COMMISSIONER'S DECISION
INSUFFICIENCY-DISCLOSURE & CLAIMS: Ambiguity and Inoperativeness
Ss. 2(d) and 36
Argument and some of the new claims accepted as overcoming the
objections of the Final Action; the entry of other new claims
refused for failing to include limitations advanced to over-
come the objections.
FINAL ACTION: Overcome by Amendment.
**************************
This decision, deals with a request for review by the Commissioner
of Patents of the Examiner's Final Action dated June 21, 1972 on
application 007,989. This application was filed on December 19,
1967 in the name of Varian Associates (William Edward Spicer) and
refers to "X-RAY IMAGE INTENSIFIER TUBE".
In the prosecution terminated by the Final Action the examiner
refused claims 1 and 2, the only claims on file, for non-
compliance with Rule 25 of the Patent Rules, and Section 36(2)
and Section 2(d) of the Patent Act. Rejected claims 1 and 2
read:
1. An image intensification tube responsive to stimulation
by gamma radiation, comprising an evacuated envelope
within which is located adjacent the input end a dish-
shaped substantially crystalline sheet of photo-
luminescent material serving as a light emissive layer
for emitting photons in response to stimulation by
gamma radiation, the envelope also containing a dish-
shaped electron emissive layer deposited near the inner
surface of the light emissive layer for emitting electrons
in response to stimulation by the photons, and means for
accelerating the electrons against an output phosphor.
2. A tube according to claim 1 in which the sheet is of
caesium iodide.
In the Final Action the examiner stated in part:
Claims 1 and 2 are again refused under Rule 25 of the
Patent Rules which states that a claim shall not be
allowed unless the disclosure describes all the character-
istics of an embodiment or the invention that are set out
in the claim. There is no teaching in the disclosure,
drawings or original claims of this application of the
limitation defined in lines 2 to 3 (3 and 4 above) of
claim 1 "a dish-shaped substantially crystalline sheet
of photo-luminescent material (located adjacent the
input end of an evacuated envelope)". The phrase "crystalline
sheet" in the absence of any specific teaching must be given
its ordinary meaning as in a paper or metal sheet with the
implication of a unitary self-supporting structure. The
claim does not define any underlying supporting substrate
for the crystalline sheet. At page 2 paragraph 2 applicant
teaches that "the spherical pick-up screen is formed by
evaporation of an alkali halide material.... in vacuum onto
the inside of the spherical pick-up face of the image in-
tensifier tube." At page 2 paragraph 4 "the alkali halide
screen is evaporated and condensed in place". At page 2
paragraph 6 "an alkali metal halide screen material is
evaporated in vacuum onto a curved X-ray transparent substrate".
A page 3 last paragraph "the ...scintillator layer is vapor-
deposited upon an X-ray transmissive window portion of the tube
envelope or a suitable internally mounted X-ray transmissive
substrate". In every object and feature of applicant's
invention on pages 2, 3, 3A, and in every embodiment of
the disclosure applicant's scintillator layer is vapor-
deposited on a supporting substrate. Nowhere is it
suggested that the scintillator layer is or could be a
self-supporting "crystalline sheet". Indeed applicant
disclaims at page 1 lines 24 and 25 and page 2 lines 1
to 4, and at page 7 paragraph 3 and page 9 paragraph 1 the
use of thin self-supporting sheets of single crystal alkali
metal halide material as scintillators because the deformation
of the sheets into a dish-shaped form would impair the conversion
efficiency and resolution of the converted x-ray image.
Claims 1 and 2 are further refused under Section 36(2) as
indefinite and incomplete in that the claims fail to define
any supporting substrate for the dish-shaped crystalline
sheet of photo-luminescent material defined at line 3 of
claim 1 which is defined at line 2 only as "located adjacent
the input end (of an evacuated envelope)". It is thus not
clear if the "crystalline sheet" is a layer evaporated on
and supported by a substrate as taught in every embodiment of
the invention, or if the sheet is a self-supporting structure
formed by evaporation on a substrate which has been subsequently
removed, or if the sheet is a thin slab of alkali metal halide
bulk material deformed into a dish-shaped sheet.
...
Claims 1 and 2 are further refused under Section 2(d) of the
Patent Act as so broad as to include inoperable combinations.
