Kautz, Allan et al.

Patent Trials and Appeals Board

Nov 3, 2020

2019002028 (P.T.A.B. Nov. 3, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/520,376 07/03/2012 Allan Kautz 2010P00088WOUS 2019
24737 7590 11/03/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
FOX, DANIELLE A
ART UNIT PAPER NUMBER
2884
NOTIFICATION DATE DELIVERY MODE
11/03/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ALLAN KAUTZ,
SALVATORE PERNO, GARY BROOKS,
GEORGE AWAD and ANGELO BUAN
___________

Appeal 2019-002028
Application 13/520,376
Technology Center 2800
___________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
The Appellant1 filed an appeal under 35 U.S.C. § 134(a) from an Examiner’s
decision finally rejecting claims 1, 2, 4–7, 10–14, 16, and 19 under 35 U.S.C.

1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. The Appellant identifies the real party in interest as Koninklijke Philips
N.V. Appeal Brief dated July 6, 2018 (“App. Br.”), at 3.
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§ 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
unpatentable over Hell et al.2,3,4 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Representative claim 1 is reproduced below from the Claims Appendix to
the Appeal Brief. The limitation at issue is italicized.
1. An X-ray tube adapted to generate X-ray beams, comprising:
a cathode configured to generate an electron beam along a z-
direction substantially parallel to a z-axis of the X-ray tube;
an anode configured to receive the electron beam at a focal spot
of the anode and generate an X-ray beam, wherein the anode is in an
x-y plane;
a first deflection device configured to deflect the focal spot in a
first combined x- and y-direction between an x-axis and a y-axis of
the X-ray tube; and
a second deflection device configured to deflect the focal spot
in a second combined x- and y-direction between the x-axis and the y-
axis of the X-ray tube,
wherein the z-axis of the X-ray tube is orthogonal to the x-y
plane, the x-axis is in the x-y plane and in a lateral direction on the
anode, and the y-axis is in the x-y plane and orthogonal to the x-axis
and the z-axis,

2 US 6,292,538 B1, issued September 18, 2001 (“Hell”).
3 Claims 8 and 9 were also finally rejected under 35 U.S.C. § 102(b), 35 U.S.C.
§ 103(a), and 35 U.S.C. 112, fourth paragraph. Claims 8 and 9, however, were
cancelled by the Appellant in an Amendment dated March 26, 2018. The
Examiner withdrew the rejections of claims 8 and 9 in the Examiner’s Answer.
Examiner’s Answer dated November 8, 2018 (“Ans.”), at 10, 18.
4 In the Final Office Action, the Examiner did not include claim 16 in the statement
of the rejection. Final Office Action dated January 25, 2018 (“Final Act.”), at 4.
Nonetheless, the Examiner addressed claim 16 in the body of the rejection. Final
Act. 11–12. The Appellant recognizes as much and discusses the rejection of
claim 16 in the Appeal Brief. App. Br. 10, 17–18. Therefore, the Examiner’s error
is harmless. The statement of the rejection has been corrected to include claim 16.
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wherein the first and second deflection devices are arranged
diagonally relative to the y-axis and the x-axis of the X-ray tube, said
X-ray tube being configured to exclusively and alternately deflect the
electron beam diagonally in the first combined direction and the
second combined direction by alternately controlling said first and
second deflection devices one at a time according to a predetermined
switching sequence.
App. Br. 22.
B. DISCUSSION
1. Independent claim 1
The Examiner finds Hell discloses an X-ray tube comprising, inter alia, a
first deflection device (coils 19/20) and a second deflection device (coils 11/12)
wherein the first and second deflection devices are arranged diagonally relative to
the y-axis and the x-axis, respectively, of the X-ray tube. Final Act. 2, 5. The
Examiner finds the X-ray tube is configured to exclusively and alternatively deflect
an electron beam by alternately controlling the first and second deflection devices
one at a time according to a predetermined switching sequence as recited in claim
1. Final Act. 5.
The Appellant argues that Hell “is silent to the feature ‘by alternately
controlling said first and second deflection devices one at a time according to a
predetermined switching sequence’ recited in claim 1.” App. Br. 12 (emphasis
omitted).
The Examiner finds that Hell’s system includes controllers that
independently control the first and second deflection devices. Final Act. 5.
Therefore, the Examiner finds that Hell’s system is capable of controlling the
devices one at a time according to a predetermined switching sequence as recited
in claim 1. Final Act. 5–6; see also Ans. 13 (finding that Hell’s X-ray tube “is
capable of exclusively and alternately deflecting an electron beam” because Hell’s
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first and second deflection devices are independently controlled). The Examiner,
however, does not direct us to any disclosure in Hell describing, either expressly or
inherently, that the first and second deflection devices are actually controlled one
at a time according to a predetermined switching sequence as recited in claim 1.
See Ans. 13 (finding that “‘exclusively and alternately deflecting an electron
beam,’” as recited in claim 1, “is not explicitly stated in [Hell]”); see also In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“To anticipate a claim, a prior art
reference must disclose every limitation of the claimed invention, either explicitly
or inherently.”).
We recognize that it may be possible to install software and/or hardware that
allows Hell’s system to perform the function recited in claim 1.5 However, to
support the anticipation rejection on appeal, the Examiner must show that Hell’s
system is designed or made to perform the claimed function without further
modification. See In re Giannelli, 739 F.3d 1375, 1380 (Fed. Cir. 2014) (using the
phrases “‘made to,’ ‘designed to,’ and ‘configured to’” synonymously). The
Examiner does not make such a showing on this record. Therefore, the
anticipation rejection of claim 1 and claims 2 and 4–7, which depend from claim 1,
is not sustained.

5 Claim 1 recites, in relevant part, “said X-ray tube being configured to exclusively
and alternately deflect the electron beam diagonally in the first combined direction
and the second combined direction by alternately controlling said first and second
deflection devices one at a time according to a predetermined switching sequence.”
App. Br. 22 (emphasis added). The Appellant discloses that the first and second
deflection devices are controlled by a computer program. Spec. 5, ll. 9–10; Id. at
11, l. 32–12, l. 2 and 12, ll. 7–10. Thus, we interpret the claim limitation to mean
that a computer is programmed or configured to perform the recited function.
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In the alternative, however, the Examiner concludes that it would have been
obvious to one of ordinary skill in the art to modify Hell’s system to alternately
control the first and second deflection devices according to a predetermined
switching sequence as recited in claim 1, “to reduce problems due to feedback into
the different current generating systems.” Final Act. 6; see also Ans. 13–14.
In the Appeal Brief, the Appellant does not address the Examiner’s
obviousness conclusion or underlying factual findings. In the Reply Brief,
however, the Appellant argues for the first time on appeal that the Examiner’s
reason for modifying Hell is not supported by the record. Reply Br. 5–6.6
According to 37 C.F.R. § 41.41(b)(2), “[a]ny argument raised in the reply
brief which was not raised in the appeal brief, or is not responsive to an argument
raised in the examiner’s answer . . . will not be considered by the Board for
purposes of the present appeal, unless good cause is shown.” In this case, the
Appellant’s argument directed to the Examiner’s reason for modifying Hell was
not raised in the Appeal Brief and is not responsive to an argument raised for the
first time in the Examiner’s Answer. See Final Act. 6 (explaining the reason for
modifying Hell as proposed). Moreover, the Appellant has not shown good cause
why the argument could not have been raised in the Appeal Brief. Therefore, the
Appellant’s argument is untimely and will not be considered on appeal.
For the reasons set forth above, the obviousness rejection of claim 1 is
sustained. The Appellant does not present arguments in support of the separate
patentability of dependent claim 7. Therefore, the obviousness rejection of claim 7
also is sustained.

6 Reply Brief dated January 8, 2019.
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a. Claim 2
Claim 2 depends from claim 1 and recites that “the first deflection device
and second deflection device include an electromagnetic dipole each.” App. Br.
22.
Referring to Hell Figure 6, the Examiner finds that Hell discloses the
limitation recited in claim 2. Final Act. 6. The Appellant argues that the Examiner
fails to show how Hell Figure 6 discloses the features recited in claim 2. App. Br.
13.
In response, the Examiner finds that the first deflection device (coils 19/20)
and the second deflection device (coils 11/12), depicted in Hell Figure 6,
correspond to the electromagnetic dipoles recited in claim 2. Ans. 14–15 (citing
Hell, col. 4, ll. 38–41; id., col. 3, ll. 41–42, 52–53). The Appellant does not
address the Examiner’s finding in the Reply Brief and thus, does not identify
reversible error. See Reply Br. 7. Therefore, the obviousness rejection of claim 2
is sustained.
b. Claim 4
Claim 4 depends from claim 1 and recites that “the X-ray tube is configured
to exclusively activate the first deflection device or second deflection device.”
App. Br. 22.
The Examiner finds that Hell’s X-ray tube is configured as recited in claim
4. Final Act. 6 (citing Hell, col. 4, ll. 5–10, 18–21). Referring to the portion of
Hell relied on by the Examiner, the Appellant argues that Hell does not disclose the
limitation “exclusively activate” recited in claim 4. App. Br. 14.
In response, the Examiner finds that the first deflection device (coils 19/20)
and the second deflection device (coils 11/12) are independently controlled and
thus, “exclusively activated.” Ans. 15. For support, the Examiner directs our
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attention to column 4, lines 38–41 of Hell which discloses that coils 19/20 are for
the purely static deflection of the electron beam onto the edge region of the anode.
Coils 11/12, on the other hand, are said to deflect the electron beam in the ɸ-
direction. Ans. 15 (citing Hell, col. 3, ll. 41–42). In that regard, Hell discloses that
“[t]he flying focus requires a deflection in the ɸ-direction [and t]he dipole field
required for this is generated by the ɸ-coils.” Hell, col. 3, ll. 52–53; see also Ans.
15 (citing Hell, col. 3, ll. 52–53).
The Appellant does not address the Examiner’s findings in the Reply Brief,
and thus, does not identify reversible error. See Reply Br. 7. For that reason, the
obviousness rejection of claim 4 is sustained.
c. Claim 5
Claim 5 depends from claim 1 and recites that “the first deflection device is
operated to generate a field out of the group consisting of a static field, a dynamic
field and a static field superimposed by a dynamic field.” App. Br. 22 (emphasis
added).
Referring to Hell Figure 6, the Examiner finds Hell discloses that the first
deflection device (coils 19/20) is operated as recited in claim 5.7 Final Act. 6. The
Appellant argues that the Examiner fails to show how Hell Figure 6 discloses the
limitations recited in claim 5. App. Br. 14.
In response, the Examiner finds Hell discloses that the first deflection device
(coils 19/20) is for the purely static deflection of the electron beam onto the edge
region of the anode. Ans. 15 (citing Hell, col. 4, ll. 38–41). The Examiner also

