 2015
(“Final Act.”), the Appeal Brief filed July 25, 2016 (“Appeal Br.”), the
Examiner’s Answer mailed December 19, 2016 (“Ans.”), and the Reply
Brief filed February 17, 2017 (“Reply Br.”).
Appeal 2017-005637
Application 14/009,047
STATEMENT OF THE CASE
The subject matter on appeal relates to a method for detecting
radiation at high temperatures using a colquiriite-type crystal scintillator.
Spec. 11. The method taught is useful in radiation detectors “for well
logging of oil fields .. . installed within an excavating drill, and is used to
detect gamma rays or neutrons under excavation and predict the properties
of strata.” Id. 13. Claim 7, reproduced below, is illustrative of the claimed
subject matter:
7. A method for detecting radiation by scintillation,
comprising:
entering radiation, at a high temperature of not lower than
100°C, into a scintillator, the scintillator comprising a
colquiriite-type crystal represented by the following chemical
formula:
LiM^Xg
wherein M1 represents at least one alkaline earth metal element
selected from the group consisting of magnesium (Mg), calcium
(Ca), strontium (St) and barium (Ba), M2 represents at least one
metal element selected from the group consisting of aluminum
(Al), gallium (Ga) and scandium (Sc), and X represents at least
one halogen element selected from the group consisting of
fluorine (F), chlorine (Cl), bromine (Br) and iodine (I), to emit
fluorescence; and
detecting the fluorescence by a photodetector.
Appeal Br. 14 (Claims App’x).
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Appeal 2017-005637
Application 14/009,047
REJECTIONS
The Examiner maintains the rejection of claims 7, 8, and 21—24 under
35 U.S.C. § 103(a) as being unpatentable over Yoshikawa3 in view of
Grzechnik.4 Final Act. 4.
Appellants request our reversal of the Examiner’s rejection and argue
the claims together as a group. See Appeal Br. 6—12. Because the basis for
our reversal—i.e., the lack of a reason to combine Yoshikawa with
Grzechnik—applies to all pending claims, we limit our discussion below to
claim 7.
OPINION
The Examiner rejects claim 7 as unpatentable over Yoshikawa and
Grzechnik. Final Act. 4. The Examiner finds that Yoshikawa discloses a
method of detecting radiation using a scintillator comprising a crystal and
having the same chemical formula as claimed. Id. The Examiner
acknowledges that Yoshikawa does not teach “entering radiation, at a high
temperature of not lower than 100-C,” as required by claim 7, but finds that
Grzechnik supplies this limitation. Id. The Examiner also finds that
Grzechnik teaches a colquiriite-type crystal. Id. at 5.
Appellants contend, inter alia, that there is no reason to combine the
teachings of Yoshikawa and Grzechnik absent improper hindsight. Appeal
Br. 10. Appellants explain that “neither Yoshikawa nor Grzechnik were
3 Yoshikawa et al., US 2010/0314550 Al, December 16, 2010
(“Yoshikawa”).
4 Grzechnik et al., Ansiotropic Thermal Expansion in LiCaAlF6 and
LiSrAlF6, 16 J. Phys.: Condens. Matter 5769-5780 (2004) (“Grzechnik”).
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Appeal 2017-005637
Application 14/009,047
aware of the problems associated with the measurement of radiation using a
scintillator in high temperature environments” and “Grzechnik . . . does not
either describe or suggest anything relevant to the behavior of the crystal of
the present invention as a scintillator under high temperature conditions.”
Id.
It is improper to base a conclusion of obviousness upon facts gleaned
only through hindsight. “The invention must be viewed not after the
blueprint has been drawn by the inventor, but as it would have been
perceived in the state of the art that existed at the time the invention was
made.” Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir.
1996) (citing Interconnect Planning Corp. v. Fed, 774 F.2d 1132, 1138
(Fed. Cir. 1985)). “[M]ere identification in the prior art of each element is
insufficient to defeat the patentability of the combined subject matter as a
whole.” In re Kahn, 441 F.3d 977, 986 (Fed. Cir. 2006). “Rather, to
establish a prima facie case of obviousness based on a combination of
elements disclosed in the prior art, the [Examiner] must articulate the basis
on which it concludes that it would have been obvious to make the claimed
invention.” Id. Impermissible hindsight is inferred when the specific
understanding or principle within the knowledge of one of ordinary skill in
the art leading to the modification of the prior art in order to arrive at the
appellants’ claimed invention has not been explained. In re Rouffet, 149
F.3d 1350, 1357 (Fed. Cir. 1998).
Here, as the Examiner finds, Yoshikawa discloses everything but “the
scintillator which operates at a high temperature.” Ans. 5. The Examiner
then relies upon Grzechnik, which the Examiner finds “discloses the specific
limitation on entering, at a high temperature of not lower than 100-C into a
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Appeal 2017-005637
Application 14/009,047
scintillator.” Final Act. 4. But, as Appellants explain (Reply Br. 7),
Grzechnik does not have anything to do with scintillators or detecting
radiation. The only similarity between Yoshikawa and Grzechnik is the use
of a crystalline structure of colquiriite having a formula LiM1M2X6, as
claimed, and the only apparent reason for the Examiner to involve
Grzechnik is the temperature range of 298—600 K. Grzechnik 5773. But,
that temperature range does not suggest an operational temperature for the
claimed colquiriite crystals as a scintillator material; rather, Grzechnik
merely recognizes a behavior exhibited by the crystalline structure at that
temperature. Id. According to Grzechnik, LiCaAlF6 and LiSrAlF6 have
high anisotropic thermal expansion at a temperature of 298—600 K. Id.
Thus, as Appellants explain (Reply Br. 7), “[i]t is a non sequitur to argue that
because Grzechnik teaches operation as a laser host at a certain temperature,
it is obvious to operate a scintillator at that temperature.” On the record
before us, there is no reason, absent hindsight, to modify Yoshikawa as
suggested by the Examiner.
CONCLUSION
Appellants have identified reversible error in the Examiner’s rejection
of claims 7, 8, and 21—24 under 35 U.S.C. § 103(a) as unpatentable over
Yoshikawa and further in view of Grzechnik.
DECISION
For the above reasons, the Examiner’s rejection of claims 7, 8, and
21—24 is reversed.
REVERSED
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