Savannah River Nuclear Solutions, LLC

Patent Trials and Appeals Board

Nov 5, 2020

2020000927 (P.T.A.B. Nov. 5, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
14/661,624 03/18/2015 David M. Immel SRNS-77 (SRS-14-019B) 1034
22827 7590 11/05/2020
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
RIDDICK, BLAKE CUTLER
ART UNIT PAPER NUMBER
2884
NOTIFICATION DATE DELIVERY MODE
11/05/2020 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):
USDOCKETING@DORITY-MANNING.COM
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID M. IMMEL, JOHN T. BOBBITT III, and
JEAN R. PLUMMER
____________

Appeal 2020-000927
Application 14/661,624
Technology Center 2800
____________

Before ADRIENE LEPIANE HANLON, MONTÉ T. SQUIRE, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1 and 5–10.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Savannah River Nuclear Solutions, LLC
as the real party in interest. Appeal Brief filed June 13, 2019 (“Appeal Br.”)
at 3.
2 Final Office Action entered December 13, 2018 (“Final Act.”) at 1.
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CLAIMED SUBJECT MATTER
Appellant claims a calibration system for an image plate used to
detect high-energy particles produced by a radioisotope. Appeal Br. 5–6.
Claim 1, the sole pending independent claim, illustrates the subject matter on
appeal, and reads as follows:
1. A calibration system for an image plate used to detect
high-energy particles produced by a radioisotope, wherein the
high-energy particles comprise at least one of alpha particles,
beta particles, neutrons, x-rays, gamma rays, or ultraviolet rays,
comprising:
a casing, the casing defining an access port and a slot
extending from the access port and extending internally within
the casing, the slot defining a first surface and a second surface
with a space therebetween, the casing comprising a detent, a
spring, or a press fitting that extends into the slot;
an image plate holder configured for removable insertion
within the slot such that a first side of the image plate holder is
adjacent to the first surface of the slot and a second opposite
side of the image plate holder is adjacent to the second surface
of the slot, the image plate holder defining an opening for
exposing at least a portion of an image plate retained therein,
the image plate holder defining a mating surface for mating
with the detent, spring, or press fitting upon insertion of the
image plate holder into the slot, the image plate holder further
comprising a handle operably connected thereto, wherein the
handle extends at least partially outside of the access port upon
insertion of the image plate holder into the slot; and
a calibration source that generates energy inside said
casing, the calibration source being located within the casing
such that the energy is directed to the opening of the image
plate holder upon insertion of the image plate holder into the
slot with the mating surface mated with the detent, spring, or
press fitting.

Appeal Br. 24 (Claims Appendix) (emphasis added).
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REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered September 19, 2019 (“Ans.”):
I. Claims 1 and 10 under 35 U.S.C. § 103 as unpatentable over
Mick3 in view of Coleman,4 Allison,5 and Ohgoda;6
II. Claim 5 under 35 U.S.C. § 103 as unpatentable over Mick in
view of Coleman, Allison, Ohgoda, and Trzcinski;7
III. Claims 6 and 7 under 35 U.S.C. § 103 as unpatentable over
Mick in view of Coleman, Allison, Ohgoda, and Tom;8
IV. Claim 8 under 35 U.S.C. § 103 as unpatentable over Mick in
view of Coleman, Allison, Ohgoda, and Arakawa;9
V. Claim 9 under 35 U.S.C. § 103 as unpatentable over Mick in
view of Coleman, Allison, Ohgoda, and Steffen.10
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we reverse the Examiner’s rejections of
claims 1 and 5–10 under 35 U.S.C. § 103 for the reasons set forth in the
Appeal Brief and below.
Claim 1 requires the recited calibration system for an image plate to
comprise, in part, a casing defining an access port and a slot that extends

3 US 5,561,698; issued October 1, 1996.
4 US 2012/0112099 A1; published May 10, 2012.
5 US 3,226,999; issued January 4, 1966.
6 US 4,931,641; issued June 5, 1990.
7 US 7,057,200 B2; issued June 6, 2006.
8 US 2007/0023710 A1; published February 1, 2007.
9 US 5,065,021; issued November 12, 1991.
10 US 5,440,146; issued August 8, 1995.
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internally within the casing, and an image plate holder configured for
removable insertion within the slot. Claim 1 requires the image plate holder
to define an opening for exposing at least a portion of an image plate
retained in the image plate holder.
The Examiner finds that Mick discloses a film holding device
comprising plates 10, 11 (a casing) separated by an opening (access port and
slot) including studs 13 (alignment means), and an “image film holder
(rectangular film pack) . . . configured for exposing at least a portion of an
image film retained therein.” Final Act. 4–5 (citing Mick col. 1, ll. 7–10;
col. 1, l. 51–col. 2, l. 2; col. 2, ll. 34–45; Figs. 1 and 2). The Examiner finds
that “Mick does not expressly disclose the image pack is an image plate,
such that the image film holder is an image plate holder, the image plate
holder defining an opening for exposing at least a portion of the image plate
retained therein.” Final Act. 6 (emphasis omitted).
The Examiner finds, however, that Coleman discloses a phosphorous
storage plate (image plate) “and an opening 150 for exposing at least a
portion of the image plate.” Final Act. 6. (citing Coleman ¶¶ 4, 60). In view
of these disclosures in Coleman, the Examiner concludes that “[i]t would
have been obvious to one of ordinary skill in the art at the time the invention
was filed to have modified the invention of Mick with the teachings of
Coleman so that . . . the image pack is an image plate, such that the image
film holder is an image plate holder, the image plate holder defining an
opening for exposing at least a portion of the image plate retained therein.”
Final Act. 6 (emphasis omitted). The Examiner finds that “[o]ne would have
been motivated to do so to gain advantages recited in Coleman of using a
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high sensitivity image plate,” and “being able to achieve a desired field of
view.” Final Act. 7. (emphasis omitted) (citing Coleman ¶¶ 4, 60).
On the record before us, however, for reasons express by Appellant
and discussed below, the Examiner does not establish that the relied-upon
disclosures of Mick and Coleman would have suggested a calibration system
for an image plate that includes an image plate holder defining an opening
for exposing at least a portion of an image plate retained in the image plate
holder, as required by claim 1.
Mick discloses a film holding device used to calibrate the positioning
accuracy of a movable radiation source of a medical device that provides
high doses of radiation to tumors. Mick col. 1, ll. 13–26, 50–52. Mick
discloses that the film holding device comprises flat planar plates 10, 11,
aligning studs 13, and locking screws 14. Mick col. 2, ll. 32–45; Figs 1 and
2. Mick discloses that plates 10, 11 are “generally rectangular in shape so as
to hold a rectangular film pack.” Mick col. 2, ll. 35–37. Mick discloses that
suitable film packs include a 10x12 inch rectangular radiographic film
wrapped in paper, which “is common in the industry and usually is designed
to have a rectangular shape with side edges forming its perimeter which fits
snugly inside the aligning studs 13.” Mick col. 2, ll. 37–42. Mick discloses
that aligning studs 13 “thus position the film pack and hold[] it steady while
locking screws 14 are tightened by hand to clamp the film pack immobile
between plates 10 and 11.” Mick col. 2, ll. 42–45.
Mick thus discloses using aligning studs 13 to position a rectangular
radiographic film wrapped in paper, which Mick refers to as a “film pack,”
snugly between flat planar plates 10, 11, and tightening locking screws 14 to
immobilize the radiographic film between plates 10, 11. Mick col. 2, ll. 42–
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45. As discussed above, the Examiner finds that Mick discloses an “image
film holder (rectangular film pack) . . . configured for exposing at least a
portion of an image film retained therein.” Final Act. 5. Contrary to the
Examiner’s findings, however, Mick’s device does not include an image
film holder and an image film retained therein. Rather, Mick’s device
directly clamps a radiographic film between plates 10, 11 (a casing) without
retaining the film in a film holder.
Coleman discloses a radiation detector apparatus for assessing areas
potentially contaminated by radioactive materials that comprises a housing
defining a plurality of faces that each include a receptacle for retaining a
radiation detector, and a collimator positioned opposite each receptacle.
Coleman ¶¶ 4, 5, 17, 18. Coleman discloses that each radiation detector
includes a plurality of film layers positioned between opposing layers of
radiation attenuation materials that “provide[] for a controlled reduction of
radiation intensity that passes through the detector.” Coleman ¶¶ 12, 45;
Fig. 1. Coleman discloses that suitable films for use in the radiation detector
include phosphorous storage plates (PSP). Coleman ¶ 46.
Coleman discloses that each collimator comprises an opening, and the
radiation detector receives radiation that passes through the opening in the
collimator. Coleman ¶ 19. Coleman discloses that the opening within each
collimator provides a 96 degree field of view, and explains that when a
radiation detector and paired collimator are included “on each of six cube
faces [of a radiation detection apparatus], the 96 degree field of view
provides sufficient overlap such that a full 360° degree coverage is
provided.” Coleman ¶¶ 58, 60.
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Although, as discussed above, the Examiner asserts in the Final
Action that one of ordinary skill in the art would have used a phosphorous
storage plate as disclosed in Coleman instead of the radiographic film (film
pack) disclosed in Mick in Mick’s film holding device to “be[] able to
achieve a desired field of view,” Coleman discloses that a desired field of
view can be achieved by using multiple radiation detectors and collimators
that are each disposed on a different face of Coleman’s radiation detector
apparatus. The Examiner does not identify any disclosure in Coleman
indicating that the phosphorous storage plates included in Coleman’s
radiation detector themselves provide a desired field of view.
And although the Examiner further asserts in the Answer that
substituting a phosphorous storage plate as disclosed in Coleman for Mick’s
radiographic film (film pack) would constitute “simple substitution of one
means for radiation detection . . . for another means for radiation detection,”
the Examiner does not provide any evidence establishing that a phosphorous
storage plate as disclosed in Coleman and a radiographic film as disclosed in
Mick are known equivalents for the particular purpose for which Mick’s
radiographic film is used. Ans. 7–8. As discussed above, Coleman
discloses a radiation detector for assessing areas potentially contaminated by
radioactive materials that includes a plurality of phosphorous storage plates
positioned between opposing layers of radiation attenuation materials,
whereas Mick discloses using a single rectangular radiographic film to
calibrate the positioning accuracy of a movable radiation source in a medical
device. The Examiner does not address these structural and functional
differences between Coleman’s phosphorous storage plate and Mick’s
radiographic film, and does not provide evidence establishing that, despite
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those differences, Coleman’s phosphorous storage plate is a known
equivalent used for the same purpose as Mick’s radiographic film (film
pack). See In re Christensen, 82 F.2d 715, 716 (CCPA 1936); see also
Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 609 (1950)
(“In determining equivalents, things equal to the same thing may not be
equal to each other . . . . Consideration must be given to the purpose for
which an ingredient is used in a patent . . . and the function which it is
intended to perform.”); see also MPEP § 2144.06(II) (“In order to rely on
equivalence as a rationale supporting an obviousness rejection, the
equivalency must be recognized in the prior art, and cannot be based on
applicant’s disclosure or the mere fact that the components at issue are
functional or mechanical equivalents.”) (citing In re Ruff, 256 F.2d 590
(CCPA 1958)).
On the record before us, therefore, the Examiner does not provide
sound technical reasoning supported by objective evidence establishing that
one of ordinary skill in the art would have had a reason to substitute a
phosphorous storage plate as disclosed in Coleman for Mick’s radiographic
film (film pack), as the Examiner proposes. KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007) (“[I]t [is] important to identify a reason that would
have prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does.”); In re Van Os, 844
F.3d 1359, 1361–62 (Fed. Cir. 2017) (“a conclusory assertion with no
explanation is inadequate to support a finding that there would have been a
motivation to combine” because “[t]his type of finding, without more, tracks
the ex post reasoning KSR warned of and fails to identify any actual reason
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why a skilled artisan would have combined the elements in the manner
claimed.”) (emphasis omitted) (citing KSR, 550 U.S. at 418, 421).
Moreover, as Appellant argues (Appeal Br. 17), even if one of
ordinary skill in the art would have made the Examiner’s proposed
substitution, Mick’s film holding device as so modified still would not
include an image plate holder that defines an opening for exposing at least a
portion of an image plate retained in the image plate holder. As discussed
above, Mick’s device does not include an image film holder in which an
image film is retained, and instead Mick’s device directly clamps a
radiographic film between plates 10, 11 (a casing) without retaining the film
in a film holder. Although the Examiner refers to opening 150 disclosed in
Coleman (Final Act. 6), opening 150 is formed in a collimator, rather than in
an image plate holder. Coleman ¶ 60; Fig. 3. The Examiner does not
explain how Coleman’s disclosure of a collimator opening would have
suggested forming an opening in an image plate holder and incorporating
such an image plate holder in Mick’s device.
On the record before us, therefore, the Examiner does not establish
that a combination of the relied-upon disclosures of Mick and Coleman
would have suggested a device comprising a casing defining an access port
and a slot, an image plate holder configured for removable insertion within
the slot, where the image plate holder defines an opening for exposing at
least a portion of an image plate retained in the image plate holder, as
required by claim 1.
We, accordingly, do not sustain the Examiner’s rejection of claim 1,
and rejections of claims 5–10, which each depend from claim 1, under 35
U.S.C. § 103.
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CONCLUSION

Claims

35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 10 103 Mick, Coleman,
Allison, Ohgoda
1, 10
5 103 Mick, Coleman,
Allison, Ohgoda,
Trzcinski
5
6, 7 103 Mick, Coleman,
Allison, Ohgoda,
Tom
6, 7
8 103 Mick, Coleman,
Allison, Ohgoda,
Arakawa
8
9 103 Mick, Coleman,
Allison, Ohgoda,
Steffen
9
Overall
Outcome
1, 5–10

REVERSED