Ex Parte 6917696 et al

Patent Trial and Appeal Board

Feb 11, 2016

95000517 (P.T.A.B. Feb. 11, 2016)

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.
95/000,517 11/23/2009 6917696 110630-IRX002 3888
27809 7590 02/11/2016
Procopio / Leica Biosystems Imaging, Inc.
Procopio, Cory, Hargreaves & Savitch, LLP
525 B Street
Suite 2200
SAN DIEGO, CA 92101
EXAMINER
POKRZYWA, JOSEPH R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
02/11/2016 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
____________________

HAMAMATSU PHOTONICS K.K.
Requester and Cross-Appellant

v.

LEICA BIOSYSTEMS IMAGING, INC.1
Patent Owner and Appellant
____________________

Appeal 2015-007681
Reexamination Control 95/000,517
Patent No. US 6,917,696
Technology Center 3900
____________________

Before RICHARD M. LEBOVITZ, MARC S. HOFF, and
JUSTIN T. ARBES, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
In our Decision on Appeal mailed July 12, 2013, we affirmed the
Examiner’s rejection of claim 22 under 35 U.S.C. § 112, first paragraph; the

1 An assignment of the patent from Aperio Technologies, Inc. to Leica
Biosystems Imaging, Inc. was recorded in the Office on April 25, 2014.
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Examiner’s decision to reject claims 1, 2, 4, 11, 20, and 21 under 35 U.S.C.
§ 103(a) over Derndinger and Douglass; the Examiner’s decision to reject
claims 3 and 14 under 35 U.S.C. § 103(a) over Derndinger, Douglass, and
DeWeerd; the Examiner’s decision to reject claims 1, 2, and 11 under
35 U.S.C. § 103(a) over Kotaki and Douglass; and the Examiner’s decision
to reject claims 1, 2, 6, 7, 11, 12, 20, and 21 under 35 U.S.C. § 103(a) over
Douglass and Pearson. We reversed the Examiner’s decision to reject
claims 1, 4, 5, 10, 11, 18, and 19 under 35 U.S.C. § 103(a) over Trulson and
Pearson. Decision 47–48.
In the Decision, we also reversed the Examiner’s decision not to adopt
the rejection of claim 22 under 35 U.S.C. § 103(a) on four grounds:
(1) Douglass, Pearson, and Bacus; (2) Derndinger, Douglass, and Bacus;
(3) Kotaki, Douglass, and Bacus; and (4) Hidaka, Douglass, and Bacus.
Decision 47. We designated the reversal of (1)–(4) as new grounds of
rejection under 37 C.F.R. § 41.77(b). Patent Owner then reopened
prosecution pursuant to 37 C.F.R. § 41.77(b)(1), and amended claim 22.
Upon remand, the Examiner made a Determination under 37 C.F.R.
§ 41.77(d). In the Determination, the Examiner noted that Patent Owner’s
amendment to claim 22 overcame the rejection under 35 U.S.C. § 112,
considered rejections (1) to (4), and determined that Patent Owner’s claim
amendment overcame the prior art rejections. However, the Examiner
determined that amended claim 22 was still unpatentable over the following
combinations of prior art: (1) Hidaka, Douglass, Bacus, and Pearson; (2)
Douglass, Pearson, Bacus, and Trulson; (3) Derndinger, Douglass, Bacus,
and Trulson (Exr.’s Determination 4, 10–21). The Examiner also designates
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claims 5, 10, 18, and 19 as being rejected over Derndinger, Douglass, and
Trulson (Exr.’s Determination 22).
In response to the Examiner’s Determination, Patent Owner argues
that three recent Federal Circuit decisions “explicitly rejected the standards
utilized by the Decision in its dismissal of Appellant’s evidence of
unexpected results” (PO Comments 1). Patent Owner also contends that the
applied prior art does not disclose certain claim limitations (PO Comments
13–15). Patent Owner requests that we reverse the Examiner’s rejections of
claims 5, 10, 18, 19, and 22, and reconsider our previous affirmance of the
rejections of claims 1–4, 6, 7, 11, 12, 14, 20, and 21 in view of Patent
Owner’s arguments regarding secondary considerations of nonobviousness.
Requester responds that the Federal Circuit decisions “contain nothing new”
and that Patent Owner’s allegedly unexpected results stem from an
unclaimed feature (Req. Comments 1–3).
This is a decision under 37 C.F.R. § 41.77(f), in which we “reconsider
the matter and issue a new decision. The new decision is deemed to
incorporate the earlier decision, except for those portions specifically
withdrawn.” We reverse the Examiner’s Determination with respect to
claims 5, 10, 18, 19, and 22. We also reconsider and reverse the prior art
rejections of claims 1–4, 6, 7, 11, 12, 14, 20, and 21, which we affirmed in
the original Decision.2
U.S. Patent No. 6,917,696 (“the ’696 Patent”) under reexamination
issued to Dirk L. Soensksen on July 12, 2005. The ’696 Patent provides “an

