Ex Parte Akers

Board of Patent Appeals and Interferences

Apr 15, 2009

10788743 (B.P.A.I. Apr. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DOUGLAS W. AKERS
____________

Appeal 2008-6187
Application 10/788,743
Technology Center 3600
____________

Decided:1 April 15, 2009
____________

Before: WILLIAM F. PATE, III, JENNIFER D. BAHR, and STEFAN
STAICOVICI, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-6187
Application 10/788,743

2
STATEMENT OF THE CASE
Douglas W. Akers (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1-10, 12-19, and 21-23, which are
all of the claims pending in the application. We have jurisdiction over this
appeal under 35 U.S.C. § 6 (2002).

The Invention
Appellant’s claimed invention is directed to a method for performing
non-destructive testing of materials using positron annihilation.
Specification, para. [0003].
Claims 1 and 12, reproduced below, are illustrative of the claimed
subject matter.
1. A method for evaluating a material specimen,
comprising:
mounting a neutron source adjacent the
material specimen;
mounting a detector adjacent the material
specimen;
bombarding the material specimen with
neutrons from the neutron source to create prompt
gamma rays within the material specimen, some of
the prompt gamma rays being emitted from the
material specimen, some of the prompt gamma
rays resulting in the formation of positrons within
the material specimen by pair production;
collecting positron annihilation data by
detecting with the detector a plurality of emitted
annihilation gamma rays resulting from the
annihilation of positrons, the detector producing
the positron annihilation data;
Appeal 2008-6187
Application 10/788,743

3
processing collected positron annihilation
data in accordance with a Doppler-broadening
algorithm; and
continuing to collect and process positron
annihilation data to measure an accumulation of
lattice damage over time.

12. A method for evaluating a material specimen,
comprising:
mounting a neutron source adjacent the
material specimen;
mounting a detector adjacent the material
specimen;
bombarding the material specimen with
neutrons from the neutron source to create prompt
gamma rays within the material specimen, some of
the prompt gamma rays being emitted from the
material specimen, some of the prompt gamma
rays resulting in the formation of positrons within
the material specimen by pair production;
collecting positron annihilation data by
detecting with the detector a plurality of emitted
annihilation gamma rays resulting from the
annihilation of positrons, the detector producing
the positron annihilation data;
storing the positron annihilation data on a
data storage system for later retrieval and
processing; and
continuing to collect and store positron
annihilation data, the continued collected and
stored positron annihilation data being indicative
of an accumulation of lattice damage over time.

Appeal 2008-6187
Application 10/788,743

4
The Rejections
Appellant seeks review of the Examiner’s rejections of claims 1-10,
12-19, and 21-23 under 35 U.S.C. § 112, first paragraph, as containing
subject matter that is not described in the Specification in such a way as to
enable one skilled in the art to use the invention, and under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellant regards as the invention.
Appellant does not contest the Examiner’s provisional rejection of
claim 2 under the judicially created doctrine of obviousness type double
patenting over claim 3 of copending Application 10/383,096. Therefore, we
summarily sustain this rejection.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

ISSUES
In rejecting the claims under 35 U.S.C. § 112, first paragraph, the
Examiner asserts that Appellant’s Specification provides neither an adequate
description nor enabling disclosure as to: a) how one selects the Doppler-
broadening algorithm or positron lifetime algorithm to use; and b) what, if
any, modifications have to be done to adapt the selected algorithms to
Appellant’s situation, for example, how the constants that are inherently part
of any algorithm are evaluated. Answer 4. According to the Examiner,
Appellant’s Specification “basically sets forth the algorithms and data
processor as ‘black boxes’ without sufficient details of internals thereof, to
enable an artisan to make and use an operative embodiment of the invention,
Appeal 2008-6187
Application 10/788,743

5
without undue experimentation.” Answer 5. For example, the Examiner
alleges that Appellant’s Specification “indicates that there are different
known Doppler broadening algorithms but fails to disclose which of these
known algorithms would be suitable for use in the present invention”,
thereby leaving the artisan to resort to a “trial-and-error process” to select
one of the known algorithms. Id. The Examiner further asserts that
Appellant’s Specification fails to set forth the conditions, or criteria, used to
determine from the processed data whether defects are present, so as to
prevent false identification of defects (a high false-positive rate). Answer 7-
8. Additionally, the Examiner contends that Appellant’s Specification does
not disclose how the Doppler-broadening and positron lifetime algorithms
are combined in order to produce an output data indicative of the presence or
absence of a lattice defect. Answer 9-10. The Examiner asserts that
Appellant’s Specification lacks enabling disclosure of which of the known
algorithms can be used with a single detector. Answer 10. The Examiner
additionally points to Appellant’s failure to disclose details of feedback
between the data processing system and each of the algorithms, as illustrated
in Fig. 2. Id. Finally, the Examiner alleges that claim 12 lacks an essential
step of processing in order to effect a “method of evaluating a material
specimen” (emphasis ours) as called for in the preamble of the claim.
Answer 12-13.
In response, Appellant asserts that the Examiner has not addressed the
factors set forth in In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988),
discussed further infra, to support the assertion that the disclosure in
Appellant’s application is insufficient to enable a person of ordinary skill in
the art to practice the claimed invention without undue experimentation.
Appeal 2008-6187
Application 10/788,743

6
Appeal Br. 22. In essence, Appellant contends that given that Doppler-
broadening algorithms and positron lifetime algorithms are well known in
the art, as indicated in Appellant’s Specification and undisputed by the
Examiner, the Specification need not describe them further. Appeal Br. 23.
According to Appellant, a person of ordinary skill in the art would well
know how to pick a suitable algorithm and select appropriate constants,
making any experimentation routine, and not undue. Id. Appellant further
asserts that much of the Examiner’s rationale for the rejection for lack of
enablement is based on limitations not in the claims. Appeal Br. 16-21.
The Examiner’s stated rationale for the indefiniteness rejection stems
essentially from the concerns of the Examiner set forth in the enablement
rejection. Answer 14-15.

OPINION
The enablement provision of 35 U.S.C. § 112, first paragraph,
requires the specification of a patent application to describe the invention,
and the manner and process of making and using it, “in such full, clear,
concise, and exact terms as to enable any person skilled in the art to which it
pertains, or with which it is most nearly connected, to make and use the
same.” “The enablement requirement ensures that the public knowledge is
enriched by the patent specification to a degree at least commensurate with
the scope of the claims.” Nat’l Recovery Techs., Inc. v. Magnetic Separation
Sys., Inc., 166 F.3d 1190, 1195-96 (Fed. Cir. 1999). Accordingly, the
specification must provide sufficient teaching such that one skilled in the art
could make and use the full scope of the invention without undue
experimentation. CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1338
Appeal 2008-6187
Application 10/788,743

7
(Fed. Cir. 2003); Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1365
(Fed. Cir. 1997); Wands, 858 F.2d at 736-37. “The key word is ‘undue,’ not
‘experimentation.’” Wands, 858 F.2d at 737 (quoting In re Angstadt, 537
F.2d 498, 504 (CCPA 1976)). That is, the specification need only teach
those aspects of the invention that one skilled in the art could not figure out
without undue experimentation. See, e.g., Nat’l Recovery Techs., 166 F.3d
at 1196 (“The scope of enablement . . . is that which is disclosed in the
specification plus the scope of what would be known to one of ordinary skill
in the art without undue experimentation.”); Wands, 858 F.2d at 736-37
(“Enablement is not precluded by the necessity for some experimentation
such as routine screening”). In calling into question the enablement of an
applicant’s disclosure, the examiner has the initial burden of advancing
acceptable reasoning inconsistent with enablement so as to shift the burden
to the applicant to show that one of ordinary skill in the art could have
practiced the claimed invention without undue experimentation. In re
Strahilevitz, 668 F.2d 1229, 1232 (CCPA 1982).
Factors to be considered in determining whether a disclosure would
require undue experimentation include (1) the quantity of experimentation
necessary, (2) the amount of direction or guidance presented, (3) the
presence or absence of working examples, (4) the nature of the invention, (5)
the state of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of the claims.
Wands, 858 F.2d at 737.
While the Examiner has pointed to specific details, such as the values
for the constants used in the algorithms described in Appellant’s
Specification, which are not disclosed in Appellant’s Specification, the
Appeal 2008-6187
Application 10/788,743

