Ex Parte Mintzer et al

Patent Trials and Appeals Board

Jun 17, 2019

14244312 - (D) (P.T.A.B. Jun. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/244,312 04/03/2014
28524 7590 06/19/2019
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
FIRST NAMED INVENTOR
Robert A. Mintzer
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.
2013P07405US 8662
EXAMINER
PARK, PATRICIA JOO YOUNG
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
06/19/2019 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):
ipdadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT A. MINTZER, JAMES CHRISTOPER ARNOTT,
MEHMET A YKAC, JOHANNES BREUER, SAN GHEE CHO,
PETER HANSEN, MACIEJ P. KAPUSTA, JAMES L. CORBEIL,
and NAN ZHANG 1
Appeal2019-000462
Application 14/244,312
Technology Center 3700
Before JAMES P. CALVE, MICHAEL J. FITZPATRICK, and
MICHAEL L. WOODS, Administrative Patent Judges.
WOODS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Robert A. Mintzer et al. ("Appellants") appeal from the Examiner's
rejection of claims 1---6, 13, 19, and 22. Appeal Br. 1. We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
1 According to Appellants, the real party in interest is Siemens Medical
Solutions USA, Inc. Appeal Br 1.
Appeal 2019-000462
Application 14/244,312
SUMMARY OF THE DECISION
We REVERSE.
CLAIMED SUBJECT MATTER
Appellants' invention relates to "scintillation detectors used in
Positron Emission Tomography." Spec. 1 (Field of the Invention).
Appellants' Specification describes a detector having "an array of silicon
photomultipliers ... optically coupled to a block of scintillator pixels
without inter-pixel reflectors ('air coupled') ... and surrounded by a thin
efficient optical reflector." Spec. 8. The Specification explains that "[a]ir
coupling between scintillator pixels, combined with a selected surface finish,
functions to control the light spread within the array of pixels[, which]
allows optimization of event localization." Id.
Claim 1 is the sole independent claim and is reproduced below with
emphases added to two limitations discussed in this Decision.
1. A scintillation detector, comprising:
an array of j x k silicon photomultipliers (SiPMs ), where
j and k are positive integers, mounted on a substrate;
an array of m x n scintillator crystals, where m and n are
positive integers, optically coupled to said array of SiPMs,
wherein
at least one of j and k are greater than 1,
n is greater than or equal to j, and
m is greater than or equal to k;
at least a plurality of said scintillator crystals of said
array being optically coupled to each other by an air gap;
said array of scintillator crystals being wrapped by an
external reflector;
each of the SiPM cathode outputs being coupled to a
common cathode output lead, and the anode outputs being
coupled to individual anode output leads; and
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SiPM signal processing circuitry, including
scintillation event timing computation circuitry
configured to receive a common cathode output signal
from said common cathode output lead, and configured
to compute timing of a scintillation event incident on said
scintillator crystal array from said common cathode
output signal, and
scintillation event position and energy computation
circuitry configured to receive individual anode output
signals from said individual anode output leads, and
configured to compute position and energy of said
scintillation event incident on said scintillator crystal
array from said individual anode output signals.
Appeal Br. 12 (Claims Appendix) (emphasis added).
THE REJECTI0NS 2,3
1. Claims 1-3, 6, 13, 19, and 22 stand rejected under 35 U.S.C. § 103
as unpatentable over Grazioso et al. (US 2013/0009066 Al;
published Jan. 10, 2013, hereinafter "Grazioso"), Levin (US
2008/0042070 Al; published Feb. 21, 2008, hereinafter "Levin"),
Nelson et al. (US 2010/0270462 Al; published Oct. 28, 2010,
hereinafter "Nelson"), and Barbi et al. (US 2012/0025074 Al;
published Feb. 2, 2012, hereinafter "Barbi").4 Final Act. 9-14.
2 The Examiner's Final rejection of claims 1---6, 13, 19, and 22 under 35
U.S.C. § 112(b) (Final Act. 7) was withdrawn in the Answer (Ans. 9) and is
now moot and no longer before us.
3 Appellants request that we review the withdrawn rejection "to prevent this
ground of rejection from again being raised." Reply Br. 1. We deny
Appellants' request and decline to issue an advisory opinion addressing a
withdrawn rejection.
4 The Final Office Action indicates that claim 20 stands rejected instead of
claim 22. Final Act. 9. Upon reviewing the rejection, however, we find that
the rejection's listing of claim 20 was an inadvertent and harmless
typographical error, and claim 22 stands rejected, instead. See Final Act. 1
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2. Claims 4 and 5 stand rejected under 35 U.S.C. § 103 as
unpatentable over Grazioso, Levin, Nelson, Barbi, Kim et al. (US
2013/0327932 Al; published Dec. 12, 2013, hereinafter "Kim"),
and Kim et al. '567 (US 2015/0168567 Al; published June 18,
2015, hereinafter "Kim '567"). Final Act. 13-14.
