Ex Parte McCormick et al

Patent Trial and Appeal Board

Aug 9, 2016

12422454 (P.T.A.B. Aug. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/422,454 04/13/2009
15118 7590
Ronald M. Kachmarik
Cooper Legal Group LLC
6505 Rockside Road
Suite 330
Independence, OH 44131
08/11/2016
FIRST NAMED INVENTOR
Dan Jay McCormick
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
GEOG-45050 6731
EXAMINER
IGYARTO, CAROLYN
ART UNIT PAPER NUMBER
2884
NOTIFICATION DATE DELIVERY MODE
08/11/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patdoc@cooperlegalgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAN JAY McCORMICK,
FREDERICK L. GLESIUS,
THOMAS ROBERT ANDERSON,
and NATHAN HERBERT JOHNSON
Appeal2014-008280
Application 12/422,454 1
Technology Center 2800
Before ERIC S. FRAHM, CARLL. SILVERMAN, and
NORMAN H. BEAMER, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Non-Final Rejection of claims 1, 3-5, 7-12, and 14--21, which are the only
claims pending. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm in part.
1 The real party in interest is identified as General Electric Company. App.
Br. 3.
Appeal2014-008280
Application 12/422,454
The invention relates to a neutron detector including an anode and a
cathode. Abstract. Claim 1, reproduced below, is exemplary of the subject
matter on appeal:
1. A neutron detector including:
an anode; and
a cathode extending around the anode and having a six planar
segments facing the anode and extending parallel to each other along
the length of the cathode, the segments being coated with neutron-
sensitive material that includes B-10 to interact with neutrons at the
segments.
App. Br. 14 (Claims Appendix).
THE REJECTIONS
Claim 14 is rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112
(pre-AIA), second paragraph. Non-Final Act. 4.
Claims 1, 3-5, 7-12, and 14--21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Reiss (US 3,930,162; Dec. 30, 1975) in
view of Menlove et al. (US 2003/0213917 Al; Nov. 20, 2003) ("Menlove").
Non-Final Act. 5-8.
ANALYSIS
The Examiner finds Reiss teaches the claim 1 limitations except for
the limitation "the segments being coated with neutron-sensitive material
that includes B-10 to interact with neutrons at the segments" and relies on
Menlove for this limitation. Non-Final Act. 5-6; Ans. 2-5. In particular,
the Examiner finds:
Menlove teaches coating the inner surface of the cathode facing
the anode with neutron-sensitive material that includes B-10 to
2
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Application 12/422,454
interact \'l1ith neutrons cathode for the benefit of making the
detector sensitive to neutrons and to detect neutrons (16; [0015];
[0016]). Therefore, it would have been obvious to one of
ordinary skill in the art to have the inner surface of the segments
facing the anode, as taught by Reiss, be coated with neutron-
sensitive material that includes B-10 to interact with neutrons at
the segments, as taught by Menlove, for the benefit of detecting
neutrons.
Non-Final Act. 5---6.
Appellants argue the Examiner erred in concluding it would have been
obvious to combine Reiss and Menlove as suggested by the Examiner. App.
Br. 5-16; Reply Br. 1-12. Appellants argue Reiss is directed to an imaging
device in which imaging precision is desirable, and "imaging is not so much
that the rays are detected within the array, but detected at the appropriate
location within the array." App. Br. 7. According to Appellants:
As can be appreciated, detection at an inappropriate/non-precise
location would result in a blurring, lack of clarity, diminished
contrast and image degradation/error in general. A collimation
effect can help. See Reiss, Col. 2, beginning at line 57. Also,
lead, which blocks the rays that impinge thereon, is used on the
walls of the honeycomb structure to help.
App. Br. 7.
Appellants argue Menlove teaches a neutron detector including a B-10
coating on its detector walls and a gas (He-3) within its volume such that
neutrons separately impinging the gas and detector walls are detected. App.
Br. 7. According to Appellants, "direction of incident is not in interest in the
Menlove device (i.e., Menlove is not for imaging)" and therefore, while
"Reiss and Menlove disclose respective detectors, the strategies involved are
very different." Id.
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Application 12/422,454
Regarding the combination of Reiss and l\1enlove, i\ .. ppellants argue
one of ordinary skill in the art would not tum to Menlove to modify Reiss
because Menlove is not directed to imaging and "omnidirectional incidence
response ability is not something that the person of ordinary skill in the art is
going to want to introduce into a device that is trying to provide an image
with clarity." App. Br. 8. According to Appellants:
Reiss is very much trying to get clarity via avoiding ray incidence
from various angles. For example, see the discussion about
collimation to prevent stray rays that would otherwise degrade
image quality (Reiss, Col. 2, lines 56-58). To be sure, such is just
one example of an effort that Reiss presents; but the point is that
improvements in imaging quality are an underlying and logical
concept that the person of ordinary skill in the art
appreciates/understands from Reiss. As such, the logical person
of ordinary skill in the art is not going to seek documents to
provide modifications to the Reiss imaging approach that are not
going to provide improvements to imaging quality. Basically, the
only reason for the person of ordinary skill in the art to seek
Menlove is impermissible hindsight using the present application
and a guide/template to go and find various disjoint pieces.
App. Br. 8.
Appellants further argue one of ordinary skill in the art would not
modify walls of a matrix form radiation imaging device that do not have
walls with radiation interaction (such as Reiss2) to have radiation interaction
(such as Menlove). App. Br. 8-9.
We find Appellants' arguments regarding the suggested combination
to be reasonable because of the differences between Menlove' s detection
device and Reiss' imaging device as discussed supra and we note these
2 The Appeal Brief incorrectly states Menlove but the context clearly is
Reiss. See also Reply Brief 5---6.
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Appeal2014-008280
Application 12/422,454
arguments are not3 rebutted by the Examiner. Therefore, on the record
before us, we are persuaded by Appellants' arguments that combining Reiss
and Menlove as suggested by the Examiner would not be done by one of
ordinary skill in the art.
As stated by the Supreme Court, the Examiner's obviousness rejection
must be based on
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.
KSR Int'!. Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re
Kahn, 441F.3d977, 988 (Fed. Cir. 2006)).
Here, we are persuaded the Examiner does not present a sufficient
basis to establish obviousness because, on the record before us, the rational
underpinning presented does not rebut Appellants' reasonable arguments.
In view of the above, we do not sustain the rejection of claim 1, and
independent claim 18 which recites the same limitation. We also do not
sustain the rejection of independent claims 3-5, 7-12, 14--17, and 19-21.
Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims
are nonobvious if the independent claims from which they depend are
b . ") nono v10us .....
The 35 U.S.C. § 112 rejection of claim 14 is not argued (App. Br. 3)
and, therefore, we sustain the rejection of this claim.
3 While the Examiner rebuts Appellants' incorrect citation to Menlove,
rather than Reiss (Ans. 3--4), Appellants' arguments regarding the
differences and purposes of imaging and detecting devices are not rebutted.
5
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Application 12/422,454
DECISION
We reverse the Examiner's decision rejecting claims 1, 3-5, 7-12, and
14--21under35 U.S.C. § 103(a).
We affirm the Examiner's decision rejecting claim 14 under 35 U.S.C.
§ 112.
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.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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