Ex Parte Bergh

Board of Patent Appeals and Interferences

May 23, 2007

09950778 (B.P.A.I. May. 23, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RUDY VAN DEN BERGH
____________

Appeal 2007-08351
Application 09/950,778
Technology Center 2800
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Decided: May 23, 2007
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Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and LINDA M.
GAUDETTE, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 2, and 4-12. We have jurisdiction under
35 U.S.C. § 6(b).

1 An oral hearing was held on May 9, 2007.
Appeal 2007-0835
Application 09/950,778

We AFFIRM.
I. BACKGROUND
The invention relates to a luminescent intensifying screen (X-ray
conversion screen). Such screens are used in radiography systems. In
common medical radiography systems, the screens are fixed inside a cassette
so that a double-side coated silver halide emulsion film (X-ray film) can be
inserted in-between the two screens (Specification 2:31-36 and 15:12-19).
In such systems phosphor within the intensifying screen converts X-rays into
light of corresponding intensity so the light irradiates the light-sensitive
silver halide photographic emulsion layer of the X-ray film (Specification
2:20-30). The image is later developed in the film (id.). Combinations of a
single sided film with one screen are also known (Specification 3:1-8).
Because the screens are reused, they are subject to scratching during loading
and unloading of the X-ray film. To increase durability, the screens include
a protective coating over the phosphor layer (Specification 3:15-21). The
protective layer preferably has a relief structure that reduces friction and
prevents sticking during loading and unloading of the X-ray film from the
cassette (Specification 3:25-29). Forming such relief structures to an
optimum surface roughness by embossing the protective layer was known in
the art (Specification 3:34-4:4 referencing EP-A 0 510 754).
Appellant’s screen, as claimed, includes a protective coating
containing titanium dioxide in a binder of urethane acrylate, the protective
coating having a particular surface roughness. Claim 1, the only
independent claim, is illustrative of the subject matter on appeal:

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Application 09/950,778

1. Luminescent intensifying screen comprising a self-supporting or
supported layer of phosphor particles dispersed in a binding medium and,
adjacent thereto, a protective coating characterized in that said protective
coating comprises a urethane acrylate binder and titanium dioxide as a white
pigment and in that said protective coating has a surface roughness (Rz)
between 2 and 10 µm.

The references relied upon by the Examiner are as follows:

Van Landeghem US 4,386,431 May 31, 1983
Van Havenbergh US 6,120,902 Sep. 19, 2000
Yamane US 6,188,073 Feb. 13, 2001

The Examiner rejects claims 1, 2, and 4-12 under 35 U.S.C. § 103(a)
as unpatentable over Yamane in view of Van Landeghem and Havenbergh.2

II. DISCUSSION
A. Issue
The Examiner’s rejection is based on the teaching in Yamane of a
luminescent intensifying screen including the claimed supported phosphor
layer and a protective coating (Answer 4). The Examiner acknowledges that
Yamane does not specifically disclose urethane acrylate as a binder in the
protective layer or the level of roughening of the protective layer surface
(id.). According to the Examiner, it would have been obvious to roughen the
surface of Yamane’s protective layer for the same reasons as Van

2 The Examiner listed the rejection of claims 11 and 12 separately in the
Final Office Action, however, the Examiner combines the two rejections as
one in the Answer. Appellant lists two rejections under separate headings in
the Brief but includes no sufficiently specific separate arguments to claims
11 and 12 for separate consideration. Therefore, we list the rejection as one
rejection and select claim 1, the broadest independent claim to represent the
issues on appeal.
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Application 09/950,778

Landeghem roughens the foil of that reference and it would have been
obvious to optimize the roughness level through routine experimentation to
obtain the benefits taught by Van Landeghem (id., citing In re Aller, 220
F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)). Further according to the
Examiner, it would have been obvious to use a urethane acrylate
composition as a binder for the protective coating of Yamane because as
evidenced by Van Havenbergh, it was a known composition for use in
protective coatings (Answer 5).
Appellant contends that the Examiner’s reliance on Van Havenbergh
for the teaching of a urethane acrylate binder for the protective layer of
Yamane is misplaced because Van Havenbergh is directed to binders for the
phosphor layer, not the protective layer (Br. 9-10). Appellant further
contends that the Examiner’s reliance on Van Landeghem for the teachings
of roughness is misplaced because Van Landeghem is directed to a foil
rather than a screen and does not teach or suggest the claimed roughness
range of between 2 and 10 microns (Br. 10). Appellant also contends that no
criticality is disclosed in the references as to these claimed features (Reply
Br. 1-4).
The Examiner responds that the evidence supports the findings with
regard to both the binder and the roughness (Answer 5-7).
The principle issue on appeal is: Does a preponderance of the
evidence support the Examiner’s determination that one of ordinary skill in
the intensifying screen and radiography system manufacturing art would
have found it obvious at the time of the invention to have provided the
protective layer of Yamane’s screen with a urethane acrylate binder and a
surface roughness between 2 and 10 microns?
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Application 09/950,778

B. Facts
Yamane is directed to a radiographic intensifying screen including a
support, a phosphor layer, and a protective layer (Yamane, col. 2, ll. 4-7).
The protective layer contains light-scattering fine particles, preferably
particles of titanium dioxide (Yamane, col. 4, ll. 27-44). The background of
the invention section of Yamane discloses several prior art references that
disclose roughened surfaces (Yamane, col. 1, ll. 29-41). The binder
employable in the surface protective layer is not restricted, but is selected to
provide surface durability (Yamane, col. 4, ll. 45-49). The object is to
obtain a screen with good surface durability which gives a radiation image
of high sharpness with high sensitivity (Yamane, col. 1, l. 66 to col. 2, l. 3).
In preparation for use in a radiographic process, the radiographic X-ray film
is placed in contact with a screen or in-between two screens (Yamane, col. 1,
ll. 7-9; col. 5, ll. 38-42; col. 6, ll. 50-56; col. 8, ll. 47-51).
Van Havenbergh is also directed to a screen including a phosphor
element with a protective coating used in radiography systems (Van
Havenbergh, col. 1, ll. 7-18). Van Havenbergh suggests the use of urethane
acrylates in the abrasion-resistant protective coating overlaying the phosphor
layer (Van Havenbergh, col. 5, l. 45 to col. 6, l. 22).
Van Landeghem is directed to an X-ray film cassette in which air
pockets are eliminated between a reinforcing foil and an X-ray film within
the cassette (Van Landeghem, col. 1, ll. 36-39). The surface of the
reinforcing foil facing the film has a roughness of between 10 and 60
microns (Van Landeghem, col. 1, ll. 45-47). The roughness allows air to
flow out during loading and unloading of the X-ray film from the cassette so
that air pockets are eliminated on loading and sticking reduced on unloading
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(Van Landeghem, col. 1, ll. 36-58; col. 3, ll. 28-40). Roughening can be
accomplished by embedding particles or by embossing the surface (Van
Landeghem, col. 3, ll. 17-20). As shown in Figure 4, the foil 9 includes a
light-active layer 13 and particles 12, the particles 12 holding the film 11 at a
distance from the foil 9 (Van Landeghem, Fig. 4; col. 3, ll. 21-35).3 The
“foil” is in the same contacting position with the X-ray film as the “screen”
of Yamane (Figs. 1 and 2 showing foil 9, Fig. 4 showing the loading of the
X-ray film 11).
C. Analysis
With regard to the issue of whether one of ordinary skill in the art
would have found it obvious to select a urethane acrylate for the protective
layer binder in the screen of Yamane, a preponderance of the evidence
supports the determination of the Examiner. As found by the Examiner, and
contrary to the argument by Appellant, Yamane describes the inclusion of a
binder in the protective layer to provide durability (Yamane, col. 4, ll. 45-
49). Van Havenbergh describes compositions containing urethane acrylates
that provide durability to a protective layer (Van Havenbergh, col. 5, ll. 45-
49 and 65-67). This is not disputed by Appellant (Br. 9-10). The use of the
known urethane acrylate composition for its established use in a protective
coating is no more than the predictable use of a prior art element according
to its established function and, therefore there is an adequate suggestion in
the art to support the rejection. See KSR Int’l. Co. v. Teleflex, Inc., 127 S.
Ct. 1727, 1739, 82 USPQ2d 1385, 1395 (2007)(“The combination of

3 Van Landeghem contains an obvious typographical error at column 3, line
27. As shown, for instance, at column 3, line 7, reinforcing foil is properly
labeled “9” not “11.”
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familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.); see also In re
OmeprazolePatent Litigation, ___ F.3d ___, 2007 WL 1175673, at 9 (Fed.
Cir. 2007)(holding it obvious to substitute one known alkaline reacting
compound (ARC) for another where each was known to stabilize
omeprazole).
With regard to the issue of whether one of ordinary skill in the art
would have found it obvious to roughen the surface of Yamane’s protective
layer to a level between 2 and 10 microns, we also find that the
preponderance of the evidence supports the determination of the Examiner.
The contacting surface of Yamane’s screen is intended to contact the X-ray
film in the same manner as the “foil” of Van Landeghem and is subject to
the same problem, i.e, air pockets upon loading of the X-ray film and
stickiness upon unloading. Therefore, the use of the roughened surface
suggested by Van Landeghem in the screen of Yamane would have been
obvious to one of ordinary skill in art because it would have been expected
to solve the air pocket and stickiness problem known in the art. See KSR,
127 S. Ct. at 1742, 82 USPQ2d at 1397 (“One of the ways in which a
patent's subject matter can be proved obvious is by noting that there existed
at the time of invention a known problem for which there was an obvious
solution encompassed by the patent's claims.”); see also In re Kahn,
441 F.3d 977, 987-88, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)(“consider
what the combined teachings, knowledge of one of ordinary skill in the art,
and the nature of the problem to be solved as a whole would have suggested
to those of ordinary skill in the art.”).
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Moreover, Van Landeghem suggests roughening to a level of between
10 and 60 microns, a range touching Appellant’s claimed range of 2-10
microns for the same purpose of preventing stickiness. One of ordinary skill
in the art would have expected to obtain the desired air pocket elimination
and anti-stickiness at a roughness of 10 microns, a roughness encompassed
by Appellant’s claim 1. A claimed invention can be rendered prima facie
obvious by a prior art reference that discloses a range that touches the range
recited in the claim. In re Geisler, 116 F.3d 1465, 1469, 43 USPQ2d 1362,
1365 (Fed. Cir. 1997)(citing In re Malagari, 499 F.2d 1297, 1303,
182 USPQ 549, 553 (CCPA 1974)). In fact, Appellant’s own discussion of
the prior art, particularly the discussion of EP-A 0 510 754 (Specification
3:25 to 4:4), indicates that it was known in the art to roughen the surface.
Furthermore, where as here the prior art acknowledges that the
variable has effects, e.g., the effect of air flow by roughening, there is
motivation to conduct routine experimentation to optimize those effects to
get the expected benefits, i.e., elimination of air pockets and stickiness. It is
true that a routine variable change sometimes causes an unexpected effect.
In such a situation, the claimed subject matter will be unobvious under the
law if Appellant presents a showing of criticality of the range for unexpected
beneficial results. See In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219
(CCPA 1980). Note also In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d
1934, 1936-37 (Fed. Cir. 1990), and In re Aller, 220 F.2d 454, 456, 105
USPQ 233, 235 (CCPA 1955). Appellant presents no convincing evidence
of unexpected results on this record.
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D. Conclusion
We conclude that the Examiner has established by a preponderance of
the evidence that one of ordinary skill in the intensifying screen art would
have found it obvious at the time of the invention to have provided the
protective layer of Yamane’s screen with a urethane acrylate binder and a
surface roughness between 2 and 10 microns. Appellant has not convinced
us of a reversible error by the Examiner nor overcome the Examiner’s
reasonable conclusion of obviousness by a showing of secondary
considerations.

III. OTHER ISSUES
In the event of further prosecution, the Examiner should consider the
relevance of EP-A 0 510 754 to the issue of patentability. This document,
cited in the Specification at page 3, line 36, describes a screen with an
embossed protective coating with a roughness optimized to prevent sticking,
friction, and electrostatic attraction (EP '754, p. 3, ll. 35-49) and suggests
that a roughness of 3 microns for a protective coating 8 microns thick
provides favorable image sharpness (EP '754, p. 4, ll. 13-14) and includes
examples of screens with a roughness range of 1-8 microns (EP '754, p. 8, ll.
48-49; fig. 1). This document also suggests the use of urethane acrylates in
the radiation curable composition for forming the protective coating (EP
'754, p. 5, ll. 9-46; p. 8, ll. 24-30).

IV. DECISION
With regard to the decision of the Examiner to reject claims 1, 2, and
4-12 as obvious under 35 U.S.C. § 103(a), we AFFIRM.
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V. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

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BREINER & BREINER, L.L.C.
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