Trials@uspto.gov
`571-272-7822
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` Paper 9
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` Entered: December 16, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VIKEN DETECTION CORPORATION,
`Petitioner,
`
`v.
`
`AMERICAN SCIENCE AND ENGINEERING, INC.,
`Patent Owner.
`____________
`
`
`
`PGR2022-00047
`Patent 11,143,783 B2
`____________
`
`
`Before SCOTT A. DANIELS, CARL M. DEFRANCO, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
` Paper 9
`
`
`
` Entered: December 16, 2022
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VIKEN DETECTION CORPORATION,
`Petitioner,
`
`v.
`
`AMERICAN SCIENCE AND ENGINEERING, INC.,
`Patent Owner.
`____________
`
`
`
`PGR2022-00047
`Patent 11,143,783 B2
`____________
`
`
`Before SCOTT A. DANIELS, CARL M. DEFRANCO, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324
`
`
`
`
`
`
`
`PGR2022-00047
`Patent 11,143,783 B2
`
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`American Science and Engineering, Inc. (“ASE”) is the owner of U.S.
`Patent No. 11,143,783 B2 (Ex. 1001, “the ’783 patent”). Viken Detection
`Corporation (“Viken”) filed a Petition requesting post-grant review of
`claims 1–22 of the ’783 patent. Paper 1 (“Pet.”). ASE elected to “waive”
`filing a preliminary response. Paper 6. Because we determine that Viken
`fails to demonstrate that any of the challenged claims of the ’783 patent is
`more likely than not unpatentable, we do not institute a post-grant review.
`See 35 U.S.C. § 324(a).
`
`I. BACKGROUND
`
`A. Related Matters
`The ’783 patent is the subject of an infringement action filed April 1,
`
`2022 in American Science & Engineering, Inc., v. Viken Detection
`Corp., No. 1:20-cv-11883 (D. Mass.). See Pet. 44; Paper 4, 2.
`B. The ’783 Patent
`The ’783 patent relates to a “four-sided imaging system that provides
`high detection performance using a combination of transmission and
`backscatter imaging sensors.” Ex. 1001, 2:13–16. As explained in the ’783
`patent, “[m]aterials exposed to X-ray radiation absorb differing amounts of
`X-ray radiation and, therefore, attenuate an X-ray beam to varying degrees,
`resulting in a transmitted or backscattered level of radiation that is
`characteristic of the material.” Id. at 2:22–27. Figure 1 of the ’783 patent,
`reproduced below, illustrates an embodiment of the four-sided X-ray
`imaging system. Id. at 6:4–5.
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` As shown in Figure 1, four-sided X-ray imaging system 100 includes
`archway 115 and bottom platform 109, which together define an inspection
`portal for a vehicle to be inspected. Archway 109 includes first vertical
`(left) side 106, second vertical (right) side 107, and top side 108, while
`bottom platform 109 includes ramp 110 over which vehicle 105 drives. Id.
`at 7:36–42. Archway 115 houses X-ray source 119 on first vertical side 106,
`and houses a plurality of X-ray transmission detectors 117 along second
`vertical side 107 and top side 108. Id. at 7:48–53. In similar fashion, a
`second X-ray source can be located on second vertical side 107 to form a
`“dual-view system.” Id. at 8:43–51. The ’783 patent explains that a
`“transmission system” can be mounted in a “side-shooter” configuration,
`where the X-ray source enclosure is positioned on the first side or second
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`side and emits X-rays toward one side of the vehicle, or “down-shooter”
`configuration, where the source enclosure is positioned on the bottom
`portion of the first side or second side and emits X-rays from this lower
`position in an upward direction. Id. at 8:56–66.
`In order to provide a high level of inspection capability, ramp 110,
`over which the vehicle drives, is equipped with a backscatter X-ray imaging
`unit, which comprises a low energy X-ray source and a plurality of
`detectors. Id. at 9:15–20. According to the ’783 patent, the backscatter X-
`ray unit enables detection of certain materials with a low atomic number
`which may be hidden in the floor of the vehicle and would be invisible to
`standard visible inspection. Id. at 9:32–35. Figure 9 of the’783 patent,
`reproduced below, depicts a backscatter X-ray unit.
`
`
`As shown in Figure 9, X-ray beam 905 emerges from X-ray source
`906 and comes into contact with object 910 under inspection which, in turn,
`generates backscatter radiation 912 that is then received by detectors 915.
`Ex. 1001, 13:30–34. The backscatter units may be arranged into a four-
`sided backscatter imaging system, as shown below in Figure 12 of the ’783
`patent.
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`Figure 12 depicts four-sided backscatter imaging system 1205
`mounted around the periphery of the “scanning tunnel” (unlabeled) as
`depicted in Figure 1 of the ’783 patent. Id. at 7:1–3, 14:38–40.
`“Advantageously, the backscatter detectors are mounted to the same frame
`as the transmission X-ray system such that simultaneous transmission and
`backscatter image data can be acquired. This allows overlay of backscatter
`and transmission X-ray images by suitable image manipulation.” Id. at
`14:43–48. As described, “back scatter detectors, and not a backscatter X-
`ray source,” are integrated into one or more of the first and second vertical
`sides 106, 107, and horizontal top side 108, of the frame. Id. at 14:48–51.
`Alternatively, backscatter detectors “with a backscatter X-ray source” are
`integrated into one or more of the three sides. Id. at 14:54–55.
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`C. The Asserted Challenges
`Challenged Claims
`35 U.S.C. § Basis
`1–22
`112(a)
`Written Description
`1–22
`112(a)
`Written Description
`1–22
`112(a)
`Written Description
`1–22
`112(a)
`Written Description
`1–22
`112(a)
`Enablement
`
`In support of these challenges, Viken also submits the declaration of
`
`Richard C. Lanza, Ph.D., P.E. See Ex. 1012.
`D. The Challenged Claims
`Claim 1, the only independent claim, recites:
`
`1. An X-ray scanning system configured to inspect an
`object moving along a direction of travel through an inspection
`area, the X-ray scanning system comprising:
`
`a first vertical side and a first top horizontal side
`positioned orthogonal to the first vertical side, wherein the first
`vertical side and the first top horizontal side define a first plane
`within the inspection area;
`a first X-ray source configured to generate first X-rays,
`wherein the first X-ray source is positioned proximate the first
`vertical side and proximate the first top horizontal side and is
`configured to generate the first X-rays from the first vertical side
`and the first top horizontal side into the inspection area and
`toward the object moving through the inspection area;
`a first set of backscatter detectors disposed at least
`partially within the first plane and configured to receive the first
`X-rays scattered from the object as it travels through the
`inspection area;
`a second vertical side and a second top horizontal side
`positioned orthogonal to the second vertical side, wherein the
`second vertical side and the second top horizontal side define a
`second plane within the inspection area, wherein the first plane
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`and the second plane define a distance along the direction of
`travel;
`a second X-ray source configured to generate second X-
`rays, wherein the second X-ray source is positioned proximate
`the second vertical side and proximate the second top horizontal
`side and configured to generate the second X-rays from the
`second vertical side and the second top horizontal side into the
`inspection area and toward the object moving through the
`inspection area;
`a second set of backscatter detectors disposed at least
`partially within the second plane and configured to receive the
`second X-rays scattered from the object as it moves through the
`inspection area;
`a third X-ray source positioned within a horizontal base
`along the direction of travel and configured to generate third X-
`rays into the inspection area and toward the object;
`a third set of backscatter detectors positioned within the
`horizontal base and configured to receive the third X-rays
`scattered from the object as it travels through the inspection area,
`wherein an operation of the first X-ray source and the second X-
`ray source are synchronized; and
`to execute programmatic
`a controller configured
`instructions that, when executed, receive data from the first set
`of backscatter detectors, receive data from the second set of
`backscatter detectors, receive data from the third set of
`backscatter detectors and generate one or more images.
`Ex. 1001, 15:52–16:35.
`
`II. ANALYSIS
`
`A. Claim Construction
`We apply the claim construction standard set forth in Phillips v. AWH
`
`Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). That is, “the
`words of a claim ‘are generally given their ordinary and customary meaning’
`. . . that the term would have to a person of ordinary skill in the art in
`question at the time of the invention.” Id. at 1312–13; see also 37 C.F.R.
`§ 42.200(b).
