SYSMEX CORPORATION

Patent Trials and Appeals Board

Mar 25, 2021

2020005721 (P.T.A.B. Mar. 25, 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.
15/361,229 11/25/2016 Youichi IMAI SMX.082.0052.NP 1053
65181 7590 03/25/2021
METROLEX IP LAW GROUP, PLLC
900 17th Street, NW.
Suite 320
Washington, DC 20006
EXAMINER
TEKLE, DANIEL T
ART UNIT PAPER NUMBER
2481
NOTIFICATION DATE DELIVERY MODE
03/25/2021 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):
info@metrolexip.com
team-o@metrolexip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOUICHI IMAI, MOTOI KINISHI,
YUJI TAKANO, and KAZUAKI KOYAMA
Appeal 2020-005721
Application 15/361,229
Technology Center 2400
Before ROBERT E. NAPPI, ST. JOHN COURTENAY III, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, 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, which constitute all the
claims pending in this application. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies SYSMEX CORPORATION as
the real party in interest. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The invention, according to Appellant, generally relates to a
sample testing system, information processing apparatus, information
processing method, and non-transitory computer readable storage
storing a computer program. Spec. Title, ¶ 2. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A sample testing system comprising:
a sample analyzer that analyzes a particle in a
sample; and
an information processing apparatus that receives a
result of an analysis on the sample received from the
sample analyzer, wherein
the information processing apparatus comprises a
controller, a display unit, and an input unit,
the controller controls the display unit to display a
screen including a reference-information display region
for displaying the result of the analysis on the sample,
received from the sample analyzer, and an input-value
display region for receiving and displaying a manually-
input count value of particle counted in a visual test to be
performed on the sample with a microscope when
retesting is determined as necessary, basing the result of
the analysis on the sample, and
with the screen displayed, the controller receives a
manual input of a count value of the particle counted in the
visual test on the sample, through the input unit, and
controls the display unit to display the received count
value in the input-value display region.
Appeal Br. 19 (Claims App.).
REJECTION
Claims 1–20 stand rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Fukuda et al. (US 2007/0072301
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A1, published Mar. 29, 2007) (“Fukuda”) and Busenhart et al. (US
2011/0022327 A1, published Jan. 27, 2011) (“Busenhart”). Final Act.
4.
ANALYSIS
We have reviewed the § 103 rejections of claims 1–20 in light
of Appellant’s arguments that the Examiner erred. We have
considered in this decision only those arguments Appellant actually
raised in the Briefs. Any other arguments Appellant could have made,
but chose not to make, in the Briefs are waived. See 37 C.F.R.
§ 41.37(c)(1)(iv). Appellant’s arguments are not persuasive of error.
We agree with and adopt as our own the Examiner’s findings of facts
and conclusions as set forth in the Answer and in the Action from
which this appeal was taken. We provide the following explanation
for emphasis.
With respect to independent claim 1, Appellant contends the
cited portions of Fukuda and Busenhart do not teach or suggest the
recited “the controller controls” limitation because they do not teach
“an input-value display region for receiving and displaying a
manually-input count value of particle counted in a visual test to be
performed on the sample with a microscope when retesting is
determined as necessary,” as claim 1 requires. Appeal Br. 14.
Appellant also argues that the Examiner erred because Busenhart does
not teach the limitation “with the screen displayed, the controller
receives a manual input of a count value of the particle counted in the
visual test on the sample, through the input unit, and controls the
display unit to display the received count value in the input-value
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display region.” Appeal Br. 16. In particular, Appellant argues that
“Busenhart fails to teach or suggest to receive a manual input of a
result of the inspection/examination manually performed by the
operator.” Id. at 17.
We begin our analysis with claim construction. We interpret
claim 1 as directed to an apparatus, i.e., a structure that can be termed
a machine or manufacture under 35 U.S.C. § 101, because the recited
“sample testing system” comprises physical components such as an
“information processing apparatus” comprising a “controller,”
“display unit,” and “input unit.” Claims directed to an apparatus must
be distinguished from the prior art in terms of structure rather than
function. See In re Danly, 263 F.2d 844, 848 (CCPA 1959). Choosing
to define an element functionally, i.e., by what it does, carries a risk
because, where there is reason to conclude that the structure of the
prior art is inherently capable of performing the claimed function, the
burden shifts to Appellant to show that the claimed function
patentably distinguishes the claimed structure from the prior art
structure. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997);
In re Hallman, 655 F.2d 212, 215 (CCPA 1981).
To illustrate, in Ex parte Nehls, 88 USPQ2d 1883, 1888 (BPAI
2008) (precedential), the Board held that the nature of the information
being manipulated by the computer should not be given patentable
weight absent evidence that the information is functionally related to
the process “by changing the efficiency or accuracy or any other
characteristic” of the steps. See also Ex parte Curry, 84 USPQ2d
1272, 1274 (BPAI 2005) (informative) (holding “wellness-related”
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data stored in a database and communicated over a network was non-
functional descriptive material as claimed because the data “does not
functionally change” the system).
We note that the disputed limitations — “the controller controls
the display unit to display a screen including . . . an input-value
display region for receiving and displaying a manually-input count
value of particle counted in a visual test to be performed on the
sample with a microscope when retesting is determined as necessary,
basing the result of the analysis on the sample” and “the controller
receives a manual input of a count value of the particle counted in the
visual test on the sample, through the input unit, and controls the
display unit to display the received count value in the input-value
display region” (Appeal Br. 19 (Claim App.) (claim 1))—merely
describe the information (a count value of the particle counted in the
