Carl Zeiss Microscopy GmbH

Patent Trials and Appeals Board

Mar 3, 2020

14255914 - (D) (P.T.A.B. Mar. 3, 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.
14/255,914 04/17/2014 Alexander GAIDUK 069608-3 2429
22204 7590 03/03/2020
NIXON PEABODY, LLP
799 Ninth Street, NW
SUITE 500
WASHINGTON, DC 20001
EXAMINER
MIKESKA, NEIL R
ART UNIT PAPER NUMBER
2485
NOTIFICATION DATE DELIVERY MODE
03/03/2020 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):
ipairlink@nixonpeabody.com
nppatent@nixonpeabody.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALEXANDER GAIDUK, DOMINIK STEHR, BENNO RADT,
WOLD JOCKUSCH, ENRICO GEISSLER, JOHANNES WINTEROT,
MARKUS GNAUCK, JOHANNES KNOBLICH, and MAX FUNCK
____________

Appeal 2018-006971
Application 14/255,914
Technology Center 2400
____________

Before CAROLYN D. THOMAS, CARL W. WHITEHEAD JR, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–10, 12, 14–18. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b). An Oral Hearing was held on
February 25, 2020.
We AFFIRM.

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 Carl Zeiss
Microscopy GMBH. Appeal Br. 3.
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Application 14/255,914

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The present invention relates generally to a digital microscope. See
Spec., Abstract.
Claim 1 is illustrative:
1. A digital microscope comprising:
an optics unit and a digital image processing unit, which
are arranged on a swiveling microscope stand;
a microscope image sensor for capturing an image of a
sample to be arranged on a sample table;
at least one first monitoring sensor for observing an
overview image, wherein the overview image comprises an image of
the sample, and either the sample table, the optics unit or a user; and
a monitoring unit, wherein, in the monitoring unit, data
of the monitoring sensor are evaluated in an automated manner and
used for automated control of the digital microscope; and
wherein, in the monitoring unit, user input is received to
identify areas in the overview image and to select a desired
magnification to automatically move the sample table and
automatically adjust the optics unit to capture the microscopic image
of the sample in response to the input.

Appellant appeals the following rejections:
Claims 1–10, 12, and 14–18 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over (at least) Douglass (US 2007/0206843 A1, Sept. 6,
2007) and Kiyota (US 2013/0027539 A1, Jan. 31, 2013) in combination with
various other prior art. See Final Act. 2–7.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

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Application 14/255,914

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ANALYSIS
Appellant contends that the combined teachings of Douglass and
Kiyota does not teach “receiving user input to identify areas in the overview
image . . . and select a desired magnification.” Appeal Br. 10–11. Appellant
further contends that “[b]y Douglass’ own admission, ‘the present invention
provides a method and apparatus for automated cell analysis which
eliminates the need for operator input to locate cell objects for analysis.’”
Id. at 10. Additionally, Appellant contends that “the Examiner only cites
Kiyota to render obvious the claimed monitoring sensor for observing an
image of the sample” (Id. at 11) and “the Examiner cites Pittsyn and Ledley
for allegedly teaching additional features.” Id. at 12.
In other words, Appellant contends that the Examiner primarily relies
upon Douglass to teach or suggest “receiving user input to identify areas in
the overview image . . . and select a desired magnification” and Douglass is
silent about receiving user input for such claimed features. Appellant’s
argument in the Appeal Brief emphasizes the invention’s need for operator
input and how Douglass “eliminates the need for operator input.” See
Appeal Br. 10. As a result, our analysis is directed to this specific
highlighted language.
In response, the Examiner finds, and we agree, that both Douglass and
Kiyota teaches receiving user input to identify areas and to select
magnification. See Ans. 7–8.
For example, Douglass discloses:
The operator can specify the size, shape and location of the area to be
scanned or alternatively, the system can automatically locate this area.
The operator then commands the system to begin automated scanning
of the slides through a graphical user interface. Unattended scanning
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begins with the automatic loading of the first carrier and slide onto the
precision motorized X-Y stage 38.
¶ 48.
Each slide is then scanned at a user selected low microscope
magnification, for example, 10x, to identify candidates cells based on
their color, size and shape characteristics.
¶ 49.
In other words, Douglass discloses a user specifying the location of
the area to be scanned and selects a low microscope magnification to scan
the slide. As such, we find unavailing Appellant’s contention that Douglass
“is silent with respect to receiving user input to” given the aforementioned
disclosure in Douglass.
Similarly, Kiyota discloses:
Further, the CPU 51 displays a magnification change button 58b1, in
the vicinity of the micro live image 58b on the display 58. The
magnification change button 58b1 is a button with which the user
inputs an instruction of changing the observation magnification, into
the computer 50.
¶ 98.
Note that when the user selects a partial area which is not highlighted
on the tiling fluorescence image 58d, it is possible to cancel the
designation of the extraction target candidate at the present moment,
and to designate the selected partial area as a new extraction target
candidate.
¶ 104. In other words, like Douglass, Kiyota also teaches user input to
identify areas and to select a desired magnification. As such we have
cumulative teachings of the argued limitations, i.e., Kiyota’s teachings are
not necessary.
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As a result, we find unavailing Appellant’s contention that Douglass
and/or Kiyota fails to teach or suggest user input is received to identify areas
in the overview image and to select a desired magnification, as recited in
independent claims 1 and 7. We note that independent claim 18 does not
include any user input limitation, as such Appellant’s unpersuasive
arguments supra do not relate to claim 18, and no separate argument were
made regarding claim 18.
Accordingly, we sustain the Examiner’s rejection of representative
claim 1. Appellant’s arguments regarding the Examiner’s rejection of
independent claims 7 and 18 rely on the same arguments as for claim 1, and
Appellant does not argue separate patentability for the dependent claims.
We, therefore, also sustain the Examiner’s rejection of claims 2–10, 12, and
14–18.
New Argument in Reply Brief
Appellant newly contends: “Assuming arguendo, that Douglass
teaches this manual input, Douglass does not teach selecting a desired
magnification to automatically move the sample table and automatically
adjust the optics unit to capture the microscopic image of the sample in
response to the input. Reply Br. 2. Here, Appellant argues different
features of the claims, i.e., automatically moving/adjusting.
The Examiner’s statement of rejection for claim 1 in the Answer
appears to be substantially the same as, if not identical to, the statement of
the rejection in the Final Rejection. See Final Act. 2–3; Ans. 7. The
Examiner merely adds cumulative teachings from Kiyota, which Appellant
fails to rebut. Ans. 7. Appellant thus could have presented the new
argument regarding automatically moving/adjusting in support of claim 1 in
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the Appeal Brief, such that we would have had benefit of the Examiner’s
evaluation of the argument in the responsive Answer. Appellant does not
explain what good cause there might be to consider the new argument.
Appellant’s new argument is thus untimely and has, accordingly, not been
considered. See Ex parte Borden, 93 USPQ2d 1473 (BPAI 2010)
(informative).

CONCLUSION
The Examiner’s rejections of claims 1–10, 12, and 14–18 as being
unpatentable under 35 U.S.C. § 103 over at least Douglass and Kiyota is
affirmed.

In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–10, 12,
14–18
103 (at least) Douglass,
Kiyota
1–10, 12,
14–18

No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED