Ex Parte Wieczorek et al

Patent Trial and Appeal BoardSep 26, 2014

12063769 (P.T.A.B. Sep. 26, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HERFRIED WIECZOREK, ANDREAS GOEDICKE, and THOMAS FRACH ____________ Appeal 2012-004624 Application 12/063,769 Technology Center 2800 ____________ Before PETER R. KRATZ, BEVERLY A. FRANKLIN, and KAREN M. HASTINGS, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner's rejection of claims 1, 3, 5, 6, 8, 10, 12-22, and 26-30. We have jurisdiction under 35 U.S.C. § 6. STATEMENT OF THE CASE Claim 1 is representative of the subject matter on appeal and is set forth below (with text in bold for emphasis): 1. A detector for a medical imaging system comprising: a scintillator which receives photons emitted from an imaging source; Appeal 2012-004624 Application 12/063,769 2 a front layer of SiPMs adjacent to a front plane of the scintillator, the front layer of SiPMs detects scintillations in the scintillator, said front layer of SiPMs covering a full surface of the front plane, such that imaging data is obtained from the edges of the scintillator; a back layer of SiPMs adjacent to a back plane of the scintillator through which the photons from the imaging source are received, the back layer of SiPMs detects scintillations in the scintillator; and a light guide located between and optically coupling each layer of SiPMs and the scintillator. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Cox 5,464,984 Nov. 7, 1995 Levin 6,114,703 Sept. 5, 2000 Engdahl 6,124,595 Sept. 26, 2000 Bryman 2004/0007670 Jan. 15, 2004 Yamada 7,138,632 B2 Nov. 21, 2006 Yamada WO 2005/062073 A1 July 7, 2005 Moehrs et al. (hereinafter “Moehrs”), A small-animal PET design using SiPMs and Anger logic with intrinsic DOI, 2004 IEEE Nuclear Science Symposium Conference Record, Vol. 6 (October 2004), pp. 3475- 3479. Appeal 2012-004624 Application 12/063,769 3 THE REJECTIONS 1. Claims 1, 5, 6, and 8 are rejected under 35 U.S.C. § 103 over Moehrs as modified by Engdahl. 2. Claim 3 is rejected under 35 U.S.C. § 103 over Moehrs as modified by Engdahl, as further modified by Levin. 3. Claims 10, 12-15, and 17-20 are rejected under 35 U.S.C. § 103 over Moehrs as modified by Engdahl, as further modified by Levin. 4. Claim 16 is rejected under 35 U.S.C. § 103 over Moehrs as modified by Engdahl, as further modified by Levin, as still further modified by Yamada. 5. Claims 21 and 22 are rejected under 35 U.S.C. § 103 over Moehrs as modified by Cox. 6. Claim 26 is rejected under 35 U.S.C. § 103 over Moehrs as modified by Engdahl, as further modified by Levin, as still further modified by Bryman. 7. Claim 27 is rejected under 35 U.S.C. § 103 over Moehrs, as modified by Engdahl, as further modified by Levin, as still further modified by Bryman. 8. Claim 28 is rejected under 35 U.S.C. § 103 over Moehrs, as modified by Engdahl, as further modified by Levin, as still further modified by Bryman, as still further yet modified by Cox. Appeal 2012-004624 Application 12/063,769 4 9. Claims 29 and 30 is rejected under 35 U.S.C. § 103 over Moehrs, as modified by Cox, as further modified by Engdahl. ISSUE Did the Examiner err in determining that the applied art suggests the claimed subject matter, and in particular, the subject matter pertaining to “a light guide located between and optically coupling each layer of SiPMs and the scintillator”? We answer this question in the affirmative and REVERSE, for substantially the reasons provided by Appellants in their Brief and Reply Brief. We add the following for emphasis. ANALYSIS The Examiner’s basic position is that Moehrs teaches the claimed subject matter as outlined on page 5 of the Answer, but “lacks another light guide located between and optically coupling the scintillator and a back layer of SiPMs adjacent to a back plane of the scintillator through which the photons from the imaging source are received.” Ans. 5. The Examiner relies upon Engdahl for suggesting this aspect of the claimed invention, and concludes: it would have been obvious to one having ordinary skill in the art at the time of the invention to optically couple a ~1 mm thick layer of SiPMs via 0-2 mm thick light pipe to a back plane of the 3-6 mm thick scintillator in the (less than 20 mm thick) detector of Moehrs et al., in order to determine depth of interaction within the 3-6 mm thick scintillator. Ans. 6. Appeal 2012-004624 Application 12/063,769 5 Appellants argue, inter alia, that Engdahl does not teach use of a light pipe (a.k.a. “light guide”). Appellants explain: [m]oreover, even if one were to replace or modify the Moehrs detectors with the Engdahl detector, it is submitted that one would be taught not to use light guides located between the SiPMs and the scintillator crystals. Engdahl, at column 4, lines 17-19, teaches that the photodiode arrays should be mounted directly to the crystal surface. App. Br. 12. The Examiner disagrees with Appellants’ position that Engdahl does not teach use of a light pipe/light guide. The Examiner relies upon Engdahl’s disclosure at col. 4, ll. 18-20 (with text in bold for emphasis), reproduced in part below: disposed adjacent the surface of the crystal. In a preferred embodiment, the photodiode arrays are mounted directly to the crystal surface. The Examiner believes that the above-mentioned “preferred embodiment” suggests that other embodiments exist, including when the photodiode arrays are mounted indirectly to the crystal surface. Ans. 16. However, we are in agreement with Appellants’ response in the Reply Brief. Therein, Appellants correctly explain that: Engdahl discloses no embodiments which use light pipe. It is submitted that Engdahl's statement that in the preferred embodiment, the photodiode arrays are mounted directly to the crystal surface does not teach indirect mounting of the photodiodes to the crystal surface, much less indirect mounting via light pipe as the Examiner asserts. Appeal 2012-004624 Application 12/063,769 6 Reply Br. 6. We thus liken the Examiner’s inference of a teaching of another embodiment in Engdahl (which is not specifically taught in Engdahl), that so happens to reflect certain aspects of Appellants’ claimed subject matter, as impermissible use of hindsight reconstruction. That is, on this record, the Examiner’s proposed modification of Moehrs appears to be premised on an impermissible use of hindsight after review of Appellants’ disclosure rather than on a supported reason to modify Moehrs according to Engdahl available to an ordinarily skilled artisan and consistent with the teachings therein. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (The fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning”; citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966) (warning against a “temptation to read into the prior art the teachings of the invention in issue”)). We thus reverse Rejection 1. We also reverse Rejections 2, 4, and 6-8 since the other applied references in these other rejections do not cure the stated deficiencies of the combination of Moehrs in view of Engdahl. With regard to Rejection 3 (which involves the rejection of independent claims 10 and 17 and these claims do not recite a light guide as recited in claim 1), we concur with Appellants’ position as set forth on pages 13-15 of the Appeal Brief and on page 7-8 of the Reply Brief, and reverse for the reasons stated therein. With regard to Rejection 5 (which involves the rejection of independent claim 21 which does not recite a light guide as recited in Appeal 2012-004624 Application 12/063,769 7 claim 1, and involves the combination of Moehrs in view of Cox), we concur with Appellants’ position as set forth on pages 15-16 of the Appeal Brief and on pages 8-9 of the Reply Brief, and reverse for the reasons stated therein. The decision of the Examiner is reversed. REVERSED tc