Appeal No. 1997-3434
Application No. 08/307,075
At the outset, we note that appellants have incorporated
by reference U.S. Patent No. 5,171,998 to Engdahl into the
subject patent application, but not the publication by Gagnon.
In the Background and Prior Art section of the subject
application, appellants merely stated that “[a] detailed
explanation of the importance of and the problems associated
with the DOI [depth of interaction] is provided in ‘Maximum
Likelihood Positioning in the Scintillation Camera Using Depth
of Interaction,’ D. Gagnon et al., IEEE Transactions on
Medical Imaging, Vol. 12, No. 1, March 1993, pp. 101-107"
(Specification, page 4). A discussion of the admitted prior
art in the disclosure is not the same as incorporation by
reference into the application, and appellants are not relying
on the publication for “essential material” set forth in the
claims on appeal (Answer, page 4).
The examiner has relied on In re Donaldson, 16 F.3d 1189,
29 USPQ2d 1845 (Fed. Cir. 1994), to bolster the lack of
enablement and the indefiniteness rejections (Answer, pages 4
and
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