Ex Parte Nye et al

Board of Patent Appeals and Interferences

Aug 25, 2011

11223238 (B.P.A.I. Aug. 25, 2011)

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.
11/223,238 09/09/2005 Jonathon Andrew Nye 00300-0045 1088
96854 7590 08/25/2011
Bell & Manning, LLC
122 E. Olin Avenue, Suite 290
Madison, WI 53713
EXAMINER
MONDT, JOHANNES P
ART UNIT PAPER NUMBER
3663
MAIL DATE DELIVERY MODE
08/25/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JONATHON ANDREW NYE and
ROBERT JEROME NICKLES
____________________

Appeal 2010-001708
Application 11/223,238
Technology Center 3600
____________________

Before: CATHERINE Q. TIMM, MICHAEL W. O’NEILL, and
CHARLES N. GREENHUT, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-001708
Application 11/223,238
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 14-20, 26-28, and 32-35. App. Br. 2. The rejection of
claims 30 and 31 is not appealed and the Examiner is directed to cancel
these claims. See MPEP § 1215.03; see also Ex parte Ghuman, 88 USPQ2d
1478 (BPAI 2008). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to a target material for the production of 124I.
Claim 14, reproduced below, is illustrative of the claimed subject matter:
14. A target material for the production of 124I comprising
124Te-enriched aluminum telluride.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lambrecht US 5,019,323 May 28, 1991

Y. Sheh et. al, Low Engery Cyclotron Production and Chemical
Separation of “No Carrier Added”Iodine-124 from a Reusable, Enriched
tellurium-124 Dioxide/Aluminum Oxide Solution Target, 88 Radiochim.
Act, 169-173 (2000) (hereinafter “Sheh”).
D.J. Schlyer, Production of Radioactive Iodine, Tech. Meeting of Project
Counterparts on Cuclotron Production, Aug. 8, 2001 (hereinafter
“Schlyer”).
S.M. Qaim et. al, Some optismisation Studies Releavant to the Production
of High-purity 124I and 120gI at a Small-sized Cyclotron, Applied Radiation
and Isotopes 58, 69-78 (2003) (hereinafter “Qaim”).

Appeal 2010-001708
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3
REJECTIONS
Claim 28 is rejected under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement. Non-Final Rej. 21.
Claim 28 is rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention. Non-Final Rej. 3.
Claims 14, 32 and 35 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Schlyer. Ans. 4.
Claims 14-20, 32 and 35 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Qaim. Ans. 5.
Claims 15-20 and 26-28 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Schlyer and Qaim. Ans. 7.
Claim 33 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Qaim or Schlyer, Qaim and Lambrecht. Ans. 9.
Claim 34 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Qaim, or Schlyer, Qaim and Sheh. Ans. 10.

OPINION
Rejection of claim 28 under 35 U.S.C. § 112, first paragraph
Regarding claim 28, the Examiner found that the originally filed
Specification did not disclose a target material consisting of aluminum
telluride. Non-Final Rej. 3. According to the Examiner, Appellants’
disclosed target may include impurities such as other isotopes of tellurium,
such as 122Te and 123 Te. The Examiner reasons that the “consisting of”

1 The Examiner’s rejections under 35 U.S.C. § 112 are not repeated in the
Answer but we, like Appellants, presumethe Examiner is maintaining these
rejections, since the Examiner addresses them in response to Appellants’
argument. Reply Br. 3-5.
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Application 11/223,238
4
language of the claim excludes the presence of the impurity isotopes, and,
therefore, claim 28 is not supported by the Specification. Ans. 11-12.
We cannot say that the Examiner has provided adequate evidentiary
support for the advanced position.
First, the Examiner has provided no convincing evidence that 122Te
and 123Te, if present, are not present bonded with aluminum in the form of
aluminum telluride. The presence of 122Te and 123Te in 124Te-enriched
tellurium does not establish the presence of an ingredient other than
aluminum telluride in the target material.
Second, we agree with Appellants that Ex parte Davis, 80 USPQ 448,
449-50 (BPAI 1948)(holding “consisting of” has a special meaning when
drafting patent claims, “closing the claim to the inclusion of materials other
than those recited except for impurities ordinarily associated therewith,”) is
directly on point. App. Br. 4-5. Contrary to the Examiner’s suggestion, we
do not find Norian Corp. v. Stryker Corp., 363 F.3d 1321, 1331-32 (Fed.
Cir. 2004), which held infringement cannot be avoided by the addition of
completely unrelated subject matter when a claim uses “consists of”
language, particularly relevant to this situation.
The Specification states that “the inventors have identified aluminum
telluride (Al2Te3) as a superior target material” and describes “an aluminum
telluride target.” Spec. 5, paras. [0011]-[0012]. This is a sufficient
description to establish that the inventors possessed a target material that
consists exclusively of aluminum telluride except for impurities ordinarily
associated therewith. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (“[T]he test for sufficiency is whether the
disclosure of the application relied upon reasonably conveys to those skilled
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Application 11/223,238
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in the art that the inventor had possession of the claimed subject matter as of
the filing date.) (citations omitted).
For these reasons we reverse the Examiner’s rejection of claim 28
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.

