Ex Parte Ho et al

Board of Patent Appeals and Interferences

Apr 30, 2010

11040493 (B.P.A.I. Apr. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PATRICK HO and EDWARD J. GAVIN

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Appeal 2009-003052
Application 11/040,493
Technology Center 2800
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Decided: April 30, 2010
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Before NAPPI E. ROBERT, KENNETH W. HAIRSTON,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-003052
Application 11/040,493

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the non-final
Rejection of claims 1, 2, and 4-21. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
INVENTION
Appellants’ claimed invention is directed to classification of spectra
from at least two different groups of samples (i.e., pathological v. non-
pathological) using a classification model (Spec. [0062]).

Claim 1, reproduced below, is representative of the subject matter on
appeal:
Claim 1. A method for processing spectra, the method comprising:
(a) obtaining a plurality of spectra, each spectrum in the plurality of
spectra comprising a signal including a signal strength as a function of time-
of-flight, mass-to-charge ratio, or a value derived from time-of-flight or
mass-to-charge ratio;
(b) forming a signal cluster by clustering signals from the plurality of
spectra with time-of-flights, mass-to-charge ratios, or values derived from
time-of-flights or mass-to charge ratios that are within a window that is
defined using an expected signal width value;
(c) determining a cluster center value associated with the signal
cluster; and
(d) creating an analytical model using the cluster center value,
wherein the analytical model is capable of classifying samples into classes
associated with different conditions, wherein the signal cluster is a first
signal cluster, the window is a first cluster window, and the expected signal
width is a first expected signal width, and wherein the method further
includes forming a second signal cluster using a second cluster window, the
second cluster window being defined using a second expected signal width.
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Appeal 2009-003052
Application 11/040,493

THE REJECTION
The Examiner relies upon the following as evidence of unpatentability:
Paulse WO 02/42733 A2 May 30, 2002

The following rejection is before us for review:
The Examiner rejected claims 1, 2, and 4-21 under 35 U.S.C. § 102(b)
as being unpatentable over Paulse.1

ISSUE
The pivotal issue is whether the Examiner erred in finding that Paulse
teaches the limitation of “a second signal cluster using a second cluster
window, the second cluster window being defined using a second expected
signal width.”

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).

ANALYSIS
Appellants argue (App. Br. 15), inter alia, that the Examiner has not
shown that Paulse teaches a “second cluster window” that is formed using a

1 The Examiner withdrew the rejections of claims 19 and 20 under 35 U.S.C.
§ 112, second paragraph and of claims 1-2, 4-17, 19, and 20 under 35 U.S.C.
§ 101 (Ans. 12).
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Appeal 2009-003052
Application 11/040,493

“second expected signal width” as recited in claim 1. We are persuaded by
Appellants’ argument. The Examiner has not addressed these limitations in
the Final Rejection (Fin. Rej. 6-7). The Examiner’s response (Ans. 22-23)
points to Paulse’s Figure 7 and related description (pg. 32, ll. 14-31) but
makes no attempt to identify, nor can we determine from the record before
us, how the aforesaid Figure 7 and related description correlates with a
“second cluster window” and a “second expected signal width.”
For the foregoing reasons, we will reverse the Examiner’s rejection of
claim 1 and for similar reasons the rejection of claims 2 and 4-21.

CONCLUSION
The Examiner erred in finding that Paulse teaches the limitation of “a
second signal cluster using a second cluster window, the second cluster
window being defined using a second expected signal width.”

ORDER
The decision of the Examiner to reject claims 1, 2, and 4-21 is
reversed.

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Appeal 2009-003052
Application 11/040,493

REVERSED

ELD

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