Ex Parte Tamura

Board of Patent Appeals and Interferences

Mar 12, 2004

09531660 (B.P.A.I. Mar. 12, 2004)

1
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte KOICHI TAMURA
__________
Appeal No. 2004-0612
Application No. 09/531,660
__________
ON BRIEF
__________
Before PAK, OWENS and WALTZ, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 1-9.
Claim 10, which is the only other claim in the application,
stands allowable.
THE INVENTION
The appellant claims an X-ray analysis apparatus. Claims 1
and 5 are illustrative:
1. A fluorescent X-ray analysis apparatus comprising:
an X-ray source for generating a primary X-ray;
Appeal No. 2004-0612
Application No. 09/531,660
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a sample table for fixing a sample to be radiated by
the primary X-ray;
a detector for detecting a secondary X-ray produced by
the sample in response to irradiation by the primary X-ray; and

a collimator mechanism removably insertable in an X-ray
path between the sample and the detector for passing a secondary
X-ray component having a uniform extraction angle and reducing a
secondary X-ray component having a non-uniform extraction angle,
the extraction angle being defined between a first line
connecting an intersection of a center line of an X-ray optical
flux radiated by the X-ray source with a plane of the sample
table and a second line connecting a center point of a detection
region of the detector with a plane of the sample table.
5. An X-ray analysis apparatus for analyzing a sample,
comprising: an X-ray source for radiating a primary X-ray onto
the sample; an X-ray detector for detecting a secondary X-ray
emanating from the sample in response to irradiation of the
primary X-ray onto the sample to produce an energy spectrum; and
a collimator interposed in a path of the secondary X-ray between
the sample and the X-ray detector for allowing a collimate
component of the secondary X-ray to pass therethrough.
THE REFERENCES
Kuwabara et al. (Kuwabara) 5,408,512 Apr. 18, 1995
Kumakhov 5,744,813 Apr. 28, 1998
Cash, Jr. 6,049,588 Apr. 11, 2000
(filed Jul. 10, 1998)
THE REJECTIONS
Claims 1 and 5-7 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Kuwabara. Claims 2-4, 8 and 9 stand rejected as
obvious under 35 U.S.C. § 103 as follows: claims 2 and 8 over
Kuwabara, claims 3 and 9 over Kuwabara in view of Kumakhov, and
claim 4 over Kuwabara in view of Cash.
Appeal No. 2004-0612
Application No. 09/531,660
1 The appellant uses the terms “collimator mechanism” and
“collimator” interchangeably (specification, page 2).
3
OPINION
We reverse the rejections of claims 1-4 and affirm the
rejections of claims 5-9.
Claims 1-4
Claim 1, from which claims 2-4 depend, requires a collimator
mechanism which is removably insertable in an X-ray path between
a sample and a secondary X-ray detector.1 For this claim feature
the examiner relies upon Kuwabara’s view restricting screen 3
(answer, page 3). This screen is a flat plate comprising a
plurality of holes preferably having a hollow tubular member
around each of them (figure 3), is positioned between a
specimen (2) and a collimator (4) having Soller slits (figure 1),
and is linearly movable in a direction perpendicular to the
optical axis of the collimator’s Soller slits to limit the
collimator’s field of view of the sample to that allowed by the
selected hole position and size (col. 2, lines 37-58; col. 3,
lines 61-66; col. 4, lines 2-6 and 24-37; col. 5, lines 1-6;
col. 6, lines 24-37).
The examiner argues that Kuwabara’s “view restricting screen
provides the function of shutting off unwanted and scattered
fluorescent X-rays (column 6 line 29+), therefore it performs the
Appeal No. 2004-0612
Application No. 09/531,660
2 Webster’s II New Riverside University Dictionary 281
(Riverside 1984). A copy of this definition is provided to the
appellant with this decision.
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same function of [a] collimator which [is] reducing or
eliminating non-uniform extraction angled beam” (answer, page 7).
The unwanted and scattered X-rays referred to by the examiner are
secondary X-rays which emanate from the specimen container (8)
which holds the specimen (2) (figure 1) (col. 6, lines 29-31).
The examiner has not provided evidence or reasoning which shows
that blocking unwanted and scattered fluorescent X-rays emanating
from a specimen container is the same as reducing a non-uniform
extraction angle of secondary X-rays emanating from the specimen.
The appellants do not define “collimator” in their
specification. Hence, we give this term its ordinary and
customary meaning, see Allen Engineering Corp. v. Bartell
Industries Inc., 299 F.3d 1336, 1344, 63 USPQ2d 1769, 1772 (Fed.
