Ex Parte Corwin

Patent Trials and Appeals BoardJan 10, 2019

14634465 - (D) (P.T.A.B. Jan. 10, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/634,465 02/27/2015 6147 7590 01/14/2019 GENERAL ELECTRIC COMPANY GPO/GLOBAL RESEARCH 901 Main Avenue 3rd Floor Norwalk, CT 06851 FIRST NAMED INVENTOR Alex David Corwin 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 277098-1 4305 EXAMINER TORRENTE, RICHARDT ART UNIT PAPER NUMBER 2485 NOTIFICATION DATE DELIVERY MODE 01/14/2019 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): haeckl@ge.com gpo.mail@ge.com Lori.e.rooney@ge.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALEX DAVID CORWIN Appeal2018-005709 Application 14/634,465 1 Technology Center 2400 Before ST. JOHN COURTENAY III, LARRY J. HUME, and JOYCE CRAIG, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134(a) of the Final Rejection of claims 16-24, which are all claims pending in the application. Claims 1-15 are withdrawn from consideration as being directed to non- elected embodiments. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 According to Appellant, the real party in interest is General Electric Company. App. Br. 2. Appeal2018-005709 Application 14/634,465 STATEMENT OF THE CASE2 The Invention Appellant's disclosed embodiments and claimed invention relates to "acquisition of microscopy images, such as of biological or histological samples. More particularly, the disclosed subject matter relates to the calibration and focus of microscopes used in such image acquisition protocols." Spec. ,r 1. Exemplary Claim3 Claim 16, reproduced below, is representative of the subject matter on appeal (emphasis added to contested limitations): 16. A digital microscopy imaging system, comprising: a stage configured to hold a slide; an objective and image sensor configured to acquire images of a portion of the slide, when present; a position controller configured to move one or both of the objective and the stage relative to one another in accordance with an imaging protocol; a controller configured to control operation of one or both of the position controller and the image sensor; a laser autofocuser configured to emit a ranging beam toward the stage; 2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed Jan. 18, 2018 ); Reply Brief ("Reply Br.," filed May 11, 2018 ); Examiner's Answer ("Ans.," mailed Mar. 13, 2018 ); Final Office Action ("Final Act.," mailed June 15, 2017 ); and the original Specification ("Spec.," filed Feb. 27,2015 ). 3 Claims 1-15 were withdrawn by the Examiner as being directed to a nonelected embodiment, and the Examiner indicated these claims should be cancelled. Final Act. 2. 2 Appeal2018-005709 Application 14/634,465 a memory storing one or more routines; and a processing component configured to execute the one or more routines stored in the memory, wherein the one or more routines, when executed by the processing component, cause acts to be performed comprising: acquiring a plurality of autofocus measurements using the laser autofocuser, wherein autofocus measurements are acquired at different fixed locations relative to the slide, when present, by scanning the laser autofocuser through transition interfaces at each of the different fixed locations, and wherein the fixed locations are independent of the presence or absence of a tissue sample at the fixed locations; determining at least one of a slide top or a slide bottom at each of the different fixed locations based on the autofocus measurements; fitting a surface to the plurality of autofocus measurements; and based on the fit of the surface to the plurality of autofocus measurements, deriving a measure of the tilt of the slide relative to the slide holder. Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Zahniser US 2012/0194729 Al Hayashi et al. ("Hayashi") US 2015/0330776 Al Bouzid et al. ("Bouzid") US 2016/0069808 Al 3 Aug. 2, 2012 Nov. 19, 2015 Mar. 10, 2016 Appeal2018-005709 Application 14/634,465 Rejections on Appeal RI. Claims 16-19 and 21 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over the combination of Zahniser and Bouzid. Ans. 2. R2. Claims 20 and 22-24 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over the combination of Zahniser, Bouzid, and Hayashi. Ans. 5. ISSUES AND ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellant. To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. 37 C.F.R. Â§ 4I.37(c)(l)(iv). Based upon our review of the record, we find a preponderance of the evidence supports particular arguments advanced by Appellant with respect to claims 16-24 for the specific reasons discussed below. We highlight and address specific findings and arguments for emphasis as follows. 1. Â§ 103 Rejection RI of Claims 16-19 and 21 Issue 1 Appellant argues (App. Br. 6-12; Reply Br. 2---6) the Examiner's rejection of claim 16 under 35 U.S.C. Â§ I03(a) as being obvious over the combination of is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests a system that includes, inter alia, the limitations of acquiring a plurality of autofocus measurements using the laser autofocuser, wherein autofocus measurements are acquired at 4 Appeal2018-005709 Application 14/634,465 different fixed locations relative to the slide, when present, by scanning the laser autofocuser through transition interfaces at each of the different fixed locations, and wherein the fixed locations are independent of the presence or absence of a tissue sample at the fixed locations; [and] determining at least one of a slide top or a slide bottom at each of the different fixed locations based on the autofocus measurements, as recited in claim 16? Analysis Appellant submits Zahniser and Bouzid, alone or in hypothetical combination, fail to teach or suggest at least the features of "wherein autofocus measurements are acquired at different fixed locations relative to the slide, when present, by scanning the laser autofocuser through transition interfaces at each of the different fixed locations, and wherein the fixed locations are independent of the presence or absence of a tissue sample at the fixed locations," as recited by the independent claim 16. App. Br. 7. Appellant argues Zahniser does not teach or suggest "wherein the fixed locations are independent of the presence or absence of a tissue sample at the fixed locations." App. Br. 9. Appellant contends Zahniser teaches using a "stack" of tissue samples, where "a representative stack is scored for focus quality of the imaged tissue sample, and an ideal focal distance is determined for the location based on the focus score." App. Br. 7. Appellant argues Zahniser's focus score "appears to measure the quality of focus of an image of the sample tissue in such manner that requires a sample tissue to be present." App. Br. 8. 5 Appeal2018-005709 Application 14/634,465 In contrast, the Examiner finds Zahniser' s transition interface (e.g. measuring the surface of the slide 130 in ,r [0026]) teaches the disputed limitation "independent of the presence or absence of a tissue sample." Ans. 7, Final Act. 3, citing Fig. 2, box 210. However, Appellant argues Zahniser's par. 26 "discusses determining optimal or ideal focal distances for different locations of a sample being imaged." Reply Br. 2. In particular, Appellant persuasively argues: Zahniser teaches an approach whereby multiple images, i.e., a "stack" of images of a tissue sample, wherein the "stacks" of images are referred to as being of the illuminated specimen, are optically acquired using the system imaging optics at different focal lengths at a number of locations on a slide. See Zahniser, paragraph [0004], [0032]. Thus, Zahniser does not appear to teach acquiring autofocus measurements by scanning a laser autofocuser through transition interfaces at fixed locations relative to the slide, wherein the fixed locations scanned are independent of the presence or absence of a tissue sample at the locations, as recited in independent claim 16. Reply Br. 4. We disagree with the Examiner because we do not find the cited portions of Zahniser teach or suggest the disputed limitation "independent of the presence or absence of a tissue sample," as recited in claim 16. Therefore, for essentially the same reasons argued by Appellant, we reverse the Examiner's rejection of independent claim 16, and also reverse Rejection RI of claims 17-19 and 21 that depend therefrom. 4 4 Because we agree with at least one of the dispositive arguments advanced by Appellant, we need not reach the merits of Appellant's other arguments. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) 6 Appeal2018-005709 Application 14/634,465 2. Â§ 103 Rejection R2 of Claims 20 and 22-24 Because we have reversed the Examiner's rejection of independent claim 16 under Rejection RI, we also reverse Rejection R2 of claims 20 and 22-24, which depend therefrom. On this record, the Examiner has not shown that the cited tertiary reference (Hayashi) overcomes the aforementioned deficiency with the base combination of Zahniser and Bouzid. CONCLUSION The Examiner erred with respect to obviousness Rejections RI and R2 of claims 16-24 under 35 U.S.C. Â§ I03(a) over the cited prior art combinations of record, and we do not sustain the rejections. DECISION We reverse the Examiner's decision rejecting claims 16-24. REVERSED (finding an administrative agency is at liberty to reach a decision based on "a single dispositive issue"). 7