Ex Parte Wallace

Board of Patent Appeals and Interferences

Jun 29, 2009

10861926 (B.P.A.I. Jun. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEVEN WALLACE
____________

Appeal 2008-005751
Application 10/861,926
Technology Center 3600
____________

Decided:1 June 29, 2009
____________

Before WILLIAM F. PATE, III, LINDA E. HORNER, and
FRED A. SILVERBERG, Administrative Patent Judges.

HORNER, Administrative Patent Judge

DECISION ON APPEAL

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 2008-005751
Application 10/861,926

2
STATEMENT OF THE CASE
Steven Wallace (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s decision July 24, 2006, in which the Examiner finally
rejected claims 1, 2, 7-10, 12-18, and 21-24. Claims 3-6, 11, 19, and 20
have been withdrawn from consideration. We have jurisdiction under
35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
The Appellant’s claimed invention is a neutron detector having solid
absorbers. Spec. 1, para. 3. Neutron detectors are useful in many
applications including for accountability and monitoring in nuclear facilities
and weapons storage, for use in the medical industry, and for oil exploration.
Spec. 1, para. 4 – Spec. 3, para. 10. Neutrons are uncharged particles that
can travel through matter without ionizing the matter. Spec. 3, para. 11.
The Appellant’s invention allows the direct measurement of the
detection of neutrons that are so proximate in time as to be attributed with a
high probability to a fission event. Spec. 18, para. 54. In the Appellant’s
invention the neutron detecting material is fabricated from a scintillating
material and a matrix material. The matrix material is formed of a glass
having a volumetrically high loading of a neutron absorbing material. The
Appeal 2008-005751
Application 10/861,926

3
matrix material fills spaces between the particles of the scintillating material.
Spec. 19, para. 57.
As a neutron is absorbed in the matrix material, ions having a high
kinetic energy are created. The ions then traverse from the matrix material
into the scintillating material, creating an ionized path. As a result of the
ionization path within the scintillating material, a scintillation output is
generated. Upon relaxation of the ions into a non-ionized state, photons are
yielded. The photons are of a wavelength and duration characteristic of the
scintillator material. Spec. 20, para. 58. A detector is provided for detecting
the photons. Spec. 20, para. 59.
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A neutron detector comprising:
a glass medium;
a first material which yields at least one of a
triton, an alpha particle and a fission fragment when
said first material absorbs a neutron, said first material
being incorporated into said glass medium;
a second material embedded within said glass
medium to form a heterogeneous composition, said
second material consisting of scintillating particles
which scintillate when traversed by said at least one of
a triton, an alpha particle and a fission fragment, said
second material being defined by particulates, and
said glass medium surrounding said particulates being
dimensioned such that charged particles emitted from
the constituent within said glass medium enter said
second material;
Appeal 2008-005751
Application 10/861,926

4
a transparent plastic into which said glass
medium is dispersed to form a further heterogeneous
composition, said glass medium incorporating said
first material and in which is embedded said second
material; and
a surface coating disposed on said transparent
plastic for reflecting scintillation light pulses.

THE EVIDENCE
The Examiner relies upon the following evidence:
Melcher US 4,958,080 Sep. 18, 1990
Hofstetter US 5,336,889 Aug. 9, 1994
Perkins US 5,680,423 Oct. 21, 1997
Bross US 5,968,425 Oct. 19, 1999
Hiller US 5,973,328 Oct. 26, 1999
Appellant’s admitted prior art reference to the MINOS neutrino
oscillation detector at pages 14-15 of the Appellant’s Specification
(referring to http://www-numi.fnal.gov/minwork/info/minos_tdr.html,
Chapter 5, Scintillator detector fabrication detailing the MINOS
scintillator system) (MINOS).

THE REJECTIONS
The Appellant seeks review of the following rejections:
1. The Examiner rejected claims 2, 7-10, 13, and 14 under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which Appellant
regards as the invention.2

2 The Examiner withdrew a rejection of claims 1 and 12 under 35 U.S.C.
Appeal 2008-005751
Application 10/861,926

5
2. The Examiner rejected claims 1, 2, 7-10, 13, 14, and 16-18 under
35 U.S.C. § 103(a) as being unpatentable over Perkins, Hiller,
Melcher, and Hofstetter.
3. The Examiner rejected claims 12, 15, and 21-24 under 35 U.S.C.
§ 103(a) as being unpatentable over Perkins, Hiller, Melcher, and
Hofstetter, and further in combination with Bross or MINOS.

ISSUES
For the first rejection, the Appellant states that “[w]ith respect to
Claim 2 and those claims depending therefrom [i.e., claims 7-10, 13, and
14], it is respectfully submitted that there is no conflict between the
specification and Claim 2 of the present application. However, Applicant
has limited the present appeal to independent Claim 1 and therefore reserves
his argument on such rejection for future communications following a
decision by the Board.” Br. 10.
The first issue presented by this appeal is whether the rejection of
claims 2, 7-10, 13, and 14 under 35 U.S.C. § 112, second paragraph, is
before us, and if so, whether the Appellant has waived any arguments for
patentability that could have been made to rebut the Examiner’s rejection.
For the second rejection, the Appellant argues claims 1, 2, 7-10, 13,
14, and 16-18 as a group. Br. 12-19. We select claim 1 as the representative
claim, and claims 2, 7-10, 13, 14, and 16-18 stand or fall with claim 1.

§ 112, second paragraph, as being indefinite. Ans. 2-3.

Appeal 2008-005751
Application 10/861,926

6
37 C.F.R. § 41.37(c)(1)(vii) (2008). The Appellant contends that the
Examiner erred in rejecting claim 1, because the combination of prior art
relied upon by the Examiner fails to teach scintillating particles
heterogeneously incorporated into a glass medium, which is further
heterogeneously incorporated into a plastic matrix. Br. 17.
The Examiner found that Perkins teaches a neutron detector that uses
fissionable material (e.g., Lithium-6) [a first material] that reacts with
neutrons to produce charged particles (e.g., triton or alpha products) in
concert with a scintillator (Ce in a +3 oxidation state) [a second material],
and teaches that the two materials are mixed with a glass matrix (SiO2), and
these fibers are embedded in a polymer capable of and intended for the
propagation of scintillation photons [a transparent plastic]. Ans. 3-4. The
Examiner also found that Hofstetter discloses a detector having a glass
matrix doped with a suitable scintillating material in particulate form which
is embedded into the matrix and that Hiller discloses the use of sol-gel
technology for forming glass-type matrices without using high heat
processes. Ans. 4-5. The Examiner concluded that it would have been
obvious to suspend the scintillating materials of Perkins in a glass matrix
because it creates a rigid structure that may be processed as desired (as
shown by Hofstetter) into fibers or films as in Hiller, or as particles
according to an optimization, and that using the sol-gel technology as in
Hiller facilitates manufacture, and so forming the glass matrix from a sol-gel
precursor is no more than the use of a well-known expedient in the art of
neutron detectors. Ans. 6.
Appeal 2008-005751
Application 10/861,926

7
For the third rejection of claims 12, 15, and 21-24, the Appellant does
not present any arguments other than those presented previously for the
patentability of claim 1. Br. 19.
The second issue presented by this appeal is:
Has the Appellant shown that the Examiner erred in concluding that it
would have been obvious to use the sol-gel method disclosed in Hiller to
create a lithiated glass matrix and then embed the scintillating particles of
Perkins in the glass matrix, as taught by Hofstetter, to create a first
heterogeneous composition and further disperse this first composition into a
transparent plastic, as taught by Perkins, to form a further heterogeneous
composition?

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. The Appellant appeals from the decision of the Examiner of July
24, 2006, in which the Examiner finally rejected claims 1, 2, 7-10,
12-18, and 21-24. Notice of Appeal of October 24, 2006, and
Final Office Action of July 24, 2006.
2. The Final Office Action included a rejection of claims 1, 2, 7-10
and 12-14 under 35 U.S.C. § 112, second paragraph. Final Office
Action 6.
Appeal 2008-005751
Application 10/861,926

8
3. The Appellant’s Brief states that “[c]laims 1, 2, 7-10, 12-18 and
21-24 are presently pending in the Application. The rejection of
Claims 1, 2, 7-10, 12-18, and 21-24 is being appealed by
Appellant.” Br. 5.
4. The section of the Appellant’s Brief discussing the grounds of
rejection to be reviewed on appeal includes the rejection of claims
1, 2, 7-10 and 12-14 under 35 U.S.C. § 112, second paragraph.
Br. 8.3
5. Perkins relates to a method and apparatus for detecting neutrons,
including drawing optical fibers enriched with a first substance
having a high probability of capturing thermal neutrons and a first
scintillating material. Perkins, col. 1, ll. 10-14.
6. Perkins discloses using a reducing atmosphere to melt Silica (SiO2)
(a glass medium) with a thermal neutron capturing substance
(Lithium-6) and a first scintillating material (Cerium (Ce) in a +3
oxidation state). Perkins, col. 2, ll. 9-13.
7. Perkins discloses that the melt is drawn into fibers to result in
fibers that scintillate upon interaction with thermal neutrons.
Perkins, col. 2, ll. 13-16.
8. Perkins teaches that the use of fibers, as compared with prior art
glass plates enriched with Lithium-6, allows flexibility in the

3 The Examiner subsequently withdrew the rejection of claims 1 and 12
under 35 U.S.C. § 112, second paragraph. Ans. 2-3.

Appeal 2008-005751
Application 10/861,926

9
detection means and allows for a plurality of fibers to be arranged
in an array within a second scintillating material, such as a
polymer. Perkins, col. 2, ll. 22-28.
9. Perkins further teaches that positioning fibers in an array within a
second scintillating material increases the likelihood, as compared
with prior art glass plates, of each neutron generating a signal upon
interaction with a fiber and thus provides an accurate count of the
total number of interactions. Perkins, col. 2, ll. 46-49.
10. Perkins discloses that when a kinetic neutron collides with a
polymer, the polymer scintillates and the neutron is slowed and
transformed into a thermal neutron. The thermal neutrons may
then interact with the optical fibers by physical absorption of the
thermal neutron by lithium-6, which in turn produces an alpha
particle and a triton. The triton may then collide with the first
scintillating material (Cerium (Ce) in a +3 oxidation state) to
produce a second scintillation. Some of the photons produced by
the second scintillation are trapped within the fiber. These trapped
photons are directed to photoelectric converters, such as
photomultiplier tubes or avalanche photodiodes, such that a
measurable electronic signal is generated for each thermal neutron
interaction within the fiber. These electronic signals are
interpreted to infer the quality and quantity of incident radiation.
Perkins, col. 3, ll. 8-26.
Appeal 2008-005751
Application 10/861,926

10
11. Perkins discloses that the glass is initially melted with the
lithium-6 and Ce in a +3 oxidation state at approximately 1400° C
for 2 hours to complete melting and “to achieve homogeneity.”
Perkins, col. 4, ll. 25-27 and ll. 35-36.
12. The Appellant’s Specification describes that “[t]he lithiated glass is
formed through one of several methods including, but not limited
to: mixing scintillating particles into a high temperature liquid;
mixing powdered lithium glass and scintillating particulates and
melting the mixture to fuse the particulates in the glass; and
polymerizing a mixture of scintillating particulates in a sol-gel
lithiated glass precursor.” Spec. 19, para. 55.
13. The Appellant’s Specification further describes that a furnace is
used at a high temperature to fuse the glass to the scintillating
particles to form a lithiated glass/scintillating particles boule,
which is subsequently ground for blending and fusing into
polystyrene into an extruded shape. Spec. 25, para. 72.
14. The ordinary meaning of “heterogeneous” includes “consisting of
or involving dissimilar elements or parts; not homogeneous.” The
American Heritage Dictionary 609, Houghton Mifflin Co., Boston
(2d College ed. 1982).
15. The ordinary meaning of “homogeneous” includes “uniform in
structure or composition throughout.” The American Heritage
Dictionary 619, Houghton Mifflin Co., Boston (2d College ed.
1982).
Appeal 2008-005751
Application 10/861,926

11
16. Hiller discloses a high speed neutron detector including a glass
film containing fissionable material and a detection member.
Hiller, col. 2, ll. 59-61.
17. Hiller discloses that the glass film containing fissionable material
is fabricated using a sol-gel method and is a lithium-6, 95%
enrichment, sol-gel glass film 1 deposited on a stainless steel,
quartz, or silica plate, or a glass fiber. Hiller, col. 2, ll. 62-65 and
col. 3, l. 66 – col. 4, l. 2.
18. Hiller further discloses that cerium oxide or other rare earth that
fluoresces when stimulated by ionization in a glass matrix can be
incorporated into the glass film created using the sol-gel method.
Hiller, col. 3, ll. 2-5.
19. Hofstetter discloses a gamma radiation detector that includes
cerium-doped silicate glass particles incorporated into an inert,
porous glass matrix via a sol-gel process to produce a composition
containing a uniformly-dispersed dopant in the matrix. Hofstetter,
col. 2, ll. 50-64 and col. 3, ll. 6-9; Fig. 2.
20. Hofstetter discloses that the sol-gel process steps are carried out
under conditions that preserve the structural integrity and
radiation-sensitivity of the scintillant. Hofstetter, col. 3, ll. 32-35.
21. Hofstetter discloses that the composition is chemically inert and
impervious to environmental conditions including changes in
temperature, air pressure, and humidity and that the composition
can be fabricated in any desired form. Hofstetter, col. 2, ll. 64-68.
Appeal 2008-005751
Application 10/861,926

12
22. Melcher discloses a gamma ray detector having a single crystal
LSO scintillator 10 encased within a housing 12, wherein one face
14 of the scintillator is placed in optical contact with the
photosensitive surface of a photomultiplier tube 16 and the other
faces 18 of the scintillator are surrounded or covered with a
reflective material, such as titanium dioxide paint, in order to direct
as much of each light flash to the photomultiplier as possible.
Melcher, col. 3, ll. 49-62.

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)

Appeal 2008-005751
Application 10/861,926

13
ANALYSIS
Rejection of claims 2, 7-10, 13, and 14 under 35 U.S.C. § 112, second
paragraph
The Appellant wishes to reserve arguments on this rejection for future
communications following a decision by the Board. Br. 10. Despite the
Appellant’s desire to engage in piecemeal appeal of rejections, the Appellant
appealed from the Examiner’s July 24, 2006 decision in which the Examiner
finally rejected claims 2, 7-10, 13, and 14 under 35 U.S.C. § 112, second
paragraph (Facts 1 & 2). Further, the Appellant’s own Appeal Brief states
that the rejection of claims 2, 7-10, 13, and 14 under 35 U.S.C. § 112,
second paragraph, is among the grounds of rejection to be reviewed on
appeal (Facts 3 & 4). The Examiner incorrectly stated in the Answer that the
Appellant limited the appeal to independent claim 1. Ans. 2 (citing App. Br.
10). As stated above, the Appellant’s Notice of Appeal and Appeal Brief
include the rejection of claims 2, 7-10, 13, and 14 under 35 U.S.C. § 112,
second paragraph, as one of the grounds of rejection to be reviewed on
appeal. In this case, if the Appellant did not want the Board to decide the
rejection of claims 2, 7-10, 13, and 14 under 35 U.S.C. § 112, second
paragraph, the Appellant should have either withdrawn those claims from
appeal4, canceled those claims, or amended the claims to overcome the

4 Because the Appellant is appealing the rejection of claims 2, 7-10, 13, 14,
and 16-18 under 35 U.S.C. § 103, we do not treat these claims as having
been withdrawn from the appeal.
Appeal 2008-005751
Application 10/861,926

14
rejection. The Appellant has not done any of these things. As such, the
decision of the Examiner rejecting claims 2, 7-10, 13, and 14 under
35 U.S.C. § 112, second paragraph, is before us for review.
The Appellant has failed to present a persuasive argument as to error
in the Examiner’s rejection of these claims. As such, the Appellant has
waived any argument of error, and we summarily sustain the rejection of
claims 2, 7-10, 13, and 14 under 35 U.S.C. § 112, second paragraph. See In
re Berger, 279 F.3d 975 (Fed. Cir. 2002) (holding that Board did not err in
sustaining a rejection under 35 U.S.C. § 112, second paragraph, when the
applicant failed to contest the rejection on appeal).

Rejection of claims 1, 2, 7-10, 13, 14, and 16-18 under 35 U.S.C. § 103(a)
as being unpatentable over Perkins, Hiller, Melcher, and Hofstetter
As we noted supra, claim 1 is the representative claim for this ground
of rejection, and claims 2, 7-10, 13, 14, and 16-18 stand or fall with claim 1.
The Examiner found that Perkins discloses all of the elements of
claim 1 except that it does not disclose suspending the scintillating particles
in a glass matrix or using a reflective surface coating on the plastic
scintillator unit. Ans. 6. We agree with the Examiner’s findings as to the
scope and content of Perkins and the differences between Perkins and the
subject matter of claim 1 (Facts 6-11). In particular, Perkins discloses a
glass medium (Fact 6) and a first material which yields at least one of a
triton, an alpha particle and a fission fragment when said first material
absorbs a neutron (Facts 6 & 10), where the first material is incorporated
Appeal 2008-005751
Application 10/861,926

15
into the glass medium (Fact 6 & 11). Perkins further discloses a second
material incorporated into the glass medium (Facts 6 & 11), where the
second material consists of scintillating particles which scintillate when
traversed by said at least one of a triton, an alpha particle and a fission
fragment (Facts 5-7 & 10). Perkins discloses that thermal neutrons interact
with the optical fibers by physical absorption of the thermal neutron by
lithium-6, which in turn produces an alpha particle and a triton. The triton
may then collide with the first scintillating material (Cerium (Ce) in a +3
oxidation state) to produce a second scintillation (Fact 10). As such, the
glass medium surrounding the scintillating particulates of Perkins is
dimensioned such that charged particles emitted from the lithium-6 enter the
scintillating particles. Perkins further discloses a transparent plastic into
which the glass medium is dispersed to form a heterogeneous composition
(Facts 8 & 9).
Perkins does not disclose that the scintillating particles are embedded
as particulates within the glass medium to form a heterogeneous
composition (Fact 11). Perkins also does not disclose a surface coating
disposed on the transparent plastic for reflecting scintillation light pulses
(Fact 8).
The Examiner found that Hofstetter discloses “a detector composition
configuration wherein a glass matrix (18) doped with a suitable scintillating
material in particulate form (16) is embedded into the matrix (Fig. 2).” Ans.
4. We agree with the Examiner’s finding (Fact 19). We further find that
Hofstetter describes forming this composition using the sol-gel process
Appeal 2008-005751
Application 10/861,926

16
under conditions that preserve the structural integrity and radiation
sensitivity of the scintillant (Fact 20). We further find that Hofstetter
discloses the composition can be fabricated into any desired form (Fact 21).
The Examiner found that Hiller “discloses the use of sol-gel
technology for forming glass-type matrices without using high heat
processes.” Ans. 4-5. We agree with the Examiner’s finding (Facts 16-17).
We further find that Hiller’s sol-gel method renders a glass film containing
fissionable material (lithium-6) that can be deposited onto a glass fiber and
that Hiller discloses that cerium oxide or other rare earth materials that
fluoresce when stimulated by ionization in a glass matrix can be
incorporated into the glass film created using the sol-gel method. (Facts 17,
18). Thus, both Hofstetter and Hiller disclose that it was known in the art to
use the sol-gel method to create glass with a scintillating material embedded
therein, and Hofstetter teaches that it was preferable to use the sol-gel
method to present the radiation sensitivity of the scintillant.
The Examiner found that Melcher discloses “coating the scintillator
unit with a reflective material, including titanium dioxide paint (col. 3, lines
58+) [“a surface coating” claim 1, “titanium dioxide” claim 16] in order
to direct as much scintillated light to the photomultiplier as possible.”
Ans. 6. We agree with the Examiner’s finding (Fact 22).
The Examiner articulated the following reasoning to explain why the
subject matter of claim 1 would have been obvious in view of Perkins,
Hiller, Hofstetter, and Melcher:
Appeal 2008-005751
Application 10/861,926

17
Combining scintillating materials with fissionable
material as in Perkins et al. allows scintillator-type
detectors to be used neutron detectors. Suspending
these materials in a glass matrix creates a rigid
structure that may be processed as desired (as
shown by Hofstetter) – into fibers or films as in
Hiller et al. (col. 1 and 4), or as particles according
to an optimization. Utilizing sol-gel technology as
in Hiller et al. facilitates manufacture, and so
forming the glass matrix from a sol-gel precursor
is no more than the use of a well-known expedient
in the art of neutron detectors. It would have been
obvious to one skilled in the art at the time of
invention to suspend these modified particulates in
plastic (polymer) as taught by Perkins et al. as such
a polymer provides an acceptable refractive index
for maintaining light produced by scintillations
within embedded glass composite (col. 5, lines
58+). It would also have been prima facie obvious
to use a reflective coating as taught by Melcher on
the resulting plastic scintillator units, as the
reflective material conserves the scintillator signal
– which is the motivation described in both
Melcher (col. 3, lines 58+) and the present
application. Each of the disclosed detector
systems is coupled to a computer and analysis
system as discussed in Perkins et al., col. 6, in
order to use the information rendered by the active
materials, as is conventional in the art of radiation
detection. Ans. 6.
We agree with the Examiner’s reasoning for combining the teachings
of the prior art in the manner claimed and find that this reasoning is based on
a rational underpinning. We add the following: Perkins creates the glass
fibers through a process that renders a homogeneous mixture (Fact 11);
Appeal 2008-005751
Application 10/861,926

18
Hofstetter teaches that the sol-gel method maintains the structural integrity
and radiation sensitivity of the scintillant (Fact 20); and Hiller demonstrates
that it was known in the art to use the sol-gel method to create a glass film
containing fissionable material and a scintillating material deposited on a
glass fiber (Facts 16, 17). Thus, one having ordinary skill in the art would
have been led to use the well-known sol-gel process to create the glass fibers
of Perkins wherein the scintillating material would remain as a particulate
embedded within the lithiated glass (Fact 19). See KSR, 550 U.S. at 417 (“if
a technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.”)
The Appellant argues that Perkins does not teach “the use of a
scintillating particle which puts out many more photons than the cerium
based glass into which Perkins et al., have added lithium as a homogeneous
material.” Br. 14. The Appellant further argues that “the light output of the
Perkins et al., material as compared to that of the present invention is several
orders of magnitude lower.” Br. 17. The Appellant’s claim 1 is not limited,
however, to a particular number of photons that the claimed neutron detector
must emit or a particular light output. Notably, the Appellant does not
provide persuasive evidence that the cerium in a +3 oxidation state used by
Perkins fails to meet the claimed scintillating particles.
The Appellant further argues that Perkins does not disclose “a matrix
and do[es] not use the room temperature means of fabricating the material of
Appeal 2008-005751
Application 10/861,926

