University of Utah Research Foundation

Patent Trials and Appeals Board

Apr 27, 2020

13948035 - (D) (P.T.A.B. Apr. 27, 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.
13/948,035 07/22/2013 Stan Kanarowski 00846-U5411.NP 7462
20551 7590 04/27/2020
THORPE NORTH & WESTERN, LLP.
P.O. Box 1219
SANDY, UT 84091-1219
EXAMINER
BOYLAN, JAMES T
ART UNIT PAPER NUMBER
2486
NOTIFICATION DATE DELIVERY MODE
04/27/2020 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):
patentdocket@tnw.com
warren.archibald@tnw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STAN KANAROWSKI and JOERG BEWERSDORF
Appeal 2019-002088
Application 13/948,035
Technology Center 2400
Before ALLEN R. MACDONALD, IRVIN E. BRANCH, and
SCOTT RAEVSKY, Administrative Patent Judges.
RAEVSKY, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6, 8–14, 16, and 18–20, all the
pending claims in this application. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real parties in interest as the
University of Utah, University of Utah Research Foundation, and Bruker
Nano, Inc. Appeal Br. 3.
Appeal 2019-002088
Application 13/948,035

2
CLAIMED SUBJECT MATTER
The claims relate to a correlative drift correction system for
microscopy. Spec. 1:6–7, Abstr. Claim 1, reproduced below, illustrates the
claimed subject matter:
1. A real time correlative drift correction system,
comprising:
a sample stage configured to support a sample and a
cover slip;
an infrared light source configured to emit infrared light
to be reflected at the
cover slip;
an optical sensor for detecting the reflected infrared light
and produce image data;
a computing device including a memory device including
instructions comprising:
acquiring a 2-D image of a sample, created by
passing a beam through a cylindrical lens and an
aperture, reflected off the cover slip, and projecting to the
optical sensor, the image being read out as individual
lines of image data into computer memory, the individual
lines of image data being summed together in computer
memory to form an intensity profile plot, the intensity
plot being smoothed by a Gaussian fit, wherein the
computing device is configured to obtain a first line
image at a first time interval and a second line image at a
second time interval; cross-correlating the first line image
and the second line image to obtain respective maxima of
a single calculation of the first line image and the second
line image;
detecting a drift of the sample during a time interval
using reflected infrared light data from the optical sensor; and
determining a drift correction from the detected drift; and
a focusing unit configured to adjust an optical focus on
the sample based on the drift correction determined by the
computing device.
Appeal 2019-002088
Application 13/948,035

3
REFERENCES
The prior art relied upon by the Examiner is:
Chhibber
Cooper
Kuppig
Nishikawa
Betzig
Dake
Elings
Lillquist
Silfies
AAPA
US 2004/0207836 A1
US 2011/0101203 A1
US 2012/0081536 A1
US 2012/0194903 A1
US 2013/0286181 A1
US 2013/0286182 A1
US 5,077,473
US 4,751,571
Nikon Perfect Focus System
Spec. ¶ 42
Oct. 21, 2004
May 5, 2011
Apr. 5, 2012
Aug. 2, 2012
Oct. 31, 2013
Oct. 31, 2013
Dec. 31, 1991
June 14, 1988
July 21, 2012

REJECTIONS
Claims 1–6, 8–14, 16, and 18–20 stand rejected under 35 U.S.C.
§ 112(a) as lacking written description support. Final Act. 5.
Claims 1–4, 8–10, 14, 18, and 19 stand rejected under 35 U.S.C. § 103
as unpatentable over Silfies, Elings, AAPA, Kuppig, and Cooper. Id. at 6–7.
Claim 3 stands rejected under 35 U.S.C. § 103 as unpatentable over
Silfies, Elings, AAPA, Kuppig, Cooper, and Chhibber. Id. at 16.
Claims 6 and 20 stand rejected under 35 U.S.C. § 103 as unpatentable
over Silfies, Elings, AAPA, Kuppig, Cooper, Dake, and Betzig. Id. at 18.
Claims 11–13 stand rejected under 35 U.S.C. § 103 as unpatentable
over Silfies, Elings, AAPA, Kuppig, Cooper, and Lillquist. Id. at 20.
Claim 16 stands rejected under 35 U.S.C. § 103 as unpatentable over
Silfies, Elings, AAPA, Kuppig, Cooper, and Nishikawa. Id. at 22.

