Vatech Co., Ltd. et al.

Patent Trials and Appeals Board

Feb 1, 2021

2020001535 (P.T.A.B. Feb. 1, 2021)

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.
15/301,469 10/03/2016 Tae Woo KIM 810.0072 9663
76277 7590 02/01/2021
IP LEGAL SERVICES, LLC
P.O. Box 651325
Sterling, VA 20165
EXAMINER
FOX, DANIELLE A
ART UNIT PAPER NUMBER
2884
NOTIFICATION DATE DELIVERY MODE
02/01/2021 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):
email@iplsllc.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TAE WOO KIM, IN JAE BAEK, and SOO BONG LEE
____________

Appeal 2020-001535
Application 15/301,469
Technology Center 2800
____________

Before ADRIENE LEPIANE HANLON, MONTÉ T. SQUIRE, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1–17.2 We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Vatech Co., Ltd. as the real party in
interest. Appeal Brief filed July 15, 2019 (“Appeal Br.”) at 3.
2 Final Office Action entered December 14, 2018 (“Final Act.”) at 1.
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CLAIMED SUBJECT MATTER
Appellant claims an X-ray emission apparatus (independent claim 1),
and an X-ray source (independent claim 7). Claims 1 and 7 illustrate the
subject matter on appeal, and read as follows:
1. An X-ray emission apparatus comprising:
a main body including a cartridge mounting part
configured to allow an X-ray source to be replacebley mounted
therein,
wherein the X-ray source generates X-rays onto an X-ray
irradiation path, and the X-ray source includes:
a cathode electrode located at a first end and having a
nanostructure to be used as an electron emission source;
an anode electrode located at a second end having a
target surface to emit the X-rays; and
a housing to secure and insulate the cathode electrode
and the anode electrode, and the housing configured to expose
a cathode electrode terminal connected to the cathode electrode
and an anode electrode terminal connected to the anode
electrode to an outside thereof,
wherein the cathode electrode terminal and the anode
electrode terminal differ from each other in at least one of
exposure direction, height, size, and shape, and
the cartridge mounting part includes first and second
connection terminals connected with the anode electrode
terminal and the cathode electrode terminal, respectively.

7. An X-ray source comprising:
a cathode electrode having a nanostructure to be used as
an electron emissions source;
an anode electrode having a target surface to emit X-rays
by electron collision; and
a housing to secure and insulate the cathode electrode
and the anode electrode, and the housing configured to expose a
cathode electrode terminal connected to the cathode electrode
and an anode electrode terminal connected to the anode
electrode to an outside thereof,
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wherein the cathode electrode terminal and the anode
electrode terminal differ from each other in at least one of
exposure direction, height, size, and shape,
wherein the X-ray source is adapted to be replaceably
mounted to an X-ray emission apparatus in a cartridge-type
manner.

Appeal Br. 15–16 (Claims Appendix) (emphasis and spacing added).
REJECTION
The Examiner maintains the rejection of claims 1–17 under 35 U.S.C.
§ 103 as unpatentable over Kim, et al. (KR 10-2007-0038849 A, published
April 11, 2007) in view of Sato, et al. (JP 2012-079449 A, published April
19, 2012)3,4 in the Examiner’s Answer entered October 23, 2019 (“Ans.”).
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we reverse the Examiner’s rejection of

3 The Examiner refers to this reference as “Canon,” the applicant. We,
however, refer to this reference as “Sato,” the surname of the first-named
inventor.
4 The Examiner cites numerous paragraphs of “Kim” and “Canon” (Sato) in
the Final Action. Final Act. 3–4. We note that Kim was published in
Korean and Canon (Sato) was published in Japanese, but full-length English
translations of these references are not included in the electronic file wrapper
of the present application, although it appears that Appellant did submit
copies of English translations of both references with an Information
Disclosure Statement filed October 3, 2016. The identity of the documents
cited by the Examiner in the Final Action, therefore, is not apparent on the
record before us. Consequently, in this Decision, we cite to English
translations of Kim and Sato available from the European Patent Office. In
the event of further prosecution of this application, we advise the Examiner
to make of record the Kim and Canon (Sato) documents cited in the Final
Action.

Appeal 2020-001535
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claims 1–17 under 35 U.S.C. § 103 for reasons set forth in the Appeal and
Reply Briefs, and below.
We need address only independent claims 1 and 7, which both recite,
in part, an X-ray source comprising a cathode electrode, an anode electrode,
and a housing configured to expose a cathode electrode terminal connected
to the cathode electrode and an anode electrode terminal connected to the
anode electrode to an outside thereof.
The Examiner finds that Kim discloses an X-ray source comprising a
cathode electrode, an anode electrode, and “a housing forming an external
appearance, and exposing a cathode electrode terminal connected to the
cathode electrode and an anode electrode terminal connected to the anode
electrode to an outside thereof.” Final Act. 3–4 (citing Kim ¶¶ 29, 31, 33,
Figs. 1 and 2). The Examiner finds that Kim does not “teach wherein the
cathode electrode terminal and the anode electrode terminal differ from each
other in at least one of exposure direction, height, size, and shape.” Final
Act. 4. The Examiner finds, however, that Sato discloses a housing, and
exposing a cathode electrode terminal connected to a cathode electrode and
an anode electrode terminal connected to an anode electrode to an outside of
the housing. Final Act. 4 (citing Sato ¶¶ 11, 24, 25, Figs. 1a–1c). The
Examiner finds that Sato discloses that the “cathode electrode terminal and
the anode electrode terminal differ from each other in at least one of
exposure direction, height, size, and shape.” Id.
The Examiner concludes that “[i]t would have been obvious to one of
ordinary skill in the art at the time the invention was filed to combine the
invention of Kim with the teachings of Canon [Sato] to provide retrofit
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capabilities to combine electrodes differing in size, shape, or exposure
direction.” Final Act. 4.
On the record before us, however, the Examiner does not provide a
sufficient factual basis to establish that Kim and Sato, when considered
individually or in combination, disclose or would have suggested an X-ray
source comprising a housing configured to expose a cathode electrode
terminal connected to a cathode electrode, and an anode electrode terminal
connected to an anode electrode, to an outside of the housing, for reasons
expressed by Appellant and discussed below.
Kim discloses an X-ray tube consisting of cathode (negative)
electrode side 101, anode (positive) electrode side 102, and connecting
portion 160. Kim pp. 9–11, Figs. 1 and 2. Kim discloses that cathode
(negative) electrode side 101 contains cathode electrode 110 having a
plurality of carbon nanotubes 110c densely arranged on its front side. Kim
p. 10, Figs. 1 and 2. Kim discloses that anode (positive) electrode side 102
contains anode electrode 130 having target 130s on its bottom surface. Id.
Kim discloses that connecting portion 160 allows cathode (negative)
electrode side 101 and anode (positive) electrode side 102 to assemble and
disassemble to facilitate installation and replacement of cathode (negative)
electrode side 101. Kim pp. 6, 11, Figs. 1 and 2.
Appellant argues that the Examiner does not identify any disclosure in
Kim that teaches or would have suggested a cathode electrical terminal
connected to cathode electrode 110, or an anode electrical terminal
connected to anode electrode 130, each of which are exposed to an outside
of a housing. Appeal Br. 10, 12.
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The Examiner responds to Appellant’s arguments in the Answer by
finding that Figures 1 and 2 of Kim show that cathode 110 and anode 130
can be coupled and decoupled via interface 160. Ans. 4. The Examiner
finds that “[a] functioning X-ray tube requires the positive terminal (cathode
electrode terminal) and the negative terminal (anode electrode terminal) to
be in communication,” and “Kim disclose[s] an operable x-ray tube;
therefore, the terminals are exposed to allow communication upon
coupling.” Id.
Appellant argues in the Reply Brief that the Examiner’s statements in
the Answer appear to interchange battery technology with X-ray technology.
Reply Br. 7–8. Appellant indicates that in a battery, an anode terminal is
connected via a circuit (or wire) to a cathode terminal, and when the circuit
is closed, electrons from the anode terminal move towards the cathode