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`Viken asserts that “the only terms that need construction are ‘a first
`X-ray source,’ ‘a second X-ray source,’ and ‘a third X-ray source’ of
`claim 1.” Pet. 20. According to Viken, the “X-ray sources of claim 1 should
`be construed to be ‘a first backscatter X-ray source,’ ‘a second backscatter
`X-ray source,’ and ‘a third backscatter X-ray source,’ respectively,” because
`one skilled in the art “would understand these sources to be backscatter
`sources in view of the intrinsic evidence (claims and specification).” Id. at
`21 (citing Ex. 1012 ¶ 95). In particular, Viken asserts “[t]he only sources
`paired with backscatter detectors in the ’783 patent are backscatter sources.”
`Id. at 22 (citing Ex. 1012 ¶¶ 88, 95). We disagree, as discussed below in
`connection with Viken’s first ground.
`B. Level of Ordinary Skill in the Art
`Viken asserts that a person having ordinary skill in the art would be “a
`person with [a] Ph.D. in physics or similar discipline and at least two years
`of experience working with an interdisciplinary team designing and creating
`systems involving penetrating radiation sources and detectors.” Pet. 9
`(citing Ex. 1012 ¶ 20). At this stage, ASE does not contest that formulation
`of the level of skill in the art. Nor do we discern any reason to question
`Viken’s formulation, as it appears consistent with the level of skill reflected
`in the ’783 patent and the prior art of record. We, therefore, apply Viken’s
`formulation for purposes of determining whether to institute.
`C. Ground 1 – Backscatter-Only Imaging
`We begin with Viken’s challenge that claims 1–221 are unpatentable
`as failing to provide adequate written description support for a system that
`
`
`1 Viken only makes arguments with respect to claim 1, asserting that “[n]one
`of the dependent claims cure” the shortcomings of claim 1. See Pet. 28. We
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`includes only backscatter imaging. Pet. 26. According to Viken, claim 1 is
`directed to a system that includes “only backscatter detectors and associated
`X-ray sources.” Id. (citing Ex. 1012 ¶¶ 92–93, 96). In contrast, Viken
`contends, the Specification of the ’783 patent “requires that the invention
`include a combination of transmission and backscatter imaging in order to
`effectively scan the object to be inspected.” Id. (citing Ex. 1001, 9:15–49)
`(emphasis added). As such, Viken surmises, “there is no adequate written
`description of an invention that includes only backscatter imaging systems
`because the disclosure is limited to systems combining transmission and
`backscatter imaging.” Id. (citing Gentry Gallery, Inc. v. Berkline Corp., 134
`F.3d 1473 (Fed. Cir. 1998)). And “because the specification does not
`describe a backscatter-only imaging system,” Viken contends that “claims
`1–22 are invalid for failing to comply with the written description
`requirement of 35 U.S.C. § 112(a).” Id. at 29.
`Viken is mistaken on both counts. First, we disagree with Viken’s
`assertion that the claims are limited to a backscatter-only imaging system.
`Nor do we agree with Viken’s assertion that the Specification is limited to
`describing only a combined transmission/backscatter imaging system. We
`address each of these assertions in turn.
`Starting with the claim language itself, we note that claim 1 recites the
`transitional term “comprising,” which presumptively indicates that the claim
`is open-ended. So, while reciting only “backscatter detectors” for generating
`images, the claim does not otherwise exclude additional, unrecited elements
`
`
`likewise address only claim 1, and because claims 2–22 depend directly or
`indirectly from claim 1, our analysis of Viken’s arguments for claim 1
`applies equally to the dependent claims.
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`that may perform transmission X-ray imaging. Indeed, claim 18, which
`depends from claim 1, expressly supports such an interpretation by adding
`that the scanning system of claim 1 “further compris[es] at least one detector
`configured to detect at least one of the first [or second or third] X-rays . . .
`transmitted through the object.” Ex. 1001, 18:10–13. Claim 18’s addition
`of a transmission detector to claim 1’s recitation of “backscatter detectors
`. . . configured to receive the first [or second or third] X-rays scattered from
`the object” negates Viken’s assertion that claim 1 necessarily excludes a
`transmission imaging system.
`
`Dependent claim 18 also negates Viken’s interpretation of the claimed
`“X-ray source” as being limited to a “backscatter X-ray source,” as opposed
`to encompassing an X-ray source capable of also being used for transmission
`imaging. See Pet. 21–22, 26, 28–29, 34, 35. On its face, claim 1 recites
`simply “a first X-ray source,” “a second X-ray source,” and “a third X-ray
`source.” Ex. 1001, 15:59, 16:9, 16:20. And, as mentioned above, dependent
`claim 18 requires that X-rays from at least one of the X-ray sources of
`claim 1 be “transmitted through the object.” Id. at 18:10–13. As such,
`claim 18 supports that the “X-ray source” as claimed be capable of emitting
`X-rays for both transmission and backscatter imaging.
`
`That interpretation is consistent with the Specification’s disclosure of
`an X-ray source operating at energy levels used for both transmission and
`backscatter imaging. For example, the embodiment of Figure 12 discloses
`that “backscatter detectors, and not a backscatter X-ray source, are
`integrated into one or more of the first side 106, second side 107, and top
`side 108” of the inspection portal. Id. at 14:48–51 (emphasis added).
`Implicit in that disclosure is that one or more of the high-energy X-ray
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`sources used for transmission imaging is also capable of being used for
`backscatter imaging. Indeed, the Specification states “it is advantageous to
`use a high energy X-ray source, even if tuned to a low output intensity” and
`that “[a] suitable high voltage source has an energy ranging from 100 kVp to
`2 MV.” Id. at 9:4–14. It is undisputed that 100 kVp is within a range used
`for backscatter imaging (Pet. 13) and 2 MV is within a range used for
`transmission imaging (id. at 12). This is consistent with dependent claim 18,
`which, as discussed above, requires that X-rays from at least one X-ray
`source be “transmitted through the object,” in addition to claim 1’s
`requirement that they be “scattered from the object.” Id. at 18:11–13.
`
`So, although claim 1 recites first, second, and third sets of
`“backscatter detectors,” there is no requirement that either the first, second,
`and third “X-ray source” be a “backscatter source,” as Viken asserts. One
`skilled in the art would understand from reading the Specification as a whole
`that the high energy X-ray source described therein can have a dual purpose,
`namely, generating X-rays that are transmitted through the vehicle as well as
`generating X-rays that are backscattered from the vehicle. Thus, claim 1 is
`not necessarily limited to a backscatter-only source, although it certainly
`may encompass such a source.
`For these reasons, we reject the notion that “the claims recite only
`backscatter detectors and associated X-ray sources,” as Viken asserts.
`Because Viken’s assertions rely on the improper premise that claim 1 is
`limited to a backscatter-only imaging system, we are not persuaded that it
`fails to comply with the written description requirement of 35 U.S.C.
`§ 112(a).
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`Moreover, we disagree with Viken’s assertion that the Specification is
`
`“limited to systems combining transmission and backscatter imaging.” See
`Pet. 26; see also id. at 27–28 (repeating essentially the same). Rather, from
`our review, the Specification supports the use of backscatter imaging either
`alone or in combination with transmission imaging. More specifically,
`although the Specification focuses on a “four-sided imaging system which
`combines X-ray backscatter imaging with X-ray transmission imaging,” the
`Specification nonetheless speaks of the combination in terms of comprising
`“two X-ray systems.” Ex. 1001, 9:36–43; see also id. at 13:57–60 (“In order
`to minimize cross talk between the backscatter imaging component and the
`transmission X-ray imaging system, it is advantageous to synchronize the
`operation of the two systems.” (emphasis added)).
`In that regard, the Specification discloses a Figure 1 embodiment of
`an “inspection portal” comprising “ramp 110” and “archway 115,” each
`housing one of the two systems. Ex. 1001, 7:36–39. For instance, as
`described, “archway 115 houses multiple X-ray transmission detectors 117
`and at least one X-ray source 119, housed within an enclosure, shown as 220
`in FIG. 2.” Id. at 7:48–51 (emphasis added). This “transmission system”
`employs a “high energy X-ray source” that is “positioned on the first side or
`second side and emit[s] X-rays toward one side of the vehicle.” Id. at 8:56–
`9:7.
`
`Only after describing the transmission system within the inspection
`portal’s archway 115 does the Specification proceed to describe “a
`backscatter X-ray unit” contained within “ramp 110, over which the vehicle
`drives.” Id. at 9:15–18, Fig. 1. As described, the “backscatter X-ray unit”
`comprises “a low-energy X-ray source . . . and a plurality of detectors.” Id.
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`at 9:17–20. These components are wholly contained within ramp 110, as
`opposed to being part of archway 115 that houses the transmission system.
`See id. at 10:41–43 (“The base platform preferably houses the above-
`described backscatter system”); see also id. at 12:44–63, Fig. 7 (illustrating
`the backscatter unit contained within base platform 109 of ramp 110).
`Notably, the Specification explains that “[i]t should be appreciated that the
`backscatter unit can be integrated into any floor structure which is moveable
`and deployable to different locations and over which a car can drive.” Id. at
`9:20–23 (emphasis added). That description of the backscatter system as a
`self-contained unit capable of being integrated into any moveable floor
`structure, in our view, adequately supports an embodiment of the inspection
`portal in which only backscatter imaging is performed. In other words, one
`skilled in the art would understand, from reading the Specification as a
`whole, that the backscatter unit may be configured as its own distinct
`inspection portal or, alternatively, may be combined with a transmission
`system in situations where a higher level of inspection capability is needed.
`Thus, for all the above reasons, we are not persuaded that the ’783
`patent is limited to describing only a system that combines backscatter and
`transmission imaging. As such, we determine that claims 1–22 are not
`invalid for lacking written description support of a backscatter-only system.
`D. Ground 2 – Different Planes for Source/Detector Pairs
`Viken asserts that claims 1–22 are also unpatentable because the ’783
`patent does not “provide an adequate written description of a system that
`includes backscatter source and detector pairs located in two different
`planes,” as recited in claim 1. Pet. 29 (emphasis added). While indisputably
`written description support exists for the claimed “first plane,” Viken argues
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`there is no support for the claim recitation of “a ‘second plane’ or a ‘distance
`of travel’ between first and second planes,” nor is there support for the
`recitation of “two backscatter imaging systems located in two different
`planes a distance apart,” as recited in claim 1. Id. at 29–30 (citing Ex. 1012
`¶ 97). According to Viken, although the term “plane” appears twice in the
`Specification of the ’783 patent, “neither reference to a ‘plane’ . . . has
`anything to do with first and second planes spaced a distance apart.” Id. at
`30–31. Instead, Viken contends, “reference is only made to a four-sided
`system, also referred to as a portal” and “[n]o second portal with a second
`set of top and vertical sides is ever described, and no reference is made to a
`‘second’ imaging plane in the single portal system.” Id. at 31.
`Although we agree there is no in haec verba disclosure of a “second
`plane” in the ’783 patent, we disagree that it does not disclose a second
`portal spaced a distance apart form a first portal so as to, in effect, form two
`imaging planes. More specifically, Figure 12 of the ’783 patent, reproduced
`below, depicts a two-plane imaging system.
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`As described, Figure 12 is an embodiment “in which a four-sided
`backscatter detector 1205 is mounted around the periphery of the scanning
`tunnel.” Ex. 1001, 14:38–40 (emphasis added). More specifically, the
`Specification states that four-sided backscatter detector 1205 is “mounted to
`the same frame as the transmission X-ray system such that simultaneous
`transmission and backscatter image data can be acquired.” Id. at 14:44–46
`(emphasis added). That disclosure of backscatter detector 1205 being
`“mounted around the periphery of,” and “to the same frame as,” the
`transmission system is reasonably understood to mean that the transmission
`system has its own four-sided frame (unlabeled) and the backscatter system
`likewise has its own four-sided frame (labeled 1205), both of which are
`connected together to form a tunnel consisting of adjacent but distinct
`inspection portals.
`Also, while referencing the backscatter unit of Figures 7 and 9, the
`Specification describes four-sided backscatter system 1205 in terms that
`correspond to a distinct inspection portal—“backscatter detectors with a
`backscatter X-ray source may be integrated into one or more of the first side
`106, second side 107, and top side 108.” Id. at 14:40–56. And the
`Specification’s disclosure that backscatter system 1205 is mounted to a
`“scanning tunnel,” which Figure 12 depicts as having a slit for an X-ray
`source, comports with the description of the combined transmission and
`backscatter inspection portal of Figure 1. 2
`
`
`2 Figure 1 discloses X-ray source 119 and transmission detectors 117 housed
`in sides 106, 107, and 108 (Ex. 1001, 7:36–8:51), as well as backscatter
`source and backscatter detectors housed in base platform 109 and any of the
`three sides (see id. at 5:31–37, 9:15–20, 14:63–15:4).
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`So, from reading the Specification as a whole, one skilled in the art
`would easily discern that the unlabeled frame or portal in Figure 12 defines a
`first plane, the details of which are shown in Figure 1, and that frame or
`portal 1205 defines a second plane, the details of which are shown in Figures
`7 and 9. Thus, in our view, sufficient written description support exists for
`the “first plane” and “second plane” as claimed, including that each plane be
`equipped with backscatter detectors.
`For all the above reasons, we are not persuaded by Viken’s assertion
`that claims 1–22 are invalid for lacking written description support for the
`claim limitations directed to first and second spaced-apart planes.
`E. Ground 3 – X-Ray Sources Proximate Vertical and Top Sides
`Viken asserts that “[c]laims 1–22 are invalid for lack of an adequate
`written description of a system that includes X-ray sources proximate
`vertical and top sides.” Pet. 35. More specifically, the pertinent claim
`limitations recite, “a first X-ray source configured to generate first X-rays,
`wherein the first X-ray source is positioned proximate the first vertical side
`and proximate the first top horizontal side,” and “a second X-ray source
`configured to generate second X-rays, wherein the second X-ray source is
`positioned proximate the second vertical side and proximate the second top
`horizontal side.” Ex. 1001, 15:59–62, 16:9–12.
`The plain meaning of these two limitations, Viken argues, “is that
`each [X-ray] source is located near the upper corner where the top side
`meets the vertical side.” Pet. 35 (citing Ex. 1012 ¶ 98). But, according to
`Viken, rather than disclosing X-ray sources near the upper corner of the
`imaging system, all the embodiments in the ’783 patent depict a
`“transmission source in a lower corner” or involve a “‘down shooter’
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`configuration in which the transmission source is located in the center of the
`top side.” Id. at 35–36 (citing Ex. 1001, Figs. 1, 13A–C). And with respect
`to the backscatter imaging embodiments, Viken contends they fair no better
`because they describe the X-ray source as being located either in base 109 or
`integrated into one of sides 106, 107, and 108, without otherwise specifying
`their location within a particular side. Id. at 36 (citing 9:15–23, 14:54–56).
`We disagree with Viken’s contentions regarding the ’783 patent’s
`disclosure of the claimed locations of the X-ray sources. While the figures
`in the ’783 patent may not disclose the locations as claimed, the
`Specification does. More specifically, the Specification explains that the
`position of the enclosure for the X-ray source “depends upon the size of the
`inspection portal” and describes embodiments where the enclosure occupies
`20%, 50%, and 100% of the height of any particular portal. See Ex. 1001,
`8:7–12. In that regard, Figure 13B of the ’783 patent, reproduced below,
`depicts an embodiment equipped with “side-shooter” X-ray source 1305b
`and “down-shooter” X-ray source 1310b. Id. at 14:61–63.
`
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`Although Figure 13B shows X-ray source 1310b at the bottom of the
`vertical side, and X-ray source 1305b in the center of the top side, the figure
`also depicts a slit (unlabeled) adjacent the X-ray source. As explained with
`respect to the similar embodiment of Figure 1, the slit is an “opening” in the
`X-rays source’s enclosure “through which X-rays are emitted.” See id. at
`8:16–17, Fig. 1. Importantly, the Specification states that the slit or opening
`“extends substantially up first side 106 to approximately 100% of the
`height.” Id. at 8:17–19.
`Given that the height of the slit corresponds to the height of X-ray
`source 1310b in Figure 13B (or X-ray source 119 in Figure 1), one skilled in
`the art would understand that a slit extending to approximately 100% of the
`height of the side would mean that the X-ray source does as well, in order to
`emit X-rays over the full extent of the slit. That understanding would
`position the X-ray source along the top of the vertical side in proximity to
`the top horizontal side, as required by claim 1. And, insofar as being located
`in a backscatter system, one skilled in the art would reasonably understand
`that the Specification’s disclosure of extending the slit along the full length
`of the vertical side is applicable not only to the embodiments of Figures 1
`and 13B, but also to the backscatter embodiment of Figure 12, given the
`similarity of the slit depicted in each of those figures.
`As for a second X-ray source being positioned in the same manner as
`the first X-ray source, the Specification of the ’783 patent explains that “an
`enclosure housing an X-ray source can be provided on both the first side 106
`and second side 107” of the inspection portal, and, like slit 121 on first side
`106, “a slit or opening (not shown) is similarly provided on second side
`107.” Id. at 8:43–51. From those disclosures, one skilled in the art would
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`understand that an X-ray source may be disposed in each of the two vertical
`sides of the portal, with a slit extending the full height of the sides. As such,
`the ’783 patent discloses that each of the X-ray sources in the vertical sides
`may be positioned proximate the top horizontal side, as required by claim 1.
`For these reasons, we are not persuaded that claims 1–22 are invalid
`as lacking written description support for positioning X-ray sources
`proximate the vertical and top sides of the inspection portal.
`F. Ground 4 – “Synchronized” First and Second X-Ray Sources
`Viken asserts that claims 1–22 are unpatentable for failing to
`adequately describe a system in which first and second backscatter X-ray
`sources are synchronized. Pet. 37. Claim 1 recites the relevant limitation as
`follows: “an operation of the first X-ray source and the second X-ray source
`are synchronized.” Ex. 1001, 16:27–29. According to Viken, “[t]here is no
`disclosure in the specification, however, of 1) synchronized backscatter X-
`ray sources; or 2) synchronized X-ray sources in first and second planes.”
`Pet. 37. We disagree.
`
`At the outset, we note that claim 1 does not recite that backscatter X-
`ray sources are synchronized, as Viken asserts, only that the claimed “first
`X-ray source” and “second X-ray source” are synchronized, without
`otherwise describing the type of X-ray source. As discussed above in
`section II.D with respect to the embodiment of Figure 12, a transmission X-
`ray source is located in a first plane and a backscatter X-ray source is located
`in a second plane. See Ex. 1001, 14:38–40, Fig. 12. To that end, the
`Specification explains, “[i]n order to minimize cross talk between the
`backscatter imaging component and the transmission X-ray imaging system,
`it is advantageous to synchronize the operation of the two systems.” Id. at
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`13:57–60 (emphasis added); see also id. at 9:36–43 (“[T]he transmission
`beam X-ray pulse may be timed to coincide with a period in time when the
`backscatter system is inactive, thus eliminating any cross-talk between the
`two X-ray systems.” (emphasis added).)
`
`Those disclosures provide clear and unambiguous support for the
`“synchronized” operation of the first and second X-ray sources as claimed.
`Thus, we reject the notion that claim 1 lacks written description support for
`that limitation.
`G. Ground 5 – Enablement of System that is not a Combination
`Viken asserts that “claims 1–22 of the ’783 patent are invalid for
`failing to comply with the enablement requirement of 35 U.S.C. § 112(a)
`because the specification does not enable a two-plane backscatter-only
`system.” Pet. 41. Viken’s non-enablement assertions fail for the simple
`reason that they are premised on the same improper assumptions discussed
`above with respect to Viken’s assertions that claim 1 is limited to a
`backscatter-only imaging system. As discussed above in section II.C., the
`claims of the ’783 patent are not so limited. Also, as discussed above in
`section II.D, the Specification of ’783 patent provides adequate written
`description support for an X-ray imaging system that includes two planes.
`Given the high level of skill in the art based on Viken’s formulation—“a
`person with [a] Ph.D. in physics or similar discipline and at least two years
`of experience working with an interdisciplinary team designing and creating
`systems involving penetrating radiation sources and detectors” (Pet. 9 )—
`and given Viken’s improper reading of limitations into the claims in alleging
`lack of enablement, we are not persuaded that one skilled in the art would be
`unable to make or use the invention as claimed.
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`III. CONCLUSION
`For the above reasons, we determine that the information presented in
`Viken’s Petition does not show it is more likely than not that any claims of
`the
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