JEOL Ltd.

Patent Trials and Appeals Board

Mar 31, 2021

2020003180 (P.T.A.B. Mar. 31, 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.
14/667,746 03/25/2015 Shinichi Tomii 7314-153372 4361
28289 7590 03/31/2021
THE WEBB LAW FIRM, P.C.
ONE GATEWAY CENTER
420 FT. DUQUESNE BLVD, SUITE 1200
PITTSBURGH, PA 15222
EXAMINER
XU, XIAOYUN
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
03/31/2021 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):
patents@webblaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SHINICHI TOMII
____________

Appeal 2020-003180
Application 14/667,746
Technology Center 1700
____________

Before JAMES C. HOUSEL, MONTÉ T. SQUIRE, and
DEBRA L. DENNETT, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to finally reject claims 1 and 4–7, which are all the claims pending
in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 This Decision refers to the Specification filed Aug. 24, 2015 (“Spec.”);
Final Office Action dated July 5, 2019 (“Final Act.”); Advisory Action dated
Oct. 11, 2019 (“Advisory Act.”); Appeal Brief filed Jan. 8, 2020 (“Appeal
Br.”); Examiner’s Answer dated Feb. 5, 2020 (“Ans.”); and Reply Brief filed
Mar. 23, 2020 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies JEOL Ltd. as the real party in interest.
Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The invention relates to an automatic analyzer that causes a specimen
to react with a reagent to thereby analyze components of the specimen, and a
method of displaying a result from such analysis. Spec. 1; Abstract. Claim
1 illustrates the subject matter on appeal and is reproduced below from the
Claims Appendix to the Appeal Brief:
1. An automatic analyzer, comprising:
a specimen-container holding section that holds a
specimen container storing a specimen;
a reagent-container holding section that holds a reagent
container storing a reagent;
a reaction-container holding section that holds a reaction
container in which a reagent taken out from a reagent container
held by the reagent-container holding section and a specimen
taken out from a specimen container held by the specimen-
container holding section are mixed to cause reaction, the
reaction-container holding section formed in a cylindrical-
container shape and holding a plurality of reaction containers
arranged at predetermined intervals in a circumferential direction
thereof, and configured to be rotated in the circumferential
direction thereof such that a specimen taken out from a specimen
container held by the specimen-container holding section and a
reagent taken out from a reagent container held by the reagent-
container holding section are respectively injected into and
mixed at a specified timing, in a reaction container of the
plurality of reaction containers, being held by the reaction-
container holding section;
a measuring section that measures an optical property of
the specimen in the reaction container of the plurality of reaction
containers, being held by the reaction-container holding section,
the specimen having been taken out from a specimen container
held by the specimen-container holding section, injected into and
mixed in the reaction container, with a reagent having been taken
out from a reagent container held by the reagent-container
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holding section and injected into the reaction container, for a
predetermined measurement period, at regular intervals every
time the reaction-container holding section makes one rotation
and thereby the reaction container of the plurality of reaction
containers, being held by the reaction-container holding section
and in which the specimen has been mixed with the reagent,
passes the measuring section, thereby obtaining measurement
data indicating a change over time of the optical property of the
specimen mixed with the reagent in the reaction container of the
plurality of reaction containers, and outputs the obtained
measurement data indicating a change over time of the optical
property of the specimen mixed with the reagent in the reaction
container of the plurality of reaction containers, being held by
the reaction-container holding section;
a recording section that records an actual timing when a
reagent taken out from a reagent container held by the reagent-
container holding section and a specimen taken out from a
specimen container held by the specimen-container holding
section were actually mixed in the reaction container of the
plurality of reaction containers, being held by the reaction-
container holding section, and the measurement data indicating
change over time of the optical property of the specimen mixed
with the reagent in the reaction container of the plurality of
reaction containers, being held by the reaction-container holding
section, and output by the measuring section; and
a display control section that creates a display screen
displaying the measurement data indicating a change over time
of the optical property of the specimen mixed with the reagent in
the reaction container of the plurality of reaction containers,
being held by the reaction-container holding section, output by
the measuring section and recorded in the recording section, in a
form of a measurement-data graph or list indicating a change
over time in the measurement data, and adds, in the graph
displayed on the display screen in which a horizontal axis
represents time and a vertical axis represents absorbance or list
in which the measurement data are listed for respective rounds
of rotation of the reaction-container holding section, a mark in
the form of a line or a nonnumeric symbol indicating the actual
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timing when a reagent taken out from a reagent container held
by the reagent-container holding section and a specimen taken
out from a specimen container held by the specimen-container
holding section were actually mixed in the reaction container of
the plurality of reaction containers, being held by the reaction-
container holding section, the actual timing recorded in the
recording section, such that whether or not the specimen and the
reagent were actually mixed at the specified timing can be
checked on a basis of the display screen, wherein:
the display control section displays, on the display screen,
a button for selecting a displaying-on or displaying-off state of
the mark indicating the actual timing when a reagent taken out
from a reagent container held by the reagent-container holding
section and a specimen taken out from a specimen container
held by the specimen-container holding section were actually
mixed in the reaction container of the plurality of reaction
containers, being held by the reaction-container holding section,
the actual timing recorded in the recording section;
the reagent, which is mixed with the specimen in the
reaction container of the plurality of reaction containers, being
held by the reaction-container holding section, includes a first
reagent and a second reagent;
the mark, which the display control section adds in the
graph or list displayed on the display screen, includes a first
mark indicating an actual timing when the first reagent and the
specimen were actually mixed in the reaction container of the
plurality of reaction containers, being held by the reaction-
container holding section and a second mark indicating an
actual timing when the second reagent and the specimen were
actually mixed in the reaction container of the plurality of
reaction containers, being held by the reaction-container holding
section, and
the button displayed on the display screen includes a first
button for selecting a displaying-on or displaying-off state of
the first mark indicating the actual timing when the first
reagent and the specimen were actually mixed in the reaction
container of the plurality of reaction containers, being held by
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the reaction-container holding section, and a second button for
selecting a displaying-on or displaying-off state of the second
mark indicating the actual timing when the second reagent and
the specimen were actually mixed in the reaction container of
the plurality of reaction containers, being held by the reaction-
container holding section.
Appeal Br. 20–22 (disputed claim language italicized and bolded).

REFERENCES
The Examiner relies on the following prior art reference as evidence in
rejecting the claims on appeal:
Name Reference Date
McNeil et al. (“McNeil”) US 6,746,864 B1 June 8, 2004
Wakatake et al. (“Wakatake”) EP 0303707 A1 Feb. 22, 1989
Macroscopic Urinalysis, Performed Manually Using Bayer Multistix, Austin
Community College, Medical Laboratory Technology
http://www.austincc.edu/mlt/clin1/UrinalysisMacroMultistixFall2011.doc
(2011) (“MLab”).

REJECTION
On appeal, the Examiner maintains the following rejection: claims 1 and 4–7
rejected under 35 U.S.C. § 103(a) as being unpatentable over Wakatake in view of
MLab and McNeil. Ans. 3.

OPINION
Having considered the respective positions the Examiner and Appellant
advance in light of this appeal record, we affirm the Examiner’s rejection based
essentially on the factual findings and reasons the Examiner provides in the
Answer, Advisory Action, and Final Office Action. We add the following
primarily for emphasis.
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The Examiner rejects claims 1 and 4–7 under § 103 as obvious over
Wakatake, MLab, and McNeil. Ans. 3–9. In response, Appellant presents argument
for the patentability of claims 1 and 6 as a group and separate arguments for the
patentability of claim 4 and claim 5, respectively. Appeal Br. 6, 16, 17. We address
these arguments each in turn below.

Claims 1, 6, and 7
Appellant presents argument for the patentability of claims 1 and 6 as a
group, but does not present separate argument for the patentability of claim 7.
Appeal Br. 6, 16. We select claim 1 as representative and claims 6 and 7 stand or
fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner determines that the combination of Wakatake, MLab, and
McNeil suggests a device satisfying the limitations of claim 1 and would have
rendered the claim obvious. Ans. 3–9.
Appellant principally argues the Examiner’s rejection should be reversed
because McNeil does not disclose various elements of the claimed “display control
section.” See generally Appeal Br. 8–16; Reply Br. 1–5. In particular, Appellant
contends McNeil does not disclose “a mark in the form of a line or a nonnumeric
symbol indicating the actual timing when a reagent . . . and a specimen . . . were
actually mixed,” as claimed. Appeal Br. 7–9; see also Reply Br. 1 (arguing
“McNeil does not disclose or hint at displaying a mark or a non-numeric
symbol”).
Appellant argues that although Figure 9C of McNeil discloses a vertical line
to the left of “REACTION ONSET,” there is no disclosure in McNeil that the
vertical line is displayed on interface monitor 403 for the eight sample curves
shown in Figure 9C. Appeal Br. 8.
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Appellant further argues McNeil does not disclose “a button for selecting a
displaying-on or displaying-off state of the mark indicating the actual timing when
a reagent . . . [and a specimen] were actually mixed” in the manner claimed. Id. at
10–11. Appellant contends that, in contrast to the display control section of claim
1, there is no disclosure in McNeil of a button for selecting a displaying-on or
displaying-off state of the vertical line in Figure 9C of McNeil. Id. at 11, 13.
Appellant contends that although McNeil discloses that the user may edit templates
with the push of a button, McNeil does not disclose a button for the specific
purpose of selecting the displaying-on or displaying-off state of a mark that
indicates the actual timing when a reagent and a specimen were mixed, as claimed.
Id. at 13; Reply Br. 3.
Appellant also contends that there would not have been any reason to
modify Wakatake’s automated analyzer in view of McNeil’s disclosure to include
a mark indicating the actual timing when the reagent and the specimen were mixed
because
the operation status and any wait time required for color to be
developed after mixing a reagent with a specimen before colorimetric
measurement can be determined directly from the shapes of the curves
. . . without the addition of a mark indicating the actual timing when the
reagent and the specimen were mixed.
Appeal Br. 15. Additionally, Appellant argues McNeil does not disclose the
recitations “a first mark indicating an actual timing when the first reagent and the
specimen were actually mixed” and “a second mark indicating an actual timing
when the second reagent and the specimen were actually mixed.” Id. at 11–13.
We do not find Appellant’s arguments persuasive of reversible error in the
Examiner’s rejection based essentially on the factual findings and reasons the
Examiner provides at pages 3–9 and 11–15 of the Answer, page 2 of the Advisory
Action, and pages 2–7 of the Final Office Action, which a preponderance of the
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evidence supports. Wakatake, Abstract, 8–10, 12, 15, Fig. 1; MLab 1, 7; McNeil,
Title, Abstract, Fig. 9C, 2:59–66, 6:11–14, 15:39–48, 16:19–21, 16:34–37,
16:38–45.
Rather, on this appeal record, we agree with the Examiner that the
combination of Wakatake, MLab, and McNeil suggests the limitations of claim 1,
including the elements of the “display control section,” and would have rendered
the claim obvious. As the Examiner finds (Ans. 6), McNeil discloses a display
control section with a graphic user interface that creates a display screen displaying
the measurement data indicating a change over time of the optical property of the
specimen mixed with the reagent in the reaction container of the plurality of
reaction containers. McNeil, 15:39–49.
As the Examiner further finds (Ans. 6–7), McNeil discloses a graph
indicating a change over time in the measurement data in which a horizontal axis
represents time and a vertical axis represents absorbance or list in which the
measurement data are listed. McNeil, Fig. 9C, 16:19–21. As the Examiner finds
(Ans. 7), Figure 9C of McNeil displays in real-time a first vertical line (between 0
and 20 time units) that indicates the status of the fluorescent measurement readings
from the samples being tested and when a reagent is actually mixed with a
specimen, i.e., when the reaction is “ONSET.” McNeil, 16:19–21, 16:34–37,
16:38–45. As the Examiner also finds (Ans. 8), McNeil discloses that all of the
protocol design and scheduling tools of the system are created with graphic user
interfaces and run on the user interface controller or a networked machine, and that
the user may edit templates with the use of a button. McNeil, Fig. 9C, 15:39–48.
The Examiner also provides a reasonable basis why one of ordinary skill in
the art would have had reason to combine the teachings of McNeil and Wakatake
to arrive at the display control section elements of the claim. Ans. 7–9. In
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particular, as the Examiner finds and explains (Ans. 8), a person of ordinary skill in
the art would have been motivated to modify Wakatake’s automatic analyzer to
record and display the actual timing when a reagent is actually mixed with a
specimen as McNeil teaches because a necessary wait time is required for the color
to be developed after mixing a reagent with a specimen before obtaining
colorimetric measurement. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420
(2007) (explaining that any need or problem known in the art can provide a reason
for combining the elements in the manner claimed).
As the Examiner determines (Ans. 8–9), in view of McNeil’s disclosures
regarding an automated analyzer having a display control section with graphic user
interfaces, displays on the display screen, and a button for changing display
options, it would have been obvious to one of ordinary skill in the art to have
included a first mark indicating an actual timing when the first reagent and the
specimen were actually mixed in the reaction container; a second mark indicating
an actual timing when the second reagent and the specimen were actually mixed in
the reaction container; a first button for selecting a displaying-on or displaying-off
of state of the first mark; and a second button for selecting displaying-on or
displaying-off state of the second mark in the manner claimed. McNeil, Fig. 9C,
15:39–48, 16:19–21. Indeed, it is well-settled that the addition a known element to
another known in the art is likely to be obvious when it does no more than yield
predictable results. KSR, 550 U.S. at 416 (“The combination of familiar elements
according to known methods is likely to be obvious when it does no more than
yield predictable results.”).
Appellant’s arguments do not reveal reversible error in the Examiner’s
factual findings, analysis, and conclusions.
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Appellant’s arguments that McNeil does not disclose various elements of the
claimed display control section at pages 8–16 of the Appeal Brief and pages 1–5 of
the Reply Brief are not persuasive of reversible error in the Examiner’s rejection
because they are based on what Appellant contends McNeil explicitly discloses or
teaches and not what McNeil’s disclosures would have reasonably suggested to
one of ordinary skill in the art, especially in view of Wakatake’s teachings and
what was known in the prior art. In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979)
(“[A] reference must be considered not only for what it expressly teaches, but also
for what it fairly suggests.”); see also In re Preda, 401 F.2d 825, 826 (CCPA 1968)
(explaining that a prior art reference’s disclosure must be considered for all that it
teaches, including “the inferences which one skilled in the art would reasonably be
expected to draw therefrom”).
For example, Appellant’s contention that McNeil does not disclose “a button
for selecting a displaying-on or displaying-off state of the mark” (Appeal Br. 10) is
not persuasive because although McNeil may not explicitly disclose a button for
selecting a displaying-on or displaying-off state of the mark, as the Examiner
determines (Ans. 8–9), it would have been obvious to one of ordinary skill in the
art to have arrived at that limitation of the claim based on what McNeil’s
disclosure fairly suggests, which a preponderance of the evidence supports.
Burckel, 592 F.2d at 1179.
We do not find persuasive Appellant’s contentions that McNeil does not
disclose “a first mark indicating an actual timing when the first reagent and the
specimen were actually mixed” and “a second mark indicating an actual timing
when the second reagent and the specimen were actually mixed” (Appeal Br.
11–13) for essentially the same reason.
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Appellant’s contention that McNeil does not disclose “a mark in the form of
a line or a nonnumeric symbol indicating the actual timing when a reagent taken
out from a reagent container” (Appeal Br. 7) is not persuasive because, as the
Examiner finds and explains (Ans. 6–7) and we discuss above, Figure 9C of
McNeil does disclose or would have reasonably suggested to one of ordinary skill
that limitation of the claim.
Appellant’s contention that there would not have been any reason to modify
Wakatake’s automated analyzer in view of McNeil’s disclosure to include a mark
indicating the actual timing when the reagent and the specimen were mixed
(Appeal Br. 15) is not persuasive because, contrary to what Appellant argues, we
determine the Examiner does provide a reasonable basis, which a preponderance of
the evidence in the record supports, why one of ordinary skill in the art would have
combined the teachings of cited art to arrive at the method of claim 1. Ans. 6–8.
Appellant’s disagreement as to the Examiner’s factual findings and reason
for combining the references, without more, is insufficient to establish reversible
error. SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir.
2006) (“[M]ere statements of disagreement . . . as to the existence of factual
disputes do not amount to a developed argument.”).
We, therefore, sustain the Examiner’s rejection of claims 1, 6, and 7.

Claim 4
Claim 4 depends from claim 1 and further recites:
wherein the display control section displays a setting screen for
selecting a presence or absence of the mark indicating the actual
timing when a reagent taken out from a reagent container held by the
reagent-container holding section and a specimen taken out from a
specimen container held by the specimen-container holding section
were actually mixed in the reaction container of the plurality of reaction
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containers, being held by the reaction-container holding section, the
actual timing recorded in the recording section, and adds the mark
indicating the actual timing when a reagent taken out from a specimen
container and a specimen taken out from a specimen container were
actually mixed in the reaction container of the plurality of reaction
containers, being held by the reaction-container holding section, in the
graph or list displayed on the display screen in a case where the
presence of the mark indicating the actual timing when a reagent taken
out from a reagent container held by the reagent-container holding
section and a specimen taken out from a specimen container held by the
specimen-container holding section were actually mixed in the reaction
container of the plurality of reaction containers, being held by the
reaction-container holding section, is set in advance through the setting
screen.
Appeal Br. 22–23 (Claims Appendix) (disputed claim language italicized and
bolded).
Appellant argues the Examiner’s rejection of claim 4 should be reversed
because McNeil does not disclose “the display control section displays a setting
screen for selecting a presence or absence of the mark,” as claimed. Appeal Br.
16–17.
We do not find Appellant’s argument persuasive of reversible error in the
Examiner’s rejection based essentially on the Examiner’s factual findings and
reasons the Examiner provides at pages 9 and 16 of the Answer, which a
preponderance of the evidence supports. McNeil, Fig. 9C, 15:39–48, 16:19–21.
Rather, we agree with the Examiner that McNeil suggests “the display control
section displays a setting screen for selecting a presence or absence of the mark”
and it would have been obvious to one of ordinary skill in the art to have arrived at
that limitation based on McNeil’s disclosures.
In particular, as the Examiner finds (Ans. 16), McNeil discloses
All of the protocol design and scheduling tools described above are
created with graphic user interfaces and run on the user interface
controller or a networked machine. They are designed to graphically
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represent the tracks and schedule. The user drags tokens representing
operations from lists into the multi-track protocol definition. The lists
correspond to different devices. The items in the list are tokens
representing predefined templates for that device. The user may edit the
templates with the push of a button.
McNeil, 15:39–48.
Regarding the recitation “a setting screen for selecting a presence or absence
of the mark,” the Specification discloses that “display screen 300 illustrated in Fig.
7C is a screen for setting parameters.” Spec. 25. The Specification further provides
that display screen 300 for setting parameters enables users
to select display or non-display of the addition timing of reagent by
selecting “0” or “1” as a value of a corresponding column. In a
comment column of the parameter selection section 301, “0: non-
display, 1: display” is described, and in a column of a value, “0” or “1”
can be selected through user operation. Selection made through user
operation on the display screen 300 for setting parameters is reflected
on the display screen.
Id.
Thus, based on the Examiner’s findings regarding McNeil’s disclosures and
in view of the Specification’s description of a screen for setting parameters (Spec.
25), we determine a preponderance of the evidence supports Examiner that McNeil
reasonably suggests to one of ordinary skill in the art “the display control section
displays a setting screen for selecting a presence or absence of the mark” recitation
of claim 1. Burckel, 592 F.2d at 1179; see also KSR, 550 U.S. at 421 (“A person of
ordinary skill is also a person of ordinary creativity, not an automaton.”).
We, therefore, sustain the Examiner’s rejection of claim 4.

