Ex Parte Munro et alDownload PDFPatent Trial and Appeal BoardOct 25, 201713531833 (P.T.A.B. Oct. 25, 2017) Copy Citation 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. 13/531,833 06/25/2012 John J. MUNRO III SPM-003US 8047 54004 7590 10/25/2017 MUIRHEAD AND SATURNELLI, LLC 200 FRIBERG PARKWAY SUITE 1001 WESTBOROUGH, MA 01581 EXAMINER KHAN, AMINA S ART UNIT PAPER NUMBER 1761 MAIL DATE DELIVERY MODE 10/25/2017 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 JOHN J. MUNRO III and KEVIN J. SCHEHR Appeal 2017-000791 Application 13/531,83s1 Technology Center 1700 Before CATHERINE Q. TIMM, DONNA M. PRAISS, and BRIAN D. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—8. We have jurisdiction. 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is Source Production & Equipment Co., Inc. Appeal Br. 2. Appeal 2017-000791 Application 13/531,833 STATEMENT OF THE CASE2 Appellants describe the invention as relating to a method of encapsulating a radioactive material (in particular, selenium-74) with a material that will not transmute into radioactive isotopes. Spec. 1, 9-10. Claim 1, reproduced below with emphasis added to certain key recitations, is the only independent claim on appeal and is illustrative of the claimed subject matter: 1. A method of manufacturing a gamma radiation source, comprising: providing an unacceptable material that is a combination of acceptable and unacceptable isotopes of the same element; transforming the unacceptable material into an acceptable material by removing unacceptable isotopes from the unacceptable material, leaving only acceptable isotopes; mixing selenium-74 and the acceptable material; and heating the mixture to cause the constituents to inter-react and subsequently subjecting the reaction product to irradiation to convert at least a proportion of the selenium-74 to selenium-75. Appeal Br. 9 (Claims App’x). REJECTION AND REFERENCES On appeal, the Examiner maintains the rejection of claims 1—8 under 35 U.S.C. § 103 as unpatentable over Shilton, U.S. Patent No. 6,875,377 Bl, issued April 5, 2005, in view of Menuhr et al., U.S. Patent No. 6,716,156 B2, issued April 6, 2004. Ans. 2. 2 In this opinion, we refer to the Final Office Action dated June 17, 2015 (“Final Act.”), the Appeal Brief filed January 27, 2016 (“Appeal Br.”), the Examiner’s Answer dated August 11, 2016 (“Ans.”), and the Reply Brief filed October 11, 2016 (“Reply Br.”). 2 Appeal 2017-000791 Application 13/531,833 ANALYSIS We review the appealed rejections for error based upon the issues identified by the Appellants and in light of the arguments and evidence produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”)). After considering the evidence presented in this Appeal and each of Appellants’ arguments, we are not persuaded that Appellants identity reversible error. Thus, we affirm the Examiner’s rejections for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. Appellants do not separately argue claims 2—8. We therefore limit our discussion to claim 1. Claims 2—8 stand or fall with that claim. 37 C.F.R. § 41.37(c)(l)(iv) (2013). The Examiner finds that Shilton teaches an encapsulating selenium- 74, heating the selenium and capsule material, and irradiating to convert at least a proportion of the selenium-74 to selenium-75. Ans. 2 (providing citations to Shilton). The Examiner finds that Shilton does not teach removing impurities from the capsule material. Id. at 3. The Examiner finds, however, that Menuhr teaches removing undesirable isotopes from a casing and concludes that it would have been obvious to modify Shilton by incorporating the aluminum isotope purification method of Menuhr because Menuhr teaches that removing undesirable isotopes is necessary to avoid undesired gamma rays. Id. (citing Menuhr 6:25—50). Appellants do not dispute the Examiner’s combination of the Shilton and Menuhr references. Reply Br. 2. Rather, Appellants argue that neither 3 Appeal 2017-000791 Application 13/531,833 reference teaches or suggests “providing an unacceptable material that is a combination of acceptable and unacceptable isotopes of the same element and transforming the unacceptable material into an acceptable material by removing unacceptable isotopes from the unacceptable material, leaving only acceptable isotopes and then, subsequently, subjecting to irradiation the resulting acceptable material combined with 74Se.” Appeal Br. 7. In particular, Appellants argue that Menuhr teaches eliminating undesirable isotopes “during the activation treatment” rather than eliminating undesirable material prior to mixing selenium-74 as recited in claim 1. Reply Br. 3^4. The preponderance of the evidence does not support Appellants’ interpretation of Menuhr. Rather, as the Examiner finds, Menuhr teaches reducing unacceptable material/undesirable isotopes “so as to not give rise to undesirable radiation. . . .” Ans. 5. In particular, Menuhr teaches that its alloying material “may be used in a form depleted of undesirable isotopes which during activation of the precursor nuclide give rise to undesirable radiation emitting isotopes.” Menuhr 6:34—38. A person of ordinary skill in the art would have understood from this disclosure that Menuhr is teaching removing undesirable isotopes ahead of time (rather than “during the activation treatment”) so that, during the activation treatment, there is no undesirable radiation. Menuhr is directed to a radioactive seed for treating, for example, cancer in humans. Id. at 1:5—32. In this context, we find it unlikely that a person having ordinary skill in the art would have read Menuhr as Appellants do—i.e., reading Menuhr as teaching that patients should be exposed to “undesirable radiation” by leaving the undesirable material producing undesirable radiation in place until treatment occurs. 4 Appeal 2017-000791 Application 13/531,833 Appellants also argue that the Specification defines “unacceptable material” as “one having having gamma rays with energies above 401 keV and a half life greater than 66 hours after radiation.” Reply Br. 3. Appellants, however, provide no explanation as to how the Specification provides such a definition. Rather, the Specification uses the word “unacceptable” more broadly. See, e.g., Spec. 14:13—15 (referring to 401 keV and 66 hour half-life as being “[i]n an embodiment” and stating “[o]f course, other criteria may be used for determining acceptable and unacceptable”). Given the language of claim 1 and the context provided by the Specification, we decline the invitation to read limitations from the Specification into the claim to construe “unacceptable” so narrowly. DECISION For the above reasons, we affirm the Examiner’s rejection of claims 1-8. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 5 Copy with citationCopy as parenthetical citation