Ex Parte 7457446 et al

Patent Trial and Appeal Board

Jul 16, 2014

95000518 (P.T.A.B. Jul. 16, 2014)

MOD PTOL-90A (Rev.06/08)

APPLICATION NO./
CONTROL NO.
FILING DATE FIRST NAMED INVENTOR /
PATENT IN REEXAMINATION
ATTORNEY DOCKET NO.
95/000,518 11/23/2009 7,457,446

EXAMINER
Procopio / Leica Biosystems Imaging, Inc.
Procopio, Cory, Hargreaves & Savitch, LLP
525 B Street
Suite 2200
SAN DIEGO, CA 92101
Pokrzywa, Joseph
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE

06/16/2015 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.

UNITED STATES DEPARTMENT OF COMMERCE
U.S. Patent and Trademark Office
Address : COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________________________________________________________________________________

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

HAMAMATSU PHOTONICS K. K.
Requester

v.

APERIO TECHNOLOGIES, INC.
Patent Owner and Appellant
________________

Appeal 2012-011446
Reexamination Control 95/000,518
Patent 7,457,446 B2
Technology Center 3900
________________

Before RICHARD M. LEBOVITZ, JUSTIN T. ARBES, and
STANLEY M. WEINBERG, Administrative Patent Judges.

WEINBERG, Administrative Patent Judge.

SECOND DECISION ON REHEARING
Our initial Decision on Appeal (“Decision I”) was mailed on June 19,
2013. Our first Decision on Request for Rehearing (“Decision II”) was
mailed on July 16, 2014. Decision II granted Patent Owner Aperio
Technologies, Inc.’s (“Aperio”) Request for Rehearing in part. We adhered
to our conclusion that the rejection of claims 14 and 27, and claims 15, 17,
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and 19-23 depending from claim 14, under 35 U.S.C. § 112, first paragraph
was not erroneous. Decision II at 4, 5, 15. But we disagreed with the
Examiner’s conclusion regarding unexpected results and concluded that the
unexpected results are sufficient to overcome the § 103 rejections of claims
1, 5-7, 14, 15, 17, and 19-27. Decision II at 15-16. We also notified the
parties that they could file a further request for rehearing. Decision II at 16.
On August 15, 2014, Aperio filed a Second Request for Rehearing
(“Aperio Req. Reh’g II”) contending we should not have affirmed the
rejection of claim 14 and its dependent claims under 35 U.S.C. § 112, first
paragraph. Aperio’s Second Request for Rehearing does not contend we
erred regarding our continued affirmance of the § 112, first paragraph
rejection of claim 27. On September 15, 2014, Requester Hamamatsu
Photonics K. K. (“Hamamatsu”) filed Comments in opposition to Aperio’s
Request for Rehearing II, inaccurately stating that Aperio’s Request for
Rehearing II contested the affirmance of the § 112, first paragraph rejection
of claim 27, in addition to contesting the § 112, first paragraph rejection of
claim 14. (“Hamamatsu Opp. Comments II”). See, e.g., Hamamatsu Opp.
Comments II at 1 (“Patent Owner now asserts that the Board incorrectly
failed to apply this finding when considering the rejection of claims 14 and
27 under 35 U.S.C. § 112.”).
On August 18, 2014, Hamamatsu also filed a Request for Rehearing
(“Hamamatsu Req. Reh’g”) contending we erroneously reversed the
§ 103(a) rejections of claims 1, 5-7, 14, 15, 17, and 19-27 based upon
unexpected results. On September 18, 2014, Aperio filed Comments in
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opposition to Hamamatsu’s Request for Rehearing (“Aperio Opp.
Comments”).
We deny both Requests for Rehearing.
I. Hamamatsu’s Request For Rehearing Regarding Unexpected Results
“One way for a patent applicant to rebut a prima facie case of
obviousness is to make a showing of ‘unexpected results,’ i.e., to show that
the claimed invention exhibits some superior property or advantage that a
person of ordinary skill in the relevant art would have found surprising or
unexpected. The basic principle behind this rule is straightforward – that
which would have been surprising to a person of ordinary skill in a particular
art would not have been obvious.” In re Soni, 54 F.3d 746, 750 (Fed. Cir.
1995). “Mere improvement in properties does not always suffice to show
unexpected results . . . [H]owever, when an applicant demonstrates
substantially improved results, . . . and states that the results were
unexpected, this should suffice to establish unexpected results in the absence
of evidence to the contrary.” Id. at 751.
“Unexpected results are useful to show the ‘improved properties
provided by the claimed [invention] are much greater than would have been
predicted.’” Leo Pharmaceutical Products, Ltd v. Rea, 726 F.3d 1346, 1358
(Fed. Cir. 2013), citing Soni, 54 F.3d at 751. “To be particularly probative,
evidence of unexpected results must establish that there is a difference
between the results obtained and those of the closest prior art, and that the
difference would not have been expected by one of ordinary skill in the art at
the time of the invention. Unexpected properties, however, do not
necessarily guarantee that a new [invention] is nonobvious. While a
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‘marked superiority’ in an expected property may be enough in some
circumstances to render a[n invention] patentable, a ‘mere difference in
degree’ is insufficient. . . . And ‘differences in degree’ of a known and
expected property are not as persuasive in rebutting obviousness as
differences in ‘kind’ – i.e., a new property dissimilar to the known
property.” Bristol-Myers Squibb Co. v. Teva Pharmaceuticals USA, Inc.,
752 F.3d 967, 977 (Fed. Cir. 2014) (citations omitted) (“Bristol-Meyers”),
cert. denied, 135 S. Ct. 2050 (2015).
Whether the Board correctly weighed the evidence of unexpected results
Hamamatsu contends Decision II is erroneous because we reversed
the Section 103(a) rejection solely based on the finding that Aperio’s
evidence had demonstrated unexpected results, without discussing “how this
evidence [wa]s weighed in relation to other factors of the overall
obviousness analysis, such as application of the prior art.” Hamamatsu Req.
Reh’g 2. We disagree.
Decision I recognized the Examiner’s reliance on Pearson to teach a
high resolution image (Decision I at 24) and Hamamatsu’s similar reliance
on Pearson. Decision I at 25. We concluded that Aperio had “not
provide[d] data or other evidence showing that its claimed product
unexpectedly produces substantially improved results as required by Soni,
rather than a mere improvement in properties.” Decision I at 26. Decision I
reached its conclusion in reliance upon and based upon the Examiner’s and
Hamamatsu’s comparison of Pearson’s prior art teachings with Aperio’s
evidence of unexpected results. Decision I therefore weighed Pearson’s
teachings with Aperio’s evidence of unexpected results. Decision II not
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only granted reconsideration of Decision I, it expressly incorporated, and
therefore built upon, Decision I. Decision II at 16. Moreover, Decision II
expressly stated it was again weighing Pearson with Aperio’s evidence of
unexpected results, i.e., considering all the evidence of patentability. See
Decision II at 12-13.
For the above reasons therefore, and for the reasons discussed below,
we have not determined the claims are nonobvious “simply because
secondary considerations evidence exists.” Hamamatsu Req. Reh’g 2.
The closest prior art
As required by Bristol-Meyers, we first identify the closest prior art.
752 F.3d at 977. In doing so, we recognize that Hamamatsu, as appellee,
can defend the Examiner’s decision on any ground that was fully raised
before the Examiner. Rexnord Industries, LLC v. Kappos, 705 F.3d 1347,
1355-56 (Fed. Cir. 2013). For the following reasons, we conclude the
closest prior art for purposes of the unexpected results analysis is Pearson,
US 5,434,629. Our conclusion is based upon the Examiner’s findings and
conclusions and upon the positions taken by Hamamatsu during the inter
partes reexamination before the Examiner and in the briefs and petitions
Hamamatsu has filed with the Board.
Aperio first raised the issue of secondary considerations, including
unexpected results, on pages 26-33 of its April 19, 2010 Reply To Office
Action. Hamamatsu agrees. See Resp. Br. 13 (“Since Patent Owner filed its
response on April 19, 2010 with a declaration of the inventor, Dirk
Soenksen, secondary considerations have been at issue.”) (footnote omitted).
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Hamamatsu submitted responsive Comments on May 19, 2010 (“May
19, 2010 Comments”) asserting Aperio’s “evidence [of unexpected results]
submitted with [Aperio’s] response fails to support this claim of a secondary
consideration.” May 19, 2010 Comments 21.
Specifically, Hamamatsu asserted: “For example, prior art U.S. Patent
No. 5,434,629 (Pearson) describes the advantages of line scan cameras over
area-based CCD imagers, including the ability to generate higher resolution
images and easier uniformity of illumination of the sensor, both of which
predictably contribute to improving image quality over an area-based
scanner.” Id. Hamamatsu also asserted “Pearson describes further that Time
Delay and Integration (TDI) cameras are better still at imaging because of
the ability to image at higher scanning frequencies.” Id. Hamamatsu
concluded that “[t]he improvement in image quality in the ScanScope by
using a line scan camera rather than an area-based camera is therefore
nothing more than a predictable, rather than an unexpected, result.” Id.
Although Hamamatsu also discussed Exhibit K, Hamamatsu did not assert
that Exhibit K was applicable prior art. See May 19, 2010 Comments 22.
In the March 24, 2011 Action Closing Prosecution (“ACP”), the
Examiner’s discussion of unexpected results also relied solely on Pearson.
The Examiner stated: “Pearson expressly states that using a TDI line scan
camera provides a high quality, high resolution image, at extremely fast
speeds [see col. 3, lines 35-37]. Thus, using a TDI line scan camera in a
system, one would expect increased speed as well as superior image
quality.” ACP 65. We note, however, contrary to the Examiner’s assertion,
the Examiner’s cited column 3 portion of Pearson does not expressly refer to
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image quality. Rather, the cited portion states: “TDI line scan cameras are
able to generate high resolution images of objects (or webs) moving at
extremely high speeds.”
Hamamatsu’s May 25, 2011 Comments responsive to the ACP (“May
25, 2011 Comments”), again relied only on Pearson, stating that Pearson’s
characteristics “predictably contribute to improving image quality over an
area-based scanner.” May 25, 2011 Comments 16. Hamamatsu also
asserted: “It is entirely predictable that using a line scan camera, which as
demonstrated by numerous prior art references is known to improve image
quality, with a microscope that provides a focus map (which also improves
image quality by keeping the sample in focus), would produce a higher
quality image than a system using only one or neither of these features.” Id.
Hamamatsu, however, did not identify the “numerous prior art references.”
In the July 7, 2011 Right of Appeal Notice (“RAN”), the Examiner
again relied on Pearson as the closest prior art: “Pearson still expressly
describes that by utilizing a TDI line scan camera, instead of a standard area-
based CCD camera, one could achieve a better higher resolution image.
Thus, as seen in Pearson, an expected result of incorporating a TDI line scan
camera instead of [an] area-based CCD camera would be that a better image
quality would be produced.” RAN 33.
Hamamatsu’s Respondent Brief also relied solely upon Pearson to
counter Aperio’s unexpected results evidence, stating “[i]t was known at
least as early as July 1995
1
that line scan cameras, and more particularly TDI

1
Presumably, Hamamatsu’s reference to July 1995 is Pearson’s July 18,
1995 issue date.
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cameras, provide better image quality than prior art area-based scanners.
Pearson describes the advantages of line scan cameras over area-based CCD
imagers, including the ability to generate higher resolution images and easier
uniformity of illumination of the sensor, both of which one of ordinary skill
in the art would understand as predictably contributing to improving image
quality over an area-based scanner.” Resp. Br. 13. Hamamatsu also
contended “Pearson demonstrates that improved image quality over prior art
area-based imaging systems from use of a line scan camera is a predictable,
rather than an unexpected, result.” Id. at 14. Finally, Hamamatsu contended
“Pearson includes other advantages that improve image quality, such as
easier uniformity of illumination . . . [and] explicitly touts the image quality
enhancements of line scan and TDI cameras over the area-based image tiling
systems.” Id. Again, Hamamatsu did not identify anything else as the
closest prior art to compare with Aperio’s asserted unexpected results.
Pages 6-7 of Hamamatsu’s August 14, 2013 Opposition Comments
also referred only to Pearson.
Hamamatsu’s current Request for Rehearing also relies only upon
Pearson as the closest prior art to compare with Aperio’s device. See
Hamamatsu Req. Reh’g 3-5.
The effect of the rejection based on Douglass, Pearson, and DeWeerd
Hamamatsu relies upon the Examiner’s rejection based on Douglass,
Pearson, and DeWeerd (“the Douglass rejection”). Req. Reh’g 2. However,
Hamamatsu’s reference to the Douglass rejection does not use Douglass or
DeWeerd for comparison to Aperio’s evidence of unexpected results.
Instead, Hamamatsu cites the Douglass rejection in support of its argument
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that “[i]n the present reexamination, the obviousness rejections are much
stronger” than the rejections in Leo because “Pearson provides an express
motivation to combine the references, which was missing in Leo.”
Hamamatsu Req. Reh’g 2. Our Decision I agreed that claims 1, 7, and 24-26
were obvious over this combination of references (Decision I at 18-19) and
we assume, without deciding, for purposes of this decision that the Douglass
rejection is stronger than the rejections in Leo.
Relying upon Leo, 726 F.3d at 1358-59, Hamamatsu suggests we
cannot credit evidence of unexpected results as sufficient to overcome a
Section 103(a) obviousness rejection unless there is further evidence of
additional, multiple secondary considerations and unless the prior art
evidence is weak. Hamamatsu Req. Reh’g 2. Leo contains no such holdings
and Hamamatsu does not point to any case containing such holdings. To the
contrary, our reviewing court in Soni solely relied upon unexpected results
to reverse the Board’s affirmance of an Examiner’s § 103 rejection. See
Soni, 54 F.3d at 750-51.
Hamamatsu also suggests that unexpected results cannot overcome a
prior art rejection when there is an express motivation to combine the
references. Hamamatsu Req. Reh’g 2. Again, Hamamatsu cites no case
supporting such a suggestion and Soni is to the contrary.
Whether Decision II overlooked and misapprehended disclosures in Pearson
which demonstrate that Aperio’s results were expected, i.e., not unexpected

Hamamatsu contends Decision II erroneously “concentrated
exclusively on the topic of ‘resolution,’ and an alleged lack of correlation
between resolution and image quality.” Hamamatsu Req. Reh’g 3.
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According to Hamamatsu, Decision II first failed to consider Pearson’s
teaching that using a line scan camera improves uniformity of illumination.
Id. We disagree. Decision II expressly identified the Respondent Brief’s
contention that easier uniformity of illumination improves image quality; but
concluded that Hamamatsu provided no evidence supporting the contention.
Decision II at 13.
Hamamatsu also contends Decision II failed to consider Pearson’s
statement regarding “the ability of a line scan camera to generate a
continuous image of the object, rather than a sequence of area-based
images.” Hamamatsu Req. Reh’g 3. We have not found where Hamamatsu
presented an argument regarding a continuous image in its Respondent Brief
regarding unexpected results (Resp. Br. 13-14), its May 19, 2010 Comments
at page 21, its May 25, 2011 Comments at page 16, or in its August 14, 2013
Comments at pages 6-7. Instead, pages 13-14 of the Respondent Brief assert
“TDI cameras are better still at imaging because of the ability to image at
higher scanning frequencies;” page 7 of the August 14, 2013 Comments
refers to “utilizing a focusing system;” page 21 of the May 19, 2010
Comments refers to higher scanning frequencies; and page 16 of the May 25,
2011 Comments refers to uniformity of illumination. We could not have
overlooked or misapprehended arguments that were not made.
Hamamatsu “does not dispute that resolution is not the same as image
quality.”
2
Hamamatsu Req. Reh’g 3. But, as it did in its Respondent Brief

2
Hamamatsu seems to agree there is an “absence of a direct correlation
between resolution and image quality.” Hamamatsu Req. Reh’g 4.
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and in its August 14, 2013 Comments, Hamamatsu makes a number of
assertions regarding image quality that are not supported by evidence.
Hamamatsu asserts that “higher resolution is unquestionably a factor
which can positively affect image quality.” Hamamatsu Req. Reh’g 3. It
seeks to justify this unsupported assertion with two additional unsupported
assertions. First, it asserts, “anyone who has compared a high definition
television image (resolution of 1920 x 1080) and a standard definition
television image (resolution of 640 x 840) can attest” to it. Hamamatsu Req.
Reh’g 3-4. Second, it provides attorney interpretation of Exhibit L’s page
24 (Hamamatsu Req. Reh’g 4 n.1), which Hamamatsu has not relied upon
previously. We therefore could not have overlooked or misapprehended
Exhibit L’s page 24. In the absence of evidence, neither the assertion nor
the attorney argument persuades us that higher resolution is a factor which
can “positively affect image quality.” In fact, the evidence in Table 1 of
Exhibit L is to the contrary. Table 1 shows Hamamatsu’s NanoZoomer has
the highest resolution (0.46 micron) with “[a]cceptable image quality” and
Aperio’s ScanScope XT has a lower resolution (0.5 micron), but with the
“[h]ighest image quality.”
In sum, Hamamatsu contends the many factors it has identified in
Pearson (higher resolution, uniform lighting, creating a continuous image)
“when combined, logically imply improvements in image quality . . . thus
making the results of [Aperio’s] commercial system expected.” Hamamatsu
Req. Reh’g 4. Implications, however, are not persuasive without supporting
evidence. Hamamatsu’s additional “implicit” assertions also do not
persuade us that Pearson teaches the use of a line scan camera that would
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result in an improvement of image quality, even if “Pearson would actually
lead one of ordinary skill in the art to replace an area-based imager, such as
that of Douglass, for many of the reasons listed [by Hamamatsu].”
Hamamatsu Req. Reh’g 4-5.

Aperio’s evidence in the Soenksen Declaration and Exhibits K and L
demonstrate substantial unexpected results over the closest prior art in the
absence of evidence to the contrary

The Soenksen Declaration, with Exhibits K and L, demonstrate
unexpected results because they meet the requirements of Soni and Bristol-
Meyers. Bristol-Meyers requires identification of the closest prior art. As
we have shown above, both the Examiner and Hamamatsu consider Pearson
to be the closest prior art. Bristol-Meyers also holds that a difference in
kind, i.e., a new property dissimilar to a known property, is more persuasive
than a difference in degree of a known property in rebutting obviousness.
752 F.3d at 977. Hamamatsu contends our Decision II erroneously
overlooked Pearson’s teachings and factors “because the phrase ‘image
quality’ does not appear ipsis verbis” in Pearson (Hamamatsu Req. Reh’g 4)
thereby “elevat[ing] form over substance.” Hamamatsu Req. Reh’g 1. We
disagree. Pearson’s failure to mention quality does not illustrate a mere
difference in degree. Instead, it demonstrates a difference in kind of a new
property (quality) dissimilar to known properties (resolution, illumination,
focusing).
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The relative timing of Pearson’s disclosure versus the timing of the
other evidence of record further supports Aperio’s claim of unexpected
results.
Pearson was filed on December 20, 1993. As Hamamatsu’s
Rehearing Request demonstrates, Pearson discussed a number of factors that
its device would improve, including resolution. Notably absent from
Pearson is any mention of image quality or any suggestion that those factors
can somehow impact image quality. The ‘446 Patent, however, having a
May 2000 parent application filing date, directly and specifically addresses
high quality digital images. See ‘446 Patent at col. 10, l. 18; col. 20, l. 10.
In October 2006 (Exhibit K), an independently written article praised
Aperio’s apparatus, and no other apparatus, as “remarkable” for “good
quality/speed ratio.” See Decision II at 10 (“Hamamatsu does not dispute
Aperio’s . . . assertion that the article [Exhibit K] does not describe other
devices in a similar way.”). In January 2007, another report (Exhibit L)
recognized image quality “is the most important evaluation criterion” and
stated the Aperio apparatus “offer[ed] the highest quality image with the
most acceptable trade-offs in color, detail and noise artifact.” See Decision
II at 11. Hamamatsu has not presented any evidence to the contrary. See
Soni, 54 F.3d at 751.
On this record as presented by the Examiner and by Hamamatsu,
therefore, the Aperio apparatus described in the ’446 Patent was the first
apparatus identifying image quality as something that could be improved
using a line scan camera and which, in fact, remarkably improved image
quality using a line scan camera. Pearson’s failure to mention image quality,
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in contrast to the subsequent evidence of record, demonstrates that our
Decision II did not exalt form over substance.
Instead, Aperio’s remarkably improved image quality and its highest
image quality in Exhibit L’s Table 1 comparison is a difference in kind, i.e.,
compared to Pearson, Aperio’s device provides a new property dissimilar to
known properties. Neither the Examiner nor Hamamatsu has explained or
persuaded us why in December 1993 or July 1995 (Pearson’s respective
filing and issue dates) one of ordinary skill in the art considering Pearson
would have expected that use of a line scan camera would improve image
quality at all, let alone to the extent described in Exhibits K and L.
Accordingly, we adhere to the conclusion in Decision II that the
objective evidence of unexpected results demonstrates the invention recited
in claims 1, 14, and 27 was not obvious. Decision II at 13, 15.
II. Aperio’s Second Request For Rehearing Regarding
The Section 112, First Paragraph Rejection Of Claim 14

In Decision I, we agreed the Examiner properly interpreted claim 14’s
recitation of “adjust[ing] the focus of the line scan cameras in accordance
with the pre-scanned focus map” as, in effect, reciting “each of the focus of
the plurality of TDI line scan cameras are adjusted in accordance with a pre-
scanned focus map.” Decision I at 7. We also “agreed with the Examiner’s
conclusion that the Specification of the ‘446 Patent describes adjusting the
focus of only one line scan camera in accordance with a pre-scanned focus
map, rather than a plurality of line scan cameras.” Decision II at 2, citing
Decision I at 8. As a result, Decision I “determined that the Specification
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does not demonstrate possession of this limitation.” Decision II at 2;
Decision I at 9.
On the other hand, with respect to objective evidence of
nonobviousness, Decision II recognized that our reviewing court in Rambus
Inc v. Rea, 731 F.3d 1248 (Fed. Cir. 2013) required us to consider objective
evidence of nonobviousness as long as the evidence is reasonably
commensurate with the scope of the claims. Decision II at 9. We
accordingly “considered Aperio’s claimed invention as a whole and we
conclude[d] that Aperio’s evidence of unexpected results applies to its use of
a line scan camera generally” because “the evidence shows that Aperio’s
invention as a whole relies upon a line scan camera, which can be a TDI line
scan camera.” Decision II at 15.
Aperio now contends Decision II is inconsistent and erroneous
because we acknowledged a TDI camera is a type of line scan camera in the
context of objective evidence considerations; but declined to accord such a
broad reading to the § 112, first paragraph analysis. Aperio Req. Reh’g II at
4 (“[S]ince the Board effectively acknowledged that the applicant possessed
a system that adjusts the focus of a plurality of line scan cameras that can be
TDI line scan cameras, then it must also be acknowledged that the applicant
possessed a system that adjusts the focus of a plurality of TDI line scan
cameras.”). We disagree.
Instead, we agree with Hamamatsu that “the requirements for
demonstrating the applicability of secondary considerations to a claim are
much looser than the standard for demonstrating possession of an invention
at the time of filing.” Hamamatsu Opp. Comments II at 2. Because of the
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two different requirements, an invention can exhibit unexpected results; but
a claim describing the invention may not be entitled to patent protection
because the patent application fails to comply with the written description
requirements of § 112, first paragraph for that claim.
Aperio also contends “the Board’s conclusions with respect to the
non-obviousness of Claim 14 compel a further conclusion that the disclosure
reasonably conveys to skilled artisans that the applicant possessed the
invention of Claim 14 as of the filing date of its ancestral application, U.S.
Patent App. No. 09/563,437 (“the ‘437 Application”)”. Aperio Req. Reh’g.
II at 2 (emphasis added). For example, Aperio again contends that claims 1
and 18 of the ’437 Application support claim 14 because they “disclose
focusing a plurality of line scan cameras.” Aperio Req. Reh’g II at 3-4 and 4
n.1. As we stated in Decision II, however, “a description that merely renders
the invention obvious does not satisfy the [written description] requirement.”
Decision II at 4, quoting Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1352 (Fed. Cir. 2010) (en banc). Aperio does not explain why our
reliance on Ariad is incorrect.
Aperio also relies upon the disclosure of the ’437 Application even
though “the disclosure in the Specification of the present patent is identical
to the disclosure in the Specification of the ‘437 Application.” Aperio Req.
Reh’g II at 2. Except for claims 1 and 18 originally filed in the ’437
Application, Aperio does not point to anything in the ’437 Application that
is purportedly more supportive of claim 14 than what is contained in the
Specification of the ’446 Patent at issue.
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Accordingly, we conclude that Aperio has not identified any basis for
us to change our conclusions that claim 14 is not supported by the written
description of the ’446 Patent or claims 1 and 18 of the ’437 Application and
that the Examiner properly rejected claim 14 based upon an insufficient
written description in violation of § 112, first paragraph.
III. CONCLUSION
We adhere to our conclusion that the Examiner did not erroneously
reject claim 14 under 35 U.S.C. § 112, first paragraph; but, based upon
evidence of unexpected results, did erroneously reject claims 1, 14, and 27
as obvious.
Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose
of judicial review. A party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See
37 C.F.R. §§ 90.1 and 1.983.

REHEARING DENIED

PATENT OWNER:
PROCOPIO, CORY, HARGREAVES & SAVITCH LLP
525 B STREET, SUITE 2200
SAN DIEGO, CA 92101-4469

THIRD PARTY REQUESTER:
STEPHEN E. MURRAY
PANITCH SCHWARZE BELISARIO & NADEL, LLP
ONE COMMERCE SQUARE
2005 MARKET STREET, SUITE 2200
PHILADELPHIA, PA 19103