Leica Microsystems CMS GmbH

Patent Trials and Appeals Board

Jan 4, 2021

2020001130 (P.T.A.B. Jan. 4, 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.
15/329,624 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.
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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
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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.
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Application 15/329,624

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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.
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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
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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).
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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
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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