Ex Parte Biedron et al

Board of Patent Appeals and Interferences

Sep 28, 2010

11153815 (B.P.A.I. Sep. 28, 2010)

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.
11/153,815 06/15/2005 Sandra Gail Biedron ANL-IN-02-060 8782
46120 7590 09/29/2010
JOAN PENNINGTON
535 NORTH MICHIGAN AVENUE, UNIT 1804
CHICAGO, IL 60611
EXAMINER
HAGAN, SEAN P
ART UNIT PAPER NUMBER
2828
MAIL DATE DELIVERY MODE
09/29/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SANDRA GAIL BIEDRON, STEPHEN VAL MILTON,
and JOHN W. LEWELLEN
____________

Appeal 2009-004398
Application 11/153,815
Technology Center 2800
____________

Before MAHSHID D. SAADAT, THOMAS S. HAHN,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-004398
Application 11/153,815

2
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-6 and 8-18. Claim 7 has been canceled. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Invention
Appellants’ invention relates to a system and method for generating
tunable electromagnetic radiation extending over mm-wavelength to sub-
mm-wavelength or terahertz range using compressed electron beams and
standard accelerator system components. (Spec. 1:13-16; 2:26-28).
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A compact system for implementing the generation of
electromagnetic radiation extending over mm-wavelength to sub-mm-
wavelength or terahertz range comprising:
an electron source and accelerator for generating an electron
beam and accelerating electrons to a selected energy;
a bunch compressor for bunch compressing said electron beam
by a selected degree of compression providing an electron beam
bunch train of said compressed electron beam; said degree of
compression being selected to provide an electron beam pulse length
of said electron beam bunch train near or less than a desired terahertz
wavelength to be generated; and
an electromagnetic radiation function for generating the
electromagnetic radiation; said electromagnetic radiation function
including a transition radiation method; said transition radiation
method including at least one conductor for accelerating the
compressed electron beam for providing desired output terahertz
waves.

Appeal 2009-004398
Application 11/153,815

3
References
The prior art applied in rejecting the claims on appeal is:
Sprangle US 3,958,189 May 18, 1976
Madey US 4,283,687 Aug. 11, 1981
Brau US 4,479,218 Oct. 23, 1984
Piestrup US 5,107,508 Apr. 21, 1992
Neil US 5,541,944 Jul. 30, 1996
Biedron US 2003/0026300 A1 Feb. 6, 2003

Rejection
Claims 1-5 and 11-16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Biedron and Piestrup.
Claims 6, 8, and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Biedron, Piestrup, and Madey.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Biedron, Piestrup, and Sprangle.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Biedron, Piestrup, and Neil.
Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Biedron, Piestrup, and Brau.
We refer to the Briefs (Appeal Brief filed July 13, 2008, and Reply
Brief filed August 29, 2008) and the Answer (mailed August 6, 2008) for
their respective details. Only those arguments actually made by Appellants
have been considered in this decision. Arguments which Appellants did not
make in the Briefs have not been considered and are deemed waived. See
37 C.F.R. § 41.37(c)(1)(vii).

Appeal 2009-004398
Application 11/153,815

4
ISSUE
With respect to the rejection of claims 1-5 and 11-16, the Examiner
relies on Biedron for disclosing all the claimed features recited in claim 1,
except for “said electromagnetic radiation function including a transition
radiation method; said transition radiation method including at least one
conductor for accelerating the compressed electron beam for providing
desired output terahertz waves,” for which the Examiner relies on Piestrup
(Ans. 3-4).
Appellants argue that Piestrup neither teaches the purported limitation
nor discloses any equivalent electromagnetic radiation function (App. Br.
26). Appellants specifically assert that Piestrup discloses a method to induce
bunching within the electron beam, whereas in the present invention the
entire bunch is induced in size to the order of the wavelength to be generated
(App. Br. 27).
Appellants provide similar arguments with regard to claim 11 (App.
Br. 33-35). Regarding the rejection of the remaining claims, Appellants
provide conclusory arguments without specifying the error in the Examiner’s
position and/or stating that the other applied prior art does not cure the
deficiencies of the Biedron and Piestrup combination (App. Br. 35-41).
Therefore, pursuant to our authority under 37 C.F.R.
§ 41.37(c)(1)(vii), we select claim 1 as representative of the claims on
appeal and find that the arguments made by Appellants present us with the
following issue:
Did the Examiner err in rejecting claim 1 under 35 U.S.C. § 103(a) by
combining Biedron and Piestrup to specifically teach the claimed “said
electromagnetic radiation function including a transition radiation method;
Appeal 2009-004398
Application 11/153,815

5
said transition radiation method including at least one conductor for
accelerating the compressed electron beam for providing desired output
terahertz waves”?

FINDINGS OF FACT (FF)
1. Piestrup relates to an apparatus for the production and
amplification of collimated, monochromatic electromagnetic radiation for
technological, scientific, medical, and national defense purposes. (Col. 1, ll.
11-14.)
2. Piestrup describes a conventional, known x-ray laser as a free
electron laser that uses a periodic medium to couple electromagnetic
radiation to the electrons. (Col. 1, ll. 59-62.)
3. Piestrup further discloses that energy is exchanged resulting in
a growing electromagnetic wave and in bunching of the electrons in packets
whose longitudinal dimensions are on the order of the wavelength of the
electromagnetic wave. (Col. 2, ll. 5-9.)
4. Piestrup discloses that the disclosed synergistic interaction of
waves and electrons results in the gain or increase of the wave in a particular
direction. The process is termed synergistic in that both bunching of the
electrons and a corresponding increase in the electromagnetic wave occur
simultaneously. (Col. 2, ll. 9-14.)
5. Biedron describes a process to generate short wavelength
coherent light using various modules, which include thermonic and
photocathode, radio-frequency (RF) guns and associated drive lasers; linear
accelerators; bunch compressor systems; lasers; and planar and helical
undulator systems. (¶ [0031].)
Appeal 2009-004398
Application 11/153,815

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PRINCIPLES OF LAW
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).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. . . . [I]f a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.”
Id. at 417.
Such a showing requires
“some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness” . . . . [H]owever,
the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.
Id. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

ANALYSIS
We agree with the Examiner’s line of reasoning (Ans. 15) and find
that Piestrup does suggest sub-mm wavelength range operation by disclosing
an x-ray laser that produces electromagnetic wave in a range less than 1mm
in wavelength, as set forth in claim 1. See FF 1-2. As pointed out by the
Examiner (Ans. 15), the electromagnetic wavelength generated in Piestrup is
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Application 11/153,815

7
on the order of the longitudinal dimension of the bunched packets (FF 3-4).
We also agree with the Examiner’s finding (Ans. 15) that x-ray lasers
produce electromagnetic wavelengths that are smaller than 1mm.
In response to Appellants’ contention (App. Br. 26-27; Reply Br. 2)
that Piestrup does not disclose or suggest any mechanism or function for
“providing desired output terahertz waves,” the Examiner asserts (Ans. 13-
14) that the disputed terms merely define the intended use for the
electromagnetic radiation function, including a transition radiation method.2
To the extent that the recited electromagnetic radiation function is disclosed
to be a magnetic electron bunch wiggler 118 that produces the desired output
(Spec. 7:23-25), it reasonably reads on the bunch compressor of Biedron (FF
5). Piestrup provides the necessary modification to Biedron by disclosing
generation of sub-mm electromagnetic radiation in conjunction with
bunching of the electrons in packets (FF 1-4).
We also disagree with Appellants (App. Br. 24-26) that one of
ordinary skill in the art would not have made the combination. As pointed
out by the Examiner (Ans. 12), modifying Biedron to use the specific
apparatus for the production and amplification of electromagnetic radiation,
as suggested by Piestrup, would be recognized by a person of ordinary skill
in the art to improve Biedron in the same way without requiring knowledge
beyond that of the skilled artisan. See KSR, 550 U.S. at 417.

2 We note the inconsistency in the claim language with respect to “said
electromagnetic radiation function including a transition radiation method;
said transition radiation method including at least one conductor for
accelerating the compressed electron beam.” We read this limitation as a
structural component of the system rather than a method step.
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Application 11/153,815

8
CONCLUSION
In view of our analysis above, we find that the Examiner did not err in
rejecting claim 1 under 35 U.S.C. § 103(a) by combining Biedron and
Piestrup to specifically teach the claimed “said electromagnetic radiation
function including a transition radiation method; said transition radiation
method including at least one conductor for accelerating the compressed
electron beam for providing desired output terahertz waves.” Thus, we
sustain the 35 U.S.C. § 103(a) rejection of all the claims.

ORDER
The decision of the Examiner to reject claims 1-6 and 8-18 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(v) (2010).

AFFIRMED

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JOAN PENNINGTON
535 NORTH MICHIGAN AVENUE, UNIT 1804
CHICAGO, IL 60611