Ex Parte Mintzer et alDownload PDFPatent Trials and Appeals BoardJun 17, 201914244312 - (D) (P.T.A.B. Jun. 17, 2019) Copy Citation 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 2 Appeal 2019-000462 Application 14/244,312 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 3 Appeal 2019-000462 Application 14/244,312 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). 4 Appeal 2019-000462 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- 5 Appeal 2019-000462 Application 14/244,312 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 6 Appeal 2019-000462 Application 14/244,312 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. 7 Appeal 2019-000462 Application 14/244,312 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. 8 Appeal 2019-000462 Application 14/244,312 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. 9 Appeal 2019-000462 Application 14/244,312 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 10 Copy with citationCopy as parenthetical citation