Ex Parte COWAN et al - Page 3




                 Appeal No. 2002-2110                                                                                  Page 3                     
                 Application No. 09/224,748                                                                                                       


                                  detecting positron-sensitive gamma-rays emitted from the surface                                                
                         using a pair of oppositely positioned positron-sensitive gamma-ray                                                       
                         detectors, and                                                                                                           
                                  characterization of the emitted gamma rays by positron emission                                                 
                         tomography.                                                                                                              


                         Claims 17 and 18 stand rejected under 35 U.S.C. § 112, ¶ 1, as non-enabled.                                              
                 Claims 1, 2, and 4-8 stand rejected under 35 U.S.C. § 103(a) as obvious over U.S.                                                
                 Patent No. 4,983,841 ("Stewart").  Claims 9-13 stand rejected under § 103(a) as                                                  
                 obvious over Stewart and U.S. Patent No. 5,453,615 ("Mis").                                                                      


                                                                  OPINION                                                                         
                         Our opinion addresses the rejections in the following order:                                                             
                         •        non-enablement rejection of claims 17 and 18                                                                    
                         •        obviousness rejections of claims 1, 2, and 4-13.                                                                


                                          Non-enablement Rejection of Claims 17 and 18                                                            
                         Rather than reiterate the positions of the examiner or the appellants in toto, we                                        
                 address the main point of contention therebetween.  Observing that, "[t]he [appellants']                                         
                 specification at page 5 defines and distinguishes specifically chemical surface features                                         
                 (as recited in the preamble of independent claim 17) as 'regions of different reactivity to                                      
                 tracer material' (line 25)," (Examiner's Answer at 4), the examiner asserts, "[w]hen a                                           








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