Ex Parte Joung et al

Board of Patent Appeals and Interferences

Jul 10, 2012

10627844 (B.P.A.I. Jul. 10, 2012)

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.
10/627,844 07/25/2003 Jinhun Joung 2003P07969 US 2648
7590 07/10/2012
Elsa Keller
Siemens Corporation
Intellectual Property Department
170 Wood Avenue South
Iselin, NJ 08830
EXAMINER
MALEVIC, DJURA
ART UNIT PAPER NUMBER
2884
MAIL DATE DELIVERY MODE
07/10/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JINHUN JOUNG and SAMIR CHOWDHURY
____________________

Appeal 2010-004220
Application 10/627,844
Technology Center 2800
____________________

Before ROBERT E. NAPPI, ERIC S. FRAHM, and
RAMA G. ELLURU, Administrative Patent Judges.

ELLURU, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-004220
Application 10/627,844

2
Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 1-28, which constitute all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Introduction
According to Appellants, the invention relates to a “collimator device
for a nuclear imaging camera and a method of forming the same.” (Spec
1:8-10).

STATEMENT OF THE CASE

Exemplary Claim
Claim 1 is an exemplary claim and is reproduced below:
1. A collimator device for a nuclear imaging camera, comprising:
a grid of collimation square holes formed by a plurality of
sheets arranged in a grid pattern, each of said sheets having evenly
spaced slots into which other sheets are inserted;
optically reflecting material coating at least a portion of the
surfaces of said sheets forming said grid of said collimation square
holes; and
pixellated scintillators individually located in each of said
collimation square holes.

References
Nishiki US 4,725,734 Feb. 16, 1988
Hase US 5,099,134 Mar. 24, 1992
Melcher US 5,961,714 Oct. 5, 1999

Appeal 2010-004220
Application 10/627,844

3
Rejections
(1) Claims 1-7, 10-16, 19-25, and 28 stand rejected under
35 U.S.C. § 103(a) as being obvious over Soluri, Hase, and Nishiki.
(2) Claims 8, 9, 17, 18, 26, and 27 stand rejected under
35 U.S.C. § 103(a) as being obvious over Soluri, Hase, and Nishiki, and
Melcher.

ISSUE
In combining the Soluri, Hase, and Nishiki references to reject claims
1-7, 10-16, 19-25, and 28 as being obvious, the Examiner finds a motivation
to combine the references because “the [Hase] method of making [] a
collimator improves sensitivity, resolution and manufacturing yields.” (Ans.
4 (citing Hase 1:45-52)).
Appellants contend that the Examiner fails to identify a proper
motivation to combine the Soluri, Hase, and Nishiki references and make
three supporting arguments. (App. Br. 5, 9-13). First, Appellants argue that
the Hase objectives do not provide the proper motivation to form a
collimator device as recited by claim 1. (Id. at 10). Second, Appellants
argue that the Examiner cannot use “hindsight reconstruction” to combine
the references and that the identified motivation “consists of broad, general
statements of providing a „new and improved‟ collimator.” (Id. at 10).
According to Appellants, the references teach away from their combination,
emphasizing that Hase teaches the use of a conventional scintillation crystal
slab. (Id.) Third, Appellants argue that there was no motivation to modify
Appeal 2010-004220
Application 10/627,844

4
Hase according to Soluri because it would change the principle operation of
Hase. (Id. at 12).
In response to Appellants‟ first argument, the Examiner states that
Appellants cannot show nonobviousness by attacking references individually
where the rejections are based on a combination of references. (Ans. 7
(citing In re Keller, 642 F.2d 413 (CCPA 1981); In re Merck & Co., 800
F.2d 1091 (Fed. Cir. 1986)). The Examiner notes that Hase is relied upon to
solve the cumbersome process, as acknowledged by Appellants, of
fabricating the Soluri collimator. (Ans. 7). In response to Appellants‟
second argument, the Examiner states that “a broad and general reason is a
reason nonetheless.” (Id. at 6). Moreover, given the acknowledged
cumbersomeness of the Soluri fabrication, the Examiner relies on Hase to
show a known and different method for fabricating a collimator that
“provides high resolution and improves manufacturing yield which yields a
predictable result while proving a proper motivation.” (Id. at 7). In
response to Appellants‟ third argument, the Examiner asserts that the
rejection at issue modifies the teachings of Soluri to include the teachings of
Hase, and not the other way around as Appellants imply, and further that
Soluri is only modified to include the Hase teachings of manufacturing
and/or construction of the collimator. (Id. at 8).
Therefore, Appellants‟ arguments present us with the following issue:
Did the Examiner err in finding that a skilled artisan would combine
the teachings of Soluri, Hase, and Nishiki references to make a collimator as
claimed?

Appeal 2010-004220
Application 10/627,844

5
ANALYSIS
We have reviewed the Examiner‟s response, discussed above, and
conclude that the Examiner has provided a reasonable rationale for finding
that a skilled artisan would combine the teachings of Soluri, Hase, and
Nishiki. In addition to the Examiner‟s response, we note that we are
unpersuaded of error by Appellants‟ argument that the references “teach
away” (emphasis in original) from their combination because Hase must be
used with a single scintillation crystal slab, which does not satisfy the
limitations of the claimed inventions. (App. Br. 10-11).
A reference does not teach away if it merely expresses a general
preference for an alternative invention from amongst options available to the
ordinarily skilled artisan and the reference does not discredit or discourage
investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). Here, we do not find that the disclosure of Hase would
discourage the skilled artisan from the modification to Soluri proposed by
the Examiner. Rather, we concur with the Examiner‟s statement that “it
would have been obvious to one of ordinary skill in the art at the time the
invention was made to specify that the collimator disclosed in Soluri be
made such as that taught by Hase,” a method which “improves sensitivity,
resolution and manufacturing yields.” (Ans. 4 (citing Hase 1:45-52)). See In
re Keller, 642 F.2d 413, 425 (Fed. Cir. 1981) (explaining that the test for
obviousness does not require that the claimed invention be expressly
suggested in any one or all the references). Accordingly, Appellants‟
arguments have not persuaded us of error in the Examiner‟s rejection of
claims 1-7, 10-16, 19-25, and 28.
Appeal 2010-004220
Application 10/627,844

6
As Appellants‟ arguments directed to the rejection of claims 8, 9, 17,
18, 26, and 27 present the same issue discussed above (App. Br. 13), we are
similarly not persuaded of error in the Examiner‟s rejection of these claims.

DECISION
The Examiner‟s decision rejecting claims 1-28 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2010).

AFFIRMED

ELD