Ex parte Leblans et al.

Board of Patent Appeals and Interferences

Nov 28, 2000

08420562 (B.P.A.I. Nov. 28, 2000)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte PAUL LEBLANS,
PETER WILLEMS,
LUC STRUYE,
JOHANN-MARTIN SPAETH,
and
THOMAS PAWLIK
_____________
Appeal No. 1997-2937
Application No. 08/420,562
______________
HEARD: NOVEMBER 16, 2000
_______________
Before PAK, WALTZ, and TIERNEY, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
examiner’s refusal to allow claims 1 through 3, 5 through 8,
11 through 13 and 15 through 18 as amended subsequent to the
final rejection (see the amendment dated July 1, 1996, Paper
No. 8, entered as
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2
per the Advisory Action dated July 12, 1996, Paper No. 9).
Claim 19, the only other claim pending in this application,
has been objected to by the examiner and is not the subject of
this appeal (see Paper No. 9 and the Brief, page 2).
According to appellants, the invention is directed to a
method for recording X-rays by exposing a recording element
comprising an X-ray intensifying screen utilizing an
elpasolite phosphor having a specific formula (Brief, page 3).
Claim 1 is illustrative of the subject matter on appeal and a
copy of this claim is attached as an Appendix to this
decision.
Claims 1 through 3, 5 through 8, 11 through 13 and 15
through 18 stand rejected under 35 U.S.C. § 112, first and
second paragraphs, “as the claimed invention is not described
in such full, clear, concise and exact terms as to enable any
person skilled in the art to make and use the same, and/or for
failing to particularly point out and distinctly claim the
subject matter which applicant regards [sic, appellants
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Application No. 08/420,562
The final rejection of claims 3 through 5 and 13 through1
15 under § 112, second paragraph, was withdrawn by the
examiner in view of the amendment subsequent to the final
rejection (see the Advisory Action dated July 12, 1996, Paper
No. 9).
3
regard] as the invention.” (Answer, page 3). We reverse the1
examiner’s rejections essentially for the reasons stated by
appellants on pages 4-6 of the Brief and pages 1-3 of the
Reply Brief. We add the following comments for completeness.
OPINION
Since all of the claims on appeal have been rejected
under the first and second paragraphs of 35 U.S.C. § 112, we
begin our analysis with a determination of whether the claims
satisfy the requirements of the second paragraph. In re
Angstadt, 537 F.2d 498, 501, 190 USPQ 214, 217 (CCPA 1976); In
re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
It is well settled that the examiner bears the initial burden
of presenting a prima facie case of unpatentability. In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992).
“The legal standard for definiteness [under § 112, ¶2] is
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whether a claim reasonably apprises those of skill in the art
of its scope.” In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d
1754, 1759 (Fed. Cir. 1994). In other words, the inquiry is
whether the claims set out and circumscribe a particular area
with a reasonable degree of precision and particularity, taken
in view of the teachings of the prior art and the application
disclosure as interpreted by one of ordinary skill in the art.
See In re Angstadt, supra; In re Moore, supra. We note that
the examiner has advanced no reasons or evidence as to why one
of ordinary skill in the art would not be apprised of the
scope of the claims (Answer, pages 3-4). Therefore we
determine that the examiner has not met the initial burden of
proof. Accordingly, the examiner’s rejection of the claims on
appeal under the second paragraph of 35 U.S.C. § 112 cannot be
sustained.
Once having determined that the subject matter defined by
the claims is particular and definite, the analysis turns to
the first paragraph of § 112 to determine whether the
disclosure is enabling for the scope of the claimed subject
matter. In re Angstadt, supra; In re Moore, supra. When
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rejecting a claim under the enablement requirement of § 112,
the examiner again bears the initial burden of setting forth a
reasonable explanation as to why it is believed that the scope
of the protection provided by the claim is not adequately
enabled by the description of the invention provided in the
specification, including sufficient reasons for doubting any
assertions in the specification as to the scope of enablement.
In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513
(Fed. Cir. 1993).
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The examiner states that
[a]ppellants have not shown all elpasolites,
which have the claimed formula and where M is 3+
any trivalent ion and D is any dopant, will act
as either a prompt or a photostimulable phosphor;
nor that the elpasolites will function in the
claimed methods of using of claims 1 and 11.
[Answer, paragraph bridging pages 3-4].
The examiner finds that appellants have only exemplified one
composition as being a phosphor and also finds that the
phosphor art is “unpredictable.” (Answer, page 4). From
these findings, the examiner concludes that “the claims fail
to satisfy the requirements of 35 USC 112.” (Id.).
We determine that the examiner has not provided
sufficient and convincing reasons for doubting the assertions
in the specification. The examiner refers to the “art cited”
and a “few references” which show doped elpasolites with an
activation wavelength outside the X-ray wavelength range but
none of this evidence is presented in the Answer (Answer, page
5). The examiner states that unpredictability of a particular
art area alone may provide a reasonable doubt as to the
accuracy of a broad statement made in support of a broad claim
(id.). On the facts of this case, we disagree. “[T]o be
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enabling, the specification of a patent must teach those
skilled in the art how to make and use the full scope of the
claimed invention without ‘undue experimentation.’” In re
Wright, supra. Whether making and using the invention would
have required undue experimentation, and thus whether the
disclosure is enabling, is a legal conclusion based upon
several underlying factual inquiries. See In re Wright,
supra; In re Wands, 858 F.2d 731, 735, 736-37, 8 USPQ2d 1400,
1402, 1404 (Fed. Cir. 1988). Here the examiner has only made
the underlying factual finding that the art in question is
unpredictable. The examiner has failed to make the other
underlying factual inquiries suggested by In re Wands, 858
F.2d at 736-37, 8 USPQ2d at 1404.
Furthermore, the examiner has failed to show that any
experimentation necessary to practice the invention as claimed
would be “undue” and not routine, i.e., would “require
ingenuity beyond that to be expected of one of ordinary skill
in the art.” See In re Angstadt, 537 F.2d at 503-04, 190 USPQ
at 218-19. Even in an unpredictable art, Section 112 does not
require disclosure of a test with every species covered by a
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claim. Id. Additionally, appellants’ claims on appeal are
directed to methods for recording X-rays. Thus using
elpasolite phosphors within the claimed formula which are not
functional in the X-ray intensifying screen (claim 1) or the
photostimulable phosphor screen (claim 11) would not record X-
rays and therefore these phosphors would not be within the
scope of the claimed subject matter (Brief, page 4; Reply
Brief, page 2).
For the foregoing reasons, we determine that, on this
record, the examiner has not met the initial burden of
establishing the underlying factual inquiries to support the
legal conclusion of lack of enablement under the first
paragraph of Section 112.
Accordingly, we reverse the examiner’s rejection of the
claims on appeal under 35 U.S.C. § 112, first paragraph.
The decision of the examiner is reversed.
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OTHER ISSUES
Although claim 19 is not before us on appeal, we note
that claim 19 is an improper dependent claim (see 35 U.S.C. §
112, ¶4) since the value of x in independent claim 11 is
between 0 and 0.2 while the value of x in claim 19 is 1.0.
Compare the formula of the phosphor in claim 11 with the
formula of the phosphor in claim 19 (see the specification,
pages 4, 5 and 20). This inconsistency should be explained
and/or corrected upon the return of this application to the
jurisdiction of the examiner.
REVERSED
)
CHUNG K. PAK )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
THOMAS A. WALTZ )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MICHAEL P. TIERNEY )
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Administrative Patent Judge )
TAW:hh
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BREINER & BREINER
P.O. BOX 19290
ALEXANDRIA, VA 22320-0290
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APPENDIX
1. A method for recording X-rays comprising the steps of
i. exposing a recording element comprising an X-ray
intensifying screen in combination with a
photosensitive material to X-rays,
ii. recording the light emitted by said X-ray intensifying
screen in said photosensitive material, wherein said X-
ray intensifying screen comprises an elpasolite
phosphor corresponding to the general formula:

A B Me X :xD 2-y 1+y 63+
wherein: A is a monovalent metal ion selected from the group
consisting of Cs, Rb, K and Tl ions,
B is a monovalent metal ion selected from the group
consisting of Rb, K and Na ions,
A is different from B
r > r , r representing the ionic radius ofA B A
monovalent metal ion A, r the ionic radius of monovalentB
metal ion B
Me = a trivalent ion3+
D is a dopant
X is at least one of F, Cl, Br and I
O < y < 1
O < x < 0.2
and wherein said phosphor has a specific gravity (sg) > 4.
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