The Regents of the University of California

Patent Trials and Appeals Board

Jul 15, 2020

2019004420 (P.T.A.B. Jul. 15, 2020)

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.
14/091,986 11/27/2013 Benjamin P. Bowen LBNL.053A2 3782
20995 7590 07/15/2020
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
BLACK, LINH
ART UNIT PAPER NUMBER
2163
NOTIFICATION DATE DELIVERY MODE
07/15/2020 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):
efiling@knobbe.com
jayna.cartee@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BENJAMIN P. BOWEN and OLIVER RUEBEL
___________

Appeal 2019-004420
Application 14/091,986
Technology Center 2100
____________

Before ERIC B. CHEN, CARL L. SILVERMAN, and
MICHAEL J. ENGLE, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 5–25, 27–33, and 35–38. Claims
4, 26, and 34 have been cancelled.
An oral hearing was held on June 24, 2020. The record will include a
written transcript of the oral hearing. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as The
Regents of the University of California. (Br. 3.)
Appeal 2019-004420
Application 14/091,986

2
CLAIMED SUBJECT MATTER
The claims are directed to support and storage of raw spectroscopic
data. (Abstract.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter, with disputed limitations in italics:
1. A system comprising a processor and configured
to present spectroscopic data to a user computer, the system
comprising:
an interface to a data storage device configured to store
spectroscopic data and associated metadata;
a first storage module configured to split the
spectroscopic data and associated metadata into multiple
independently accessible data chunks and store the data chunks
as individual spectrally aligned data chunks, image aligned data
chunks, or hybrid data chunks in the data storage device by
using the interface, wherein the stored data chunks comprise
sub-blocks of the spectroscopic data, wherein each data chunk
is independently accessible by the system, and wherein each
spectrally aligned data chunk comprises a portion of a
spectrum, each image aligned data chunk comprises a portion of
an ion image and each hybrid data chunk comprises a subset of
multiple spectra and ion images; and
a user interface module configured to receive a request to
display a portion of the spectroscopic data and in response to
the request selects one or more independently accessible data
chunks that include the requested portion of the spectroscopic
data from the data storage device and graphically displays the
requested portion of the spectroscopic data to the user
computer.

Appeal 2019-004420
Application 14/091,986

3
REFERENCES
Name Reference Date
Zorn US 2007/0194225 A1 Aug. 23, 2007
Barnes et al. US 2009/0318815 A1 Dec. 24, 2009
Will et al. US 2011/0047189 A1 Feb. 24, 2011
Kelly et al. US 2011/0182814 A1 July 28, 2011
Schoen et al. US 2011/0215235 A1 Sept. 8, 2011
Birdwell et al. US 2013/0054603 A1 Feb. 28, 2013

REJECTIONS
Claims 1–3, 6–11, 13–16, 19–25, 28–32, and 35–38 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Birdwell, Barnes, and
Schoen.
Claims 5, 27, and 33 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Birdwell, Barnes, Schoen, and Kelly.
Claims 12 and 17 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Birdwell, Barnes, Schoen, and Will.
Claim 18 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Birdwell, Barnes, Schoen, and Zorn.

OPINION
§ 103 Rejection—Birdwell, Barnes, and Schoen
We are persuaded by Appellant’s arguments (Br. 10) that the
combination of Birdwell, Barnes, and Schoen would not have rendered
obvious independent claim 1, which includes the limitation “split the
spectroscopic data and associated metadata into multiple independently
accessible data chunks.”
Appeal 2019-004420
Application 14/091,986

4
The Examiner found that the spectral components for the
electromagnetic waves of Birdwell, and the content-based image retrieval
(CBIR) of Birdwell, which focuses on portions of an image (e.g., apertures
and sculpturing on pollen grains) for identification, collectively correspond
to the limitation “split the spectroscopic data and associated metadata into
multiple independently accessible data chunks.” (Final Act. 5; see also
Ans. 6, 8.) We do not agree with the Examiner’s findings.
Independent claim 1 recites “spectroscopic data.” Appellant’s
Specification discloses that “[i]n MSI [mass spectrometry imaging] and
other spectroscopic methods, many spatially defined mass spectra are
acquired across a sample” and “the data for each position is represented as a
profile of intensity values over a corresponding range of mass-to-charge
(m/z) values.” (¶ 7.) Thus, under the broadest reasonable interpretation
consistent with the Specification, we interpret “spectroscopic data” as data
generated from a profile of intensity values over a corresponding range of
mass-to-charge (m/z) values (i.e., intensity values as a function of mass-to-
charge values).
Birdwell relates to “a metric for use in predicting properties of an
unknown specimen belonging to a group of reference specimen.”
(Abstract.) In particular, Birdwell explains that “[w]hen the reference
collection of stored data is large it is preferable that the stored data be
indexed in a manner that facilit[ates] the rapid and efficient retrieval of
stored data similar to specified data.” (¶ 36.) Moreover, Birdwell further
explains that the content-based image retrieval (CBIR) technique “is based
on prior work on preferential . . . image segmentation, and can be used to
focus upon those portions of an image (for example, apertures and
Appeal 2019-004420
Application 14/091,986

