American Science and Engineering, Inc. v. Coke Morgan Stewart, Acting Under Secretary of Commerce for Intellectual Property

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
AMERICAN SCIENCE AND ENGINEERING, INC.,
Appellant
v.
COKE MORGAN STEWART, ACTING UNDER
SECRETARY OF COMMERCE FOR
INTELLECTUAL PROPERTY AND ACTING
DIRECTOR OF THE UNITED STATES PATENT
AND TRADEMARK OFFICE,
Intervenor
______________________
2023-2127
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2021-
01585.
______________________
Decided: August 7, 2025
______________________
AARON E. HANKEL, Shook, Hardy & Bacon, LLP, Kan-
sas City, MO, argued for appellant. Also represented by
KYLE E. FRIESEN, Houston, TX.
OMAR FAROOQ AMIN, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA,
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AMERICAN SCIENCE AND ENGINEERING, INC. v. STEWART 2
argued for intervenor. Also represented by PETER J. AYERS,
WILLIAM LAMARCA, AMY J. NELSON.
______________________
Before MOORE, Chief Judge, LINN and CUNNINGHAM,
Circuit Judges.
MOORE, Chief Judge.
American Science and Engineering, Inc. (AS&E) ap-
peals a final written decision (FWD) of the Patent Trial and
Appeal Board (Board) determining claims 1–13 of U.S. Pa-
tent No. 7,400,701 are unpatentable. For the following rea-
sons, we vacate and remand.
BACKGROUND
AS&E owns the ’701 patent, which relates to an inspec-
tion system using multiple sources of penetrating radiation
to inspect an object. ’701 patent at Abstract. The inspec-
tion system includes a detector arrangement where an ob-
ject of inspection, such as a vehicle, passes through a portal
with a plurality of pencil-beam sources of penetrating radi-
ation. Id. at 3:26–30, Fig. 1. To minimize cross-talk be-
tween radiation sources, only one source emits radiation at
a time. Id. at 5:1–4. Claim 1 is representative:
1. An inspection system for inspecting an object
characterized by motion in a direction with respect
to the inspection system, the system comprising:
a. a first pencil-beam source for providing a first
beam of penetrating radiation of specified cross-
section directed in a first beam direction substan-
tially transverse to the direction of motion of the
object;
b. a second pencil-beam source for providing a sec-
ond beam of penetrating radiation of specified
cross-section substantially coplanar with, and sub-
stantially perpendicular to, the first beam of
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AMERICAN SCIENCE AND ENGINEERING, INC. v. STEWART 3
penetrating radiation, directed in a second beam
direction, and temporally interspersed with the
first beam of penetrating radiation;
c. a plurality of scatter detectors each scatter detec-
tor of which is disposed so as to detect radiation
scattered from both the first beam and the second
beam by any scattering material within the in-
spected object and for generating a scattered radi-
ation signal; and
d. a controller for creating an image of the scatter-
ing material based solely on the scattered radiation
signal.
Viken Detection Corp. (Viken) filed a petition for inter
partes review challenging claims 1–13 as anticipated and
obvious over the prior art. J.A. 49–123. The Board held
claims 1–4 and 10–13 unpatentable as anticipated by U.S.
Patent No. 7,672,422 (Seppi) and claims 5–9 unpatentable
as obvious over Seppi in view of U.S. Patent No. 6,459,764
(Chalmers) or U.S. Patent No. 6,459,764 (Grodzins).
J.A. 1–32. AS&E appeals.1 We have jurisdiction under 28
U.S.C. § 1295(a)(4)(A).
DISCUSSION
Anticipation is a question of fact we review for substan-
tial evidence. Sierra Wireless, ULC v. Sisvel S.p.A.,
130 F.4th 1019, 1022 (Fed. Cir. 2025). Anticipation re-
quires a single reference disclose each and every claim lim-
itation, either expressly or inherently. Sage Prods., LLC v.
Stewart, 133 F.4th 1376, 1380 (Fed. Cir. 2025).
1 After briefing concluded, Viken withdrew and Di-
rector Stewart (Director), acting on behalf of the Patent
and Trademark Office, intervened as appellee, filing her
own responsive brief.
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AMERICAN SCIENCE AND ENGINEERING, INC. v. STEWART 4
AS&E argues the Board erred in holding claims 1–4
and 10–13 unpatentable as anticipated by Seppi and
claims 5–9 unpatentable as obvious based on the same
findings in Seppi. AS&E Br. 35–47. Specifically, AS&E
argues the Board’s finding of anticipation was not sup-
ported by substantial evidence because the Board failed to
find Seppi’s scatter detectors can detect scattered radiation
from two perpendicular pencil beam sources. See id. at 37–
39. We agree.
The challenged claims require two “substantially per-
pendicular” pencil beams and a plurality of scatter detec-
tors disposed to detect radiation scattered from the
perpendicular beams. ’701 patent at claims 1, 11. Seppi’s
inspection system includes pencil beam sources 16a–f ar-
ranged on a semi-circular rail 18. J.A. 1080 (Seppi) at
7:60–62; see also J.A. 1069 (Seppi) at Fig. 1 (reproduced be-
low). Seppi’s system also includes “additional detectors”
not shown in the figures between sources 16a–f and the
cargo container 14 being inspected to detect back scattered
radiation. J.A. 1083 (Seppi) at 14:25–27. Seppi is silent as
to whether the additional detectors detect radiation from
multiple pencil beam sources.
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AMERICAN SCIENCE AND ENGINEERING, INC. v. STEWART 5
The Board found Seppi’s pencil beam sources 16a–f and
additional detectors comprising scintillator photomulti-
plier tubes satisfied the claim limitations. J.A. 17–19.
Specifically, the Board found Seppi’s additional detectors
were capable of detecting backscatter radiation from both
pencil beams because Seppi discloses cycling pencil beam
sources such that only one source is turned on at a time.
J.A. 19. But the Board never expressly found Seppi’s addi-
tional detectors detect radiation from both pencil beams
when the beams are in a “substantially perpendicular” ar-
rangement as claimed. See Gechter v. Davidson, 116 F.3d
1454, 1460 (Fed. Cir. 1997) (“[T]o hold that a prior art ref-
erence anticipates a claim, the Board must expressly find
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AMERICAN SCIENCE AND ENGINEERING, INC. v. STEWART 6
that every limitation in the claim was identically shown in
the single reference.”).
The Director argues the Board’s FWD sets forth its rea-
soning for why Seppi’s additional detectors detect backscat-
ter radiation from “substantially perpendicular” beams by
necessary implication because the ’701 patent repeatedly
acknowledges that radiation scatters from an object in all
directions so the additional detectors detect at least some
radiation from all of Seppi’s pencil beam sources 16a–16f.
Director’s Br. 32–36 (citing ’701 patent at 1:41–44; J.A. 13–
16, 18–19). We disagree. The Board made no findings
about the ’701 patent’s disclosure of how radiation scatters
that allow us to discern the path of its reasoning. See In re
Nuvasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) (“The
PTAB’s own explanation must suffice for us to see that the
agency has done its job and must be capable of being ‘rea-
sonably . . . discerned’ from a relatively concise PTAB dis-
cussion.” (quoting In re Huston, 308 F.3d 1267, 1281 (Fed.
Cir. 2002))).
The Director also argues the anticipation finding is
supported by substantial evidence because the Board cites
to the Petition’s discussion for these limitations, which in
turn cites to Viken’s expert’s testimony that without shield-
ing, Seppi’s additional detectors would detect radiation
scattered from all sources 16. Oral Arg. 16:35–18:052;
J.A. 19; J.A. 971 ¶ 130. But this theory advanced by the
Director pointing to a citation within a citation amounts to
“a reasoned justification for an agency decision that the
agency itself has not given.” Power Integrations, Inc. v. Lee,
797 F.3d 1318, 1326 (Fed. Cir. 2015). The Board’s conclu-
sory assertions and lack of explanation or reasoning do not
allow us to discern whether it followed the proper path. See
2 Available at https://oralarguments.cafc.uscourts.
gov/default.aspx?fl=23-2127_07102025.mp3.
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AMERICAN SCIENCE AND ENGINEERING, INC. v. STEWART 7
In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1335 (Fed.
Cir. 2016).
Because the Board has failed to provide us with reason-
ing that is reviewable on appeal for its finding that Seppi’s
additional detectors detect scattered radiation from sub-
stantially perpendicular pencil beams, we vacate for fur-
ther explanation regarding the Board’s holding that claims
1–4 and 10–13 are anticipated by Seppi. We vacate the
Board’s holding that claims 5–9 are obvious based on Seppi
in combination with other references for the same reasons.
CONCLUSION
We have considered AS&E’s remaining arguments and
find them unpersuasive. We vacate the Board’s holdings
that claims 1–4 and 10–13 are unpatentable as anticipated
by Seppi and claims 5–9 are unpatentable as obvious in
view of Seppi and Chalmers or Grodzins. We remand for
further proceedings consistent with this opinion.
VACATED AND REMANDED
COSTS
No costs.
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