Ex Parte SklebitzDownload PDFBoard of Patent Appeals and InterferencesFeb 26, 200810153987 (B.P.A.I. Feb. 26, 2008) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte HARTMUT SKLEBITZ ____________ Appeal 2007-4143 Application 10/153,987 Technology Center 2800 ____________ Decided: February 26, 2008 ____________ Before JOSEPH F. RUGGIERO, ROBERT E. NAPPI, and KEVIN F. TURNER, Administrative Patent Judges. RUGGIERO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the Final Rejection of claims 1-8 and 10-19. Claim 9 has been canceled. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing on this appeal was conducted on February 13, 2008. Appeal 2007-4143 Application 10/153,987 We affirm-in-part and enter a new rejection pursuant to 37 C.F.R. § 41.50(b). Appellant’s claimed invention relates to a solid-state radiation detector which includes a carrier at a radiation beam entry side of the detector and a pixel matrix arranged proximate to the carrier. Further arranged proximate to the pixel matrix is a scintillator which converts incident radiation into radiation which can be processed by the pixel matrix. (Specification 2-4). Claim 1 is illustrative of the invention and reads as follows: 1. A solid-state radiation detector comprising: a carrier arranged at a radiation beam entry side of the detector; a pixel matrix arranged proximate to the carrier; and a scintillator arranged proximate to the matrix configured to convert incident radiation into a radiation that can be processed by the pixel matrix; the carrier being absorbent at least in a sub-range of a spectrum of the radiation that can be processed by the pixel matrix. The Examiner relies on the following prior art references to show unpatentability: Trauernicht US 5,753,921 May 19, 1998 Karellas US 5,864,146 Jan. 26, 1999 Nakanishi US 5,936,255 Aug. 10, 1999 Claims 1-8 and 10-19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Karellas in view of Nakanishi. 2 Appeal 2007-4143 Application 10/153,987 Claim 16 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Karellas in view of Nakanishi and further in view of Trauernicht. Rather than reiterate the arguments of Appellant and the Examiner, reference is made to the Brief and Answer for the respective details. Only those arguments actually made by Appellant have been considered in this decision. Arguments which Appellant could have made but chose not to make in the Brief have not been considered and are deemed to be waived [see 37 C.F.R. § 41.37(c)(1)(vii)]. ISSUES (i) Under 35 U.S.C § 103(a), with respect to appealed claims 1-8 and 10-19, would one of ordinary skill in the art at the time of the invention have found it obvious to combine Karellas and Nakanishi to render the claimed invention unpatentable? (ii) Under 35 U.S.C § 103(a), with respect to appealed claim 16, would one of ordinary skill in the art at the time of the invention have found it obvious to modify the combination of Karellas and Nakanishi by adding the teachings of Trauernicht to render the claimed invention unpatentable? PRINCIPLES OF LAW In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the Examiner to establish a factual basis to support the legal conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so doing, the Examiner must make the factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he examiner bears 3 Appeal 2007-4143 Application 10/153,987 the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Furthermore, “‘there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness’ . . . [H]owever, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007)(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). ANALYSIS With respect to the Examiner’s 35 U.S.C. § 103(a) rejection of appealed independent claim 1 based on the combination of Karellas and Nakanishi, Appellant asserts (Br. 8-15) that the Examiner has failed to set forth a prima facie case of obviousness since a valid line of reasoning for the proposed combination of references has not been established. After reviewing the arguments of record from Appellant and the Examiner, we are in general agreement with Appellant’s position as stated in the Brief. The Examiner proposes to modify the radiation detector disclosure of Karellas by applying the radiation absorbent teachings of Nakanishi. According to the Examiner (Ans. 4-5), since one of the goals of the disclosed invention of Karellas is to provide a high transmission of incident radiation while absorbing light other than the incident radiation, the skilled artisan would have been motivated and found it obvious to add absorbing 4 Appeal 2007-4143 Application 10/153,987 particles, such as Nakanishi’s color disclosed color centers, to the carrier substrate of Karellas. In our view, however, the radiation detector disclosed by Nakanishi in which absorbent color centers are formed in a special photoluminescent characteristic scintillator when irradiated with X-rays has little relevance to the detector of Karellas and, at best, provides only a disclosure that particles, such as color centers, which absorb radiation of a particular wavelength are known. We simply find nothing in the disclosure of Nakanishi, or any other evidence on the record before us, to support the Examiner’s conclusion of obviousness as to the claimed invention. As argued by Appellant (Br. 11), Nakanishi’s teaching of adding radiation absorbing elements to a radiation detector system is inapposite to the disclosed imaging substrate of Karellas since Karellas desires to minimize absorption at the substrate. We further agree with Appellant (Br. 11-12) that, to whatever extent the addition of radiation absorbent material to the detector of Karellas would be beneficial, the skilled artisan would find in Nakanishi only a teaching of adding absorbent material to the scintillator, not the carrier substrate. With the above discussion in mind, we fail to see how and in what manner the disclosure of Karellas would be modified by the radiation absorbing teachings of Nakanishi to satisfy the particular claimed combination which requires that the substrate, not the scintillator as taught by Nakanishi, have material which is absorbent to radiation that can be processed by the imaging pixel matrix. In our opinion, given the disparity of problems addressed by the applied Karellas and Nakanishi prior art references, and the differing solutions