Ex Parte Manivannan et al

Board of Patent Appeals and Interferences

Oct 21, 2009

11088039 (B.P.A.I. Oct. 21, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte VENKATESAN MANIVANNAN, CLIFFORD BUENO,
STEVEN JUDE DUCLOS, STANLEY JOHN STOKLOSA,
DOUGLAS ALBAGLI, and PAUL ALAN MCCONNELEE
____________

Appeal 2009-009380
Application 11/088,039
Technology Center 2800
____________

Decided: October 21, 2009
____________

Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 18, 21-24, and 27. We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
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BACKGROUND
Claims 1, 21, and 22 are illustrative of Appellants’ invention:
1. A free-standing phosphor film comprising a plurality of x-ray
phosphor particles dispersed in a silicone binder, wherein said x-ray
phosphor particles comprise Lu2O3:Eu.

21. The free-standing phosphor film of claim 18, wherein said
x-ray phosphor particles form a blended phosphor comprising at least
two different phosphors.

22. The free-standing phosphor film of claim 22, wherein said
blended phosphor comprises Gd2O2S:Tb3+ and Lu2O3:Eu.

Appellants appeal the following rejections:
Claims 18, 23, 24, and 27 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combined prior art of Ogawa1 and Takahashi2.
Claims 21 and 22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined prior art of Ogawa, Takahashi, and Van den
Bergh3.
Appellants argue the claims as a group in the first ground of rejection;
and address the specifics of both claim 21 and 22 in the second ground of
rejection. Accordingly, we shall focus on claims 18, 21, and 22 in our
analysis below. See 37 C.F.R. § 41.37(c)(1)(vii).
DISPOSITIVE ISSUES
The dispositive issues on appeal are as follows:
a) have Appellants shown the Examiner reversibly erred in
determining that it would have been prima facie obvious to additionally

1 US 6,744,056 B1, issued June 1, 2004
2 US 2003/0173532 A1, published September 18, 2003
3 US 6,815,092 B2, issued November 9, 2004
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include the Lu2O3:Eu x-ray phosphor particles of Takahashi in the phosphor
film article of Ogawa, and
b) have Appellants shown the Examiner reversibly erred in
determining that it would have been prima facie obvious to use a blend that
includes both the Lu2O3:Eu as well as the Gd2O2S:Tb3+ x-ray phosphor
particles of Takahashi in the phosphor film article of Ogawa?
We answer both of these questions in the negative.

PRINCIPLES OF LAW
In assessing whether a combination of prior art elements recited in a
claim would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements according to their established functions. KSR Int'l Co. v. Teleflex,
Inc., 550 U.S. 398, 416 (2007). The analysis need not seek out precise
teachings directed to the specific subject matter of the claim, for it is proper
to take account of the inferences and creative steps that a person of ordinary
skill in the art would employ. Id. at 418.
The Supreme Court further explained that an “obvious to try”
rationale may be used, and instructed:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads
to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under §103.

KSR, 550 U.S. at 421.

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“It is prima facie obvious to combine two compositions each of
which is taught by the prior art to be useful for the same purpose, in order to
form a third composition which is to be used for the very same purpose.” In
re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980).

FACTUAL FINDINGS
We rely on and adopt the Examiner’s factual findings stated in the
Answer (Ans. 3-5) and Final Office Action (2-5), as well as the Examiner’s
findings of fact in response to the Appeal Brief as set out on pages 5-7 of the
Answer in the “Response to Argument” section, as our own.
No Reply Brief has been filed.

ANALYSIS
The Examiner’s findings, which we adopt as our own, reasonably
establish that the combined prior art would have suggested the obviousness
of the claimed phosphor film.
With respect to the first ground of rejection of independent claim 18,
Appellants’ arguments in their Brief are directed to the obviousness of
replacing the stimulable phosphor particles of Ogawa with the Lu2O3:Eu
radiation-absorbing phosphor particles of Takahashi (Br. 5-10). However,
as the Examiner aptly points out, the rejection is based on the addition of the
Lu2O3:Eu radiation-absorbing phosphor particles of Takahashi to the film of
Ogawa (Ans. 5). Takahashi teaches the advantages of adding radiation-
absorbing phosphor particles to an article comprising stimulable phosphor
particles (Ans. 6; see also, e.g., Takahashi [0107], [0111]). Since Appellants
did not address the thrust of the Examiner’s rejection, their contentions are
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not persuasive of reversible error for the reasons stated by the Examiner in
the Answer (Ans. 5-6).4
With respect to the second ground of rejection of the dependent
claims 21 and 22, Appellants make the additional arguments that although
Van der Bergh discusses phosphor blends, the Examiner’s rejection
“amounts to an ‘obvious to try’ argument” (Br. 11) and “there is no reason to
combine any specific phosphors” (Br. 12). However, as the Examiner points
out, Takahashi teaches the use of both Lu2O3:Eu as well as Gd2O2S:Tb3+ as
x-ray radiation-absorbing phosphor particles (Ans. 5; Takahashi [0105]).
The Appellants have not refuted this finding. It would have been prima
facie obvious to combine these two known phosphor particles, each of which
is taught by the prior art to be useful for the same purpose, in order to form a
third composition (i.e., a blend) to be used for the very same purpose. See In
re Kerkhoven, 626 F.2d at 850.
Accordingly, Appellants have not shown error in the Examiner’s
factual findings and obviousness analysis of any of the claims on appeal.

CONCLUSION
We affirm both of the Examiner’s § 103(a) rejections on appeal.

4 Appellants also argue that Takeda Chemical Industries Ltd. v. Alphapharm
Pty. Ltd., 492 F.3d 1350 (Fed. Cir. 2007) directs a finding of non-
obviousness (Br. 9-10). Appellants have not established that the holding in
Takeda applies to the facts of this case. Takeda involved the structural non-
obviousness of a claimed compound - not the choice (and addition) of a
known compound as is the case in this appeal. Accordingly, Takeda is not
dispositive of this appeal.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

ORDER
AFFIRMED

PL Initial:
sld

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