Ex Parte MORF et al

Patent Trial and Appeal Board

Mar 20, 2015

12548245 (P.T.A.B. Mar. 20, 2015)

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.
12/548,245 08/26/2009 Daniel MORF VAR-08-050-US 6736
78145 7590 03/20/2015
Murabito, Hao & Barnes LLP (Varian)
Two North Market Street, Third Floor
San Jose, CA 95113
EXAMINER
HANNAHER, CONSTANTINE
ART UNIT PAPER NUMBER
2884
MAIL DATE DELIVERY MODE
03/20/2015 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DANIEL MORF and JUERGEN HEESE
____________

Appeal 2013-006214
Application 12/548,245
Technology Center 2800
____________

Before JEFFREY T. SMITH, GEORGE C. BEST, and
MICHELLE N. ANKENBRAND, Administrative Patent Judges.

ANKENBRAND, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants
1
appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The Invention
Appellants’ invention relates to beam characterization and methods
for determining beam parameters or characterizing radiotherapy beams.

1
Appellants identify Varian Corporation as the real party in interest. App.
Br. 1.
Appeal 2013-006214
Application 12/548,245

2
Spec. ¶¶ 1, 4. Claim 1 is representative of the claims on appeal, and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. A method for determining parameters of a beam
comprising:
receiving a beam at an image detection device;
generating and collecting charge, based on said receiving, at a
plurality of pixels of said image detection device;
determining values associated with at least one of a plurality of
parameters of said beam by integrating information supplied
from each of said pixels;
generating feedback that comprises a fluency map of said beam.
The References
Shu US 6,037,596 Mar. 14, 2000
Ghelmansarai US 2004/0158145 A1 Aug. 12, 2004
Yan US 2008/0031406 A1 Feb. 7, 2008

L.E. Antonuk et al., Large area amorphous silicon photodiode arrays
for radiotherapy and diagnostic imaging, A310 Nuclear Instruments
& Methods in Physics Research 460–464 (1991) (“Antonuk”).
The Rejections
1. Claims 12–19 are rejected under 35 U.S.C. § 112, ¶ 2 as being
indefinite;
2. Claims 1–6, 8, 10, 11, and 20 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Ghelmansarai;
3. Claims 12–14 and 16–18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ghelmansarai in view of Antonuk;
4. Claims 7 and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable Ghelmansarai, as applied to claim 1, and further in view of
Yan;
Appeal 2013-006214
Application 12/548,245

3
5. Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Ghelmansarai and Antonuk, as applied to claim 12, and further in view of
Yan; and
6. Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Ghelmansarai and Antonuk, as applied to claim 12, and further in view of
Shu.
OPINION
We affirm the Examiner’s rejection of claims 12–19 under 35 U.S.C.
§ 112, ¶ 2, and affirm the Examiner’s rejections of claims 1–20 under
35 U.S.C. § 103(a).
Rejection 1. The Examiner finally rejected claims 12–19 as
indefinite. Ans. 3. Appellant does not identify this rejection as being
appealed and presents no argument for its reversal. Accordingly, we
summarily affirm the rejection. See Hyatt v. Dudas, 551 F.3d 1307, 1314
(Fed. Cir. 2008) (explaining that summary affirmance without consideration
of the substantive merits is appropriate where an appellant fails to contest a
ground of rejection).
Rejection 2. The Examiner finally rejected claims 1–6, 8, 10, 11, and
20 as obvious over Ghelmansarai. Final Action (“Final Act.”) 3–5.
Appellants argue the claims as one group, relying on limitations
common to independent claims 1 and 20, and do not present any arguments
for the separate patentability of dependent claims 2–6, 8, 10, and 11. App.
Br. 5–6. We, therefore, limit our discussion to claim 1, which is
representative of the independent claims, and the remaining claims stand or
fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv) (2013).
Appeal 2013-006214
Application 12/548,245

4
The Examiner found that Ghelmansarai discloses all of the limitations
of claim 1, except Ghelmansarai does not explicitly disclose that beam
characteristic image 80 determined in step S303 is displayed on the one or
more monitors 43 of the operator station 40. Final Act. 3. The Examiner
determined, however, that it would have been obvious to one of ordinary
skill in the art at the time of Appellants’ invention to “add the step of
generating feedback in the form of beam characteristic image 80” using
software on processor 41 to determine the intensity map (beam characteristic
image 80) and the one or more monitors 43 to display the software operation
and results. Id. The Examiner further found that beam characteristic image
80, which represents the variation in intensities of the radiation field,
“constitutes a fluency map.” Id. at 9.
Appellants argue that the Examiner erred in finding that Ghelmansarai
describes or suggests a method for determining parameters of a beam that
includes generating feedback that comprises a fluency map of the beam, as
recited in claim 1. App. Br. 4–5. In particular, Appellants argue that
Ghelmansarai discloses a scintillation layer that generates light
corresponding to the intensity of the received light rays, which is used by an
imaging device to generate an image of the radiation field. Id. at 5.
Appellants further argue that intensity is distinct from fluence with different
dimensions, because intensity is “the quantity of visible light that is emitted
from a light source,” whereas fluence is “the total number of beam particles
that interest a unit area in a specific time interval of interest.” Id.; Reply Br.
2. Thus, argue Appellants, Ghelmansarai does not disclose or suggest a
fluency map. Id.
Appeal 2013-006214
Application 12/548,245

5
Appellants’ arguments are not persuasive for the well-stated reasons
provided by the Examiner in the Final Action and the Examiner’s Answer,
which we adopt. We add the following.
Although Ghelmansarai exemplifies an imaging device using a
scintillation layer, it is well-established that a reference is not limited to its
examples or preferred embodiments. Merck & Co. v. Biocraft Labs., Inc.,
874 F.2d 804, 807 (Fed. Cir. 1989). Instead, all disclosures therein must be
evaluated for what they would have fairly suggested to one of ordinary skill
in the art. In re Boe, 355 F.2d 961, 965 (CCPA 1966). Ghelmansarai
expressly discloses that the imaging device can comprise any type of
imaging device: “[f]or example, [x]-ray radiation may also be converted to
and stored as electrical charge without use of scintillator layer. In such
imaging devices, x-rays are absorbed directly by an array of amorphous
selenium photoconductors” that “convert the x-rays directly to stored
electrical charge that comprises an acquired image of a radiation field.”
Ghelmansarai ¶ 41. Ghelmansarai further discloses that radiation beam 55 is
not limited to visible light, but may comprise “any type of radiation,”
including electron radiation and x-ray radiation. Id. ¶ 51.
Further, as the Examiner found, the intensities that Ghelmansarai
describes for beam characteristic image 80 are “unequivocally of radiation
and not light.” Ans. 4–5 (citing Ghelmansarai ¶ 58). Ghelmansarai,
therefore, would have fairly suggested, to one of ordinary skill in the art, an
imaging device that generates beam characteristic image 80 corresponding to
the variation of intensities in the radiation field, not variations of intensities
in visible light. As such, the Examiner had a reasonable basis for finding
that beam characteristic image 80 is a fluency map. Ans. 5.
Appeal 2013-006214
Application 12/548,245

6
Additionally, Appellants’ arguments are based on limitations not
recited in the claim 1. That is, the method of claim 1 does not recite
“determining fluence” (i.e., the total number of particles of a beam that
intersect a unit area in a specific time interval of interest), and Appellants
have not argued persuasively that such an interpretation of claim 1 is
warranted.
Accordingly, we affirm the rejection of independent claims 1 and 20
under 35 U.S.C. § 103(a), as well as claims 2–6, 8, 10, and 11, which depend
from claim 1.
Rejection 3. The Examiner finally rejected claims 12–14 and 16–18
as obvious over the combination of Ghelmansarai and Antonuk. Final Act.
5–7.
Although the Examiner applied an additional reference to the
rejection, Appellants do not provide substantive arguments as to the separate
patentability of claims 12–14 and 16–18. Rather, Appellants rely on the
arguments presented with respect to claim 1. App. Br. 6–7.
Appellants’ arguments are not persuasive of reversible error in the
Examiner’s rejection for the same reasons expressed in connection with
claim 1. Accordingly, we affirm the rejection of claims 12–14 and 16–18
under 35 U.S.C. § 103(a).
Rejection 4. The Examiner finally rejected claims 7 and 9 as obvious
over the combination of Ghelmansarai, as applied to claim 1, and Yan. Final
Act. 7–8.
Although the Examiner applied an additional reference to the
rejection, Appellants do not provide substantive arguments as to the separate
Appeal 2013-006214
Application 12/548,245

7
patentability of claims 7 and 9. Rather, Appellants rely on the arguments
presented with respect to claim 1. App. Br. 7–8.
Appellants’ arguments are not persuasive of reversible error in the
Examiner’s rejection for the same reasons expressed in connection with
claim 1. Accordingly, we affirm the rejection of claims 7 and 9 under
35 U.S.C. § 103(a).
Rejection 5. The Examiner finally rejected claim 19 as obvious over
the combination of Ghelmansarai and Antonuk, as applied to claim 12, and
Yan. Final Act. 7–8.
Although the Examiner applied additional references to the rejection,
Appellants do not provide substantive arguments as to the separate
patentability of claim 19. Rather, Appellants rely on the arguments
presented with respect to claim 1. App. Br. 8–9.
Appellants’ arguments are not persuasive of reversible error in the
Examiner’s rejection for the same reasons expressed in connection with
claim 1. Accordingly, we affirm the rejection of claim 19 under 35 U.S.C.
§ 103(a).
Rejection 6. The Examiner finally rejected claim 15 as obvious over
the combination of Ghelmansarai and Antonuk, as applied to claim 12, and
Shu. Final Act. 8.
Although the Examiner applied additional references to the rejection,
Appellants do not provide substantive arguments as to the separate
patentability of claim 15. Rather, Appellants rely on the arguments
presented with respect to claim 1. App. Br. 9–10.
Appellants’ arguments are not persuasive of reversible error in the
Examiner’s rejection for the same reasons expressed in connection with
Appeal 2013-006214
Application 12/548,245

8
claim 1. Accordingly, we affirm the rejection of claim 15 under 35 U.S.C.
§ 103(a).
DECISION/ORDER
The Examiner’s rejection of claims 12–19 under 35 U.S.C. § 112, ¶ 2
is affirmed.
The Examiner’s rejections of claims 1–20 under 35 U.S.C. § 103(a)
are affirmed.
It is ordered that the Examiner’s decision 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).

AFFIRMED

sl