Ex Parte Hulsken et al

Patent Trial and Appeal Board

Dec 26, 2018

13519360 (P.T.A.B. Dec. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/519,360 06/27/2012 Bas Hulsken
24737 7590 12/28/2018
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2009P01772WOUS 1012
EXAMINER
KWAN,MATTHEWK
ART UNIT PAPER NUMBER
2482
NOTIFICATION DATE DELIVERY MODE
12/28/2018 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte BAS HULSKEN and SJOERD STALLINGA
Appeal 2018-005238 1
Application 13/519,360
Technology Center 2400
Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
ADAM J. PYONIN, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1--4, 6, and 8-28. App. Br. 2. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Koninklijke Philips, N.V. is identified as the real party in interest. App.
Br. 2.
Appeal2018-005238
Application 13/519,360
STATEMENT OF THE CASE
Appellants' disclosure relates to "microscopically imaging a sample,
with a digital scanner comprising a sensor including a 2D array of pixels and
[ connected] to a digital scanning microscope." Abstract. Claims 1, 16, and
21 are independent; claims 1 and 16 are reproduced below for reference
(some formatting added):
1. A method for microscopically imaging a sample with a
scanner comprising a sensor including a 2D array of pixels in an
XY coordinate system, the axis Y being substantially
perpendicular to the scan direction, wherein the scanner is
arranged such that the sensor can image an oblique cross section
of the sample, and wherein the method comprises the steps of:
activating a first sub-array of the 2D array of pixels, the
first sub-array extending mainly along the Y axis at a first X
coordinate (X 1) and the first sub-array including a line of pixels,
creating a first image by imaging a first area of the sample
by means of the first sub-array of pixels,
adjusting the first X coordinate (XI) during a scanning
process to updated positions at which the scanner determines the
line of pixels will be in focus,
imaging a second area of the sample with a subset of pixels
of the 2D array of said sensor, the subset of pixels being different
than the first sub-array of pixels,
deriving focus information from the image of the second
area, and
determining the first X coordinate (X 1) from the focus
information.
16. A method for imaging an oblique cross section of a sample
comprising the step of using a 2D array sensor including a 2D
array of pixels in an XY coordinate system as a simulated X-line
sensor by
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solely activating a first sub-array so that it comprises less
than three rows of pixels that are immediately adjacent to each
other along the Y axis. 2
The Examiner's Rejections
Claims 1--4, 6, 8-15, 17, and 21-28 stand rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite. Final Act. 4.
Claims 16 and 18 stand rejected under 35 U.S.C. § I02(b) as being
anticipated by Bamford (US 2009/0295963 Al; Dec. 3, 2009). Final Act. 5.
Claims 1--4, 6, 8-15, 17, and 19-28 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Bamford and Dong (US 2005/0089208
Al; Apr. 28, 2005). Final Act. 6-17.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments. We have considered in this Decision only those arguments
Appellants actually raised in the Briefs. Any other arguments Appellants
could have made but chose not to make are deemed waived. See 37 C.F.R.
§ 41.3 7 ( c )(1 )(iv). Except as indicated below with respect to the
indefiniteness rejections, we are not persuaded the Examiner erred; we adopt
2 Should there be further prosecution of this application (including any
review for allowance), the Examiner may wish to determine if claim 16 is
structured as a single step-plus-function claim under 35 U.S.C. § 112, sixth
paragraph and, therefore, not compliant with 35 U.S.C. § 112, first
paragraph. See 0.1. Corp. v. Tekmar Co., 115 F.3d 1576, 1582
(Fed.Cir.1997) (35 U.S.C. § 112, sixth paragraph, "can apply not only to a
combination of mechanical elements, but also to a combination of ... steps in
a process claim.")(quotations omitted); see also In re Hyatt, 708 F.2d 712,
714 (Fed. Cir. 1983) ("the proper statutory basis for the rejection of a single
means claim is the requirement of the first paragraph of§ 112.").
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Application 13/519,360
the Examiner's findings and conclusions as our own, and we add the
following for emphasis.
A. Indefiniteness
The Examiner finds the following terms indefinite: (1) "mainly"
appearing in claims 1, 2, 8, 17, 21, and 22 (Final Act. 4), and (2)
"substantially" appearing in claims 1, 6, 13, 21, and 26 (Final Act. 4--5).
Appellants point to the portion of the disclosure that defines
"substantially" and "mainly." See App. Br. 7-11, citing Spec. 2:20-3: 13
and Spec. 8:10-16. The Examiner finds the cited portion of the disclosures
insufficient to establish the claims are definite because "[ t ]he first quoted
passage [Spec. 2:29-3:13] uses the relative term 'slightly' to define
'substantially"' and "[t]he Appellant uses the term 'substantially' to define
'mainly."' Ans. 17, quoting Spec. 8:10-11. Appellants contend that "when
read in light of the filed application is certainly within the purview of the
ordinarily skilled artisan." Reply Br. 4.
We are persuaded by Appellants' arguments. Regarding Appellants'
use of the term "substantially,"
[ w ]here an inventor chooses to be his own lexicographer and to
give terms uncommon meanings, he must set out his uncommon
definition in some manner within the patent disclosure so as to
give one of ordinary skill in the art notice of the change."
In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). A review of the
disclosure indicates Appellants give notice of an expansive definition for the
term "substantially," in which "substantially perpendicular" encompasses an
angle "in a range between 60 and 120 degrees," noting that "such a range
still provides a throughput of at least 87%." Spec. 3: 14--15. We do not find
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Application 13/519,360
such definition indefinite, as "[b ]readth of a claim is not to be equated with
indefiniteness." MPEP § 2173. 04, citing In re Miller, 441 F .2d 689, 693
(CCPA 1971).3
Regarding Appellants' use of the term "mainly," the disclosure
provides examples illustrating how "a sub-array extending mainly along the
Y axis should mean that the number of columns is substantially greater than
that of rows." Spec. 8:10-11; see Spec. 8:12-16. One skilled in the art
would thus be appraised of the scope of this term as used in the claims.
Accordingly, we do not sustain the Examiner's rejections of claims 1-
4, 6, 8-15, 17, and 21-28 as indefinite.
B. Anticipation
Appellants argue Bamford describes "capturing one pixel in different
rows in the X direction (by means that are not described)," and that "unlike
the method of the claim 16 (reciting activating a limited number of pixels in
a sensor), the camera of Bamford, et al. is not disclosed as being activated in
such a controlled way." App. Br. 8. Appellants also contend "the Examiner
has not identified the referenced terms ["a simulated X-line sensor" and
"activating a first sub-array"] in the context of the filed application to
establish their breadth. Rather, the Examiner merely concludes that these
terms are met by the applied art." Reply Br. 7.
We are not persuaded of error. The Examiner finds, and we agree,
that "Bamford discloses a series of line scan cameras ([0042]) or a sensor
that scans along the X-axis (figs. 3, 4 and 1). Only one line (less than three
3 We note that whether Appellants have provided sufficient written
description or enablement support for the entirety of the range is a separate
issue that is not before us.
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Application 13/519,360
immediately adjacent rows) is being activated at one time ([0045] and fig. 4,
Exposure 1)." Ans. 18. The Examiner's finding that a line of pixels is
activated in Bamford is confirmed the reference's teaching that "[a]t each
exposure epoch, the M Z-adjacent pixel rows are read from the camera."
Bamford ,r 44; see also Bamford ,r 43. A single pixel row (surrounded by
immediately adjacent un-activated pixel rows), such as represented by
Bamford in Figure 4, Exposure 1, is tantamount to the claimed "first sub-
array." Compare Fig. 3 and Spec. 8:3-5, with Bamford Fig. 3 and ,r 42--46.
Appellants' argument regarding the Examiner's claim interpretation
related to the "simulated X-line sensor" and "activating a first sub-array" in
the Answer is not persuasive, as Appellants do not provide argument or
evidence ( such as citations to the Specification) which contradicts the
Examiner's findings. Reply Br. 7; see also Ans. 17-18. Accordingly, we
affirm the rejection of independent claim 16, as well as dependent claim 18,
not argued separately. See App. Br. 15.
C. Obviousness
Appellants argue that in Dong,
there is no disclosure of adjustment of the first X coordinate (XI)
of a first sub-array of the 2D array of pixels (see Fig. 3 above)
to an updated position where the scanner determines the line of
pixels will be in focus. Rather, a position is determined that is
to be focused upon, and the x-yposition of microscope stage 14
is subsequently adjusted.
App. Br. 17. Appellants contend that under KSR Intern. Co. v. Teleflex Inc.,
550 U.S. 398 (2007), "the motivation [to combine] must exist in the prior
art, not in a conclusion asserted in the Final Office Action that is
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Application 13/519,360
unsupported by a finding of fact within the prior art." App. Br. 18, citing
KSR at 407.
The Examiner finds, and we agree, that "Dong teaches creating a first
image by imaging a first area of the sample by means of the first sub-array
of pixels ([0057], lines 1-5, [0058], lines 1-5 and fig. 4)" and additionally
teaches "deriving focus information from the image of the second area
(Dong fig. 4, #620), and determining the first X coordinate (XI) from the
focus information (Dong [0057], lines 1-5, [0058], lines 1-5 and fig. 4,
#635)." Ans. 19. That Dong appears to move the microscope stage in the
scanning process does not persuade us the Examiner errs in finding one of
ordinary skill would combine the teachings of Bamford and Dong, such that
the relative movement between the specimen to be scanned and the pixel
array is key to determining the focus and constructing a three-dimensional
image of the specimen. See Ans. 21-22.
Appellants' argument "motivation must exist in the prior art" appears
to be a recitation of the "teaching, suggestion, or motivation test" described
as being a "rigid approach." KSR, 550 U.S. at 415; see Final Act. 18. Here,
the Examiner finds one of ordinary skill would have reason to combine the
teachings of Bamford and Dong "to increase the speed of obtaining in-focus
microscope images." Final Act. 8, citing Dong ,r 55. We find the Examiner
provides an articulated reasoning with rational underpinnings sufficient to
justify the legal conclusion of obviousness, as Dong evidences a desire
among artisans to find ways to increase scanning speed. See
Dong ,r 55; KSR, 550 U.S. at 418. We additionally agree with the Examiner
that one skilled in the art would recognize that "there is always room for
improvement to increase speed even further." Ans. 21.
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Accordingly, we sustain the rejection of independent claim 1, and
independent claim 21 commensurate in scope, as well as dependent claims
2--4, 6, 8-15, 17, 19, 20, and 22-24 not separately argued. See App. Br. 20-
21.
DECISION
The Examiner's decision rejecting claims 1--4, 6, 8-15, 17, and 21-28
under 35 U.S.C. § 112, second paragraph, is reversed.
The Examiner's decision rejecting claims 16 and 18 under 35 U.S.C.
§ 102(b) is affirmed.
The Examiner's decision rejecting claims 1--4, 6, 8-15, 17, and 19-28
under 35 U.S.C. § 103(a) is affirmed.
The Examiner's decision is affirmed because we have affirmed at
least one ground of rejection with respect to each claim on appeal. See 37
C.F.R. § 4I.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See 37
C.F.R. § 4I.50(f).
AFFIRMED
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