Ex Parte 7,553,672 et al

Patent Trial and Appeal Board

Jun 30, 2015

95001671 (P.T.A.B. Jun. 30, 2015)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,671 06/29/2011 7,553,672 1205100-00731US2 8066
21005 7590 07/01/2015
HAMILTON, BROOK, SMITH & REYNOLDS, P.C.
530 VIRGINIA ROAD
P.O. BOX 9133
CONCORD, MA 01742-9133
EXAMINER
DAWSON, GLENN K
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
07/01/2015 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
____________

LEICA BIOSYSTEMS MELBOURNE PARTY LTD.
Requester and Respondent

v.

DAKO DENMARK A/S
Patent Owner and Appellant
____________

Appeal 2014-002692
Reexamination Control 95/001,671
Patent 7,553,672 B2
Technology Center 3900
____________

Before MARK NAGUMO, RICHARD M. LEBOVITZ, and JEFFREY B.
ROBERTSON, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON REHEARING
Patent Owner, who is the Appellant in this appeal, requests rehearing under
37 C.F.R. § 41.79 (“Req. Reh’g”) of the Decision on Appeal dated August 25,
2014 (the “Decision” or “Dec. Appeal”). Requester and Respondent filed
Comments on the Request on October 24, 2014.
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Patent Owner contends new grounds of rejection were not designated as
such and that the Decision erred with respect to rejections of claim 2 over Tseung.

1. Was a new ground of rejection set forth in the Decision on Appeal?
Patent Owner contends that the Board upheld the Examiner’s obviousness
rejection of Tseung on grounds that had not been advanced by the Examiner. Req.
Reh’g 1.
A. One of the issues in the appeal is the obviousness of making a slide
staining apparatus with heating blocks which hold only a single slide, where each
block can be heated to a different temperature. In their Appeal Brief, Patent
Owner had argued:
[M]odifying a stainer with four heating blocks each holding ten slides
to forty individual slide heaters is far more than an arbitrary design
choice and would result in substantial increases in cost and
complexity. For example, such a modification could require a ten-
fold increase in the number of heating elements, supply wires,
temperature sensing wires, power switching circuits, etc. Increasing
the number of these elements by an order of magnitude also has an
effect on reliability since there would be more parts subject to failure.
Patent Owner Appeal Br. 8.
The Board responded to this argument, which the Decision characterized as
the “complexity argument,” by stating that the “Examiner is not proposing to
increase the number of slide supports, but to reduce the number so that each slide
support (heat block) comprises only one slide support – without changing the
wiring.” Dec. Appeal 18. The Examiner in the Right of Appeal Notice (“RAN”)
had stated:
Furthermore, even if Tseung failed to teach this limitation, the
examiner contends that it would have been obvious to have provided
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slide supports which could only support and individually heat one and
only one slide, because the number of slides supportable by anyone
slide support would be completely arbitrary. One could produce a
slide support which could hold, support and individually heat 50
slides, or two supports which could each hold, support and
individually heat 25 slides, or 5 supports which could each hold,
support and individually heat 10 slides each, or ... 50 slide supports
which could each hold, support and individually heat only a single
slide. If someone only needed to routinely process 4 slides, for
example, an apparatus having four different slide supports, each
holding, supporting and individually heating only a single slide would
suffice. There is nothing inventive about altering or adjusting the
number of slides any particular slide support could hold, support and
individually heat.
RAN 15 (emphasis added).
Patent Owner contends that “the numerical reference to ‘4 slides’ in the next
sentence (referring to a ‘need[] to routinely process 4 slides’) does not suggest an
association with the block of Tseung.” Request 3.
We do not agree with Patent Owner’s statement. In the same paragraph, and
in the immediately preceding sentence, the Examiner had specifically discussed
Tseung: “Furthermore, even if Tseung failed to teach this limitation, the examiner
contends that it would have been obvious to have provided slide supports which
could only support and individually heat one and only one slide, because the
number of slides supportable by anyone slide support would be completely
arbitrary.” RAN 15. Indeed, the entire paragraph is a response to Patent Owner’s
argument that there is no motivation to provide Tseung with individual slide
heating. Id. at 14. Consequently, the evidence of record does not support Patent
Owner’s contention that a new grounds of rejection had been set forth in the
Decision on Appeal.
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B. Patent Owner also contends the Board’s discussion of “copying” set forth
a new ground of rejection. Req. Reh’g 4. Specifically, Patent Owner argues that
the “Examiner found no evidence of copying. The Board reversed this
determination, finding copying.” Id.
Although our final conclusion was that copying of the features of the
claimed invention had not been established by Patent Owner, several statements in
the section titled “Copying” in the Decision on Appeal were imprecisely worded.
As a consequence, we delete the entire copying section on pages 18-22 and replace
it with the following section. (Underlining shows the material added to the
discussion; the deleted text is shown as a cross-out.)

Copying
As evidence of nonobviousness, Patent Owner also contends that the
claimed invention was copied. Appeal Br. 20. A declaration by Steven A.Bogen,
a co-inventor of the ’672 patent, was provided by Patent Owner as evidence.
Declaration of Steven A. Bogen, M.D., Ph.D., dated November 15, 2011 (“Bogen
Decl.”). According to Patent Owner, a competitor, Ventana, gained access to a
confidential business plan (Ex. D of Bogen Decl.) from CytoLogix, the original
owner of the ’672 patent, and used that plan to develop their own device. Id. The
evidence of copying is derived from a talk given by Jack Schuler, Chairman of
Ventana. Ex. C of Bogen Decl. In this speech, Mr. Schuler stated:
So, a healthy company is one that is paranoid about competition. Let me
give you an example of how this worked for us at Ventana. Two years ago,
Ventana’s only business was in the field of immuno histo chemistry. We
have looked at a related field of special stains but determined that the pricing
was too low. A small startup company in Boston called Cytologix had
developed an instrument for special stains. They need additional funding to
complete development and circulated financing memorandum that happened
to cross my desk – this is when we first heard of this start-up. The document
outlined why Ventana had underestimated this market, that customers were
ready to pay a higher price for automation. One they got a foothold in this
special stains market the document boasted that they would “back door”
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Ventana in its base business, Immuno Histo Chemistry, because their
instrument could do both. Essentially they crowed that they were going to
eat Ventana’s lunch.

Well, what a wonderful opportunity they gave us to motivate our
organization. Sometimes help comes from the most unusual source.
Talk about a random event! We received the information in
November 97. Cytologix claimed they would be on the market in six
months. We gathered our engineers and asked them what was their
reaction to Cytologix’ boasting. Did they want to take the challenge?
We confirmed their market research and finalized our design 2 months
later. Fortunately, it only required a modification to one of our
existing instruments. Six months later we launched the instrument
and the rest is history.
Id.
Patent Owner alleges that the business plan “described the invention
disclosed and claimed in the ’672 Patent,” but Patent Owner only generally pointed
to pages 26-28 and 30-31 of the business plan (Ex. D) and did not identify where
the limitations of the claim could be found (Appeal Br. 20-21), a necessary
exercise to show that the claimed subject matter had in fact been copied by
Ventana. Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1325
(Fed. Cir. 2004). Despite Patent Owner’s failure to show where the copied claim
limitations are found in the business plan, we note that page 26 of the plan states:
The company has identified an approach in which the slide holders
could be made into single units and the heating elements made part of
the instrument (instead of the current design which holds five slides
and consists of a bottom piece which incorporates the heating
element).
This new design would create significant advantages, including: . . .
3) the heating can now be controlled for each slide, instead of groups
of five slides.
Dr. Bogen further stated “Ventana copied important aspects of our
technology and developed a new automated slide stainer that included independent
and individual heating.” Bogen Decl. ¶ 18.
Patent Owner contends further evidence of copying comprises 1) licensing
by Ventana of two related patents upon which Ventana had been sued for
infringement, and of the ’672 patent as part of a settlement after the infringement
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suit was remanded; 2) and filing a patent application directed to a device said to
incorporate individual heating to samples. Bogen Decl. ¶ 18; Appeal Br. 20-21.
“Copying requires duplication of features of the patentee's work based on
access to that work.” Institut Pasteur & Universite Pierre et Marie Curie v.
Focarino, 738 F.3d 1337, 1348 (Fed. Cir. 2013). Neither the Examiner nor the
Requester provided sufficient evidence to rebut Patent Owner’s contention that
Ventana had access to CytoLogix’s business plan and had copied it and described
using it to design a new instrument. The talk by Mr. Schuler in which he describes
getting access to CytoLogix’s business plan, and copying the device described in
it, is adequate evidence of copying. However, statements by Dr. Bogen that
Ventana developed a stainer with independent and individual heating is not
sufficiently supported by evidence. Patent Owner did not provide evidence that the
device developed by Ventana contained individual heaters for each slide support.
Mr. Schuler in his talk did not say so. Patent Owner did not introduce evidence
that the Ventana device referred to by Mr. Schuler in his talk contained such
structures. No evidence of the Ventana device has been identified in the Appeal
Brief before us.
In order for evidence of secondary considerations to be persuasive, the
Patent Owner has the burden to show a “nexus” or link between what is claimed,
and in this case, the alleged copy. See In re GPAC Inc., 57 F.3d 1573, 1580 (Fed.
Cir. 1995). Logically, for a secondary consideration to be persuasive evidence of
nonobviousness, it must be connected to the features of the claimed invention.
Although it is evident that Ventana had access to CytoLogix’s business plan,
CytoLogix’s business plan and knowledge of CytoLogix’s concept of individually
controlling heat to a microscope slide, Patent Owner did not show that
CytoLogix’s concept of individually controlling heat to a microscope slide was
copied by Ventana and incorporated into their device this element was copied by
Ventana and incorporated into their device. The evidence of a nexus between
copying and the subject matter of claim 2 has therefore been not established by a
preponderance of the evidence.
Patent Owner alleges that the Ventana inventors filed a patent application
directed to device incorporating individual heating to the sample, which
application was said to mature into and identified US Patent 6,296,809 (“the ’809
patent,” filed Feb. 26, 1999) as having been issued from this application. Appeal
Br. 21. The ’809 patent discloses that “[a]nother disadvantage of the heating units
typically employed with automated tissue stainers is that they do not permit the
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temperature of individual slides to be separately controlled.” ‘809 patent, col. 2, ll.
47-50. The ’809 specifically discloses:
Individualized slide temperature control is accomplished by the
heating system according to the present invention that has thermal
platforms radially mounted to the carousel for heating the slides and
sensing the temperature of each.
’809 patent at col. 3, ll. 57-60.
Neither the Requester nor the Examiner provided adequate rebuttal
arguments to Requester did not adequately rebut the Patent Owner’s contention
that the ’809 patent provides evidence of copying. Neither did the Examiner.
Nonetheless, even if Ventana had the evidence that Ventana copied Patent
Owner’s concept of heating individual slides by incorporating into their patent
application, this is not dispositive because “copying” is only one factor in an
obviousness determination. Tseung, which is prior art to the ʼ809 patent, expressly
teaches heating two slides individually at different temperatures, and thus
addressed the need for heating slides at different temperatures – the same need
identified by the ’672 patent. ’672 patent at col. 2, ll. 8-19. The ’672 patent
describes individual heaters for each slide support, but describes the advance more
narrowly, disclosing specific structure for reducing the wiring complexity (id. at
col. 2, ll. 20-38; col. 11, ll. 21-22), a feature which is not recited in claim 2.
Claim 2 only require two slides – not the 49 described in the preferred
embodiment of the ’672 patent, which is said to increase the wiring difficulty and
cost of manufacture and servicing. Modifying Tseung by decreasing the size of the
heating block to contain a single microscope slide doesn’t involve reengineering
Tseung’s wiring, but simply reduces the number of slides that can be processed by
the automated stainer.
In sum, we do not find the evidence of copying persuasive because the
concept of heating slides at two different temperatures in an automated slide
stainer had already been disclosed by Tseung, and it would have been routine to
reduce the support to comprise only a single slide, when a cheaper device was
desired. A preponderance of the evidence supports the Examiner’s determination
that claim 2 would have been obvious to one of ordinary skill in the art in view of
Tseung.

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2. Does heating element of claim 2 underlie only one slide?
Patent Owner contends that the Board misapprehended or overlooked claim
interpretation arguments and arrived at an incorrect interpretation of claim 2,
specifically in concluding that the “the heating element can underlie more than one
slide support and still meet the claim limitation” (Dec. App. 9) of Claim 2. Req.
Reh’g 5. Rather, Patent Owner argues that claim 2 requires the heating element to
underlie only one slide.
Patent Owner contends the Board erred in making the statement in the
Decision on Appeal that "Patent Owner has not directed our attention to any
limitation in claim 1 or claim 2 that implicitly limits the heating element recited in
claim 2 to the support for the single slide." Dec. Appeal 9. Patent Owner argues
the Board overlooked Patent Owner’s arguments in which such claim language
was identified. Request 5-6.
The Decision specifically addressed Patent Owner’s arguments concerning
the specific limitation in claim 2 “wherein each slide support accommodates only
one microscope slide.” Dec. App. 10. To the extent the quoted statement above
conflicts with the Board’s analysis on pages 10-11 of the Decision on Appeal, we
strike it from the decision.
In sum, Patent Owner’s arguments do not persuade us that we
misapprehended or overlooked claim interpretation arguments and arrived at an
incorrect interpretation of claim 2.

3. Does Tseung anticipate claim 2?
Patent Owner contends that the Board misapprehended or overlooked claim
construction principles and the teachings of Tseung in concluding that Tseung
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anticipates Claim 2. Req. Reh’g 6. Specifically, Patent Owner argues that
Tsueng’s slide support does not accommodate only one slide as required by the
claim and that the raised area 202 is not a slide support that accommodates only
one slide as required by the slide because it is still part of a single heating element.
Id.
Claim 2 was interpreted to require the recited “slide support to hold only one
microscope slide, but to permit a heating element that heats more than one support.
Dec. App. 9. The ’672 patent did not define “slide support.” Based on description
in the ’672 patent, we interpreted “slide support” to mean a support that has a
location for only single slide. Id. at 8. As explained in the Decision, area 202 of
Tsueng’s apparatus has a raised surface 202 that serves as a location for only one
slide, meeting the limitation in the claim. Id. at 14. Patent Owner did not
persuasively identify a defect in this analysis. Consequently, we are not persuaded
that we misapprehended or overlooked claim construction principles and the
teachings of Tseung in concluding that Tseung anticipates Claim 2.

4. Does Tseung render claim 2 obvious?
Patent Owner contends that the Board misapprehended or overlooked Patent
Owner's argument that “there was no motivation to move away from the batch
heating of Tseung, e.g., heating batches of 10 slides at a time on a single block, to
individual heating.” Req. Reh’g 6.
Patent Owner argues:
Tseung does not teach individual slide heating or the problems
associated with automating special stains. At most, Tseung teaches
that batches of slides can be heated to a different temperature than
other batches of slides. This is not the invention described in Claim 2
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and does not provide any motivation to arrive at the invention of
Claim 2.
Id. at 7.
We agreed with the Examiner’s determination that “that it would have been
an obvious modification to reduce the number of supports on the heating block of
Tseung since the modified apparatus would be simpler in design, require fewer
parts, be less expensive, and work in the same manner.” Dec. Appeal 17. While
there is no explicit suggestion to produce a slide support for a single slide, it is
proper to “take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct.
1727, 1740 (2007). “A person of ordinary skill is also a person of ordinary
creativity, not an automaton.” Id. at 1742.
In agreeing with the Examiner, we did not overlook “complexity argument”
as argued by Patent Owner. Req. Reh’g 7. The wiring complexity argument
appears to be predicated on a requirement for 40 individual heaters. Appeal Br.
18; Floyd Decl. at p. 10, ¶ 40. However, the Examiner did not propose 40 different
heaters, but rather concluded that there is “nothing inventive about altering or
adjusting the number of slides any particular slide support could hold, support and
individually heat.” RAN 15. The Examiner stated:
Depending on how many samples a user has or needs to examine will
determine how many supports the apparatus contain. An apparatus
having slide supports which can only accommodate a single slide
would have been an obvious design choice, would have worked in the
exact same manner as one accommodating more slides.
RAN 36. In other words, the number of slide supports necessary would depend on
the needs of the user. Thus, not every obvious configuration would require 40
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individual supports and “a ten-fold increase” in wiring, etc, as argued by Patent
Owner. Req. Reh’g 7.
SUMMARY
The rehearing is GRANTED-IN-PART, and the Opinion has been
modified, but the disposition of the appealed claims is not changed.

ack
CC:

Patent Owner:

HAMILTON, BROOK, SMITH & REYNOLDS, P.C.
530Virginia Road
PO Box 9133
Concord , MA 01742-9133

Third Party Requester:

Andreas Danckers
LEICA BIOSYSTEMS RICHMOND, INC.
PO Box 528
Richard, IL 60071