Ex Parte Kottig

Patent Trial and Appeal BoardMar 18, 2016

12309445 (P.T.A.B. Mar. 18, 2016)

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. 12/309,445 01/16/2009 Karsten Kottig 175.8873USU 4275 27623 7590 03/21/2016 OHLANDT, GREELEY, RUGGIERO & PERLE, LLP ONE LANDMARK SQUARE, 10TH FLOOR STAMFORD, CT 06901 EXAMINER YEH, EUENG NAN ART UNIT PAPER NUMBER 2669 MAIL DATE DELIVERY MODE 03/21/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KARSTEN KOTTIG ____________ Appeal 2014-002383 Application 12/309,445 Technology Center 2600 ____________ Before DAVID M. KOHUT, CATHERINE SHIANG, and MONICA S. ULLAGADDI, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1 and 4–16.1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE The present invention relates to analyzing chemical or biological samples. See generally Spec. 1. Claim 1 is exemplary: 1. An analysis method for chemical and/or biological samples, said method including the following steps: 1 Claims 2 and 3 were cancelled. See Final Rej. 2. Appeal 2014-002383 Application 12/309,445 2 taking a sample image, said sample image comprising a plurality of pixels, generating analysis data per pixel, determining pixels of interest for the analysis, and evaluating the generated analysis data per pixel of interest by fluctuation analysis procedures, whereby said analysis data are generated during said taking of the sample image and comprise pixel information resolved into time series, said pixel information being used for evaluation on the basis of a fluctuation analysis procedure and whereby pixel types are determined in dependence on subcellular structures and the analysis data of a plurality of pixels of the same pixel type are combined into group analysis data to be evaluated together. References and Rejections Libutti US 2005/0136006 A1 June 23, 2005 Wang US 2005/0260654 A1 Nov. 24, 2005 Watanabe US 2006/0262301 A1 Nov. 23, 2006 Moradi US 2010/0063393 A1 Mar. 11, 2010 Claims 1, 5, 6, and 10–16 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Watanabe and Wang. See Final Act. 2–8. Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Watanabe, Wang, and Libutti. See Final Act. 8–9. Claims 7–9 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Watanabe, Wang, and Moradi. See Final Act. 10–12. PRINCIPLES OF LAW “[W]hen the prior art teaches away from combining certain known elements, discovery of a successful means of combining them is more likely to be nonobvious.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (citation omitted). Appeal 2014-002383 Application 12/309,445 3 “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (citation omitted). The “mere disclosure of alternative designs does not teach away’” and “just because better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes.” In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (citations omitted). Although a reference that teaches away is a significant factor to be considered in determining unobviousness, the nature of the teaching is highly relevant, and must be weighed in substance. A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). ANALYSIS The Obviousness Rejection Claims 1 and 4–16 On this record, we find the Examiner did not err in rejecting claim 1. We disagree with Appellant’s arguments (App. Br. 3–6), and agree with and adopt the Examiner’s findings and conclusions on pages 3–5 of the Answer as our own. Therefore, we limit our discussion to the following points for emphasis. Appellant contends neither Watanabe nor Wang teaches “the analysis data of a plurality of pixels of the same pixel type are combined into group Appeal 2014-002383 Application 12/309,445 4 analysis data to be evaluated together,” as recited in claim 1 (emphasis added). In particular, Appellant argues: Watanabe teaches to calculate the individual correlation functions for each pixel separately . . . . . . Watanabe discloses that an object is to provide a fluorescence correlation spectroscopy analyzer that enables fluorescence correlation spectroscopy analysis to be performed simultaneously on multiple points of a measured sample at high speed. . . . Further, Watanabe discloses that determining autocorrelation functions from the temporal variations, measurement data D can be obtained simultaneously for all of the pixels in the fluorescence incidence region 32 a (FIG.4C). . . . . . . . the combination of data would slow the device of Watanabe down, rendering it unsuitable for its intended purpose. The advantages of the claimed grouping pixel data into group analysis data before performing an analysis are highlighted e.g.[,] on page 6 (last paragraph) of the present application, which are not disclosed or suggested by Watanabe. [In Wang,] there is no teaching or suggestion to combine analysis data from pixels of the same type into a group analysis. App. Br. 4–5. Appellant also asserts Watanabe teaches away from the combination. See App. Br. 6. Appellant has not persuaded us of error. It is well established that during examination, claims are given their broadest reasonable interpretation consistent with the specification, but without importing limitations from the specification. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Appellant does not advance a specific definition for Appeal 2014-002383 Application 12/309,445 5 any claim element of the disputed claim limitation. Therefore, under the broadest reasonable interpretation, the claim element “analysis data . . . are combined into group analysis data to be evaluated together” does not require the analysis data to be mixed together for evaluation. Instead, the broadest reasonable interpretation of that element encompasses the analysis data being combined into a group, and individual sample points being evaluated simultaneously and in parallel. As a result, Appellant has not shown the Examiner’s mapping is overly broad, unreasonable, or inconsistent with the Specification, as discussed below. It is undisputed Watanabe teaches the claim element “the analysis data of a plurality of pixels.” See Ans. 3–4; App. Br. 4. The Examiner reasonably finds that Watanabe teaches the claim element “are combined into group analysis data to be evaluated together.” See Ans. 3–4; Watanabe ¶ 55 (“since fluorescence correlation spectroscopy analysis of multiple points of the measured sample S can be performed simultaneously . . . fluorescence correlation spectroscopy analysis can be performed simultaneously on a certain region of the measured sample S. The movement of substances inside a cell can thus be evaluated and several types of samples can be analyzed in vitro simultaneously”) (emphases added). The Examiner reasonably interprets the claim element “data are combined into group analysis data to be evaluated together” to encompass Watanabe’s teaching of analyzing multiple points of sample S simultaneously. As explained above, such simultaneous analysis meets the broad requirement of “group analysis” and “evaluated together.” See Ans. 3–4. The Examiner further finds—and Appellant does not dispute—Wang teaches the claim element “the same pixel type.” See Ans. 5; Wang ¶¶ 20, Appeal 2014-002383 Application 12/309,445 6 40. Therefore, the Examiner correctly finds Watanabe and Wang collectively teach “the analysis data of a plurality of pixels of the same pixel type are combined into group analysis data to be evaluated together,” as required by claim 1. See Ans. 3–5. Combining Wang’s same pixel type technique in the Watanabe method would have predictably used prior art elements according to their established functions—an obvious improvement. See KSR, 550 U.S. at 417. Further, arguing a system is unsatisfactory for its intended use is a “teach[] away” argument. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (“French teaches away from the board’s proposed modification” because “if the French apparatus were turned upside down, it would be rendered inoperable for its intended purpose.”). Appellant’s arguments that the proposed modification would render Watanabe unsuitable for its intended purpose and Watanabe teaches away from the proposed combination (App. Br. 5–6) are unpersuasive, as they lack adequate analysis under the case law. Appellant fails to assert—let alone show—one skilled in the art “‘would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.’” Kahn, 441 F.3d at 990. Accordingly, we sustain the Examiner’s rejection of claim 1, and claims 4–5, and 10–16 for similar reasons. Dependent Claims 6–9 In response to Appellant’s arguments (discussed below), the Examiner provides findings showing the cited references collectively teach the disputed claim limitations. See Ans. 5–7. Appellant fails to adequately Appeal 2014-002383 Application 12/309,445 7 respond to such findings and therefore, fails to show specific fault in the Examiner’s findings. See In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court [or this Board] to examine the claims in greater detail than argued by an appellant, looking for [patentable] distinctions over the prior art.”). Further, Appellant’s arguments are unpersuasive for the following additional reasons. Regarding claim 6, with respect to the claim limitation “combined into group analysis data by adding the time series acquired for multiple pixels,” Appellant argues Watanabe’s disclosure differs from an example of the Specification. See App. Br. 7–8. Appellant’s argument is unpersuasive because Appellant compares an example from the Specification—not the disputed claim limitation—with Watanabe’s teachings. Further, the Examiner cites Watanabe’s formula (Ans. 5; Watanabe ¶ 95 (citing Figs. 1, 8-9)) for teaching the disputed claim limitation, and Appellant fails to squarely respond to such finding. In particular, Appellant’s argument that “Watanabe merely discloses that Figure 8 is a graph showing an example of the variation in time of the fluorescence intensity detected by the CCD camera. . . . the data of Figure 8 is then autocorrelated using the function of Figure 9” (App. Br. 7) does not specifically address Watanabe’s formula cited by the Examiner, and does not adequately explain why the Examiner’s finding is unreasonable. See Baxter Travenol Labs., 952 F.2d at 391. Likewise, Appellants’ conclusory assertion that “Watanabe merely discloses autocorrelation but fails to teach . . . claim 6” (App. Br. 9) is insufficient for showing specific fault. Appeal 2014-002383 Application 12/309,445 8 Regarding claims 7–9, Appellant argues that Moradi fails to teach performing statistical analyses per pixel, as required by the claims. See App. Br. 8-10. Appellant contends that contrary to the claim requirement, Moradi teaches performing statistical analyses at a “fixed location.” See App. Br. 8- 10. Appellant’s argument is unpersuasive because the Examiner does not cite Moradi for teaching the claimed “per pixel.” Instead, the Examiner finds—and Appellant does not dispute—that Watanabe teaches the “per pixel” requirement. See Final Act. 3. The Examiner cites Moradi for teaching the claimed histogram and histograms of claim 7, and the combination of Watanabe, Wang, and Moradi for teaching claims 7-9. See Ans. 7. Therefore, and for similar reasons discussed above with respect to claim 1, we sustain the Examiner’s rejection of dependent claims 6–9. DECISION The Examiner’s decision rejecting claims 1 and 4–16 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED