Ex Parte Muenster et al

Patent Trial and Appeal Board

Sep 23, 2014

12906437 (P.T.A.B. Sep. 23, 2014)

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.
12/906,437 10/18/2010 Matthias MUENSTER 1021/0148PUS1 1092
60601 7590 09/23/2014
Muncy, Geissler, Olds & Lowe, P.C.
4000 Legato Road
Suite 310
FAIRFAX, VA 22033
EXAMINER
ARTMAN, THOMAS R
ART UNIT PAPER NUMBER
2882
MAIL DATE DELIVERY MODE
09/23/2014 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 MATTHIAS MUENSTER, JOERG NITTIKOWSKI,
PIA DREISEITEL, ANDREAS MADER, RAINER HEINKEL,
THOMAS RIES, DIRK NAUMANN, and UWE SIEDENBURG
____________

Appeal 2013-000629
Application 12/906,437
Technology Center 2800
____________

Before TERRY J. OWENS, PETER F. KRATZ, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1–7. We have jurisdiction under 35 U.S.C. § 6.
Claim 2 is illustrative of the claimed subject matter (emphasis added):
2. An apparatus comprising:
a transport device conveying through a radiation tunnel;
radiation sources arranged around the transport device that are
configured to emit rays in at least three radiation planes;
a detector unit that is associated with each of the radiation sources;
and
an evaluation unit that includes a computer that has software, the
software being configured to:
produce an image from intensities of unabsorbed radiation; and
classifying the produced image with respect to areas of intensity of
said unabsorbed radiation,
wherein, if areas of substantially constant intensity of said
unabsorbed radiation are determined, a material detection is carried out in
each of the areas of substantially constant intensity of said unabsorbed
radiation according to an algorithm which calculates a three-dimensional
reconstruction from different views and via the estimation of the attenuation
coefficient.

Appellants appeal the following rejection as set forth in the Final
Office action:
Claims 1–7 are rejected under 35 U.S.C. § 102(b) as being anticipated
by Krug (US 6,088,423, patented July 11, 2000).

OPINION
We REVERSE the Examiner’s prior art rejection of claims 1–7 under
35 U.S.C. § 102(b).
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We enter the following NEW GROUNDS OF REJECTION pursuant
to our authority under 37 C.F.R. § 41.50(b).1

REJECTION UNDER § 112(b) - Indefiniteness
Claims 1–7 are rejected under 35 U.S.C. § 112(b), as indefinite for
failing to particularly point out and distinctly claim the subject matter which
the inventor or a joint inventor regards as the invention.
Claims are in compliance with 35 U.S.C. § 112(b) if “the claims, read
in light of the specification, reasonably apprise those skilled in the art both
of the utilization and scope of the invention, and if the language is as precise
as the subject matter permits.” Hybritech, Inc. v. Monoclonal Antibodies,
Inc., 802 F.2d 1367, 1385 (Fed. Cir. 1986) (citing Shatterproof Glass Corp.
v. Libbey-Owens Ford Co., 758 F.2d 613, 624 (Fed. Cir. 1985)).
Both claims 1 and 2 require a step/computer software to carry out a
material detection in portions, or areas, of an image that are “of substantially
constant intensity of the unabsorbed radiation” when such portions or areas
having “substantially constant intensity” are determined to be present.
Appellants’ Specification does not explicitly use the term “substantially
constant intensity,” rather, it states:
The addition of the unabsorbed intensities produces the profile
for an object 1 as shown in FIG. 4. It is checked here whether
or not highly complex, simple areas E are present in which the
summed values of the intensities change only slightly or not at
all.

(Spec. ¶ [00021]; emphasis added.)

1 We limit our discussion to independent claims 1 and 2. Our analysis
applies to all of the appealed claims.
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Since there is no guidance as to what the term “change[s] only
slightly” encompasses, Appellants’ Specification does not provide adequate
guidance as to what constitutes “substantially constant intensity of the
unabsorbed radiation.” Absent this guidance, we are unable to determine the
metes and bounds of the subject matter of independent claims 1 and 2.2
Additionally, we construe “an evaluation unit . . . that has software . . .
configured to” perform various functions, as recited in independent claim 2,
as a “means-plus-function” limitation subject to 35 U.S.C. § 112, sixth
paragraph, and conclude that the Specification’s failure to disclose an
algorithm corresponding to the recited functions renders the claim indefinite
under 35 U.S.C. § 112, second paragraph (see, e.g., Ex parte Lakkala, 2013
WL 1341108, *2 (PTAB 2013) (informative), where the PTAB held that “a
processor . . . configured . . .to” perform various functions is a means-plus-
function limitation). Likewise claim 1’s “carrying out a material detection”
step is construed as “step-plus-function” limitation, and is similarly
indefinite.
This limitation does not include the word “means,” thus a rebuttable
presumption exists that this limitation is not a means-plus-function
limitation. Mass. Inst. of Tech. & Electronics for Imaging, Inc. v. Abacus
Software, 462 F.3d 1344, 1353 (Fed. Cir. 2006). This presumption can be
overcome, however, if the limitation “fails to recite sufficiently definite
structure or else recites function without reciting sufficient structure for
performing that function.” Id. (citation and internal quotation marks
omitted.) That is the case here. Although the limitation recites an

2 The Examiner made a similar rejection over the original claim term
“simple areas of low complexity.”
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evaluation “unit,” this generic term usually does “not connote sufficiently
definite structure.” Id. at 1354. Nothing in the claim at issue or Appellants’
written description persuades us the term suggests any structure; in fact, the
term “unit” seems little more than a synonym for “means for.” See id.
(explaining “that Section 112 ¶ 6 does not apply to ‘a term that is simply a
nonce word or a verbal construct that is not recognized as the name of
structure and is simply a substitute for the term ‘means for.” (citation
omitted)). As the claim is devoid of language that provides the requisite
structure, we conclude the “evaluation unit” limitation is a means-plus-
function limitation.
Notably, while claim 2 requires that the software carry out the
material detection “according to an algorithm” and by an “estimation of an
attenuation coefficient,” the Specification does not appear to sufficiently
disclose either the algorithm or how the attenuation coefficient software is
estimated.
In light of this conclusion, we next consider whether Appellants’
written description contains corresponding structure for the “evaluation unit”
limitation. Cf. Aristocrat Techs Austl. Pty Ltd. v. Int'l Game Tech., 521 F.3d
1328, 1331 (Fed. Cir. 2008). In computer-implemented inventions such as
the one at issue, the corresponding structure must include an “algorithm that
transforms [a] general purpose microprocessor to a special purpose computer
programmed to perform the disclosed algorithm.” Id. at 1338 (citation and
internal quotation marks omitted.) Appellants’ Specification states:
If simple areas E are found, then the further evaluation
occurs according to an algorithm, which calculates a three-
dimensional reconstruction of object 1 to be examined from the
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different views and performs a material detection by estimation
of the attenuation coefficient μ.
To this end, first a layer S to be examined is selected,
which extends through the area E of simple complexity. The
area to be examined in layer S is divided into a voxel grid V.
The individual voxels in this regard can be block-shaped with
an edge length of about 3.5 mm and a depth that corresponds to
the width of a detector row. The number of voxels to be
examined is determined before the evaluation. Depending on
the position of radiation sources 3.1-3.4 and the selected area,
the passage length of the x-rays through the selected voxels is
then determined. With use of the passage length as an
absorption thickness, finally the attenuation coefficient μ is
determined by using the high-energy radiation with the aid of
the absorption equation. The attenuation coefficient μ is
characteristic for the materials to be detected during the
inspection.
In the images of objects, classified as complex, an
algorithm is used to determine the material from the ratio of the
absorption values at different x-ray energies.

(Spec. ¶¶ [00022]–[00024].)

The algorithm per se is not disclosed, and there is inadequate
description of how to estimate the attenuation coefficient. Accordingly, this
limitation lacks corresponding structure and is therefore indefinite under
35 U.S.C. § 112 (b).
For all of the foregoing reasons, the scope of the claimed invention
cannot be determined.
Accordingly, on this record, claims 1–7 are indefinite for the reasons
given above.
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REJECTION UNDER § 102(b)
Having determined that the subject matter of claims 1–7 is indefinite,
we are unable to determine the propriety of the prior art rejection of these
claims. The review of the rejection of claims 1–7 under 35 U.S.C. § 102
would require considerable speculation as to the scope of the claims. Such
speculation would not be appropriate. In re Steele, 305 F.2d 859, 862
(CCPA 1962). We, therefore, procedurally reverse the rejection of claims
1–7 under 35 U.S.C. § 102. We emphasize that this is a technical reversal of
the rejection under 35 U.S.C. § 102, and not a reversal based upon the merits
of the rejection.

ORDER
The Examiner’s rejection of claims 1–7 under 35 U.S.C. § 102(b) as
anticipated over Krug is reversed.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (2012), which states that “[a] new ground of rejection
. . . shall not be considered final for judicial review.”
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION,
Appellant must exercise one of the following two options with respect to the
new ground of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the prosecution will be remanded to the examiner. . . .

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(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record.

REVERSED
37 C.F.R. § 41.50(b)

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