Carl Zeiss Microscopy GmbH

Patent Trials and Appeals BoardOct 23, 2020

15788918 - (D) (P.T.A.B. Oct. 23, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/788,918 10/20/2017 Ralf Steinmeyer WEBE-0088-CON 4390 23550 7590 10/23/2020 HOFFMAN WARNICK LLC 540 Broadway 4th Floor Albany, NY 12207 EXAMINER NGUYEN, KATHLEEN V ART UNIT PAPER NUMBER 2486 NOTIFICATION DATE DELIVERY MODE 10/23/2020 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): PTOCommunications@hoffmanwarnick.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RALF STEINMEYER, PETER SCHOEN, MATTHIAS LANGHORST, and CORNELIA BENDLIN Appeal 2020-001085 Application 15/788,918 Technology Center 2400 Before ALLEN R. MACDONALD, BRADLEY W. BAUMEISTER, and ADAM J. PYONIN, Administrative Patent Judges. PYONIN, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s rejection. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Herein, “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Carl Zeiss Microscopy GmbH. Appeal Br. 1. Appeal 2020-001085 Application 15/788,918 2 STATEMENT OF THE CASE Introduction The Application is directed to a “light microscope . . . suited in particular for the examination of specimens which changes the phase of light traversing the specimen.” Spec. ¶ 3. Claims 1–20 are pending; claims 1 and 14 are independent. Appeal Br. 17–26. Claim 1 is reproduced below for reference (emphasis added): 1. A method for recording images with a light microscope, comprising: arranging a specimen container with a specimen on a specimen holder of the light microscope, guiding illuminating light onto the specimen, bringing a diaphragm for restricting the illuminating light into an optical path of the illuminating light, calculating a phase contrast image based on a difference between brightness values of image pixels of an illuminated specimen region of a first image and an illuminated specimen region of a second image, wherein the illuminated specimen region of the first image is identical to the illuminated specimen region of the second region, and wherein the illuminated specimen region of the first image and the illuminated specimen region of the second region are illuminated with different diaphragm settings in a pupil plane, for a limited cross-sectional region of the illuminating light which is defined by a wall of the specimen container, those diaphragm settings are determined and set as diaphragm settings, in which the diaphragm covers equal sized portions of the limited cross-sectional region, wherein the illuminating light is restricted to the limited cross-sectional region by the wall of the specimen container, in a cross-section transverse to an optical axis of the light microscope. Appeal 2020-001085 Application 15/788,918 3 References and Rejections2 The Examiner relies on the following prior art: Name Reference Date Shimizu US 6,067,135 May 23, 2000 Kojima US 2002/0090218 A1 July 11, 2002 Fukushima US 2003/0030902 A1 Feb. 13, 2003 Kaneda US 2004/0207915 A1 Oct. 21, 2004 Ishiwata US 2005/0168808 A1 Aug. 4, 2005 Schwertner US 2009/0168158 A1 July 2, 2009 Ryu US 2009/0180179 A1 July 16, 2009 Jiang US 2010/0182427 A1 July 22, 2010 Weiss US 2012/0086795 A1 Apr. 12, 2012 Claims 1, 3, 4, 9–11, 14–16, and 18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Jiang in view of Ishiwata. Final Act. 9. Claim 2 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Jiang and Ishiwata in view of Fukushima. Final Act. 22. Claims 5, 8, and 17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Jiang and Ishiwata in view of Weiss. Final Act. 23. Claims 6 and 7 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Jiang, Ishiwata, and Weiss in view of Schwertner. Final Act. 26. Claim 12 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Jiang and Ishiwata in view of Kaneda. Final Act. 28. Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Jiang and Ishiwata in view of Kojima and Ryu. Final Act. 29–30. 2 In the Answer, the Examiner withdraws the Final Action’s written description and indefiniteness rejections. See Ans. 5. Appeal 2020-001085 Application 15/788,918 4 Claim 19 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Jiang and Ishiwata in view of Shimizu. Final Act. 32. Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Jiang and Ishiwata in view of Schwertner. Final Act. 33. ANALYSIS Appellant argues the Examiner’s obviousness rejection is in error, because the cited references do not teach the claim 1 requirement that “two images are recorded in which the illuminated regions in the specimen plane are identical[,] but the diaphragm settings in the pupil plane are different.” Appeal Br. 13. Appellant contends that, in contrast with claim 1, Jiang teaches “different specimen regions are illuminated for different image recordings.” Id. at 11 (emphasis omitted). Appellant further contends “there is no obvious modification of Jiang, . . . in view of Ishiwata, that would lead to the subject-matter of claim[] 1,” because “Ishiwata uses the same diaphragm setting for recording the images used for calculating a phase contrast image.” Id. at 15, 16. Claim 1 recites, inter alia, “wherein the illuminated specimen region of the first image is identical to the illuminated specimen region of the second region, and wherein the illuminated specimen region of the first image and the illuminated specimen region of the second region are illuminated with different diaphragm settings in a pupil plane.” Appeal Br. 17. The Examiner finds Jiang teaches this limitation because “as long as a reference has a portion of a specimen region illuminated in a first image that is also illuminated in a second image, the reference meet[s] the limitation of [the] claims,” and because Jiang teaches that portions of Appeal 2020-001085 Application 15/788,918 5 illuminated regions will overlap when the diaphragm settings are changed. Ans. 6; Jiang Figs. 10A, 10B (depicting a portion of a sample well 80 that is illuminated under two different relative positions of a diaphragm aperture 96). We find the Examiner’s construction to be in error. Particularly, we disagree with the Examiner that only “portions” of an illuminated specimen region are required to be identical under the claim. Contra Final Act. 3; see In re Man Mach. Interface Techs. LLC, 822 F.3d 1282, 1287 (Fed. Cir. 2016) (“[T]he proper BRI construction is not just the broadest construction, but rather the broadest reasonable construction in light of the specification.” (emphasis omitted)). Appellant’s Specification explains that a diaphragm is used to vary the brightness of two images of a given illuminated specimen region when calculating a phase contrast image, so that “[d]ifferences in the image brightnesses of the two images recorded in this way are consequently based solely upon the specimen and not upon the position of the specimen container.” Spec. ¶ 142. In contrast with the claimed identical illuminated specimen regions, only a portion of Jiang’s first region is identical to a portion of a second region, such that the brightness of Jiang’s images will be based on the position of the specimen container. See Jiang Figs. 10A, 10B, ¶ 28 (describing the use of a mask (diaphragm) to “illuminate only a part of the sample with direct illumination” at a time, “so that the whole sample can be imaged using a series of images of different parts of the sample”). Jiang’s illuminated regions will contain both identical portions (the overlapping portions) and non-identical portions (the illuminated portions that do not overlap); these illuminated regions—as a whole—are explicitly not identical. See Jiang Figs. 9A–10D. Appeal 2020-001085 Application 15/788,918 6 Thus, we agree with Appellant that Jiang does not teach or suggest “the illuminated specimen region of the first image is identical to the illuminated specimen region of the second region,” as claimed. Appeal Br. 10, 11. To the extent Appellant relies on Ishiwata for the disputed limitation, Appellant persuades us that the Examiner has not established the combination of Jiang and Ishiwata “would . . . have led to the claimed invention.” Appeal Br. 15. The Examiner finds one of ordinary skill would have modified Jiang’s system with phase contrast images based on identical regions, as taught by Ishiwata, “to enable phase object to be observed at a relatively low image formation magnification.” Ans. 9; Final Act. 12. It is unclear, however, why one of ordinary skill would wish to use a low image formation magnification in Jiang’s system, which is not directed to phase contrast microscopy. See Appeal Br. 14, 15; compare Jiang ¶¶ 6, 28, 141, with Ishiwata ¶¶ 3, 19. Absent ex post reasoning, the record provides no rationale to explain why one of ordinary skill would combine Jiang and Ishiwata, as claimed. Accordingly, we find the Examiner has erred in relying on the combination of Jiang and Ishiwata. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”). We do not sustain the Examiner’s obviousness rejection of independent claim 1, of independent claim 14 which recites similar limitations, or the rejections of the claims dependent thereon. Appeal 2020-001085 Application 15/788,918 7 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 4, 9– 11, 14–16, 18 103(a) Jiang, Ishiwata 1, 3, 4, 9– 11, 14–16, 18 2 103(a) Jiang, Ishiwata, Fukushima 2 5, 8, 17 103(a) Jiang, Ishiwata, Weiss 5, 8, 17 6, 7 103(a) Jiang, Ishiwata, Weiss, Schwertner 6, 7 12 103(a) Jiang, Ishiwata, Kaneda 12 13 103(a) Jiang, Ishiwata, Kojima, Ryu 13 19 103(a) Jiang, Ishiwata, Shimizu 19 20 103(a) Jiang, Ishiwata, Schwertner 20 Overall Outcome 1–20 REVERSED