Ex Parte Kawashima

Patent Trial and Appeal Board

Sep 10, 2013

10821732 (P.T.A.B. Sep. 10, 2013)

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.
10/821,732 04/08/2004 Yasuyuki Kawashima 11333/38 1524
757 7590 09/11/2013
BRINKS HOFER GILSON & LIONE
P.O. BOX 10395
CHICAGO, IL 60610
EXAMINER
SRIVASTAVA, KAILASH C
ART UNIT PAPER NUMBER
1657
MAIL DATE DELIVERY MODE
09/11/2013 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 PATENT TRIAL AND APPEAL BOARD
__________

Ex parte YASUYUKI KAWASHIMA1
__________

Appeal 2012-000586
Application 10/821,732
Technology Center 1600
__________

Before TONI R. SCHEINER, ERIC GRIMES, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
apparatus for distinguishing between bacillus and coccus bacteria. The
Examiner has rejected the claims for anticipation and obviousness. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Appellant identifies the Real Party in Interest as Sysmex Corporation
(Appeal Br. 1).
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Application 10/821,732

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STATEMENT OF THE CASE
The Specification discloses “apparatuses, methods, and programs for
automatically detecting a bacillus or coccus bacterium in a sample” (Spec.
2:8-10). That is,
when bacillus-containing samples and coccus-containing
samples were compared, the size information of both are
substantially identical but the obtained fluorescent light
information tends to be greater for the bacillus than for the
coccus, which results in differences in the dot distribution on
[a] scattergram.
(Id. at 11:26-31.) A “determination as to whether bacteria in a specimen is
bacillus or coccus is based on the slope of the distribution” (id. at 12:23-25).
Claims 11, 14-21, 25, and 26 are on appeal. Claim 11 is illustrative
and reads as follows:
11. A bacteria measuring apparatus comprising:
a sampling device for processing a sample comprising fluorescently
stained bacteria;
a first detector for detecting size information from each of the bacteria
in the sample;
a second detector for detecting fluorescence information expressing an
intensity of fluorescent light emitted from each of the bacteria in the sample;
a processor;
a memory including programs that enable the processor to execute
operations comprising:
creating a scattergram of the bacteria using the size information
and the fluorescence information as parameters;
obtaining a maximum variance direction of distribution of the
bacteria in the scattergram by analyzing the distribution in the
scattergram; and
determining whether the bacteria in the sample are bacillus or
coccus based on the maximum variance direction of the distribution.

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Claim 25, the only other independent claim, is directed to an
apparatus that includes substantially the same limitations.
The claims stand rejected as follows:
• Claims 11, 14-17, and 25 under 35 U.S.C. § 102(b) as anticipated
by Wallner2 as evidenced by FACStar Plus3 (Answer 4);
• Claims 11, 14, 15, 17, 19, and 25 under 35 U.S.C. § 102(b) as
anticipated by Fukuda4 (Answer 6); and
• Claims 11, 14-21, 25, and 26 under 35 U.S.C. § 103(a) as obvious
based on Wallner, Fukuda, and Dow5 (Answer 6-7).
I.
The Examiner has rejected claims 11, 14-17, and 25 as anticipated by
Wallner (Answer 4). The Examiner finds that Wallner discloses
characterizing bacteria using a flow cytometer that, as evidenced by
FACStar Plus, includes the structural elements recited in the claims (id. at
4-5). The Examiner interprets the “programs that enable the processor to
execute” specific operations recited in claims 11 and 25 to be a “functional
intended use of the apparatus components” that “does not materially change
the apparatus” and therefore is not entitled to patentable weight (id. at 5). In

2 Günter Wallner, et al, Flow Sorting of Microorganisms for Molecular
Analysis, 63 APPLIED AND ENVIRONMENTAL MICROBIOLOGY 4223-4231
(1997).
3 B-D FACSstar Plus Cell Sorter Flow Cytometer (Brochure),
http://www.biomedika.com (Apr. 23, 2002).
4 Fukuda et al., US 6,165,740, Dec. 26, 2000.
5 C.S. Dow et al., Particle size distribution analysis for rapid detection of
microbial infection of urine, 32 J. OF CLINICAL PATHOLOGY 386-390 (1979).
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Application 10/821,732

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the alternative, the Examiner finds that Wallner teaches the recited intended
use (id. at 5-6).
Appellant argues that “[a]lthough Wallner et al. produce scattergrams
from flow cytometry analysis as shown in in FIG. 4, there is no disclosure of
obtaining a maximum variance direction and determining whether the
bacteria in the sample are Bacillus or Coccus based on the maximum
variance direction of the distribution, as recited by independent claims 11
and 25” (Appeal Br. 11-12).
We agree with Appellant that the Examiner has not shown that the
apparatus defined by claims 11 and 25 is disclosed by Wallner. Simply
stated, the issue on appeal is whether the claim language requiring programs
that enable a processor to carry out specified functions is a structural
limitation, as Appellant argues, or merely an intended use of the structure
defined by the remainder of claims 11 and 25, as the Examiner concluded.
We agree with Appellant that the claim language requiring programs
that enable a processor to carry out specific functions defines structural
limitations, and is not merely a recitation of intended use. See Ultramercial,
Inc. v. Hulu, LLC, 722 F.3d 1335, 1348 (Fed. Cir. 2013) (“[P]rogramming
creates a new machine, because a general purpose computer in effect
becomes a special purpose computer once it is programmed to perform
particular functions pursuant to instructions from program software.”)
(quoting In re Alappat, 33 F.3d 1526, 1544 (Fed. Cir. 1994)).
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000). The Specification states that the invention
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relates to “apparatuses, methods, and programs for automatically detecting a
bacillus or coccus bacterium in a sample” (Spec. 1:8-10, emphasis added).
The Specification discloses “an automated bacteria measuring apparatus”
(id. at 13:1-2) that includes “an analysis control unit 400” (id. at 13:15-16).
The analysis control unit (id. at 15:24) “functions as an information
processor 134 . . . [that] is provided with an analyzer 141 . . . [which] is
provided with a scattergram generator 142, analysis unit 143, and
determining unit 144” (id. at 15:29 to 16:1).
The Specification states that the analysis unit determines the variance
of the dots in the scattergram that correspond to bacteria (id. at 20:5-17) and
“determines the directional vector E in which there is maximum variance
through the center of the variance” (id. at 20:18-20); the magnitude of the
vector in the Y direction is designated as P (id. at 20:25-26). “The
determining unit 144 compares the value of P calculated by the analysis unit
143 to a predetermined value A. . . . When P≥A, the bacteria included in the
specimen is determined to be coccus . . . whereas when P