Ex Parte Grazioso et alDownload PDFPatent Trial and Appeal BoardSep 28, 201612560054 (P.T.A.B. Sep. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/560,054 09/15/2009 28524 7590 09/30/2016 SIEMENS CORPORATION INTELLECTUAL PROPERTY DEPARTMENT 3501 Quadrangle Blvd Ste 230 Orlando, FL 32817 FIRST NAMED INVENTOR Ronald Grazioso 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 2008Pl 7860US01 9562 EXAMINER IGYARTO, CAROLYN ART UNIT PAPER NUMBER 2884 NOTIFICATION DATE DELIVERY MODE 09/30/2016 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 following e-mail address( es): ipdadmin.us@siemens.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RONALD GRAZIOSO, DEBORA HENSELER, and NAN ZHANG Appeal2014-000356 Application 12/560,054 Technology Center 2800 Before BEYERL YA. FRANKLIN, WESLEY B. DERRICK, and CHRISTOPHER C. KENNEDY Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134 of the Examiner's decision rejecting claims 1-27. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). STATEMENT OF THE CASE Appellants' claimed invention relates to a positron emission tomograph (PET) system that includes a calibration system for adjusting the gain of silicon photomultiplier signals. Spec. Abstract. The calibration Appeal2014-000356 Application 12/560,054 system includes an array of silicon photomultipliers response to incident single photoelectrons and gain adjustment logic to determine a single photoelectron response. Claims 1 and 9 are illustrative of Appellants' subject matter on appeal and are set forth below with added emphasis: 1. A positron emission tomography calibration system compnsmg: an array of silicon photomultipliers responsive to incident single photoelectrons to output silicon photomultiplier signals; and a gain adjustment logic receiving said silicon photomultiplier signals, determining a single photoelectron response of the silicon photomultipliers based on said silicon photomultiplier signals, comparing the single photoelectron response with a target value, and adjusting a gain of the silicon photomultipliers based on a result of the comparison. 9. The positron emission tomography system of claim 8, wherein the single photoelectron response is determined from dark signals that have amplitudes of single photoelectron / "\ • 1 1~· 1 ("~1 • 1 ~s.p.e.J s1gna1s or mump1es or me s.p.e, s1gna1s. The Examiner relies on the following prior art references as evidence of unpatentabili ty: Wong Tetzlaff Wieczorek et al. (hereafter "Wieczorek") Paz et al. (hereafter "Paz") US 7,071,474 B2 US 7,157,681 Bl us 2010/0176301 US 8,046,601 Bl 2 July 4, 2006 Jan.2,2007 July 15, 2010 Oct. 25, 2011 Appeal2014-000356 Application 12/560,054 THE REJECTIONS 1. Claims 9-15 are rejected under 35 U.S.C. § 112, first paragraph (written description requirement). 2. Claims 1-2, 4, 5, 7, 8, 16, 17, 20-23, 26, and 27 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Wong in view of Wieczorek. 3. Claims 3 and 6 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Wong in view of Wieczorek, and further in view of Paz. 4. Claims 9-11, 13, 15, 18, 19, 24, and 25 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Wong in view of Wieczorek, and further in view of Tetzlaff. 5. Claims 12 and 14 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Wong in view of Wieczorek and Tetzlaff, as applied to claims 4-5 and 10 above, and further in view of Paz. ANALYSIS Rejection 1 It is the Examiner's position that the recitation of "the single photoelectron response is determined from dark signals" of claim 9 does not appear to be originally disclosed. Final Act. 6. Appellants state that original claim 9 recited that the "the silicon photomultipliers signals includes (sic, include) dark signals that have 3 Appeal2014-000356 Application 12/560,054 amplitudes of single photoelectron (s.p.e.) signals or multiples of the s.p.e, signals." Appeal Br. 4-5. Appellants argue that the corresponding disclosure in the Specification discloses that the calibration system determines a single photoelectron response of the silicon photomultiplier signals and adjusts their gain based on that response. Spec., p. 2, para. [0002]; Appeal Br. 5. Appellants also state that paragraph [0013] on page 6 of the Specification discloses that, in addition to signals from coincidence events, the silicon photomultipliers also output dark signals, which can have the amplitudes of single photoelectron (s.p.e.) signals. Appeal Br. 5. Appellants further state that, as shown by Figure 3, when a calibration mode of the system is initiated (step 305), the calibration system retrieves a target s.p.e, level (step 310), adjusts the threshold and gain settings for calibration mode (step 315), retrieves measurement of dark signals (step 320), and detects s.p.e, peaks from the retrieved measurements (step 325). Appeal Br. 5. Appellants submit that thus it is evident that the single photoelectron response of the SiPMs are, in fact, determined from the dark signals outputted by the SiPMs when in calibration mode (i.e. when not detecting coincident event signals from a patient). Appeal Br. 5. Appellants also argue that the Examiner, in the Advisory Action, acknowledges that the Specification discloses that dark signals can have the amplitudes of single photoelectron signals, but nonetheless asserts that "the 4 Appeal2014-000356 Application 12/560,054 single photoelectron response is determined from dark signals (claim 9) does not appear to be originally disclosed." Appellants submit that this is incorrect for the reasons mentioned, supra. Appellants again refer to their flow diagram of Figure 3 for showing that the s.p.e. peaks are detected from the measurement of dark signals. Appeal Br. 5. In response, the Examiner states that, while there is support for the photomultipliers also outputting dark signals, and that dark signals may have the amplitudes of single photoelectron signals, it does not appear that the single photoelectron response is determined from dark signals (claim 9). Ans. 4. The Examiner states that the claimed "single photoelectron response" and "silicon photomultipliers signals" are different claimed elements, and that showing original support for one providing dark signals, does not show support for the other being determined from dark signals. Id. With regard to Figure 3, the Examiner states that while Figure 3 shows dark signals are retrieved prior to detecting s.p.e. peak from retrieved measurements, this does not show the "single photoelectron response is determined from dark signals." Ans. 4-5. In reply, Appellants explain that claim 9 depends upon independent claim 8, and that claim 8 sets forth "a calibration system that is electrically coupled to the silicon photomultipliers, wherein the calibration system determines a single photoelectron response of the array of silicon photomultipliers based on [silicon photomultiplier] signals, and adjusts a gain of the silicon photomultipliers based on a comparison of the single photoelectron response with a target value." Reply Br. 2. Appellants further explain that claim 9 further limits claim 8 by specifying that the single 5 Appeal2014-000356 Application 12/560,054 photoelectron response is determined from dark signals that have amplitudes of single photoelectron (s.p.e.) signals or multiples of the s.p.e, signals. Id. Appellants explain that the corresponding disclosure in the Specification explains that the calibration system determines a single photoelectron response of the silicon photomultiplier signals and adjusts their gain based on that response. Spec. p. 2, paras [0002]. Appellants state that paragraph [0013] at page 6 of the Specification discloses that in addition to signals from coincidence events, the silicon photomultipliers also output dark signals, which can have the amplitudes of single photoelectron (s.p.e.) signals. Appellants again refer to their Figure 3 for showing that when a calibration mode of the system is initiated (step 305), the calibration system retrieves a target s.p.e, level (step 310), adjusts the threshold and gain settings for calibration mode (step 315), retrieves measurement of dark signals (step 320), and detects s.p.e, peaks from the retrieved measurements (step 325). Reply Br. 2-3. Appellants submit that therefore, based upon the original disclosure, it was evident that the single photoelectron response of the SiPMs are, in fact, determined from the dark signals outputted by the SiPMs when in calibration mode (i.e. when not detecting coincident event signals from a patient). Reply Br. 3. We are persuaded by Appellants' stated position in the record, and agree it is evident that the flow diagram of Figure 3 teaches that the s.p.e. peaks are detected from the measurement of dark signals. Thus, we agree, based upon the Specification disclosure as discussed in the record, that photomultipliers output dark signals, and that such dark signals can have amplitudes of single photoelectrons, and, it follows that the single 6 Appeal2014-000356 Application 12/560,054 photoelectron response is determined from dark signals that have amplitudes of single photoelectron (s.p.e.) signals, as set forth in claim 9. Reply Br. 3. In view of the above, we reverse Rejection 1. Rejection 2 The Examiner's statement of the rejection is set forth on pages 8-14 of the Final Office Action. Therein, the Examiner finds that Wong discloses all of the limitations of the claims except for teaching that the photomultipliers are silicon photomultipliers. Final Act. 8. The Examiner relies upon Wieczorek for teaching use of SiPMs. Wieczorek, para. [0022]. Wieczorek teaches that SiPMs can be used in place of photomultiplier tubes (PMTs ). Wieczorek, para. [0019]. The Examiner concludes that it would have been obvious to replace the photomultipliers of Wong with SiPMs as taught by Wieczorek. Final Act. 8-9. Appellants argue that the Examiner erred because Wong does not disclose an apparatus for determining a single photoelectron response, comparing the single photoelectron response with a target value, and adjusting a gain of the silicon photomultipliers based on a result of the comparison, as required by claim 1. Appeal Br. 7. Rather, Appellants contend that Wong discloses a device providing for equalizing the gains of photomultiplier tubes (PMTs ), which provide for measurement of signals arising from many photons, and so fails to determine "any single photoelectron response of any PMT" or to compare any "single photoelectron response peak with a target value." Id. 7 Appeal2014-000356 Application 12/560,054 As explained by Appellants, Figure 6A of Wong relied on by the Examiner describes an LED light signal arising from multiple photoelectrons. As described in Wong, the LED signal is a Gaussian distribution and, thus, is not a "single photoelectron peak" i.e., the signal of a single photoelectron. Appeal Br. 7-8. Appellants argue that Wieczorek does not cure the deficiencies of Wong because Wieczorek merely discloses the use of SiPMs in a detector arrangement for a medical imaging detector, and does not disclose any method of or apparatus for calibration of such detectors. Appeal Br. 7. We begin our analysis with the meaning of "a single photoelectron response" (claim 1 ), in light of the Specification. In re Suit co Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010) (Even in giving claims their broadest reasonable construction, the "claims should always be read in light of the specification and teachings in the underlying patent."). Looking to the Specification, we find it discloses silicon photomultipliers allowing detection of single photoelectrons and the claimed apparatus operates to compare single photoelectron responses arising from dark signals to a reference peak of a reference photoelectron response spectrum. Spec. ,-i,-i 11-13, 16. We find determinative the proper meaning of "a single photoelectron response." Claim 1. As highlighted by Appellants' arguments, the combination arrived at by modifying Wong to include silicon multipliers instead of conventional multiplier tubes would remain grounded-like Wong-on comparisons between at least two counters and, consequently, on 8 Appeal2014-000356 Application 12/560,054 detection and measurement of multiple photoelectrons. Appeal Br. 8 (citing Wong, col. 8, 1. 60 - col. 9, 1. 5). Appellants also argue that comparison of the relative counts between two counters is not comparison of a single photoelectron response with a target value, as disclosed and claimed in the present application, and the Wong comparison is simply whether one counter has a higher number of counts than the other counter. Appeal Br. 8. In response, the Examiner states that Appellants argue against the references individually, and one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. Ans. 5. The Examiner further maintains that while Appellants argue that Wong does not teach determination of any single photoelectron response of any PMT, Wong does in fact teach determining a single photoelectron response of the photomultipliers signals (for example Figure 6A). Id. Further, the Examiner maintains that it is not the light from the LED that is relied upon to teach a single photoelectron peak, but rather the single photoelectron peak of Wong that is the resulting output of the PMT. Id. We do not find the Examiner's position as to Wong teaching a single photoelectron response to be well-founded where the issue is not whether or not there is a single peak, but rather that it reflects a single photoelectron response and, on this record, the Examiner fails to establish that Wong provides any peak arising from a single photoelectron or dark signal or any reasoning for why one of ordinary skill would have modified the teachings to provide an apparatus allowing one to obtain signal peaks from a single photoelectron. Generally Final Act. and Ans. Likewise, the Examiner also 9 Appeal2014-000356 Application 12/560,054 errs in relying on Wong's comparison of relative counts from counters to a reference pulse height to be a comparison of a single photoelectron response with a target value because it is not established to arise from a single photoelectron and/or dark signals. Ans. 5-6 (citing Wong col. 8, line 60- col. 9, line 5 of Wong). It further follows that where the Examiner relies on a single peak made up of a Gaussian distribution of photons rather than a single photoelectron response, the Examiner has failed to provide a sufficient basis for the gain adjustment logic circuitry required. See, e.g., Belden Inc. v. Berk-TekLLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) ("obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention") (emphasis in original). We thus are persuaded by Appellants' arguments that the Examiner erred reversibly. The Examiner's response that the Appellants' argument regarding the combination is unsupported attorney opinion overlooks, and leaves unaddressed, several points made by Appellants, as repeatedly summarized above. Also, the Examiner has made an equivalency between silicon photomultipliers (SiPMs) and photo multiplier tubes (PMTs ), but Appellants make a compelling argument that the associated calibration techniques are not equivalent. These points made, go unresolved by the Examiner's response in the record. In view of the above, we reverse Rejection 2. 10 Appeal2014-000356 Application 12/560,054 Rejections 3, 4, 5, and 6 The Examiner does not rely upon the additionally applied references of Rejections, 4, 5, and 6 to cure the aforementioned deficiencies of the combination of Wong in view of Wieczorek. We therefore reverse these rejections for the reasons stated regarding Rejection 2. DECISION Each rejection is reversed. ORDER REVERSED 11 Copy with citationCopy as parenthetical citation