Ex Parte Tonami et al

Patent Trial and Appeal Board

Apr 15, 2016

12865498 (P.T.A.B. Apr. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/865,498 07/30/2010
74384 7590
Cheng Law Group, PLLC
1133 13th St. N.W.
Suite C2
Washington, DC 20005
04/18/2016
FIRST NAMED INVENTOR
Hiromichi Tonami
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SUT-0489 3338
EXAMINER
KELLY, RAFFERTY D
ART UNIT PAPER NUMBER
2876
MAILDATE DELIVERY MODE
04/18/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte HIROMICHI TONAMI, TOMOAKI TSUDA, and JUNICHI OHI
Appeal2014-006643
Application 12/865,498
Technology Center 2800
Before CHUNG K. PAK, JAMES C. HOUSEL, and
WESLEY B. DERRICK, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection under 35 U.S.C. § 102(b) of claims 1-3, 6, 7, 11,
and 12 over Tsuda 1 and rejections under 35 U.S.C. § 103(a) of claims 4, 5,
9, and 10 over Tsuda and Duclos2 and claims 8 and 13 over Tsuda and
Kojima. 3 We have jurisdiction pursuant to 35 U.S.C. § 6.
We REVERSE.
1 Tsuda et al., A Four-Layer Depth of Interaction Detector Block for Small
Animal PET, 51 IEEE Trans. Nuclear Sci. 2537--42.
2 Duclos et al., U.S. Patent No. 6,298,113 Bl, issued October 2, 2001.
3 Kojima et al., U.S. Patent No. 6,965,661 B2, issued November 15, 2005.
Appeal2014-006643
Application 12/865,498
CLAIMED SUBJECT MATTER
Appellants' invention relates to a radiation detector including a
scintillation counter crystal layer formed of scintillation counter crystals
formed in an array and first and second reflector frames where each crystal
is inserted through the first and second reflector frame. Spec. Abstract. The
Specification describes the invention as an improvement over prior art
radiation detectors with multilevel detector blocks in that by using crystals
that extend through multiple reflector frames the number of crystals required
is reduced over the analogous prior art detectors in which crystals do not
span more than a single reflector frame. See, e.g., Spec. 7-12. Independent
claim 1 is directed to a radiation detector including a scintillation counter
crystal layer in which each crystal is inserted through a first and second
reflector frame. Claim 1. Independent claim 3 is directed to a radiation
detector including a scintillation counter crystal layer in which each crystal
is inserted through a first, second, third, and fourth reflector frame. Claim 3.
Claim 1 reproduced from the Appeal Brief with added emphasis is
illustrative:
1. A radiation detector comprising a scintillator formed of
two or more scintillation counter crystals to convert radiation
emitted from a radiation source into fluorescence, and a
fluorescence detection device to detect fluorescence from the
scintillator,
the radiation detector comprising a first reflector frame in
which two or more first reflectors that extend along a first
direction while being arranged in a second direction
perpendicular to the first direction and two or more second
reflectors that extend along the second direction while being
arranged in the first direction are arranged in a lattice pattern,
and a second reflector frame having two or more reflectors
arranged in a lattice pattern as well as the first reflector frame,
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Appeal2014-006643
Application 12/865,498
the first reflector frame and the second reflector frame
being laminated along a third direction that is perpendicular to
the first direction and the second direction,
each of the scintillation counter crystals being inserted in
the third direction through the first reflector frame and the
second reflector frame, whereby two or more scintillation
counter crystals are arranged in the first direction and the
second direction to form a first scintillation counter crystal
layer, and
a position of the first reflector frame provided in the first
scintillation counter crystal layer differing from a position of
the second reflector frame provided in the first scintillation
counter crystal layer.
Appeal Brief ("App. Br."), 19.
DISCUSSION
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. 4 As highlighted in Appellants'
Appeal and Reply Briefs, we find that the Examiner erred in interpreting the
recited layer-the "scintillation counter cP;stal layer"-to be merely a layer
of scintillation counter crystals (Ans. 10) rather than the specific structure
set forth and defined in independent claims 1 and 3. This issue is dispositive
as to all rejections. It follows, therefore, that we reverse the Examiner's
rejections of claims 1-13.
We begin our analysis by determining the scope and meaning of the
claims, giving claim terms the broadest reasonable interpretation consistent
with the Specification as they would be interpreted by one of ordinary skill
4 We refer to the Final Office Action (mailed April 9, 2013, "Final Act."),
the Appeal Brief (filed November 12, 2013), the Examiner's Answer
(mailed March 18, 2014, "Ans."), and the Reply Brief (filed May 17, 2014,
"Reply Br.").
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Appeal2014-006643
Application 12/865,498
in the art. See, e.g., In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011)
(citing In re Suitco Swface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010)). In
doing so, we tum first to the claims themselves. See, e.g., Rapoport v.
Dement, 254 F.3d 1053, 1059 (Fed. Cir. 2001).
As highlighted by Appellants' arguments (App. Br. 6-7, 9; Reply Br.
1-3), the claimed "scintillation counter crystal layer" is not merely a layer of
scintillation counter crystals, but is instead the structure formed where "each
of the scintillation counter crystals [is] inserted ... through the first reflector
frame and the second reflector frame" such that the "layer" according to
claim 1 includes the first and second reflector frames as "the first reflector
frame [is] provided in the first scintillation counter crystal layer" and "the
second reflector frame [is] provided in the first scintillation counter crystal
layer." Claim 1. In other words, each of the scintillation counter crystals
span the region defined by both the first reflector frame and the second
reflector frame.
Similarly, in claim 3 "each of the scintillation counter crystals is
inserted ... through the first reflector frame, the second reflector frame, the
third reflector frame, and the fourth reflector frame ... to form a
scintillation counter crystal layer." Claim 3 (emphasis added). We further
determine the claim's further limitation as to "an inserting position in the
scintillation counter crystal layer differing from one another in the first
reflector frame, the second reflector frame, the third reflector frame, and the
fourth reflector frame" (Claim 3) indicates that each of the four reflector
frames is structure included in the recited scintillation counter crystal layer
such that, properly construed, the claim requires the scintillation counter
crystals span the region defined by the four recited reflector frames.
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Appeal2014-006643
Application 12/865,498
Turning to the rejections, the Examiner relies on "layer" as meaning
"an amount of something that is spread over an area" (Ans. 10, citing the
Merriam-Webster dictionary) and contends "each crystal [of Tsuda] is
inserted through the reflector frames" (Ans. 10, citing Tsuda Fig. 4). In
doing so, the Examiner explicitly considers Tsuda's disclosed 1st and 2nd
layers to be a "layer" and Tsuda's disclosed 3rd and 4th layers to be another
"layer." Ans. 10 (citing Tsuda Fig. 4). The Examiner fails, however, to
explain how Tsuda's crystals spanning no more than one of the four
disclosed layers (see Ans. 10, citing Tsuda Fig. 4) meet the limitation of
claim 1 that "each of the scintillation counter crystals" extends through both
first and second reflector frames (corresponding to Tsuda's 1st and 2nd or 3rd
and 4th layers) or of claim 3 that "each of the scintillation counter crystals"
extends "through the first reflector frame, the second reflector frame, the
third reflector frame, and the fourth reflector frame" (emphasis added).
Furthermore, the Examiner provides insufficient basis or reasoning why
Tsuda could be considered to disclose scintillation counter crystals other
than those constrained to a single one of Tsuda's four layers. App. Br.,
generally; Reply Br., generally.
On this record, therefore, we are constrained to reverse the
Examiner's anticipation rejection. A reference is only anticipatory when it
discloses, whether explicitly or inherently, each and every element of the
claimed invention arranged or combined in the same way as the claim. See,
e.g., In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).
As to the Examiner's obviousness rejections, the Examiner relies on
Tsuda's four disclosed layers as applied in the anticipation rejection. Final
Act. 7-10; Ans. 12. Having so relied on Tsuda, the Examiner does not
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Application 12/865,498
provide sufficient reasoning or explanation why one of ordinary skill in the
art at the time of the invention would have modified Tsuda as required to
provide the scintillation counter crystal layer according to the claims. We
will not tum to impermissible speculation or unfounded assumptions or
rationales to cure the deficiencies in the rejections before us. In re Warner,
379 F.2d 1011, 1017 (CCPA 1967). We likewise decline to scour the record
in the first instance for facts that might support the rejection, as our primary
role is review, not examination de nova.
It follows that we will also reverse the obviousness rejections.
CONCLUSION
The Examiner's rejections of claims 1-13 are REVERSED.
REVERSED
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