Carl Zeiss Microscopy GmbH

Patent Trials and Appeals BoardMay 28, 2021

2020001526 (P.T.A.B. May. 28, 2021)

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. 15/502,187 02/06/2017 Ingo KLEPPE 3081.0550WU1 7918 112610 7590 05/28/2021 Christensen, Fonder, Dardi & Herbert PLLC 11322 86th Ave. N. Maple Grove, MN 55369 EXAMINER LEE, Y YOUNG ART UNIT PAPER NUMBER 2419 NOTIFICATION DATE DELIVERY MODE 05/28/2021 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): docket@cfd-ip.com patents@cfd-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte INGO KLEPPE, RALF NETZ, JENA, and YAUHENI NOVIKAU ____________________ Appeal 2020-001526 Application 15/502,187 Technology Center 2400 ____________________ Before MARC S. HOFF, ST. JOHN COURTENAY III, and MICHAEL T. CYGAN, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 9 and 10. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appellant’s invention is a method and apparatus for high-resolution scanning microscopy of a sample excited by illumination radiation to emit 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a) (2019). Appellant states that the real party in interest is Carl Zeiss Microscopy GmbH. Appeal Br. 3. Appeal 2020-001526 Application 15/502,187 2 fluorescent radiation. Spec. 6. The illumination radiation is focused to a point in or on the sample. The point is imaged to a diffraction image on a spatially resolving two-dimensional detector in a diffraction-limited manner. Id. A number of Airy disks corresponding to at least two predetermined wavelength ranges are generated on the same two-dimensional detector by means of a spectrally selective element. The Airy disks are offset laterally from one another such that the diffraction image consists of the mutually offset Airy disks. Spec. 6–7. Claim 9 is reproduced below: 1. A microscope for high-resolution scanning microscopy, the microscope comprising: a sample space for receiving a sample which can be excited to emit fluorescent radiation, a lens system comprising a focal plane lying in the sample space and a resolution limit, an illumination device comprising an input for receiving illumination radiation and illuminating the sample space with the illumination radiation via the lens system, wherein the lens system focuses the illumination radiation to a diffraction- limited illumination spot at a point in the focal plane, an imaging apparatus for imaging the point in the focal plane to a diffraction-limited manner through the lens system to a diffraction image on a spatially resolving two-dimensional detector which lies in a detector plane conjugate with the focal plane, wherein the two-dimensional detector has a spatial resolution which resolves a diffraction structure of the diffraction image, a scanning device for displacing the point into various scanning positions with an increment which is smaller than the diameter of the illumination spot, an evaluation device for reading the two-dimensional detector, for evaluating the diffraction structure of the diffraction image from data of the two-dimensional detector and Appeal 2020-001526 Application 15/502,187 3 from the scanning positions assigned to the data and for generating an image of the sample with a resolution which is increased beyond the resolution limit, wherein for the purposes of discriminating between at least two predetermined wavelength ranges in the fluorescent radiation of the sample, the microscope comprises a spectrally selective element which generates a number of Airy disks corresponding to the at least two predetermined wavelength ranges on the two-dimensional detector, the Airy disks being offset laterally from one another such that the diffraction image consists of the Airy disks mutually offset from one another, wherein the two-dimensional detector and the spectrally selective element are formed such that the Airy disks lie completely on the same two-dimensional detector at the same time, and wherein the evaluation device analyzes the Airy disks when generating the image of the sample. Appeal Br. 18–19 (Claims App.). REFERENCES The prior art relied upon by the Examiner as evidence is: Name Reference Date Zimmermann Spectral Imaging and linear Unmixing in light Microscopy, 95 Adv. Biochem/Engin Biotechnol 245–265 2005 Wolleschensky US 9,632,296 B2 Apr. 17, 2017 REJECTIONS Claims 9 and 10 stand rejected under 35 U.S.C. § 103 as being unpatentable over Wolleschensky and Zimmermann. Appeal Br. 8. Throughout this decision, we make reference to the Appeal Brief (“Appeal Br.,” filed Sept. 11, 2019), the Reply Brief (“Reply Br.,” filed Dec. Appeal 2020-001526 Application 15/502,187 4 12, 2019), and the Examiner’s Answer (“Ans.,” mailed Oct. 24, 2019) for their respective details. ISSUE 1. Does the combination of Wolleschensky and Zimmermann teach or suggest a high-resolution scanning microscope that generates Airy disks corresponding to at least two predetermined wavelength ranges on the same two-dimensional detector? 2. Does the Examiner find reasons for combining Wolleschensky and Zimmermann having a rational underpinning to support the legal conclusion of obviousness? ANALYSIS At the outset, we observe that Appellant argues that the Examiner has improperly introduced new grounds of rejection in the Examiner’s Answer without obtaining the approval of the Examining Group Director. Reply Br. 2–5; 37 C.F.R. 41.39. Should an Appellant believe that an Examiner has introduced new grounds of rejection in an Examiner’s Answer, Appellant’s request to seek review must be by petition to the Group Director under 37 C.F.R. 1.181. Failure of an Appellant to timely file such a petition constitutes a waiver of any arguments that a rejection must be designated as a new ground of rejection. 37 C.F.R. 41.40(a). As Appellant chose to file a Reply Brief, rather than petition the Group Director, Appellant’s arguments that the Examiner introduced new grounds of rejection are considered waived. Appellant argues that Wolleschensky does not teach a microscope that generates Airy disks corresponding to two wavelength ranges that lie Appeal 2020-001526 Application 15/502,187 5 completely on the same detector at the same time. Appeal Br. 11. Appellant admits that Wolleschensky teaches a scanning microscope having two discrete two-dimensional detectors that receive individual beam paths. Appeal Br. 13. Appellant contends that the Examiner does not clearly articulate why it would have been obvious to combine Wolleschensky with Zimmermann to obtain the invention under appeal. Appeal Br. 14. Appellant also asserts that Zimmermann teaches sequential imaging of Airy disks onto different detectors. Appeal Br. 15. We are not persuaded by Appellant’s arguments. We agree with the Examiner’s finding that Wolleschensky teaches generating disks corresponding to two wavelength ranges. Ans. 3; Wolleschensky Fig. 6. The Examiner further finds, and we agree, that Zimmermann teaches a comparable process of spectral processing in light microscopy, including a linear mixing and unmixing technique to overlay the Airy disks output to detect a plurality of wavelength ranges at the same time. Ans. 4–5; Zimmermann Fig. 2. The Examiner finds, and we agree, that Zimmermann illustrates that up to three different Airy disks may be generated on the same detector at the same time. Ans. 5; Zimmermann Fig. 2. The Examiner concluded that it would have been obvious to apply spectral processing to generate, overlap, and analyze the different wavelength images “since spectral processing are [sic] necessary and well known techniques for any light microscopy system.” Ans. 4. The Examiner also concluded that Zimmermann’s known improvement of imaging plural Airy disks on the same detector “could have been applied in the same way to the ‘base’ process [of high-resolution scanning microscopy] of Wolleschensky and the results would have been predictable and resulted in Appeal 2020-001526 Application 15/502,187 6 generating Airy disks corresponding to two wavelength ranges that lie completely on the same detector.” Ans. 4. Contrary to Appellant’s contentions, we find the Examiner provided a motivation to combine Wolleschensky and Zimmermann having a rational underpinning to support the Examiner’s conclusion of obviousness. CONCLUSION 1. The combination of Wolleschensky and Zimmermann suggests a high-resolution scanning microscope that generates Airy disks corresponding to at least two predetermined wavelength ranges on the same two-dimensional detector. 2. The Examiner finds reasons for combining Wolleschensky and Zimmermann having a rational underpinning to support the legal conclusion of obviousness. The Examiner’s decision to reject claims 9 and 10 is affirmed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 9, 10 103 Wolleschensky, Zimmermann 9, 10 Appeal 2020-001526 Application 15/502,187 7 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED