Ex Parte Klein et al

Board of Patent Appeals and Interferences

Jun 1, 2009

10047556 (B.P.A.I. Jun. 1, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MARTIN KLEIN and CHRISTIAN SCHMIDT
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Appeal 2009-001266
Application 10/047,556
Technology Center 2800
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Decided:1 June 1, 2009
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Before ROBERT E. NAPPI, JOHN A. JEFFERY, and
CARLA M. KRIVAK, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-3, 5, 6, 8-10, 13-15, 17, and 18. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-001,266
Application 10/047,556

STATEMENT OF CASE
Appellants’ claimed invention is a detector for detecting electrically
neutral particles (Spec. ¶[0001]). A converter generates conversion products
that generate electrically charged particles in a counting gas. A readout
device detects the electrically charged particles. An electrical drift field is
then generated so that some of the electrically charged particles drift toward
the readout device. (Abstract; Spec. ¶[0008])
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.

1. A detector for detecting electrically neutral particles
comprising:

a detector housing which at least in certain regions is filled with a
counting gas,

a multiplicity of converter devices arranged in cascade form in
the detector housing for generating conversion products as a
result of the absorption of the neutral particles which are to be
detected, the conversion products generating electrically charged
particles in the counting gas, each of said converter devices
comprising an insulator layer having opposite first and second
surfaces, a first conductive layer and second conductive layer
disposed respectively on the first and second surfaces of the
insulator layer such that the first and second conductive layers
are electrically insulated from one another by the insulator layer,
and at least one converter layer arranged on at least one of the
first conductive layer and the second conductive layer to define
an outermost part of each said converter device, the converter
layer being formed of a material different than the conductive
layer on which the converter layer is arranged,

at least one readout device for detecting the electrically charged
particles,
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at least one electrical drift field device for generating an electrical
drift field for the electrically charged particles in at least a region
of the volume of the counting gas in such a manner that at least
some of the electrically charged particles drift toward the readout
device, the converter device being a charge-transparent design
and being arranged in the detector housing in such a manner that
the drift field passes through at least part of each said converter
device.

REFERENCES
Gleason US 3,956,654 May 11, 1976
Sauli US 6,011,265 Jan. 4, 2000
Danielsson US 6,429,578 B1 Aug. 6, 2002
(filed Jan. 26, 1999)

The Examiner rejected claims 1, 2, 5, 6, 8-10, 13-15, 17, and 18 under
35 U.S.C. § 103(a) based upon the teachings of Danielsson and Gleason.
The Examiner rejected claim 3 under 35 U.S.C. § 103(a) based upon
the teachings of Danielsson, Gleason, and Sauli.
Appellants contend that Danielsson does not allow a choice of
converter material as does Appellants invention, chosen in view of a specific
purpose of a converter device, because Danielsson is limited to an electrode
being used simultaneously as a converter (App. Br. 6).2 Appellants also
contend that the “converter layer formed from the material different from the
conductive layer on which the converter layer is arranged” produces much
greater absorption efficiency than Danielsson (App. Br. 6). Finally,
Appellants contend that none of the cited art suggests modifying Danielsson
to include an additional converter layer on the GEM foil as taught by
Gleason (App. Br. 8).

2 The Appeal Brief in the Response to Notification of Non-Compliant
Appeal Brief, filed on July 12, 2007, is referred to throughout this opinion.
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ISSUE
Did Appellants establish that the Examiner erred in combining
Danielsson and Gleason to obtain Appellants’ claimed invention?

FINDINGS OF FACT
1. The converter devices 22 of Appellants detector are layered
structures that include a gas electron multiplier layer (GEM). The GEM
includes an insulator layer 26 of, for example, Kapton. Conductive layers
28, 30 are formed respectively on either side of the insulator layer. The
conductive layers can be formed of copper. A solid converter layer 24 of,
for example, boron-10 is coated on the conductive layers. (Spec. ¶[0040];
Figs. 1, 2a, 3)
2. The solid converter layer is an absorption layer (e.g., Spec.
¶¶[0047], [0059]).
3. Danielsson teaches detection means that includes a converter
(Figs. 1a-1c). The converter includes a GEM 200, shown in Figure 2a, made
of a thin composite mesh 202. The mesh includes a thin insulating film 204
formed of, for example, Kapton. The insulating foil is metal clad on both
sides, the metal being copper. The structure is located in a confinement
containing a gas. (Col. 6, ll. 27-33)
4. Figures 7a and 7b of Danielsson show a composite
amplifier/converter structure that includes a metal layer 704 deposited on an
insulating layer 706 similar to that in Figure 2a. Underneath the insulating
layer is a thick metal layer 708. Below the thick metal layer is a second
insulating layer on which there is deposited a second metal layer 712. (Col.
10, l. 65-col. 11, l. 17)
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5. Gleason teaches a detector in which a neutron absorption layer
18 (converter layer) is boron-10 (col. 1, ll. 21-22; Fig. 1).
6. Gleason also teaches a thin insulating film 22 disposed over the
neutron absorptive film (col. 3, ll. 12-13), which is disposed on the interior
surface 20 of an enclosure member 12 (col. 3, ll. 3-4).
7. Sauli teaches a GEM structure having diameters of 110 μm and
130 μm and a minimum spacing of 140 μm to 200 μm (col. 9, ll. 32-52;
Tables I and III).

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). If the Examiner’s burden is met, the burden
then shifts to the Appellants to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of the
evidence as a whole and the relative persuasiveness of the arguments. Id.

ANALYSIS
Claims 1, 2, 5, 6, 8-10, 13-15, 17, and 18
The Examiner rejected claims 1, 2, 5, 6, 8-10, 13-15, 17, and 18 as
obvious over Danielsson and Gleason under 35 U.S.C. § 103. The Examiner
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finds that Danielsson teaches all of Appellants’ claim limitations except for
an explicit description that at least one converter layer is arranged on at least
one of the first and second conductive layers to define an outermost part of
each conductive device (Ans. 3-4). Appellants broadly address this rejection
(App. Br. 5-9). Because claim 1 includes all the features of independent
claims 13 and 14, and is the broadest claim, this rejection is addressed with
respect to representative claim 1.
Appellants contend that the claimed converter layer is formed from a
material different than the conductive layer on which it is arranged. This
provides a significant advantage over Danielsson in that it allows a converter
material to be chosen in view of the specific purpose of the converter device
irrespective of the electrode material of the GEM foil (App. Br. 6).
Appellants assert that Danielsson does not allow such a choice because the
electrode in Danielsson is always limited to being used simultaneously as a
converter (App. Br. 6). Additionally, the converter layer, formed from a
material different than the conductive layer, produces greater absorption
efficiency (App. Br. 6).
Appellants rely on a Rule 132 Declaration3 that includes a graph to
demonstrate the greater absorption efficiency of Appellants invention (App.
Br. 6-7). However, as found by the Examiner, the Rule 132 Declaration
does not establish that the differences in results are in fact unexpected,
unobvious, and of both statistical and practical significance (Ans. 9).
Further, the findings in the Declaration are not commensurate in scope with
the claim language.

3 Rule 132 Declaration filed May 8, 2006, and also attached as Evidence
Appendix (ix).
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Appellants’ contention that Danielsson does not allow a choice of
material for the converter because Danielsson is always limited to the
electrode used simultaneously as the converter (App. Br. 6) is without merit.
Appellants have not identified any evidence to support this statement.
Additionally, Danielsson does allow optimizing the detector for other types
of particles such as neutrons, protons, etc. (col. 13, ll. 9-11; Ans. 8). Thus,
Danielsson is not always limited to an electrode.
Appellants’ contention that Danielsson’s Figure 3 cannot be modified
to include an additional converter layer on the GEM foil (App. Br. 8) is not
commensurate in scope with the claims. Nowhere in the independent or
dependent claims is an “additional converter layer” recited. Further, Figure
2a of Danielsson shows the insulating layer as taught by Appellant and the
two conductive layers formed thereon as claimed. Figure 7a shows that a
composite amplifier/converter structure has a top metal layer formed thereon
(FF 4). There is, however, nothing in Danielsson stating this metal layer
must be made of the same material as the conductive layer. There is also
nothing in Danielsson that would dissuade one of skill in the art from
making this layer of boron-10 as taught by Gleason (FF 5). Appellants’
remaining arguments (App. Br. 8-9) are also not commensurate in scope
with Appellants claims.
Appellants have provided no persuasive evidence to support the
argument that it would not be obvious to combine Danielsson and Gleason.
Appellants have merely argued features that are not present in the
independent claims. Thus, claim 1, and claims 2, 5, 6, 8-10, 13-15, 17, and
18, is obvious over Danielsson and Gleason.

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Claim 3
The Examiner rejected claim 3 over Danielsson, Gleason, and Sauli.
Sauli was merely cited as teaching that it was known in the art at the time of
Appellants’ invention to provide passages having minimum diameters and
spacings (FF 7) as Danielsson does not explicitly disclose the minimum
diameter and spacing of the passages aligned with the holes in the GEM
structure (Ans. 7).
Appellants have provided arguments with respect to photocathodes,
such arguments again, not being commensurate in scope with the claim
language. Thus, since claim 3 depends from claim 1, for the reasons set
forth above, claim 3 is obvious over the collective teachings of Danielsson,
Gleason, and Sauli.

CONCLUSION
Appellants have not established that the Examiner erred in rejecting
claims 1, 2, 3, 5, 6, 8-10, 13-15, 17, and 18 under 35 U.S.C. § 103.

DECISION
The Examiner’s decision rejecting claims 1, 2, 3, 5, 6, 8-10, 13-15, 17,
and 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)(iv).

AFFIRMED

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