2 Our decision is similar to the decision on rehearing in related
Reexamination Control No. 95/000,518, entered on July 16, 2014.
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apparatus for and a method of fully automatic rapid scanning and digitizing
of an entire microscope sample, or a substantially large portion of a
microscope sample, using a linear array detector synchronized with a
positioning stage that is part of a computer controlled microscope slide
scanner” (col. 6, ll. 21–26).
As a part of the invention, a “contiguous digital image” is created
that is composed of a series of “image strips” obtained from multiple
successive scans. (Id. at 6:26–29.) Those scans are performed by
operation of a “line scan camera” that may be a “time delay integration
(TDI)” camera. (Id. at 11:46–62.)
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Kotaki et al. JP H5-76005 March 26, 1993
Pearson et al. US 5,434,629 Jul. 18, 1995
Trulson et al. US 5,578,832 Nov. 26, 1996
DeWeerd et al. US 5,895,915 Apr. 20, 1999
Hidaka et al. JP H11-211988 Aug. 6, 1999
Douglass et al. US 6,215,892 B1 Apr. 20, 2001
Derdinger et al. US 2001/0012069 A1 Aug. 9, 2001
Bacus WO 98/39728 Sept. 11, 1998

Claim 22 is rejected under 35 U.S.C. § 103(a) as obvious over Hidaka,
Douglass, Bacus, and Pearson (Examiner’s Determination 10).
Claim 22 is rejected under 35 U.S.C. § 103(a) as obvious over
Douglass, Pearson, Bacus, and Trulson (Examiner’s Determination 13).
Claim 22 is rejected under 35 U.S.C. § 103(a) as obvious over
Derndinger, Douglass, Bacus, and Trulson (Examiner’s Determination 18).
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Claims 5, 10, 18, and 19 is rejected under 35 U.S.C. § 103(a) as
obvious over Derndinger, Douglass, and Trulson (Examiner’s Determination
22).
Claims 1, 2, 4, 11, 20, and 21 are rejected under 35 U.S.C. § 103(a) as
obvious over Derndinger and Douglass (Decision 48).
Claims 3 and 4 are are rejected under 35 U.S.C. § 103(a) as obvious
over Derndinger, Douglass, and DeWeerd (Decision 48).
Claims 1, 2, and 11 are rejected under 35 U.S.C. § 103(a) as obvious
over Kotaki and Douglass (Decision 48).
Claims 1, 2, 6, 7, 11, 12, 20, and 21 are rejected under 35 U.S.C.
§ 103(a) as obvious over Douglass and Pearson (Decision 48).
ISSUES
The arguments made by Patent Owner and Requester present us with
the following issues:
1. Is Patent Owner’s evidence of unexpected results persuasive to
overcome the Examiner’s obviousness rejections?
2. Is Patent Owner’s evidence of commercial success persuasive to
overcome the Examiner’s obviousness rejections?

PRINCIPLES OF LAW

37 C.F.R. § 41.77 provides:
(b) Should the Board reverse the Examiner’s
determination not to make a rejection proposed by a requester,
the Board shall set forth in the opinion in support of its decision
a new ground of rejection; or should the Board have knowledge
of any grounds not raised in the appeal for rejecting any pending
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claim, it may include in its opinion a statement to that effect with
its reasons for so holding, which statement shall constitute a
new ground of rejection of the claim. Any decision which
includes a new ground of rejection pursuant to this paragraph
shall not be considered final for judicial review. When the
Board makes a new ground of rejection, the owner, within one
month from the date of the decision, must exercise one of the
following two options with respect to the new ground of
rejection to avoid termination of the appeal proceeding as to the
rejected claim:
(1) Reopen prosecution. The owner may file a response
requesting reopening of prosecution before the examiner.
Such a response must be either an amendment of the
claims so rejected or new evidence relating to the claims
so rejected, or both.
(2) Request rehearing. The owner may request that the
proceeding be reheard under § 41.79 by the Board upon
the same record. The request for rehearing must address
any new ground of rejection and state with particularity
the points believed to have been misapprehended or
overlooked in entering the new ground of rejection and
also state all other grounds upon which rehearing is
sought.
. . .
(f) After submission of any comments and any reply
pursuant to paragraph (e) of this section, or after time has
expired, the proceeding will be returned to the Board which shall
reconsider the matter and issue a new decision. The new decision
is deemed to incorporate the earlier decision, except for those
portions specifically withdrawn.

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ANALYSIS
OBJECTIVE EVIDENCE OF NONOBVIOUSNESS – UNEXPECTED RESULTS
Upon further consideration of the matter, pursuant to 37 C.F.R.
§ 41.77(f), we are persuaded by Patent Owner’s arguments concerning the
content of three recent Federal Circuit decisions (PO Comments 1) and the
weight of Patent Owner’s evidence of unexpected results (PO Comments 2).

DEVELOPMENT OF THE LAW SUBSEQUENT TO OUR DECISION
Our Decision in this case was mailed on July 12, 2013. Since that
time, our reviewing court has issued three decisions involving the Board’s
review of secondary considerations in inter partes reexaminations.
In Leo Pharmaceutical Products, Ltd. v. Rea, 726 F.3d 1346 (Fed. Cir.
2013), the Court held that “[o]bjective indicia of nonobviousness play a
critical role in the obviousness analysis. They are not just a cumulative or
confirmatory part of the obviousness calculus but constitute independent
evidence of nonobviousness.” 726 F.3d at 1358 (internal quotations and
citation omitted). “Objective indicia can be the most probative evidence of
nonobviousness in the record, and enables the court to avert the trap of
hindsight.” Id. “Unexpected results are useful to show the improved
properties provided by the claimed compositions are much greater than
would have been predicted.” Id. (internal quotations omitted), citing In re
Soni, 54 F.3d 746, 751 (Fed. Cir. 1995).
In Rambus Inc. v. Rea, 731 F.3d 1248 (Fed. Cir. 2013), the Board had
found that Rambus’s objective evidence was not commensurate with the
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scope of the claims3 because “Rambus’s evidence relating to high-speed
memory systems was not commensurate with the scope of the claims
because the claims ‘do not recite a specific clock speed and therefore
embrace slow memory devices.’” 731 F.3d at 1257. The Court, however,
held that “[s]uch a strict requirement was improper. Objective evidence of
nonobviousness need only be ‘reasonably commensurate with the scope of
the claims,’ and we do not require a patentee to produce objective evidence
of nonobviousness for every potential embodiment of the claim.” Id.
(internal quotations omitted). The Court further found that Rambus’s
evidence showed that the claimed dual-edge data transfer functionality is
what enabled the praised high-speed transfer of data and that the Board had
not pointed to any contrary evidence. Id.
The Federal Circuit also held that “the obviousness inquiry centers on
whether ‘the claimed invention as a whole’ would have been obvious,
35 U.S.C. § 103.” 731 F.3d at 1257–58. The Court found that Rambus’s
objective evidence of nonobviousness was not limited to the dual-edge
functionality and that “[a]t least some of Rambus’s objective evidence of
nonobviousness pertained to Rambus's overall memory device architecture,”
and instructed the Board on remand to parse the evidence that touted
Rambus’s patent design as a whole. 731 F.3d at 1258.
In Institut Pasteur & Universite Pierre et Marie Curie v. Focarino, 738
F.3d 1337, 1346–47 (Fed. Cir. 2013), the Court reiterated the principles
outlined above.

3 731 F.3d at 1254.
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UNEXPECTED RESULTS
Claim 22 recites, in pertinent part:

a time delay integration (TDI) line scan camera optically
coupled with the objective lens, the TDI line scan camera
configured to capture a digital image strip of a portion of the
microscope sample, the digital image strip captured while the
microscope sample is moving at substantially constant velocity,
wherein a first digital strip comprises a first perimeter edge of
the microscope sample and an opposing perimeter edge of the
microscope sample, and wherein the first perimeter edge and the
opposing perimeter edge are separated by at least 2 micrometers;
a focusing system configured to focus the TDI line scan
camera during capture of each digital image strip in accordance
with the non-planar focus map;
an image composer configured to compress the digital
image strips and align adjacent digital image strips into a
contiguous digital image of a portion of the microscope sample;
and
a data storage area configured to store the contiguous digital
image.

In our previous Decision, we referred to Patent Owner’s contention
that its ScanScope® product provides superior image quality in part because
the product does not suffer from the same distortions that materialize in
images created by image tiling products. Decision 33. We recognized that
Patent Owner relied upon paragraph 54 of the Soenksen’s Declaration as
support for this contention, but we concluded that the contention was not
persuasive because paragraph 54 explains that the product does not suffer
from the distortions “because the line scan camera . . . is always on the
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optical axis,” that claim 22 does not recite that “the line scan camera is
always on the optical axis,” and, therefore, that Patent Owner had asserted
that the purported unexpected results were due to an unclaimed feature.
Decision 34–36.
In its Comments in Response to the Examiner’s Determination, Patent
Owner contends that “the Board missed that it is the ‘line scan camera’ in
Claim 22 – not its placement on the optical axis – that demonstrates the
nexus between the claimed elements and the unexpectedly superior image
quality.” PO Comments 2. Requester argues that the Soenksen Declaration
confirms that the elimination of two-dimensional aberrations results from the
line scan camera being on the optical axis, and not due to how images are
stitched together (Req. Comments 3). Requester reiterates that Patent
Owner’s evidence indicates that the basis of unexpected results is the
unclaimed feature of the camera always being on the optical axis (Req.
Comments 4).
As indicated above, the Court in Rambus held that objective evidence
of nonobviousness need only be reasonably commensurate with the scope of
the claims and that the obviousness inquiry centers on whether the invention
as a whole would have been obvious.
In view of Rambus and the other cases cited above, we conclude that
we cannot disregard Patent Owner's reliance on, and must give greater
consideration to, objective evidence directed to its use of a line scan camera
even though the Soenksen’s Declaration states that the line scan camera is
always on the optical axis and the claims do not recite that the line scan
camera is always on the optical axis. As explained below, Patent Owner has
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established that the claimed line scan camera and its method of use
demonstrated unexpected results.
“LINE SCAN CAMERA”
We now address Requester’s contention that Exhibits K and L of the
Soenksen Declaration4 do not apply to claim 22 because the claim recites a
TDI line scan camera, but neither of the exhibits expressly refers to a TDI
line scan camera. Req. Comments 2. As above, the issue is whether the
objective evidence of unexpected results shown in the exhibits is reasonably
commensurate with the recited TDI line scan camera, thereby showing that
the invention as a whole in those claims was not obvious.
Most of the Specification of the ’696 Patent describes the use of a
camera that is generically referred to as a line scan camera. See., e.g., col. 7,
1. 22; col. 8, ll. 45, 52; col. 10, ll. 32, 37, 45–46. The Specification also
discloses that “[a] TDI type of line scan camera provides an excellent means
of increasing the effective integration time while maintaining a fast data
read-out, without significant loss in the signal-to-noise ratio of the imagery
data.” Col. 18, ll. 41–44 (emphasis added). The Soenksen Declaration
repeatedly refers generically to the use of a line scan camera in Patent
Owner’s ScanScope® product: “the line scan camera in the ScanScope®
product” (Soenksen Decl. ¶ 54); “The ScanScope® uses a line scanner”
(Soenksen Decl. ¶¶ 78, 79). Patent Owner explains the significance of these
paragraphs: “Patent Owner’s evidence is not that its TDI line scan camera
unexpectedly produces high quality images. Rather, the evidence is that the

4 “37 CFR 1.132 Declaration of Dirk G. Soenksen Regarding Commercial
Success, Unexpected Results and Copying,” dated April 18, 2010.
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ScanScope® system, because it uses a line scan camera optically coupled
with the objective lens and creates digital image strips, unexpectedly
produces higher quality images than the prior art systems.” PO App. Br. 25
(emphasis omitted). Neither the Examiner nor Requester present sufficient
evidence that persuasively counters Patent Owner’s evidence that its use of a
line scan camera in the invention as a whole is a key element in the claimed
invention. Based on the existing record, we are not aware of any
countervailing evidence that a TDI camera, which is a species of line scan
camera, would lack the features of a (generic) line scan camera, the element
relied upon for the showing of unexpected results.

SOENKSEN EXHIBIT K

Patent Owner relies on page 298 of Exhibit K as evidence of unexpected
results. PO Comments 6. Paragraphs 53, 54, and 76–80 of the Unexpected
Results section of the Soenksen Declaration refer to Soenksen Exhibit K.
Paragraph 80 of the Soenksen Declaration specifically refers to page 298 of
Exhibit K. Patent Owner’s Briefs do not expressly refer to paragraph 80 or
to page 298 of Exhibit K, or state that the information contained therein is
something the Board should review in its consideration of Patent Owner’s
specific unexpected results argument or Patent Owner’s other secondary
considerations arguments. See, e.g., PO App. Br. 23–25; PO Resp. Br. 11–
12; PO Reb. Br. 4–8.
However, Patent Owner’s Appeal Brief expressly and broadly
contends that the Soenksen Declaration “establishes non-obviousness of the
claimsof the present patent in the form of unexpected results, commercial
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success, and copying.” PO App. Br. 22. We therefore now address
Soenksen Decl. ¶ 80 and page 298 of Exhibit K.
As Patent Owner points out, Exhibit K is an independently written article
from the International Journal of Surgical Pathology. Its title is “Critical
Comparison of 31 Commercially Available Digital Slide Systems in
Pathology.” PO Comments 6. Page 298 states: “The Aperio Company has 2
different ScanScope scanners: T2 and CS. They are remarkable for their
good quality/speed ratio.” Soenksen Declaration paragraphs 9 and 10
identify scanners T2 and CS as having a line scan camera. Patent Owner
further contends that “[n]o other competing device analyzed in this article
was identified as ‘remarkable for [its] good quality/speed ratio.’” PO
Comments 6. Requester does not dispute Patent Owner’s quotation nor
Patent Owner’s assertion that the article does not describe other devices in a
similar way.

SOENKSEN EXHIBIT L

Paragraphs 68–71, 73, and 74 of the Unexpected Results section of the
Soenksen Declaration refer to Soenksen Exhibit L. Citing Soenksen Exhibit
L, and Exhibit L’s page 8, Patent Owner contended that its products
provided unexpected image quality. PO Comments 6–7.
Our Decision recognized Patent Owner’s contention that image
quality is different from image resolution; but we concluded that Patent
Owner “[did] not point to objective evidence, such as declaration testimony,
substantiating that distinction.” Decision 34.
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Patent Owner contends that we overlooked the information and comparative
evidence contained in Exhibit L. We agree. Exhibit L, page 2 identifies a
number of automated digital slide imaging platforms and states that “[t]he
quality of the images captured by these platforms is the most important
evaluation criterion as it has the largest impact on the performance of the
CAPSTM software.” Page 3 recognizes that there are necessary trade-offs
among the important quality features and cites the DMetrix DX40 platform
as “best exemplify[ing] the as yet unavoidable trade-off between speed and
quality.” Page 4 states that “[t]he Aperio ScanScope XT offers the highest
quality image with the most acceptable trade-offs in color, detail and noise
artifact.”
For a discussion of page 8 of Exhibit L, we quote Patent Owner’s analysis
on page 4 of its Comments on the Examiner’s Determination, with which we
substantially agree:
[T]he objective evidence of record clearly demonstrates the
distinction between image quality and image resolution. . . .
Table 1 on page 8 of Exhibit L notes that Appellant’s ScanScope
XT has the second lowest resolution (0.5 micron pixel), and yet
the highest image quality. Furthermore, the Hamamatsu
NanoZoomer platform has one of the highest resolutions (0.46
micron pixel) and yet it has “[u]nacceptable image quality in
Bacus image.” In other words, Exhibit L is independent,
objective evidence from the field of slide-scanning that
unequivocally and expressly demonstrates that image resolution
is entirely distinct from image quality.

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As the table on page 8 of Exhibit L demonstrates, and contrary to our
Decision (Decision 34–35), resolution is, in fact, different from quality and
Pearson (US 5,434,629) does not demonstrate that improved image quality
over prior art imaging systems from the use of a line scan camera is a
predictable result. See Decision 34.
Requester contends that we should affirm our previous analysis regarding
purported unexpected results based upon other advantages of line scan and
TDI cameras. Req. Comments 5–7. But, upon further review of Requester’s
Respondent Brief, we conclude that many of its assertions regarding quality
were without evidentiary support. Specifically, Requester provided no
evidentiary support or citations to Pearson for its assertions that “one of
ordinary skill in the art recognizes that higher resolution images include
greater image detail, which improves image quality. Moreover, Pearson
includes other advantages that improve image quality, such as easier
uniformity of illumination . . . . Pearson explicitly touts the image quality
enhancement of line scan and TDI cameras over the area-based image tiling
systems.” Req. Resp. Br. 11. In support, however, Requester apparently
relies upon Pearson column 1, line 40 to column 3, line 13 (Req. Resp. Br.
10), none of which refers to quality.
Requester, in response to the Examiner’s Determination, further
argues that Patent Owner’s evidence of unexpected results actually indicates
that Patent Owner’s products have “good,” rather than “superior” image
quality, and merely a “good” ratio of image quality to speed of image
production (Req. Comments 7–8). Requester’s argument is not persuasive.
Requester has not rebutted Patent Owner’s argument that its use of a line
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scan camera coupled with the objective lens, creating image strips, gives rise
to unexpectedly higher quality images.
We have, therefore, considered Patent Owner’s claimed invention as a
whole and conclude that Patent Owner’s evidence of unexpected results
applies to its use of a line scan camera generally. Stated differently, the
evidence shows that Patent Owner’s invention as a whole relies upon a line
scan camera, a genus of which a TDI line scan camera is a species.
For the above reasons, we conclude that Patent Owner has
demonstrated unexpected results of the invention recited in claim 22 because
the objective evidence for a generic line scan camera is reasonably
commensurate with the scope of claim 22, and that claim 22 was, therefore,
not obvious. We do not sustain the Examiner’s § 103 rejections of claim 22.

COMMERCIAL SUCCESS AND FDA CLEARANCES
In view of our conclusion that Patent Owner has demonstrated
unexpected results of its claimed invention, we need not address Patent
Owner’s assertions regarding evidence of commercial success.

CLAIMS 5, 10, 18, AND 19
Similar to claim 22, independent claim 1, from which claims 5 and 10
depend, recites “a time delay integration (TDI) line scan camera” and a
“focusing system configured to focus the line scan camera during creation of
each digital image strip in accordance with the focus map.” Independent
claim 11, from which claims 18 and 19 depend, also recites “a time delay
integration (TDI line scan camera,” “adjusting the focus of the TDI line scan
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camera during scanning of the first strip in accordance with the focus map,”
and “adjusting the focus of the TDI line scan camera during scanning of the
second strip in accordance with the focus map.” Patent Owner’s arguments
directed to the patentability of claim 22 are equally applicable to claims 1
and 11, and their corresponding dependent claims.
Patent Owner’s objective indicia of non-obviousness, in view of
recent Federal Circuit decisions discussed supra, also are persuasive to
overcome the rejection of claims 5, 10, 18, and 19 over Derndinger,
Douglass, and Trulson (see Examiner’s Determination 22). We do not
sustain the Examiner’s § 103 rejection.

CLAIMS 1–4, 6, 7, 11, 12, 14, 20, AND 21
As explained above, Patent Owner’s arguments directed to the
patentability of claim 22 are equally applicable to claims 1 and 11, and their
corresponding dependent claims. Accordingly, we do not sustain the
Examiner’s prior art rejections of claims 1–4, 6, 7, 11, 12, 14, 20, and 21.

CONCLUSIONS
1. Patent Owner’s evidence of unexpected results is persuasive to
overcome the Examiner’s obviousness rejections.
2. We need not reach the question of whether Patent Owner’s
evidence of commercial success is persuasive to overcome the Examiner’s
obviousness rejections.
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ORDER
The Examiner’s rejections of claims 1–7, 10–12, 14, and 18–22 are
reversed.

REVERSED

lp

PATENT OWNER:

PROCOPIO / LEICA BIOSYSTEMS IMAGING, INC.
PROCOPIO, CORY, HARGREAVES & SAVITCH, LLP
525 B Street
Suite 2200
San Diego, CA 92101

THIRD-PARTY REQUESTER:

PANITCH SCHWARZE BELISARIO & NADEL LLP
One Commerce Square
2005 Marker Street, Suite 2200
Philadelphia, PA 19103-7086