Ex Parte Streyl

Patent Trial and Appeal Board

Nov 26, 2014

11878786 (P.T.A.B. Nov. 26, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/878,786 07/26/2007 Andreas Streyl 1021/0130PUS1 1546
60601 7590 11/26/2014
Muncy, Geissler, Olds & Lowe, P.C.
4000 Legato Road
Suite 310
FAIRFAX, VA 22033
EXAMINER
PURINTON, BROOKE J
ART UNIT PAPER NUMBER
2881
MAIL DATE DELIVERY MODE
11/26/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREAS STREYL
____________

Appeal 2013-001623
Application 11/878,786
Technology Center 2800
____________
Before JEFFREY T. SMITH, JAMES C. HOUSEL, and
GEORGE C. BEST, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner has rejected claims 1–29 of Application 11/878,786
under 35 U.S.C. § 103(a) as obvious. Office Action (OA) (February 28,
2012). Appellant1 seeks reversal of these rejections pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM-IN-PART.

1 Smiths Heimann GmbH is identified as the real party in interest. (App.
Br. 1.)
Appeal 2013-001623
Application 11/878,786
2
BACKGROUND
The ’786 Application describes a radiation shielding cover that can be
used to close the entry and exit of the portion of an X-ray inspection
apparatus in which irradiation occurs. Spec. ¶¶ 2-4.
Claim 1 is representative of the ’786 Application’s claims and is
reproduced below:
1. A radiation shielding door for an X-ray inspection system
comprising:
at least two movably arranged X-ray radiation-absorbing
inflexible plates that form the door,
the radiation-absorbing plates having end faces
that form levers and that are joined in the manner of lazy
tongs,
wherein in a first position, a face of the X-
ray radiation-absorbing plates is rotated
sufficiently such that an object may pass beneath
the plates, and
wherein in a second position, the face of the
X-ray radiation-absorbing plates is rotated
sufficiently such that said plates cooperatively
operate to form a vertical door barrier.
(App. Br. 18 (Claims App’x) (paragraphing and indentation added).)
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REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 2, 4–8, 11, 15, 17, 23, 24, and 29 are rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of
Fenkart,2 Peterson,3 and McCloud.4 (Ans. 3.)
2. Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Fenkart, Peterson, McCloud, and Lowery.5
(Ans. 10.)
3. Claims 9, 12, 13, and 25–27 are rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Fenkart, Peterson,
McCloud, Still,6 Toepel,7 and Heisner.8 (Ans. 10.)
4. Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Fenkart, Peterson, and Zobel.9 (Ans. 13.)
5. Claims 16 and 28 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Fenkart, Peterson, McCloud,
and Baudro.10 (Ans. 13.)

2 US Patent Application Publication 2003/0215054 A1, published November
20, 2003.
3 US Patent No. 6,808,000 B1, issued October 26, 2004.
4 US Patent No. 702,146, issued June 10, 1902.
5 US Patent No. 3,353,023, issued November 14, 1967.
6 US Patent No. 5,038,047, issued August 6, 1991.
7 US Patent No. 5,992,417, issued November 30, 1999.
8 US Patent No. 3,944,831, issued March 16, 1976.
9 V. Zobel et al., High-spin states of negative parity in 69Ge, 19 PHYS. REV.
C 811 (1979).
10 US Patent No. January 20, 1987, issued January 20, 1987.
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6. Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Fenkart, Peterson, McCloud, Still, Toepel, and
Heisner, and Baudro. (Ans. 14.)
7. Claims 18, 21, and 2211 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Fenkart, Peterson, and
McCloud. (Ans. 15.)
8. Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Fenkart, Peterson, McCloud, Still, Toepel, and
Heisner. (Ans. 17.)
9. Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Fenkart, Peterson, McCloud, Baudro, and
Heisner. (Ans. 18.)
DISCUSSION
Rejection 1. The Examiner rejected claims 1, 2, 4–8, 11, 15, 17, 23,
24, and 29 as obvious over the combination of Fenkart, Peterson, and
McCloud. OA 6. Appellant presents specific arguments for the reversal of
claims 1, 2, 7, and 23; groups claims 4–6, 8, 11, 15, and 17 with claim 1; and
groups claims 24 and 29 with claim 23. (App. Br. 4–12.) We address
Appellant’s arguments in turn.
Claim 1. Appellant argues that the rejection of claim 1 should be
reversed because (1) the Examiner has not identified the modification to the

11 The Examiner’s summary of Rejection 7 does not include claims 21 and
22. OA 17. The Examiner’s detailed explanation of the rejection, however,
does discuss these claims. Id. at 18–19. Accordingly, we have corrected the
summary statement of the rejection to include claims 21 and 22.
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references needed to arrive at the claimed invention, and (2) the Examiner
has not provided a proper reason for modifying the prior art. (App. Br. 5.)
For the following reasons, we are not persuaded by either of these
arguments.
First, we note that the Examiner did provide a clear discussion of the
ways in which the cited prior art would have to be combined and modified to
arrive at the claimed invention. OA 6–8 (see also Ans. 4–6, 19). Appellant
attempts to make an issue of the Examiner’s use of the term “plane” in the
discussion of Peterson. (App. Br. 4–6, 8–9; Reply Br. 1‒2.) In particular,
Appellant argues that the Examiner’s proposed combination would not work
because planes are two-dimensional geometric constructs that have no
thickness and, thus, no end faces as required by the claim language. Id.
These arguments, however, are not persuasive. As the Examiner
explains, the term “plane” was used to describe the fabric component present
in the prior art. (Ans. 19.) Furthermore, a person of ordinary skill in the art
at the time of the invention would have known that the levers of the plurality
of pantograph trains could be connected at locations other than the various
axes of rotation by three dimensional structures. For example, Peterson’s
figure 10 shows parallel bars 56 connecting the levers. The spacing of bars
56 can be varied according to the bars’ function. Peterson col. 5, ll. 14–16.
In sum, the Examiner’s use of the term “plane” does not mean that the
Examiner failed to provide an adequate explanation of the proposed
combination and modification of the prior art used to arrive at the claimed
invention.
Second, the Examiner provided several alternative reasons for a
person of ordinary skill in the art to have combined the descriptions of
Fenkart, Peterson, and McCloud at the time of the invention. OA 7‒8.
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Appellant argues that these reasons are not sufficient. (App. Br. 7‒9.) We
disagree.
The Examiner found that a person of ordinary skill in the art would
have been motivated to replace Fenkart’s spooling curtain with a
pantograph-mounted wall because Peterson teaches that the weight of the
wall can be lifted and supported at several points across its width. OA 7.
Appellant argues that this reason is not sufficient because the Examiner does
not point to evidence that Fenkart suffered from any problem that would be
addressed by the proposed change. (App. Br. 7‒8.) This argument is not
persuasive. We are not aware of any cases that require the Examiner to
provide evidence that a first reference is deficient or defective before being
able to rely upon the alleged advantages of a structure described in a second
reference as motivation to combine the two pieces of prior art. All that is
required is that the Examiner identify a rational basis for a person of
ordinary skill in the art without knowledge of the claimed invention to
combine the teachings of the references in the proposed manner. See, e.g.,
In re Kahn, 441 F.3d 977, l988 (Fed. Cir. 2006); In re Rouffet, 149 F.3d
1350, 1356‒57 (Fed. Cir. 1998). On the record before us, we conclude that
the Examiner has met this burden.
The Examiner also found that the replacement of Fenkart’s spooling
curtain with a pantograph-supported door was merely the replacement of one
known element for another to achieve predictable results and, thus, was
obvious. OA 8. Appellant argues that the Examiner erred in finding that a
pantograph-type partition capable of acting as a radiation shield was known
in the art. (App. Br. 9.)
We are not persuaded by Appellant’s argument. Obviousness is
determined by considering what combined teachings of the references would
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have suggested to a routineer. See In re Mouttet, 686 F.3d 1332‒33 (Fed.
Cir. 2012). In this case, Peterson teaches that a pantograph-type partition
that creates a solid wall was known in the art. Peterson col. 1, ll. 23–37
(describing US Patent No. 5,062,464). Fenkart describes the use of a curtain
partition as a radiation shield. The Examiner correctly found that
replacement of Fenkart’s curtain with a pantograph-type solid wall was the
substitution of one known equivalent for another to achieve predictable
results.
For the reasons set forth above, we affirm the rejection of claims 1, 4–
6, 8, 11, 15, and 17.
Claim 2. Claim 2 recites “The radiation shielding door according to
claim 1, wherein the plates made of metallic carrier material and are coated
with lead.” (App. Br. 18 (Claims App’x).) Appellant argues that the
Examiner erred in finding that Fenkart describes this claim limitation. (Id. at
10.)
For the reasons set forth in the Examiner’s Answer, we are not
persuaded by this argument and affirm the rejection of claim 2. (See Ans.
22‒23.)
Claim 7. Claim 7 recites “The radiation shielding door according to
claim 1, further comprising sensors that detect a size of an object that is to
be inspected.” (App. Br. 19 (Claims App’x).)
The Examiner found that ¶ 98 of Fenkart describes this limitation.
(Ans. 7. (“Fenkart further teaches [that the radiation shielding door]
comprising [sic, comprises] sensors that detect a size of an object that is to
be inspected (‘technician,’ [0098]).”).)
The Examiner’s finding is clearly erroneous. Paragraph 98 of Fenkart
states that
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[o]ne advantage of the inspection apparatus 8 illustrated in
FIG. 2 is that, because of adequate shielding due to radiation
locking, there is no need for locating the conveyor apparatus 18,
20 and 22 so that they define an elaborate undulating path—the
conveyor belts 50 are all linearly aligned with one another, and
are located within the same horizontal plane (if, of course, the
inspection apparatus 8 is located on a horizontal floor). When a
technician has to enter anyone of the tunnel sections 12, 14 or
16, the technician may easily enter the tunnel section without
the need for the technician to climb up an inclined conveyor
apparatus, as is often the case in certain prior art apparatus.
Fenkart ¶ 98.
The description of technician who enters a scanning device—
presumably to service it—does not suggest that the technician is present to
detect a size of an object to be scanned, let alone that the technician could be
replaced by some other form of “sensor.”
We, therefore, reverse the rejection of claim 7 as obvious over the
combination of Fenkart, Peterson, and McCloud.
Claim 23. Appellant argues that the rejection of claim 23 should be
reversed for substantially the same reasons as claim 1. (App. Br. 11–12.)
We were not persuaded by Appellant’s arguments with respect to claim 1
and also are not persuaded by them with respect to claim 23. We, therefore,
affirm the rejection of claims 23, 24, and 29.
* * * *
In sum, we affirm the rejection of claims 1, 2, 4–6, 8, 11, 15, 17, 23,
24, and 29 as obvious over the combination of Fenkart, Peterson, and
McCloud, but we reverse the rejection of claim 7 as obvious over that
combination of references.
Rejection 2. Claim 3 recites “[t]he radiation shielding door according
to claim 1, wherein the plates are made of nonmetallic carrier material to
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9
which lead is glued.” The Examiner rejected claim 3 as obvious over the
combination of Fenkart, Peterson, McCloud, and Lowery. OA 12.
Appellant argues that this rejection should be reversed for the reasons
advanced with respect to claim 1. (App. Br. 12‒13.) For the reasons set
forth above, we do not find those arguments persuasive.
Appellant also argues that the Examiner erred in finding that the
combined references described or suggested the limitation set forth in
claim 3. (Id. at 13.)
We are not persuaded by this argument. As the Examiner found,
Lowery describes the use of glue to attach radiation shields made of lead to
the housing of a nuclear gauge. OA 12. Based upon this description, the
Examiner correctly concluded that it would have been obvious to a person of
ordinary skill in the art at the time of the invention to use glue to attach lead
radiation shields to the panels of the pantograph-type retractable wall
rendered obvious by Fenkart, Peterson, and McCloud.
We, therefore, affirm the rejection of claim 3.
Rejection 3. The Examiner rejected claims 9, 12, 13, and 25‒27 as
obvious over the combination of Fenkart, Peterson, McCloud, Still, Toepel,
and Heisner. OA 12. Claim 9 recites “[t]he radiation shielding door
according to claim 1, wherein one or more lead flaps are attached to at least
one plate.”
Appellant argues that the rejection of claim 9 should be reversed for
the reasons advanced with respect to claim 1. (App. Br. 13.) For the reasons
set forth above, we do not find those arguments persuasive. Appellant also
argues that the Examiner erred in finding that the combined references
would have suggested adding lead flaps to the radiation shielding plate as
required by claim 9. (Id. at 13‒14.)
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We are not persuaded by Appellant’s argument and affirm the
rejection of claim 9, essentially for the reasons provided by the Examiner.
See OA 12‒13; Ans. 10‒11, 24. We add the following for emphasis.
The Examiner correctly found that a routineer would have recognized
the elongated gaps present in the pantograph-type barrier described or
suggested by the combination of Fenkart, Peterson, and McCloud. (Ans.
24.) Toepel describes the use of a flexible material to provide shielding by
covering the elongated gap present in the hinged connection between two
panels.12 Still describes the use of flexible flaps to cover such openings.
The Examiner correctly concluded that this combination would have
suggested to a routineer that flaps could be used to cover the gaps present in
the pantograph-type barrier.
Claims 12 and 13 depend from claim 9. Appellant argues that the
rejection of these claims should be reversed based upon the arguments
advanced with respect to claim 9. (App. Br. 14.) Because we have affirmed
the rejection of claim 9, we also affirm the rejection of claims 12 and 13.
Appellant argues that the rejection of claim 25 should be reversed
based upon the arguments advanced with respect to claim 9. (Id. at 14.)
Because we have affirmed the rejection of claim 9, we also affirm the
rejection of claim 25.
Appellant argues that the rejection of claims 26 and 27 should be
reversed because the Examiner erred in concluding that the combination of
references described or suggested the particular structures recited in these

