Ex Parte Kottig

Patent Trial and Appeal Board

Mar 18, 2016

12309445 (P.T.A.B. Mar. 18, 2016)

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.
12/309,445 01/16/2009 Karsten Kottig 175.8873USU 4275
27623 7590 03/21/2016
OHLANDT, GREELEY, RUGGIERO & PERLE, LLP
ONE LANDMARK SQUARE, 10TH FLOOR
STAMFORD, CT 06901
EXAMINER
YEH, EUENG NAN
ART UNIT PAPER NUMBER
2669
MAIL DATE DELIVERY MODE
03/21/2016 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 KARSTEN KOTTIG
____________

Appeal 2014-002383
Application 12/309,445
Technology Center 2600
____________

Before DAVID M. KOHUT, CATHERINE SHIANG, and MONICA S.
ULLAGADDI, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1 and 4–16.1 We have jurisdiction under 35 U.S.C. §
6(b). We affirm.

STATEMENT OF THE CASE
The present invention relates to analyzing chemical or biological
samples. See generally Spec. 1. Claim 1 is exemplary:
1. An analysis method for chemical and/or biological samples, said
method including the following steps:

1 Claims 2 and 3 were cancelled. See Final Rej. 2.
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taking a sample image, said sample image comprising a plurality of
pixels,
generating analysis data per pixel,
determining pixels of interest for the analysis, and
evaluating the generated analysis data per pixel of interest by
fluctuation analysis procedures,
whereby said analysis data are generated during said taking of the
sample image and comprise pixel information resolved into time series, said
pixel information being used for evaluation on the basis of a fluctuation
analysis procedure and whereby pixel types are determined in dependence
on subcellular structures and the analysis data of a plurality of pixels of the
same pixel type are combined into group analysis data to be evaluated
together.

References and Rejections

Libutti US 2005/0136006 A1 June 23, 2005
Wang US 2005/0260654 A1 Nov. 24, 2005
Watanabe US 2006/0262301 A1 Nov. 23, 2006
Moradi US 2010/0063393 A1 Mar. 11, 2010

Claims 1, 5, 6, and 10–16 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Watanabe and Wang. See Final Act. 2–8.
Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Watanabe, Wang, and Libutti. See Final Act. 8–9.
Claims 7–9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Watanabe, Wang, and Moradi. See Final Act. 10–12.

PRINCIPLES OF LAW
“[W]hen the prior art teaches away from combining certain known
elements, discovery of a successful means of combining them is more likely
to be nonobvious.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)
(citation omitted).
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“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Kahn, 441 F.3d 977, 990
(Fed. Cir. 2006) (citation omitted).
The “mere disclosure of alternative designs does not teach away’” and
“just because better alternatives exist in the prior art does not mean that an
inferior combination is inapt for obviousness purposes.” In re Mouttet, 686
F.3d 1322, 1334 (Fed. Cir. 2012) (citations omitted).
Although a reference that teaches away is a significant factor to
be considered in determining unobviousness, the nature of the
teaching is highly relevant, and must be weighed in substance. A
known or obvious composition does not become patentable simply
because it has been described as somewhat inferior to some other
product for the same use.

In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).

ANALYSIS
The Obviousness Rejection
Claims 1 and 4–16
On this record, we find the Examiner did not err in rejecting claim 1.
We disagree with Appellant’s arguments (App. Br. 3–6), and agree with and
adopt the Examiner’s findings and conclusions on pages 3–5 of the Answer
as our own. Therefore, we limit our discussion to the following points for
emphasis.
Appellant contends neither Watanabe nor Wang teaches “the analysis
data of a plurality of pixels of the same pixel type are combined into group
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analysis data to be evaluated together,” as recited in claim 1 (emphasis
added). In particular, Appellant argues:
Watanabe teaches to calculate the individual correlation
functions for each pixel separately . . .
. . . Watanabe discloses that an object is to provide a
fluorescence correlation spectroscopy analyzer that
enables fluorescence correlation spectroscopy analysis to
be performed simultaneously on multiple points of a
measured sample at high speed. . . . Further, Watanabe
discloses that determining autocorrelation functions from
the temporal variations, measurement data D can be
obtained simultaneously for all of the pixels in the
fluorescence incidence region 32 a (FIG.4C). . . . .

. . . the combination of data would slow the device of
Watanabe down, rendering it unsuitable for its intended
purpose. The advantages of the claimed grouping pixel
data into group analysis data before performing an
analysis are highlighted e.g.[,] on page 6 (last paragraph)
of the present application, which are not disclosed or
suggested by Watanabe.

[In Wang,] there is no teaching or suggestion to combine
analysis data from pixels of the same type into a group
analysis.
App. Br. 4–5.
Appellant also asserts Watanabe teaches away from the combination.
See App. Br. 6.
Appellant has not persuaded us of error. It is well established that
during examination, claims are given their broadest reasonable interpretation
consistent with the specification, but without importing limitations from the
specification. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004); SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870,
875 (Fed. Cir. 2004). Appellant does not advance a specific definition for
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any claim element of the disputed claim limitation. Therefore, under the
broadest reasonable interpretation, the claim element “analysis data . . . are
combined into group analysis data to be evaluated together” does not require
the analysis data to be mixed together for evaluation. Instead, the broadest
reasonable interpretation of that element encompasses the analysis data
being combined into a group, and individual sample points being evaluated
simultaneously and in parallel. As a result, Appellant has not shown the
Examiner’s mapping is overly broad, unreasonable, or inconsistent with the
Specification, as discussed below.
It is undisputed Watanabe teaches the claim element “the analysis data
of a plurality of pixels.” See Ans. 3–4; App. Br. 4. The Examiner
reasonably finds that Watanabe teaches the claim element “are combined
into group analysis data to be evaluated together.” See Ans. 3–4; Watanabe
¶ 55 (“since fluorescence correlation spectroscopy analysis of multiple
points of the measured sample S can be performed simultaneously . . .
fluorescence correlation spectroscopy analysis can be performed
simultaneously on a certain region of the measured sample S. The
movement of substances inside a cell can thus be evaluated and several types
of samples can be analyzed in vitro simultaneously”) (emphases added).
The Examiner reasonably interprets the claim element “data are combined
into group analysis data to be evaluated together” to encompass Watanabe’s
teaching of analyzing multiple points of sample S simultaneously. As
explained above, such simultaneous analysis meets the broad requirement of
“group analysis” and “evaluated together.” See Ans. 3–4.
The Examiner further finds—and Appellant does not dispute—Wang
teaches the claim element “the same pixel type.” See Ans. 5; Wang ¶¶ 20,
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40. Therefore, the Examiner correctly finds Watanabe and Wang
collectively teach “the analysis data of a plurality of pixels of the same pixel
type are combined into group analysis data to be evaluated together,” as
required by claim 1. See Ans. 3–5. Combining Wang’s same pixel type
technique in the Watanabe method would have predictably used prior art
elements according to their established functions—an obvious improvement.
See KSR, 550 U.S. at 417.
Further, arguing a system is unsatisfactory for its intended use is a
“teach[] away” argument. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984)
(“French teaches away from the board’s proposed modification” because “if
the French apparatus were turned upside down, it would be rendered
inoperable for its intended purpose.”). Appellant’s arguments that the
proposed modification would render Watanabe unsuitable for its intended
purpose and Watanabe teaches away from the proposed combination (App.
Br. 5–6) are unpersuasive, as they lack adequate analysis under the case law.
Appellant fails to assert—let alone show—one skilled in the art “‘would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.’”
Kahn, 441 F.3d at 990.
Accordingly, we sustain the Examiner’s rejection of claim 1, and
claims 4–5, and 10–16 for similar reasons.

Dependent Claims 6–9

In response to Appellant’s arguments (discussed below), the Examiner
provides findings showing the cited references collectively teach the
disputed claim limitations. See Ans. 5–7. Appellant fails to adequately
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respond to such findings and therefore, fails to show specific fault in the
Examiner’s findings. See In re Baxter Travenol Labs., 952 F.2d 388, 391
(Fed. Cir. 1991) (“It is not the function of this court [or this Board] to
examine the claims in greater detail than argued by an appellant, looking for
[patentable] distinctions over the prior art.”).
Further, Appellant’s arguments are unpersuasive for the following
additional reasons.
Regarding claim 6, with respect to the claim limitation “combined
into group analysis data by adding the time series acquired for multiple
pixels,” Appellant argues Watanabe’s disclosure differs from an example of
the Specification. See App. Br. 7–8. Appellant’s argument is unpersuasive
because Appellant compares an example from the Specification—not the
disputed claim limitation—with Watanabe’s teachings. Further, the
Examiner cites Watanabe’s formula (Ans. 5; Watanabe ¶ 95 (citing Figs. 1,
8-9)) for teaching the disputed claim limitation, and Appellant fails to
squarely respond to such finding. In particular, Appellant’s argument that
“Watanabe merely discloses that Figure 8 is a graph showing an example of
the variation in time of the fluorescence intensity detected by the CCD
camera. . . . the data of Figure 8 is then autocorrelated using the function of
Figure 9” (App. Br. 7) does not specifically address Watanabe’s formula
cited by the Examiner, and does not adequately explain why the Examiner’s
finding is unreasonable. See Baxter Travenol Labs., 952 F.2d at 391.
Likewise, Appellants’ conclusory assertion that “Watanabe merely discloses
autocorrelation but fails to teach . . . claim 6” (App. Br. 9) is insufficient for
showing specific fault.

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Regarding claims 7–9, Appellant argues that Moradi fails to teach
performing statistical analyses per pixel, as required by the claims. See App.
Br. 8-10. Appellant contends that contrary to the claim requirement, Moradi
teaches performing statistical analyses at a “fixed location.” See App. Br. 8-
10. Appellant’s argument is unpersuasive because the Examiner does not
cite Moradi for teaching the claimed “per pixel.” Instead, the Examiner
finds—and Appellant does not dispute—that Watanabe teaches the “per
pixel” requirement. See Final Act. 3. The Examiner cites Moradi for
teaching the claimed histogram and histograms of claim 7, and the
combination of Watanabe, Wang, and Moradi for teaching claims 7-9. See
Ans. 7.
Therefore, and for similar reasons discussed above with respect to
claim 1, we sustain the Examiner’s rejection of dependent claims 6–9.

DECISION
The Examiner’s decision rejecting claims 1 and 4–16 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED