Ex Parte Sumiya et al

Board of Patent Appeals and Interferences

Feb 23, 2010

10357414 (B.P.A.I. Feb. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KEIJI SUMIYA, HIROYUKI ISHIBASHI,
HIDEO MURAYAMA, SHIGENORI SHIMIZU,
MASAAKI KOBAYASHI, and MITSURU ISHII
____________

Appeal 2009-003434
Application 10/357,414
Technology Center 1700
____________

Decided: February 23, 2010
____________

Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 5, 6, 8, 21, and 22 (Final Office Action
(“Final”), mailed May 5, 2005, 1), the only claims pending in the
Application. (Appeal Brief (“App. Br.”), filed Jul. 24, 2006, 2.) We have
jurisdiction under 35 U.S.C. § 6(b).
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We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION pursuant to 37 CFR § 41.50(b).
STATEMENT OF THE CASE
The Examiner maintains (Examiner’s Answer (“Ans.”), mailed Jan.
29, 2007, 3-5), and Appellants request review of (App. Br. 8), the following
grounds of rejection:
1. claims 5, 8(5), and 21 under 35 U.S.C. § 102(b) as anticipated
by WO 99/35512, published July 15, 1999 (“Zagumennyi”)1; and
2. claims 6, 8(6), and 22 under 35 U.S.C. § 103(a) as unpatentable
over Zagumennyi2.
The invention relates to a gadolinium silicon oxide (“GSO”) single
crystal and a scintillator for positron emission computed tomography
(“PET”). (Specification (“Spec.”) 1:7-10.)
CLAIM INTERPRETATION
Claim 5, the sole independent claim, is reproduced below from the
Claims Appendix to the Appeal Brief:
5. A Ce-activated GSO single crystal consisting essentially
of Gd, Ce, Me, Si and O, wherein Me represents Zr.

1 Appellants have not objected to the Examiner’s reliance on US 6,278,832,
issued Aug. 21, 2001, as the English language equivalent. (See App. Br. 3.)
All citations herein are to the US patent.
2 Appellants list only the first ground of rejection under the heading “(VI)
GROUNDS OF REJECTION TO BE REVIEWED ON APPEAL.” (See
App. Br. 3.) However, Appellant has clearly stated that all pending claims
are appealed (App. Br. 2) and further states that “[c]laims 6, 8, 21 and 22
stand or fall with claim 5” (App. Br. para. bridging 2-3.)

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Appellants contend that the transitional phrase “consisting essentially
of” (claim 5) precludes the presence of Lutetium (“Lu” or “L”) in the
claimed Ce-activated GSO single crystal. (App. Br. 6.) The Examiner
disagrees. (Ans. 5.)
In assessing a broadest reasonable claim construction where a
potentially exclusionary “consisting essentially of” transitional phrase is
involved, it is appropriate that Appellants bear the burden of: (1) showing
the basic and novel characteristics of their claimed invention, and (2)
establishing how those characteristics would be materially changed by any
allegedly excluded component of an applied reference. See In re DeLajarte,
337 F.2d 870, 873-74 (CCPA 1964).
Appellants rely on the 37 C.F.R. § 1.132 Declaration of Dr. Shigenori
Shimizu (“Shimizu Dec.”), a named inventor, to establish that the presence
of Lu materially affects the basic and novel properties of the invention.
(App. Br. 6-7; see also, App. Br. 10.)
According to the Specification, “[t]he GSO crystal is characterized in
that the fluorescent light-attenuation time thereof can be shortened by
increasing the Ce concentration, but it in turn suffers from a problem in that
the fluorescent output is deteriorated.” (Spec. 3:7-10.) Although the emitted
light attenuation curve of a GSO scintillator includes both Fast and Slow
Components, because the output ratio of the Slow Component in the
conventional GSO scintillator is about 20%, “the presence thereof does not
become a serious problem when the GSO scintillator is used in the PET,”
although reduction of the Slow Component output ratio is desirable. (Spec.
2:14-22.) The Specification thus states that “it is an object of the present
invention to provide a GSO single crystal whose fluorescence-attenuation
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time is short [and] whose output ratio of Slow Component is small.” (Spec.
3:17-19; see also Shimizu Dec. 2.)
Table A of the Shimizu Dec. provides a comparison of scintillator
characteristics of GSO:Ce (Comparative Sample), GSO:Ce,Zr (Example 3),
and LGSO:Ce,Zr (Comparative Example 2) single crystals.3 (App. Br. 7.)
Table A evidences that the addition of Zr to a GSO:Ce single crystal reduces
both fluorescence attenuation time and output ratio of the Slow Component.
(Compare Comparative Sample with Example 3.) Table A also evidences
that an LGSO:Ce single crystal containing Zr has a reduced output ratio of
the Slow Component, but a slower fluorescence attenuation time than a
GSO:Ce single crystal. (Compare Comparative Sample with Comparative
Example 2.)
The Examiner maintains that Appellants’ evidence fails to
demonstrate a material affect on the basic and novel characteristics of the
invention because Appellants have not shown the presence of Lu affects
both fluorescence attenuation time and fluorescence output of Appellants’
GSO:Ce,Zr single crystal. (Ans. 6 (comparing Example 3 with Comparative
Example 2).)
As argued by Appellants (See Reply Brief (“Rep. Br.”), filed Mar. 29,
2007, 3), the Examiner’s position is not supported by the evidence of record.
Based on our review of the Specification (see supra pp. 3-4), we understand

3 Dr. Shimizu testified that he prepared Comparative Example 2, a Ce-
activated LGSO single crystal comprising Zr, using the same procedure used
in Example 1 of Appellants’ Specification except that the components of the
melt were modified to include Lu2O3 and substitute ZrO2 for MgO.
(Shimizu Dec. 1-2.) Example 3 of Appellants’ Specification is identical to
Example 1 which the exception that ZrO2 was used in place of MgO.

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the basic and novel characteristic of the invention, a GSO:Ce,Zr single
crystal, as being an improvement over a conventional GSO:Ce single crystal
in that Ce concentration can be increased to provide a decrease in
fluorescent light-attenuation time without a corresponding deterioration in
fluorescent output. Appellants’ evidence demonstrates that Lu materially
affects this basic and novel characteristic because a LGSO:Ce,Zr single
crystal has a longer fluorescent light-attenuation time than a conventional
GSO:Ce single crystal.
Accordingly, we agree with Appellants’ interpretation of the claim 5
“consisting essentially of” language as precluding the presence of Lu in the
claimed Ce-activated GSO single crystal.
Rejection of claims 5, 8(5), and 21 under
35 U.S.C. § 102(b) as anticipated by Zagumennyi
ISSUE
Having interpreted the claim language in dispute, we identify the
following issue as dispositive of the first ground of rejection: have
Appellants identified error in the Examiner’s finding that Zagumennyi
discloses a Ce-activated GSO single crystal which is doped with Zirconium
(Zr) but does not contain Lu?
We determine that Appellants have identified error in the Examiner’s
fact finding.
FINDINGS OF FACT
Appellants do not dispute that Zagumennyi discloses materials that do
not contain Lu, but contend that “there is no discussion of doping this
material with Zr.” (App. Br. 6.)
In responding to this argument, the Examiner identifies Zagumennyi
“Table 1, Example 2, claim 5, and column 6, lines 65-67” as “disclos[ing]
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embodiments without Lu” and contends that “Applicant appears to admit
that both GSO:Ce (which does not contain Lu) and doping with Zr are
disclosed.” (Ans. 6.)
PRINCIPLES OF LAW
“[U]nless a reference discloses within the four corners of the
document not only all of the limitations claimed but also all of the
limitations arranged or combined in the same way as recited in the claim, it
cannot be said to prove prior invention of the thing claimed and, thus, cannot
anticipate under 35 U.S.C. § 102.” Net MoneyIN, Inc. v. VeriSign, Inc., 545
F.3d 1359, 1371 (Fed. Cir. 2008).
ANALYSIS
Appellants have persuasively argued that the Examiner’s fact finding
is erroneous, and insufficient to support a rejection under 35 U.S.C. §
102(b), because the Examiner has not specifically identified an embodiment
in Zagumennyi in which a Ce-activated GSO single crystal is doped with Zr
but does not contain Lu. (See generally, Ans. 5-7.) Therefore, we do not
sustain the rejection of claims 5, 8(5), and 21 under 35 U.S.C. § 102(b) as
anticipated by Zagumennyi.
Rejection of claims 6, 8(6), and 22 under
35 U.S.C. § 103(a) as unpatentable over Zagumennyi

Claim 6 is reproduced below from the Claims Appendix to the Appeal
Brief:
6. The GSO single crystal of claim 5 which is represented by
the formula: Gd(2-x)Ce×MeySiO5 wherein x ranges from 0.003 to 0.05, y
ranges from 0.00005 to 0.005, and Me represents Zr.

