Ex Parte Hulsken et al

Patent Trial and Appeal Board

Sep 7, 2017

13697681 (P.T.A.B. Sep. 7, 2017)

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.
13/697,681 11/13/2012 Bas Hulsken 2010P00430WOUS 5761
24737 7590 09/11/2017
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue PHAM, QUAN L
Suite 340
Valhalla, NY 10595 ART UNIT PAPER NUMBER
2662
NOTIFICATION DATE DELIVERY MODE
09/11/2017 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):
marianne. fox @ philips, com
debbie.henn @philips .com
patti. demichele @ Philips, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BAS HULSKEN and SJOERD STALLINGA
Appeal 2016-008736
Application 13/697,6811
Technology Center 2600
Before BRADLEY W. BAUMEISTER, BRUCE. R. WINSOR, and
MICHAEL J. ENGLE, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1—15, which constitute all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 The real party in interest identified by Appellants is Koninklijke
Philips NV. App. Br. 2.
Appeal 2016-008736
Application 13/697,681
STATEMENT OF THE CASE
Appellants’ disclosed “invention relates to the field of digital
pathology. ... In particular, the . . . invention relates to an autofocus
imaging system for a microscope.” Spec. 1:7—8. Claim 1, which is
illustrative, reads as follows:
1. Autofocus imaging system for a microscope, the
autofocus imaging system comprising:
a primary image sensor arrangement comprising a
primary image sensor (24) for acquiring primary image data of
an object of interest (4);
an autofocus image sensor (26) for acquiring autofocus
image data of an oblique section of the object of interest (4);
wherein the primary image sensor (24) is configured for
sampling a first number of pixels per distance in object space;
wherein the autofocus image sensor (26) is configured
for sampling a second number of pixels per distance in object
space;
wherein the second number is between one quarter and
three quarters of the first number.
The Examiner relies on the following prior art in rejecting the claims
Soenksen US 6,711,283 B1 Mar. 23, 2004
Yazdanfar et al. US 2008/0266652 Al Oct. 30, 2008
Westphal et al. US 2010/0033811 Al Feb. 11,2010
Yuyama US 2010/0220217 Al Sept. 2, 2010
2
Appeal 2016-008736
Application 13/697,681
Claims 1, 4, 5, and 11—15 stand rejected under 35 U.S.C. § 102(b)2 as
being anticipated by Yazdanfar3 et al. (hereinafter “Yazdanfar”). See Final
Act. 4-7.
Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yazdanfar and Yuyama. See Final Act 7—8.
Claims 6,4 9, and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yazdanfar and Soenksen. See Final Act. 9-11.
Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yazdanfar and Westphal et al. (hereinafter “Westphal”).
See Final Act. 11—12.
Rather than repeat the arguments here, we refer to the Briefs (“App.
Br.” filed Dec. 22, 2015, corrected Apr. 26, 2016; “Reply Br.” filed Sept. 21,
2016) and the Specification (“Spec.” filed Nov. 13, 2012) for the positions
of Appellants and the Office Actions (“Final Act.” mailed Aug. 6, 2015;
“Adv. Act.” mailed Sept. 17, 2015) and Examiner’s Answer (“Ans.” mailed
Aug. 16, 2016) for the reasoning, findings, and conclusions of the Examiner.
2 All rejections are under the provisions of 35 U.S.C. in effect prior to the
effective date of the Leahy-Smith America Invents Act of 2011. Final Act 2.
3 Also referred to as “Yazandar” in the record. See, e.g., Final Act. 4.
4 A rejection of claim 6 under 35 U.S.C. § 112, second paragraph, as being
indefinite (see Final Act. 3—4) is withdrawn (see Adv. Act. 1 (items 5, 7)).
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Appeal 2016-008736
Application 13/697,681
ISSUE
The dispositive issue presented by Appellants’ arguments is whether
the Examiner errs in construing the phrase “oblique section of the object of
interest” recited in claim 1 and similarly recited in claims 13—15.5
CONTENTIONS AND ANALYSIS
“During examination, ‘claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” In re Am. Acad, of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)) (ellipses in original). “Without evidence in the
patent specification of an express intent to impart a novel meaning to a claim
term, the term takes on its ordinary meaning.” Optical Disc Corp. v. Del
Mar Avionics, 208 F.3d 1324, 1334 (Fed. Cir. 2000). Although claims are
interpreted in light of the specification, “limitations are not to be read into
the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993).
The Examiner rejects claim 1 as anticipated by Yazdanfar, finding
that Yazdanfar discloses “acquiring autofocus image data of an oblique
section of the object of interest” at item 24 illustrated in Figure 1 and
described in paragraph 24 of Yazdanfar. Final Act. 4. The Examiner
explains as follows:
5 Appellants’ arguments present additional issues. Because the identified
issue is dipositive of the appeal, we do not reach the additional issues.
4
Appeal 2016-008736
Application 13/697,681
An oblique section can be read as a section or a portion which is
not flat. Figure 1 of Yazdanfar shows the sample has multiple
not flat portions or sections. Those portions or sections are
oblique. The auto focus auxiliary image sensor 18 captures
images of those portions or sections of the sample 24 as the
scanning stage 22 moves. Therefore, those images would
contain image data of an oblique portion or section of the sample
24 of interest.
Adv. Act. 2 (emphases added).
Appellants contend “Yazdandar images the surface of the sample, not
a section, much less an oblique section. Examiner’s argument, itself,
assumes that the non-flat surface of the sample (object) is imaged, and not
that a section of the object is imaged.” App. Br. 13.
[T]he oblique section of the auxiliary sensor means that the
auxiliary sensor is tilted with respect to the optical axis, such that
the section (focal plane — profile as it would appear if cut through
by an intersecting plane) scanned is neither parallel nor
perpendicular with the sample. An oblique section does not
describe the geometry of the sample, but rather the relationship
between the auxiliary sensor and the optical axis. The Examiner
has erred in interpreting an oblique section of the object of
interest as a function of the object, itself, as if the claim recited
an oblique portion of the object, interpreting the word oblique to
modify the object instead of the section, as claimed, and the word
section to mean a portion of the tissue layer and not a intersecting
plane (i.e., focal plane) cutting though the tissue layer.
Reply Br. 6—7.
We focus on the word “section” in the phrase “oblique section of the
object of interest,” as there appears to be no genuine dispute as to the
meaning of “object of interest” or “oblique.” Compare Adv. Act. 2 (“An
oblique section can be read as a section . . . which is not flat.”), with App.
Br. 8 (“The word ‘oblique’ is defined as: ‘neither perpendicular nor parallel:
inclined . . .’ (Merriam Webster).”).
5
Appeal 2016-008736
Application 13/697,681
We find no special definition of “section” in the Specification, so we
turn to the ordinary meaning of “section” as it would be understood by one
of ordinary skill in the art in the context of the Specification. A common
dictionary provides the following potentially relevant ordinary meanings of
“section:”
«... 1... b : a part set off by or as if by cutting 3 a : the profile
of something as it would appear if cut through by an intersecting
plane b : the plane figure resulting from the cutting of a solid by
a plane ... 8 a : a part that may be, is, or is viewed as separated.
Merriam-Webster’s Collegiate Dictionary 1056 (10th ed. 1999).
The Examiner construes “section” broadly enough to encompass
definitions lb or 8a, so as to be synonymous with “portion” (see Merriam-
Webster’s Collegiate Dictionary 908 (“portion,” def. 3)), whereas
Appellants contend the broadest reasonable interpretation of “section,” in
light of the Specification, is limited to definitions 3a and 3b, so as to be
synonymous with “cross section” (see id. at 278 (“cross section,” defs. la
and b)).
We agree with Appellants. As explained by Appellants, the
Specification only uses the word “section” in a manner that is synonymous
with “cross section” or “cross-section.” See Reply Br. 5. For example, the
Specification refers to a “section ... cut through the tissue layer.”
Spec. 5:30. Further, the Specification uses “section” interchangeably with
the more specific term “cross-section.” Compare Spec. 11:4 (“oblique
section 5”), with Spec. 6:2 (“oblique cross-section 5”), 13:5—11 (“FIST OF
REFERENCE SIGNS: ... 5 oblique cross-section”); see also Spec. Fig. 2
(item 5).
6
Appeal 2016-008736
Application 13/697,681
It is well settled that Appellants’ disclosure may determine the proper
meaning of the terms used in the claims. Markman v. Westview Instruments,
Inc., 52 F.3d 967, 979-80 (Fed. Cir. 1995) (en banc). “[Interpreting what is
meant by a word in a claim is not to be confused with adding an extraneous
limitation appearing in the specification, which is improper.” In re
Cruciferous Sprout Litig., 301 F.3d 1343, 1348 (Fed. Cir. 2002) (quotation
omitted).
In light of Appellants’ usage of “section” within their Specification,
then, we conclude one of ordinary skill in the art would give “section” its
ordinary meaning that is synonymous with “cross-section” and would not
give it a meaning that is synonymous with “portion” (e.g., a portion of the
surface).6 Therefore, the Examiner has erred by giving the word “section” in
the phrase “oblique section of the object of interest” an unreasonably broad
construction.
For the foregoing reasons, we do not sustain the anticipation rejection
of claim 1 and independent claims 13—15. For the same reasons, we do not
sustain the anticipation rejection of claims 4, 5, 11, and 12, and the
6 We note that a further definition of “section” is “10 : a very thin slice (as of
tissue) suitable for microscopic examination.” Merriam-Webster’s
Collegiate Dictionary 1056. This definition relates to microscopy
generally. However, in the context of the Specification, the tissue sample is
described as an “object of interest” (see Spec. 2:4—5). Furthermore, the
claim recites a “section of the object of interest” (emphasis added) (i.e., a
section of the tissue sample), which requires the “section” to have a
relationship to the object as a whole, rather than being the object as a whole.
Although we do not rely on definition 10 of “section”, we note that it, too, is
consistent with an interpretation that is synonymous with “cross-section.”
7
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Application 13/697,681
obviousness rejections of claims 2, 3, and 6—10, all of which depend from
claim 1.
DECISION
The decision of the Examiner to reject claims 1—15 is reversed.
REVERSED
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