Rejection of claim 28 under 35 U.S.C. § 112, second paragraph.
The Examiner contends that inclusion of claim 28 in the patent
“would force a redefinition of ‘target’ as any portion of a target, which
renders claim[] 28 [] indefinite through the poly-interpretability of ‘target.’”
Non-Final. Rej. 3-4; Ans. 12-13.
We do not agree.
The test for definiteness under 35 U.S.C. § 112, second paragraph is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).
Although the Examiner contends the term “target” is poly-
interpretable, the Examiner has not established one of ordinary skill in the
art could reasonably attribute to it multiple, incompatible meanings
rendering the scope of the claimed subject matter unclear. Claim 14 recites a
“target material” not a “target” and requires at least one element of that
material to be 124Te-enriched aluminum telluride. Claim 28 further limits the
target material of claim 14 by requiring aluminum telluride to be the only
element of the target material, more specifically aluminum telluride made
from at least 90% 124Te enriched tellurium. Claim 28 further limits the
target material of claim 14 and its meaning is reasonably clear. Thus, we
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cannot sustain the Examiner’s rejection of claim 28 under 35 U.S.C. § 112,
second paragraph, as being indefinite.

Rejections under 35 U.S.C. §§ 102 and 103
Whether based upon Schlyer, Qaim, or some combination thereof, in
each of the art rejections based on the prior art, the issue is substantially the
same. The issue is: Does the evidence support the Examiner’s finding that
aluminum telluride is inherently present in the targets of Schyler and/or
Qaim?
The Examiner and Appellants agree that both Schlyer and Qaim
disclose the mixing of substances in a target for the production of either 123I
or 124I that could potentially chemically react to form 124Te-enriched
aluminum telluride. However, neither Schlyer nor Qaim expressly discloses
that such a chemical reaction actually takes place. Moreover, neither Schlyer
nor Qaim provide any actual post-collision data regarding temperature or
even any specific processing parameters for either the process of forming the
target or the irradiation reaction for forming the iodine isotope using the
target, which would enable one to accurately determinate whether
substances react to form 124Te-enriched aluminum telluride.
Schlyer uses the same substances Appellants use to make aluminum
telluride, i.e., aluminum powder, and tellurium powder. However, as
pointed out by Appellants, there is no disclosure that the aluminum and
tellurium powders covalently bond to form aluminum telluride. Br. 10.
Qaim forms a target of TeO2 mixed with Al2O3. Qaim 70. Again, as pointed
out by Appellants, there is no disclosure of covalent bonding of aluminum
and tellurium to form aluminum telluride. Br. 21.
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The Examiner contends that due to both the environmental conditions
and the collisions of protons or deuterons, there will be sufficient energy to
raise the temperature, at least on a very localized scale, to a point at which a
chemical reaction takes place to yield at least a very small amount of 124Te-
enriched aluminum telluride in each of Schlyer and Qaim’s targets. Ans. 15-
18.
Appellants contend that even the largest amount of heating that would
occur due to both the environmental conditions and the collisions would still
not raise the temperature sufficiently to cause enough of the substances in
the targets of either Schlyer or Qaim to chemically react to form anything
more than an extremely miniscule amount of 124Te-enriched aluminum
telluride, if any is formed at all. App. Br. 10-17; Reply Br. 5-11. Relying
heavily on In re Seaborg, 328 F.2d 996 (CCPA 1964) and SmithKline
Beecham Corp. v. Apotex Corp., 403 F.3d 1331 (Fed. Cir. 2005), Appellants
contend such an amount would be insufficient to anticipate claim 14. Reply
Br. 6-7.
In Crown Packaging Technology, Inc. v. Ball Metal Beverage
Container Corp., 635 F. 3d 1373, 1383 (Fed. Cir. 2011) our reviewing court
stated:
“To anticipate a claim, a single prior art reference must
expressly or inherently disclose each claim limitation. . . . But
disclosure of each element is not quite enough—this court has
long held that ‘[a]nticipation requires the presence in a single
prior art disclosure of all elements of a claimed invention
arranged as in the claim.’” Finisar Corp. v. DirecTV Group,
Inc., 523 F.3d 1323, 1334-35 (Fed. Cir. 2008) (quoting Connell
v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir.
1983)). Moreover, inherent anticipation requires more than
mere probabilistic inherency, see Continental Can Co. USA v.
Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991), and more
Appeal 2010-001708
Application 11/223,238
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than the presence of an unrecognized de minimis quantity of
claimed substance in the prior art. See In re Seaborg, . . . 328
F.2d 996 (1964). But these cases “do not show that inherency
requires recognition” of the inherent element. See Schering
Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1377 (Fed. Cir.
2003).
In Schering Corp. v. Geneva Pharmaceuticals, 339 F. 3d 1373, 1378
(Fed. Cir. 2003), the Court distinguished cases dealing with “accidental,
unwitting, and unappreciated” anticipation, Eibel Process Co. v. Minn. &
Ontario Paper Co., 261 U.S. 45 (1923) and Tilghman v. Proctor, 102 U.S.
707 (1880), where the record did not conclusively establish that the prior art
produced the claimed subject matter, from cases in which the record
established that the claimed subject matter necessarily and inevitably was a
consequence of practicing a prior art process under the normal, as opposed
to hypothetical or unusual, conditions disclosed.
We recognize that it is not the PTO but Appellants that are in the best
position to prove that the targets that underwent Schlyer or Qaim’s process
do or do not actually include 124Te-enriched aluminum telluride. See, e.g., In
re Best, 562 F.2d 1252, 1254-55 (CCPA 1977). Nevertheless, Appellants
cannot be put to such a burdensome task until the Examiner has provided a
sufficient basis in fact and/or technical reasoning to support the
determination that more than a de minimis and unrecognizable quantity of
124Te-enriched aluminum telluride is necessarily present in Schlyer’s or
Qaim’s targets. Appellants cannot be required to verify the unverifiable.
This case is more similar to Seaborg, than SmithKline and Schering
because, in SmithKline and Schering, the record established that the
production of at least trace amounts of the claimed compound was a
necessary consequence of practicing the prior art process according to the
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normal conditions disclosed. As in Seaborg, the facts of record only
establish that given the right set of hypothetical circumstances, there is only
a possibility that some unknown, possibly very small, amount of 124Te-
enriched aluminum telluride may have actually been produced in Schlyer’s
or Qaim’s targets. The factors that influence whether the reaction to produce
124Te-enriched aluminum telluride would take place include, but are not
necessarily limited to, quantity and mixing of aluminum or aluminum oxide
and 124Te-enriched tellurium or tellurium oxide, time, temperature, and the
absence of other substances that would tend to discourage reaction. Since
neither Schlyer nor Qaim mention the composition or discuss the factors
influencing its production, if it was produced by either of their processes, it
was likely produced unwittingly and accidently and went entirely
unappreciated. The Examiner has not established that under the disclosed
operating circumstances more than a de minimis and unrecognizable
quantity of 124Te-enriched aluminum telluride necessarily resulted from
practicing Schlyer’s or Qaim’s processes.
The Examiner’s contention that the irradiation process produces the
dominant effect on heating (Ans. 15-18) essentially presumes that all the
kinetic energy of the collisions is applied to heating which results in the
breaking of chemical bonds of the tellurium and aluminum oxides and/or
forming chemical bonds between aluminum and tellurium. We agree with
Appellants that such a presumption ignores other mechanisms for dissipating
energy such as excitation of orbital electrons. Reply Br. 10; see also EVANS
ET. AL, THE ATOMIC NUCLEUS 656 (McGraw Hill 1955), Exhibit 8. While, at
least with respect to Schlyer, considering the masses cited by Appellants in
light of the molecular weight of aluminum telluride, Appellants
acknowledge that given the right set of circumstances at least a molecule of
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10
124Te-enriched aluminum telluride could be produced, this does not obviate
the Examiner’s burden of establishing that in the actual circumstances of
Schlyer at least a molecule of 124Te-enriched aluminum telluride must
necessarily be produced. To establish inherency the allegedly inherent
characteristic must be the natural result flowing from operation of the
Schlyer and Qaim as taught, not according to some undisclosed mode of
operation or according to certain undisclosed presumptions. See, e.g., In re
Oelrich, 666 F. 2d 578, 581 (CCPA 1981) quoting Hansgirg v. Kemmer, 102
F.2d 212, 214 (CCPA 1939).
We are thus constrained to reverse all of the Examiner’s rejections
under 35 U.S.C. §§ 102 and 103 since all of these rejections are based upon
an insufficient finding of inherency.

DECISION
For the above reasons, the Examiner’s rejection of claims 14-20, 26-
28, and 32-35 are reversed.

REVERSED

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