Ex Parte 6130931 et al

Board of Patent Appeals and Interferences

Mar 13, 2012

90010580 (B.P.A.I. Mar. 13, 2012)

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.
90/010,580 07/10/2009 6130931 1000-001 1481
37468 7590 03/14/2012
STOCKWELL & SMEDLEY, PSC
861 CORPORATE DRIVE, SUITE 200
LEXINGTON, KY 40503
EXAMINER
LEE, CHRISTOPHER E
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
03/14/2012 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
____________

BOARD OF PATENT APPEALS AND INTERFERENCES
____________

Ex parte ELISABETH KATZ and INDUTCH PROCESS
CONTROLS, INC.
____________

Appeal 2011-012657
Reexamination Control 90/010,580
Patent 6,130,931
1

Technology Center 3900
____________

Before KARL D. EASTHOM, KEVIN F. TURNER, and STEPHEN C. SIU
Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL

1
Laurila et al., X-ray Fluorescence Elemental Analyzer (issued
Oct. 10, 2000).
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Patent 6,130,931

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STATEMENT OF THE CASE
This proceeding arose from a third party request for ex parte
reexamination of the ’931 patent. Appellant and real parties in interest,
Elisabeth Katz and Indutech Process Controls, Inc.,

seeks review under
35 U.S.C. § 134(b) and appeals from the final rejection of claims 1, 3, and
4.
2
(See Reply Br. 2-3.)
We AFFIRM.
The ’931 patent and contested claims describe a method and apparatus
for analyzing the composition of coal, mineral ores and other products using
energy dispersive X-ray fluorescence (XRF) spectroscopy. (See ‘931 patent,
Abstract.)
Claim 1, on appeal, follows:
1. (Original) An apparatus for the online detecting or analyzing of the
elements in a sample comprising:
at least one X-ray source for directing X-rays toward the sample; and
at least one detector for detecting X-ray fluorescence from the sample
and producing signals in response thereto, said X-ray detector being
mounted within two inches of the sample to maximize X-ray detection and
sensitivity.

2
In the Examiner’s Answer at page 3, the Examiner withdrew rejections to
claims 2, 5-11, 13-16, 23, and 24.
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The Examiner relies on the following prior art references at issue on
appeal:
Boyce et al. US 4,510,573 Apr. 9, 1985
Raatikainen WO 96/15442 May 23, 1996
The Examiner maintains the rejection of claims 1, 3, and 4 under
35 U.S.C. § 103(a) as obvious over Boyce and Raatikainen. (Ans. 4.)

ISSUE
Did Appellant establish that the Examiner erred in finding that the
combination of Boyce and Raatikainen renders obvious an “X-ray detector
being mounted within two inches of the sample to maximize X-ray detection
and sensitivity,” as recited by claim 1 and an X-ray source “transmission
axis,” as generally recited by dependent claims 3 and 4?

FINDINGS OF FACT
The ’931 Patent
P1. The ’931 patent refers to “online” in the following context:
a sampling means wherein the sample is nonstationary
relative to the analyzer. For example, in one embodiment
of the present invention, the analyzer remains in a fixed,
stationary position adjacent to a moving sample stream.
In another embodiment, the sample remains fixed, and
the analyzer is scanned across the sample.
(Col. 2, ll. 59-65.)
P2. The ’931 patent defines the “transmission axis” of the
X-ray source as “the axis along which X-ray emissions reach a
maximum.” (Col. 4, ll. 56-58.)
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Boyce
B1. Boyce is directed to a method and apparatus “for performing
X-ray fluorescence analysis where the physical relationship between the
source/detector and the object being examined is not controlled.” (Abs.)
B2. Figure 2 of Boyce, depicted at right, depicts a
probe 20 containing a radiation source 50, detector 60,
circuit 70 for processing X-ray fluorescence signals
received from detector 60 and transmitting to analyzer 90
(not shown), forward shield 120, and rear shield 122.
(Col. 5, ll. 37-68; see Fig. 2.)
(Figure 2 depicts probe 20 performing an assay in a borehole.)
B3. Figure 3F of Boyce, depicted at right, depicts radiation source 50,
detector 60, and shield 122 in an alternative geometric arrangement from
that depicted in Figure 2. Specifically, Figure 3F
depicts source 50F and detector 60F arranged
along the same axis concentrically to one another
with rear shield 122F therebetween reducing the
reflected radiation beam reaching detector 60F. (Col. 6, ll. 29-39; col. 5, ll.
63-68; see Fig. 3.)
(Figure 3F represents an alternative arrangement of a source and a
detector in the probe of Figure 2.)
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B4. Boyce’s probe 20 has a diameter of about 1 ¼ inches and
operates in a borehole as small as 1 ½ inches in diameter within a matrix
(i.e., sample). (Col. 5, ll. 33-35 and 61-63.)
B5. Boyce describes that in addition to the arrangements of
Figures 3A-3F, numerous geometrical arrangements can be devised by those
skilled in the art. (Col. 6, ll. 37-39.)
B6. Boyce additionally describes that the distance between the probe
and the sample varies depending on the size of the probe and borehole.
(Col. 11, ll. 17-19.) Boyce also teaches accounting for “source[s] of error,”
generally associated with noise, such “as temperature, drift and the like,”
using a “sensitive measure of how accurately the detector” functions.
(Col. 11, l. 62 - col. 12, l. 7.)
B7. Boyce describes the probe operation as follows:
As the probe is being lowered, the operator observes light
emitting diode 470 on the operator's control panel. If no
radiation is received at the probe that is characteristic of
the x-ray fluorescence spectrum of the element being
assayed, the diode is not lighted and there is no reason to
take an assay. When sufficient characteristic radiation is
received, the diode alerts the operator to the desirability
of performing an assay and the operator initiates the
assay with the “Manual Assay” or “Auto Assay” key.
(Col. 15, l. 62 – col. 16, l. 5.)
B8. Boyce’s probe can be employed in many applications, including
the detection of trace elements in process streams, baggage or freight
inspection, or the movement of a chemical through a body. (Col. 16, ll. 29-
47.)
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Raatikainen
R1. Raatikainen is directed to a method and system for determining
the content of an element from a flowing sample mass using X-ray
fluorescence. (Abs.)
R2. Raatikainen discloses that “the distance the detector has from the
sample also has a significant effect on the amount of attenuation in the air
space. Therefore, when measuring light elements, it is preferable to
minimize . . . distance.” (P. 9, ll. 12-16.)

PRINCIPLES OF LAW
Obviousness
Section 103 forbids issuance of a patent when “the
differences between the subject matter sought to be patented
and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said subject
matter pertains.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).

ANALYSIS
Appellant contends that the combination of Boyce and Raatikainen
fails to teach or suggest a “X-ray detector being mounted within two inches
of the sample to maximize X-ray detection and sensitivity,” as recited by
claim 1. (Br. 19; see also Reply Br. 8.) Specifically, Appellant argues that
the “placement of the analyzer of claim 1 within two inches of the sample
was not an instantly and unquestionably known concept for which it is
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appropriate to take Official Notice for the presently claimed-invention.”
(Br. 20.) These contentions lack merit for the reasons that follow.
As Appellant recognizes, any issue related to taking of Official Notice
“is largely semantic,” as the Examiner relies on “modifying Boyce according
to Raatikainen or facts allegedly supported by Raatikainen.” (See Reply
Br. 9.) For example, to satisfy the two inch distance limitation in claim 1,
the Examiner reasons that since the borehole in Boyce is 1 ½ inches in
diameter and the probe containing the X-ray source and X-ray fluorescence
detector has a diameter of about 1 ¼ inches, then the X-ray detector would
be approximately ¼ of an inch away from the rock (i.e., sample). (See Ans.
5, 10, n. ϯ; accord B2-B4.) Additionally, Boyce explains that the distance
between the probe and the sample varies depending on the size of the probe
and borehole. (B6.)
While the Examiner finds that “Boyce does not expressly teach that
said mounting within two inches maximizes X-ray detection and sensitivity”
(Ans. 5), the Examiner turns to Raatikainen to address the recited detection
and sensitivity limitation(s).
As the Examiner reasons (Ans. 10-11), Raatikainen’s method and
system for determining the content of an element from a flowing sample
mass using X-ray fluoroscopy provides evidence to support the Examiner’s
rationale that it was well-known in the art that minimizing the distance
between an X-ray detector and sample minimizes attenuation. (R2.)
Moreover, ordinarily skilled artisans would have understood that minimizing
attenuation maximizes the signal strength at the detector.
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While Appellant argues that “it cannot be assumed that minimizing
the detector distance is desirable in every conceivable X-ray fluorescence
application” and “[s]uch an assumption would be counter to the general
consideration or preference for increasing (not decreasing) the distance of
detection to improve accuracy and/or minimize background noise (Reply
Br. 5-7), Appellant fails to direct attention to evidence supporting these
attorney arguments. At best, Appellant demonstrates possible trade-offs.
But ordinarily skilled artisans employing common sense and knowledge
would have sought to maximize the signal to noise ratio. No such artisan
logically would have placed a detector in any position in which the signal
would be buried in the noise as Appellant’s arguments imply. As stated
supra, Raatikainen shows a preference of minimizing distance to overcome
attenuation which in turn increases the signal strength at the detector. (See
R2.)
Appellant’s arguments fail to explain persuasively why the combined
teachings do not satisfy the disputed functional limitations in claim 1.
Appellant’s Brief attempts to show disclosed support for these disputed
functional limitations as follows:

said X-ray detector being mounted within two inches of the
sample to maximize X-ray detection and sensitivity (See, e.g.,
Col. 2, line 66 through col. 3, line 3 – “By mounting the XRF
elemental analyzer in close proximity (< 2 inches) to a moving
stream of fine coal or ore, it is possible to obtain direct
measurements of characteristic Ka and in some cases, Kβ, X-
rays for many of the elements in the Periodic Table between
aluminum and silver.”; Col. 4, lines 46-47 – “The detector(s)

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10 and generator(s) are mounted within 2 inches of the surface
of the sample.”).

(See Summary of the Claimed Subject Matter, Br. 3-4 (quoting the ‘931
patent).)
The cited passages do not address, in an explicit manner, the disputed
functional limitations related to maximal detection and sensitivity. Nor does
Appellant direct attention to what “maximizing . . . detection and sensitivity”
means. “It is the applicant’s burden to precisely define their invention, not
the PTO’s.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997).
At best, by providing the above-quoted citation, Appellant indicates
that placing a detector within two inches of a sample implicitly satisfies the
claimed functional limitation of “maximiz[ing] X-ray detection and
sensitivity.” Since Boyce discloses or suggests a similar detector located
within two inches of the sample as claimed, Appellant has the burden to
demonstrate that the functional limitations which depend on that structure
are not satisfied. “Where, as here, the claimed and prior art products are
identical or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an applicant to prove
that the prior art products do not necessarily or inherently possess the
characteristics of [the] claimed product.” In re Best, 562 F.2d 1252, 1255
(CCPA 1977); see also In re King, 801 F.2d 1324 (Fed. Cir. 1986).
3

3
The Examiner recognized this relationship between Boyce’s similar
structure (probe to sample distance) and function (maximal detection and
sensitivity) by taking “Official Notice” as to the function and also citing to
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Moreover, Boyce and Raatikainen both use X-ray fluorescence
analysis to determine the contents of a sample. (B1, R1.) An artisan in
possession of Boyce, which describes an X-ray detector mounted within two
inches of a sample (B4), would have appreciated the teaching in Raatikainen
that minimizing the distance between an X-ray detector and sample
minimizes attenuation (R2). This attenuation minimization necessarily
increases signal strength at the detector. Boyce also teaches accounting for
noise and other errors to increase the accuracy of the detector, and also
discusses altering the relative source, detector, and sample distances. (B6.)
A desire to optimize a device for its intended function, in this case,
signal detection, virtually constitutes an implicit motivator. See Dystar
Textilfarben GmBH & Co. Dutschland KG v. C.H. Patrick Co., 464 F.3d
1356, 1368 (Fed. Cir. 2006) (“[A]n implicit motivation to combine exists …
when the ‘improvement’ is technology-independent and the combination of
references results in a product or process that is more desirable, for example
because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable,
or more efficient.”) The combined teachings of Boyce and Raatikainen
show a desire to increase signal strength and account for errors and distance.
On this record, these teachings render obvious maximizing X-ray detection
and sensitivity as required by claim 1. Obviousness flows from the “normal
desire of scientists or artisans to improve upon what is already generally
known.” In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).

Raatikainen to support it. (See Ans. 12-13.) This finding is sufficient to
shift the burden to Appellant to prove otherwise.
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Additionally, Appellant argues that the systems of Boyce and
Raatikainen differ substantially, and as such, it would not have been obvious
to modify the borehole probe of Boyce according to the examples of
Raatikainen. (Br. 20.) Specifically, Appellant asserts that Raatikainen’s
disclosure is limited to “light elements.” (Reply Br. 9.) Moreover, based
upon these differences, Appellant contends that the combined teachings of
the references would change their principles of operation. (Br. 22.)
In response, the Examiner states that the combination is not predicated
on modifying Boyce’s probe “according to the examples in Raatikainen.”
(Ans. 13.) Rather, any required modification simply applies the general
desire expressed in Raatikainen to minimize distance and corresponding
signal attenuation. As the Examiner recognizes, this minimization
necessarily maximizes signal strength at the detector and thereby satisfies or
renders obvious the disputed functional limitations. (See Ans. 12-13.)
Accordingly, Appellant’s arguments are not persuasive to show error.
Also, regardless of any alleged differences, Boyce and Raatikainen
both use X-ray fluorescence analysis to determine the contents of a sample.
(B1, R1.) An artisan in possession of Boyce, which describes an X-ray
detector mounted within two inches of a sample in a small diameter bore
(B2, B4), would have appreciated the teaching in Raatikainen that
minimizing the distance between an X-ray detector and sample minimizes
attenuation and increases signal strength. Given this knowledge, it would
have been obvious to one having ordinary skill in the X-ray fluoroscopy art
to adjust the distance between Boyce’s X-ray detector and a sample to
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within two inches to optimize the detector performance while ensuring that
the detector fits into small diameter bores.
Appellant also argues that Boyce fails to disclose an “apparatus for
online detecting and analyzing,” as recited in the preamble of claim 1.
(Br. 20-21; see also Reply Br. 10-11.) To support this argument, Appellant
asserts that the term “online” is defined in the’931 patent as “a sampling
means wherein the sample is nonstationary relative to the analyzer.”
(Br. 21.) As such, Appellant contends that the probe in Boyce “appears to
remain stationary while the assay is performed for a given location.”
(Br. 21; accord P1.) In contrast, the Examiner states that Boyce discloses
the preamble of claim 1 and further reasons that it recites an “apparatus for
online detecting or analyzing,” not an “apparatus for online detecting and
analyzing,” as alleged by Appellant. (See Ans. 13.) Appellant’s contentions
lack merit for the reasons that follow.
The preamble limitation constitutes an intended use. Even if it is
afforded weight, the combination of Boyce and Raatikainen renders obvious
“for online detecting or analyzing of the elements in a sample,” as recited in
the preamble of claim 1. Appellant does not direct attention to evidence
showing that the combined probe could not have been employed for the
intended use. Boyce discloses several uses, including those involving
moving targets, and also discloses that as the probe is lowered into the
borehole, it performs detection (presence), if not analysis. (See B7, B8.) As
such, even if the preamble is afforded weight, it reads on Boyce’s probe
which detects or analyzes elements in a sample as it is lowered into the
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borehole. Raatikainen’s probe similarly analyzes a flowing sample mass,
thereby rendering obvious the online detection. (R1.)
Based on the foregoing discussion, Appellant has not shown error in
the Examiner’s rejection of claim 1.
With respect to claims 3 and 4, Appellant argues that the combination
of Boyce and Raatikainen does not teach or suggest a transmission axis as
defined and claimed in the ‘931 patent. Appellant maintains that Boyce’s
probe produces source radiation in a disc-like pattern which results in the
detector receiving X-ray fluorescence from the sample over a full 360 degree
arc. As such, Appellant contends that the combination fails to teach or
suggest “wherein said at least one X-ray source is characterized by a
transmission axis and wherein said at least one X-ray fluorescence detector
is characterized by a detection axis, and wherein said transmission axis and
said detection axis are aligned to within 30 degrees of the sample surface
normal,” as recited by dependent claim 3. (Br. 23-24; see also Reply Br. 13-
14.) To support the argument, Appellant relies upon a definition for
“transmission axis” appearing in the ‘931 patent; i.e., “the axis along which
X-ray emissions reach a maximum.” (Br. 23 (quoting the ‘931 patent at
col. 4, ll. 57-58); accord P2.)
The Examiner finds that Boyce discloses an X-ray source with a
transmission axis and a detector with a detection axis aligned to within
30 degrees of the sample surface normal. (Ans. 16.) Specifically, the
Examiner relies on Figure 3F of Boyce which depicts source 50F and
detector 60F arranged concentrically to one another and showing reflected
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radiation form the sample within 30 degrees of the source 50F transmission
axis and detector 60F detection axis. (See B3.)
But Appellant maintains that the arrows in Figure 3F of Boyce
“appear to only refer to an exemplary path along which a portion of the
radiation travels to reach the detector - not a ‘transmission axis’ of
maximum emission of radiation as defined in the subject ’931 patent.”
(Br. 23; Reply Br. 15.) Appellant fails to direct attention as to how this
disclosed or claimed maximum transmission occurs. Based on Appellant’s
citations to the ‘931 patent (Br. 23), any maximal transmission appears to
occur as a natural result of radiation emanating from and being received in
normal axes of major surfaces of the source, detector, and sample, because
the ‘931 patent places these source, detector, and sample (disc-like) surface
normals to within 30 degrees of each other. (See ‘931 patent, col. 4, ll. 54-
57; Fig. 2A.) Moreover, Figure 2A of the ‘931 patent appears to be similar
to Boyce’s configuration in Figure 3F with respect to these surface normals
and angles.
4

Appellant’s arguments do not show error. The arrows in Boyce, at the
least, suggest a direction of maximum emission of radiation, or as Appellant
characterizes it, “an exemplary path,” especially where the arrows emanate
to and from an angle near or at a predominant sample surface normal.
5

4
The Figure 2A and 2B embodiments depict similar radiation arrows and
disc-like sources, detector inputs, and planar samples which would similarly
appear to transmit, detect, and reflect a “360 degree arc” as Appellant
characterizes Boyce’s radiation.
5
Skilled artisans would have recognized that dish or disc reflectors transmit
maximally along the normal to the disc or dish. For example, even a hand-
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Also, Boyce’s “rear shield 122F” implies that radiation near the
transmission axis is intense, as it reduces a portion of the reflected radiation
reaching the detector. (See B3.) Similar to the analysis supra, where the
prior art and disclosed structures are the same or similar and are employed in
the same or similar manner for radiation emission and sample detection,
Appellant bears the burden under Best and King to demonstrate by evidence
or persuasive argument that the proposed combination fails to teach the
disputed function. Moreover, sending and receiving radiation along surface
normals of a dish-like transmitters, reflectors, or receivers would have been
obvious as known paths flowing naturally therefrom for maximal radiation
intensity.
Based on the foregoing discussion, Appellant has not shown error in
the Examiner’s rejection of claims 3 and 4.

held disc-like mirror or flashlight reflects or emanates maximal radiation
along their reflector normals (and the radiation spreads as it travels – i.e.,
reduces its intensity along the normal).
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DECISION
The Examiner’s decision to reject claims 1, 3, and 4 is affirmed.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
AFFIRMED

ak

STOCKWELL & SMEDLEY, PSC
861 CORPORATE DRIVE, SUITE 200
LEXINGTON, KY 40503

Third Party Requester:

QUALITY CONTROL, INC.
138 GREENWING COURT
GEORGETOWN, KY 40324