Ex Parte 7457446 et alDownload PDFPatent Trial and Appeal BoardJun 19, 201395000518 (P.T.A.B. Jun. 19, 2013) Copy Citation 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. 95/000,518 11/23/2009 7457446 110630-IRX003 1240 27809 7590 06/19/2013 PATTRIC J. RAWLINS / Aperio Technologies, 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 06/19/2013 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 v. APERIO TECHNOLOGIES, INC. Patent Owner and Appellant ________________ Appeal 2012-011446 Reexamination Control 95/000,518 Patent 7,457,446 B21 Technology Center 3900 ________________ Before RICHARD M. LEBOVITZ, JUSTIN T. ARBES, and STANLEY M. WEINBERG, Administrative Patent Judges. WEINBERG, Administrative Patent Judge. DECISION ON APPEAL 1 The patent involved in this reexamination appeal proceeding (the “’446 Patent”) issued to Dirk G. Soenksen on November 25, 2008. Appeal 2012-011446 Reexamination Control 95/000,518 Patent 7,457,446 B2 2 A. STATEMENT OF THE CASE Introduction This reexamination proceeding arose from a third party request for inter partes reexamination filed on November 23, 2009. Aperio Technologies, Inc. (Appellant), the owner of the patent under reexamination,2 appeals under 35 U.S.C. §§ 134(b) and 315(a) (2002) from a final rejection of claims 1, 5-7, 14, 15, 17, and 19-27.3 We have jurisdiction under 35 U.S.C. §§ 134(b) and 315(a) (2002). We affirm. Related Proceeding Patent Owner informs us that this inter partes reexamination proceeding is related to inter partes reexamination Control No. 95/000,516 (pertaining to US 6,711,283) and to inter partes reexamination Control No. 95/000,517 (pertaining to US 6,917,696). App. Br. 1. Requester informs us that this inter partes reexamination proceeding is also related to infringement litigation involving US 6,711,283; 6,917,696, 7,457,446; and 7,518,652 styled Aperio Technologies, Inc. v. Olympus America, Inc. et al., D. Del. Case No. 1:09-cv-00427, that the parties stipulated to dismiss without prejudice on December 31, 2009, and that as of 2 See Patent Assignment Abstract of Title, Reel 016375 Frame 0420 recorded August 9, 2005 and entered into the record of this proceeding as “Title Report” on December 8, 2009. Aperio Technologies, Inc. is a subsidiary of Danaher Corporation. See January 24, 2013 Notice of Change to Real Party In Interest. 3 Appellant relies on its Appeal Brief filed October 11, 2011 (App. Br.) and its Rebuttal Brief filed July 6, 2012 (Reb. Br.). We note that Appellant also lists claim 2 as being appealed at page 1 of its Appeal Brief, but claim 2 was cancelled. See Office Action response dated Apr. 19, 2010; Reb. Br. 1. Appeal 2012-011446 Reexamination Control 95/000,518 Patent 7,457,446 B2 3 November 14, 2011 the lawsuit had not been reinstated. Respondent Brief (Resp. Br.) 1. Requester also informs us that it is unaware of the existence of any other prior or pending appeals, interferences, and/or judicial proceedings that will directly affect, be directly affected by, or have a bearing on the Board’s decision in the present appeal. Id. The Invention of the ‘446 Patent The invention relates to the field of optical microscopy. A fully automatic rapid microscopy slide scanner uses a linear array detector synchronized with a positioning stage that is part of a computer controlled microscope slide scanner. The invention also provides a method for composing image strips obtained from successive scans of the sample into a single contiguous digital image. Col. 1, ll. 13-15; col. 6, ll. 21-26. Line scan camera 18 observes a line scan camera field of view 70 comprising a region of a sample 12 that is imaged by a multitude of individual pixel elements 72 arranged into a linear array 74. Col. 15, ll. 34-39; Figs. 1, 3A, 3B. During digital scanning of the sample 12, an image 76 is acquired in image strips, such as image strip 77, starting with a first image strip 78, followed by a second image strip 80, and so on, until the last image strip 82 necessary to digitize the image 76 has been acquired. Col. 15, ll. 52-56; Fig. 3C. The need for focusing during scanning is indicated in step 206. Col. 19, ll. 15-16; Fig. 4. A scanner 11 uses a calibration method in which a standardized calibration sample of predetermined shape and size is digitized and the best focus is determined as a function of the x/y position of the motorized stage 14 of the scanner using methods that are well known in the Appeal 2012-011446 Reexamination Control 95/000,518 Patent 7,457,446 B2 4 art. During the scanning and digitization process, the position of the microscope objective lens is moved in accordance with this x/y focus map. Col. 19, ll. 17-24. Claims 1 and 14 are illustrative of the appealed subject matter and are reproduced below with disputed limitations emphasized (App. Br. A-1, A-2- 3, Clams App’x): 1. A method for creating a contiguous digital Image of a portion of a microscope sample, comprising: pre-scanning the microscope sample and mapping optimal focus as a function of X-Y location on the microscope sample; accelerating a microscope sample along a first path to a substantially constant velocity relative to a line scan camera having a linear field of view and a data read rate; synchronizing the data read rate to the velocity of the microscope sample; acquiring first image data from the line scan camera while the data read rate and the velocity are synchronized; decelerating the microscope sample to a substantially complete stop, wherein said deceleration desynchronizes the data read rate and the velocity; storing the first image data as a first strip of contiguous image data; accelerating the microscope sample along a second path to the substantially constant velocity relative to the line scan camera, wherein the second path is substantially parallel to the first path; synchronizing the data read rate to the velocity of the microscope sample; acquiring second image data from the line scan camera while the data read rate and the velocity are synchronized; decelerating the microscope sample to a substantially complete stop, wherein said deceleration desynchronizes the data read rate and the velocity; Appeal 2012-011446 Reexamination Control 95/000,518 Patent 7,457,446 B2 5 storing the second image data as a second strip of contiguous image data; composing the first strip of contiguous image data and the second strip of contiguous image data into a contiguous digital image of a portion of the microscope sample; wherein each acquiring step further comprises adjusting the focus of the line scan camera in accordance with the pre- scanned focus map. 14. A system for creating a contiguous digital Image of a portion of a microscope sample, comprising: a motorized stage configured to support a microscope sample and move the microscope sample at a substantially constant velocity; an illumination system configured to illuminate a portion of the microscope sample; an objective lens positioned for viewing the illuminated portion of the microscope sample while the sample is moving at substantially constant velocity; a prism positioned to split an optical signal from the objective lens into a plurality of