Ex Parte Gahm et al

Board of Patent Appeals and Interferences

Sep 22, 2010

10143735 (B.P.A.I. Sep. 22, 2010)

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.
10/143,735 05/10/2002 Thomas Gahm 046143/241637 2457
826 7590 09/23/2010
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
ROSWELL, MICHAEL
ART UNIT PAPER NUMBER
2173
MAIL DATE DELIVERY MODE
09/23/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte THOMAS GAHM, RAINER DORRER, JOACHIM SCHMID, and
RYAN WILLIAMS
____________________

Appeal 2009-004331
Application 10/143,7351
Technology Center 2100
____________________

Before JOSEPH L. DIXON, LANCE LEONARD BARRY AND
JAY P. LUCAS, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed May 10, 2002. The real party in interest is TriPath
Imaging, Inc.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-004331
Application 10/143,735

STATEMENT OF THE CASE
Appellants appeal from a final rejection of claims 1 to 40 under
authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).

We affirm the rejections.

Appellants’ invention relates to a method and apparatus for displaying
multiple scans of, perhaps, magnified tissue samples on an electronic display
for comparison and analysis. In the words of Appellants:
The present invention provides a slide
viewer capable of simultaneous display of more
than one scan of an area of interest of a slide. The
slide viewer includes a database containing at least
two data files representing different scans for a
same area of interest on one or multiple correlated
slides or at least two different digital presentations
of the same scan. The scans are views of different
illumination and/or of different contrast.
Associated with the database are a processor and a
display. The processor retrieves data files
representing different scans of the same of area of
interest and displays them on the display. The
present invention allows a user to simultaneously
view scans of the same area of interest, where the
scans are of views different from each other by
either illumination and/or contrast or by the digital
information content presented, and/or by the
information acquired from multiple correlated
slides.
(Abstract, Spec. 31).
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Application 10/143,735

The following illustrates the claims on appeal:
Claim 1:
1. A slide viewer capable of simultaneous
display of more than one scan of an area of interest
of a single slide, said viewer comprising:

a database containing at least two data files
representing different scans for a same area of
interest on a single slide, wherein the scans are of
views that are at least one of a different
illumination or a different contrast;

a processor associated with said database;
and

an interface associated with said processor
for display of the different scans,

wherein said processor retrieves said data
files representing different scans of the same
area of interest on the single slide and displays
these scans on said interface, such that a user may
simultaneously view scans of the same area of
interest on the single slide that are of views
different from each other by at least one of
illumination or contrast.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Onoguchi US 4,420,686 Dec. 13, 1983
Kamentsky US 5,793,969 Aug. 11, 1998
Duncan US 5,917,483 Jun. 29, 1999
Whayne US 6,115,626 Sep. 05, 2000
Papier US 2002/0021828 Feb. 21, 2002
Kernz US 6,640,232 B2 Oct. 28, 2003
(filed on Jan 23, 2002)
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Appeal 2009-004331
Application 10/143,735

Powers US 6,686, 930 B2 Feb. 03, 2004
(filed on Nov. 29, 2000)
REJECTIONS
The Examiner rejects the claims as follows:

R0: Claim 22 stands rejected under 35 U.S.C. § 102(b) for being
anticipated by Kamentsky.
R1: Claims 1 to 11, 15, 19, 23 to 33, and 37 stand rejected under 35
U.S.C. § 103(a) for being obvious over Kamentsky and Onoguchi.
R2: Claims 12, 13, 34, and 35 stand rejected under 35 U.S.C. § 103(a) for
being obvious over Kamentsky and Onoguchi in view of Papier.
R3: Claims 14, 20 and 36 stand rejected under 35 U.S.C. § 103(a) for
being obvious over Kamentsky and Onoguchi in view of Powers.
R4: Claims 16, 21 and 38 stand rejected under 35 U.S.C. § 103(a) for
being obvious over Kamentsky and Onoguchi in view of Duncan.
R5: Claims 17 and 39 stand rejected under 35 U.S.C. § 103(a) for being
obvious over Kamentsky and Onoguchi in view of Whayne.
R6: Claims 18 and 40 stand rejected under 35 U.S.C. § 103(a) for being
obvious over Kamentsky and Onoguchi in view of Kernz.

We will review the rejections in the order argued, and as grouped in
the Briefs. We have only considered those arguments that Appellants
actually raised in the Briefs. Arguments that Appellants could have made
but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

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Appeal 2009-004331
Application 10/143,735

ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 102(b) and 35 U.S.C. § 103(a).
The issue specifically turns on whether Kamentsky and Onoguchi teach the
positional correlation of specimens, the differential contrast of the views,
and other claimed limitations.
FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants have invented a computer based slide viewer system capable
of simultaneously presenting multiple views of the same area of interest
from a single slide or from multiple slides (App. Br. 2, top; App. Br.3,
middle).
2. The Kamentsky reference teaches a computer networked systems for
displaying scanned digital images of biological slide specimens (Col. 5,
ll. 10-35).
3. The Onoguchi reference teaches an electron microscope capable of
displaying specimen images of the same specimen irradiated at diverse
angles (Col. 5, l. 50).

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Appeal 2009-004331
Application 10/143,735

PRINCIPLES OF LAW

Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).

“In reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992).

In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).

ANALYSIS
Appellants argue the following groups of claims (App. Br. 3, 4).

Arguments with respect to the rejection
of claim 22
under 35 U.S.C. § 102 [R0]

The Examiner has rejected claim 22 for being anticipated by
Kamentsky. Appellants demur, contending that “the ‘969 Kamentsky patent
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Appeal 2009-004331
Application 10/143,735

does not teach or suggest positionally correlating the display of the sample
image or proven case with the display of the specimen under examination.”
(App. Br. 5, bottom). In response the Examiner points out that the system of
Kamentsky automatically stores positional indicia of the view corresponding
to the location of the specimen (Col. 3, l. 50). We note that this positional
data is used during subsequent review of the images (Col. 3, l. 53). The
location information is used for comparison alongside proven cases (Col. 8,
ll. 15 to 20).
In view of the numerous citations of the reference to the contrary, we
find this argument of Appellants unsupported. We do not find error in this
rejection under 35 U.S.C. § 102.

Arguments with respect to the rejection
of claims 1 to 11, 15, 19, 23 to 33 and 37
under 35 U.S.C. § 103(a) [R1]

The Examiner has rejected the noted claims for being obvious over
Kamentsky and Onoguchi. Appellants argue that Kamentsky does not
contain a database containing at least two data files representing different
scans for the same area of interest, and Onoguchi does not disclose a
database containing two data files as claimed.
An objection to a rejection over two references must consider the
combination of references, not the teachings of each reference alone. In the
Answer, the Examiner has expressed how the two teachings are combined to
demonstrate the claim being obvious over the prior art (Ans. 4, middle; Ans.
13, bottom). We do not find this combination of teachings to be in error.
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Application 10/143,735

Appellants further contend that “the use of fluorescent dyes as recited
by the ‘969 Kamentsky patent is irrelevant, as the claimed illumination
and/or contrast differences of the two or more scans relate to microscope
settings that are made before scans are taken.” (App. Br. 8, bottom to 9,
top). We agree with the Examiner that this argument is unconvincing (Ans.
14, middle). Claim 1 refers to “views” retrieved from a database, not
microscope settings. We do not find error in this rejection under 35 U.S.C. §
103.

Arguments with respect to the rejection
of claims 14, 20 and 36
under 35 U.S.C. § 103(a) [R3]

The Examiner has rejected the noted claims for being obvious over
Kamentsky, Onoguchi and Powers. Appellants argue that the references
placement of one portion of a view inside another portion is “distinctly
different” from the claimed display of one area of interest inside the view of
another area of interest (App. Br. 11, middle). We have studied the Powers
reference, especially at column 6, lines 1 to 45. We must agree with the
Examiner, that the reference reads on the words of the claim and renders the
claim obvious over the combination of references as recited (Ans. 15, top).
We do not find error in this rejection under 35 U.S.C. § 103.

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Appeal 2009-004331
Application 10/143,735

Arguments with respect to the rejection
of claims 16, 21 and 38
under 35 U.S.C. § 103(a) [R4]

The Examiner has rejected the noted claims for being obvious over
Kamentsky, Onoguchi and Duncan. Appellants argue that the references fail
to teach the reference line on the interface, as claimed, or the superimposed
data scans (App. Br. 13, middle and bottom). We do not find the
Appellants’ arguments convincing for the reasons stated by the Examiner
(Ans. 15, middle).
CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellant has not shown that the Examiner erred in rejecting claims 1 to 40

DECISION
We affirm the Examiner’s rejections R0 to R6 of claims 1 to 40
respectively under 35 U.S.C. § 102(b) and 35 U.S.C. § 103(a).

AFFIRMED

peb

ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
9