Leica Microsystems CMS GmbHDownload PDFPatent Trials and Appeals BoardJan 4, 20212020001130 (P.T.A.B. Jan. 4, 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. 15/329,624 01/27/2017 Peter Euteneuer 815612 9080 95683 7590 01/04/2021 Leydig, Voit & Mayer, Ltd. (Frankfurt office) Two Prudential Plaza, Suite 4900 180 North Stetson Avenue Chicago, IL 60601-6731 EXAMINER KAKALEC, KIMBERLY N ART UNIT PAPER NUMBER 2872 NOTIFICATION DATE DELIVERY MODE 01/04/2021 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): chgpatent@leydig.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte PETER EUTENEUER and RALF KRUEGER Appeal 2020-001130 Application 15/329,624 Technology Center 2800 ____________ Before ROMULO H. DELMENDO, JEFFREY B. ROBERTSON, and MICHAEL G. McMANUS, Administrative Patent Judges. McMANUS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the Examiner’s decision to reject claims 13–23. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Leica Microsystems CMS GmbH. Appeal Brief dated August 14, 2019 (“Appeal Br.”) 1. Appeal 2020-001130 Application 15/329,624 2 CLAIMED SUBJECT MATTER The present application generally relates to inverted research microscopes. Specification dated Jan. 27. 2017 (“Spec.”). The Specification teaches that inverted microscopes are known to include an autofocus module that employs infrared light. Id. ¶ 4. The Specification teaches that prior art autofocus beams were reflected onto the sample using a dichroic mirror2 arranged at an angle of 45° relative to the optical axis from the dichroic mirror to the sample. Id. ¶¶ 4–5. Such an arrangement is depicted in Figure 3 of the Drawings, reproduced below. 2 A dichroic mirror is one which exhibits different reflection or transmission properties for different wavelengths. Appeal 2020-001130 Application 15/329,624 3 Figure 3 depicts a prior art microscope. Id. at ¶ 43. Figure 3 shows laser light source 30, infrared beam 32 (referred to as “reflected partial beam 32”), dichroic mirror 54, and sample 22. Id. ¶¶ 36–37. The dichroic mirror of Figure 3 is arranged at an angle of 45° to the optical axis O of the common beam path portion. Id. ¶ 44. The Specification teaches that the 45° arrangement has a number of disadvantages including adversely affecting polarization neutrality (id. ¶ 6), poor separation of spectral regions (id. ¶ 7), and an offset that may impair the quality of the optical image (id. ¶ 8). To remedy such disadvantages, the Specification teaches a microscope where the beam splitter is arranged in the beam path at an angle of 22.5 ± 7.5° and comprises at least one further mirror in the reflected beam path. Id. ¶ 10. An embodiment is shown in Figure 1, reproduced below. Figure 1 depicts a microscope that embodies the invention. Id. ¶ 34. Figure 1 shows laser light source 30, infrared beam 32, and dichroic beam splitter Appeal 2020-001130 Application 15/329,624 4 52 which is made up of fully reflective mirror 56 and dichroic mirror 54. Id. ¶¶ 36–37. Figure 1 additionally shows common beam path portion 72 shared by the reflected beam path 66 and the transmitted beam path 70. Id. ¶ 41. The dichroic beam splitter is shown in greater detail in Figure 2, reproduced below. Figure 2 is a schematic view of the dichroic beam splitter arrangement shown in Figure 1. Id. ¶ 13. The optical axis O of common beam path 72 is positioned on the dichroic surface 54 such that it has an angle ß of 22.5° to a surface normal N1 of the dichroic mirror 54. Id. ¶ 42. Similarly, surface normal N2 of mirror 56 also forms an angle of 22.5° (denoted by γ) with reflected partial beam 32. Id. Appeal 2020-001130 Application 15/329,624 5 Claim 13 is illustrative of the subject matter on appeal and is reproduced below with certain limitations bolded for emphasis: 13. An autofocus assembly of a microscope, comprising: an autofocus module comprising a detector and an autofocus light source configured to emit an autofocus beam along an autofocus beam path toward the detector; and a dichroic beam splitter arrangement having a dichroic mirror surface and at least one further mirror disposed along the autofocus beam path between the autofocus light source and the detector, and in a common beam path portion between objective optics and a tube lens of the microscope, the dichroic beam splitter arrangement being configured to transmit light of a transmitted wavelength region and to reflect light of a reflected wavelength region that is different from the transmitted wavelength region, a surface normal of the dichroic mirror surface being arranged in the common beam path portion at an angle of 22.5 ± 7.5° relative to the optical axis of the common beam path portion. Appeal Br. 9 (Claims App.) (emphasis added). REFERENCES The Examiner relies upon the following prior art: Name Reference Date Abe et al. (“Abe”) US 2003/0011772 A1 Jan. 16, 2003 Knebel et al. (“Knebel”) US 2013/0094016 A1 Apr. 18, 2013 DISCUSSION The Examiner rejects claims 13–23 as