Luis Alberto. Cruz

Patent Trials and Appeals Board

Dec 20, 2019

14040345 - (D) (P.T.A.B. Dec. 20, 2019)

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.
14/040,345 09/27/2013 Luis Alberto CRUZ VAR-13-019-US 9418
78145 7590 12/20/2019
Murabito, Hao & Barnes LLP (Varian)
111 North Market Street
Suite 700
San Jose, CA 95113
EXAMINER
CHOI, JAMES J
ART UNIT PAPER NUMBER
2881
NOTIFICATION DATE DELIVERY MODE
12/20/2019 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):
Officeaction@mhbpatents.com
ipdocket@varian.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte LUIS ALBERTO CRUZ
____________________

Appeal 2018-007614
Application 14/040,345
Technology Center 2800
____________________

Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS, and
N. WHITNEY WILSON, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
September 13, 2017 decision finally rejecting claims 1, 7–11, 16, 17, 22, 23,
25, and 262 (“Final Act.”). We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Varian Medical Systems Inc. as the
real party in interest (Appeal Br. 4).
2 Claims 2–6, 12–14, 18, and 19 have been withdrawn from consideration.
Claims 15, 20, 21, 24, and 27 are cancelled (Final Act. 3).
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CLAIMED SUBJECT MATTER
Appellant’s disclosure relates to an energy degrading device for
attenuating energy of a particle beam with reduced emittance growth
(Abstract). An energy degrader comprises an emittance control material that
can preferentially scatter the beam particles that is incident on a surface with
a shallow angle (id.). The energy degrader may be composed of carbon
nanotubes, which may serve to preferentially scatter beam particles towards
the central beam axis as well as attenuate energy thereof (id.). Details of the
claimed structure are set forth in representative claim 1, which is reproduced
below from the Claims Appendix to the Appeal Brief:
1. A radiation therapy system comprising:
an accelerator operable to generate a particle beam; and
an energy degrader comprising carbon nanotubes and
coupled to said accelerator, wherein said carbon nanotubes are
configured to both attenuate energy of said particle beam to a
predetermined value by virtue of particle scattering and
constrain spatial emittance growth by virtue of particle
interactions with the particle beam, wherein said particle
scattering causes said spatial emittance growth of said particle
beam, and wherein further said carbon nanotubes are oriented
substantially in an incident direction of said particle beam at an
entrance of said energy degrader.

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REJECTIONS
1. Claims 1, 8, 11, 16, 23, 25, and 26 are rejected under
35 U.S.C. § 103(a) as unpatentable over Tombrello3 in view of Moyers4 and
Wang.5
2. Claims 7 and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tombrello in view of Moyers and Wang, and further in
view of Tsoupas.6
3. Claims 9, 10, 17, and 22 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Tombrello in view of Moyers and Wang, and further in
view of Bert.7

DISCUSSION
Appellant does not argue any claim or rejection separately (see,
Appeal Br. 23–24). Accordingly, we focus our discussion on the rejection of
claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). The remaining claims will stand
or fall with claim 1.
The Examiner’s findings underlying this rejection are set forth at
pages 4–5 of the Final Action. In part, the Examiner finds that Tombrello
discloses each limitation of claim 1, except that Tombrello does not

