Ex Parte Kindem et al

Board of Patent Appeals and Interferences

Jul 31, 2012

10776645 (B.P.A.I. Jul. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOEL KINDEM and LARS S. CARLSON
____________

Appeal 2009-014490
Application 10/776,645
Technology Center 2800
____________

Before BRADLEY W. BAUMEISTER, DENISE M. POTHIER, and
JEFFREY S. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-014490
Application 10/776,645

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-7, 9, 11-14, 16-26, 29, and 32-52. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

Invention
Appellants’ invention relates to a scintillator assembly with a pre-
formed reflector. Title.

Representative Claim
1. A scintillator assembly, comprising:
an array of scintillator material comprising plural pixels
of separated scintillator material, each having outer surfaces of
a first shape, and a bridge formed of uncut scintillator material
between said pixels, holding together the plural separated pixels
in a specified geometry; and
a preformed reflector formed of polyethylene, further
comprising titanium dioxide as an additive to said polyethylene,
having plural inner surfaces which each mate with said array of
plural separated pixels,
and wherein said bridge has specified surfaces between
the pixels that hold said array of scintillator material of said
array at least partly within said pre-formed reflector.

Prior Art
DiBianca US 4,429,227 Jan. 31, 1984
Skillicorn US 5,550,378 Aug. 27, 1996
DiFilippo US 6,078,052 June 20, 2000
Hoffman US 6,087,665 July 11, 2000
Freund WO 02/25311 A1 Mar. 28, 2002
O’kane US 2002/0060300 A1 May 23, 2002
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Application 10/776,645

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Freund US 6,894,282 B2 May 17, 2005

Examiner’s Rejections
Claims 1-7, 11-14, 17-21, 24, 29, and 32-52 stand rejected under
35 U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement.
Claims 1-7, 11-14, 17-21, 24, 29, and 32-52 stand rejected under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
Claim 44 stands rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Freund (WO 02/25311 A1)1, DiBianca, and Skillicorn.
Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Freund, O’kane, and Hoffman.
Claims 22 and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Freund, DiBianca, Skillicorn, and DiFilippo.
Claims 25 and 26 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Freund, DiBianca, Skillicorn, and O’kane.

Claim Groupings
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of claims 1, 9, 16, and 44.

1 The Examiner cites Freund (US 6,894,282 B2) as a translation of Freund
WO 02/25311 A1.
Appeal 2009-014490
Application 10/776,645

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ANALYSIS
Section 112, enablement, rejection of claims 1-7, 11-14, 17-21, 24, 29,
and 32-52
Claim 1 recites “said bridge has specified surfaces between the pixels
that hold said array of scintillator material of said array at least partly within
said pre-formed reflector.” The Examiner finds that the Specification does
not disclose how the specified bridge surfaces are used to hold the
scintillator at least partly within the pre-formed reflector. Ans. 4.
According to the Examiner, an exit window bridge is not required for pixels
to be held within the reflector in one disclosed embodiment. Ans. 10-11.
Appellants contend that paragraphs 27 and 28 of Appellants’ Specification
provide enablement support for independent claims 1 and 37. Br. 11-12.
We agree with the Examiner. Paragraph 27 states that “the pixels 202
of array 201 are held in the appropriate position relative to each other by
surfaces of an exit window bridge 205 spanning the gaps 206 between the
pixels 202.” Appellants have not explained how a bridge that holds pixels in
an appropriate position relative to each other enables a bridge having
specified surfaces between the pixels that hold said array of scintillator
material of said array at least partly within said pre-formed reflector.
Appellants have not addressed the Examiner’s enablement rejection of
independent claim 44.
We sustain the enablement rejection of claims 1-7, 11-14, 17-21, 24,
29, and 32-52.

Appeal 2009-014490
Application 10/776,645

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Section 112, written description, rejection of claims 1-7, 11-14, 17-21,
24, 29, and 32-52
The Examiner finds that “wherein said bridge has specified surfaces
between the pixels that hold said array of scintillator material of said array at
least partly within said pre-formed reflector” as recited in claim 1 and
“wherein said bridging portion has specified surfaces that hold said array
two dimensionally within said pre-formed reflector” as recited in claim 37
are not supported by the Specification as originally filed. Ans. 5.
Appellants contend that paragraphs 27 and 28 of Appellants’ Specification
provide written description support for independent claims 1 and 37. Br. 11-
12.
The written description requirement is satisfied when an applicant
conveys with reasonable clarity to those skilled in the art that, as of the filing
date sought, he or she was in possession of the claimed invention.
Appellants have not presented evidence to show that Appellants were in
possession of “wherein said bridge has specified surfaces between the pixels
that hold said array of scintillator material of said array at least partly within
said pre-formed reflector” as recited in claim 1 and “wherein said bridging
portion has specified surfaces that hold said array two dimensionally within
said pre-formed reflector” as recited in claim 37 at the time of filing.
Appellants have not addressed the Examiner’s written description
rejection of independent claim 44.
We sustain the written description rejection of claims 1-7, 11-14, 17-
21, 24, 29, and 32-52.

Appeal 2009-014490
Application 10/776,645

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Section 112, second paragraph, rejection of claim 44
Claim 44 recites “said shape mates with, and is held in place by,
corresponding surfaces on said preformed reflector” and “performing [sic:
pre-forming?] a protrusion on at least one of said inner surfaces of said
reflector for forming at least one air gap between adjacent scintillator
material surfaces and the reflector.” According to the Examiner, when a
surface is separated by an air gap, the surface cannot be held in place by the
reflector. Ans. 5-6, 11-12. Appellants contend that the protrusion which
forms the air gap is part of the reflector and holds the scintillator material in
place. Br. 12.
Claim 44 recites “shape mates with, and is held in place by,
corresponding surfaces.” The claim does not require the entire surface to
“mate with” the shape. The protrusion is a corresponding surface within the
meaning of claim 44. The Examiner on pages 11 and12 of the Answer is
reading limitations into the claim that are not recited in the claim. We find
no basis for reading an embodiment from the Specification into the claim.
Moreover, even if we were to assume that the phrase “shape mates
with, and is held in place by, corresponding surfaces” requires that a
scintillator surface’s entire area be touching the surface of a reflector (i.e.,
not spaced apart by a protrusion), as maintained by the Examiner, claim 44
still does not require that the entire surface area of every single surface
“mate with, and [be] held in place by, corresponding surfaces.” Instead,
claim 44 reasonably reads on, for example, a scintillator device wherein the
areas of some surfaces entirely touch the respective surfaces of the
reflectors, and wherein other surfaces of the scintillator are spaced from their
respectively opposing reflector walls by protrusions that form air gaps.
Appeal 2009-014490
Application 10/776,645

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We do not sustain the rejection of claim 44 under 35 U.S.C. § 112,
second paragraph.

Section 103 rejection of claim 9
The Examiner finds that DiBianca teaches bonding material that
forms an air gap, and Skillicorn teaches stretched wires for aligning the
placement of scintillator elements. Ans. 6-7, 13-14. Appellants contend that
DiBianca creates an air gap by requiring an extra step of adding adhesive.
Br. 13. According to Appellants, an air gap formed from adhesive material
is entirely different from a reflector formed from a protrusion on the
preformed reflector that allows an air gap. Br. 14.
We disagree with Appellants. Claim 9 does not exclude an extra step
of adding adhesive to form a protrusion. Further, Appellants have not
persuasively explained why a protrusion formed from adhesive material is
entirely different from the protrusion recited in claim 9. Appellants have not
provided persuasive evidence or argument to distinguish “a protrusion
formed as a part of said inner surfaces of said preformed reflector, said
protrusion forming a spacer to form said air gap” as recited in claim 9 from
an adhesive material protrusion formed as a part of said inner surfaces of
said preformed reflector, said protrusion of adhesive material forming a
spacer to form an air gap as taught by DiBianca.
We sustain the rejection of claim 9 under 35 U.S.C. § 103. Appellants
have not provided arguments for separate patentability of claims 22, 23, 25,
and 26, which fall with claim 9.

Appeal 2009-014490
Application 10/776,645

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Section 103 rejection of claim 16
Appellants contend that Hoffman does not teach using different
materials within pixels of a preformed reflector as claimed. Br. 15.
However, claim 16 does not recite using different materials within pixels of
a preformed reflector. Claim 16 recites “at least one scintillator pixels of
said array comprises at least one material differing from a second material of
another scintillator pixels.”
Hoffman teaches scintillators having a plurality of different
scintillation materials (col. 4, ll. 28-32) such as high light output material
104 and low radiation damage factor material 108 (col. 3, ll. 36-43). When
the scintillators with different scintillation materials 104 and 108 of
Hoffman are used in the pixels of Freund, then “one scintillator pixels” of
Freund has “one material (104) … differing from a second material (108) of
another scintillator pixels” within the meaning of claim 16.
We sustain the rejection of claim 16 under 35 U.S.C. § 103.

DECISION
The rejection of claims 1-7, 11-14, 17-21, 24, 29, and 32-52 under
35 U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement is affirmed.
The rejection of claims 1-7, 11-14, 17-21, 24, 29, and 32-52 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement is affirmed.
The rejection of claim 44 under 35 U.S.C. § 112, second paragraph, as
being indefinite is reversed.
Appeal 2009-014490
Application 10/776,645

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The rejection of claim 9 under 35 U.S.C. § 103(a) as being
unpatentable over Freund, DiBianca, and Skillicorn is affirmed.
The rejection of claim 16 under 35 U.S.C. § 103(a) as being
unpatentable over Freund, O’kane, and Hoffman is affirmed.
The rejection of claims 22 and 23 under 35 U.S.C. § 103(a) as being
unpatentable over Freund, DiBianca, Skillicorn, and DiFilippo is affirmed.
The rejection of claims 25 and 26 under 35 U.S.C. § 103(a) as being
unpatentable over Freund, DiBianca, Skillicorn, and O’kane 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). See 37 C.F.R.
§ 41.50(f).

AFFIRMED

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