Ex Parte Corbeil et al

Patent Trial and Appeal BoardJan 30, 2013

10856225 (P.T.A.B. Jan. 30, 2013)

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. 10/856,225 05/28/2004 James L. Corbeil 2003P88058 US01 3266 28524 7590 02/20/2013 SIEMENS CORPORATION INTELLECTUAL PROPERTY DEPARTMENT 170 WOOD AVENUE SOUTH ISELIN, NJ 08830 EXAMINER VARGOT, MATHIEU D ART UNIT PAPER NUMBER 1742 MAIL DATE DELIVERY MODE 02/20/2013 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 JAMES L. CORBEIL, TROY MARLAR, MATTHIAS J. SCHMAND, NIRAJ K. DOSHI, and MARK S. ANDREACO ____________ Appeal 2011-013680 Application 10/856,225 Technology Center 1700 ____________ Before PETER F. KRATZ, BEVERLY A. FRANKLIN, and LINDA M. GAUDETTE, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 19-37. We have jurisdiction pursuant to 35 U.S.C. § 6. Appeal 2011-013680 Application 10/856,225 2 Appellants’ claimed invention relates to a method of forming an optical boundary within an optical media, an optical medium of an imaging device having such a boundary, a nuclear imaging detector comprising a scintillator having non-contiguous, independent light redirecting regions in a spacial surface defining a selected optical boundary there within, and a light guide comprising a light transmitting material with an optical boundary formed therein. Further details can be derived from a reading of the claims on appeal. Claims 19 and 30 are illustrative and reproduced below: 19. A method of forming an optical boundary within an optical medium of an imaging device, comprising: forming a plurality of non-contiguous, independent light-redirecting regions in a spatial surface within said medium defining a selected optical boundary within said medium. 30. A light-guide, comprising: a light-transmitting material having a plurality of non-contiguous, independent light-redirecting regions in a spatial surface defining a selected optical boundary therewithin. The Examiner relies on the following prior art references as evidence in rejecting the appealed claims: Iversen US 3,936,645 Feb. 3, 1976 Borrelli US 6,796,148 B1 Sep. 28, 2004 Appeal 2011-013680 Application 10/856,225 3 The Examiner maintains the following grounds of rejection: Claims 19-37 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Iversen. Claims 30-32 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Borrelli. Claims 19-37 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Iversen. We reverse the stated rejections. Anticipation Rejections The Examiner bears the initial burden of establishing a prima facie case of anticipation. In re King, 801 F.2d 1324, 1326-27 (Fed. Cir. 1986). Anticipation under 35 U.S.C. § 102 requires that “each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). We agree with Appellants that the Examiner has not established that the subject matter of the rejected claims is anticipated by Iversen or by Borrelli. In this regard, all of the rejected claims require a process of making an optical medium of a device, or a product device or medium, which claimed subject matter includes a plurality of non-contiguous and independent light redirecting regions defining a selected optical boundary within a medium or spatial surface of a device (see independent claims 19, 27, 30, and 33). Concerning the anticipation rejection over Iversen, we agree with Appellants that the Examiner has not established that Iversen describes a method of making a cellular luminescent structure or a product made thereby that includes a plurality of noncontiguous and independent light redirecting regions defining an optical boundary within a medium or a spatial surface, as Appeal 2011-013680 Application 10/856,225 4 variously required by the appealed claims. In this regard, Iversen cuts slots 18 out of a layer of phosphor material 13 and fills the continuous slots 18 with opaque material to confine light to a given phosphor volume (col. 6, l. 3- col. 7, l. 17 and col. 10, l. 14- col. 11, l. 6; Figs. 2 and 10). As argued by Appellants, the Examiner has not reasonably established that the continuous cut outs or slots of Iversen alone or, in combination as a grid thereof, correspond to the plurality of noncontiguous and independent light redirecting regions that define a selected optical boundary within a medium, as required by the appealed claims (App. Br. 10-17). The Examiner’s rebuttal argument and reference to the earlier Board Decision in Appeal No. 2006-002314 are not persuasive (Ans. 7 and 8). The rejected claims before us are not of the same scope as in the earlier appeal and the arguments presented in this appeal are correspondingly directed to the claims now before us. As argued by Appellants, the Examiner has not established that a plurality of the filled continuous slots 18 of Iversen are both non-contiguous and define a selected optical boundary within a medium or spatial surface of a device as required by the appealed claims (Reply Br. 2-4). Moreover and as argued by Appellants, none of the filled slots 18 of Iverson are formed of a plurality of independent and noncontiguous light redirecting regions in a spatial surface and/or within a medium (App. Br. 11 and 12). Thus, an individual filled slot of Iverson and its surrounding medium (a portion of the device of Iversen), even if considered separately with the filled slot construed as an optical boundary within a medium (i.e., the medium adjacent to the sides of the individual filled slot), does not anticipate any of the appealed claims (App. Br. 12). Appeal 2011-013680 Application 10/856,225 5 On this appeal record, we reverse the Examiner’s anticipation rejection of claims 19-37 by Iversen. As for the separate anticipation rejection of claims 30-32 by Borrelli, the Examiner maintains that Borelli describes a waveguide with a light transmitting material having a plurality of non-contiguous, independent light-redirecting regions 26 in a spatial surface which defines an optical boundary there within as shown in figure 9b thereof (Ans. 5 and 6). However and as correctly argued by Appellants, the Examiner has not carried the burden to establish that the “Mach-Zehnder” coupler light guides 26 in a bulk glass substrate as depicted in Figure 9b of Borelli are a plurality of independent and non-contiguous light redirecting regions formed in a surface that define an optical boundary within an optical medium, as required by independent claim 32 (App. Br. 18-19; Reply Br. 4-5; Borelli, col. 12, l. 37- col. 13, l. 7). On this record, we reverse the Examiner’s anticipation rejection of claims 30-32 by Borrelli. Obviousness Rejection As for the Examiner’s separate obviousness rejection of claims 19-37 over Iversen, the Examiner hinges this latter rejection on the ill-founded anticipation rejection over Iversen, as discussed above, coupled with conclusory assertions of obviousness and a reference to a certain portion of Iversen’s disclosure wherein an alternative slot formation technique is disclosed (Ans. 6; Iversen, col. 6, ll. 37-56). We agree with Appellants that the Examiner’s efforts with respect to the obviousness rejection fall short of establishing a reasoned basis for Appeal 2011-013680 Application 10/856,225 6 establishing a prima facie case of obviousness as to the claimed subject matter(App. Br. 19 and 20). The Examiner’s obviousness rejection is built upon the Examiner’s findings in the failed anticipation rejection over Iversen and lacks any reasoned basis that serves to explain how any particular identified differences in the claimed subject matter over that disclosed by Iversen would have been bridged by an ordinarily skilled artisan in the art exercising routine skill based on the teachings found in Iversen. It follows that we shall reverse the Examiner’s obviousness rejection, on this record. ORDER The Examiner’s decision to reject the appealed claims is reversed. REVERSED tc