3 Tombrello Jr. et al., US 2013/0032731 A1, pub. Feb. 7, 2013
(and ultimately issued on March 25, 2014 as US 8,678,012 B2).
4 Moyers et al., US 5,440,133, issued August 8, 1995.
5 Y. Wang et al., “Energy loss of charged particles moving in cylindrical
tubules,” Physical Review A, Vol. 66, 04294 (2002).
6 Tsoupas et al., US 2010/0230620 A1, published September 16, 2010.
7 Bert et al., US 2011/0303858 A1, published December 15, 2011.
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explicitly disclose (1) that the source for generating a particle beam is an
accelerator, (2) that the energy of the particle beam is attenuated to a
predetermined value, and (3) that the attenuation of the particle beams is
attributed to the nanotubes, and that the nanotubes are oriented in
substantially an incident direction of said particle beam at an entrance of
said energy degrader (id.).
With respect to difference (1), the Examiner finds that it was known
that accelerators could be used to generate proton beams and, therefore, it
would have been obvious to use an accelerator as described in the claims
because use of such an accelerator was known for this purpose and
Tombrello did not specify a specific source to generate the proton beams
(Final Act. 4).
With respect to difference (2), the Examiner finds that Moyers
discloses a system which takes into account beam attenuation to achieve a
desired energy level for a specific kind of treatment (id.) The Examiner
determines that it would have obvious to precisely control Tombrello’s
particle beam to achieve a specific (i.e. predetermined) energy in order to
optimize specific treatments (Final Act. 5).
Finally, with respect to difference (3), the Examiner finds that Wang
discloses an experimentally determined relationship between proton energy
loss and the distance the beam travels through nanotubes oriented
substantially in an incident direction of said particle beam (Ans. 5, citing
Wang, Figs. 5–7, p. 2, col. 1). The Examiner determines that it would have
been obvious to orient the nanotubes oriented in an incident direction of the
particle beam because:
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“a person having ordinary skill in the art would have been
motivated to look for ways to improve control and
predictability of the beam characteristics through each part of
the system in order to obtain a desired final beam quality,
including taking into account the predetermined attenuation
characteristics of nanotubes arranged substantially in the beam
direction, in the manner taught by Wang.”
(Final Act. 5).
Appellant argues that the combination of Tombrello, Moyers, and
Wang does not teach or suggest an energy degrader comprising carbon
nanotubes that serve to both attenuate the energy of a particle beam and
constrain spatial emittance growth of the beam (Appeal Br. 15).
In particular, Appellant first argues that Tombrello does not teach
carbon nanotubes configured “to constrain spatial emittance growth by
virtue of particle interactions with the particle beam,” because
Tombrello relies on heavy metal scattering to redirect the beam (Appeal Br.
16). Appellant argues that Tombrello’s discloses a beam guiding apparatus
where the beam passes through a helix annular channel, which can be carbon
nanotubes, which has “scattering centers” which serve to guide the beam
(Appeal Br. 16, citing Tombrello, ¶¶ 10, 12, 15, 22). According to
Appellant, Tombrello only discloses the use of carbon nanotubes as a
support for the heavy atoms which are used to guide the beam (i.e. constrain
its spatial growth) (Appeal Br. 18).
In response, the Examiner agrees that Tombrello does teach that its
scattering centers guide the beam, but finds that the carbon nanotubes
disclosed by Tombrello “will contribute to beam control” (Ans. 2). The
Examiner finds that carbon nanotubes “will inherently provide beam
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shaping, directing, and attenuation,” and points to Wang as supporting this
finding (Ans. 2–3, citing Wang, p. 66). In this regard, Wang states that “one
of the most fascinating aspects is the interaction of charged particles with
carbon nanotubes” and “carbon nanotubes may be used as waveguides for
transporting and focusing charged particle beams” (Wang p. 66).
Appellant does not contest this specific finding of inherency. Accordingly,
Appellant’s argument that Tombrello does not disclose or suggest carbon
nanotubes “configured “to constrain spatial emittance growth by virtue of
particle interactions with the particle beam” is not persuasive of reversible
error.
Appellant’s second argument is that although Tombrello discloses
using carbon nanotubes to prevent build-up of electrostatic charge, it
“provides no indication of particle interaction between the carbon
nanotubes and the proton beam that act to constrain beam spatial
emittance growth” (Appeal Br. 19). In effect, this is the same as the first
argument discussed above, and is not persuasive for the same reasons.
Third, Appellant argues that Tombrello teaches away from the
claimed invention (Appeal Br. 21). Appellant contends that Tombrello is
directed to a proton beam guide apparatus where high depth of penetration
(travelling distance) is the objective (Appeal Br. 22). As support for this
contention, Appellant points to Paragraphs 54 and 55 of Tombrello which
respectively state: “These calculation shows that substantial penetration of a
proton beam even in strongly bent glass capillaries could be obtained,” and
“[t]his result indicates that there is a well-defined acceptance angle for
propagation of protons through annular nanotubes” (id.). Therefore,
according to Appellant, Tombrello suggests to a person of skill in the art that
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proton beam attenuation as the beam traverses the guide is undesirable
because this would run counter to the asserted objective of achieving a high
penetration depth (Appeal Br. 23). Appellant argues this means that a
person of skill in the art would be led away from the proposed combination
of Tombrello with Moyers and Wang, as these each suggest proton beam
attenuation, which is undesirable for Tombrello (id.).
The foregoing argument is not persuasive of reversible error.
Whether a reference teaches away from a claimed invention is a
question of fact. See In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005).
“A reference may be said to teach away when a person of ordinary skill,
upon reading the reference … would be led in a direction divergent from the
path that was taken by the applicant.” In re Haruna, 249 F.3d 1327, 1335
(Fed. Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich., Inc., 192 F.3d
1353, 1360 (Fed. Cir. 1999)). “When a piece of prior art ‘suggests that the
line of development flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant’ the piece of prior art is said
to ‘teach away’ from the claimed invention.” Medichem, S.A. v. Rolabo,
S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d
551, 553 (Fed. Cir. 1994)). A prior art reference must be considered in its
entirety, i.e., as a whole, including portions that would lead away from the
claimed invention. See W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d
1540, 1550 (Fed. Cir. 1983). However, “[t]he prior art’s mere disclosure of
more than one alternative does not constitute a teaching away from any of
these alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed….” In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004).
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In this instance, as noted by the Examiner and as discussed above, the
evidence of record suggests that Tombrello’s nanotubes inherently attenuate
the proton beam. Thus, the evidence teaches that some attenuation of the
proton beam is not incompatible with Tombrello’s objective. Moreover, as
found by the Examiner, while Tombrello does favor high beam energies,
beam therapy, which is Tombrello’s goal, does not require maximizing beam
energy in lieu of all other concerns (Ans. 4–5), citing Moyers 6:53–56 and
6:64–7:16 as showing that effective beam therapy requires control of the
beam energy.
Thus, as found by the Examiner, Tombrello does not teach away from
the combination with Moyers. In fact, the two references appear to be
compatible and combinable in the manner suggested by the Examiner.
Accordingly, we determine that Appellant has not shown reversible
error in the rejection of claim 1 over Tombrello in view of Moyers and
Wang. Therefore, we affirm that rejection. Because Appellant does not
make different arguments for any other claim (see, Appeal Br. 23–25), we
also affirm the rejections of the remaining claims.

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CONCLUSION
In summary:

Claims
Rejected
35 U.S.C.
§
References(s)/Basis Affirmed Reversed
1, 8, 11, 16,
23, 25, 26
103(a) Tombrello, Moyers,
Wang
1, 8, 11, 16,
23, 25, 26

7, 9 103(a) Tombrello, Moyers,
Wang, Tsoupas
7, 9
9, 10, 17, 22 103(a) Tombrello, Moyers,
Wang, Bert
9, 10, 17, 22
Overall
Outcome
1, 7–11, 16,
17, 22, 23,
25, 26

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED