Ex Parte Daniel

Board of Patent Appeals and Interferences

Jan 30, 2009

10889753 (B.P.A.I. Jan. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PREMJIT J. DANIEL
____________

Appeal 2008-6191
Application 10/889,753
Technology Center 2800
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Decided: January 30, 2009
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Before CHUNG K. PAK, TERRY J. OWENS, and
MICHAEL P. COLAIANNI , Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-22, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).

Appeal 2008-6191
Application 10/889,753

The Invention
The Appellant claims a structure and method for shielding radiation in
an X-ray generator. Claim 1 is illustrative:
1. A structure for shielding radiation in an X-ray generator comprising:
a first layer comprising a first substance; and
a second layer comprising a second substance;
wherein:
said first substance comprises at least one material having
substantial thermal transfer property; and
the second substance comprises at least one radiation shielding
material, and
wherein the structure has a substantially circular cross section
with no substantially straight-line portion of the cross section.

The References
Gerth 5,883,938 Mar. 16, 1999
Guzik 6,257,762 B1 Jul. 10, 2001

The Rejection
Claims 1-22 stand rejected under 35 U.S.C. § 103 over Guzik in view
of Gerth.
OPINION
We affirm the Examiner’s rejection.
The Appellant argues the claims as a group (Br. 12-20). We therefore
limit our discussion to one claim, i.e., claim 1. See 37 C.F.R. § 41.37(c)
(1)(vii) (2007).
Issue
Has the Appellant shown reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
obvious, to one of ordinary skill in the art, a structure for shielding radiation
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Application 10/889,753

in an X-ray generator, comprising a first layer including at least one material
having substantial thermal transfer property, and a second layer including at
least one radiation shielding material, wherein the structure has a
substantially circular cross section with no substantially straight-line portion
of the cross section?
Findings of Fact
Guzik discloses “an x-ray tube casing coating for preventing lead
contamination of oil” (col. 1, ll. 6-7). The coating (which corresponds to the
Appellant’s first layer) is a metal (30), and is electroplated on both sides of a
lead sheet (28) (which corresponds to the Appellant’s second layer) that is
subsequently attached to the inside of an aluminum casing (26) (col. 1,
ll. 46-50, 56-58; col. 2, l. 65 – col. 3, l. 2; col. 3, ll. 19-22, 33-36; Fig. 1).
Prior to attachment, “[t]he ductile lead can be formed to shape after the lead
is plated with layers 30” (col. 3, ll. 31-32). The coated lead sheet can be
deformed in a radius of 1 cm (col. 3, ll. 22-24). The cross section of Guzik’s
illustrated coated lead sheet has a straight-line portion (Fig. 1).
Gerth discloses “an X-radiator having a protective housing, an X-ray
tube accommodated therein, and a radiation protective exterior cladding that
is formed by a jacket surrounding the protective housing at the outside,
containing at least one protective substance and being completely removable
from the exterior of the protective housing” (col. 2, ll. 9-15). The protective
substance preferably is lead, a lead alloy or lead rubber, and can have a
reinforcing layer (17) which can be a light metal such as aluminum or an
aluminum alloy (col. 2, ll. 59-67; col. 3, ll. 53-60). Gerth teaches that unlike
known lead layers applied to the inside of a protective housing and which
must be matched to frequently complicated protective housing shapes,
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Appeal 2008-6191
Application 10/889,753

Gerth’s jacket applied to the exterior of the housing need not be precisely
shaped to the housing’s exterior but, rather, can have a simple cylindrical pot
shape (col. 2, ll. 19-25; col. 4, ll. 1-8). Gerth’s illustrated protective housing
is substantially cylindrical, and the illustrated jacket is adapted to that shape
(col. 3, ll. 31-38; Fig. 3).
Analysis
The Appellant argues that “both Guzik and Gerth address the same
problems of how the oils react with the leading coatings in the X-ray
machines, causing significant problems in the maintenance of the X-ray
machines” (Br. 15), and that “a person of ordinary skill in the art at the time
of the invention would not have reasonably looked to Gerth to solve the
problems already solved by Guzik.” See id.
The relevant question is whether Gerth would have led one of
ordinary skill in the art, through no more than ordinary creativity, to make
Guzik’s casing 26 and, accordingly, electroplated lead sheet 28/30,
substantially circular in cross section. See KSR Int’l. Co. v. Teleflex Inc.,
127 S. Ct. 1727, 1741 (2007) (In making an obviousness determination one
“can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ”). Gerth’s indication that a
substantially circular housing shape is an alternative to the known frequently
complicated shapes (col. 2, ll. 19-25; col. 3, ll. 31-38), and Guzik’s
indication that the electroplated lead sheet is ductile and can be formed into
the desired shape (col. 3, ll. 22-24, 31-32), would have led one of ordinary
skill in the art, through no more than ordinary creativity, to use Guzik’s
electroplated lead sheet not only in a housing having the complicated shape
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Appeal 2008-6191
Application 10/889,753

disclosed by Guzik (Fig. 1), but also in a substantially circular housing as
disclosed by Gerth (Fig. 3).
Moreover, Gerth discloses a substantially circular jacket including a
lead, lead alloy or lead rubber protective layer (18) (which corresponds to
the Appellant’s second layer) and having a reinforcing layer (17) which can
be aluminum or an aluminum alloy (which corresponds to the Appellant’s
first layer having a substantial thermal transfer property) but preferably is a
fiber-reinforced polymer (col. 2, ll. 59-67; col. 3, ll. 31-32, 53-60; Figs. 1, 3,
4). That structure, when the reinforcing layer is made of aluminum or
aluminum alloy, meets all of the requirements of the Appellant’s claim 1.1
The Appellant argues that the Examiner used impermissible hindsight
in using terms from the Appellant’s claims in the Examiner’s search (Br. 16-
19).
Because the Examiner was searching for the Appellant’s claimed
invention, it was proper for the Examiner to use terms from the Appellant’s
claims.
The Appellant argues that if fitting Guzik’s electroplated sheet to
Gerth’s substantially cylindrical housing would have been obvious, then
“any of the specific aspects of either Guzik or Gerth could be combined with
any other aspect of an invention in the field of X-ray devices and be
obvious” (Br. 19).
The conclusion of that argument does not follow logically from the
premise. The use of in Guzik’s structure of a substantially cylindrical

1 The Appellant’s claim 1 does not require that the structure goes inside,
rather than outside, an X-ray generator housing.
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Appeal 2008-6191
Application 10/889,753

housing as disclosed by Gerth would have been prima facie obvious to one
of ordinary skill in the art for the reason given above.
Conclusion of Law
The Appellant has not shown reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
obvious, to one of ordinary skill in the art, a structure for shielding radiation
in an X-ray generator, comprising a first layer including at least one material
having substantial thermal transfer property, and a second layer including at
least one radiation shielding material, wherein the structure has a
substantially circular cross section with no substantially straight-line portion
of the cross section.
DECISION/ORDER
The rejection of claims 1-22 under 35 U.S.C. § 103 over Guzik in
view of Gerth is affirmed.
It is ordered that the Examiner’s decision 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).
AFFIRMED

tc/cam

RAMIREZ & SMITH
P.O. BOX 341179
AUSTIN, TX 78734
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