The limitation in claim 1 at line 3 "a dish-shaped substantially
crystalline sheet of photo-luminescent material" is so broad
as to read on a thin slab of single crystal which has been
deformed into a dish-shaped sheet. Applicant has disclaimed
such scintillators as inoperable as pointed out above because
they would seriously degrade the conversion efficiency and
resolution of the image.
The applicant, in his response dated September 21, 1972 to the
Final Action,stated in part:
The Office is requested to cancel Claims 1 and 2 and to sub-
stitute, therefor, Claims 1 to 34 submitted herewith in duplicate.
...
In order to overcome the Examiner's objections to Claims
1 and 2, Claim 1 has been amended to recite that the photo-
luminescent sheet is vacuum evaporated, that it is disposed
on a substrate and that it is formed from a selected one of
the group comprising cesium iodide, cesium bromide, sodium
iodide and rubidium iodide.
Claim 2 now recites that the cesium iodide is activated.
It is noted that the Examiner rejected Claims 1 and 2 under
Section 36(2) as indefinite and incomplete. This goes to
the issue of whether or not the sheet is self-supporting.
If the Claims are interpreted self-supporting, then Applicant
would concur with the rejection under Section 36(2). However,
it must be remembered that a "sheet of ice" is not generally
self-supporting but deposited upon a substrate as in this
Application.
Claims 1'and 2 were further refused under Section 2(d) as
being so broad as to include inoperable combinations.
Applicant did not state in his application and does not
believe now that a single crystal as deformed into a dish-
shaped sheet is inoperable. It is true that such a sheet
has degraded resolution of the image. We have tested such
sheets and the image has less resolution than that obtained
by an evaporated layer because the light is trapped inside
the crystal by reflection from the opposite faces of the
deformed single crystal. It is not seen how the language
of the application, cited by the Examiner, can be inter-
preted to state that such scintillators would be inoperable.
Thus, it is not believed that Claims 1 and 2 should be
refused under Section 2(d) as it has not been shown that
such a thin slab so deformed would be inoperable, nor did
applicant state that it was inoperable.
With regard to Rule 25, the Examiner apparently is stating
that the subject matter cannot be claimed unless the
disclosure describes all the characteristics of the invention.
It is respectfully submitted that the crystalline nature of
the evaporated layer is invariably inherent. In the United
States something that is invariably inherent can be added to
the specification by amendment and can also be claimed,
provided it is shown that it is inherent. The cited publica-
tions were for the purpose of showing that such vacuum
evaporated layers are crystalline.
The applicant in a second response, dated December 19, 1972, stated
in part:
It was understood that Claims 1 and 2, as amended September
21, 1972, are now acceptable to the Examiner; Claim 1 having
been amended to recite that the photo-luminescent sheet is
vacuum evaporated, that it is disposed on a substrate and
that it is formed from a selected one of the group comprising
cesium iodide, cesium bromide, sodium iodide and rubidium
iodide, and that Claim 2 now recites that the cesium iodide
is activated.
Furthermore, in view of the foregoing, the Commissioner is
further requested to confirm that the arguments filed in
respect of Claims 1 and 2 also overcome the Examiner's
objections to entering Claims 7 to 18.
Applicant would like to place on record that upon receiving
confirmation that Claims 1 and 2 are allowable, Claim 1 will
be further amended to include lithium iodide and potassium
iodide for forming a light emissive layer since these two
additional compounds are mentioned at Page 15, line 25, of
the Disclosure, as filed.
In conclusion, Applicant will make every effort to advance
the prosecution of this Application and will consider any
suggestions the Commissioner might wish to make in connection
with such further prosecution and in particular, Applicant
would appreciate notification on the question of which of
Claims 3 to 34 would be allowable along with Claims 1 and
2 as now amended.
This application relates to pick-up screens for X-ray image
intensifier tubes. Amended claims 1 and 2 read:
1. An image intensification tube responsive to stimulation
by gamma radiation, comprising an evacuated envelope
within which is located adjacent the input end a dish-
shaped substantially crystalline vacuum evaporated
sheet of photo-luminescent material, disposed on a
substrate, serving as a light emissive layer for
emitting photons in response to stimulation by gamma
radiation, wherein said light emissive layer is formed
from a selected one of the group comprising cesium
iodide, cesium bromide, sodium iodide and rubidium
iodide, the envelope also containing a dish-shaped
electron emissive vacuum evaporated layer deposited
near the inner surface of the light emissive layer
for emitting electrons in response to stimulation by
the photons, and means for accelerating the electrons
against an output phosphor.
2. A tube according to Claim l wherein the said cesium
iodide is activated.
The question to be decided is whether amended claims 1 and 2 over-
come the objections made in the Final Action with respect to Section
25 of the Patent Rules, and Section 36(2) and Section 2(d) of the Patent
Act.
It is noted that the refusal under Section 25 of the Patent Rules
was directed to the phrase "crystalline sheet", Since the applicant
has now limited the claimed scintillator in the amended claims 1 and
2 to "vacuum evaporated", the Board is prepared to accept
"substantially crystalline" as descriptive of the photoluminescent
layer, and since claim 1 now defines that the "sheet" is disposed
on a substrate the Board would also accept the word "sheet" as
definitive of the evaporated layer.
With respect to the ground of rejection under Section 36(2) of
the Patent Act, the inclusion in amended claim 1 of the limitations
that the "sheet" of photoluminescent material is vacuum evaporated
and disposed on a substrate satisfies the objection to claims 1 and
2 as indefinite and incomplete.
In line with this the amendments to claims 1 and 2 limiting the
scintillator to vacuum evaporated sheets disposed on a substrate
has removed the objection that the claims were so broad as to
include inoperative combinations (Section 2 of the Patent Act).
We turn now to the newly submitted claims 7 to 18, these claims
are clearly subject to the same objections which were set out in
the Final Action. In each of claims 7 to 18 the applicant has
failed to define the scintillator as a vacuum evaporated layer
disposed on a supporting substrate, and the photoluminescent
layer is defined in each claim so broadly as to read on unitary
self-supporting slabs of bulk halide material, or single crystals
deformed by molding into a dish-shape structure - embodiments which
are not supported and have been disclaimed as species of the
invention.
Furthermore, claims 7 to 14 each define as an image intensifier
tube scintillator "a single crystalline sheet" of photoluminescent
material. Each claim fails to define that the sheet is vacuum
evaporated and disposed on a supporting substrate. They are
consequently objectionable for the same reasons as claims 1 and 2,
which were finally rejected under Section 46 of the Patent Rules
and which objections the applicant amended to avoid. These
claims it is held are unsupported, avoidably indefinite, in-
complete and broader in scope than the invention disclosed.
In addition, claims 7 to 14 are objectionable under Section 36(2)
of the Patent Act and Section 25 of the Patent Rules in that the
limitation "a single crystalline sheet" (which limitation is not
specifically described in the disclosure) adds a further indefinite
limitation "single" to the limitation already finally rejected. It
is not clear if "a single crystalline sheet" refers to a mono-
crystalline or single crystal sheet which the applicant disclaims
in the response of April 17, 1972 or if the limitation refers to
one sheet of polycrystalline material.
As for the other newly submitted claims, 3 to 6 and 19 to 34, each
define a vacuum evaporated scintillator disposed on a substrate or
a method of making such a scintillator. These claims are therefore
not open to the same objections as were set out in the Final Action.
The Board is therefore satisfied that the grounds of rejection have
been overcome with respect to amended claims 1 and 2, that claims
3 to 6 and 19 to 34 also avoid the grounds of rejection, that
claims 7 to 18 are subject to the same grounds of rejection made
in connection with the finally rejected claims 1 and 2 and should
therefore not be accepted.
It is noted, however, that newly submitted prior art is made of
record in the response of September 21, 1972 and this must now
be considered by the examiner against the allowability of the
amended claims.
The Board recommends that the entry of claims 7 to 18 be refused,
that claims 1 to 6 and 19 to 34 be entered if re-presented as claims
1 to 22 and that these claims then be re-examined in view of the
newly submitted prior art. The Board also recommends that the
Applicant's request, to amend new claim 1 to include "lithium
iodide and potassium iodide," be granted.
J.F.Hughes,
Assistant Chairman,
Patent Appeal Board.
I concur with the findings of the Patent Appeal Board and refuse
to enter claims 7 to 18. Claims 1 to 6 and 19 to 34 will be
accepted including the amendment to claim 1 and the application
is returned to the examiner for resumption of prosecution in,
accordance with this decision. The applicant has six months
within which to appeal this decision in accordance with Section
44 of the Patent Rules.
Decision accordingly,
A.M. Laidlaw,
Commissioner of Patents.
Dated and signed this
3rd day of October, 1973
in Hull, Quebec.
Agent for Applicant
Gowling, MacTavish, Osborne & Henderson.
Ottawa.