Kautz, Allan et al.

Patent Trials and Appeals BoardNov 3, 2020

13520376 - (D) (P.T.A.B. Nov. 3, 2020)

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. 13/520,376 07/03/2012 Allan Kautz 2010P00088WOUS 2019 24737 7590 11/03/2020 PHILIPS INTELLECTUAL PROPERTY & STANDARDS 465 Columbus Avenue Suite 340 Valhalla, NY 10595 EXAMINER FOX, DANIELLE A ART UNIT PAPER NUMBER 2884 NOTIFICATION DATE DELIVERY MODE 11/03/2020 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): katelyn.mulroy@philips.com marianne.fox@philips.com patti.demichele@Philips.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte ALLAN KAUTZ, SALVATORE PERNO, GARY BROOKS, GEORGE AWAD and ANGELO BUAN ___________ Appeal 2019-002028 Application 13/520,376 Technology Center 2800 ___________ Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and JAMES C. HOUSEL, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellant1 filed an appeal under 35 U.S.C. § 134(a) from an Examiner’s decision finally rejecting claims 1, 2, 4–7, 10–14, 16, and 19 under 35 U.S.C. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Koninklijke Philips N.V. Appeal Brief dated July 6, 2018 (“App. Br.”), at 3. Appeal 2019-002028 Application 13/520,376 2 § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as unpatentable over Hell et al.2,3,4 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Representative claim 1 is reproduced below from the Claims Appendix to the Appeal Brief. The limitation at issue is italicized. 1. An X-ray tube adapted to generate X-ray beams, comprising: a cathode configured to generate an electron beam along a z- direction substantially parallel to a z-axis of the X-ray tube; an anode configured to receive the electron beam at a focal spot of the anode and generate an X-ray beam, wherein the anode is in an x-y plane; a first deflection device configured to deflect the focal spot in a first combined x- and y-direction between an x-axis and a y-axis of the X-ray tube; and a second deflection device configured to deflect the focal spot in a second combined x- and y-direction between the x-axis and the y- axis of the X-ray tube, wherein the z-axis of the X-ray tube is orthogonal to the x-y plane, the x-axis is in the x-y plane and in a lateral direction on the anode, and the y-axis is in the x-y plane and orthogonal to the x-axis and the z-axis, 2 US 6,292,538 B1, issued September 18, 2001 (“Hell”). 3 Claims 8 and 9 were also finally rejected under 35 U.S.C. § 102(b), 35 U.S.C. § 103(a), and 35 U.S.C. 112, fourth paragraph. Claims 8 and 9, however, were cancelled by the Appellant in an Amendment dated March 26, 2018. The Examiner withdrew the rejections of claims 8 and 9 in the Examiner’s Answer. Examiner’s Answer dated November 8, 2018 (“Ans.”), at 10, 18. 4 In the Final Office Action, the Examiner did not include claim 16 in the statement of the rejection. Final Office Action dated January 25, 2018 (“Final Act.”), at 4. Nonetheless, the Examiner addressed claim 16 in the body of the rejection. Final Act. 11–12. The Appellant recognizes as much and discusses the rejection of claim 16 in the Appeal Brief. App. Br. 10, 17–18. Therefore, the Examiner’s error is harmless. The statement of the rejection has been corrected to include claim 16. Appeal 2019-002028 Application 13/520,376 3 wherein the first and second deflection devices are arranged diagonally relative to the y-axis and the x-axis of the X-ray tube, said X-ray tube being configured to exclusively and alternately deflect the electron beam diagonally in the first combined direction and the second combined direction by alternately controlling said first and second deflection devices one at a time according to a predetermined switching sequence. App. Br. 22. B. DISCUSSION 1. Independent claim 1 The Examiner finds Hell discloses an X-ray tube comprising, inter alia, a first deflection device (coils 19/20) and a second deflection device (coils 11/12) wherein the first and second deflection devices are arranged diagonally relative to the y-axis and the x-axis, respectively, of the X-ray tube. Final Act. 2, 5. The Examiner finds the X-ray tube is configured to exclusively and alternatively deflect an electron beam by alternately controlling the first and second deflection devices one at a time according to a predetermined switching sequence as recited in claim 1. Final Act. 5. The Appellant argues that Hell “is silent to the feature ‘by alternately controlling said first and second deflection devices one at a time according to a predetermined switching sequence’ recited in claim 1.” App. Br. 12 (emphasis omitted). The Examiner finds that Hell’s system includes controllers that independently control the first and second deflection devices. Final Act. 5. Therefore, the Examiner finds that Hell’s system is capable of controlling the devices one at a time according to a predetermined switching sequence as recited in claim 1. Final Act. 5–6; see also Ans. 13 (finding that Hell’s X-ray tube “is capable of exclusively and alternately deflecting an electron beam” because Hell’s Appeal 2019-002028 Application 13/520,376 4 first and second deflection devices are independently controlled). The Examiner, however, does not direct us to any disclosure in Hell describing, either expressly or inherently, that the first and second deflection devices are actually controlled one at a time according to a predetermined switching sequence as recited in claim 1. See Ans. 13 (finding that “‘exclusively and alternately deflecting an electron beam,’” as recited in claim 1, “is not explicitly stated in [Hell]”); see also In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“To anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either explicitly or inherently.”). We recognize that it may be possible to install software and/or hardware that allows Hell’s system to perform the function recited in claim 1.5 However, to support the anticipation rejection on appeal, the Examiner must show that Hell’s system is designed or made to perform the claimed function without further modification. See In re Giannelli, 739 F.3d 1375, 1380 (Fed. Cir. 2014) (using the phrases “‘made to,’ ‘designed to,’ and ‘configured to’” synonymously). The Examiner does not make such a showing on this record. Therefore, the anticipation rejection of claim 1 and claims 2 and 4–7, which depend from claim 1, is not sustained. 5 Claim 1 recites, in relevant part, “said X-ray tube being configured to exclusively and alternately deflect the electron beam diagonally in the first combined direction and the second combined direction by alternately controlling said first and second deflection devices one at a time according to a predetermined switching sequence.” App. Br. 22 (emphasis added). The Appellant discloses that the first and second deflection devices are controlled by a computer program. Spec. 5, ll. 9–10; Id. at 11, l. 32–12, l. 2 and 12, ll. 7–10. Thus, we interpret the claim limitation to mean that a computer is programmed or configured to perform the recited function. Appeal 2019-002028 Application 13/520,376 5 In the alternative, however, the Examiner concludes that it would have been obvious to one of ordinary skill in the art to modify Hell’s system to alternately control the first and second deflection devices according to a predetermined switching sequence as recited in claim 1, “to reduce problems due to feedback into the different current generating systems.” Final Act. 6; see also Ans. 13–14. In the Appeal Brief, the Appellant does not address the Examiner’s obviousness conclusion or underlying factual findings. In the Reply Brief, however, the Appellant argues for the first time on appeal that the Examiner’s reason for modifying Hell is not supported by the record. Reply Br. 5–6.6 According to 37 C.F.R. § 41.41(b)(2), “[a]ny argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner’s answer . . . will not be considered by the Board for purposes of the present appeal, unless good cause is shown.” In this case, the Appellant’s argument directed to the Examiner’s reason for modifying Hell was not raised in the Appeal Brief and is not responsive to an argument raised for the first time in the Examiner’s Answer. See Final Act. 6 (explaining the reason for modifying Hell as proposed). Moreover, the Appellant has not shown good cause why the argument could not have been raised in the Appeal Brief. Therefore, the Appellant’s argument is untimely and will not be considered on appeal. For the reasons set forth above, the obviousness rejection of claim 1 is sustained. The Appellant does not present arguments in support of the separate patentability of dependent claim 7. Therefore, the obviousness rejection of claim 7 also is sustained. 6 Reply Brief dated January 8, 2019. Appeal 2019-002028 Application 13/520,376 6 a. Claim 2 Claim 2 depends from claim 1 and recites that “the first deflection device and second deflection device include an electromagnetic dipole each.” App. Br. 22. Referring to Hell Figure 6, the Examiner finds that Hell discloses the limitation recited in claim 2. Final Act. 6. The Appellant argues that the Examiner fails to show how Hell Figure 6 discloses the features recited in claim 2. App. Br. 13. In response, the Examiner finds that the first deflection device (coils 19/20) and the second deflection device (coils 11/12), depicted in Hell Figure 6, correspond to the electromagnetic dipoles recited in claim 2. Ans. 14–15 (citing Hell, col. 4, ll. 38–41; id., col. 3, ll. 41–42, 52–53). The Appellant does not address the Examiner’s finding in the Reply Brief and thus, does not identify reversible error. See Reply Br. 7. Therefore, the obviousness rejection of claim 2 is sustained. b. Claim 4 Claim 4 depends from claim 1 and recites that “the X-ray tube is configured to exclusively activate the first deflection device or second deflection device.” App. Br. 22. The Examiner finds that Hell’s X-ray tube is configured as recited in claim 4. Final Act. 6 (citing Hell, col. 4, ll. 5–10, 18–21). Referring to the portion of Hell relied on by the Examiner, the Appellant argues that Hell does not disclose the limitation “exclusively activate” recited in claim 4. App. Br. 14. In response, the Examiner finds that the first deflection device (coils 19/20) and the second deflection device (coils 11/12) are independently controlled and thus, “exclusively activated.” Ans. 15. For support, the Examiner directs our Appeal 2019-002028 Application 13/520,376 7 attention to column 4, lines 38–41 of Hell which discloses that coils 19/20 are for the purely static deflection of the electron beam onto the edge region of the anode. Coils 11/12, on the other hand, are said to deflect the electron beam in the ɸ- direction. Ans. 15 (citing Hell, col. 3, ll. 41–42). In that regard, Hell discloses that “[t]he flying focus requires a deflection in the ɸ-direction [and t]he dipole field required for this is generated by the ɸ-coils.” Hell, col. 3, ll. 52–53; see also Ans. 15 (citing Hell, col. 3, ll. 52–53). The Appellant does not address the Examiner’s findings in the Reply Brief, and thus, does not identify reversible error. See Reply Br. 7. For that reason, the obviousness rejection of claim 4 is sustained. c. Claim 5 Claim 5 depends from claim 1 and recites that “the first deflection device is operated to generate a field out of the group consisting of a static field, a dynamic field and a static field superimposed by a dynamic field.” App. Br. 22 (emphasis added). Referring to Hell Figure 6, the Examiner finds Hell discloses that the first deflection device (coils 19/20) is operated as recited in claim 5.7 Final Act. 6. The Appellant argues that the Examiner fails to show how Hell Figure 6 discloses the limitations recited in claim 5. App. Br. 14. In response, the Examiner finds Hell discloses that the first deflection device (coils 19/20) is for the purely static deflection of the electron beam onto the edge region of the anode. Ans. 15 (citing Hell, col. 4, ll. 38–41). The Examiner also 7 Notably, claim 5 recites an X-ray tube, not a method of operating an X-ray tube. The manner or method in which the claimed X-ray tube operates is not germane to the issue of the patentability of the X-ray tube itself. In re Casey, 370 F.2d 576, 580 (CCPA 1967). Appeal 2019-002028 Application 13/520,376 8 finds that “an electromagnetic deflection device must be operated to generate at least one of a static field, a dynamic field and a static field superimposed by a dynamic field.” Ans. 15. Therefore, the Examiner finds that the first deflection device is operated as recited in claim 5. In the Reply Brief, the Appellant does not address the Examiner’s findings and thus, does not identify reversible error. See Reply Br. 7. For that reason, the obviousness rejection of claim 5 is sustained. d. Claim 6 Claim 6 depends from claim 1 and recites that “the second deflection device is operated to generate a field out of the group consisting of a static field, a dynamic field and a static field superimposed by a dynamic field.” App. Br. 23 (emphasis added). Referring to Hell Figure 6, the Examiner finds that the second deflection device (coils 11/12) is operated as recited in claim 6.8 Final Act. 7. The Appellant argues that the Examiner fails to show how Hell Figure 6 discloses the limitations recited in claim 6. App. Br. 15. In response, the Examiner finds that coils 11/12 generate a dynamic field. Ans. 16 (citing Hell, col. 4, ll. 18–21); see also Hell, col. 3, ll. 41–42. The Examiner also finds that “an electromagnetic deflection device must be operated to generate at least one of a static field, a dynamic field and a static field superimposed by a dynamic field.” Ans. 16. Therefore, the Examiner finds that the second deflection device is operated as recited in claim 6. 8 Notably, claim 6 recites an X-ray tube, not a method of operating an X-ray tube. The manner or method in which the claimed X-ray tube operates is not germane to the issue of the patentability of the X-ray tube itself. Casey, 370 F.2d at 580. Appeal 2019-002028 Application 13/520,376 9 In the Reply Brief, the Appellant does not address the Examiner’s findings and thus, does not identify a reversible error. See Reply Br. 7. For that reason, the obviousness rejection of claim 6 is sustained. 2. Independent claims 10, 13, and 16 Claims 10, 13, and 16 are independent. Claims 11 and 12 depend from claim 16, claim 14 depends from claim 13, and claim 19 depends from claim 16. See App. Br. 23–25. According to the Appellant, the arguments presented in response to the rejection of claim 1 are applied to the rejection of claims 10, 13, and 16. App. Br. 16–18. Claims 10 and 16 recite the step of “alternately controlling a first deflection device and a second deflection device one at a time according to a predetermined switching sequence.” App. Br. 23, 24 (emphasis added). Claim 13 recites a similar limitation. See App. Br. 24 (reciting, in claim 13, “alternately controlling the first deflection device and the second deflection device one at a time according to a predetermined switching sequence” (emphasis added)). In the discussion of claim 1, supra, we found the Examiner did not show that Hell describes, either expressly or inherently, an X-ray tube configured to alternately control the first and second deflection devices one at a time according to a predetermined switching sequence. For that reason, we did not sustain the anticipation rejection of claim 1. We do not sustain the anticipation rejection of independent claims 10, 13, and 16 and dependent claims 11, 12, 14, and 19 for the same reason. In the Appeal Brief, the Appellant does not present separate arguments against the obviousness rejection of claims 10, 13, and 16.9 In particular, the 9 In the Reply Brief, the Appellant indicates that the arguments presented in support of the patentability of claim 1 also apply to the rejections of claims 10, 13, and 16. Reply Br. 7–8. To the extent that the Appellant is incorporating the Appeal 2019-002028 Application 13/520,376 10 Appellant does not direct us to any error in the Examiner’s conclusion that it would have been obvious to one of ordinary skill in the art to modify Hell’s system to alternately control the first and second deflection devices according to a predetermined switching sequence “to reduce problems due to feedback into the different current generating systems.” Final Act. 9, 10, 12. The Appellant merely argues that “[i]ndependent claim 10 recites a method with claim elements that are different from the apparatus recited in independent claim 1. Accordingly, independent claim 10 must be examined and interpreted on its own merits.” App. Br. 16. The Appellant makes a similar argument with respect to independent claims 13 and 16. App. Br. 16–18. Significantly, the Appellant does not identify any claim limitations that patentably distinguish the subject matter of claims 10, 13, and/or 16 from the invention disclosed in Hell or direct us to any error in the Examiner’s factual findings or legal conclusions10 as to the limitations in claims 10, 13, and/or 16 “that are different from the apparatus recited in independent claim 1.” App. Br. 16, 17. Therefore, the obviousness rejection of claims 10, 13, and 16 is sustained. The Appellant does not present arguments in support of the separate patentability of either claim 12 or claim 14. See App. Br. 17, 18. Therefore, the obviousness rejection of claims 12 and 14 also is sustained. arguments directed to the obviousness rejection of claim 1 into the response to the obviousness rejection of claims 10, 13, and 16, those arguments, like the arguments against the obviousness of claim 1, which were made for the first time in the Reply Brief, are not timely and will not be considered on appeal. 10 In the Final Office Action, the Examiner outlines each of claims 10, 13, and 16, and makes specific factual findings and legal conclusions as to each of those claims. Final Act. 8–10, 11–12. Appeal 2019-002028 Application 13/520,376 11 a. Claim 11 Claim 11 depends from claim 16 and recites that “the alternately deflecting act deflects the focal spot according to the switching sequence in a way that no spot of a focal track is tracked more than once during one switching sequence.” App. Br. 23. Referring to Hell Figures 6 and 8, the Examiner finds that Hell discloses the limitation recited in claim 11. Final Act. 13. The Appellant argues that the Examiner fails to show how Hell Figures 6 and 8 disclose the limitations recited in claim 11. App. Br. 18. In response, the Examiner finds that the first deflection device (coils 19/20) and the second deflection device (coils 11/12) are independently controlled. Ans. 17. Therefore, the Examiner finds that Hell’s X-ray tube “is capable of performing the switching sequence as shown in Fig. 1 and Fig. 2, which would result in a focal track not tracked more than once in a switching sequence” as recited in claim 11. Ans. 17. In the Reply Brief, the Appellant does not address the Examiner’s findings and thus, does not identify reversible error. See Reply Br. 8. For that reason, the obviousness rejection of claim 11 is sustained. b. Claim 19 Claim 19 depends from claim 16 and recites that the claimed method is “configured for said controlling such that repeated toggling maintains increased resolution.” App. Br. 25. Referring to Hell Figures 6 and 8, the Examiner finds that Hell discloses the limitation recited in claim 19. Final Act. 13. The Appellant argues that the Examiner fails to show how Hell Figures 6 and 8 disclose the limitations recited in claim 19. App. Br. 19. Appeal 2019-002028 Application 13/520,376 12 In response, the Examiner finds that Hell’s X-ray tube is capable of performing repeated toggling as shown in Hell Figures 1 and 2 because the first deflection device (coils 19/20) and the second deflection device (coils 11/12) are independently controlled. Ans. 18. The Examiner finds that repeated toggling between 3 and 3′, as shown in Hell Figure 1, and/or 3 and 3″, as shown in Hell Figure 2, necessarily results in maintaining increased resolution as recited in claim 19. Ans. 18. In the Reply Brief, the Appellant does not address the Examiner’s findings and thus, does not identify reversible error. See Reply Br. 8. For that reason, the obviousness rejection of claim 19 is sustained. C. CONCLUSION The Examiner’s decision is affirmed. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4–7, 10–14, 16, 19 102(b) Hell 1, 2, 4–7, 10–14, 16, 19 1, 2, 4–7, 10–14, 16, 19 103(a) Hell 1, 2, 4–7, 10–14, 16, 19 Overall Outcome 1, 2, 4–7, 10–14, 16, 19 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED