Ex Parte Jacobson

Board of Patent Appeals and Interferences

May 31, 2011

11467692 (B.P.A.I. May. 31, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LARRY A. JACOBSON
____________

Appeal 2009-010232
Application 11/467,692
Technology Center 2800
____________

Before JOSEPH F. RUGGIERO, CARL W. WHITEHEAD, JR. and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

Concurring-In-Part Opinion filed by BAUMEISTER, Administrative Patent
Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134 of the Final Rejection of
claims 1, 2, 4-7 and 13-17. See Appeal Brief 5. We have jurisdiction under
35 U.S.C. § 6(b) (2002). We affirm.
Appeal 2009-010232
Application 11/467,692

2
Exemplary Claim
1. A logging system comprising:
a logging tool comprising:
a sonde operable within a bore hole;
a neutron source coupled to the sonde, the neutron source comprises a
neutron detector configured to count a number of neutrons as the
neutrons exit the neutron source; and
a gamma ray detector disposed within the sonde at a spaced apart location
from the neutron source.

Rejections on Appeal
Claims 1, 2, 4-7 and 13-17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over U.S. Patent 4,387,302 to Givens (“Givens”).

Appellant’s Contentions
1. Appellant contends that Givens teaches a neutron detector spaced apart
from the neutron source and the combination of Givens and Japikse
1
fails to
teach or suggest “„a neutron source couple to the sonde, the neutron source
comprises a neutron detector configured to count a number of neutrons
as the neutrons exit the neutron source‟” Appeal Brief 9-10.
2. Appellant contends that Givens does not provide sufficient motivation or
reasons to rearrange parts of Givens such that the neutron source comprises

1
In re Japikse, 86 USPQ 70 (CCPA 1950) is a decision rendered by the
United States Court of Customs and Patents Appeals and not considered to
be a prior art reference. The Examiner incorrectly cited the decision in his
statement of rejection (Final Rejection 2), however, he correctly omits the
decision from the statement of rejection in his Answer (Answer 3).
Appeal 2009-010232
Application 11/467,692

3
a neutron detector. Appeal Brief 10. Appellant further contends that Givens
teaches away from rearranging the neutron source and neutron detector. Id.
3. Appellant contends that the rejection based upon Givens is actually a 35
U.S.C. § 102 anticipation rejection and not a 35 U.S.C. § 103 obviousness
rejection as the Examiner has set forth. Appeal Brief 11.
4. Appellant contends that the combination of Givens and Japikse fail to
teach or suggest “„the processor compensates an inelastic gamma ray
count rate for neutron transport effects to create a compensated inelastic
gamma ray count rate.‟” Appeal Brief 11-12.
5. Appellant contends that the combination of Given and Japikse fail to teach
or suggest “„the processor compensates the inelastic gamma ray count
rate for neutron transport effects by computing the compensated inelastic
gamma ray count rate using an inelastic gamma ray count rate of the
gamma ray detector, a thermal capture gamma ray count rate of the
gamma ray detector, and a coefficient.‟” Appeal Brief 12-13.

PRINCIPLES OF LAW
It is an obvious expedient to the skilled artisan to integrate into a single
unit individual devices that were known in the art to be separate but
operating together. In re Larson, 340 F.2d 965, 968 (CCPA 1965).
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See In re
Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006), In re Young, 927 F.2d 588,
591 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425 (CCPA 1981). The
Examiner can satisfy this test by showing some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.
Appeal 2009-010232
Application 11/467,692

4
KSR Int’l. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441
F.3d at 988).
During examination of a patent application, a claim is given its
broadest reasonable construction “in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted) (internal
quotation marks omitted). “[T]he words of a claim „are generally given their
ordinary and customary meaning.‟” Phillips v. AWH Corp., 415 F.3d 1303,
1312 (Fed. Cir. 2005) (en banc) (internal citations omitted).
“„A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.‟” In re Kahn, 441 F.3d 977, 990
(Fed. Cir. 2006) (citations and internal quotation marks omitted). See also
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (noting that merely
disclosing more than one alternative does not teach away from any of these
alternatives if the disclosure does not criticize, discredit, or otherwise
discourage the alternatives).

Issues on Appeal
Did the Examiner err in rejecting claims 1, 2, 4-7 and 13-17 as being
unpatentable over Givens?

ANALYSIS
We have reviewed the Examiner‟s rejections in light of Appellant‟s
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
Appeal 2009-010232
Application 11/467,692

5
We disagree with the Appellant‟s conclusion.
Appellant argues that Givens teaches a neutron detector that is spaced
apart from the neutron source and therefore fails to disclose a neutron source
comprising a neutron detector as claimed. Appeal Brief 9-10. Appellant
further argues that the application of In re Japikse, 86 USPQ 70 (CCPA
1950) fails to provide sufficient motivation to rearrange the parts of Givens
because Givens teaches away from rearranging the neutron source and
neutron detector. Id.
The Examiner contends that claim 1 uses the terminology “comprises”
to illustrate that the neutron detector is connected to the neutron source.
Answer 7. Further, the Examiner contends that whether the neutron source
and neutron detector are in the same housing or are separate devices, the
devices of the claimed invention and Givens are functionally equivalent.
Answer 7-8. We find the Examiner‟s position to be persuasive. The neutron
source and the neutron detector are not the same device and whether they are
arranged in the same housing or in separate housings, the two arrangements
are functionally equivalent and are not patentably distinguishable. A
rationale for combining or modifying reference teachings can be based on
common knowledge or common sense rather than coming from the
references themselves. “[T]he [obviousness] analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR, .550 U.S. at 418.
Furthermore, a reference may be understood by the artisan to be
suggesting a solution to a problem that the reference does not discuss. See
KSR, 550 U.S. at 420-21 (“The second error of the Court of Appeals lay in
Appeal 2009-010232
Application 11/467,692

6
its assumption that a person of ordinary skill attempting to solve a problem
will be led only to those elements of prior art designed to solve the same
problem. . . . Common sense teaches . . . that familiar items may have
obvious uses beyond their primary purposes, and in many cases a person of
ordinary skill will be able to fit the teachings of multiple patents together
like pieces of a puzzle. . . . A person of ordinary skill is also a person of
ordinary creativity, not an automaton.”).
The claim language “the neutron source comprises a neutron detector”
does not require the neutron source and neutron detector to be within the
same housing as Appellant‟s contend. During examination of a patent
application, a claim is given its broadest reasonable construction “in light of
the specification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(citations omitted) (internal quotation marks omitted). Based upon this
interpretation Givens actually discloses every limitation of claim 1.
Nevertheless, we find no reversible error in the Examiner's obviousness
rejection based on Givens as obviousness rejections can be based on
references that happen to anticipate the claimed subject matter. See In re
Meyer 599 F.2d 1026, 1031 (CCPA 1979).
Further we do not find the Appellant‟s arguments that Givens fails to
disclose a processor that compensates an inelastic gamma ray count rate for
neutron transport effects to be persuasive. Appeal Brief 11-13. Appellant
argues that Givens teaches stripping higher energy inelastic gamma-ray
radiation from lower energy inelastic gamma-ray radiation and concludes
that Givens fails to disclose the claimed processor. Appeal Brief 12-13.
However, the Examiner shows where Givens discloses a processor that
Appeal 2009-010232
Application 11/467,692

7
compensates for an inelastic gamma ray count rate and therefore addresses
the Appellant‟s contention that Givens does not disclose the claimed
processor. Answer 10-13.

CONCLUSIONS
The Examiner did not err in rejecting claims 1, 2, 4-7 and 13-17.

DECISION
The Examiner‟s rejection of claims 1, 2, 4-7 and 13-17 is affirmed.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

Appeal 2009-010232
Application 11/467,692

8
BAUMEISTER, Administrative Patent Judge, CONCURRING-IN-PART:

I concur with the Majority‟s affirmance of claims 1, 2, 4, 6, 7, and 13-
16. I respectfully dissent from the Majority‟s affirmance of claims 5 and 17.

CLAIMS 1, 2, 6, 7, 13, 14, AND 16
I agree with the Majority‟s conclusion that neither claim 1, nor
Appellant‟s Specification, either requires that the neutron source and neutron
detector be integral, or otherwise limits the relative positions of these two
components (Majority Op. 6). As such, I agree with the Majority that
Givens discloses every limitation of independent claim 1, and that In re
Meyer provides legal precedent for affirming an obviousness rejection in
such a case (id.).
I write separately because I disagree with the Examiner‟s finding that
providing the neutron source and detector so as to be either integral or
spaced apart are functionally equivalent arrangements (cf. Majority Op. 5).
Appellant provides persuasive evidence that these two arrangements produce
non-equivalent effects (App. Br. 10, citing Givens col. 3, ll. 9-13, “Such a
fast neutron detector 39 is spaced from the neutron source 15 so that it does
not go into a state of saturation at the burst repetition rate of the neutron
source, but rather produces an output that is a linear measure of source
output”). As such, I find the Examiner‟s reliance on Japikse to be
inappropriate.

Appeal 2009-010232
Application 11/467,692

9
CLAIMS 4 AND 15
I agree with the Majority‟s decision affirming the Examiner‟s
rejection of claims 4 and 15 (Majority Op. 5-6). The Examiner cites to a
passage of Givens that purports to teach the claim limitation (Ans. 3),
2
and
Appellant merely contends that Givens does not teach the limitation,
without providing any reasoning (App. Br. 11-12; see also Reply Br. 1-4).

CLAIMS 5 AND 17
I would reverse the Examiner‟s rejection of claims 5 and 17. The
Examiner cites only Givens, col. 3, ll. 35-49 as teaching this limitation (Ans.
4). In contrast to Appellant‟s treatment of claims 4 and 11 (discussed
supra), Appellant does provide reasoning for why Givens fails to teach the
language of claims 5 and 17. For example, Appellant argues that the cited
passage does not disclose, inter alia, a thermal capture gamma ray count rate
at the gamma rate detector, but that this passage of Givens instead “teaches
removing the influence of higher energy [inelastic gamma-ray] radiation of
nickel from lower energy [inelastic gamma-ray] radiation of copper by
stripping the copper radiation measurement of any nickel radiation” (App.
Br. 12). I find this argument to be sufficient to warrant our limited de novo
review of whether Givens does, in fact, teach or suggest the language recited
in claims 5 and 17. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).

2
Although the Examiner responds, “Clearly, the claimed inelastic gamma
rays are equivalent to the gamma rays taught by the Givens reference” (Ans.
11), I understand the Examiner to be intending to say that the noted claim
language and portion of Given‟s disclosure are synonymous—not
equivalent.
Appeal 2009-010232
Application 11/467,692

10
A review of the passage of Givens cited by the Examiner indicates
that Givens does not expressly recite the disputed claim language, and the
Examiner has not set forth any reasonable explanation in support of the
conclusion that Givens‟ process of stripping high energy inelastic gamma
ray radiation reads on claim 5‟s requirement of computing the compensated
inelastic gamma rag count rate using, inter alia, a thermal capture gamma
ray count rate of the gamma ray detector (see Ans. 4, 11-12).

kis