Ex Parte Boyden et alDownload PDFPatent Trial and Appeal BoardFeb 27, 201411906096 (P.T.A.B. Feb. 27, 2014) Copy Citation 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. 11/906,096 09/28/2007 Edward S. Boyden 0606-002-026-000000 5709 44765 7590 02/28/2014 THE INVENTION SCIENCE FUND CLARENCE T. TEGREENE 11235 SE 6TH STREET SUITE 200 BELLEVUE, WA 98004 EXAMINER HO, ALLEN C ART UNIT PAPER NUMBER 2882 MAIL DATE DELIVERY MODE 02/28/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte EDWARD S. BOYDEN, RODERICK A. HYDE, MURIEL Y. ISHIKAWA, EDWARD K.Y. JUNG, ERIC C. LEUTHARDT, ROBERT W. LORD, NATHAN P. MYHRVOLD, DENNIS J. RIVET, MICHAEL A. SMITH, CLARENCE T. TEGREENE, THOMAS A. WEAVER, CHARLES WHITMER, LOWELL L. WOOD, JR., and VICTORIA Y.H. WOOD ____________ Appeal 2011-012419 Application 11/906,096 Technology Center 2800 ____________ Before CHUNG K. PAK, PETER F. KRATZ, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012419 Application 11/906,096 2 STATEMENT OF THE CASE Appellants appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 2-19, 21-32, and 35-38.1 An oral hearing was held on February 4, 2014. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We affirm the rejections. CLAIMED SUBJECT MATTER Appellants’ invention is directed to a three-step method:2 (1) performing an x-ray fluorescence imaging of an individual from a first field of view; (2) moving the x-ray fluorescence imaging apparatus to a second position; (3) performing an x-ray fluorescence of a patient from a second field of view; wherein (4) the first x-ray fluorescence imaging is substantially based on an amount of a selected element. By taking two different x-ray fluorescence images with two different fields of view, a 3-D image may be constructed from the detection of the x-ray fluorescence (Spec, p. 254). Independent claim 7 is representative of the claims on appeal and, as taken from the Claims Appendix, is set forth below: 1 Claims 1, 20, 33, and 34 have been cancelled. 2 Independent claim 25 is directed to an apparatus, while independent claim 7 is directed to a three-step method for operating that apparatus. Appellants have not made separate arguments in favor of the patentability of each independent claim (Tr. 2), and we will direct our analysis to claim 7. Appeal 2011-012419 Application 11/906,096 3 7. A method, comprising: performing a first X-ray fluorescence imaging within a first field of view in an at least some matter of an at least a portion of an at least one individual based on at least one induced fluorescent X-ray photon; operationally repositioning an X-ray fluorescence imaging apparatus from the first field of view to a second field of view; and performing a second X-ray fluorescence imaging within the second field of view within the at least some matter of the at least the portion of the at least one individual; wherein the performing the first X-ray fluorescence imaging within the first field of view is substantially based on an amount of at least one selected element within the at least some matter of the at least the portion of the at least one individual. The following rejections are appealed: (1) Claims 2, 5-9, 13-19,21,24-26, and 28-30 under 35 U.S.C. § 103(a) as unpatentable over Kumakhov, U.S. Patent No. 6,754,304, issued June 22, 2004 (“Kumakhov”) in view of Wang, U.S. Patent No. 5,044,001, issued August 27, 1991 (“Wang”). (2) Claims 3, 4, 22, and 23 under 35 U.S.C. § 103(a) as unpatentable over Kumakhov and Wang, and further in view of Janik et al., U.S. Patent No. 6,788,760, issued September 7, 2004 (“Janik”). (3) Claims 10-12 under 35 U.S.C. § 103(a) as unpatentable over Kumakhov and Wang, and further in view of Grodzins, U.S. Patent No. 5,274,688, issued December 28, 1993 (“Grodzins ʼ688”). Appeal 2011-012419 Application 11/906,096 4 (4) Claim 27 under 35 U.S.C. § 103(a) as unpatentable over Kumakhov and Wang, and further in view of Grodzins et al., U.S. Patent No. 6,801,595, issued October 5, 2004 (“Grodzins ʼ595”). (5) Claim 31 under 35 U.S.C. § 103(a) as unpatentable over Kumakhov and Wang, and further in view of Onoguchi et al., U.S. Patent No. 6,052,431, issued April 18, 2000 (“Onoguchi”). (6) Claim 32 under 35 U.S.C. § 103(a) as unpatentable over Kumakhov and Wang, and further in view of Marrs, U.S. Patent No. 6,115,452, issued September 5, 2000 (“Marrs”). (7) Claims 35-38 under 35 U.S.C. § 103(a) as unpatentable over Kumakhov and Wang, and further in view of Mueller et al., U.S. Patent No. 6,697,453, issued February 24, 2004 (“Mueller”). Appellants do not make independent arguments in connection with Rejections (2)-(7) (Br. 30; Tr. 2). Accordingly, our analysis focuses on Rejection (1). ANALYSIS The Examiner finds that Kumakhov discloses a method that comprises (a) performing a first x-ray fluorescence imaging within a first field of view in some matter of a portion of an individual based on an induced fluorescent x-ray photon (col. 7, ll. 40-43); (b) operationally repositioning an x-ray fluorescence imaging apparatus