Ex Parte Hahm et al

Patent Trial and Appeal Board

Apr 26, 2016

12550569 (P.T.A.B. Apr. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/550,569 08/31/2009 Gerhard Hahm
86528 7590 04/28/2016
Slayden Grnbert Beard PLLC
401 Congress Avenue
Suite 1900
Austin, TX 78701
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
03 869 .117007 1219
EXAMINER
LEE, SHUNK
ART UNIT PAPER NUMBER
2884
NOTIFICATION DATE DELIVERY MODE
04/28/2016 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):
trosson@sgbfirm.com
patent@sgbfirm.com
wjenks@sgbfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERHARD HAHM and BORIS STOW ASSER
Appeal2014-007419
Application 12/550,569
Technology Center 2800
Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 3-8, 10-15, and 1 7-20, which constitute all of
the claims pending in this application. Claims 2, 9, and 16 have been
cancelled. App. Br. 11, 12, 14. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 Appellants identify Siemens Aktiengesellschaft as the real party in interest.
App. Br. 2.
Appeal2014-007419
Application 12/550,569
THE INVENTION
The claimed invention is directed to a method for determining the
temperature of a digital x-ray detector, method for generating a temperature-
corrected x-ray image and digital x-ray detector. Spec. 1.
Claims 1 and 8, reproduced below with the relevant claim language
italicized, is illustrative of the claimed subject matter:
1. A method for determining the temperature of a
digital X-ray detector comprising a scintillator and a pixel matrix
of photodiodes at least one point of the X-ray detector, the
method comprising the steps of:
using at least a first photodiode to record an X-ray
image by:
with the at least first photodiode unscreened,
receiving X-ray radiation at the at least first photodiode; and
recording an X-ray signal from the
unscreened at least first photodiode; and
after recording the X-ray signal from the
unscreened at least first photodiode, using the at least first
photodiode to determine a temperature by:
screening the at least first photodiode from
incident radiation and light;
applying a reverse voltage to the screened at
least first photodiode,
measuring the reverse current of the screened
at least first photodiode, and
determining the temperature of the X-ray
detector at the first photodiode from the reverse current.
8. A method for generating a temperature-corrected X-
ray image using a digital X-ray detector having a scintillator, a
pixel matrix of a multiplicity of photodiodes and actuating and
readout electronics, the method comprising the steps of:
using the multiplicity of photodiodes to receive incident
X-ray radiation and generate a raw X-ray image,
then, after generating the raw X-ray image from the
photodiodes, determining the temperatures of at least a subset of
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Application 12/550,569
the photodiodes of the pixel matrix used to generate the raw X-
ray image by:
screening the at least a subset of photodiodes from incident
radiation and light; applying a reverse voltage to the screened
photodiodes, measuring the reverse current of the screened
photodiodes, and
determining the temperature of individual photodiodes
based on the measured reverse current of the respective
photodiodes, and
temperature-correcting pixels of the raw X-ray image
based on the determined temperatures of the respective
photodiodes.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Wu us 5,347,161 Sep. 13, 1994
Gilby US 2008/0018756 Al Jan.24,2008
Ikhlef US 2008/0080665 Al Apr. 3, 2008
REJECTIONS
Claims 1, 3, 5-8, 10, 12-15, 17, 19, and 20 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Ikhlefin view of Gilby. Final
Act. 3-8.
Claims 4, 11, and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ikhlef in view of Gilby and Wu. Final Act. 9-10.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments that the Examiner erred. In reaching this decision, we consider
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Application 12/550,569
all evidence presented and all arguments made by Appellants. We disagree
with Appellants' arguments regarding the pending claims.
Claims 1, 3, 5-7, 14, 15, 17, 19, and 20
The Examiner finds Ikhlef teaches "'one can use the same diode for
measuring the temperature and the x-ray signal, by switching back and forth
between two modes."' Ans. 4 (citing Ikhlef i127). The Examiner further
finds Ikhlef "teach[ es] measuring the temperature of the diodes both before
and after a scan by switching back and forth between a temperature
measurement mode and an x-ray signal measurement mode." Ans. 4. Stated
a different way, the Examiner finds that as the X-ray device is used, the
diodes alternate between measuring the temperature, detecting X-rays,
measuring the temperature, detecting X-rays, etc. See Ans. 4; cf Ikhlefi-f 27.
Accordingly, the Examiner finds Ikhlef teaches or suggests the determining
a temperature steps after recording the X-ray signal. Ans. 4.
Appellants argue the Examiner erred in finding Ikhlef teaches
determining the temperature of an X-ray display "after recording the X-ray
signal" as recited in claim 1. App. Br. 5-7. Instead, Appellants argue,
Ikhlef measures the temperature prior to the X-ray scan. App. Br. 5 (citing
Ikhlef i-fi-122, 30). With regard to the Examiner's timing argument based on
switching, Appellants argue it fails to teach the claim limitation because the
temperature measurement taken after the scan is not used to correct the X-
ray signal of the relevant X-ray scan:
One of ordinary skill in the art, particularly in view of
Appellants specification, would understand that the two recited
steps of recording and measuring are performed as a coordinated
pair of actions related an X-ray image, such that the temperature
can be measured just after recording the X-ray signal in order to
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Application 12/550,569
correct the signal based on the temperature of the photodiode( s)
when the X-ray signal was recorded. Thus, with respect to the
situation based on Ikhlef in which (a) a first temperature
measurement is taken prior to, and used to correct, a first image
scan is followed later by (b) a second temperature measurement
taken prior to, and used to correct, a second image scan, one of
ordinary skill in the art would not equate the second temperature
measurement and first image scan -- wherein the second
temperature measurement has nothing to do with the first image
scan -- with the claimed method of measuring after recording,
e.g., for temperature-correcting the recorded image as explicitly
recited in Claim 8.
Reply Br. 5.
During prosecution, claims must be given their broadest reasonable
interpretation while reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). However, we will not
read limitations from the specification into the claims. In re Van Geuns, 988
F.2d 1181; 1184 (Fed. Cir. 1993). Regardless of the general contentions and
imputed intended meanings articulated by Appellants in the Appeal Brief,
"[i]t is the claims that measure the invention." See SRI Int 'l v. Matsushita
Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en bane)
(citations omitted).
Though understanding the claim language may be aided by the
explanations contained in the written description, it is important
not to import into a claim limitations that are not a part of the
claim. For example, a particular embodiment appearing in the
written description may not be read into a claim when the claim
language is broader than the embodiment.
SuperGuide Corp. v. DirecTV Enters, Inc., 358 F.3d 870, 875 (Fed. Cir.
2004) (citing Electro Med. Sys. S.A. v. Cooper Life Sci., Inc., 34 F.3d 1048,
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1054 (Fed. Cir. 1994)). "[A]lthough the specification often describes very
specific embodiments of the invention, we have repeatedly warned against
confining the claims to those embodiments .... [C]laims may embrace
'different subject matter than is illustrated in the specific embodiments in the
specification."' Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir.
2005) (en bane) (citations omitted).
Accordingly, we are not persuaded by Appellants' claim construction
which reads in a limitation-using the temperature measurement to correct
the X-ray image-from the Specification into the claim. Instead, we find
that claim 1 does not contain any limitation requiring the temperature
measurements to be used for a particular purpose and the claim as written is
broad enough to cover any temperature measurement taken after the X-ray
regardless of the passage of time or the reason for the measurement.
Because the arguments are not commensurate with the scope of the claims,
they are unpersuasive. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Instead, we agree with the Examiner that Ikhlef teaches a repeated
series of taking temperature measurements with X-rays resulting in the
following sequence: first temperature measurement, first X-ray scan, second
temperature measurement, second X-ray scan. See Ikhlef i! 27; see also
Reply Br. 4 (Appellants' description of Ikhlefi! 27). Furthermore, for the
reasons discussed above in construing the claim, we agree with the
Examiner that the second temperature measurement is taken after the first X-
ray teaches the timing limitation of claim 1. Appellants have not persuaded
us that the Examiner erred.
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According! y, we sustain the Examiner's rejection of claim 1, along
with the rejections of claim 15, which is argued on the same grounds, and
claims 3, 5-7, 14, 17, 19, and 20, which are not argued separately.
Claims 8, 10, and 12-14
In the Appeal Brief, Appellants argued claim 1, 8, and 15 as a group.
See App. Br. 4. In the Reply Brief, Appellants argue they are entitled to
argue claim 8 separately in response to a new argument raised in the
Answer. Reply Br. 2. Because we find, as discussed infra, the Examiner's
findings in the Final Action and Advisory Action are sufficient to sustain the
Examiner's rejection, we need not address the additional finding raised in
the Answer and the new argument in the Reply Brief.
In the Final Action, the Examiner finds based on claim differentiation
that Ikhlef teaches taking a temperature measurement after the X-ray scan as
recited in claim 8. Final Act. 5---6. The Examiner made a similar finding for
each of the independent claims. Final Act. 3--4 (finding for claim 1), 7-8
(finding for claim 15).2 However, only with regard to claim 8, the Examiner
made the additional alternative finding that it would have been obvious to a
person of ordinary skill in the art that the temperature measurements for X-
ray correction can be taken before or after the X-ray:
Alternatively, it would have been obvious to one having
ordinary skill in the art at the time of the invention that
determining the temperatures the method of Ikhlef et al. can
occur before and/or after recording and reading out a raw X-ray
image, in order to correct for temperature variations.
2 Because we do not rely on the Examiner's findings based on claim
differentiation to support the rejection, Appellants' arguments regarding that
finding are moot.
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Final Act. 6 (emphasis added).
Similarly, in the Advisory Action the Examiner finds that before,
during and after the X-ray scan are the only possible times for taking a
temperature measurement and that this would have "REASONABLY
SUGGESTED to one having ordinary skill the art to measure the
temperature of the diodes before and/or after a scan." Adv. Act. 2.
In the Appeal Brief, Appellants argue the Examiner erred because
Ikhlef teaches away from using a temperature measurement after the scan to
correct an X-ray image:
The fact that Ikhlef specifically discloses one of these options
(measuring before scanning) in both the specification and claims,
and specifically did not disclose the others (measuring after or
during scanning) indicates, if anything, that Ikhlef believed it
was important to measure before scanning, as opposed to after or
during scanning.
App. Br. 8 (emphasis omitted).
The Examiner finds Ikhlef does not teach away from the claimed
invention. Ans. 4. Specifically, the Examiner finds that "appellant fails to
cite any evidence within the cited prior art that criticize, discredit, or
otherwise discourage measuring the temperature after scanning." Id.
We are not persuaded by Appellants' argument that the Examiner
erred. Instead, we find Appellants have not established that the prior art
teaches away from the claimed invention because Appellants have not
demonstrated that "a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant." In re Gurley, 27 F.3d 551, 553 (Fed Cir. 1994). "'A reference
may be said to teach away when a person of ordinary skill, upon reading the
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reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant.'" Ricoh Co., Ltd. v. Quanta Computer, Inc., 550
F.3d 1325, 1332 (Fed. Cir. 2008) (quoting Optivus Tech., Inc. v. Ion Beam
Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006)).
Ikhlef, which discusses a preferred embodiment, "does not teach
away ... [as] it merely expresses a general preference for an alternative
invention but does not 'criticize, discredit, or otherwise discourage'
investigation into the invention claimed." DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009). Appellants do
not identify any passage in Ikhlef that explicitly discredits or discourages
using a temperature taken after an X-ray to temperature correct an image,
and the cited sections do no more than articulate a preference for using a
temperature taken prior to the X-ray scan. That stated preference is
insufficient to teach away from the claimed invention. See id.; In re Fulton,
391 F.3dl 195, 1201 (Fed. Cir. 2004).
Further, given the finite number of choices-measuring the
temperature either before or after the X-ray scan-we agree with and adopt
the Examiner's finding that the timing limitation was obvious. See KSR
International Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) ("When there is
a design need or market pressure to solve a problem and there are a finite
number of identified, predictable solutions, a person of ordinary skill has
good reason to pursue the known options within his or her technical grasp. If
this leads to the anticipated success, it is likely the product not of innovation
but of ordinary skill and common sense. In that instance the fact that a
combination was obvious to try might show that it was obvious under
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§103."). We do not find that the evidence shows that changing the timing of
the temperature measurement used for the temperature adjustment would
have been "uniquely challenging or difficult for one of ordinary skill in the
art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citing KSR, 550 U.S. at 418). Appellants have not persuaded us
that the Examiner erred.
Accordingly, we sustain the Examiner's rejection of claim 8, along
with the rejections of claims 10 and 12-14, which are not separately argued.
DECISION
For the above reasons, we affirm the Examiner's rejection of claims 1,
3, 5-8, 10, 12-15, 17, 19, and 20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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