Ex Parte Sklebitz

Board of Patent Appeals and Interferences

Feb 26, 2008

10153987 (B.P.A.I. Feb. 26, 2008)

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
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Decided: February 26, 2008
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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.
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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
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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
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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
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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).

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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
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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).

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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).

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AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

eld

SCHIFF HARDIN, LLP
PATENT DEPARTMENT
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