Cir. 2002), which is “[a] device capable of collimating
radiation, as a long narrow tube in which strongly absorbing or
reflecting walls permit only radiation traveling parallel to the
tube axis to traverse the entire length.”2
The examiner has not provided evidence or reasoning which
shows that Kuwabara’s view restricting screen, which blocks
unwanted and scattered secondary X-rays from the specimen
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Application No. 09/531,660
3 The examiner does not rely upon Cash, Jr. or Kumakhov for
any disclosure which remedies the above-discussed deficiency in
Kuwabara.
4 Instead, the appellant merely sets forth what each claim
recites and asserts that what is recited is not disclosed or
suggested by the references. This is tantamount to merely
pointing out differences in what claims cover, which is not an
argument as to why the claims are separately patentable. See 37
CFR § 1.192(c)(7)(1997).
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container, is capable of functioning as a collimator, i.e.,
permitting only radiation traveling parallel to the axes of its
tubes to traverse the entire length of the tubes. Nor has the
examiner established that Kuwabara would have fairly suggested
modifying the view restricting screen such that it can do so.
Thus, the examiner has not established a prima facie case of
anticipation of the apparatus claimed in the appellant’s claim 1
or obviousness of the apparatus claimed in the appellant’s
claims 2-4.3 Accordingly, we reverse the rejections of these
claims.
Claims 5-9
The appellant argues that claims 5-9 stand or fall
separately (brief, page 6). The appellant, however, does not
provide a substantive argument as to the separate patentability
of claims 6-9 which depend from independent claim 5, even though
an additional reference is applied in the rejection of claim 9.4
Claims 5-9, therefore, stand or fall together. See In re
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Application No. 09/531,660
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Burckel, 592 F.2d 1175, 1178-79, 201 USPQ 67, 70 (CCPA 1979); In
re Herbert, 461 F.2d 1390, 1391, 174 USPQ 259, 260 (CCPA 1972).
Hence, we limit our discussion to the independent claim.
Kuwabara discloses an X-ray apparatus for analyzing a
sample (2) (col. 1, lines 7-10), comprising an X-ray source (1)
for radiating a primary X-ray onto the sample, an X-ray
detector (7) for detecting a secondary X-ray emanating from the
sample in response to irradiation of the primary X-ray onto the
sample, and a collimator (4) interposed in a path of the
secondary X-ray between the sample and the X-ray detector for
allowing a collimate component of the secondary X-ray to pass
therethrough (col. 1, lines 12-50; col. 3, lines 49-56; col. 5,
lines 1-11; figure 1).
The appellant argues that “the collimator of Kuwabara does
not serve to allow substantially only a collimate component of
the secondary X-ray to pass therethrough as required by
independent claim 5" (brief, page 15). This argument is not well
taken because, first, the appellant is relying upon a limitation
which is not in claim 5. See In re Self, 671 F.2d 1344, 1348,
213 USPQ 1, 5 (CCPA 1982). Second, Kuwabara indicates that the
collimator allows substantially only a collimate component of the
secondary X-ray to pass therethrough (col. 1, lines 21-26;
col. 3, lines 54-56; col. 5, lines 2-6).
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The appellant argues that Kuwabara’s “Soller slits are not
removably insertable in the X-ray path as required by the present
invention and thus do not read on independent claims 1 and 5"
(reply brief, page 5). This limitation is not in claim 5.
For the above reasons we affirm the rejection of claim 5 and
claims 6-9 that stand or fall therewith.
DECISION
The rejection of claims 1 and 5-7 under 35 U.S.C. § 102(b)
over Kuwabara is reversed as to claim 1 and affirmed as to
claims 5-7. The rejection under 35 U.S.C. § 103 of claims 2
and 8 over Kuwabara is reversed as to claim 2 and affirmed as to
claim 8. The rejection under 35 U.S.C. § 103 of claims 3 and 9
over Kuwabara in view of Kumakhov is reversed as to claim 3 and
affirmed as to claim 9. The rejection under 35 U.S.C. § 103 of
claim 4 over Kuwabara in view of Cash is reversed.
Appeal No. 2004-0612
Application No. 09/531,660
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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
Chung K. Pak )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Terry J. Owens )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Thomas A. Waltz )
Administrative Patent Judge )
TJO/jlb
Appeal No. 2004-0612
Application No. 09/531,660
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