Ex Parte Xu et al

Patent Trial and Appeal Board

Aug 31, 2016

11844920 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111844,920 08/24/2007
26161 7590 09/02/2016
FISH & RICHARDSON P,C (BO)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
FIRST NAMED INVENTOR
Heng Xu
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.
38591-0029001 7763
EXAMINER
PARK, PATRICIA JOO YOUNG
ART UNIT PAPER NUMBER
3777
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
P ATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HENG XU and BRADLEY W. RICE
Appeal2013-004318
Application 11/844,920
Technology Center 3700
Before JOHN C. KERINS, BRANDON J. WARNER, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Heng Xu and Bradley W. Rice (Appellants) seek our review under
35 U.S.C. § 134(a) of the Examiner's final rejection of claims 1-9, 12, and
15-35. Claims 10, 11, 13, and 14 are canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
Appeal2013-004318
Application 11/844,920
THE INVENTION
Appellants' invention is directed to a method for spectrally unmixing
light data corresponding to light emitted from multiple light sources internal
to an animal. Independent claim 1, reproduced below, is illustrative:
1. A method for spectrally unmixing light data corresponding to
light emitted from multiple light sources internal to an animal,
the method comprising:
selecting an excitation wavelength band for excitation light
provided to the animal;
selecting an emission wavelength band that limits light
wavelengths collected from the animal;
providing excitation light, into the animal, that is limited to the
excitation wavelength band;
capturing a first image of at least a portion of the animal, where
the first image includes light data that is limited in wavelength to
the emission wavelength band and corresponds to light emitted
by multiple fluorescent light sources internal to the animal;
changing the excitation wavelength band and/or the emission
wavelength band;
capturing at least one additional image of at least the portion of
the animal that uses a different combination of excitation
wavelength band and emission wavelength band for each
additional image, where each additional image includes light
data that corresponds to light emitted by the multiple fluorescent
light sources internal to the animal and is limited in wavelength
to the emission wavelength band of the different combination;
and
unmixing spectra for the multiple fluorescent light sources
internal to the animal to determine a spectrum for each light
source using an iterative solution process by a processor, wherein
the captured images are input to said iterative solution process,
and wherein said iterative solution process by the processor
includes applying a constraint that includes a unimodality
constraint that limits the spectrum for each light source in the
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Application 11/844,920
process to having a single peak, a bandpass constraint that limits
the spectrum for each light source in the process to within a
desired wavelength range, or both.
THE REJECTIONS ON APPEAL
The Examiner has rejected:
(i) claims 1-3, 6-9, 12, 15-17, 19, and 25-32 under 35 U.S.C.
§ 102( e) as being anticipated by Levenson (US 2008/0294032
Al, published Nov. 27, 2008);
(ii) claims 20-24 under 35 U.S.C. § 102(e) as being anticipated by
Hoyt (US 2006/0146346 Al, published July 6, 2006); and
(iii) claims 4, 5, 18, and 33-35 under 35 U.S.C. § 103(a) as being
unpatentable over Levenson in view of Hoyt.
ANALYSIS
Claims 1-3, 6--9, 12, 15-17, 19, and 25-32--Anticipation by Levenson
Appellants argue that the Examiner has failed to establish that the
Levenson system discloses that "constraint functions of the claimed iterative
process [ofunmixing spectra] are performed by a processor," as claimed, in
that the constraints identified by the Examiner as being imposed in the
Levenson system are performed by hardware. Appeal Br. 9 (italics omitted).
Appellants further maintain that "using a processor to perform the
specifically recited constraints in an iterative solution process is significantly
different than using hardware items to perform such constraints." Id. at 11.
As to the latter, the Examiner points out that "Levenson explicitly
teach[ es] that spectral analysis and image processing by spectral unmixing
can be implemented in hardware or software ([0209]-[02 l l]) which will
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Application 11/844,920
result in the same processing result of the spectral unmixing of the images."
Ans. 14. Notwithstanding, each paragraph cited by the Examiner as
purportedly evidencing applying a unimodality constraint or a bandpass
constraint as claimed (claim 1 requires applying one or the other or both), 1
appears to be directed to applying a filtering or constraint in advance of
performing the operations of image capturing and any spectral unmixing.2
