Ex Parte Matsushita et al

Board of Patent Appeals and Interferences

Mar 12, 2012

10013505 (B.P.A.I. Mar. 12, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/013,505 12/13/2001 Masahiro Matsushita Q67623 1087
7590 03/13/2012
SUGHRUE, MION, ZINN, MACPEAK & SEAS, PLLC
2100 Pennsylvania Avenue, N.W.
Washington, DC 20037-3202
EXAMINER
LEE, SHUN K
ART UNIT PAPER NUMBER
2884
MAIL DATE DELIVERY MODE
03/13/2012 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 MASAHIRO MATSUSHITA and
YOSHIFUMI SHIOE
________________

Appeal 2009-009391
Application 10/013,505
Technology Center 2800
________________

Before CARLA M. KRIVAK, ELENI MANTIS MERCADER, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

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SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-10, 12-20, and 24-29:
(I) Claims 1-10, 12-20, 24-28 stand rejected under 35 U.S.C. § 103(a) as
obvious over Kaushikkar (US 2002/0168094 A1; issued Nov. 14,
2002) in view of Namiki (US 5,198,669; issued Mar. 30, 1993),
Suzuki (US 4,527,060; issued July 2, 1985); and
(II) Claims 22 and 23 stand rejected under 35 U.S.C. § 103(a) as obvious
over Kaushikkar in view of Namiki, Suzuki, and Kawajiri
(US 4,922,103; issued May 1, 1990).
We affirm-in-part.

STATEMENT OF THE CASE
Independent claim 1 is illustrative of the claimed subject matter:
1. A scanner comprising:
at least one laser stimulating ray source for emitting a laser beam,
a sample stage on which a sample containing a labeling substance is to
be placed,
a scanning means for moving the sample stage so that the sample
placed on the sample stage can be scanned with the laser beam emitted from
the at least one laser stimulating ray source,
a photomultiplier for photoelectrically detecting light released from
the labeling substance contained in the sample upon being scanned with the
laser beam and producing analog image data, and
an [analog/digital] A/D converter for converting the analog image
data produced by the photomultiplier to digital image data the scanner
further comprising
pixel density signal intensity simulating means for effecting
simulation based on pre-scan digital image data produced by setting a
voltage value of the photomultiplier to a given photomultiplier voltage value
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G0, scanning the sample placed on the sample stage with the laser beam
emitted from the at least one laser stimulating ray source, thereby effecting
pre-scanning, and photoelectrically detecting light released from the labeling
substance contained in the sample as a result of the pre-scanning by the
photomultiplier, which simulation uses the pre-scan digital image data
produced when the voltage value of the photomultiplier is set to G0 to
simulate density signal intensity of each pixel of digital image data that
would be produced by setting the photomultiplier to a voltage value G
different from the voltage value G0, scanning the sample placed on the
sample stage with the laser beam emitted from the at least one laser
stimulating ray source, photoelectrically detecting light released from the
labeling substance contained in the sample by the photomultiplier whose
voltage value is set to G to produce analog image data, and digitizing the
analog image data by the A/D converter.

CLAIMS 1-6, 9, 10, 12-16, 19, 20, and 24-29
Interpretations and Contentions
The Examiner finds that Kaushikkar discloses a scanner that possesses
the following claim structures: at least one laser stimulating ray source, a
sample stage, a scanning means, a photomultiplier, a photomultiplier voltage
value setting means, user input means for adjusting a photomultiplier value,
an A/D converter, and a display means (Ans. 3-4).1 The Examiner also finds
that Kaushikkar discloses (1) pre-scanning is effected to produce pre-scan
digital image data for all the laser beams by setting a voltage value of the
photomultiplier to a given photomultiplier voltage value G0; (2) scanning is
effected to produce scan digital image data for all the laser beams by setting

1 Rather than repeat Appellants’ arguments or the Examiner’s positions in
their entirety, throughout this opinion we refer to the following documents
for their respective details: (1) the Appeal Brief (“App. Br.”) filed May 29,
2008, as modified by the amendment filed August 18, 2008; (2) the
Examiner’s Answer (“Ans.”) mailed October27, 2008; and (3) the Reply
Brief (“Reply Br.”) filed December 29, 2008.
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a voltage value of the photomultiplier to a distinct photomultiplier voltage
value G; and (3) “various test or comparisons may be applied to determine
the photomultiplier voltage value G for scanning from the pre-scan digital
image data” (Ans. 4).
The Examiner additionally finds that Kaushikkar fails to disclose (1)
displaying an image of digital image data and/or simulated digital image
data on the display means, and (2) setting the photomultiplier voltage value
G based on a density signal intensity of the simulated digital image data that
is calculated from the pre-scan digital image data by a pixel density signal
intensity simulating means, as recited in both of independent claims 1 and 12
(Ans. 4-5). The Examiner further finds that Namiki teaches “display[ing] a
scaled histogram from a pre-scan histogram, in order to determine the actual
read condition for obtaining a desired latitude” (Ans. 5). Furthermore,
Suzuki teaches displaying a simulation of a visible image that is to be
obtained based on data obtained for a preliminary read-out, and that this
simulated display depicts an image that is to be obtained by adjusting the
photomultiplier voltage (Ans. 5). That is, the Examiner finds that Suzuki
teaches the claimed pixel density signal intensity simulating means, and that
motivation existed to combine the cited prior art to arrive at the device
recited in independent claims 1 and 12 (Ans. 5-6, and 8-11).
Appellants contend, inter alia, that “col. 13, lines 36-46 of Kaushikkar
[sic: Suzuki] does not disclose [the claim language recited in relation to the
pixel density signal intensity simulation means]” (App. Br. 12). “[W]hile
col. 13, lines 13-21 does not [sic: does] disclose changing the voltage
applied to the photomultiplier, this change is not disclosed as what creates
‘the visible image obtained’ or ‘the visible image displayed’” (id.).
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Appellants further contend,
To the extent that the system of Suzuki refers to identical
replication of an output of CRT and an image to be viewed (col.
13, lines 39-45), it is in connection with amplification control.
See Suzuki col. 8, lines 52-55, and col. 12, lines 19-20. The
Examiner's reliance on such identity bears no weight in relation
to the adjustment of the voltage adjustment. Such identity is
not inherent due to the compensatory effects needed for a
preliminary read-out, due to dynamic range concerns. See
Suzuki, col. 9, lines 5-62.
(Reply Br. 5)
Appellants present additional arguments in the Reply Brief regarding
Namiki (id.). However, Appellants presented no arguments regarding
Namiki in the Appeal Brief (see App. Br. 11-14), and Appellants have not
explained what “good cause” there might be to consider these newly raised
arguments (see Reply Br. 5). Accordingly, we decline to consider these
belated arguments and, instead, consider only the arguments based upon
Suzuki. See Ex Parte Borden, 93 USPQ2d 1473 (BPAI 2010) (informative)
(“conclud[ing] that the regulations set out in 37 C.F.R. § 41, Practice Before
the Board of Patent Appeals and Interferences, do not require the Board to
consider such belated arguments”).
Findings of Fact
The record supports the following Findings of Fact (Fact) by a
preponderance of the evidence:
1. Suzuki states:
Instead of adjusting the read-out gain by changing the
amplification degree of the amplifier connected to the
photodetector, it is possible to use a photomultiplier as the
photodetector and directly changing the gain of the
photodetector by changing the voltage applied to the
photomultiplier.
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(col. 13, ll. 14-19).
2. Suzuki states:
In the embodiments shown in FIGS. 1 and 4, the final
read-out conditions are set by manually operating the control
circuits 314 and 17 based on the visible image obtained by the
preliminary read-out. However, it is also possible to form the
control system so that the visible image displayed on the output
units 210 and 16 becomes identical with the visible image to be
actually obtained for viewing and diagnostic purposes
according to the operation of the control circuits 314 and 17.
(col. 13, ll. 36-44).
Analysis
We adopt the Examiner’s findings regarding Suzuki’s various
teachings and the Examiner’s reasoning regarding how these teachings,
when read as a whole, may be relied upon to modify Kaushikkar (Ans. 3-5,
8-11; see, also, Facts 1, 2). For the reasons set forth in the Examiner’s
Answer, we sustain the obviousness rejection of independent claims 1 and
12, as well as of dependent claims 2-6, 9, 10, 13-16, 19, 20, and 24-29,
which are not argued separately (see App. Br. 11-14; Reply Br. 4-7).
We likewise sustain the rejection of dependent claims 22 and 23 for
the reasons set forth above. Appellants provide no patentability arguments
directed to the additional reference, Kawajiri, but instead argue the
allowability of these claims based upon their dependence from independent
claim 1 (App. Br. 14; Reply Br. 7).

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CLAIMS 7, 8, 17, and 18
Claim 7, which ultimately depends from independent claim 1, reads as
follows:
7. A scanner in accordance with Claim 2 wherein the
density signal intensity shift value calculating means is
constituted so as to calculate a density signal intensity shift
value QL of each pixel in accordance with the following
formula:
ΔQL = 2B/L*{logl0 (G/G0)}
wherein GO is the given photomultiplier voltage value, G
is a photomultiplier voltage value different from the given
photomultiplier voltage value G0, B is the number of bits and L
is latitude.
The Examiner acknowledges that none of the cited prior art expressly
teaches calculating a density signal intensity shift value QL in accordance
with the claimed equation. However, the Examiner finds that the cited prior
art teaches that the effect of each of the equation’s individual parameters
was recognized (Ans. 4-6, 11-13). The Examiner concludes that,
“[t]herefore[,] it would have been obvious to one of ordinary skill in the art
at the time of the invention to display a pre-scan image which can be scaled”
according to the equation claimed (Ans. 6).
Appellants contend that the cited prior art fails to consider various
parameters, and that “the Examiner does not address why a person having
ordinary skill in the art would have selected the relation of claim 7, when
there are many alternatives to log representation which preserve dynamic
range and which do not require use of the relationship of claim 7” (App. Br.
13).
We need not decide whether the cited prior art does consider all of the
parameters or factors of claim 7, individually. Assuming for the sake of
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argument that the cited prior art does recognize the effects of all of the
parameters individually, we agree with Appellants that the Examiner has not
established why one of ordinary skill would have selected the exact
combination of parameters, with the specified relationships, set forth by
claim 7’s equation as a whole, and why one of ordinary skill would not have
not alternatively selected more or less parameters.
We therefore do not sustain the obviousness rejection of claim 7, or of
claim 17, which recites the same equation. We likewise do not sustain the
rejection of claims 8 and 18, which depend, respectively, from claims 7 and
17.

DECISION
The Examiner’s decision rejecting claims 1-6, 9, 10, 12-16, 19, 20,
and 24-29 is affirmed.
The Examiner’s decision rejecting claims 7, 8, 17, and 18 is reversed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED-IN-PART

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