HOLOGIC, INC.

Patent Trials and Appeals Board

May 3, 2021

2020000070 (P.T.A.B. May. 3, 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.
15/419,018 01/30/2017 Howard B. Kaufman H2054-702720 9903
105181 7590 05/03/2021
Lando & Anastasi LLP
H2054 - Hologic
60 STATE STREET, 23RD FLOOR
BOSTON, MA 02109
EXAMINER
LEMIEUX, IAN L
ART UNIT PAPER NUMBER
2669
NOTIFICATION DATE DELIVERY MODE
05/03/2021 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):
docketing@lalaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte HOWARD B. KAUFMAN and EILEEN LUDLOW
____________________

Appeal 2020-000070
Application 15/419,018
Technology Center 2600
____________________

Before ALLEN R. MacDONALD, JEAN R. HOMERE, and
ADAM J. PYONIN, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. Final Act. 2. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant identifies the real party in interest as HOLOGIC, INC.
Appeal Br. 2.
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CLAIMED SUBJECT MATTER
FIGURE 1

SUMMARY
Appellant’s claimed subject matter “relates generally to systems and
methods for reviewing and analyzing cytological specimens.” Spec. ¶ 1. In
particular, Appellant explains that:
In FIG[. 1], a first plurality 108 of detailed individual
images, i.e., thumbnail images 110, of OOIs [objects of interest]
(e.g., 112) are displayed in the top window 104 of the display on
the display monitor 100. The first plurality 108 of thumbnail
images 110 is displayed serially, but can be displayed in any
arrangement. The thumbnail images 110 of OOIs (e.g., 112) may
be displayed according to a predetermined ranking of the
likelihoods that each OOI (e.g., 112) has a certain predetermined
characteristic or other user/cytotechnologist selected order. In
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some examples, the display shown on the display monitor is
organized into an upper and lower potion. Within the upper
portion a ranked list of thumbnails of OOIs can be shown (e.g.,
at 108). Users may select images from within a display bar
109. . . . The bottom window 106 of the display monitor 100
displays various images, depending on the mode of the reviewing
device (e.g., 522 of Fig. 5A). The magnification of the displayed
images can be responsive to user selection. For example, the user
may select from “1X,” “4X,” “20X,” and “40X” at 111.
Spec. ¶ 29, Figure 1.
Mouse clicks or touch screen controls, such as single
tapping a thumbnail image of an OOI (e.g., 112), displays a
larger field of view 114 centered on that OOI (e.g., 112). In some
embodiments, the field of view display can be shown in a bottom
window 106 shown on the display monitor 100. The larger field
of view 114 is a more conventional image of the cytological
specimen 412, for example, as may be seen through a
microscope, line scanned, or digitally scanned image.
Spec. ¶ 32, Figure 1.
ILLUSTRATIVE CLAIMS
Claims 1, 2, and 4 are illustrative of the claimed subject matter
(emphasis and bracketed material added):
1. A computer-assisted method of navigating images of a cytological
specimen, comprising the acts of:
[A.] analyzing a first image of the cytological specimen to
identify a plurality of objects of interest within the
cytological specimen;
[B.] displaying a plurality of images each comprising one of the
plurality of identified objects of interest within the
cytological specimen and including a second image of at
least one object of interest; and
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[C.] displaying, responsive to receiving a user selection of the
second image of the at least one object of interest, a field of
view of the at least one object of interest and neighboring
objects of interest,
[i.] wherein the second image of the at least one object of
interest has a first magnification, and
[ii.] wherein the field of view of the at least one object of
interest is displayed at a second magnification different
than the first magnification.
2. The method of claim 1, wherein the second image of the at least
one object of interest is displayed in a scroll bar.
4. The method of claim 1, wherein the field of view is accessed from a
database of cytological specimen images.
Appeal Br. 12 (Claims App.).

REFERENCES2
The Examiner relies on the following references:
Name Reference Date
Doerrer US 2007/0076983 A1 Apr. 5, 2007
Yamada US 2009/0191585 A1 July 30, 2009
Zahniser US 2013/0002847 A1 Jan. 3, 2013
Kamath US 2013/0290225 A1 Oct. 31, 2013
Morrison US 2014/0267672 A1 Sept. 18, 2014

Eichhorn et al. (“Internet-Based Gynecologic Telecytology With
Remote Automated Image Selection: Results of a First-Phase Developmental
Trial”, hereinafter “Eichhorn”).

2 All citations herein to patent and pre-grant publication references are by
reference to the first named inventor only.
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REJECTIONS
A.
The Examiner rejects claims 1, 4, 9, 10, 11, 14, 19, and 20, under
35 U.S.C. § 103(a) as being unpatentable over the combination of Doerrer
and Kamath. Final Act. 5–9.
Appellant argues separate patentability for claim 1. Appeal Br. 10–
14. We select claim 1 as the representative claim for this rejection. Except
for our ultimate decision, we do not address the merits of the § 103(a)
rejection of claims 4, 9, 10, 11, 14, 19, and 20 further herein.
B.
The Examiner rejects claims 2 and 12, under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Doerrer, Kamath, and Eichhorn.
Final Act. 9–10.
The Examiner rejects claims 3 and 13, under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Doerrer, Kamath, and Yamada.
Final Act. 10–12.
The Examiner rejects claims 5, 6, 8, 15, 16, and 18, under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Doerrer, Kamath,
and Zahniser. Final Act. 12–13.
The Examiner rejects claims 7 and 17, under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Doerrer, Kamath, Zahniser, and
Morrison. Final Act. 13–14.
To the extent that Appellant discusses claims 2, 3, 5–8, 12, 13, and
15–18, Appellant merely references the arguments directed to claim 1.
Appeal Br. 10–11. Such a referenced argument (or repeated argument) is
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not an argument for “separate patentability.” Thus, the rejections of these
claims turn on our decision as to claim 1. Except for our ultimate decision,
we do not address the merits of the § 103(a) rejection of claims 2, 3, 5–8, 12,
13, and 15–18 further herein.
C.
The Examiner rejects claims 1–20 “on the ground of nonstatutory
double patenting as being unpatentable over the claims of U.S. Patent No.
9,646,376, hereinafter Kaufman376.” June 8, 2018 Non-final 3–7.
Appellant does not present arguments for this nonstatutory double
patenting rejection of claims 1–20. “An appeal, when taken, is presumed
to be taken from the rejection of all claims under rejection.” 37 C.F.R.
§ 41.31(c). Because Appellant does not identify any error in Examiner’s
rejection of claims 1–20 under nonstatutory double patenting, we summarily
sustain this rejection in this proceeding. Except for our ultimate decision,
we do not discuss the merits of this rejection of these claims further herein.

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OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
Appeal Brief and Reply Brief arguments.
A. Doerrer - US 2007/0076983 A1
A.1. Figure 2

A.2. Paragraphs 28–29 In Part
The computer device 300 can, in some instances,
continuously display[] the POV image 340 on the visual display
325. The previously-scanned images of the objects of interest
330 associated with that slide 350 may also be displayed
alongside the POV image 340 on the visual display 325, or
otherwise visually provided to the operator, as shown, for
example, in FIG. 2.
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Doerrer ¶ 28 (emphasis added), Figures 1 and 2.
As such, when the desired first object of interest image is
selected by the operator from the visual display 325, or from
another visual display device (not shown), the stored coordinates
for that first object of interest are associated with the scan
coordinate system. The system 50 must therefore reconcile the
scan coordinate system with the stage coordinate system so as to
re-locate that first object of interest in the POV shown on the
visual display 325.
Doerrer ¶ 29 (emphasis added), Figures 1 and 2.

B. Claim 1
Before addressing Appellant’s arguments, we note that Appellant’s
introductory statement as to claim 1 is not commensurate with the scope of
claim 1. Appellant states
[T]he computer-assisted method of claim 1 [is] directed to a
completely digital system that digitally captures a first image of
a cytological specimen at a certain magnification, digitally
processes the first image of the cytological specimen to identify
a plurality of objects of interest within the first image of the
cytological specimen, automatically displays a plurality of
images each comprising one of the identified objects of interest
within the cytological specimen and a second image of at least
one of the identified objects of interest, and in response to a user
of the system selecting one of the plurality of images,
automatically displays an image that includes the object of
interest in the context of neighboring objects of interest.
Appeal Br. 4 (emphasis added). We do not find the terms “digital,”
“digitally,” and “automatically” set forth in claim 1. Nor do we find a
requirement that the method be “completely digital” (or any similar
requirement). At most, claim 1 merely requires that some unspecified aspect
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of the method be “computer-assisted.” Claim 1 preamble. Further, we do
not find the “captures” function set forth in claim 1.
B.2.
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103.
It is well settled that that a combination of references is
improper if the combination would render the primary reference
unsatisfactory for its intended purpose. MPEP 2143.01(V); In re
Ratti, 270 F.2d 810 (CCPA 1959). The asserted combination of
Doerrer and Kamath is improper because the proposed
modification of Doerrer asserted by the Examiner would render
Doerrer unsatisfactory for its intended purpose.
. . . [T]he combination is improper at least because
Doerrer discloses that, when a user selects an object of interest
330 for relocation, either the magnification of the image of the
object of interest 330 or the magnification of the field of view
(POV) 340 is scaled to be identical to the other magnification.
Scaling the magnifications to be identical is necessary to execute
the correlation procedure. (¶ 39). The correlation procedure is
an image analysis technique that aims to maximize a correlation
between the image of the object of interest 330 and the POV 340
in order to identify a match between the two, and thus requires
that the magnifications be identical to execute the correlation
procedure. Accordingly, Applicant previously argued that it
would not be obvious to modify Doerrer to make the
magnification of the image of the object of interest 330 different
than the magnification of the POV 340, because doing so is in
direct contradiction to the requirement of scaling the
magnifications to be identical and would render the correlation
procedure inoperable.
Appeal Br. 5.
We are unpersuaded by Appellant’s argument being directed to
Doerrer’s disclosure of (a) a magnification of stored images of objects of
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interest (i.e., plural objects in a field of view FOV) and (b) an active
microscope magnification used by the system 50 (i.e., active input of images
of objects of interest in a FOV). In Doerrer, “the larger of the two
magnifications is scaled so as to correspond to the magnification of the
lesser-magnified image prior to the correlation procedure.” Doerrer 39
(emphasis added). Although the Examiner’s rejection points out this aspect
of Doerrer (Final Act. 7), the rejection of claim 1 is not founded on these
two magnifications.
Rather, the Examiner points to Doerrer’s further disclosure of (c) a
magnification of a second image of an object of interest displayed in a grid
of six such objects at Doerrer’s figure 2.
[0011] “the operator may be allowed to select a desired object of
interest from a visual display of objects of interest in the sample”
more specifically that selection of object of interest 330 as
described in [0027-0028] - see that lower right of the six that is
exploded out from the others in Figure 2).
Final Act. 6 (Original emphasis omitted, Panel emphasis added). In
addition, the Examiner reasons that it would have been obvious based on
Kamath to modify Doerrer to include (d) a change of magnification of the
post-correlation displayed FOV image 340 of Doerrer’s figure 2.
The foundation of the Examiner’s rejection is image magnifications (c) and
(d), not magnifications (a) and (b) as argued by Appellant. Contrary to
Appellant’s argument which conflates (a) and (b) with (c) and (d), the
correlation procedure is not rendered inoperable as the correlation procedure
is unchanged by the Examiner’s proposed post-correlation magnification.
See the Examiner’s discussion at page 6 of the Examiner’s Answer.
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B.2.
Also, Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103.
[In Doerrer], the correlation procedure is initiated
responsive to a user selection of an image. Whatever may occur
“in between thumb selections” is not relevant to a claim
limitation that expressly recites an act “responsive to receiving a
user selection of the second image of the at least one object of
interest.” Doerrer discloses that, once a “thumb selection” is
performed, any difference in magnification must be eliminated
before the correlation procedure may be executed.
Appeal Br. 6.
The Examiner’s line of reasoning would appear to be
premised on the suggestion that any action at all performed
subsequent to receiving a user selection is considered to be
“responsive to receiving a user selection, as long as the FOV 340
remains centered on the same location.” Applicant cannot agree
with this premise, and thus, cannot agree that any proposed
change to the “active zoom” is executed responsive to receiving
a user selection merely because a user selection of an image,
causally unconnected to the change in zoom, occurred at some
point in the past.
Appeal Br. 7 (emphasis added).
As noted above, the Examiner correctly points out that,
prior to executing the correlation procedure, the magnification of
the image of the object of interest 330 may differ from the
magnification of the FOV 340. Thus, the Examiner is referring
to portions of Doerrer which precede the relocation of the
selected object of interest. However, the limitation of claim 1
that the Examiner regards as obvious in view of Doerrer recites,
“displaying, responsive to receiving a user selection of the
second image of the at least one object of interest, a field of
view of the at least one object of interest and neighboring objects
of interest.” Thus, the portions of Doerrer which precede the
correlation procedure - and thus precede the magnifications
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being scaled to be identical to one another - are not relevant to
teaching the foregoing feature of claim 1.
Appeal Br. 7.
Doerrer does not disclose that the POV 340 pictured in FIG. 2 is
displayed in response to selecting the object of interest 330.
Appeal Br. 8.
We are not persuaded by Appellant’s argument. First, we agree with
the Examiner that Doerrer discloses “displaying, responsive to receiving a
user selection of the second image of the at least one object of interest, a
field of view of the at least one object of interest and neighboring objects of
interest”:
Even though the approximate current position of the FOV
with respect to the slide 350 can be determined, the stage
coordinate system does not necessarily correspond to the scan
coordinate system associated with the previously scanned slide.
. . . As such, when the desired first object of interest image is
selected by the operator from the visual display 325, or from
another visual display device (not shown), the stored coordinates
for that first object of interest are associated with the scan
coordinate system. The system 50 must therefore reconcile the
scan coordinate system with the stage coordinate system so as to
re-locate that first object of interest in the FOV shown on the
visual display 325. Accordingly, since the approximate current
position of the FOV is known with respect to the slide 350 from
the stage coordinate system, the system 50 is configured to move
the slide 350 to an estimated coordinate position of the FOV,
corresponding to the coordinates of the selected first object of
interest transferred into the stage coordinate system.
Doerrer 29 (emphasis added). Thus, the selection of the desired object of
interest causes a change from an initial current FOV to a relocated FOV.
Second, Appellant argues (“Applicant cannot agree”) that it would not
have been obvious to include a magnification of the FOV subsequent to the
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correlation (following the relocation) “responsive to [the] user selection” as
required by claim 1. Appeal Br. 7. As discussed supra, we determine that
the Examiner has shown that it would have been obvious to include in
Doerrer a change of magnification of the post-correlation displayed FOV
image 340. Further, we determine that the Examiner has shown that it is
known to use a selection to cause an action to occur (change from an initial
current FOV to a relocated FOV). Furthermore, we determine that an artisan
would understand this type of selection to cause an action process is
applicable to other actions such as the magnification of the post-correlation
displayed FOV image 340.
[I]f a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).

CONCLUSION
The Examiner has not erred in rejecting claims 1–20 as being
unpatentable under 35 U.S.C. § 103(a).
The Examiner’s rejections of claims 1–20 as being unpatentable under
35 U.S.C. § 103(a) are affirmed.
The Examiner’s rejection of claims 1–20 on the ground of
nonstatutory double patenting is affirmed.
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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4, 9, 10,
11, 14, 19,
20
103(a) Doerrer, Kamath 1, 4, 9, 10,
11, 14, 19,
20

2, 12 103(a) Doerrer, Kamath,
Eichhorn
2, 12
3, 13 103(a) Doerrer, Kamath,
Yamada
3, 13
5, 6, 8, 15,
16, 18
103(a) Doerrer, Kamath,
Zahniser
5, 6, 8, 15,
16, 18

7, 17 103(a) Doerrer, Kamath,
Zahniser, Morrison
7, 17
1–20 Nonstatutory double
patenting
1–20
Overall
Outcome

1–20
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