Ex Parte Hamill et al

Patent Trial and Appeal Board

Aug 10, 2018

12887933 (P.T.A.B. Aug. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/887,933 09/22/2010
28524 7590 08/14/2018
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
James J. Hamill
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.
2010Pl 1532US 3442
EXAMINER
BURKE, SEAN P
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
08/14/2018 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 JAMES J. HAMILL, STEP AN B. SIEGEL, and
CHARLES RUSSELL BUCHANAN
Appeal2017-010160
Application 12/887 ,933 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
BRUCE T. WIEDER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's rejection of claims 1, 3, 5, 7, 8, 10, and 11. Wehavejurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE.
CLAIMED SUBJECT MATTER
Appellants' invention relates to a "method and apparatus for making a
radioisotope using a portable neutron source. A material comprising a
1 According to Appellants, the real party in interest is SIEMENS
MEDICAL SOLUTIONS USA, INC. (Appeal Br. 2.)
Appeal2017-010160
Application 12/887,933
particular isotope is obtained and exposed to neutrons from a portable
neutron source, the particular isotope reacting with a neutron and
transforming into the radioisotope." (Spec. ,r 10.)
Claim 1 is the sole independent claim on appeal. It recites:
1. A method of making a radioisotope, the method
compnsmg:
obtaining a solution comprising a particular isotope
dissolved in the solution;
placing the solution into a container; where the container
is located within a medical patient examination facility to
expedite use after preparation; and
exposing the solution to neutrons from a portable neutron
source by completely surrounding the portable neutron source
with at least the particular isotope, the particular isotope reacting
with the neutrons and transforming into the radioisotope having
a short half-life; and extracting the radioisotope from the
solution.
REJECTIONS
Claims 1, 3, 7, 8, 10, and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable in view of J. H. Chen & W. W. Harvey, Cation Self-Diffusion
in Chalcopyrite and Pyrite, 6B Metallurgical Transactions B 331-339
(June 1975) (hereinafter "Chen"), W. Herr & H. Gotte, Preparation of a
Practically Carrier-Free Radioactive Copper Preparation 64Cu with High
Activity from Cu Phthalocyanin, 5a Z. Naturforschg. 629-30 (1950)
(hereinafter "Herr"), and Szilard (US 2,161,985, iss. June 13, 1939).
Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable in view
of Herr, Chen, Szilard, and I. <;elenk et al., Measurement of Macroscopic
and Microscopic Thermal Neutron Cross Sections of V, Co, Cu, In, Dy and
Au Using Neutron Self-Absorption Properties, Vol. 148, No. 2 Journal of
Radioanalytical and Nuclear Chemistry 393--401 (1991).
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Appeal2017-010160
Application 12/887,933
ANALYSIS
The Examiner finds that Szilard teaches "the surrounding of the
source with the target material." (Final Action 6, citing Szilard Fig. 1.)
Figure 1 of Szilard is reproduced below.
Figure 1 "represents a sectional elevation of an apparatus for carrying out"
Szilard's invention of producing radioactive elements. (Szilard, Title, and
col. 1, 11. 27-28.) Figure 1 of Szilard shows "substance 13 ... surrounded
by a thick layer 14 containing the element which it is desired to transmute
into a radio-active element." (Id. at col. 1, 11. 47-50.) Figure 1 also shows
"an electrical discharge tube [11] adapted to project a beam 12 of fast
deuterons." (Id. at col. 1, 11. 35-37.)
Appellants argue:
As can be seen from the Figure 1, the layer 14 does not
completely surround the substance 13 or the sealed container
13A. The proximate presence of the tube 11 (that contains the
anode A and the cathode B) to the sealed container 13A that
contains the substance 13 prevents the layer 14 from completely
surrounding the substance 13.
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Appeal2017-010160
Application 12/887,933
(Appeal Br. 8.) Nor, Appellants argue, is there "motivation for one of
ordinary skill in the art to modify Szilard." (Id.)
Appellants' Figure 2 is reproduced below.
F!G .. 2
Appellants' "Figure 2 shows an embodiment of an apparatus for producing a
radioisotope including a portable neutron source." (Spec. ,r 13.) In
particular, Appellants' "Figure 2 shows an embodiment of an apparatus 200
for producing a radioisotope using a portable neutron source 240 in
proximity to a container 220. Container 220 contains a material 210 which
includes a particular isotope 250. Portable neutron source 240 is shown
completely surrounded by material 210." (Id. ,r 19; see also id. ,r 17.) Also,
Appellants' Specification discloses that, "[ f]or example, if particular isotope
250 is in a water solution, the water may act as a moderator. Thus, portable
neutron source 240 may be completely surrounded by both particular
isotope 250 and by a moderator. This geometry is shown in the embodiment
illustrated in Figure 2." (Id. ,r 21.)
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Appeal2017-010160
Application 12/887,933
The Examiner answers that "[ u ]nder the broadest reasonable
interpretation of [ claim 1] in view of the specification, 'completely
surrounds' must necessary [sic] include embodiments in which the target
does not completely surround the source." (Answer 12.) The Examiner
explains:
As noted during prosecution, the portable neutron source
240 is "completely surrounded" by the target material 210/110.
. . . A californium [i.e., neutron] source in water without a
structural support would sink to the bottom of the container.
Indeed, there are no known liquids wherein a californium source
would float, suspended in a liquid or gas, as illustrated in
[Appellants' Figure 2].
The Appellant [sic] traverses this observation, arguing that
the californium source need not float in the center of the tank or
rest on an unclaimed, undisclosed support structure. Instead,
"the californium source may be supported or suspended by a thin
rod or sting [sic] of material ( e.g., nylon, polyethylene, and the
like) or supported by a porous material that does not necessarily
stop or prevent isotope formation in any particular direction."
[Quoting Appeal Br. 13.]
Respectfully, neither the claims nor the specification
describe a "thin rod," "string," "nylon," "polyethylene," or any
other structural support material - "porous" or otherwise. These
elements have been introduced expressly for this appeal. Had
they appeared in the claims during prosecution, the elements
would have been rejected as new matter.
(Answer 14.) The Examiner concludes that the claim term "completely
surrounding" "is broad enough to include ... nearly-completely
surrounding." (Id. at 16.)
Regardless, Appellants argue that "[ e ]ven if the californium sunk to
the bottom of the container, there would at least be several monolayers of
water between the californium source and the bottom of the container thus
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Appeal2017-010160
Application 12/887,933
ensuring that the source is completely surrounded by the isotope material."
(Reply Br 10.)
In short, Appellants' argument is that the claim term "completely
surrounding" should be given its plain and ordinary meaning.
We give claims their "broadest reasonable interpretation consistent
with the specification." In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000).
Under this standard, "claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art."
In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983). "All words in a claim
must be considered." In re Wilson, 424 F.2d 1382, 1385 (CCP A 1970).
Neither Appellants nor the Examiner point to any special definition of
the term "completely surrounding" in the Specification. Moreover,
Appellants' Figure 2 illustrates neutron source 240 completely surrounded
by material/solution 210 that contains isotope 250. The Examiner's
argument against giving this term its plain and ordinary meaning is that by
doing so, the claim may be subject to rejection under 35 U.S.C. § 112. That
may or may not be the case. But that is not the issue before us. Although
"[ w ]e normally do not interpret claim terms in a way that excludes
embodiments disclosed in the specification" Oatey Co. v. JPS Corp., 514
F.3d 1271, 1276 (Fed. Cir. 2008), here, by giving the term its plain and
ordinary meaning, we interpret the claim in light of the Specification and, in
particular, in a way consistent with an embodiment disclosed in the
specification. 2
2 We note that the Specification discloses as an alternative to "completely
surrounding," that "at least a portion of the portable neutron source may be
situated outside the material." (Spec. ,r 17; see also id. ,r 19.) But claim 1, at
issue here, recites "completely surrounding."
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Application 12/887,933
In view of the above, we conclude that the Examiner applied an
unreasonably broad interpretation of the term "completely surrounding"
when concluding that the term "is broad enough to include ... nearly-
completely surrounding." (See Answer 16.) Because the Examiner did not
apply the broadest reasonable interpretation in reaching the conclusion
regarding obviousness, we will reverse the rejections of claim 1 and
dependent claims 3, 5, 7, 8, 10, and 11, under §103(a).
DECISION
The Examiner's rejections of claims 1, 3, 5, 7, 8, 10, and 11 under
35 U.S.C. § 103(a) are reversed.
REVERSED
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