As such, the Examiner has not adequately established or explained how
Levenson can be interpreted as disclosing unmixing spectra in an iterative
solution process performed by a processor, in which either or both of a
unimodality constraint and a bandpass constraint are applied.
A reference anticipates claimed subject matter only when "[e]very
element of the claimed invention [is] literally present, arranged as in the
claim." Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 894
(Fed. Cir.), cert. denied, 469 U.S. 857 (1984). The Examiner has not
established here that claim 1 is anticipated by Levenson. The rejection is not
sustained as to claim 1 and claims 2-18 depending therefrom.
1 The Final Action cites to paragraphs 3 6 and 191-196 of Levenson as
disclosing application of a unimodality constraint, and to paragraphs 106,
121, 124, and 143 as disclosing application of a bandpass constraint. Final
Act. 5. The Examiner's Answer additionally cites to paragraphs 37, 44, and
45 as disclosing spectral unmixing of images using unimodality and
bandpass constraints. Ans. 13-14.
2 The Examiner as much as admits that what is cited in Levenson as meeting
the "bandpass constraint" claim limitation, "limits spectral data input to the
iterative solution process." Final Act. 5. No explanation is provided as to
how this can reasonably be considered as disclosing application of a
bandpass constraint by a processor during execution of the iterative solution
process.
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Appeal2013-004318
Application 11/844,920
Independent claim 19 includes essentially the same limitations at issue
above with respect to claim 1, in a device claim format, and the rejection is
not sustained as to claim 19. Independent claim 25 is a method claim, as is
claim 1, and includes the limitations discussed above with respect to claim 1
that have not been shown to be disclosed in Levenson. The rejection of
claim 25, and of claims 26-31 depending therefrom, is not sustained.
Independent claim 31 includes essentially the same limitations at issue
above with respect to claim 1, in a device claim format, and the rejection is
not sustained as to claim 31 and as to claim 32 depending therefrom.
Claims 20--24--Anticipation by Hoyt
Appellants argue that the Examiner's reliance on paragraphs 5 and 17
of Hoyt as disclosing obtaining a three-dimensional representation of a
surface portion of an animal, as claimed, is misplaced. Appeal Br. 12. We,
too, do not see how, and the Examiner has not adequately explained how,
those paragraphs can reasonably be regarded as disclosing that limitation
found in claim 20.
In the Answer, the Examiner expands the reliance on Hoyt to include
paragraphs 4-7, 173, 174, 189-191, 239-247, and 263-268. Ans. 15. The
Examiner, however, for the most part indicates only the general relevance of
the various cited portions, and does not explain how they are considered to
disclose obtaining a three-dimensional representation of a surface portion of
an animal, nor how fluorescent data is mapped to the same, as claimed. The
Examiner's ultimate position appears to be that that the disclosure in Hoyt of
preparing three-dimensional reconstruction models for determination of
specimen morphology includes obtaining a three-dimensional representation
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Application 11/844,920
of the surface portion, in that the morphology includes the surface portion.
Id.
Appellants respond that a three-dimensional model of an animal is not
the same thing as a three-dimensional representation of a surface portion of
the animal. Reply Br. 4. Although it seems that it might be possible to
ultimately obtain a three-dimensional model of a surface portion from an
overall three-dimensional model, Appellants are correct that they are not one
in the same. As noted above, anticipation requires that every element of the
claimed invention be literally present, arranged as in the claim. Perkin-
Elmer Corp. v. Computervision Corp., supra. As such, we do not sustain the
anticipation rejection of claims 20-24.
Claims 4, 5, 18, and 33-35--Unpatentable over Levenson and Hoyt
The rejections of these claims are founded on the incorrect position
that Levenson discloses all limitations set forth in independent claims 1 and
31. For the reasons discussed in the above analysis of the rejection based on
anticipation by Levenson, the rejection of claims 4, 5, 18, and 33-35, as
being unpatentable over Levenson and Hoyt is not sustained.
DECISION
The rejection of claims 1-3, 6-9, 12, 15-17, 19, and 25-32 under 35
U.S.C. § 102(e) as being anticipated by Levenson is reversed.
The rejection of claims 20-24 under 35 U.S.C. § 102(e) as being
anticipated by Hoyt is reversed.
The rejection of claims 4, 5, 18, and 33-35 under 35 U.S.C. § 103(a)
as being unpatentable over Levenson in view of Hoyt is reversed.
REVERSED
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