ANALYSIS
a) Examiner's Rejections
In rejecting claims 1---6, 13, 19, and 22, under rejection (1) and (2), the
Examiner relies on Grazioso for teaching an array of silicon photomultipliers
and an array of scintillator crystals. Final Act. 9-10 (rejecting claims 1-3, 6,
13, 19, and 20); see also id. at 13 (relying on the rejection of claim 1 in
rejecting dependent claims 4 and 5).
The Examiner acknowledges, however, that "Grazioso ... do[ es] not
explicitly teach [an] air gap and wrapped by an external reflector." Id. at 11.
To address the missing limitations, the Examiner relies on Nelson and
finds that "Nelson teaches scintillator arrays where scintillator walls are
coated with reflector materials ... and layers include a layer of air for
optical coupling." Id. (citing Nelson ,r,r 43--45). In combining Nelson, the
Examiner reasons that it would have been obvious "to modify the apparatus
taught by Grazioso ... to include the teachings of Nelson, as (1) external
reflector and (2) air gap layer are well known in the art and suitable for use
in the apparatus of scintillators detectors." Id. The Examiner further
reasons that a skilled artisan "would have been motivated to make such a
(indicating that claim 20 has been withdrawn); see also Appeal Br. 13
(indicating the claim 22, not claim 20, is pending).
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Application 14/244,312
combination as it provides (1) improved ... optical collection efficiency of
the photodetector element and (2) optical coupling with small index of
refraction." Id. (citing Nelson ,r 45).
b) Claim Construction
We interpret claims under their broadest reasonable construction
consistent with the specification. In re Am. Academy of Science Tech
Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Independent claim 1 recites, inter alia, (I) "a plurality of scintillator
crystals of said array being optically coupled to each other by an air gap"
and (2) "said array of scintillator crystals being wrapped by an external
reflector." Appeal Br. 12 (Claims Appendix).
The Specification describes a "detector ... compris[ing] an array of
silicon photomultipliers (SiPMs) ... optically coupled to a block of
scintillator pixels without inter-pixel reflectors ('air coupled'), or with few
inter-pixel reflectors, and surrounded by a thin efficient optical reflector."
Spec. 8. The Specification touts the benefits of"[ a ]ir coupling between
scintillator pixels, combined with a selected surface finish, [as] function[ing]
to control the light spread within the array of pixels [thus] allow[ing]
optimization of event localization." Id.
Appellants acknowledge the same benefits in their briefing,
explaining, "[ o Jptical reflector materials between every pixel result in light
losses." Appeal Br. 2; see also id. at 8 ( distinguishing the claimed invention
from the cited art in asserting that Nelson's scintillator walls and Grazioso's
crystals are optically-isolated from one another, such as with wall coatings
( or reflectors) between the adjacent scintillator walls or crystals). Appellants
further explain that "[t]he present invention ... provid[es] an optically air-
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coupled pixelated scintillation block detector that employs an array of SiPM
light sensors ... [and the] inventive design ... reduc[es] electronic circuit
complexity and power requirements." Id.
Upon reviewing the claim in light of the Specification, we construe "a
plurality of said scintillator crystals of said array being optically coupled to
each other by an air gap" as requiring an absence of reflectors between the
plurality of scintillator crystals. We further construe the claimed "array of
scintillator crystals being wrapped by an external reflector" to require the
array of crystals-and not simply the individual crystals-to be wrapped by
an external reflector.
c) Appellants' Arguments
Appellants present two arguments that we find persuasive.
First, Appellants point out that the claims require the "array of
scintillator crystals being wrapped by an external reflector," and a skilled
artisan would not have wrapped Grazioso' s array of crystals based on
Nelson's teachings. See Appeal Br. 8-9.
Second, Appellants argue that nothing in Nelson supports the
Examiner's reasons for modifying Grazioso such that its "plurality of ...
crystals of said array are optically coupled to each other by an air gap," as
required by the claims. See id. at 9.
d) Bases for Reversal
The issues before us are whether a skilled artisan would have
combined Grazioso with Nelson to meet the claim limitations of ( 1) "a
plurality of ... scintillator crystals of said array being optically coupled to
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each other by an air gap" and (2) the "array of scintillator crystals being
wrapped by an external reflector."
We agree with Appellants that the Examiner's reasons for combining
Nelson with Grazioso to meet these limitations lack the requisite explicit
findings and analyses to support a conclusion of obviousness. The Examiner
must support its conclusion of obviousness with explicit findings and
analysis establishing an apparent reason to combine the known elements in
the manner required in the claim at issue. KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398,418 (2007).
Appellants' first argument pertains to the claimed "array of
scintillator crystals being wrapped by an external reflector." See Appeal Br.
8 (emphases added). Appellants assert that Nelson discloses "discrete
scintillator elements that are optically isolated from each other" (id. ( citing
Nelson ,r 31, Figs. 2A-2B)) and Grazioso discloses its crystals as also being
"optically isolated from each other" (id. ( citing Grazioso, Fig. ,r 43, Fig. 8)).
Appellants contend that Nelson does not suggest to modify Grazioso, as the
Examiner has done, and that combining the references "would not
correspond to the claimed invention wherein 'said array of scintillator
crystals being wrapped by an external reflector.[']" Id. at 9.
We find Appellants' first argument persuasive.
The Examiner finds that
Nelson discloses coating array of scintillators by an external
reflector as it teaches WLS material (an external reflector) can
be applied to a scintillator wall, as encapsulated or coating
format, and can be applied to scintillator array rods and further
teaches WLS material can be applied to non-contact scintillator
walls.
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Ans. 10 (citing Nelson ,r,r 43--45) (emphasis added). Although Nelson
discloses "[ c ]oating one or more walls of a scintillator pixel" with a reflector
(Nelson ,r 43 (emphasis added)), we do not find this as "disclos[ing] coating
[an] array of scintillators by an external reflector," as the Examiner finds.
Ans. 10 (emphasis added). Stated differently, Nelson's disclosure of coating
a wall of a singular pixel is not a disclosure of wrapping an array of crystals
with a reflector, as required by the claims. See Ans. 10. As such, we are not
persuaded that a skilled artisan would have looked to Nelson to wrap
Grazioso' s array of crystals with a reflector.
Second, Appellants argue that Nelson "does not suggest optically
coupling at least a plurality of [Grazioso's crystals] by an air gap." Appeal
Br. 9 ( emphasis omitted).
Appellants' second argument is also persuasive.
To address this limitation, the Examiner finds that Nelson "teaches
scintillator arrays where scintillator walls are coated with ... layers [that]
include a layer of air for optical coupling." Final Act. 11 (citing Nelson
,r,r 43--45). In support of this finding, the Examiner relies on Nelson's
disclosure that "wall coatings ... can include thin layers of air or a gas as
well as conventional optical coupling materials with a relatively low index
of refraction." Nelson ,r 45 (emphasis added); see also Ans. 10-11 (citing
Nelson ,r 45).
We disagree with the Examiner's conclusion that this disclosure
would lead a skilled artisan to modify Grazioso by optically coupling a
plurality of its crystals with an air gap.
To reiterate, the claim limitation requires "a plurality of ... crystals of
said array being optically coupled to each other by an air gap." Appeal Br.
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12 (Claims Appendix) (emphasis added). As discussed above, we construe
this limitation to require an absence of reflectors between the plurality of
crystals. Supra Part (b ). Nelson discloses that its reflective layers may
include a thin layer of air; it does not disclose using a thin layer of air in lieu
of its reflective coating. See Nelson ,r 45 ("[T]he wall coatings ... can
include thin layers of air."). Furthermore, even if air has a relatively low
index of refraction, as the Examiner points out, we see no reason why a
skilled artisan would have modified Grazioso such that a plurality of its
crystals are optically coupled by an air gap, and without reflectors between
those crystals, as required by the claims. The Examiner's reason for making
the proposed modification-to provide "optical coupling with small index of
refraction" (Final Act. 11 }-presumes that Grazioso 's plurality of crystals
are already optically coupled, albeit with a larger index of refraction. We
find nothing in the record to support a finding that a plurality of Grazioso' s
crystals are optically connected to one another, however. Indeed, Appellants
contend that Grazioso's crystals "are optically isolated from each other"
(Appeal Br. 8 (citing Grazioso, Fig. 8)), and although the Examiner
disagrees with this assertion (see Ans. 11 ), the Examiner has not shown that
a plurality of Grazioso's crystals are optically connected to one another, as
required by the claims.
For the above reasons, we do not sustain the rejection of claims 1-3,
13, 19, and 22 as unpatentable over Grazioso, Levin, Nelson, and Barbi. We
also do not sustain the rejection of dependent claims 4 and 5 as unpatentable
over Grazioso, Levin, Nelson, Barbi, Kim, and Kim '567.
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SUMMARY
The rejection of claims 1-3, 13, 19, and 22 as unpatentable over
Grazioso, Levin, Nelson, and Barbi is reversed.
The rejection of claims 4 and 5 as unpatentable over Grazioso, Levin,
Nelson, Barbi, Kim, and Kim '567 is also reversed.
REVERSED
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