19
the ‘423 patent.” Br. 14. The Examiner did not find that Perkins discloses a
heterogeneous mixture of the claimed second material and the glass medium.
Rather, the Examiner relied on a modification to Perkins based on the
methods disclosed in Hiller and Hofstetter, which teach using a room
temperature means of fabricating the material using the sol-gel method, to
result in the claimed heterogeneous mixture. The Appellant’s argument
argues Perkins in isolation and does not address the Examiner’s rationale for
combining the teachings of Hiller and Perkins in the manner claimed. One
cannot show nonobviousness by attacking references individually where the
rejections are based on combinations of references. See In re Merck & Co.,
800 F.2d 1091 (Fed. Cir. 1986); In re Keller, 642 F.2d 413 (CCPA 1981).
The Appellant further argues:
Neither Perkins et al., Hofstetter nor Hiller et al.,
describes the inventive step of adding scintillating
particles to an active matrix containing an element
generating an ionizing particle. Perkins et al., has
a homogeneous system. Hofstetter has a passive
sol-gel based gamma detecting system and Hiller
et al., has the sol-gel active material. Br. 18.
Again, the Appellant is arguing each reference individually instead of
addressing the Examiner’s proposed combination. Both Perkins and Hiller
describe adding scintillating material to an active glass medium containing
an element generating an ionizing particle (Facts 11, 17, 18). Hiller further
discloses using a sol-gel method to form the active glass medium and add
the scintillating materials (Facts 17 & 18). Hofstetter discloses using a sol-
gel method to add scintillating materials to a glass medium to maintain the
Appeal 2008-005751
Application 10/861,926

20
structural integrity and radiation-sensitivity scintillating particles (Fact 20).
Hofstetter thus discloses a method to add the scintillating material to create a
heterogeneous composition. The Appellant has not provided persuasive
evidence that the composition of Hofstetter, produced by the sol-gel method,
is not a heterogeneous composition. Based on the ordinary meaning of
heterogeneous5 as including dissimilar elements or parts that are not uniform
in structure or composition throughout (Facts 14, 15), Figure 2 of Hofstetter
shows a heterogeneous composition of scintillating particles in a glass
medium. The Examiner’s conclusion of obviousness is based on taking the
method disclosed in Hofstetter, as shown by Hiller to be applicable to
lithiated glass, and use this sol-gel method to form the glass fibers of
Perkins, which are then embedded in a polymer, as taught by Perkins. The
Appellant has failed to rebut this combination by the Examiner.

CONCLUSIONS
The rejection of claims 2, 7-10, 13, and 14 under 35 U.S.C. § 112,
second paragraph, is before this Board, and the Appellant has waived any
arguments that could have been made that the Examiner erred in determining
that these claims are indefinite.
The Appellant has also failed to establish that the Examiner erred in
concluding it would have been obvious to use the sol-gel method disclosed

5 The Appellant’s Specification does not provide a definition of the term
“heterogeneous” or use the term when describing the composition of the
second material and the glass medium.
Appeal 2008-005751
Application 10/861,926

21
in Hiller to create a lithiated glass matrix and then embed the scintillating
particles of Perkins in the glass matrix, as taught by Hofstetter, to create a
first heterogeneous composition and further disperse this first composition
into a transparent plastic, as taught by Perkins, to form a further
heterogeneous composition.

DECISION
The decision of the Examiner to reject claims 1, 2, 7-10, 12-18, and
21-24 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

vsh

PITTS AND BRITTIAN P C
P O BOX 51295
KNOXVILLE TN 37950-1295