8
Examiner has not adequately explained or shown that such details could not
have been determined by a person of ordinary skill in the art without undue
experimentation. Appellant correctly points out that the Examiner has not
addressed any of the Wands factors to show that the omission of such details
from Appellant’s application renders Appellant’s disclosure insufficient to
enable a person of ordinary skill in the art to practice the invention without
undue experimentation.
Appellant’s Specification admits that “systems for detecting positron
lifetimes, as well as the algorithms utilized thereby,” were well-known in the
art at the time the present application was filed and “could be easily
provided by persons having ordinary skill in the art after having become
familiar with the details of the present invention.” Specification 17, para.
[0046]. The Examiner does not dispute that systems and algorithms for
detecting positron lifetimes were well-known in the art at the time the
present application was filed. Appellant’s Specification also admits that
“[s]everal different types of Doppler-broadening techniques have been
developed and are being used in the positron annihilation art and could be
easily implemented in the present invention by persons having ordinary skill
in the art after having become familiar with the teachings of the present
invention.” Specification 18, para. [0048] (emphasis ours). Moreover,
Appellant’s Specification even gives a particular example, by reference to an
issued US patent incorporated by reference in its entirety, of a Doppler-
broadening algorithm suitable for use in the present invention. Id.
The Examiner has not disputed that Doppler-broadening techniques
were known and used in the positron annihilation art at the time of the
present invention. The Examiner likewise has not offered any evidence or
Appeal 2008-6187
Application 10/788,743

9
explanation as to why the particular Doppler-broadening algorithm referred
to in Appellant’s Specification would have been unsuitable for the present
invention or why the disclosure incorporated from the referenced US patent
would have been inadequate to enable one of ordinary skill in the art to
practice Appellant’s claimed invention. The Examiner has not made any
findings whatsoever as to the relative level of skill in the art, or explained
why the selection of either the particular positron lifetime algorithm or the
Doppler-broadening algorithm from among the known algorithms, or the
constants and other adaptations thereto, for application to Appellant’s
invention, would have required more than routine skill and experimentation.
Indeed, the Examiner has not made any findings as to how much
experimentation, if any, would actually be required by a person of ordinary
skill in the art.
As for the Examiner’s criticism that Appellant’s Specification fails to
set forth the conditions or criteria to be used to determine from the processed
data whether defects are present, we note that Appellant’s claims are
directed to a method for evaluating a material specimen, not to a method for
classifying a material specimen as acceptable or not acceptable. Therefore,
it is not necessary that the Specification disclose specific criteria or
thresholds to effect such classification. Moreover, it is a well understood
principle of quality control that setting very conservative criteria or
sensitivity standards may lead to false indications of defects (false positives),
while setting more lax criteria or thresholds may lead to defective specimens
not being screened out. Quality control standards are determined largely by
industry or regulatory standards in the industry in which the specimen is
used.
Appeal 2008-6187
Application 10/788,743

10
The Examiner’s insistence that the Specification disclose how the
Doppler-broadening and positron lifetime algorithms are combined appears
to us to be grounded on an unsupported assumption that the algorithms, or
the results therefrom, are mathematically combined. The Examiner has not
specifically pointed to any explicit disclosure in Appellant’s Specification
that the algorithms are mathematically combined. Nor do the claims
explicitly require mathematical combination of the outputs of the algorithms.
As indicated in paragraph [0007] of Appellant’s Specification, the output
from the Doppler-broadening algorithm is indicative of positron momentum,
which tends to be relatively high in a defect-free or tight lattice structure and
relatively low in structures with microcracks or large lattice structures.
According to paragraph [0008] of Appellant’s Specification, the positron
lifetime data provides “[a]dditional information about the electron density of
the material at the site of the annihilation.” Thus, it is not clear that the
Doppler-broadening and positron lifetime algorithms are in fact
mathematically combined. Rather, it appears that they provide the reviewer
of the data, whether human or automated, with different types of information
upon which a determination to accept or reject the specimen may be based.
In a related criticism, the Examiner points to an omission of disclosure
in Appellant’s Specification of details of feedback between the data
processing system and each of the algorithms, as illustrated in Fig. 2. Once
again, there is no clear support in Appellant’s Specification for any direct
interaction between the Doppler-broadening algorithm and the positron
lifetime algorithm. There is no indication in Appellant’s Specification that
the illustration of the double-headed arrow between the data processing
system 24 and each of the algorithms implies anything more than the input
Appeal 2008-6187
Application 10/788,743