2 The Examiner cites paragraph 4 of the Specification as AAPA (Applicant
Admitted Prior Art). Final Act. 10.
Appeal 2019-002088
Application 13/948,035

4
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See id.; 37 C.F.R. § 41.37(c)(1)(iv).

Rejections under § 103
Appellant contends the combination of Silfies, Elings, AAPA,
Kuppig, and Cooper fails to teach or suggest “the image being read out as
individual lines of image data into computer memory, the individual lines of
image data being summed together in computer memory to form an intensity
profile plot, the intensity plot being smoothed by a Gaussian fit,” as recited
in claim 1. Appeal Br. 27–31. Specifically, Appellant contends that nothing
in the AAPA refers to “individual lines of image data.” Id. at 29.
The Examiner finds that AAPA paragraph 4 teaches or suggests the
disputed limitation “[p]er applicant[’]s arguments dated on 03/05/2018.”
Final Act. 10 (emphasis omitted). In responding to a § 112(a) rejection in its
Response filed March 5, 2018, Appellant contended that the disputed
limitation is supported by paragraphs 4, 39, and 44 of the Specification.
Resp. 7–8.
We agree with Appellant. The paragraph the Examiner relies on reads
in pertinent part: “Imaging parameters often lead to a sparse distribution of
fluorescent spots that represent active single molecules in a camera image.
The molecule positions are determined by fitting model functions to the
intensity distributions and a super-resolution image is compiled from the
ensemble of determined molecule positions.” Spec. 1:24–27 (cited as
Appeal 2019-002088
Application 13/948,035

5
AAPA ¶ 4 in the Final Action). We can find nothing in this passage that
teaches or suggests “individual lines of image data.” As we agree with
Appellant on this point, we take no position on Appellant’s argument that
this passage does not represent Applicant-admitted prior art.
The Examiner has not relied on any of the other cited references to
teach this element. Accordingly, we do not sustain the Examiner’s
obviousness rejection of claim 1 and its corresponding dependent claims.
For similar reasons, we also do not sustain the Examiner’s obviousness
rejections of claims 10 and 14 and their dependent claims.

Rejection under § 112(a)
The Examiner determines that the independent claims (1, 10, and 14),
and by dependency their dependent claims, lack written description support.
For additional reasons, the Examiner determines that dependent claim 18
lacks written description support. Final Act. 5–6. For instance, in claim 1,
the Examiner determines that the limitation, “the individual lines of image
data being summed together in computer memory to form an intensity
profile plot” lacks written description support. Id. at 5. We address claim
18 below.
Appellant contends that the following Specification passages support
the limitation:
The method can include sorting the imaged particles into T time
intervals of equal length. A value of T can be chosen
sufficiently large that drift within each time interval can be
assumed to be linear, but small enough to include a sufficiently
high number of particles in each interval (typically of the order
of 1,000). For each time interval t (0 ≤ t < T), projections of
the 3D data in the x, y, and z-direction are performed based on
Appeal 2019-002088
Application 13/948,035

6
the reflected infrared light data and the particles can be binned
into pixels. (Spec. 10:28–33, emphasis added)

From the x, y, or z projections, or rather from the reflected
infrared light data on which the projections are based, x, y and z
drift coordinates can be determined. . . . The drift coordinates
can then be plotted as a function of t. (Spec. 11:10–18).

Infrared light reflected at the cover slip, such as at an interface
between the cover slip and the molecule or at an interface
between the cover slip and the objective, can be in any suitable
shape, such as a circle, a line, or the like. Movement of the
reflected light on the CCD can be used to identify drift. The
movement can enable identification of a correlated, adjusted z
value for movement in the z direction. (Spec. 14:10–14)
(emphasis added).
Appeal Br. 32–33. Appellant contends, “the statement that the interface can
be ‘a line’ clearly results in collection of line data.” Id. at 33. Appellant
further contends, “‘binning’ and ‘summing’ are equivalent terms to describe
a mathematical total of the number of points collected within a given pixel
region.” Id. In response, the Examiner finds, “Appellant is combining
multiple paragraphs to provide support for the limitation . . . . The cited
paragraphs and the combination still appear misleading/confusing.” Ans. 7.
Appellant’s brief does not persuasively show how the cited passages
disclose the disputed limitation. The Specification does refer to infrared
light being reflected in the shape of “a line.” Spec. 14:10–13. However,
even if we assumed Appellant’s statements correct that “binning” and
“summing” are equivalent, the Specification at most discloses “the particles
can be binned into pixels.” Spec. 10:33 (emphasis added). But summing
particles into pixels does not disclose “individual lines of image data being
Appeal 2019-002088
Application 13/948,035

7
summed together.” At most, the Specification refers to a single line (“a
line”) of infrared data, not multiple lines binned together. For at least this
reason, we sustain the Examiner’s rejection of claim 1 and its corresponding
dependent claims, along with similar independent claims 10 and 14 and their
dependent claims, which Appellant does not argue with particularity.
For dependent claim 18, the Examiner determines that the limitation,
“wherein capturing the visible light image data of the sample comprises
capturing the visible light image data of the sample using the optical sensor,”
lacks written description support. Final Act. 5–6. Specifically, the
Examiner finds that “the drawings/paragraphs . . . do not disclose a single
sensor for capturing both [visible and infrared] image data.” Id.
Appellant contends the Specification discloses “an optical sensor 130,
such as a CCD (charge coupled device) camera for example, for detecting
the reflected infrared light.” Appeal Br. 35–36 (emphasis omitted).
Appellant contends that “[a]n optical sensor” is a single sensor. Id. at 36.
Appellant further contends that “it is not required for a drawing to be
submitted in order to indicate every component of the disclosure.” Id.
We agree that the Specification supports the specific limitation of
claim 18.3 The Specification plainly describes the disclosed feature at, e.g.,
2:19–21 (“an optical sensor for capturing images of the sample by detecting
the visible light. The system can detect drift . . . using reflected infrared
light data from the optical sensor.” (emphasis added)), 6:6–11 (similar).

3 Because claim 18 depends on claim 14, which is not supported under
§ 112(a) for reasons discussed above, we determine that only the specific
added limitation of claim 18 is supported.
Appeal 2019-002088
Application 13/948,035

8
We, therefore, do not sustain the Examiner’s specific § 112 rejection
of claim 18. However, by virtue of depending on claim 14, which is rejected
under § 112(a), claim 18 remains rejected under § 112(a).
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. § 
Reference(s)/Basis Affirmed Reversed
1–6, 8–14,
16, 18–20
112(a) Silfies, Elings, AAPA,
Kuppig, Cooper
1–6, 8–
14, 16,
18–20

1–4, 8–10,
14, 18, 19
103 Silfies, Elings, AAPA,
Kuppig, Cooper,
1–4, 8–
10, 14,
18, 19
3 103 Silfies, Elings, AAPA,
Kuppig, Cooper,
Chhibber
3
6, 20 103 Silfies, Elings, AAPA,
Kuppig, Cooper, Dake,
Betzig
6, 20
11–13 103 Silfies, Elings, AAPA,
Kuppig, Cooper,
Lillquist
11–13
16 103 Silfies, Elings, AAPA,
Kuppig, Cooper,
Nishikawa
16
Overall
Outcome
1–6, 8–
14, 16,
18–20

Since at least one rejection encompassing all claims on appeal is
affirmed, the decision of the Examiner is affirmed.
Appeal 2019-002088
Application 13/948,035

9
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED