Sysmex Corporation

Patent Trials and Appeals Board

Apr 17, 2020

14991498 - (D) (P.T.A.B. Apr. 17, 2020)

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.
14/991,498 01/08/2016 Keisuke KUWANO 11333/790 9870
757 7590 04/17/2020
BGL
P.O. BOX 10395
CHICAGO, IL 60610
EXAMINER
JASTRZAB, KRISANNE MARIE
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
04/17/2020 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 KEISUKE KUWANO, SHUNSUKE ARIYOSHI, and
TOMOMI SUGIYAMA
Appeal 2020-001165
Reissue Application 14/991,498
Patent 8,706,303 B2
Technology Center 3900
Before JEFFREY B. ROBERTSON, RAE LYNN P. GUEST, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL1

1 This Decision includes citations to the following documents: Final Office
Action dated December 6, 2018 (“Final Act.”); Appeal Brief filed June 6,
2019 (“Appeal Br.”); Examiner’s Answer dated September 25, 2019
(“Ans.”); and Reply Brief filed November 25, 2019 (“Reply Br.”).
Appeal 2020-001165
Reissue Application 14/991,498
Patent 8,706,303 B2

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 seeks our review under
35 U.S.C. § 134 from the Examiner’s final rejection of reissue claims 1–24
in reissue application 14/991,498, filed January 8, 2016. Appeal Br. 1. The
reissue application seeks to reissue U.S. Patent 8,706,303 B2 (“the ’303
patent”), issued April 22, 2014, based on application 13/460,004 filed April
30, 2012. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
Appellant states that the invention relates to a sample processing
apparatus for processing a sample such as blood. The ’303 patent,
col. 1, ll. 13–14. Claim 1, reproduced below, is illustrative of the claimed
subject matter (underlining showing additions and bracketing showing
deleted subject matter reflecting amendments with respect to the issued
claim omitted for clarity, disputed language italicized, reference numbers
added corresponding to those in Figures 3, 5, 6, 9, and 11 as indicated by
Appellant, Appeal Br. 5–6):
1. A clinical sample processing apparatus [1], comprising:
a sample processing unit [2, 3, 32] configured to process
a clinical sample;
a display [42];
a computer [4] connected to the sample processing unit
[2, 3, 32] and to the display [42], and including a non-

2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Sysmex
Corporation. Appeal Br. 1.
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Patent 8,706,303 B2

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transitory memory [404] having an electronic manual
stored therein for the clinical sample processing
apparatus, the electronic manual includes a plurality of
pages, at least some of the pages describing operation
procedures for measuring a clinical sample and at least
some of the pages describing procedures for dealing with
several errors including a predefined number of different
types of errors in an error message list, wherein
the non-transitory memory [404] further includes link
information stored therein that associates the pages of the
electronic manual with predefined number of different
types of errors,
the computer is programmed to monitor a status of the
sample processing unit and, upon a detection of an error
at the sample processing unit, display an error message
[D11] along with a button image [D12] operable to call
up the electronic manual on the display,
the computer is further programmed to read out the link
information from the non-transitory memory in response
to operation of the button, and to create a view of a page
of the electronic manual with a reference to the link
information that directs the view to a particular page
associated with a type of detected error, wherein the link
information directs the view to a page describing an
operation procedure for dealing with the first type of
error [D11, A21], when a first type of error is detected,
and to a page describing an operation procedure for
dealing with a second type of error [D11, A21], when the
second type of error is detected; and
the computer is further programmed to show on the
display a view of the electronic manual [A21], and to
allow a user to scroll to other pages of the electronic
manual.
Response to Notification of Non-Compliant Appeal Brief filed July 18,
2019, 1–2.
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Reissue Application 14/991,498
Patent 8,706,303 B2

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Wakamiya et al.
“Wakamiya”
US 7,707,010 B2 April 27, 2010
Naito US 2007/0233303 A1 October 4, 2007

REJECTIONS3
1. The Examiner rejected claims 1–5, 7, 8, 10–12, 14–16, 20, and 21
under pre-AIA 35 U.S.C. § 102(b) as anticipated by Naito. Final
Act. 10–11.
2. The Examiner rejected claims 1–7, 10–16, and 18–24 under pre-
AIA 35 U.S.C. § 102(b) as anticipated by Wakamiya. Final
Act. 12–13.
3. The Examiner rejected claims 9 and 17 under pre-AIA 35 U.S.C.
§ 103(a) as obvious over Naito. Final Act. 14–15.
4. The Examiner rejected claims 9 and 17 under pre-AIA 35 U.S.C.
§ 103(a) as obvious over Wakamiya. Final Act. 15.
5. The Examiner rejected claim 8 under pre-AIA 35 U.S.C. § 103(a)
as obvious over Wakamiya as applied to claims 1–7, 10–16, and
18–24, and further in view of Naito. Final Act. 15–16.

3 The Examiner withdrew rejections of claims 1–24 under 35 U.S.C. § 101
and claims 2, 4, 5, 7, 10–12, 21, and 24 under 35 U.S.C. § 112(d) or pre-AIA
35 U.S.C. § 112, 4th paragraph in the Answer. Ans. 9.
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Patent 8,706,303 B2

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OPINION
Anticipation -Naito
We limit our discussion to claim 1, which is sufficient for disposition
of this rejection.
The Examiner found Naito discloses, inter alia, a sample analyzer
including a computer with a memory containing operating instructions and
information for coping with errors sensed in the analyzer, which is an
electronic manual that allows operation of the system. Final Act. 10 (citing
Naito, ¶¶ 56, 57, 60, 62, 67, 69, 72–75, 78, and 79). The Examiner found
information for coping with an error status is stored and retrieved via
categorized coping information in the memory, and “the operator may
request via the input device more detailed information and such is
subsequently sent to the display unit to further assist the operator in
correcting the sensed error. Id. (citing Naito, ¶¶ 81, 93, 94, 96, 103, and
104).
Appellant argues, inter alia, Naito does not disclose a non-transitory
memory that includes link information as recited in claim 1. Appeal Br. 21.
Appellant contends Naito discloses coping information is stored in databases
(32a to 32c) of an information server (30), which is not the recited link
information in claim 1. Id.
We are persuaded that Naito fails to anticipate the claimed subject
matter. Claim 1 recites a sample processing apparatus, the apparatus
including: a sample processing unit; a display; and a computer connected to
the sample processing unit and the display. Claim 1 recites the computer
further includes a non-transitory memory, and the computer is programmed
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to monitor the status of the sample processing unit, to display an error
message along with a “button image” when an error is detected, and “to read
out the link information from the non-transitory memory in response to the
operation of the button.”
Naito discloses a sample analyzer including a controller/computer,
where information for coping for an error status is stored and retrieved via
categorized coping information in the memory, and information displayed
includes steps to correct an error. Naito, ¶¶ 67, 69, 72–75, 78, 79, 81, and
103. Although Naito discloses the operator may request more detailed
information that is subsequently sent to the display unit of the sample
analyzer to further assist the operator in correcting the sensed error by virtue
of operating an “Abnormality point button” (57) (Naito ¶¶ 93–96, Fig 10),
such detailed information is obtained from an information server 30 (Naito
¶ 96, Fig. 3), and not from the non-transitory memory of the
controller/computer of the sample analyzer, as required in claim 1.
Thus, Naito fails to disclose the link information associated with the
button image as recited in claim 1. Corning Glass Works v. Sumitomo Elec.
U.S.A., Inc., 868 F.2d 1251, 1255-56 (Fed. Cir. 1989) (“[a]nticipation
requires that every limitation of the claim in issue be disclosed, either
expressly or under principles of inherency, in a single prior art reference.”).
Accordingly, we reverse the Examiner’s rejection of claim 1, and the claims
dependent therefrom.
Because independent claims 14 and 20 recite similar limitations to
claim 1 with respect to the button image, we reverse the Examiner’s
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rejection of those claims, as well as the claims dependent therefrom, for
similar reasons as discussed above with respect to claim 1.

Anticipation – Wakamiya
We limit our discussion to claims 1 and 22, which is sufficient for
disposition of this rejection.
As to claims 1 and 22, the Examiner found Wakamiya discloses a
sample analyzer for analyzing blood including a controller that activates a
display portion displaying an error tile and another section displaying basic
corrective instructions for the operator, the instructions including an action
message and an error icon. Final Act. 12 (citing Wakamiya, col. 2, ll. 50–
67, col. 3, ll. 30–46). The Examiner found the operator may choose the error
icon to receive more detailed instructions including animation of the
structure of the apparatus requiring corrective action. Id. (citing Wakamiya,
col. 9, l. 53 – col. 13, ll. 16–35). As to claim 22, the Examiner found
Wakamiya discloses that an insufficiency of reagents is an error recognized
by the controller. Id. at 13 (citing Wakamiya, Figs. 9 and 10); Ans. 12
(citing Wakamiya, Fig. 7, col. 10, ll. 44–45). The Examiner found that
Wakamiya discloses “all pertinent errors are listed and the user is able to
select information related specifically to the individual errors, essentially
choosing the ‘page’ related to that error.” Ans. 11 (citing Wakamiya, col.
11, ll. 4–33, 45–50; Fig. 7).
Patent Owner contends, inter alia, Wakamiya fails to disclose a non-
transitory memory with link information stored therein to an electronic
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manual with a plurality of pages as recited in claim 1 or a page-sequenced
format of an electronic manual as recited in claim 22. Appeal Br. 27–28.
Claim 1
We are persuaded by Appellant’s argument. Claim 1 recites a clinical
sample processing apparatus including a computer having a non-transitory
memory with an electronic manual that includes two different “plurality of
pages” (“at least some of the pages describing operation procedures for
measuring a clinical sample” and “at least some of the pages describing
procedures for dealing with several errors”). Wakamiya does not disclose
two sets of information each present in a “plurality of pages” as required by
claim 1. Wakamiya, col. 10, ll. 49–59 (“the hard disk 401d of the controller
400a memorizes pieces of information such as error titles (brief description
of the errors), error-occurring places, and methods for recovering errors so
that the pieces of information are associated to one another.”). Thus, we are
of the view that the Examiner’s position that choosing different error
information in Wakamiya is “essentially choosing the ‘page’” associated
with a single set of pages and is insufficient to establish that two different
plurality of pages, as required in claim 1, are met by the single plurality of
pages identified by the Examiner.
As a result, we reverse the Examiner’s rejection of claim 1, and the
claims dependent therefrom. Corning Glass Works, 868 F.2d at 1255–56.
Because independent claims 14 and 20 also recite limitations
requiring two “plurality of pages,” we reverse the Examiner’s rejection of
claim 14 and 20 as well as the claims dependent therefrom, for similar
reasons as discussed above with respect to claim 1.
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Claim 22
Claim 22 recites a clinical sample processing apparatus including a
computer having a non-transitory memory with an electronic manual that
includes “a series of operation procedures for measuring a clinical sample
and for dealing with different types of errors in page sequence” (emphasis
added). Thus, claim 22 requires a sequence of pages, i.e., pages in a
particular order. Although as discussed above, Wakamiya discloses the hard
disk of the controller memorizes pieces of information such as error titles,
error-occurring places, and methods for recovering errors (Wakamiya, col.
10, ll. 49–59), there is no indication that such are organized in a sequence of
pages as recited in claim 22. Thus, the Examiner’s position that Wakamiya
states the information is in “page format” and “categorized” and arranged
such that related information is “associated” with a given error (Ans. 11)
does not sufficiently establish that Wakamiya discloses an electronic manual
including a series of operation procedures for measuring a clinical sample
and for dealing with different types of errors in page sequence, as required
in claim 22.
As a result, we reverse the Examiner’s rejection of claim 22. Corning
Glass Works, 868 F.2d at 1255–56.
Because independent claim 23 also recites “the electronic manual
includes a series of operation procedures for measuring a clinical sample and
for dealing with each type of error in page sequence,” we reverse the
Examiner’s rejection of claim 23 as well as the claim 24 dependent
therefrom, for similar reasons as discussed above with respect to claim 22.
Appeal 2020-001165
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Patent 8,706,303 B2

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Obviousness Rejections
As to dependent claims 8, 9, and 17, which are rejected as obvious
over Naito and Wakamiya, either alone or in combination, the obviousness
rejections do not remedy the deficiencies identified above with respect to
Naito and Wakamiya as applied to independent claims 1 and 14, from which
claims 8, 9, and 17 depend from, either directly or indirectly. As a result, we
reverse the Examiner’s rejections of claims 8, 9, and 17 for similar reasons
as discussed above.
CONCLUSION
The Examiner’s rejections are reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 7, 8,
10–12, 14–
16, 20, 21
102 Naito 1–5, 7, 8,
10–12, 14–
16, 20, 21
1–7, 10–16,
18–24
102 Wakamiya 1–7, 10–
16, 18–24
9, 17 103 Naito 9, 17
9, 17 103 Wakamiya 9, 17
8 103 Wakamiya, Naito 8
Overall
Outcome
1–6, 7, 8,
9, 10–12,
14–16, 17,
18–24
Appeal 2020-001165
Reissue Application 14/991,498
Patent 8,706,303 B2

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REVERSED