HOLOGIC, INC.Download PDFPatent Trials and Appeals BoardMay 3, 20212020000070 (P.T.A.B. May. 3, 2021) Copy Citation 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. Appeal 2020-000070 Application 15/419,018 2 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 Appeal 2020-000070 Application 15/419,018 3 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 Appeal 2020-000070 Application 15/419,018 4 [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. Appeal 2020-000070 Application 15/419,018 5 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 Appeal 2020-000070 Application 15/419,018 6 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. Appeal 2020-000070 Application 15/419,018 7 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. Appeal 2020-000070 Application 15/419,018 8 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 Appeal 2020-000070 Application 15/419,018 9 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 Appeal 2020-000070 Application 15/419,018 10 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. Appeal 2020-000070 Application 15/419,018 11 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 Appeal 2020-000070 Application 15/419,018 12 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 Appeal 2020-000070 Application 15/419,018 13 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. Appeal 2020-000070 Application 15/419,018 14 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 Copy with citationCopy as parenthetical citation