unpatentable under 35 U.S.C. § 103 over Knebel in view of Abe. Final Office Action (“Final Act.”) 3–7. Appeal 2020-001130 Application 15/329,624 6 In support of the rejection, the Examiner finds that Knebel teaches each element of claim 13 other than a “surface normal of the dichroic mirror surface being arranged in the common beam path portion at an angle of 22.5 ± 7.5° relative to the optical axis of the common beam path portion.” Id. at 4. The Examiner looks to Abe as teaching this limitation. Id. Figure 3 of Abe is reproduced below. Figure 3 “is a diagram showing another third example of the light beam splitter to be used in the optical apparatus.” Abe ¶ 19. Figure 3 depicts an optical element 10 consisting of “two plane parallel plates 13 and 14 each disposed at an inclination angle of 22.5° relative to an illuminating . . . axis.” Id. ¶ 39. The Examiner determines that it would have been obvious to one of skill in the art to have “simply substituted the known dichroic beam splitter Appeal 2020-001130 Application 15/329,624 7 of Abe for the . . . dichroic beam splitter of Knebel to obtain predictable results of reflecting certain wavelengths and transmitting other wavelengths.” Final Act. 4. Appellant presents argument relating to independent claim 13 and relies on the same arguments with regard to dependent claims 14–23. Appeal Br. 7. Accordingly, claims 14–23 will stand or fall with claim 13. Appellant argues that the rejection of claim 13 is in error in several respects. Id. at 4–8. First, Appellant argues that because the prior art does not recognize any of the problems with a 45° arrangement of a dichroic mirror surface, there would have been no reason to replace the dichroic beam splitter of Knebel with another mirror arrangement. Id. at 5–6. Appellant argues that the Examiner must identify an “apparent reason” to combine the teachings of the prior art references even if the combination is a mere substitution of one element for another known in the field. Id. at 6. In support, Appellant relies on the Federal Circuit’s decision in In re Omeprazole Patent Litigation.3 Appellant’s reliance on In re Omeprazole Patent Litigation is misplaced. There, the Court considered a claim to a pharmaceutical compound (omeprazole) surrounded by an inert subcoating and an outer enteric coating. In re Omeprazole Patent Litigation, 536 F.3d 1361, 1365– 66 (2008). A formulation containing omeprazole with an enteric coating was conventionally known. Id. at 1379. In addition, the use of subcoatings in various pharmaceutical preparations was known. Id. at 1379–80. The Court determined that a person of ordinary skill in the art would not have 3 536 F.3d 1361 (Fed. Cir. 2008). Appeal 2020-001130 Application 15/329,624 8 seen any need to incorporate a subcoating with the known omeprazole composition having an enteric coating. Id. at 1380. Accordingly, the composition of Omeprazole was found not to be obvious. Id. In that case, however, there was no finding that an enteric coating and an enteric coating in conjunction with an inert subcoating were known substitutes. The Supreme Court has held that “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result” to avoid obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). When relying on such a rationale, the Examiner is not required to show additional reason to combine. Appellant additionally argues that the claimed apparatus yields more than predictable results. Appeal Br. 6–7. Appellant argues that, even if the Examiner’s proposed combination yields the stated benefits regarding transmission and reflection, the claimed invention yields significant benefits which were not predictable prior to the effective date. Id. These benefits include improvements in polarization neutrality, separation of transmitted and reflected spectral regions, and offset of optical axes. Appeal Br. 5, 7; Spec. ¶¶ 6–8. In order to rely on the simple substitution of one known element for another to obtain predictable results, the Examiner must show that the results of the substitution would have been predictable. MPEP § 2143(B) (Rev. 10, June 2020). Here, the closest prior art reference (Knebel) has not been shown to provide the same significant advantages afforded by the claimed invention. Although Abe shows that it was known to provide a dichroic mirror arranged in the manner claimed, Appellant has cited to evidence in Appeal 2020-001130 Application 15/329,624 9 the Specification that the claimed apparatus achieves significantly more than the anticipated transmission and reflectance properties. Appeal Br. 7. Thus, the combination has been shown to do more than yield a predictable result. Accordingly, it is more than a simple substitution. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). CONCLUSION The Examiner’s rejections are reversed. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 13–23 103 Knebel, Abe 13–23 REVERSED Copy with citationCopy as parenthetical citation