7 Notably, claim 5 recites an X-ray tube, not a method of operating an X-ray tube.
The manner or method in which the claimed X-ray tube operates is not germane to
the issue of the patentability of the X-ray tube itself. In re Casey, 370 F.2d 576,
580 (CCPA 1967).
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finds that “an electromagnetic deflection device must be operated to generate at
least one of a static field, a dynamic field and a static field superimposed by a
dynamic field.” Ans. 15. Therefore, the Examiner finds that the first deflection
device is operated as recited in claim 5.
In the Reply Brief, the Appellant does not address the Examiner’s findings
and thus, does not identify reversible error. See Reply Br. 7. For that reason, the
obviousness rejection of claim 5 is sustained.
d. Claim 6
Claim 6 depends from claim 1 and recites that “the second deflection device
is operated to generate a field out of the group consisting of a static field, a
dynamic field and a static field superimposed by a dynamic field.” App. Br. 23
(emphasis added).
Referring to Hell Figure 6, the Examiner finds that the second deflection
device (coils 11/12) is operated as recited in claim 6.8 Final Act. 7. The Appellant
argues that the Examiner fails to show how Hell Figure 6 discloses the limitations
recited in claim 6. App. Br. 15.
In response, the Examiner finds that coils 11/12 generate a dynamic field.
Ans. 16 (citing Hell, col. 4, ll. 18–21); see also Hell, col. 3, ll. 41–42. The
Examiner also finds that “an electromagnetic deflection device must be operated to
generate at least one of a static field, a dynamic field and a static field
superimposed by a dynamic field.” Ans. 16. Therefore, the Examiner finds that
the second deflection device is operated as recited in claim 6.

8 Notably, claim 6 recites an X-ray tube, not a method of operating an X-ray tube.
The manner or method in which the claimed X-ray tube operates is not germane to
the issue of the patentability of the X-ray tube itself. Casey, 370 F.2d at 580.
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In the Reply Brief, the Appellant does not address the Examiner’s findings
and thus, does not identify a reversible error. See Reply Br. 7. For that reason, the
obviousness rejection of claim 6 is sustained.
2. Independent claims 10, 13, and 16
Claims 10, 13, and 16 are independent. Claims 11 and 12 depend from
claim 16, claim 14 depends from claim 13, and claim 19 depends from claim 16.
See App. Br. 23–25. According to the Appellant, the arguments presented in
response to the rejection of claim 1 are applied to the rejection of claims 10, 13,
and 16. App. Br. 16–18.
Claims 10 and 16 recite the step of “alternately controlling a first deflection
device and a second deflection device one at a time according to a predetermined
switching sequence.” App. Br. 23, 24 (emphasis added). Claim 13 recites a
similar limitation. See App. Br. 24 (reciting, in claim 13, “alternately controlling
the first deflection device and the second deflection device one at a time according
to a predetermined switching sequence” (emphasis added)). In the discussion of
claim 1, supra, we found the Examiner did not show that Hell describes, either
expressly or inherently, an X-ray tube configured to alternately control the first and
second deflection devices one at a time according to a predetermined switching
sequence. For that reason, we did not sustain the anticipation rejection of claim 1.
We do not sustain the anticipation rejection of independent claims 10, 13, and 16
and dependent claims 11, 12, 14, and 19 for the same reason.
In the Appeal Brief, the Appellant does not present separate arguments
against the obviousness rejection of claims 10, 13, and 16.9 In particular, the

9 In the Reply Brief, the Appellant indicates that the arguments presented in
support of the patentability of claim 1 also apply to the rejections of claims 10, 13,
and 16. Reply Br. 7–8. To the extent that the Appellant is incorporating the
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Appellant does not direct us to any error in the Examiner’s conclusion that it would
have been obvious to one of ordinary skill in the art to modify Hell’s system to
alternately control the first and second deflection devices according to a
predetermined switching sequence “to reduce problems due to feedback into the
different current generating systems.” Final Act. 9, 10, 12. The Appellant merely
argues that “[i]ndependent claim 10 recites a method with claim elements that are
different from the apparatus recited in independent claim 1. Accordingly,
independent claim 10 must be examined and interpreted on its own merits.” App.
Br. 16. The Appellant makes a similar argument with respect to independent
claims 13 and 16. App. Br. 16–18.
Significantly, the Appellant does not identify any claim limitations that
patentably distinguish the subject matter of claims 10, 13, and/or 16 from the
invention disclosed in Hell or direct us to any error in the Examiner’s factual
findings or legal conclusions10 as to the limitations in claims 10, 13, and/or 16 “that
are different from the apparatus recited in independent claim 1.” App. Br. 16, 17.
Therefore, the obviousness rejection of claims 10, 13, and 16 is sustained.
The Appellant does not present arguments in support of the separate
patentability of either claim 12 or claim 14. See App. Br. 17, 18. Therefore, the
obviousness rejection of claims 12 and 14 also is sustained.

arguments directed to the obviousness rejection of claim 1 into the response to the
obviousness rejection of claims 10, 13, and 16, those arguments, like the
arguments against the obviousness of claim 1, which were made for the first time
in the Reply Brief, are not timely and will not be considered on appeal.
10 In the Final Office Action, the Examiner outlines each of claims 10, 13, and 16,
and makes specific factual findings and legal conclusions as to each of those
claims. Final Act. 8–10, 11–12.
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a. Claim 11
Claim 11 depends from claim 16 and recites that “the alternately deflecting
act deflects the focal spot according to the switching sequence in a way that no
spot of a focal track is tracked more than once during one switching sequence.”
App. Br. 23.
Referring to Hell Figures 6 and 8, the Examiner finds that Hell discloses the
limitation recited in claim 11. Final Act. 13. The Appellant argues that the
Examiner fails to show how Hell Figures 6 and 8 disclose the limitations recited in
claim 11. App. Br. 18.
In response, the Examiner finds that the first deflection device (coils 19/20)
and the second deflection device (coils 11/12) are independently controlled. Ans.
17. Therefore, the Examiner finds that Hell’s X-ray tube “is capable of performing
the switching sequence as shown in Fig. 1 and Fig. 2, which would result in a focal
track not tracked more than once in a switching sequence” as recited in claim 11.
Ans. 17.
In the Reply Brief, the Appellant does not address the Examiner’s findings
and thus, does not identify reversible error. See Reply Br. 8. For that reason, the
obviousness rejection of claim 11 is sustained.
b. Claim 19
Claim 19 depends from claim 16 and recites that the claimed method is
“configured for said controlling such that repeated toggling maintains increased
resolution.” App. Br. 25.
Referring to Hell Figures 6 and 8, the Examiner finds that Hell discloses the
limitation recited in claim 19. Final Act. 13. The Appellant argues that the
Examiner fails to show how Hell Figures 6 and 8 disclose the limitations recited in
claim 19. App. Br. 19.
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In response, the Examiner finds that Hell’s X-ray tube is capable of
performing repeated toggling as shown in Hell Figures 1 and 2 because the first
deflection device (coils 19/20) and the second deflection device (coils 11/12) are
independently controlled. Ans. 18. The Examiner finds that repeated toggling
between 3 and 3′, as shown in Hell Figure 1, and/or 3 and 3″, as shown in Hell
Figure 2, necessarily results in maintaining increased resolution as recited in claim
19. Ans. 18.
In the Reply Brief, the Appellant does not address the Examiner’s findings
and thus, does not identify reversible error. See Reply Br. 8. For that reason, the
obviousness rejection of claim 19 is sustained.
C. CONCLUSION
The Examiner’s decision is affirmed.
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–7,
10–14, 16,
19
102(b) Hell 1, 2, 4–7,
10–14, 16,
19
1, 2, 4–7,
10–14, 16,
19
103(a) Hell 1, 2, 4–7,
10–14, 16,
19

Overall
Outcome
1, 2, 4–7,
10–14, 16,
19

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).
AFFIRMED