5
sculpturing on pollen grains) . . . and the use of similarity-based search
strategies to determine reference objects with similar features.” (¶ 66.)
In addition, Birdwell explains that “[t]he spectrum of electromagnetic
waves is generally divided into regions or spectral components, classified as
to their wavelength or, inversely, as to their frequency,” for example,
“gamma rays, x-rays, ultraviolet, visible light, infrared, microwave, and
radio waves.” (¶ 49.)
Although the Examiner cited generally to the electromagnetic
spectrum of Birdwell and the CBIR technique of Birdwell for the creation of
a database index, the Examiner provided insufficient evidence to support a
finding that Birdwell teaches the limitation “split the spectroscopic data and
associated metadata into multiple independently accessible data chunks.” In
particular, although the Examiner interpreted “spectroscopic data” as broad
enough to encompass the electromagnetic spectrum of Birdwell, such
interpretation is inconsistent with the Specification, because as discussed
previously, we interpret “spectroscopic data” as meaning data generated
from a profile of intensity values over a corresponding range of mass-to-
charge (m/z) values. Even if the Examiner’s construction of “spectroscopic
data” is correct, Birdwell discusses the indexing of images using the CBIR
technique, rather than “split the spectroscopic data and associated metadata
into multiple independently accessible data chunks,” as recited in claim 1.
Moreover, the Examiner’s application of Barnes and Schoen does not cure
the above noted deficiencies of Birdwell.
Accordingly, we are persuaded by Appellants’ arguments as follows:
These paragraphs, a[t] most, teach the basic scientific concept
that electromagnetic waves can be divided into regions or
spectral components based on their wavelength or frequency.
Appeal 2019-004420
Application 14/091,986

6
As examples of this concept, Birdwell points to gamma rays, x-
rays, ultraviolet, visible light, etc. as examples of spectral
components. There is no teaching of splitting spectroscopic
data into independently accessible data chunks, only that
electromagnetic waves include a variety of various spectral
components.
(Br. 10 (citation and emphasis omitted).)
CBIR is a technology for identifying specific segments within
an image, such as an image of pollen grains. There is no
teaching of splitting these segments into individually accessible
data chunks. There is only a teaching of identifying specific
segments or features of an image for later recognition, such as
identifying apertures and sculpturing on pollen grains in an
image.
(Id. (citation and emphasis omitted).)
Thus, we do not sustain the rejection of independent claim 1 under
35 U.S.C. § 103. Claims 2, 3, 6–11, 13–16, 19, and 20 depend from claim 1.
We do not sustain the rejection of claims 2, 3, 6–11, 13–16, 19, and 20 under
35 U.S.C. § 103 for the same reasons discussed with respect to claim 1.
Independent claims 21 and 30 recite limitations similar to those
discussed with respect to claim 1. We do not sustain the rejection of claims
21 and 30, as well as dependent claims 22–25, 28, 29, 31, 32, and 35–38, for
the same reasons discussed with respect to claims 21 and 30.

Remaining § 103 Rejections
Claims 5, 12, 17, 18, 27, and 33 depend from independent claims 1,
21, and 31. The Examiner cited to various combinations of Birdwell,
Barnes, Schoen, Kelly, Will, and Zorn for teaching the additional features of
claims 5, 12, 17, 18, 27, and 33. (Final Act. 21–24.) However, the
Appeal 2019-004420
Application 14/091,986

7
Examiner’s application of these references does not cure the above noted
deficiencies of Birdwell.

CONCLUSION
The Examiner’s decision rejecting claims 1–3, 5–25, 27–33, and 35–
38 under 35 U.S.C. § 103 is reversed.

DECISION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–3, 6–11,
13–16, 19–
25, 28–32,
35–38
103 Birdwell,
Barnes,
Schoen
1–3, 6–11, 13–
16, 19–25, 28–
32, 35–38
5, 27, 33 103 Birdwell,
Barnes,
Schoen,
Kelly
5, 27, 33
12, 17 103 Birdwell,
Barnes,
Schoen,
Will
12, 17
18 103 Birdwell,
Barnes,
Schoen,
Zorn
18
Overall
Outcome
1–3, 5–25, 27–
33, 35–38

REVERSED