Ex parte NELVIG

Board of Patent Appeals and Interferences

Apr 21, 1998

08157028 (B.P.A.I. Apr. 21, 1998)

Application for patent filed December 1, 1993. 1
Appellant is claiming priority for International Application
PCT/SE92/00369, filed January 6, 1992, under 35 U.S.C. § 371.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte PER NELVIG
__________
Appeal No. 96-4055
Application No. 08/157,0281
__________
ON BRIEF
__________
Before KRASS, FLEMING and TORCZON, Administrative Patent
Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 16 through 32, all of the claims pending in the
application.
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Application No. 08/157,028
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The invention pertains to a method and apparatus for
imaging an object with X-ray radiation.
Representative independent claim 16 is reproduced as
follows:
16. An X-ray imaging apparatus comprising:
sensing means for generating electric signals in response
to X-ray radiation;
means for generating X-ray radiation towards said sensing
means;
interface means coupled to said sensing means for
receiving said electric signals and generating a first
interface signal when said sensing means detects X-ray
radiation and generating a distinct second interface signal
when said sensing means does not detect X-ray radiation; and
means coupled to said interface means for displaying an
image.
The examiner relies on the following reference:
Franke 4,035,650 Jul. 12,
1977
Claims 16 through 31 stand rejected under 35 U.S.C. 112,
first and second paragraphs, for, respectively, relying on a
specification which fails to support the invention as it is
now claimed and being indefinite. Claims 24 through 28 stand
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further rejected under 35 U.S.C. 103 as unpatentable over
Franke. Claim 32 stands rejected under 35 U.S.C. 102(b) as
anticipated by Franke.
The final rejection of claims 16 through 23 and 29
through 31 based on prior art has been withdrawn by the
examiner.
Reference is made to the briefs and answer for the
respective positions of appellant and the examiner.
OPINION
Turning first to the rejection of claims 16 through 31
under 35 U.S.C. 112, first paragraph, as relying on a
specification which fails to support the invention as is now
claimed, we will not sustain this rejection.
The examiner contends, at pages 4-5 of the answer, that
[t]he disclosure teaches that there are two distinct
sets of sensors, a first set that generates image
signals and a second set that generates the two
control signals. It is realized that the second set
may be on the same side of the circuit board as the
first set; but they, nonetheless, serve distinct
functions. The instant claims, however, recite only
one set of sensors that generates both the image
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signals and the two control signals, and this
constitutes new matter.
Since the instant claims do not recite or require two
sets of sensors, the examiner’s rationale is not only unclear
but we fail to find anything therein which would constitute an
offense against the written description portion of 35 U.S.C.
112.
The examiner’s objection becomes a little clearer in the
response to appellant’s arguments. At page 6 of the answer,
the examiner explains that signals from elements 2-4 are used
to measure X-ray intensity and
there is no disclosure that they also generate image
signals. The disclosed interface has no image
signal input, no means for processing image signals
and, most importantly, no means for outputting image
signals as recited in claim 16. There is no
teaching ... that the interface is coupled to means
for displaying an image ...
If the examiner is troubled by a perceived lack of
disclosure of a means for displaying an image, there is clear
support for such a recitation in original claims 6 and 8, for
example, or, for example, in the last paragraph of page 1 of
the specification. The sensing means for generating electric
signals in response to X-ray radiation is disclosed as either
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detector diodes 2-4 on a CCD or the CCD itself. The interface
means is shown in Figure 3 and adequately described at pages 6
et seq. of the specification. The means for displaying the
image has clear support as noted supra. Accordingly, we find
no problem with adequate support for that which is now
claimed. Thus, we do not agree with the examiner that claims
16 through 23 contain some language which does not have
support in the original disclosure.
With regard to claims 24 and 27, the examiner states that
these claims “attribute a different meaning to the terms
‘sensing member’ than does the specification” [answer-page 6].
The examiner explains that the specification employs the term
“image sensing member” but that when describing the elements
for producing control signals, these elements are described as
“sensing elements.” Therefore, the examiner explains, there
“is no teaching in the original disclosure for generating
first and second control signals from the ‘sensing member’
output as recited in claims 24 and 27” [answer-page 7].
The skilled artisan would have had no problem in
understanding that appellant did, indeed, have possession of
the invention, as is now claimed, at the time of filing.
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Clearly, the term, “sensing member,” appearing in the preamble
of claim 24, was employed broadly to define the combination of
the “sensing means” and the “interface means.” The
specification clearly describes this combination of elements
and we find no new matter in describing the combination as a
“sensing member.” Even so, appellant attempted to amend the
language “sensing member” to read “dental X-ray apparatus” but
the examiner refused entry of this narrowing amendment.
Similarly, with claim 27, we find no new matter in the
recitation of a “sensing member.” We agree with appellant
[bottom of page 4-principal brief] that the invention, as
originally disclosed, allows for a CCD cell to serve as an
image sensing member and a sensing element. The CCD cell
causes the generation of first and second control signals as
claimed [see, for example, the bottom of page 9 to the end of
the first full paragraph on page 10 of the specification].
With regard to claim 29, contrary to the examiner’s
assertion that there is no disclosure that the same detector
generates both X-ray detection signals and X-ray imaging
signals, the disclosed CCD cell does generate signals during
synchro-nization and also generates image signals.
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The examiner’s rejection of claims 16 through 31 under
the first paragraph of 35 U.S.C. 112 is reversed.
Turning now to the rejection of claims 16 through 31
under 35 U.S.C. 112, second paragraph, the examiner contends
that the claims are “incomplete as they fail to define how the
first and second signals are related to the rest of the
claimed invention” [answer-page 5], noting that the recited
signals are not image signals, as claimed.
Our review of the claims finds no indefiniteness as
contended by the examiner. We agree with appellant’s
arguments set forth at pages 5-7 of the principal brief and
adopt the same as our own in countering the examiner’s
rejection of claims 16 through 31 under 35 U.S.C. 112, second
paragraph. All elements of the claims are clearly
interconnected. To the extent that the examiner bases the
indefiniteness rejection on the alleged deficiencies set forth
in the rejection under 35 U.S.C. 112, first paragraph, we also
disagree for the reasons, supra, regarding the reversal of
that rejection.
Accordingly, the rejection of claims 16 through 31 under
35 U.S.C. 112, second paragraph, is reversed.
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We now turn to the rejection of claim 32 under 35 U.S.C.
102(b) based on Franke.
We will sustain this rejection.
The examiner presents, in our view, a prima facie case of
anticipation, explaining, quite convincingly, at pages 8-9 of
the answer, how Franke discloses the method set forth in
instant claim 32. While the examiner recognizes that Franke’s
disclosure differs from that of the instant disclosed
invention, the subject matter of instant claim 32 broadly
reads on Franke.
Appellant argues [pages 8-9 of the principal brief] that
Franke fails to disclose the two claimed control signals.
However, as broadly claimed, we agree with the examiner’s
analysis of Franke and the application thereof to instant
claim 32. That is, a first control signal is generated at
capacitor 13 in Franke’s Figure 2 when the sensing member 8
detects X-rays; and a second control signal is generated at
the output of comparator 14 when the signal at capacitor 13
reaches the desired dose set by reference 20 which then causes
a deactivation of X-ray generation through the opening of
contacts 17 by relay 15.
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We note that, at page 10 of the principal brief and in
the reply brief, at pages 5-6, appellant cites In re Donaldson
Co., 16 F.3d 1189, 29 USPQ2d 1845 (Fed. Cir. 1994) for the
proposition that claims must be construed, in accordance with
35 U.S.C. 112, sixth paragraph, to cover the corresponding
disclosed structure and equivalents thereof. Taking this
together with the examiner’s statement, at page 8 of the
answer, that Franke’s device and appellant’s device “are
structurally quite different,” appellant contends that a
rejection of claims 24 through 26 under 35 U.S.C. 103, based
on Franke, is improper. As appellant apparently recognizes,
however, since appellant does not argue claims 27, 28 and 32
on this ground with any specifity. Donaldson construed the
language of the sixth paragraph of 35 U.S.C. 112 only with
respect to so-called “means-plus-function” language in claims.
Instant claims 27, 28 and 32 are directed to methods wherein
various steps of the methods are recited but there is no
“means-plus-function” language in these claims nor has
appellant explained how there is even any “step-plus-function”
language in the claims. See O.I. Corp. v. Tekmar Co., 115
F.3d 1576, 1583, 42 USPQ2d 1777, 1782 (Fed. Cir. 1997).
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For the reasons supra, we will sustain the rejection of
claim 32 under 35 U.S.C. 102(b).
Finally, we turn to the rejection of claims 24 through 28
under 35 U.S.C. 103 based on Franke. We will sustain the
rejection of claims 27 and 28 under 35 U.S.C. 103 but we will
not sustain the rejection of claims 24 through 26 under 35
U.S.C. 103.
Regarding claims 27, the examiner applies Franke in a
similar manner as applied to claim 32. However, the examiner
notes that claim 27 requires the generation of a first control
signal when the sensing member detects X-ray radiation and the
generation of a second control signal when the sensing member
does not detect X-ray radiation. As the examiner states, the
output of comparator 14, identified by the examiner as the
“second control signal,” is obviously maintained for some time
period after the “opening of relay 15 (which opening results
in termination of the x ray radiation) in order that the relay
does not relatch itself closed again” [answer-page 5].
Accordingly, the second control signal in Franke does exist
“when” the sensing member 8 does not detect X-ray radiation.
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To the extent appellant is raising a Donaldson issue
with regard to claim 27, at the top of page 11 of the
principal brief, by arguing that Franke is "structurally and
functionally distinct from the method of claim 27,” we
disagree. Talking about “structural” distinctions has no
place in a method claim since no structure is recited and any
structure which would perform the recited method steps would
meet the claim language even though that structure may differ
from the structure contemplated by appellant for performing
the claimed method. With regard to any “functional”
distinction, claim 27 is not in “step-plus-function” language.
The claim merely recites ordered steps for performing the
method of imaging an object.
With regard to claim 28, this claim requires the
positioning of the sensing member within an oral cavity to
allow for positioning a tooth between the sensing member and
an extra-oral source of radiation. Appellant argues that this
differs from Franke since Franke discloses the source of
radiation to be within the oral cavity and the sensing member
to be outside of the oral cavity. While we agree that this is
a difference, we agree with the examiner that it is not a
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patentable distinction. The skilled artisan would clearly
have realized, from prior experience at a dentist or from
recognizing equally obvious expedients, that the positions of
the source of radiation and the sensing member may be
exchanged, one for the other, with the same results, so long
as the body to be imaged [in this case, the tooth] is between
them.
Thus, we will sustain the rejection of claims 27 and 28
under 35 U.S.C. 103.
We will not, however, sustain the rejection of claims 24
through 26 under 35 U.S.C. 103 because these claims are in
“means-plus-function” form and appellant has invoked
Donaldson, alleging that the “means-plus-function” language of
these claims must be construed, in accordance with 35 U.S.C.
112, sixth paragraph, to cover that structure specifically
disclosed and equivalents thereof. Giving this restrictive
interpretation to the instant claim language, as urged by
appellant, there is clearly no suggestion in Franke for the
specific circuitry of instant Figure 3 or for the specific
arrangement of the sensing member depicted in Figures 1 and
2a-2c. We will interpret the claimed “interface means” to
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include that shown in Figure 3, plus equivalents thereof, and
we note that neither appellant nor the examiner has identified
any structure that should be interpreted as an “equivalent” to
the structure of Figure 3. Similarly, with regard to these
claims, we interpret the “sensing means” to include only that
which is specifically shown in Figures 1 and 2a-2c, and
equivalents thereof, noting, again, that neither appellant nor
the examiner has identified “equivalents.”
CONCLUSION
We have reversed the rejection of claims 16 through 31
under both first and second paragraphs of 35 U.S.C. 112. We
have also reversed the rejection of claims 24 through 26 under
35 U.S.C. 103, based on a restrictive interpretation of the
claim language in accordance with 35 U.S.C. 112, sixth
paragraph, and Donaldson, as urged by appellant. We have,
however, sustained the rejection of claim 32 under 35 U.S.C.
102(b) and the rejection of claims 27 and 28 under 35 U.S.C.
103.
Accordingly, the examiner’s decision is affirmed-in-part.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
ERROL A. KRASS )
Administrative Patent Judge)
)
)
)
MICHAEL R. FLEMING ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
RICHARD TORCZON )
Administrative Patent Judge)
Appeal No. 96-4055
Application No. 08/157,028
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Robert F. Hargest
Young & Thompson
745 South 23rd Street
Suite 200
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