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The arguments in the Appeal Brief are directed solely to the rejection
of claim 5 under 35 U.S.C. § 102(b). (See generally, App. Br. 3-8.) The
remaining claims are said to stand or fall with claim 5. (See supra note 2.)
We decide the appeal as to this ground of rejection on the basis of
claim 6, which depends from claim 5.
The Examiner, in rejecting the claims under 35 U.S.C. § 103(a), relies
on a line of reasoning which differs from that of the anticipation rejection.
Specifically, the Examiner finds that Zagumennyi discloses the general
formula Gd(2-x)Ce×MeySiO5 based on Zagumennyi’s disclosure of a
scintillation material having the formula A2-xCexSiO5 where A may be Gd
and/or Lu (e.g. col. 11, ll. 16-17), and further containing F and/or at least
one element which may be Zr or Ta (col. 11, ll. 18-22), and specific
examples of crystals containing Ta0.05 (e.g., col. 11, l. 33
(Lu1.975Ce0.02Ta0.05SiO5.002)). (Final 3; Ans. 4 (citing Zagumennyi Example
2).) The Examiner concedes that Zagumennyi fails to specifically disclose
Appellants’ claimed formula where Me is Zr. (Id.) However, the Examiner
contends that “it would have been obvious to one of ordinary skill in the art .
. . to use Zr as Me” (id.) given the foregoing disclosure and Zagummenyi’s
disclosure of “crystals containing ions of Ce3+ advantageously in
coordination with poyhedrons Lu7 . . . additionally doped with ions” of Zr or
Ta, where Zr or Ta “occupy in the crystal lattice the position with octahedral
coordination (polyhedron LuO6) due to higher bond energies of these ions”
(col. 4, ll. 9-15). (Final 3-4; Ans. 4.)
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Appellants respond to the Examiner’s § 103 rejection for the first time
in the Reply Brief4, asserting that “the Examiner has not previously
addressed the position of Zr within the crystal structure.” (Rep. Br. 1 (citing
Ans. 4, ll. 12-23, which pertain to the § 103 rejection).) Appellants’
arguments rely on an article which they submit as an attachment to the Reply
Brief, but which was not identified in the Evidence Appendix to the Appeal
Brief. (See Rep. Br. 2; App. Br. 10.) Nor is there any indication that this
article was previously of record. (See generally, App. Br. and Rep. Br.)
We have compared the Final with the Answer and find that
substantially the same language is used in both statements of the rejection
under 35 U.S.C. § 103(a). (Compare Final 3-4 with Ans. 4-5.) 37 C.F.R. §
41.37 (c)(1)(vii) states that the Appeal brief shall contain “[t]he contentions
of appellant with respect to each ground of rejection presented for review . . .
with citations of the . . . parts of the record relied on.” Moreover, 37 C.F.R.
§ 41.41(a)(2) states that “[a] reply brief shall not include any new evidence.”

4 We note that Appellants argue claim 5 is not anticipated by Zagumennyi on
the basis that “Zagumennyi . . . teaches away from a scintillating material
which does not contain Lu or its equivalent, because excluding Lu will result
in a loss of the required B2/b (Z=8) crystal structure.” (App. Br. 5.) We
have considered this argument in connection with the present rejection under
35 U.S.C. § 103(a), but are not persuaded of error in the Examiner’s
obviousness determination in view of Zagumennyi’s EXAMPLE 2 which
discloses the formula A2-xCexSiO5 where A may be Gd and/or Lu (col. 11, ll.
16-17). Appellants have not explained why the ordinary artisan would have
been discouraged from using a scintillating material which contains Gd, but
does not contain Lu given this disclosure. See In re Gurley 27 F.3d 551, 553
(Fed. Cir. 1994) (“A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.”).

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Therefore, we decline to consider the arguments in the Reply Brief
directed to the rejection under 35 U.S.C. § 103(a). Rather, we rely on
Appellants’ explicit indication in the Appeal Brief that the traversal of this
ground of rejection is based on the arguments presented in support of
patentability of claim 5. Cf. 37 C.F.R. § 41.37(c)(1)(vii) (“When multiple
claims subject to the same ground of rejection are argued as a group by
appellant, the Board may select a single claim from the group of claims that
are argued together to decide the appeal with respect to the group of claims
as to the ground of rejection on the basis of the selected claim alone.”).
Appellants have not addressed the facts and reasons relied on by the
Examiner in determining that claims 6, 8(6), and 22 would have been
obvious in view of Zagumennyi. Accordingly, we sustain the rejection of
claims 6, 8(6), and 22 under 35 U.S.C. § 103(a) as unpatentable over
Zagumennyi.

NEW GROUND OF REJECTION
We have sustained the Examiner's rejection of dependent claims 6,
8(6), and 22 as unpatentable under 35 U.S.C. § 103(a) over Zagumennyi.
Because these claims depend from independent claim 5, they include all the
limitations recited in claim 5. Therefore, claim 5 must also be obvious in
view of Zagumennyi, cf. Ormco Corp. v. Align Technology, Inc., 498 F.3d
1307, 1319-20 (Fed. Cir. 2007) (explaining that when dependent claims
“were found to have been obvious, the broader claims . . . must also have
been obvious”), and we enter the following new ground of rejection:
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Claims 5, 8(5), and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over WO 99/35512, published July 15, 1999 (“Zagumennyi”),
as translated in US 6,278,832, issued Aug. 21, 2001.
Zagumenny discloses “[o]btaining a scintillation material . . . , the
composition of which is expressed by the chemical formula A2-xCexSiO5,
wherein A is at least one element of the group Lu, Gd . . ., as well it [sic]
contains at lest[sic] one of the elements of the group . . . Zr, . . . Ta. . . .”
(Example 2, col. 11, ll. 13-22.) It would have been obvious to one of
ordinary skill in the art at the time of Appellants’ invention to have selected
Gd and Zr from the list of elements identified by Zagumenny as suitable for
forming a scintillation material having the formula A2-xCexSiO5 to achieve
Appellants’ claimed “Ce-activated GSO single crystal consisting essentially
of Gd, Ce, Me, Si and O, wherein Me represents Zr” (claim 5).5 Because the
resultant crystal is the same as the claimed crystal, Zr would inherently
shorten the fluorescence attenuation time as compared to a Ce-activated
GSO crystal without Zr (claim 21).6 Regarding claim 8(5), Zagumennyi
discloses PET scintillators comprising the disclosed crystals (see
Zagumennyi title, abstract, Table 2, Example 2, and claim 5).

5 See Merck & Co. v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989)
(explaining that the disclosure of a multitude of effective combinations does
not render any particular formulation less obvious).
6 See Ex parte Obiaya, 227 USPQ 58, 60 (B.P.A.I. 1985), aff'd mem, 795
F.2d 1017 (Fed. Cir. 1986) (“The fact that appellant has recognized another
advantage which would flow naturally from following the suggestion of the
prior art cannot be the basis for patentability when the differences would
otherwise have been obvious.”).
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CONCLUSION
The rejection of claims 5, 8(5), and 21 under 35 U.S.C. § 102(b) as
anticipated by Zagumenny is reversed. The rejection of claims 6, 8(6), and
22 under 35 U.S.C. § 103(a) as unpatentable over Zagumenny is affirmed.
Claims 5, 8(5), and 21 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Zagumenny.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) also provides that 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. . . .

Should Appellants elect to prosecute further before the Examiner
pursuant to 37 CFR § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If the Appellants elect prosecution before the Examiner and this does
not result in allowance of the application, abandonment or a second appeal,
this case should be returned to the Board of Patent Appeals and Interferences
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for final action on the affirmed rejection, including any timely request for
rehearing thereof.
AFFIRMED-IN-PART;
37 CFR § 41.50(b)

PL Initial:
sld

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