Ex Parte Isoda

Board of Patent Appeals and Interferences

Jan 5, 2010

09858945 - (D) (B.P.A.I. Jan. 5, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte YUJI ISODA
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Appeal 2008-002946
Application 09/858,945
Technology Center 2800
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Decided: January 7, 2010
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Before KENNETH W. HAIRSTON, ROBERT E. NAPPI, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2008-002946
Application 09/858,945

2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-8. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appellant’s invention relates to
A radiation image read-out apparatus [that] includes a
stimulating light beam source, and a [charge-coupled device
(CCD)] photodetector which receives stimulated emission
emitted upon exposure to the stimulating light beam from
portions of the stimulable phosphor sheet exposed to the
stimulating light beam or the back side of the sheet opposed to
the portions exposed to the stimulating light beam and converts
the amount of stimulated emission to an electric signal.
(Abstract).
Appellant’s improvement for such a radiation image read-out
apparatus is to provide the CCD “with a protective member [that] is
permeable to light in the wavelength band of the stimulated emission and
impermeable to light in the wavelength band of the stimulating light” (id.;
see also claim 1).
Independent claim 1 is illustrative,1 reading as follows:
1. A radiation image read-out apparatus comprising:
a stimulating light beam source which projects a stimulating light
beam onto a stimulable phosphor sheet storing thereon radiation image
information,
a photodetector which receives stimulated emission emitted upon
exposure to the stimulating light beam from portions of the stimulable
phosphor sheet exposed to the stimulating light beam or the back side of the

1 Appellant argues claims 1-7 together as a group (see App. Br. 9-12).
Accordingly, we select independent claim 1 as representative of these claims
since it is the only independent claim on appeal. See 37 C.F.R.
§ 41.37(c)(1)(vii).
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sheet opposed to the portions exposed to the stimulating light beam and
converts the amount of stimulated emission to an electric signal,
a scanning means which moves the stimulating light beam source and
the photodetector relative to the stimulable phosphor sheet, and
an image signal read-out means which reads out the output of the
photodetector in sequence in the respective positions in which the
stimulating light beam and the photodetector are moved by the scanning
means,
wherein the improvement comprises that the photodetector comprises
a CCD integrally provided with a plate-shaped protective member covering
at least a light-receiving face of the CCD, said protective member being
permeable to light in the wavelength band of the stimulated emission and
impermeable to light in the wavelength band of the stimulating light.
Claims 1-7 stand rejected under 35 U.S.C. § 103(a) as obvious over
U.S. Patent 4,922,103, issued to Kawajiri May 1, 1990, in view of U.S.
Patent 5,998,802, issued to Struye December 7, 1999.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as obvious over
Kawajiri in view of Struye and U.S. Patent 4,743,758, issued to Chan May
10, 1988.

ARGUMENTS2 AND ISSUE
The Examiner concludes that Kawajiri generally discloses a radiation
readout apparatus including a CCD, but does not disclose the claimed “plate-
shaped protective member” (Ans. 3; claim 1). The Examiner further finds

2 Rather than repeat the arguments of Appellant or the Examiner, we refer to
the Appeal Brief (App. Br.) filed December 17, 2004; the Examiner’s
Answer (Ans.) mailed July 25, 2007; and the Reply Brief (Reply Br.) filed
September 18, 2007, for their respective details. In this decision, we have
considered only those arguments actually made by Appellant. Arguments
which Appellant could have made but did not make in the Briefs have not
been considered and are deemed to be waived. See 37 C.F.R. §
41.37(c)(1)(vii).
Appeal 2008-002946
Application 09/858,945

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that the plate-shaped protective member as claimed reads on Struye’s “Fibre
Optic Plate” 4 (Ans. 3) and that motivation exists to modify Kawajiri’s
apparatus to include Struye’s fiber optic plate (id. at 3-4). In reaching the
conclusion of obviousness, the Examiner interprets the claim language
“plate-shaped protective member” broadly as reading on a structure that is
not necessarily thin or relatively flat (id. at 6).
Appellant asserts, inter alia, (1) that the claim term “plate-shaped
protective member” requires that the protective member be a thin, relatively
flat piece (App. Br. 10); (2) that, notwithstanding its name, Struye’s fiber
optic “plate” 4 is actually a bundle of parallel optic fibers arranged in a
tapered bundle (id.); and (3) that, because Struye’s bundle of tapered optical
fibers is not thin and relatively flat, Struye cannot be deemed to teach or
suggest a “plate-shaped” protective member as recited in claim 1 (id. at 10-
11).3
The issue before us, then, is: Has Appellant shown that the Examiner
erred in interpreting “plate-shaped protective member” as reading on
Struye’s fiber optic plate?

3 Appellant also argues that the thin gelatin filter disclosed by Struye cannot
constitute the claimed plate-shaped protective member because it is not
integrally provided with the CCD (App. Br. 10-12). While it is unclear from
reading the Examiner’s Answer why it is relevant to the rejection that Struye
further discloses a thin gelatin filter (see Ans. 3-4, 6-7), it appears that the
Examiner is not relying on the gelatin filter as teaching the claimed plate-
shaped protective member (see id. at 7 (stating that Appellant’s arguments
relating to the gelatin filter are “not material because the limitation of a
‘plate shaped [protective member]’ was met but [sic: by] Struye’s disclosure
of a fiber optic plate”)). Accordingly, we need not address these arguments.
Appeal 2008-002946
Application 09/858,945

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FINDING OF FACT
The record supports the following Finding of Fact (FF) by a
preponderance of the evidence:
1. The word “plate” is defined as “a smooth, flat, relatively thin, rigid
body of uniform thickness” (App. Br. 18, Evidence Appendix (citing THE
AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (4 ed., 2000),
available at http://dictionary.reference.com/search?q=plate)).

PRINCIPLES OF LAW
To establish prima facie obviousness of a claimed invention, all the
claim limitations must be taught or suggested by the prior art. See In re
Royka, 490 F.2d 981, 985 (CCPA 1974). In rejecting claims under 35
U.S.C. § 103, it is incumbent upon the Examiner to establish a factual basis
to support the legal conclusion of obviousness. See In re Fine, 837 F.2d
1071, 1073 (Fed. Cir. 1988). If the Examiner’s burden is met, the burden
then shifts to Appellant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of the
evidence as a whole and the relative persuasiveness of the arguments. See In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Appellant has the burden
on appeal to the Board to demonstrate error in the Examiner’s position. See
In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006).

ANALYSIS
“Before considering the rejections . . . , we must first [determine the
scope of] the claims . . . .” In re Geerdes, 491 F.2d 1260, 1262 (CCPA
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1974). We therefore start by determining the meaning of the claim term
“plate-shaped.”
It is well settled that, during examination of a patent application,
pending claims are given their broadest reasonable construction consistent
with the Specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004); In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969).
A corresponding principle is that Office personnel must rely on Appellant’s
disclosure to properly determine the meaning of the terms used in the claims.
Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995)
(en banc). “[T]he ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the effective filing date of the
patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir.
2005) (en banc). It is the use of the words in the context of the written
description and customarily by those skilled in the relevant art that
accurately reflects both the “ordinary” and the “customary” meaning of the
terms in the claims. Ferguson Beauregard/Logic Controls, Div. of Dover
Res., Inc. v. Mega Sys., LLC, 350 F.3d 1327, 1338 (Fed. Cir. 2003).
[The claims] are part of a fully integrated written instrument,
consisting principally of a specification that concludes with the
claims. For that reason, claims must be read in view of the
specification . . . . [T]he specification is always highly relevant
to the claim construction analysis. Usually, it is dispositive; it
is the single best guide to the meaning of a disputed term.
Phillips, 415 F.3d at 1315 (citations omitted) (internal quotation marks
omitted).
Appellant has provided reasonable evidence on the record that the
ordinary and customary meaning of the word “plate” is “a smooth, flat,
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relatively thin, rigid body of uniform thickness” (FF 1). In contrast, the
Examiner has not suggested any definition for the term “plate-shaped.”
Rather, the Examiner merely concludes that because (1) Appellant’s
Specification provided no express definition for either the term “plate” or for
a plate’s dimensions, and (2) claim 1 does not expressly recite the words
“thin, relatively flat piece,” “it [sic: is] reasonable to assert [that] the CCD
[sic: fiber optic plate of Struye] is plate shaped” (Ans. 6).
We agree with the Examiner that Appellant does not provide any
express definition for the claim term “plate-shaped.” But it does not follow
from Appellant’s omission of an express definition that the ordinary and
customary meaning of “plate-shaped” can be ignored as well.
“[I]nterpreting what is meant by a word in a claim is not to be confused with
adding an extraneous limitation appearing in the specification, which is
improper.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1348 (Fed. Cir.
2002) (citation omitted) (internal quotation marks omitted).
As used in the present context, we conclude that a “plate-shaped”
member is one having (1) a depth that is thin relative to its length and width
and (2) a relatively flat surface (see FF 1). The Examiner does not allege,
much less provide any evidence, though, that Struye’s fiber optic plate is, in
fact, a flat and relatively thin structure (see Ans. 6-7). Rather, the
Examiner’s stated rationales seem to constitute an implicit
acknowledgement that Struye’s fiber optic plate is not a “thin, relatively flat
piece” (id.). Furthermore, Struye does not recite or depict that the fiber optic
plate 4 has a flat and relatively thin structure.
Initially, it may seem counterintuitive that Struye’s fiber optic bundle,
expressly referred to by those inventors as a “Fibre Optic Plate,” may not be
Appeal 2008-002946
Application 09/858,945

8
reasonably deemed to be “plate-shaped.” However, one must bear in mind
that inventors are free to be their own lexicographers, and that they may
even choose to give terms uncommon meanings that are different from the
terms’ ordinary and customary meanings. See In re Paulsen, 30 F.3d 1475,
1480 (Fed. Cir. 1994). The choice by a single set of inventors to use a term
in an uncommon manner, though, does not prospectively change the term’s
ordinary and customary meaning.
For the foregoing reasons, Appellant has persuaded us of error in the
Examiner’s obviousness rejection of representative claim 1. Accordingly,
we will not sustain the Examiner’s rejection of claim 1 or claims 2-7, which
depend from claim 1. With respect to the remaining rejection of dependent
claim 8, Chan does not cure the deficiency of the obviousness rejection
explained above. Accordingly, we likewise do not sustain the rejection of
claim 8.

CONCLUSION
Appellant has shown that the Examiner erred in interpreting “plate-
shaped protective member” as reading on Struye’s fiber optic plate. As
such, Appellant has shown that the Examiner erred in rejecting claims 1-8
under 35 U.S.C. § 103.

DECISION
We do not sustain the Examiner’s rejections with respect to all
pending claims on appeal. Therefore, the Examiner’s decision rejecting
claims 1-8 is reversed.

Appeal 2008-002946
Application 09/858,945

9
REVERSED

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