Konobu Kimura et al.

Patent Trials and Appeals Board

Aug 7, 2019

14740815 - (D) (P.T.A.B. Aug. 7, 2019)

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.
14/740,815 06/16/2015 Konobu KIMURA 11333/745 6921
757 7590 08/07/2019
BGL
P.O. BOX 10395
CHICAGO, IL 60610
EXAMINER
KIM, TAEYOON
ART UNIT PAPER NUMBER
1651
MAIL DATE DELIVERY MODE
08/07/2019 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 KONOBU KIMURA, KINYA UCHIHASHI,
JO LINSSEN, AND JAROB SAKER1
____________

Appeal 2019-001671
Application 14/740,815
Technology Center 1600
____________

Before TONI R. SCHEINER, RICHARD M. LEBOVITZ, and
DENORAH KATZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The claims in this appeal are directed to a blood analyzer that counts
lymphocytes. The Examiner rejected the claims under 35 U.S.C. § 102 as
anticipated and under obviousness-type double-patenting. Pursuant to 35
U.S.C. § 134, Appellant appeals the Examiner’s determination that the
claims are unpatentable. We have jurisdiction for the appeal under 35
U.S.C. § 6(b). The Examiner’s decision is reversed.

STATEMENT OF THE CASE
The Examiner finally rejected the claims as follows:

1 The Appeal Brief (“Appeal Br.” entered Aug. 13, 2018) lists Sysmex
Corporation as the Real Party in Interest. Appeal Br. 1.
Appeal 2019-001671
Application 14/740,815

2
1. Claims 1, 2, 4, 6, 7, and 21 under pre-AIA 35 U.S.C. § 102(a)(1) as
anticipated by Abe et al. (U.S. Pat. Appl. Publ. 2012/0282601 A1, published
Nov. 8, 2012) (“Abe”). Ans. 3.
Claims 1, 2, 4, 6, and 7 on the ground of non-statutory double
patenting as obvious in view of 1–20 of U.S. Patent No. 9,116,093 B2,
issued Aug. 25, 2015 (“the ’092 patent”). Ans. 8.
Claim 1, the only independent claim on appeal, is reproduced below.
The claim has been annotated by adding the bracketed numerals [1] and [2]
to emphasize the limitations in dispute in this appeal.
1. A blood analyzer comprising:
a sample preparing part configured to prepare a
measurement sample by mixing a blood sample including
reactive B lymphocytes and other lymphocytes, a fluorescent
dye for staining nucleic acid, and a hemolytic agent to
hemolyze red blood cells;
a light source configured to irradiate light on the
measurement sample;
a light receiving part configured to receive fluorescent
light, forward scattered light, and side scattered light given off
by the measurement sample irradiated by light, and output
fluorescent light signals corresponding to the intensity of the
fluorescent light, forward scattered light signals corresponding
to the intensity of the forward scattered light, and side scattered
light signals corresponding to the intensity of the side scattered
light; and
[1] a central processing unit programmed to discriminate
the reactive B lymphocytes from normal lymphocytes and
reactive T lymphocytes based on at least one of the fluorescent
light signals, forward scattered light signals, and a first
threshold value stored in a memory accessible by the central
processing unit, and to count the discriminated reactive B
lymphocytes,
wherein the intensity of the fluorescent light or forward
scattered light signals from the reactive B lymphocytes is
Appeal 2019-001671
Application 14/740,815

3
stronger than the intensity of the fluorescent light or forward
scattered light signals of normal lymphocytes, and reactive T
lymphocytes, and
[2] the central processing unit is programmed to count
reactive B lymphocytes having fluorescent light or forward
scattered light signals that are greater than the first threshold
value.

1. 102 REJECTION BASED ON ABE
The Examiner rejected claims 1, 2, 4, 6, 7, and 21 as anticipated by
Abe. The Examiner found that Abe describes a blood analyzer comprising
the same structural elements as those claimed. Ans. 4–5.
The blood analyzer of claim 1 is programmed on its central processing
unit (“CPU”) [1] “to discriminate the reactive B lymphocytes from normal
lymphocytes and reactive T lymphocytes.” The Examiner found Abe
describes a central processing unit “that can distinguishably detect abnormal
lymphocytes, blasts and atypical lymphocytes.” Ans. 4. The Examiner
further found that the atypical lymphocytes distinguished in Abe by its blood
analyzer “includes reactive B lymphocytes and reactive T lymphocytes” as
recited in claim 1. Id. The Examiner concludes “that the information
processing portion of Abe et al. is considered to be programmed to
discriminate and count reactive B or T lymphocytes.” Id.
The Examiner acknowledged that Abe “do[es] not particularly
disclose discriminating reactive B lymphocytes from normal lymphocytes
and reactive T lymphocytes” as required by the claimed CPU. Ans. 5.
However, the Examiner found the blood analyzer described by Abe “is
capable of detect[ing] atypical lymphocyte[s].” Id.
The Examiner stated:
Appeal 2019-001671
Application 14/740,815

4
It is understood that the fluorescence and scattered light signals
obtained from blood cells are measured by the light receiving
part and an optical detector [of Abe], and the data (signals) are
stored in the computer regardless of types of cells present in the
sample because the blood analyzer is intended to collect any
signal detectable from each individual cell.
Ans. 11.
The Examiner concluded:
Thus, the blood analyzer of Abe et al. and its CPU is capable of
classify[ing] clusters of cell subgroups present in the sample,
and such clusters would be displayed in different areas in the
scattergram. Therefore, when the sample contains detectable
amount of reactive T or B lymphocytes and if these reactive
cells possess distinctive signals different from normal T or B
lymphocytes and/or other cell types present in the sample, then
the clusters of reactive T or B lymphocytes would be
distinctively localized in the scattergram as shown in the Figure
of the instant application.
Ans. 12.
Discussion
The dispute in this rejection turns on the proper interpretation of the
programmed CPU recited in the claims. The Examiner incorrectly
interpreted the claim to require only that the CPU is capable of performing
the recited functions in [1] and [2], not that they are actually enabled to carry
out the function. We thus first begin with the interpretation of claim 1.2

2 During patent examination proceedings, claim terms are given “the
broadest reasonable meaning . . . in their ordinary usage as they would be
understood by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in the applicant’s specification.” In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Appeal 2019-001671
Application 14/740,815

5
The limitation numbered [1] in claim 1 requires the CPU to be
programmed “to discriminate the reactive B lymphocytes from normal
lymphocytes and reactive T lymphocytes” based on light signals detected
from the lymphocytes and a threshold value stored in memory. Limitation
[2] requires the CPU to be programmed to count the reactive B lymphocytes
based on the light signals and a threshold value. The CPU must contain
instructions that enable it to perform the function of discriminating and
counting B lymphocytes, respectively. The CPU must be “actually
programed” to perform the functions, not only capable of being programed.3
Similarly, the CPU recited in [2] must be programmed and enabled “to count
reactive B lymphocytes.”
By failing to give proper weight to the “programmed” limitations of
the claim, the Examiner did not give the claim its broadest reasonable
interpretation. Specifically, the Examiner did not establish that Abe
describes a CPU which has programmed instruction to discriminate and
count reactive B lymphocytes as required by limitations [1] and [2] of the
claims. Rather, the Examiner found that Abe is “capable” of performing
these functions because the blood analyzer collects light signals from the
cells, and some of these signals would correspond to those of B
lymphocytes. Ans. 11. The Examiner interpreted the programming

3 As held in Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1381
(Fed. Cir. 2011): “The district court, in reviewing the specification, held
that the ‘memory for storing’ clause requires that the memory is actually
programmed or configured to store the data collection application. . . . No
error of law or fact has been shown in the district court’s construction of the
‘memory for storing’ term as requiring that the memory function is present
in the device in that the device is structured to store at least one data
collection application.”
Appeal 2019-001671
Application 14/740,815

6
instructions to simply require the collection of the light signals, but did not
establish that the CPU of Abe actually identified and counted the reactive B
lymphocytes in the sample as required by the claims. The Examiner
considered it sufficient that the light signals would be displayed on a
scattergram and that the display of information meets the requirement of the
programmed CPU of the claims.4 Ans. 12.
We do not agree with the Examiner’s interpretation of the claim. The
claim expressly requires the CPU to discriminate B lymphocytes based on “a
first threshold value stored in a memory” and to count them based on the
“first threshold value.” Thus, the CPU must do more than simply store an
image of light signals; it must process the signals and count cells based on
the threshold value. The Examiner did not identify a teaching in Abe of a
“first threshold value” as recited in [1] and [2], but instead found that the
collection of light intensity data was adequate to meet the programmed CPU
limitation of the claim. This interpretation of the claim is unreasonable and
it fails to give weight to all the limitations in the claims.5
The anticipation rejection of claims 1, 2, 4, 6, 7, and 21 based on Abe
is reversed.

4 “When reactive B lymphocyte and/or reactive T lymphocytes are present in
the sample, the signals measured from these cells along with other cells (i.e.
normal lymphocytes, monocytes, etc.) in the sample are stored in the
memory of the computer, and the data would be processed and displayed on
a scattergram showing different clustering of cell types at different
position/area of the scattergram, and thus, distinguishably detect these
different types of cells.” Ans. 12.
5 All claim limitations must be considered when determining patentability of
an invention over the prior art. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir.
1983).
Appeal 2019-001671
Application 14/740,815

7
2. DOUBLE PATENTING REJECTION
The obviousness-type double-patenting rejection based on the ’093
patent is based on the same erroneous claim interpretation as in the rejection
based on Abe. The rejection of claim 1, 2, 4, 6, and 7 on the ground of non-
statutory double patenting is reversed.

REVERSED