General Electric Company

Patent Trials and Appeals BoardMar 2, 2021

2020002128 (P.T.A.B. Mar. 2, 2021)

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. 15/145,825 05/04/2016 Jinbo Cao 285414-US-1 | GEMS:0670 6963 68174 7590 03/02/2021 GE HEALTHCARE c/o FLETCHER YODER, PC P.O. BOX 692289 HOUSTON, TX 77269-2289 EXAMINER KING, SUN MI KIM ART UNIT PAPER NUMBER 2813 NOTIFICATION DATE DELIVERY MODE 03/02/2021 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): docket@fyiplaw.com rariden@fyiplaw.com robinson@fyiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JINBO CAO, JONGWOO CHOI, and AHARON YAKIMOV Appeal 2020-002128 Application 15/145,825 Technology Center 2800 Before BEVERLY A. FRANKLIN, JEFFREY R. SNAY, and LILAN REN, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 2, 4, 5, 13, 14, 16–18, and 21–26. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as General Electric Company. Appeal Br. 1. Appeal 2020-002128 Application 15/145,825 2 CLAIMED SUBJECT MATTER Claim 1 is illustrative of Appellant’s subject matter on appeal and is set forth below: 1. A photon counting device comprising: a direct mode detector comprising; a CdMgTeSe semiconductor layer located between a cathode electrode and an anode electrode; and a metal oxide layer comprising a metal oxide, wherein the metal oxide comprises a metal that is different from metals present in the CdMgTeSe semiconductor layer. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Tamamura et al. US 5,780,322 July 14, 1998 Verghese et al. US 2004/0221807 A1 Nov. 11, 2004 Szeles US 2008/0203514 A1 Aug. 28, 2008 Chen et al. US 7,955,992 B2 June 7, 2011 Zhang et al. US 8,314,395 B2 Nov. 20, 2012 REJECTIONS 1. Claims 1, 2, 4, 8, 13, and 23–25 are rejected under 35 U.S.C. § 103 as being unpatentable over Zhang in view of Tamamura. 2. Claims 5 and 26 are rejected under 35 U.S.C. § 103 as being unpatentable over Zhang in view of Tamamura as applied to claims 1, 23, and 24 above, and further in view of Szeles. 3. Claims 14, 16–18, and 21 are rejected under 35 U.S.C. § 103 as being unpatentable over Zhang in view of Tamamura and Verghese. Appeal 2020-002128 Application 15/145,825 3 4. Claim 22 is rejected under 35 U.S.C. § 103 as being unpatentable over Zhang in view of Tamamura and Verghese as applied to claims 1 and 21 above, and further in view of Chen. OPINION We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). After considering the evidence presented in this Appeal, we are persuaded that Appellant identifies reversible error. Thus, we reverse the Examiner’s rejections for the reasons provided by Appellant in the record, with the following emphasis. Rejection 1 We refer to the Examiner’s statement of the rejection set forth on pages 2–5 of the Final Office Action. We refer to pages 5–9 of the Appeal Brief regarding Appellant’s position involving Rejection 1. Therein, Appellant argues that the primary reference of Zhang is about using a wide band gap CZT crystal for a radiation detector. Appeal Br. 8. Appellant submits that in the absence of any teaching or suggestion in Tamamura regarding the band gap of the probable combination of Mg with Cd, and Se with Te, an ordinary person having knowledge of a CZT crystal for a direct mode radiation detector would not have been motivated to combine the mere disclosure of Appeal 2020-002128 Application 15/145,825 4 the possible combinations in Tamamura, to use as a wide band gap semiconductor material in a direct mode detector. Appeal Br. 8. It is Appellant’s position that sufficient motivation is lacking in the rejection in the absence of any teaching in Tamamura or Zhang to that effect, (i) removing Zn from the CZT crystal, (ii) adding Mg in the place of Zn, and (iii) combining Se with Te simultaneously, for getting a wide band gap material that would work in the suggested environment of Zhang to provide the required direct mode output for the detectors recited in claims 1 and 23. Id. The rejection does not adequately fill this gap identified by Appellant. We thus are persuaded by this line of argument and thus reverse Rejection 1. Rejections 2–4 The additionally applied reference are not relied upon by the Examiner to cure the stated deficiencies of Zhang in view of Tamamura. We thus reverse Rejections 2–4 for the same reasons we reverse Rejection 1. CONCLUSION We reverse the Examiner’s decision. Appeal 2020-002128 Application 15/145,825 5 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Reversed Affirmed 1, 2, 4, 8, 13, 23–25 103 Zhang, Tamamura 1, 2, 4, 8, 13, 23–25 5, 26 103 Zhang, Tamamura, Szeles 5, 26 14, 16–18, 21 103 Zhang, Tamamura, Verghese 14, 16–18, 21 22 103 Zhang, Tamamura, Verghese, Chen 22 Overall Outcome 1, 2, 4, 5, 8, 13, 14, 16– 18, 21–26 REVERSED