visual test) displayed in the input-value region of the screen and part
of the received information signals received by the controller through
the input unit. See, e.g., Spec. ¶¶ 20–21. The particular content of the
received and displayed information does not affect the underlying
processes recited in the claim. Therefore, the content of the received
information signals and the particular information displayed is
nonfunctional descriptive material that does not distinguish the claim
from the prior art in terms of patentability. See In re Ngai, 367 F.3d
1336, 1339 (Fed. Cir. 2004). See also Ex parte Mathias, 84 USPQ2d
1276, 1279 (BPAI 2005) (informative), aff’d, 191 F. App’x 959 (Fed.
Cir. 2006) (“[N]onfunctional descriptive material cannot lend
patentability to an invention that would have otherwise been taught by
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the prior art.”); Curry, 84 USPQ2d at 1274 (“Nonfunctional
descriptive material cannot render nonobvious an invention that would
have otherwise been obvious.”).
Additionally, material is printed matter if it is “claimed for what
it communicates.” In re Distefano, 808 F.3d 845, 850 (Fed. Cir.
2015). The disputed limitations of claim 1 (manually-input count
value of particle counted in a visual test) merely characterize the
specific content of the input-value display region and the received
information signals. Thus, the disputed claim limitations are directed
to printed matter. See id. at 848 (A claim limitation is directed to
printed matter “if it claims the content of information.”).
If a claim in a patent application claims printed matter, “one
must then determine if the matter is functionally or structurally related
to the associated physical substrate, and only if the answer is ‘no’ is
the printed matter owed no patentable weight.” Distefano, 808 F.3d at
851. In the instant claim, the claimed content (a manually-input count
value of particle counted in a visual test) of the received information
signals (by the controller) is not specifically related to the structure of
received information signals. Similarly, displaying the claimed
content is not specifically related to the structure of the recited input
unit, display unit, or screen. Rather, the content of the information is
not functionally distinct from any other information that is received or
displayed.
Accordingly, we find the disputed claim limitations constitute
nonfunctional descriptive material and printed matter not functionally
related to the associated substrate, which are not entitled to patentable
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weight. As recognized in Curry, “if the prior art suggests storing a
song on a disk, merely choosing a particular song to store on the disk
would be presumed to be well within the level of ordinary skill in the
art at the time the invention was made.” Id. at 1275. Here, the content
of the information signals received by the controller and the content
displayed by the display unit is no different, in that the content does
not explicitly alter the structure of the information signals, the
controller, or functionality of the claimed system.
Because the content of the information signals specified by the
disputed limitations constitutes nonfunctional descriptive material, the
particular type of information received and displayed (i.e., manually-
input count value of particle counted in a visual test) recited in claim 1
is not entitled to patentable weight. Accordingly, Appellant’s
arguments are not commensurate in scope with claim 1. Claim 1
merely requires receiving and displaying information or data.
Based on the foregoing discussion, we construe claim 1 as
follows:
1. A sample testing system comprising:
a sample analyzer that analyzes a particle in a
sample; and
an information processing apparatus that receives a
result of an analysis on the sample received from the
sample analyzer, wherein the information processing
apparatus comprises a controller, a display unit, and an
input unit,
the controller controls the display unit to display a
screen including a reference information display region for
displaying [information or data], and an input-value
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display region for receiving and displaying [information
or data], and
with the screen displayed, the controller receives
[information or data], through the input unit, and controls
the display unit to display the received [information or
data].
In light of our construction of claim 1, Appellant’s arguments
are not persuasive of Examiner error at least because they are directed
to the nonfunctional descriptive material portion of claim 1, which, as
discussed above, does not patentably distinguish over the prior art. See
Ngai, 367 F.3d at 1339.
The Examiner found that Busenhart teaches an input-value
display region. Ans. 12, citing Busenhart, element 110 of Fig. 1, ¶ 21.
In so finding, the Examiner concluded that “displaying an image or
related to an image with some kind [of] data within the image” is
sufficient to teach or suggest “displaying a manually-input count
value of particle counted.” See Ans. 12. The Examiner further found
that Busenhart teaches or suggests “with the screen displayed, the
controller receives a manual input of a count value of the particle
counted in the visual test on the sample, through the input unit, and
controls the display unit to display the received count value in the
input-value display region” because user interface 116 in Busenhart
receives input from a user or operator, and urine work area manager
102 (controller) uses display 118 (display unit) to display information
about urine test strip reader analysis results and urine sediment
analyzer results. Ans. 13–14, citing Busenhart ¶ 24.
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For the reasons discussed supra, we are not persuaded that the
Examiner erred in finding that the combination of Fukuda and
Busenhart teaches or suggests the disputed limitations of claim 1.
Accordingly, we sustain the Examiner’s rejection of
independent claim 1 under 35 U.S.C. § 103. For similar reasons, we
also sustain the Examiner’s rejection of independent claims 18–20,
which are argued as a group with claim 1 and also similarly recite
non-functional descriptive material. See Appeal Br. 17–18; see also
37 C.F.R. § 41.37(c)(1)(iv). In addition, we sustain the Examiner’s
rejections of claims 2–17, which depend directly or indirectly from
claims 1 and 18–20 and were not argued separately. See Appeal Br.
17–18; see also 37 C.F.R. § 41.37(c)(1)(iv).
DECISION
We affirm the Examiner’s decision rejecting claims 1–20.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 103 Fukuda, Busenhart 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