Ex Parte Boyden et al

Patent Trial and Appeal Board

Feb 27, 2014

11906096 (P.T.A.B. Feb. 27, 2014)

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

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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.
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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”).
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(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
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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
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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).
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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
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