color channels; a plurality of time delay integration (TDI) line scan cameras each comprising a plurality of light responsive elements arranged in a linear array, whereby each TDI array is positioned to receive the optical signal for one of the plurality of color channels; and a data processor configured to processes [sic] the light intensities from the plurality of light responsive elements for each of the TDI arrays to create a digital image strip of a portion of the microscope sample, the data processor further configured to assemble and store a plurality of digital image strips into a contiguous digital image of a portion of the microscope sample, wherein the data processor is configured to pre-scan the microscope sample and map optimal focus as a function of X-Y location on the microscope sample and adjust the focus of the line scan cameras in accordance with the pre- scanned focus map. Appeal 2012-011446 Reexamination Control 95/000,518 Patent 7,457,446 B2 6 The Prior Art US 5,434,629 Pearson July 18, 1995 US 5,578,832 Trulson Nov. 26, 1996 US 5,650,813 Gilblom July 22, 1997 US 5,895,915 DeWeerd April 20, 1999 US 6,215,892 B1 Douglass April 10, 2001 US 2001/0012069 A1 Derndinger Aug. 9, 2001 JP H5-76005 Kotaki March 26, 1993 JP H11-211988 Hidaka August 6, 1999 The Rejections Claims 14 and 27 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Claims 1, 5-7, and 24 stand rejected under 35 U.S.C. § 103(a) as obvious over Derndinger in view of Hidaka and Douglass. Claims 1, 7, and 24-26 stand rejected under 35 U.S.C. § 103(a) as obvious over Douglass in view of Pearson and DeWeerd. Claims 14, 17, 19, 20, 22, and 27 stand rejected under 35 U.S.C. § 103(a) as obvious over Derndinger in view of Gilblom and Douglass. Claims 15 and 20 stand rejected under 35 U.S.C. § 103(a) as obvious over Derndinger in view of Gilblom, Douglass, and Trulson. Claims 21 and 23 stand rejected under 35 U.S.C. § 103(a) as obvious over Derndinger in view of Gilblom, Douglass, and Kotaki. Right of Appeal Notice (RAN) 4-5. Appeal 2012-011446 Reexamination Control 95/000,518 Patent 7,457,446 B2 7 The Declarations Appellant provides the Declaration of inventor Mr. Dirk G. Soenksen along with Exhibits A-O. Requester provides the Declarations of Mr. Hitoshi Iida and Mr. Masafumi Oshiro. B. ANALYSIS The RAN briefly summarizes the grounds of rejection (RAN 4-5) that had previously been stated in the Action Closing Prosecution (ACP). The remainder of the RAN comprises responses to arguments. RAN 6-35. For the Examiner’s detailed statements of the bases for the rejections, we therefore refer to the ACP. The Rejection of Claims 14 and 27 Under 35 U.S.C. § 112, First Paragraph Adjusting The Focus Of The Line Scan Cameras In Accordance With The Pre-scanned Focus Map On April 19, 2010, claim 14 was amended and claim 27 was added. Both claims recite a data processor configured to “adjust the focus of the line scan cameras in accordance with the pre-scanned focus map.” The Examiner interprets this limitation to mean that “each of the focus of the plurality of TDI line scan cameras are adjusted in accordance with a pre- scanned focus map.” ACP 12, ¶ 9. The Examiner finds that Fig. 2 of the ‘446 patent shows a line scan camera 18 and an area scan camera 56 and, accordingly, not a plurality of time delay integration line scan cameras. ACP 12, ¶ 9, citing Spec. col. 14, ll. 32-54. The Examiner also finds that the Specification describes that “[d]uring the scanning and digitization process, the position of the Appeal 2012-011446 Reexamination Control 95/000,518 Patent 7,457,446 B2 8 microscope objective lens 16 is moved in accordance with this x/y focus map. . . An alternate but more expensive embodiment of the scanner 11 provides extensive autofocus capabilities using an ancillary area scan camera such as the area scan camera 56.” ACP 13, ¶ 9; RAN 9, citing Spec. col. 19, ll. 15-53. As a result, the Examiner concludes that the Specification only describes adjusting the focus of one line scan camera (i.e., line scan camera 18) in accordance with a pre-scanned focus map. ACP 13, ¶ 9. Appellant contends that the focusing method described for the single objective lens 16 “is as applicable to the adjustment of the focus of a plurality of line scan cameras” and that “[a] person having ordinary skill in the field of optical microscopy would understand that a method which applies to one line scan camera can be replicated for any number of line scan cameras.” App. Br. 10. Appellant also contends that the Specification contemplates that two cameras can be used and that a skilled person would understand that embodiments using two cameras could use a combination of two line scan cameras. Reb. Br. 2. Appellant has not presented adequate evidence of what a skilled artisan would understand to support these assertions. But even assuming Appellant is correct, the Specification still does not satisfy the written description requirement. To satisfy the written description requirement, the disclosure must reasonably convey to skilled artisans that Appellant possessed the claimed invention as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[I]t is the specification itself that must demonstrate possession. And while the description requirement does not demand any particular form of disclosure, or that the specification Appeal 2012-011446 Reexamination Control 95/000,518 Patent 7,457,446 B2 9 recite the claimed invention in haec verba, a description that merely renders the invention obvious does not satisfy the requirement.” Id. at 1352, citations omitted. Accordingly, even if it would have been obvious to apply the Specification’s teaching of a single line scan camera to a plurality of line scan cameras, the Specification fails to meet the written description requirement under Ariad. Appellant also contends that “a person of ordinary skill in the art would understand that adjusting the focus for a single one of the plurality of cameras adjusts the focus for each of the plurality of cameras because each of the plurality of cameras are placed in the same image plane.” App. Br. 10. Again, this argument is not persuasive even if such a modification would have been obvious. Claims 14 and 27, furthermore, more specifically recite a plurality of “line scan cameras,” rather than undefined “cameras,” and do not recite a plurality of line scan cameras in the same image plane. Accordingly, we are not persuaded that the Examiner erred in rejecting claims 14 and 27 under 35 U.S.C. § 112, first paragraph, based upon the recitation of adjusting the focus of the line scan cameras in accordance with the pre-scanned map. One Or More Prisms New claim 27 also recites “one or more prisms positioned to split an optical signal from the objective lens into a plurality of color channels.” The Examiner finds that the Specification describes only a single prism that performs the recited function. ACP 13-14, citing Spec. col. 16, ll. 11-13, which states “[a]n alternate embodiment for obtaining color information uses a prism to split the broadband optical signal into the three color channels.” Appeal 2012-011446 Reexamination Control 95/000,518 Patent 7,457,446 B2 10 Appellant points out that the Specification discloses one or more beam splitters (i.e., “at least one beam splitter” at col. 14, ll. 32-34), that a prism is a type of beam splitter, and therefore, the Specification discloses one or more prisms. App. Br. 12. However, the Examiner finds that a beam splitter does not necessarily split signals into a plurality of color channels. RAN 11. Appellant does not dispute this finding. Reb. Br. 3-4. Furthermore, although the Specification describes “at least one beam splitter,” the Specification also describes only “a” prism to split a signal into three color channels, without expressly teaching more than one prism. Appellant did not provide sufficient evidence that one of ordinary skill in the art would have viewed this disclosure of a prism to demonstrate possession of multiple prisms for splitting an optical signal into color channels as is required by claim 27. See Resp. Br. 4; RAN 11. Appellant further contends that a skilled person “would understand that inventors who are in possession of a system that comprises one or more beam splitters which may be prisms are also in possession of a system that comprises one or more prisms.” App. Br. 12. Appellant has not provided sufficient evidence that one of ordinary skill in the art, upon reading the ‘446 patent disclosure, would have recognized description of the claimed subject matter. Arguments of counsel cannot take the place of evidence lacking in the record. Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997). Again, a description that merely renders the invention obvious does not satisfy the written description requirement. Ariad. Finally, Appellant contends that because the Specification supports the recitation of a plurality of line scan cameras and discloses a prism to split Appeal 2012-011446 Reexamination Control 95/000,518 Patent 7,457,446 B2 11 a signal into three color channels, a skilled person “would understand that a system which may utilize a plurality of line scan cameras, each of which may use a prism to split an optical signal into color channels, would also comprise a plurality of prisms.” App. Br. 12. This argument is not persuasive because Appellant has not identified support in the Specification for a plurality of line scan cameras. The argument also fails the Ariad “obvious” test. For all of the above reasons, we are not persuaded that the Examiner erred in rejecting claims 14 and 27 under 35 U.S.C. § 112, first paragraph for failure to comply with the written description requirement. The Rejection of Claims 1, 5-7, and 24 as Obvious Over Derndinger, Hidaka, and Douglass Stored Strips Of Contiguous Image Data; Composing Strips Of Contiguous Data Into A Contiguous Digital Image Claim 1 recites “storing the first image data as a first strip of contiguous image data; . . . storing the second image data as a second strip of contiguous image data; . . . [and] composing the first strip of contiguous image data and the second strip of contiguous image data into a contiguous digital image of a portion of the microscope sample.” Derndinger teaches a confocal microscope with a motorized scanning table for moving a sample perpendicularly to the optical axis of the microscope. ¶ 0002. The Examiner finds that the sample in Derndinger moves along linear paths and that for sensing large, two dimensional surfaces, corresponding linear paths can be combined in meander form. ACP 17, citing Derndinger ¶ 0015. Specifically, after the object has been scanned in one direction, a Appeal 2012-011446 Reexamination Control 95/000,518 Patent 7,457,446 B2 12 displacement of the table takes place in the direction perpendicular to that direction, so that now when scanning the nearest long meander path, the neighboring object regions are imaged on the TDI sensor. Scanning out then takes place in the opposite direction. Derndinger ¶ 0050. Appellant contends that Derndinger does not disclose a strip of contiguous image data, does not operate on stored strips of contiguous image data, and does not disclose composing strips of contiguous image data into a contiguous digital image. App. Br. 15-16. Although Appellant contends that Derndinger does not teach aligning or composing strips (Reb. Br. 5), as explained by the Examiner, Derndinger’s imaging of neighboring object regions results in obtaining image data as strips of contiguous data and composing such strips into a contiguous digital image. ACP 16-17, citing Derndinger Fig. 2a and ¶¶ 0046 (teaching digitizing data), 0050. As for storing the first and second contiguous image data, the Examiner agrees that Derndinger does not teach storing; but relies upon Hidaka as teaching the storage of such strips of contiguous image data. RAN 15. Appellant does not dispute that Hidaka teaches storing data or that it would have been obvious in view of Hidaka to store Derndinger’s image data. We conclude that the Examiner has presented a reason with some rational underpinning for combining Hidaka with Derndinger. Mapping Optimal Focus As A Function Of X-Y Location Claim 1 recites “pre-scanning the microscope sample and mapping optimal focus as a function of X-Y location on the microscope sample.” The Examiner finds that Douglass teaches these features. ACP 19-20. Appeal 2012-011446 Reexamination Control 95/000,518 Patent 7,457,446 B2 13 Appellant first contends that because Douglass only discloses a best- fit plane using an estimate of the best focus position, Douglass does not disclose mapping optimal focus as a function of X-Y location. App. Br. 17, citing Douglass col. 12, ll. 5-10. According to Appellant, “[b]y definition, an estimated focus is an approximation, and can never be guaranteed to be an optimal focus.” Reb. Br. 6. Appellant also contends that Douglass does not map optimal focus because Douglass states that “[f]or some biological specimens and stains, the focusing methods discussed above do not provide optimal focused results.” Reb. Br. 6, quoting Douglass col. 12, ll. 27-29. Appellant’s Specification, however, does not define an “optimal” focus. Rather, Appellant discloses that its scanner 11 uses a calibration method to determine a “best focus. . .as a function of the x/y position of the motorized stage 14.” Spec. col. 19, ll. 17-20. Appellant also discloses in the patent that a “best focus” is adequate: “Pre-scanning and mapping of the best focus as a function of x/y position provides adequate focus for most applications.” Spec. col. 19, ll. 45-47. In view of these disclosures, one of ordinary skill in the art would have reasonably interpreted the claimed “optimal” focus to include the best-focus as described in the ‘446 patent specification. There is insufficient evidence to distinguish Douglass’s best focus from the claimed requirement of optimal focus. Moreover, we find that Douglass does, in fact, teach optimal focus: “the fitting of a curve to the data to provide a faster means of determining optimal focus.” Douglass col. 11, ll. 20-22. Accordingly, although Douglass’ focusing methods may not provide optimal focus results for some Appeal 2012-011446 Reexamination Control 95/000,518 Patent 7,457,446 B2 14 biological specimens and stains, as noted by Appellant, Douglass teaches determining optimal focus for others. Appellant next contends that Douglass does not disclose mapping focus as a function of X-Y location on the microscope sample. App. Br. 18- 19. The Examiner finds that Douglass col. 3, ll. 5-7; col. 10, l. 56-col. 11, l. 55; and Figs. 13-16 teach this limitation. ACP 19-20. Douglass’ focusing operation is performed because of variations in the tilt of a slide in its carrier. Col. 3, ll. 5-7; col. 10, ll. 56-60. Douglass teaches an initial focusing operation is performed on each slide prior to scanning by initially determining a focal plane from an array of points or locations in the scan area. Using coarse and fine focusing steps of the Z stage, Douglass determines a best-fit focus plane for points 80 in a sample area 72a on a slide 72. This plane then provides desired Z position information for maintaining focus during scanning. Col. 3, ll. 5-22; Col. 11, ll. 41-56; Figs. 14, 15. Appellant incorrectly contends that claim 1 recites a focus map which maps focus as a function of X-Y location on the microscope sample. See App. Br. 18. Although claim 1, l. 24 does recite a “focus map,” claim 1, l. 3 does not recite that it is the focus map that performs “mapping optimal focus as a function of X-Y location.” To the contrary, claim 1, l. 3 does not recite how or what structure performs the mapping function. The claim only broadly recites “mapping optical focus as a function of X-Y location,” without reciting how or what performs the mapping. Accordingly, Appellant’s contentions that Douglass does not use a map to calculate an estimate of the best focus position and does not use a focus map which maps Appeal 2012-011446 Reexamination Control 95/000,518 Patent 7,457,446 B2 15 focus as a function of X-Y location (App. Br. 18) are not persuasive because the contentions are based on unclaimed features. Appellant also contends that claim 1 recites determining optimal focus for actual elements of a sample on a slide (App. Br. 18) and a map of the best focus positions (App. Br. 19) which Douglass does not teach. These contentions are also not persuasive because claim 1 does not recite these features. As Requester points out, the claims do not recite the functional relationship between the X-Y locations and the optimal focus. Resp. Br. 8. In fact, Douglass’ best-fit plane is functionally related to X-Y locations by providing a Z coordinate for the focus at each X and Y coordinate. Resp. Br. 8. Accordingly, we conclude that Douglass teaches the broadly recited mapping the optimal focus as a function of X-Y location. Adjusting Focus In Accordance With The Pre-Scanned Focus Map Claim 1 recites “each acquiring step further comprises adjusting the focus of the line scan camera in accordance with the pre-scanned focus map.” Appellant contends that Douglass does not teach this step because Douglass does not teach the latter part of the step: “adjusting the focus of the line scan camera in accordance with the pre-scanned focus map.” App. Br. 19. In support of this contention, Appellant first contends that Douglass cannot teach the limitation because Douglass does not disclose a line scan camera and does not disclose a focus map. Id. But, Douglass does teach a focus map as discussed above and Derndinger, not Douglass, is relied upon to teach a line scan camera. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of Appeal 2012-011446 Reexamination Control 95/000,518 Patent 7,457,446 B2 16 references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellant next contends that Douglass teaches away from adjusting the focus “during scanning, as recited in Claim[] 1.” Id. This contention is not persuasive because claim 1 recites “adjusting focus . . . in accordance with the pre-scanned focus map” rather than adjusting focus during scanning. In any event, as Requester points out, Douglass does teach adjusting focus during scanning. Resp. Br. 9-10, quoting Douglass col. 11, ll. 57-65 (emphasis added): During scanning, the X stage is positioned to the starting point of the scan area, the focus (Z) stage is positioned to the best fit focus plane, an image is acquired and processed as described later, and this process is repeated for all points over the scan area. In this way, focus is maintained automatically without the need for time-consuming refocusing at points during scanning. We are therefore not persuaded that Douglass fails to teach this limitation.4 4 Appellant’s Rebuttal Brief argues for the first time that claim 1 requires focus adjustments during image acquisition and that Douglass does not disclose focus adjustments during image acquisition. Reb. Br. 6-7. “[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.” Ex parte Borden, 93 USPQ 2d, 1473, 1474 (BPAI 2010) (informative). In any event, claim 1, for example, recites “adjusting the focus . . . in accordance with the pre-scanned focus map.” Claim 1 does not recite “focus adjustments during image acquisition” or “adjusting the focus . . . during actual scanning” as Appellant contends. Nevertheless, we agree with Requester that Douglass teaches adjusting focus during scanning. See Resp. Br. 9-10. Appeal 2012-011446 Reexamination Control 95/000,518 Patent 7,457,446 B2 17 Whether There Is Motivation To Combine Douglass With Derndinger Appellant contends that Douglass’ image tiling system and Derndinger’s line scanning system are incompatible and therefore a skilled person would not have been motivated to combine them. App. Br. 16-17. More specifically, Appellant contends, Douglass’ tiling system requires the absence of motion between the sensor and the stage during image capture and Derndinger’s line scanning system requires relative motion between the sensor and the stage during image capture. Id. Consequently, Appellant contends, the focusing method of Douglass’ image tiling system, which relies on start-and-stop X-stage positioning would be too slow for use with a line-scanning inspection such as Derndinger. App. Br. 17. Requester correctly argues that the test is not whether the features of a secondary reference can be bodily incorporated into the primary reference, but what the combined teachings would have suggested to one of ordinary skill in the art. Resp. Br. 7. See also In re Keller, 642 F.2d at 425 (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.”) The Examiner concludes that Douglass and Derndinger are combinable because they are from the same field of endeavor, being microscope scanning systems that provide two- dimensional scanning of samples. At the time of the invention, it would have been obvious to a person of ordinary skill in the art to include the pre-scanning techniques taught by Douglass within the system of Hidaka and Douglass. The Appeal 2012-011446 Reexamination Control 95/000,518 Patent 7,457,446 B2 18 suggestion/motivation for doing so would have been that the system of Derndinger and Hidaka would automatically keep the sample in focus during scanning even when unexpected tilt in the Z direction of the sample occurs, as recognized by Douglass in col. 10, lines 56-65. Therefore, it would have been obvious to combine the teachings of Douglass with the method of Derndinger and Hidaka to obtain the invention as now specified in claim 1. ACP 21. We conclude that the Examiner has presented a reason for combining the references with a rational underpinning. For all of the above reasons, we are not persuaded that the Examiner erred in rejecting (1) claim 1 and (2) claims 5-7 and 24 not argued separately with particularity. The Rejection of Claims 1, 7, and 24-26 As Obvious Over Douglass, Pearson, and DeWeerd Appellant contends that Douglass, an image tiling system, cannot be combined with Pearson, a line scanning system. App. Br. 20. The Examiner finds, however, that Pearson describes the shortcomings of the area-based CCD camera used by Douglass and describes a line scan camera system that overcomes the problems of the standard area-based CCD camera, thereby providing motivation to use the line scan camera system described in Pearson in Douglass’ system. RAN 23. See also In re Keller. We conclude that the Examiner has presented a reason for combining the references with a rational underpinning. Appellant next incorporates arguments discussed above regarding Douglass’s purported shortcomings, contending that Douglass fails to disclose mapping optimal focus, mapping focus as a function of X-Y location, and adjusting focus in accordance with a pre-scanned focus map. Appeal 2012-011446 Reexamination Control 95/000,518 Patent 7,457,446 B2 19 These incorporated arguments are not persuasive for the reasons we have discussed above. Appellant also asserts, without further argument, that neither Pearson nor DeWeerd remedy these purported deficiencies in Douglass. These assertions are not persuasive because they argue Pearson and DeWeerd individually. Keller. We are therefore not persuaded that the Examiner erred in rejecting claim 1, 7, and 24-26 as obvious over Douglass, Pearson, and DeWeerd. The Rejection of Claims 14, 17, 19, 20, 22, and 27 as Obvious Over Derndinger, Gilblom, and Douglass Incorporating its previous arguments, Appellant contends that Douglass (1) cannot be combined with the “fundamentally opposed” line scanning system of Derndinger; (2) fails to disclose “pre-scanning the microscope sample and mapping optimal focus;” (3) fails to disclose pre- scanning the microscope sample and mapping focus as a function of X-Y location on the microscope sample; and (4) fails to disclose adjusting the focus of the line scan camera in accordance with the pre-scanned focus map and teaches away from such adjustments during scanning. App. Br. 22-23. We find these arguments not to be persuasive for the reasons we explained above. The Examiner provides reasons why it would have been obvious to combine Douglass and Gilblom (ACP 34-35); but Appellant does not persuasively explain why the Examiner is wrong. See App. Br. 22. Appellant also repeatedly contends that neither Derndinger nor Gilblom remedy Douglass’ purported deficiencies, thereby arguing the Appeal 2012-011446 Reexamination Control 95/000,518 Patent 7,457,446 B2 20 references individually, rather than as a combination. App. Br. 22-23. See Keller. Appellant next contends that Derndinger fails to disclose a plurality of TDI line scan cameras. App. Br. 23. The Examiner finds that Derndinger teaches a plurality of TDI line scan cameras (ACP 31-32; RAN 25-26); or, alternatively that Gilblom teaches the limitation (RAN 26). Requester also points out that Gilblom teaches multiple TDI cameras. Resp. Br. 12. See Abstract (“[o]ne or more time delay and integration [TDI] camera assemblies (A));” and col. 7, ll. 55-67, repeatedly referring to two cameras as the image sensors 14. Appellant does not persuasively respond to the Gilblom citations. See Reb. Br. 7-8. Whether Claims 14 And 27 Require That A Prism Splits An Optical Signal Into Channels That Are Each Directed Toward A Separate TDI Line Scan Camera Claim 14 recites “a prism” positioned to split an optical signal into a plurality of color channels. Claim 27 recites “one or more prisms” positioned for the same purpose. Both claims recite “a plurality of time delay integration (TDI) line scan cameras each comprising a plurality of light responsive elements arranged in a linear array, whereby each TDI array is positioned to receive the optical signal for one of the plurality of color channels.” The Examiner and Appellant disagree about the interpretation of “each TDI array” and how “each TDI array” relates to “one of the plurality of color channels.” As shown above, Gilblom teaches a plurality of TDI cameras. More specifically, color sensors 14 can comprise two cameras. See col. 3, l. 54 and col. 7, ll. 55-58 (referring to “two camera or image sensors”); Figs. 1, 2, Appeal 2012-011446 Reexamination Control 95/000,518 Patent 7,457,446 B2 21 6. The sensors/cameras 14 each have three CCD elements for each pixel. Col. 3, l. 55. Prisms render each element corresponding to the same pixel sensitive to only one of red, green, or blue light. Col. 3, ll. 55-57. One of the cameras may acquire odd-numbered vertical columns of the image and the other camera may acquire even-numbered vertical columns. Col. 7, ll. 61-64. Prism means 94 separates the light into the three color components focused on each of three respective light sensitive elements of the array 14 for each pixel. Col. 8, ll. 6-8; Fig. 6. Accordingly, the Examiner finds that Gilblom teaches “each TDI array is positioned to receive the optical signal for one of the plurality of color channels” (ACP 32) because the claim requires only that a plurality of TDI arrays are within one TDI line scan camera. RAN 27. Appellant disagrees with the Examiner’s interpretation of the “TDI array” limitation. Appellant contends that its Specification shows “that the term ‘TDI array’ is the short form of the claim term ‘time delay integration (TDI) line scan cameras each comprising a plurality of light responsive elements arranged in a linear array.” App. Br. 24. Appellant also contends that “in the context of the claim itself, the term ‘TDI array’ refers back to ‘each’ of the previously introduced ‘plurality of time delay integration (TDI) line cameras each comprising a plurality of light responsive elements arranged in a linear array.” App. Br. 25. Based on these interpretations, Appellant contends that the claims require “a prism that splits an optical signal into a plurality of channels that are each directed toward a separate TDI array,” which Gilblom does not teach according to Appellant. App. Br. 26 (emphasis added). Appeal 2012-011446 Reexamination Control 95/000,518 Patent 7,457,446 B2 22 We disagree with Appellant. None of Appellant’s Specification citations defines “TDI array” as Appellant contends. See App. Br. 25. Moreover, regardless of how “each” is interpreted, the claim does not require a plurality of channels each directed toward a separate TDI array, at least because the claim does not include the term “separate.” We agree with the Examiner’s conclusion that the claim does not recite that a prism splits an optical signal into channels that are each directed toward a separate TDI line scan camera. RAN 26-27. We also agree with the Examiner’s conclusion that “[i]f the Patent Owner wishes that the feature of supplying each of the plurality of color channels to separate . . . TDI line scan cameras, then the claim must be amended accordingly.” RAN 27. In short, Appellant’s arguments are not commensurate with the claim language. For all of the above reasons, we are not persuaded that the Examiner erred in rejecting claims 14, 17, 19, 20, 22, and 27 as obvious over Derndinger, Gilblom, and Douglass. Remaining Rejections Appellant refers to its previous arguments regarding other rejections and does not persuasively demonstrate error in the rejection of claims 15 and 20 as obvious over Derndinger, Gilblom, Douglass, and Trulson or in the rejection of claims 21 and 23 as obvious over Derndinger, Gilblom, Douglass, and Kotaki. App. Br. 26-27. See ACP 40-45. Secondary Considerations In our determination of obviousness under 35 U.S.C. § 103, we also carefully weigh, in addition to the evidence relied upon by the Examiner, the objective evidence of nonobviousness provided by Appellant. To be given Appeal 2012-011446 Reexamination Control 95/000,518 Patent 7,457,446 B2 23 substantial weight in the determination of obviousness or nonobviousness, evidence of secondary considerations must be relevant to the subject matter as claimed, and therefore the Examiner must determine whether there is a nexus between the merits of the claimed invention and the evidence of secondary considerations. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 305 n.42 (Fed. Cir. 1985). In particular, an applicant asserting secondary considerations to support its contention of nonobviousness bears the burden of proof of establishing a nexus between the claimed invention and evidence of secondary considerations. In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996). Unexpected Results “One way for a patent applicant to rebut a prima facie case of obviousness is to make a showing of ‘unexpected results,’ i.e., to show that the claimed invention exhibits some superior property or advantage that a person of ordinary skill in the relevant art would have found surprising or unexpected. The basic principle behind this rule is straightforward – that which would have been surprising to a person of ordinary skill in a particular art would not have been obvious.” In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995). “Mere improvement in properties does not always suffice to show unexpected results . . . [H]owever, when an applicant demonstrates substantially improved results, . . . and states that the results were unexpected, this should suffice to establish unexpected results in the absence of evidence to the contrary.” Id. at 751. Appellant contends that it discovered that the images created by its ScanScope® product provide superior image quality for two reasons. First, Appeal 2012-011446 Reexamination Control 95/000,518 Patent 7,457,446 B2 24 the product does not suffer from the same distortions that materialize in images created by image tiling products. App. Br. 28, citing Soenksen Declaration (Decl.) ¶¶ 53-54. More specifically, Appellant contends that image tiling products suffer from two-dimensional (circularly symmetric) optical distortions which degrade quality and that its ScanScope® product does not suffer from two-dimensional optical distortions “since the line scan camera is always on the optical axis.” App. Br. 28, citing Decl. ¶ 54. We agree with the Examiner, however, that none of independent claims 1, 14, or 27 recite “the line scan camera is always on the optical axis.” RAN 29, ¶ 54. Accordingly, Appellant has failed to show a nexus between the purported unexpected result (no two-dimensional optical distortions) and the claimed invention. Appellant has, instead, asserted that the unexpected results are due to an unclaimed feature. The assertion of this unexpected result is therefore not persuasive to show nonobviousness. Second, Appellant contends that its ScanScope® product provides increased quality because it composes strips of contiguous image data or assembles digital image strips, rather than image tiles, thereby significantly reducing the number of edges which need to be aligned and reducing seaming artifacts. App. Br. 28-29. The Examiner concludes that superior image quality using a line scan camera was not an unexpected result because he finds that Pearson describes using a TDI line scan camera to achieve a high resolution image at extremely fast speeds. RAN 33, citing Pearson col. 3, ll. 35-37. Appellant contends that resolution is different from quality and that because Pearson refers only to resolution, Pearson is irrelevant to whether a Appeal 2012-011446 Reexamination Control 95/000,518 Patent 7,457,446 B2 25 skilled person would have expected a system using a line scan camera, configured to create digital image strips, to produce higher quality images than a system which uses a different method. App. Br. 29. This purported distinction between resolution and quality is not persuasive because Appellant does not provide supporting evidence. Citing Soni, Appellant contends that because Mr. Soenksen simply states that the results were unexpected, it should suffice to establish unexpected results in the absence of evidence to the contrary. App. Br. 29; Reb. Br. 8. Producing a statement, however, is not the entire Soni test. The test includes a determination of whether an applicant demonstrates “substantially” improved results. Moreover, “it is well settled that unexpected results must be established by factual evidence. Mere argument or conclusory statements in the specification does not suffice.” Soni, 54 F.3d at 750 (internal quotations omitted). Accordingly, Appellant has the burden of producing data in its Declaration such as evidence of unexpected properties in the form of a direct or indirect comparison of the claimed invention with the closest prior art; for example, Pearson. As Requester points out, Pearson teaches that line scan cameras and TDI cameras have many advantages, including the ability to generate higher resolution images, easier uniformity of illumination of the sensor, and the ability to image at higher scanning frequencies. Resp. Br. 13-14. Accordingly, Requester contends, Pearson demonstrates that improved image quality over prior art area-based imaging systems from use of line scan camera is a predictable, rather than unexpected, result. Id. Appeal 2012-011446 Reexamination Control 95/000,518 Patent 7,457,446 B2 26 Appellant does not provide persuasive comparison evidence to support its contention of substantially higher quality of its invention. The Declaration describes the number of squares that are needed by an image tiling device (Decl. ¶¶ 55, 77) versus the number of image strips for a digital slide created by a ScanScope® product (Decl. ¶ 56); discusses the significance of quality in the market (Decl. ¶ 57); and points to customer satisfaction with the quality of the ScanScope® product (Decl. ¶ 48). Appellant’s Declaration also states the following: 53. Digital slide images created by image tiling products suffer from