SYSMEX CORPORATIONDownload PDFPatent Trials and Appeals BoardMar 25, 20212020005721 (P.T.A.B. Mar. 25, 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. 15/361,229 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. Appeal 2020-005721 Application 15/361,229 2 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 Appeal 2020-005721 Application 15/361,229 3 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 Appeal 2020-005721 Application 15/361,229 4 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” Appeal 2020-005721 Application 15/361,229 5 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 Appeal 2020-005721 Application 15/361,229 6 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 Appeal 2020-005721 Application 15/361,229 7 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 Appeal 2020-005721 Application 15/361,229 8 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. Appeal 2020-005721 Application 15/361,229 9 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 Copy with citationCopy as parenthetical citation