Ex Parte Snoeren et al

Patent Trial and Appeal Board

Mar 2, 2016

12594958 (P.T.A.B. Mar. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/594,958 03/02/2010 Rudolph M. Snoeren
24737 7590 03/04/2016
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
P.O. BOX 3001
BRIARCLIFF MANOR, NY 10510
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2007P00716WOUS 8802
EXAMINER
IGYARTO, CAROLYN
ART UNIT PAPER NUMBER
2884
NOTIFICATION DATE DELIVERY MODE
03/04/2016 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):
debbie.henn@philips.com
marianne.fox@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RUDOLPH M. SNOEREN, HEIDRUN STEINHAUSER,
NICOLAAS J. NOORDHOEK, and MATTHIAS SIMON1
Appeal2014-004674
Application 12/594,958
Technology Center 2800
Before BRADLEY R. GARRIS, JAMES T. MOORE, and
MARK NAGUMO, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner's
rejection under 35 U.S.C. § 103(a) of claims 1-122 as unpatentable over
Saito et al. (US 5,025,462, issued June 18, 1991) (hereinafter "Saito"). We
have jurisdiction under 35 U.S.C. § 6.
1 Koninklijke Philips Electronics, N.V. is identified as the real party in
interest. App. Br. 2.
2 Method claim 9 inappropriately depends from independent device claim 1
rather than independent method claim 8. This informality should be
corrected in any further prosecution that may occur.
Appeal2014-004674
Application 12/594,958
We AFFIRM.
Appellants claim a detector device for detecting a primary radiation
(e.g., x-rays) comprising a scintillator 12, a photo detector 14, and a
secondary radiation source 20 for irradiating the scintillator with a secondary
radiation to produce a spatially more uniform response of the scintillator to
the primary radiation, wherein the secondary radiation is UV light
(independent claim 1, Figs. 1-2) having a wavelength from 350 nm to 450
nm (dependent claim 2). Appellants also claim a method for operating such
a detector device which comprises irradiating a scintillator with UV light
(independent claim 8).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. A detector device for detecting a primary radiation, the device
compnsmg:
a scintillator which generates a converted primary radiation in
response to incoming primary radiation;
a photo detector for detecting said converted primary radiation;
a secondary radiation source for irradiating said scintillator with a
secondary radiation to thereby produce a spatially more uniform response of
the scintillator to primary radiation; said secondary radiation having a
wavelength different from a wavelength of said primary radiation, wherein
said secondary radiation is UV light.
Appellants do not present separate arguments specifically directed to
individual claims except for dependent claim 2 (App. Br. 4--8) such that
claims 3-12 will stand or fall with representative claim 1.
We sustain the§ 103 rejection of the appealed claims for the reasons
expressed in the Final Action, the Answer, and below.
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Appeal2014-004674
Application 12/594,958
The Examiner finds that Saito discloses a detector device of the type
defined by claims 1 and 2 except that Saito' s secondary radiation source is
disclosed as providing radiation in the form of light generically rather than
UV light specifically as required by claim 1 having a wavelength from 350
nm to 450 nm as required by claim 2 (Final Act. 4-5). The Examiner
concludes that it would have been obvious to determine, and provide Saito
with, specific light forms and wavelengths suitable for performing Saito' s
desired function (i.e., compensating for radiation damage of the scintillators
and preventing the detection sensitivity of the scintillators from being
lowered (Saito, Abst.)), thereby yielding the claim 1 source of UV light
having wavelengths within the claim 2 range (Final Act. 5).
Appellants argue that the Examiner has failed to establish a prima
facie case of obviousness because Saito' s disclosure of light generically
would not have suggested UV light having a wavelength from 350 nm to
450 nm as claimed (App. Br. 4-8). According to Appellants, the mere
reference to light by Saito does not provide a reasonable expectation that UV
light would be successful and does not provide a disclosure of any
wavelengths at all (see, e.g., Reply Br. 4-5).
Appellants' arguments lack persuasive merit. Initially, we point out
that Appellants are incorrect in arguing that Saito does not disclose any
wavelengths. The artisan of ordinary skill would recognize that Saito' s
disclosure of light inherently discloses the wavelengths possessed by light.
Appellants also are incorrect in believing that the disclosure of light
generically would not have suggested specific forms of light including UV
light having specific wavelengths as claimed. Saito' s disclosure of light
generically but not individual forms of light specifically evinces that it
would have been within the skill of an artisan to determine specific light
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Appeal2014-004674
Application 12/594,958
forms and wavelengths suitable for practicing the function served by the
light of Saito. Appellants' opposing view is contrary to the presumption that
the US patent of Saito is valid and thus supported by a Specification
disclosure which would have enabled those with ordinary skill in the art to
make and use Saito's invention (see 35 U.S.C. § 112(a) and 35 U.S.C. § 182,
first sentence).
The Appeal and Reply Briefs also include the argument that the
wavelengths defined by claim 2 provide unexpectedly advantageous results
(App. Br. 8 and Reply Br. 8-9 (both citing Spec. disclosures at pp. 6, 8, 11,
and 12)).
The Specification disclosures cited in the Briefs do not characterize
any results as unexpected. In the record of this appeal, only the attorney
who wrote these Briefs states that the claim 2 wavelengths provide
unexpected results. Such attorney-statements are inadequate to establish
unexpected results. See In re Geisler, 116 F.3d 1465, 1470-71 (Fed. Cir.
1997) (mere attorney statement that a result is surpnsmg does not constitute
the factual evidence required to rebut a prima facie case of obviousness).
In summary, Appellants' arguments fail to reveal error in the
Examiner's§ 103 rejection of claims 1-12 as unpatentable over Saito.
The decision of the Examiner is affirmed.
TIME PERIOD
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).
AFFIRMED
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