from the first field of view to a second field of view (col. 8, ll. 10-51); and (c) performing a second x-ray fluorescence imaging within the second field of view within (id.) (Ans. 4). The Examiner acknowledges that Kumakhov does not disclose that performing the first x-ray fluorescence imaging is substantially based on an Appeal 2011-012419 Application 11/906,096 5 amount of at least one selected element (id. 4). However, the Examiner finds that Wang discloses a method which comprises performing x-ray fluorescence imaging based on an amount of a selected element (col. 7, l. 11- col. 8, l. 6), and further finds that it would have been obvious to a person of ordinary skill in the art to perform the first x-ray fluorescence imaging substantially based on an amount of a selected element, because a person would be motivated to determine a presence and/or a distribution of an element of interest (Ans. 5). Appellants advance three principal arguments in support of the patentability of claim 7: (1) the Examiner has not shown that there was any motivation for a person of ordinary skill in the art to have combined Kumakhov and Wang (Br. 17-19); (2) the proposed combination of Kumakhov and Wang would render Kumakhov unsatisfactory for its intended purpose (Br. 19-21), and (3) the proposed combination of Kumakhov and Wang changes the principle of operation of Kumakhov (Br. 21-23). With regards to Appellants’ argument (1) – that the Examiner has not shown that there was any motivation for a person of ordinary skill in the art to have combined Kumakhov and Wang – the Examiner explained that Wang disclosed a need for performing x-ray fluorescence based on a specific element, which would provide sufficient motivation for the combination (Ans. 14). In response, Appellants argued the Examiner failed to articulate why a person of skill in the art would combine Wang with Kumakhov. Appellants’ argument is not persuasive, as the Examiner has indicated that Appeal 2011-012419 Application 11/906,096 6 the reason(s) why Wang performs x-ray fluorescence3 - whatever those reasons are - would motivate a person of skill in the art to make the required combination (id.). Appellants have not persuaded us that the Examiner has erred. With respect to Appellants’ argument (2), Appellants assert that because Wang’s apparatus is fixed relative to the sample it is analyzing - while Kumakhov alters the relative position of the sample and the x-ray optical system - combining the references would render Kumakhov unsatisfactory for its intended purpose (Br. 19-21). We agree with the Examiner that combining Wang’s ability to detect the presence of specific elements via x-ray fluorescence with Kumakhov’s process would not render Kumakhov unsatisfactory for its intended purpose, because it would only involve the presence of Wang’s detector’s circuitry in Kumakhov’s apparatus (Ans. 14-15). Finally, with respect to Appellants’ argument (3) - that the proposed combination of Kumakhov and Wang changes the principle of operation of Kumakhov – the Examiner notes that Kumakhov’s apparatus is capable of detecting x-ray fluorescence (col. 7, ll. 40-43; Ans. 15), and that a person of skill in the art would have recognized that Kumakhov’s scanning operation could also be performed based on that x-ray fluorescence (Ans. 15). Although Kumakhov’s analysis is made by measuring the intensity of all of the secondary scattered radiation (col. 7, ll. 40-43; col. 8, ll. 51-58), Kumakhov explicitly states that its apparatus generates and detects x-ray fluorescent radiation (col. 7, ll. 40-43). Appellants have not shown that 3 For example, Wang provides significant detail on how to measure the presence of specific elements in biological samples (col. 12, ll. 11-31). Appeal 2011-012419 Application 11/906,096 7 measuring and analyzing that radiation would change the principle of operation of Kumakhov’s apparatus. CONCLUSION (1) We AFFIRM the rejection of claims 2, 5-9, 13-19,21,24-26, and 28-30 under 35 U.S.C. § 103(a) over Kumakhov in view of Wang. (2) We AFFIRM the rejection of claims 3, 4, 22, and 23 under 35 U.S.C. § 103(a) over Kumakhov and Wang, and further in view of Janik. (3) We AFFIRM the rejection of claims 10-12 under 35 U.S.C. § 103(a) over Kumakhov and Wang, and further in view of Grodzins ‘688. (4) We AFFIRM the rejection of claim 27 under 35 U.S.C. § 103(a) as unpatentable over Kumakhov and Wang, and further in view of Grodzins ‘595. (5) We AFFIRM the rejection of claim 31 under 35 U.S.C. § 103(a) as unpatentable over Kumakhov and Wang, and further in view of Onoguchi. (6) We AFFIRM the rejection of claim 32 under 35 U.S.C. § 103(a) as unpatentable over Kumakhov and Wang and further in view of Marrs. (7) We AFFIRM the rejection of claims 35-38 under 35 U.S.C. § 103(a) as unpatentable over Kumakhov and Wang, and further in view of Mueller. 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 Appeal 2011-012419 Application 11/906,096 8 tc Copy with citationCopy as parenthetical citation