terminal through the circuit. Id. Appellant indicates that in a battery,
therefore, “[i]t is appropriate to describe that the anode electrode is
connected (in communication) with the cathode electrode.” Reply Br. 8. In
contrast, Appellant argues, “[i]n an X-ray apparatus the anode electrode and
the cathode electrode are not connected (communication) as it is in a
battery.” Id. Rather, as Appellant’s Specification explains, “[i]n X-ray
technology, electrons are field emitted from nanostructures located on a
cathode electrode towards a target surface on an anode electrode based on a
voltage difference between the cathode electrode and the anode electrode,”
and the anode electrode and cathode electrode are connected to an anode
electrode terminal and a cathode electrode terminal, respectively. Reply Br.
8 (citing Spec. ¶¶ 41, 42, 77).
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Consistent with Appellant’s arguments, as discussed above, Kim
discloses, and illustrates in Figures 1 and 2, that connecting portion 160 of
Kim’s x-ray tube allows cathode (negative) electrode side 101 and anode
(positive) electrode side 102—rather than cathode 110 and anode 130 as the
Examiner asserts—to assemble and disassemble in order to facilitate
installation and replacement of cathode (negative) electrode side 101.
Figures 1 and 2 of Kim show that connecting portion 160 consists of two
distinct parts or pieces that separate in the disassembled state and connect in
the assembled state. In both the assembled and disassembled states, one of
the respective parts or pieces of connecting portion 160 encloses a side of
each of cathode (negative) electrode side 101 and anode (positive) electrode
side 102, thereby enclosing cathode 110 in cathode (negative) electrode side
101, and enclosing anode 130 in anode (positive) electrode side 102.
The Examiner does not provide any objective evidence to support the
Examiner’s assertion that because Kim’s X-ray tube is operable, it
necessarily includes a positive terminal (cathode electrode terminal) and a
negative terminal (anode electrode terminal) that are “exposed to allow
communication upon coupling.” Significantly, the Examiner does not
identify any disclosure in Kim of cathode and anode electrode terminals that
are exposed to an outside of a housing. The Examiner, therefore, does not
provide a sufficient factual basis to establish that Kim discloses or would
have suggested that an anode electrode terminal exposed to an outside of a
housing assembles and disassembles at connecting portion 160 with a
cathode electrode terminal exposed to an outside of a housing.
Nonetheless, as discussed above, the Examiner also finds that Sato
discloses exposing a cathode electrode terminal connected to a cathode
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electrode and an anode electrode terminal connected to an anode electrode to
an outside of a housing. Final Act. 4 (citing Sato ¶¶ 11, 24, 25, Figs. 1a–1c).
We find no such disclosure in Sato, however, as Appellant argues. See
Appeal Br. 11; Reply Br. 8–9.
Sato discloses an X-ray tube consisting of electron gun unit 100,
barrel unit 110, and target unit 120. Sato ¶¶ 16, 17, Fig. 1a. Sato discloses
that electron gun unit 100 includes cathode 104, while target unit 120
includes X-ray emission target 122. Sato ¶¶ 17, 18, Fig. 1a. The Examiner
does not identify with sufficient specificity any disclosure in Sato that
teaches or would have suggested a cathode electrode terminal connected to a
cathode electrode and an anode electrical terminal connected to an anode
electrode, each of which is exposed to an outside of a housing. The
Examiner, therefore, does not provide a sufficient factual basis to establish
that Sato discloses or would have suggested a cathode electrical terminal
connected to a cathode electrode, an anode electrical terminal connected to
an anode electrode, and a housing configured to expose cathode and anode
electrode terminals to an outside of the housing, as required by claims 1 and
7.
We, accordingly, do not sustain the Examiner’s rejection of claims 1
and 7, and claims 2–6 and 8–17, which each depend from either claim 1 or
claim 7, under 35 U.S.C. § 103 as unpatentable over Kim in view of Sato.

CONCLUSION

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–17 103 Kim, Sato 1–17

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REVERSED