Ex Parte Sayag

Board of Patent Appeals and Interferences

Jun 15, 2009

10789547 (B.P.A.I. Jun. 15, 2009)

1
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHEL SAYAG
____________

Appeal 2009-002451
Application 10/789,547
Technology Center 2800
____________

Decided:1 June 15, 2009
____________

Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
MARK NAGUMO, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 and 9-22.
Claims 2-8, the other claims remaining in the present application, have been

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 2009-002451
Application 10/789,547

2
objected to by the Examiner as being dependent on a rejected claim but
containing allowable subject matter. Claim 1 is illustrative:

1. An integrated x-ray image capture and readout system, comprising:

a cassette enclosure having a form factor corresponding to a standard
radiographic film cassette, the form factor corresponding to a thickness of
the cassette enclosure of about 0.6 inches;

a storage-phosphor plate operable to capture incident x-rays
corresponding to an image;

a stimulating light source operable to expose a surface of the storage-
phosphor plate to stimulating light;

an array of detectors positioned to receive stimulated light via the
surface of the storage-phosphor plate, the stimulated light being released
from the storage-phosphor plate in response to the stimulating light; and

an actuator assembly operable to effect relative motion between the
surface of the storage-phosphor plate and each of the stimulating light source
and the array of detectors in one dimension;

wherein the storage-phosphor plate, the stimulating light source, the
array of detectors, and the actuator assembly are enclosed in the cassette
enclosure.

The Examiner relies upon the following references as evidence of
obviousness:
Alvarez 5,221,843 Jun. 22, 1993
Dewaele 5,757,021 May 26, 1998
Karellas 5,864,146 Jan. 26, 1999
Mueller WO 99/28765 Jun. 10, 1999
Budinski 5,912,944 Jun. 15, 1999
Floresta 6,239,516 B1 May 29, 2001
Mueller 6,373,074 B1 Apr. 16, 2002
Appeal 2009-002451
Application 10/789,547

3
Cassettes for medical X-ray diagnosis – Radiographic cassettes and
mammographic cassettes, 3rd Edition (1997-02) of IEC 60406, pp. 1-37
(1997).

Appellant’s claimed invention is directed an intergrated x-ray image
capture and readout system comprising, inter alia, a cassette enclosure
having a form factor which corresponds to a thickness of about 0.6 inches
for the cassette enclosure.
The appealed claims stand rejected under 35 U.S.C. § 103(a) as
follows:
(a) claims 1, 9, 11, 12, and 20 over Mueller in view of Alvarez and
IEC,
(b) claims 16-19 over the references cited in (a) above further in view
of Karellas,
(c) claim 10 over the references cited in (a) above further in view of
Floresta,
(d) claims 13-15 over the references cited in (a) above further in view
of Dewaele,
(e) claim 21 over the references cited in (a) above further in view of
Floresta, and
(f) claim 22 over the references cited in (a) above further in view of
the admitted prior art.
We have thoroughly reviewed the respective positions advanced by
Appellant and the Examiner. In so doing, we find ourselves in agreement
with Appellant that the Examiner has failed to establish prima facie case of
obviousness for the claimed subject matter. Accordingly, we will not sustain
the Examiner’s rejections.
Appeal 2009-002451
Application 10/789,547

4
We agree with Appellant that Mueller, the primary reference in all the
rejections before us, does not teach or suggest a cassette enclosure having a
thickness of about 0.6 inches, or 15.2 mm, as presently claimed. Mueller
discloses an X-ray cassette that contains a device for reading out information
stored in a phosphor carrier which comprises “a very short distance between
phosphor carrier and receiving device, which in turn greatly improves the
degree of compactness of the device” (col. 3, ll. 45-47). In particular,
Mueller teaches that “the x-ray cassette can be manufactured with very small
dimensions [and that] [i]t is possible to limit the thickness the x-ray cassette
to about 45 mm such that it can even be insertable in conventional x-ray
units already in operation” (col. 10, ll. 53-57).
Hence, we agree with Appellant that one of ordinary skill in the art
would reasonably interpret Mueller as teaching a lower limit of 45 mm
thickness, i.e., Mueller would not state a thickness limit of 45 mm if the
cassette could reasonably be thinner. As emphasized by Appellant,
Mueller’s lower thickness limit is about three times greater than the claimed
thickness. Also, as explained by Appellant, the thickness of Mueller’s
cassette is limited due to its accommodation of a lens system, whereas the
present system responds to laterally diffused light energy which “allows for
embodiment without bulky intervening optical elements” (page 6 of Brief,
alternate paragraph). We can not subscribe to the Examiner’s rationale that
the 45 mm thickness disclosed by Mueller “is merely an example of the very
small dimensions of the x-ray cassette” (page 13 of Answer, first paragraph).
Since limiting the size of the cassette is a desired goal of Mueller, we
agree with Appellant that Mueller would have provided some teaching or
Appeal 2009-002451
Application 10/789,547

5
suggestion that the x-ray cassette could have a thickness at least three
times smaller than the value disclosed if such a smaller thickness were
envisaged by the inventor.. No such teaching or suggestion, however, is
apparent in the Mueller disclosure.
The Examiner states “IEC 06406 provides example of radiographic
film cassette thickness of 15 mm, 16.5 mm, and 20.5 mm” (page 6, of
Answer first paragraph). However, the existence of radiographic film
cassettes having the claimed thickness does not provide the requisite
evidence that the system of Mueller employs a cassette of such thickness.
Indeed, the claimed cassette enclosure corresponds to a standard
radiographic film cassette.
Also, although Mueller states that an optical reproduction device “can
be” provided in the cassette, the reference provides no embodiments wherein
an optical system corresponding to element 14 of figure 1 is not incorporated
in the cassette. The Examiner’s citation of the words “can be” is not
sufficient to establish the optional nature of the optical element, and the
Examiner has not refuted the analysis provided in the inventor’s declaration
with respect to the necessity of an optical system in the Mueller cassette.
The remaining references cited by the Examiner do not remedy the
deficiencies of Mueller discussed above.
In conclusion, based on the foregoing, we are constrained to reverse
the Examiner’s rejections.
REVERSED

Appeal 2009-002451
Application 10/789,547

6
PL initial:
sld

WEAVER AUSTIN VILLENEUVE & SAMPSON LLP
P.O. BOX 70250
OAKLAND, CA 94612-0250