two dimensional (circularly symmetric) optical distortions in each image tile. Exhibits K and H. 54. The images created by the Aperio ScanScope® product do not include two dimensional optical distortions because the line scan camera in the ScanScope® product is always on the optical axis, thus avoiding two dimensional optical aberrations. Exhibit K. As we pointed out above, however, the claims do not recite the line scan camera is always on the optical axis. Moreover, although Appellant compares the number of needed image tile squares with the number of ScanScope’s® image strips, Appellant does not provide data or other evidence showing that its claimed product unexpectedly produces substantially improved results as required by Soni, rather than a mere improvement in properties. Appellant also discusses “unexpected superiority” in the commercial success portion of its Appeal Brief. Specifically, Appellant recites a number of claim limitations in claims 1, 14, and 27 and contends, without more, that those recited features “have resulted in the unexpected superiority of the Appeal 2012-011446 Reexamination Control 95/000,518 Patent 7,457,446 B2 27 image quality produced by the ScanScope® products, as discussed in detail above.” App. Br. 30. This contention is not persuasive because Appellant’s discussion in the unexpected results section of its Appeal Brief does not provide evidence that the claim limitations recited in the commercial success section of its Appeal Brief provided unexpected results in the form of unexpected superiority of image quality. For all of the above reasons, we conclude that Appellant has not produced sufficient evidence of unexpected results to overcome the prima facie evidence of obviousness based on the prior art. Commercial Success Objective evidence of nonobviousness, including commercial success, must be commensurate in scope with the claims. In re Tiffin, 448 F.2d 791, 792 (CCPA 1971). A nexus must be established between the merits of the claimed invention and the evidence of secondary considerations in order for the evidence to be given substantial weight. See In re GPAC, Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). The nexus requirement requires that the Appellant establish a factually and legally sufficient connection between the evidence of commercial success and the claimed invention so that the evidence is of probative value in the determination of nonobviousness. Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). The Appellant must demonstrate that the successful product is the invention disclosed and claimed in the patent, and that the success is due to the merits of the claimed invention. J.T. Eaton & Co. v. Atlantic Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997). The Appellant must offer proof “that the sales were a direct result of the unique Appeal 2012-011446 Reexamination Control 95/000,518 Patent 7,457,446 B2 28 characteristics of the claimed invention – as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter.” In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). Appellant contends that its claimed invention is non-obvious in view of the commercial success of its ScanScope® product and that such commercial success is attributable to two aspects of the claimed inventions: superiority of image quality and scanning speed. App. Br. 27, 30-33. Relying upon paragraphs 13-15 of the Declaration, Appellant asserts that the claimed invention in its ScanScope® products “has received widespread industry acceptance and outstanding commercial success, as evidenced by a 73% share of the digital pathology systems market” and that Appellant “has increased its sales every year for the last eight years, despite an increased number of competitive products.” App. Br. 30. The cited Declaration paragraphs, however, do not provide evidentiary support for these assertions. First, the Appeal Brief asserts that commercial success is based on the image quality of a product that is defined by five specific limitations of claim 1 (acquiring, storing, acquiring, storing, composing) and a data processor configured to perform two specific limitations (to process; to assemble) of claims 14 and 27. App. Br. 30. Second, the Appeal Brief asserts that commercial success is based on scanning speed that is defined by five specific limitations of claim 1 (accelerating, synchronizing, acquiring, storing, composing) and three specific limitations of claims 14 and 27 (motorized stage, creation, assembly). Id. Appeal 2012-011446 Reexamination Control 95/000,518 Patent 7,457,446 B2 29 Except for a motorized stage, however, Declaration paragraphs 13-15 assert commercial success based on a product that is defined by other limitations: an illumination system, an objective lens, a line scan camera, a data storage area, a focusing system, and an image composer. See Decl. ¶¶ 9-10. Consequently, Appellant’s argument that its products are commercially successful due to the “claimed invention” (App. Br. 32) is not persuasive to the extent the argument relies upon the listing of claim elements recited in the Appeal Brief because the evidence contained in the Appeal Brief is only attorney argument. Further, with respect to claim 14, paragraphs 9 and 10 of the declaration identify features recited in the claim. However, such features, as explained above, are found in the prior art. Even when a nexus has been established between the merits of the claimed invention and the secondary consideration, the secondary consideration may be insufficient when the claimed feature which underlies it was possessed by the closest prior art. Thus, in In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991), the prior art possessed the function relied upon by the patent applicant to establish unexpected results and therefore was not a basis for rebutting a prima facie finding of obviousness. As held in J.T. Eaton & Co., Inc. v. Atlantic Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997), “the asserted commercial success of the product [a secondary consideration] must be due to the merits of the claimed invention beyond what was readily available in the prior art.” We have considered the evidence of commercial success, but do not find it adequate to demonstrate that it is a result of a Appeal 2012-011446 Reexamination Control 95/000,518 Patent 7,457,446 B2 30 feature or combination of features that were not readily available in the prior art. Relying on Declaration ¶ 15, Appellant contends that it has increased its sales every year for the last eight years, despite an increased number of competitive products. App. Br. 30. Paragraph 15 does not provide the underlying sales data for Appellant and does not provide the basis for the statement that there has been an increased number of competitive products for eight years. Paragraph 14 shows sales data for three years, but not the eight year period testified by Mr. Soenksen. Appellant also relies upon surveys by an independent market research firm showing that customers consider image quality and scanning speed to be important factors. App. Br. 31, citing Declaration ¶¶ 41-42. The Examiner concludes that “the survey results do not show that the ScanScope[®] system had superior image quality over any of the other available systems at the time.” RAN 31. We agree. In addition, the Declaration does not show that the customers rated any of the claimed inventions, especially regarding claim 1 because claim 1 is a method claim and both surveys asked about “product” performance and capabilities. Appellant similarly relies upon the fact that its products are mentioned in published studies, thereby purportedly demonstrating superior image quality and fast scanning speed. App. Br. 31, citing Decl. ¶ 29. Again, the Declaration does not show that the published studies pertained to any of Appellant’s claimed inventions. Appellant also asserts that the superior image quality of “the patented ScanScope® products” has enabled Appellant to receive five separate Food Appeal 2012-011446 Reexamination Control 95/000,518 Patent 7,457,446 B2 31 and Drug Administration (FDA) clearances. App. Br. 31, citing Decl. ¶¶ 30- 37. Appellant further asserts that all FDA clearances “were awarded based on rigorous substantial equivalence studies which analyzed digital slide images created by a ScanScope® product and compared those images to manual microscopy.” (emphasis added). To the contrary, the letters only indicate equivalence to other devices already marketed: The FDA has “determined the device is substantially equivalent (for the indications for use stated in the enclosure) to legally marketed predicate devices marketed in interstate commerce prior to May 28, 1976.” The Examiner concludes that “receiving . . . FDA clearances does not demonstrate that the ScanScope[®] products had vastly superior image quality over any other devices available at the time, but rather that the products were safe and were effective. This does not show that the ScanScope[®] system had vastly superior image quality over other systems.” RAN 32. We agree with the Examiner. Similarly, the statistics contained in Decl. ¶¶ 65-66 do not show vastly superior image quality over other systems. Again, neither the Appeal Brief nor the Declaration correlate the studies of claimed inventions with the FDA letters (See Decl. ¶ 30, referring to Exhibits B-F). We also find the studies referenced in Decl. ¶¶ 68-71, 73-80 are not persuasive at least because they do not correlate the results to the claimed inventions and therefore fail to establish a proper nexus between the claimed invention and commercial success, if any. Copying “[C]opying by a competitor may be a relevant consideration in the secondary factor analysis.” Iron Grip Barbell Co., Inc. v. USA Sports, Inc., Appeal 2012-011446 Reexamination Control 95/000,518 Patent 7,457,446 B2 32 392 F.3d 1317, 1325 (Fed. Cir. 2004). Copying as objective evidence of nonobviousness requires evidence of effort to replicate a specific product. Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010); Iron Grip, 392 F.3d at 1325. Furthermore, just as with commercial success, “a nexus between the copying and the novel aspects of the claimed invention must exist for evidence of copying to be given significant weight in an obviousness analysis.” Wm. Wrigley Jr. co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1364 (Fed. Cir. 2012) (internal quotation omitted). Appellant contends that Olympus’ Nanozoomer product, “which is covered by the claims of the present patent, was custom designed to achieve the exact same arbitrary scanning resolution of Patent Owner’s early ScanScope® T2 Product.” App. Br. 33, citing Decl. ¶¶ 98, 105. Appellant also contends that “[i]n 2006, Olympus introduced its Nanozoomer product into the U.S. and began marketing it as a competing product against Patent Owner’s ScanScope® products.” App. Br. 34, citing Decl. ¶ 98. Appellant contends there is copying because the Nanozoomer product has a specific scanning resolution, an objective lens with a specific focal length, and a specific size pixel size (App. Br. 34, citing Decl. ¶¶ 98-100) and concludes that the Nanozoomer product “must have a tube lens with a focal length of 234.9mm” (App. Br. 34, citing Decl. ¶ 101), and therefore, that the Nanozoomer “was specifically custom engineered to copy Patent Owner’s ScanScope® T2 products.” App. Br. 34. Under Federal Circuit jurisprudence, not every competing product that arguably falls within the scope of a patent is evidence of copying, because otherwise every infringement suit would automatically confirm the Appeal 2012-011446 Reexamination Control 95/000,518 Patent 7,457,446 B2 33 nonobviousness of the patent. Wyers; Iron Grip, 392 F.3d at 1325. Assuming for the sake of argument that the Olympus product is a copy of Appellant’s product, that fact could be insufficient to prove nonobviousness because copying may be attributable to other factors such as a lack of concern for patent property or contempt for the specific patent in question, or the patentee’s ability or willingness financially or otherwise to enforce the patent. Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 1028 (Fed. Cir. 1985) overruled on other grounds by Midwest Industries., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356 (Fed. Cir. 1999) (en banc). The Examiner finds that paragraphs 81-105 of the Declaration describe various lenses, scanning resolutions, and a tube lens in the Nanozoomer product, that the claims at issue do not require any specific resolution or a tube lens, that the evidence of copying is therefore drawn to features that are not parts of the claimed invention, and that the evidence of copying is not persuasive of nonobviousness. RAN 34-35. We agree. In addition, Requester provides evidence that the Nanozoomer was developed and sold in Japan by Requester as early as March 2005, more than a year before Olympus’s involvement in selling the Nanozoomer (Oshiro Decl. ¶¶ 4, 10-11) and that Requester’s development of the Nanozoomer was not an attempt to copy the ScanScope®. Resp. Br. 16, citing Oshiro Decl. ¶¶ 5-9. “[A] showing of copying is only equivocal evidence of non- obviousness in the absence of more compelling objective indicia of other secondary considerations.” Ecolochem, Inc. v. Southern California Edison Co., 227 F.3d 1361, 1380 (Fed. Cir. 2000). Appellant has not provided more Appeal 2012-011446 Reexamination Control 95/000,518 Patent 7,457,446 B2 34 compelling indicia of other secondary considerations. Even assuming for the sake of argument that the foregoing evidence is sufficient to establish copying, this evidence is too weak to rebut the strong evidence of obviousness. Tokai Corp. v. Easton Enterprises, Inc., 632 F.3d 1358, 1371 (Fed. Cir. 2011). C. CONCLUSIONS Under § 103, the Examiner did not err in rejecting claims 1, 5-7, 14, 15, 17, and 19-27. Under § 112, the Examiner did not err in rejecting claims 14 and 27. DECISION The Examiner’s decision rejecting claims 1, 5-7, 14, 15, 17, and 19-27 is affirmed. AFFIRMED Appeal 2012-011446 Reexamination Control 95/000,518 Patent 7,457,446 B2 35 PATENT OWNER: 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 MARKET STREET, SUITE 2200 PHILADELPHIA, PA 19103 Copy with citationCopy as parenthetical citation