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Claim 5
Claim 5 depends from claim 1 and further recites:
wherein when the measurement-data list is displayed on the display
screen, the display control section adds, in the list displayed on the
display screen, the mark indicating the actual timing when a reagent
taken out from a reagent container held by the reagent-container
holding section and a specimen taken out from a specimen container
held by the specimen-container holding section were actually mixed in
the reaction container of the plurality of reaction containers, being held
by the reaction-container holding section, the actual timing recorded in
the recording section, beside measurement data corresponding to a
round of rotation of the reaction-container holding section in which a
reagent taken out from a reagent container held by the reagent-container
holding section and a specimen taken out from a specimen container
held by the specimen-container holding section were actually mixed in
the reaction container of the plurality of reaction containers, being held
by the reaction-container holding section.
Appeal Br. 23 (Claims Appendix) (disputed claim language italicized and
bolded).
Appellant argues the Examiner’s rejection of claim 5 should be reversed
because McNeil does not disclose “the measurement-data list is displayed on the
display screen,” as claimed. Appeal Br. 16–18. In particular, Appellant contends
that, in contrast to the claimed measurement-data list (as shown in Figure 6 of
Appellant’s Specification), Figure 9C of McNeil discloses eight response curves.
Id. at 18.
We do not find Appellant’s argument persuasive of reversible error in the
Examiner’s rejection based essentially on the Examiner’s factual findings and
reasons the Examiner provides at pages 9–10 and 16 of the Answer, which a
preponderance of the evidence supports. McNeil, Fig. 9C, 15:39–48, 16:19–21. In
particular, on this appeal record, we agree with the Examiner that the “RESPONSE
(ARBITRARY UNITS)” on the vertical axis in Figure 9C reflects and graphically
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shows a “measurement-data list” (as depicted in Figure 6 of the Specification).
Based on McNeil’s disclosures, a person of ordinary skill in the art would have
known and readily understood that such data can also be shown numerically in a
table, and it would have been obvious to a person of ordinary skill to have done so.
We, therefore, sustain the Examiner’s rejection of claim 5.
Accordingly, we affirm the Examiner’s rejection of claims 1 and 4–7 under
35 U.S.C. § 103(a) as obvious over Wakatake, MLab, and McNeil.

CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4–7 103(a) Wakatake, MLab,
McNeil
1, 4–7

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