12 Although Toepel describes a laser containment barrier and is not related to
X-ray shielding structures, Appellant does not argue that Toepel is non-
analogous art.
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11
claims. (Id. at 14‒15.) We are not persuaded by Appellant’s arguments and
affirm the rejection of these claims. We agree with the Examiner’s
conclusion that the differences between claims 26 and 27, as a whole, and
the combined teaching of the prior art would have been obvious to a person
of ordinary skill in the art at the time of the invention.
In sum, we affirm the rejection of claims 9, 12, 13, and 25‒27.
Rejection 4. Appellant argues that the rejection of claim 10 should be
reversed because it is dependent upon claim 1. (App. Br. 15.) Because we
affirmed the rejection of claim 1, we also affirm the rejection of claim 10.
Rejection 5. The Examiner rejected claims 16 and 28 as obvious over
the combination of Fenkart, Peterson, McCloud, and Baudro. OA 15.
Appellant does not present substantive arguments for the reversal of
the rejection of claims 16 and 28. (See generally App. Br., Reply Br.)
Appellant, therefore, has waived any argument for reversal of the rejection
of these claims other than those made for the reversal of the rejection of the
claims from which they depend. Claim 16 depends from claim 1, and claim
28 depends from claim 23. Because we have affirmed the rejection of these
claims, we also affirm the rejection of claims 16 and 28.
Rejection 6. Appellant argues that the rejection of claim 14 should be
reversed because it is dependent upon claim 1. (App. Br. 15‒16.) Because
we affirmed the rejection of claim 1, we also affirm the rejection of claim
14.
Rejection 7. Claims 18, 21, and 22 were rejected as obvious over the
combination of Fenkart, Peterson, and McCloud. OA 17. Appellant argues
that the rejection of claim 18 should be reversed for the reasons advanced for
reversal of claim 1’s rejection. (App. Br. 11.) Because we affirmed the
rejection of claim 1, we also affirm the rejection of claim 18.
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12
Appellant argues that the rejection of claims 21 and 22 should be
reversed because (1) the Examiner failed to specifically reject these claims,
and (2) the Examiner’s statement of the reasons for rejection is unclear.
(App. Br. 16.) We are not persuaded by either of these arguments.
First, Appellant argues that claims 21 and 22 were not specifically
rejected because they were not included in the Examiner’s summary
statement of the rejection. (Id. at 16.) The Examiner, however, included a
discussion of these claims in the body of the rejection. OA 18‒19.
Appellant assumed that the Examiner intended to include the rejection of
claims 21 and 22 with the rejection of claim 18. (App. Br. 16.) As
discussed above, we have reached the same conclusion. Thus, Appellant has
not been prejudiced by the Examiner’s failure to include claims 21 and 22 in
the summary of the rejection. We, therefore, will not reverse the rejection
on that basis.
Second, Appellant argues that the Examiner’s rejection is unclear
because the Examiner misused the word “obviate.” (Id.) We are not
persuaded by this argument.
In the body of the rejection, the Examiner stated that “[t]he
modification as detailed above obviates the insertion of x-ray radiation
absorbing plates for the panels of McCloud.” OA 15 (emphasis added).
Appellant argues that “[t]he meaning of this statement is unclear. The
examiner may have intended to use a word other than ‘obviate’ in the
rejection, but the ground for the rejection cannot be determined from the
record.” (App. Br. 16.)
We disagree. Although the Examiner erred by using “obviate” to
mean “renders obvious,” the meaning of the Examiner’s statement was clear
from its context. Because the thrust of rejection was readily ascertainable,
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the Examiner’s error was not harmful. In re Jung, 637 F.3d 1356, 1365
(Fed. Cir. 2011) (“It is well-established that the Board is free to affirm an
examiner’s rejection so long as ‘appellants have had a fair opportunity to
react to the thrust of the rejection.’”).
Furthermore, even if the thrust of the rejection were not ascertainable,
the Examiner restated the rejection in Answer, eliminating the vocabulary
error. (Compare OA with Ans. 16‒17.) Appellant did not address the
restated objection in the Reply Brief.
We are not persuaded that the Examiner reversibly erred in rejecting
claims 21 and 22.
Rejection 8. Appellant argues that the rejection of claim 19 should be
reversed because it is dependent upon claim 18. (App. Br. 16.) Because we
affirmed the rejection of claim 18, we also affirm the rejection of claim 19.
Rejection 9. Appellant argues that the rejection of claim 20 should be
reversed because it is dependent upon claim 18. (App. Br. 17.) Because we
affirmed the rejection of claim 18, we also affirm the rejection of claim 20.
CONCLUSION
For the foregoing reasons, we affirm the rejection of claims 1‒6 and
8‒29 of the ’786 Application as obvious. On the record before us, we are
constrained to reverse the rejection of claim 7.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
sl