11
of unprocessed data from the data storage means in the data processing
system 24 to each of the algorithms and the output of processed data from
each of the algorithms to the data storage means in the data processing
system. In any event, the Examiner has not provided any evidence or
reasoning to show that Appellant’s claimed invention requires feedback
between the data processing system and each of the algorithms which would
not have been appreciated and understood by those of ordinary skill in the
art at the time the present application was filed.
The Examiner has not provided evidence or reasoning to support the
assertion that Appellant’s Specification lacks enabling disclosure of which
of the known algorithms can be used with a single detector, as opposed to
two detectors. Appellant’s Fig. 7 depicts a detector assembly 116 that
includes a single detector 130 that detects both prompt gamma rays and
annihilation gamma rays, and produces prompt gamma ray data 120 and
positron annihilation data 122. Specification 21, para. [0053]. This is an
alternative to the embodiment depicted in Fig. 3, wherein two detectors 30
and 32 are used to provide input to the positron lifetime algorithm.
Specification 16, para. [0044].
Finally, the Examiner’s assertion that claim 12 lacks an essential step
of processing in order to effect a method of evaluating a material specimen
appears to be grounded on a narrower construction of the term “evaluating”
than indicated in Appellant’s Specification. In interpreting claim language,
we apply the broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in the art, taking
into account whatever enlightenment by way of definitions or otherwise that
may be afforded by the written description. See In re Morris, 127 F.3d
Appeal 2008-6187
Application 10/788,743

12
1048, 1054 (Fed. Cir. 1997). See also In re Am. Acad. of Sci. Tech. Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004). Appellant’s Specification clearly
contemplates an embodiment of the present invention wherein the data
processing system 224 serves merely as a data collection device, collecting
the prompt gamma ray data 220 and/or the positron annihilation data 222
produced by the detector assembly 216, and storing the data in a data storage
system for later retrieval and processing. Specification 28, para. [0071].
Additionally, in summarizing the invention, Appellant’s Specification states
that “[a] method for evaluating a material specimen comprises: … collecting
positron annihilation data by detecting with the detector at least one emitted
annihilation gamma ray resulting from the annihilation of a positron; storing
the positron annihilation data on a data storage system for later retrieval and
processing ….” Specification 6, para. [0013]. This clearly evidences that
Appellant’s Specification uses the term “evaluating” in the sense of
collecting data about the specimen by detecting annihilation gamma ray
emission and storing that data for later retrieval and processing. This is
entirely consistent with the ordinary and customary meaning of the term
“evaluate,” namely, “1. To ascertain or fix the value or worth of. 2. To
examine and judge carefully; appraise.” THE AMERICAN HERITAGE
DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. 2000),
http://www.bartelby.com (last visited Apr. 4, 2009).
The Examiner’s rejection of claims 1-10, 12-19, and 21-23 under the
second paragraph of 35 U.S.C. § 112 is that the claims are vague, indefinite,
and incomplete on the basis that their metes and bounds cannot be
determined because of the purported deficiencies of Appellant’s
Appeal 2008-6187
Application 10/788,743

13
Specification, discussed above. Answer 14-15. This rationale is not
persuasive for the reasons discussed above.

CONCLUSIONS OF LAW
The Examiner has failed to discharge the initial burden of advancing
acceptable reasoning inconsistent with enablement so as to shift the burden
to the Appellant to show that one of ordinary skill in the art could have
practiced the claimed invention without undue experimentation.
Accordingly, the rejection of claims 1-10, 12-19, and 21-23 under 35 U.S.C.
§ 112, first paragraph, cannot be sustained. The Examiner’s rejection of
claims 1-10, 12-19, and 21-23 under 35 U.S.C. § 112, second paragraph, as
being indefinite, likewise cannot be sustained.
The provisional rejection of claim 2 under the judicially created
doctrine of obviousness-type double patenting is sustained.

DECISION
The Examiner’s decision is affirmed as to claim 2 and reversed as to
claims 1, 3-10, 12-19, and 21-23.
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) (2007).
AFFIRMED-IN-PART

Appeal 2008-6187
Application 10/788,743

14

mls

Alan D. Kirsch
BBWI
PO BOX 1625
IDAHO FALLS, ID 83415-3899