proposed by them, any suggestion or 5 Appeal 2007-4143 Application 10/153,987 teaching to combine them in the manner proposed by the Examiner could come only from Appellant’s own disclosure. In view of the above discussion, since we are of the opinion that the proposed combination of the Karellas and Nakanishi references set forth by the Examiner does not support the obviousness rejection, we do not sustain the Examiner’s stated rejection of independent claim 1, nor of claims 2-8 and 10-16 dependent thereon. We also do not sustain the Examiner’s separately stated 35 U.S.C. § 103(a) rejection of dependent claim 16 in which the Trauernicht reference is added to the combination of Karellas and Nakanishi to address the selenium layer scintillator feature of this claim. We find nothing, however, in the disclosure of Trauernicht which overcomes the innate deficiencies of Karellas and Nakanishi discussed supra.1 Turning to a consideration of the Examiner’s 35 U.S.C. § 103(a) rejection of separately argued independent claim 17 based on the combination of Karellas and Nakanishi, we note that, while we found Appellant’s arguments to be persuasive with the respect to the previously discussed Examiner’s rejections of appealed claims 1-8 and 10-16, we reach 1 The Examiner has also made reference (Ans. 5) to Trauernicht in relation to the plastic carrier limitation of appealed claims 10 and 11 although it is not part of the stated rejection. Although the application of the Trauernicht reference to claims 10 and 11 would not have affected the disposition of these claims in the present case, the Examiner is cautioned that references that are not part of the statement of a rejection may not be properly relied upon and will not be considered. “Where a reference is relied on to support a rejection whether or not in a ‘minor capacity,’ there would appear to be no excuse for not positively including the reference in the statement of the rejection.” In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970). 6 Appeal 2007-4143 Application 10/153,987 the opposite conclusion with respect to the rejection of claim 17. In addressing the language of independent claim 17, which does not contain the radiation absorbent carrier feature of claim 1 but, rather, adds the feature of a reinforced housing for the radiation detector, the Examiner directs attention to the disclosure of Karellas at column 26, lines 19-23. We find no error in the Examiner’s finding (Ans. 4, 6, and 7) that the cited portion of Karellas which discloses the addition of a reinforced carbon layer to the detector carrier satisfies the “reinforced housing” limitation of claim 17. We also find Appellant’s arguments in response to be without merit as not being commensurate with the scope of claim 17. Although Appellant contends (Br. 17-18) that the broadest reasonable interpretation of the term “housing” would be a structure which is an enclosure or an encasement, we find no support in Appellant’s Specification or drawing figure which would form a basis for such an interpretation. As argued by the Examiner (Ans. 7), the reinforcing carbon layer disclosed by Karellas satisfies Appellant’s own proffered definition of “housing” as something that “covers or protects.” We take note of the fact that although the Examiner included claim 17 in the group of claims rejected based on the combination of Karellas and Nakanishi, the radiation absorbent carrier limitation, for which the Examiner has relied upon Nakanishi, is not present in claim 17. Accordingly, in view of the above discussion, we find that the Examiner’s 35 U.S.C. § 103(a) rejection of independent claim 17, as well as dependent claims 18 and 19 not 7 Appeal 2007-4143 Application 10/153,987 separately argued by Appellant, is sustainable based on the teachings of Karellas alone.2 REJECTION UNDER 37 CFR § 41.50(b) We make the following new ground of rejection using our authority under 37 CFR § 41.50(b). Independent claim 1 is rejected under 35 U.S.C. § 102(b) as being anticipated by Karellas. As illustrated in Figure 25B and described beginning at column 25, line 39, Karellas discloses a radiation detector 840 including a carrier 844 arranged at the radiation beam (842) entry side of the detector, a pixel matrix 846 arranged proximate to the carrier 844, and an incident radiation converting scintillator 848 arranged proximate to the pixel matrix 846. Further, the carrier structure of Karellas includes material which is absorbent in a sub-range of a spectrum of the radiation that can be processed by the pixel matrix as claimed. This carrier structure takes the form of a reinforcing carbon layer as described by Karellas at column 26, lines 19-23. We further note that, although the Karellas reference has been applied only against independent claim 1, this is not to be taken as an indication of the patentability of the other claims on appeal. In any resumption of the prosecution of this application before the Examiner, the Examiner should consider the applicability of the applied prior art as well as the other prior art 2 The Board may rely on less than all of the references applied by the Examiner in an obviousness rationale without designating it as a new ground of rejection. In re Bush, 296 F.2d 491, 496, 131 USPQ 263, 266-67 (CCPA 1961); In re Boyer, 363 F.2d 455, 458 n.2 150 USPQ 441, 444 n.2 (CCPA 1966). 8 Appeal 2007-4143 Application 10/153,987 of record and any other discovered prior art, to all of the appealed claims 1-8 and 10-19. CONCLUSION In view of the foregoing, we reverse the Examiner’s 35 U.S.C. § 103(a) rejection of claims 1-8 and 10-16, but we sustain the Examiner’s 35 U.S.C. § 103(a) rejection of claims 17-19. A new rejection of independent claim 1 under 35 U.S.C. § 102(b) is entered pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides [a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review. 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, 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 proceeding will be remanded to the examiner.... (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record.... 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). 9 Appeal 2007-4143 Application 10/153,987 AFFIRMED-IN-PART 37 C.F.R. § 41.50(b) eld SCHIFF HARDIN, LLP PATENT DEPARTMENT 6600 SEARS TOWER CHICAGO IL 60606-6473 10 Copy with citationCopy as parenthetical citation