Ex Parte Snoeren et alDownload PDFPatent Trial and Appeal BoardMar 2, 201612594958 (P.T.A.B. Mar. 2, 2016) Copy Citation 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. 2 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 3 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 4 Copy with citationCopy as parenthetical citation