Ex Parte 7,553,672 et al

Patent Trial and Appeal Board

Aug 22, 2014

95001671 (P.T.A.B. Aug. 22, 2014)

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.
95/001,671 06/29/2011 7,553,672 1205100-00731US2 8066
21005 7590 08/25/2014
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
08/25/2014 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.1

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal by the Patent Owner from the Patent
Examiner’s decision to reject claim 2 in the above-identified inter partes

1 Administrative Patent Judge Rae Lynn P. Guest participated in the Oral Hearing
held June 4, 2014, but is unavailable at this time. Judge Robertson has been added
to the merits panel. In re Bose Corp., 772 F.2d 866, 869 (Fed. Cir. 1985).

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reexamination of US 7,553,672 B2. The Board’s jurisdiction for this appeal is
under 35 U.S.C. §§ 6(b), 134, and 315. We affirm.

I. BACKGROUND
The patent in dispute in this appeal is US 7,553,672 B2 (“the ’672 patent”)
which issued June 30, 2009. The named inventors are Steven A. Bogen, Herbert
H. Loeffler, and John A. Purbrick. The Patent Owner is Dako Denmark A/S.2
Appeal Br. 1, dated May 31, 2014.
A request for inter partes reexamination of the ’672 patent under 35 U.S.C.
§§ 311-318 and 37 C.F.R. §§ 1.902-1.997 was filed June 29, 2011 (“Request”).
The Requester is Leica Biosystems Melbourne Party Ltd. Resp’t Br. 1, dated July
1, 2013.
The ’672 patent is the subject of pending litigation in the U.S. District Court
for the District of Delaware, C.A. No. 11-390-GMS, Dako Denmark A/S, et al. v.
Leica Microsystem, Inc., et al. Appeal Br. 1. On October 7, 2011, the district
court granted a stay of the litigation pending the outcome of this reexamination
proceeding. Id. The ’672 patent is a member of a patent family of related patents.
See ’672 patent, “Related U.S. Application Data.”
An oral hearing took place on June 4, 2014 with both Patent Owner and
Requester in attendance. A transcript has been entered into the record.

Claims
The ’672 patent issued with 7 claims. Claims 5-7 have been confirmed.
Appeal Br. 3. Claims 1, 3, and 4 have been canceled. Id. Claim 2 is the only

2 The original patent owner is CytoLogix Corp. Appeal Br. 20.
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disputed pending claim. Claim 2, and claim 1 from which it depends, are
reproduced below. The limitations in dispute have been italicized and numbered
[1] to [3]
1. A method of processing samples mounted on microscope slides
comprising: providing a plurality of [1] slide supports on a platform,
[2] each support being comprised of a heating element that underlies
at least one microscope slide and having a surface on which the at
least one microscope slide rests so as to transfer heat to the at least
one microscope slide, said heating elements being capable of heating
said microscope slides, under independent electronic control to heat
some slides to a different temperature than other slides; placing two or
more microscope slides on the platform; providing relative motion
between the platform and a liquid dispenser; dispensing liquid from
the liquid dispenser onto the slides; and on the platform, heating one
slide to a different temperature than a second slide.
2. A method of processing samples mounted on microscope slides as
claimed in claim 1, [3] wherein each slide support accommodates
only one microscope slide.
According to the ’672 patent, the invention provides an improved
microscope slide staining device that includes:
In particular, a plurality of flat heating stations are provided on the
platform, each heating station supporting at least one microscope slide
and, in a preferred embodiment, each heating surface supporting a
single microscope slide. The heating stations are individually
controlled to control temperatures to which the slides are heated.
’672 patent, col.2, ll. 42-48. The patent explains:
Since various procedures require heat at different times to enhance the
rate of chemical reaction, a means has been developed to heat slides to
different temperatures, independently of the temperatures of other
slides. This invention allows for heating each slide to its own
specified temperature.
’672 patent, col.2, ll. 14-19.
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Rejections
Patent Owner appeals nine rejections of claim 2. Appeal Br. 3-4. Rejections
1-4 and 9 involve Tseung.3 Rejections 5-8 involve Bogen ’114. 4 Because we
affirm the anticipation and obviousness rejections of claim 2 based on Tseung
(Rejections 1 and 2), alone, we do not reach Rejections 3-9.

II. CLAIM INTERPRETATION
The ’672 patent expired July 26, 2013, due to non-payment of the
maintenance fee due under 37 C.F.R. §1.20(e). The “Board’s review of the claims
of an expired patent is similar to that of a district court’s review, Ex Parte Papst-
Motoren, 1 USPQ.2d 1655, 1655-56 (B.P.A.I. Dec. 23, 1986); see also MPEP §
2258 I.G (directing Examiners to construe claims pursuant to Phillips v. AWH
Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), during reexamination of an
expired patent).” In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). As
explained in Philips, “claims ‘must be read in view of the specification, of which
they are a part.’” [Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed.
Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996)]. [The] specification ‘is always
highly relevant to the claim construction analysis. Usually, it is dispositive; it is
the single best guide to the meaning of a disputed term.’ [Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).]. Philips, 415 F.3d at
1315. In addition to the patent specification, the prosecution history of the patent
is also pertinent in construing the terms in a claim. Id. With these principles in
hand, we turn to the claim.

3 Tseung, U.S. 5,439,649, issued August 8, 1995.
4 Bogen, U.S. 5,645,114, issued July 8, 1997.
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Claim 1 comprises a plurality of slide supports. Each slide support is
“comprised of a heating element that underlies at least one microscope slide and
having a surface on which the at least one microscope slide rests.” Claim 2 further
recites “wherein each slide support accommodates only one microscope slide.”
Since claim 2 further limits claim 1, it is reasonable to read the slide support of
claim 1 as accommodating more than one slide and the support of claim 2 as
narrowing the slide support to accommodating only one slide.
There are two disputes concerning the interpretation of claim 2.
First, the meaning of the phrase “each slide support accommodates only one
microscope slide” is in dispute. Requester contends that the disputed phrase is a
method limitation. Resp’t Br. 11. Under this interpretation, Requester argues that
the slide support can hold more than one slide, but holds or “accommodates” only
one slide when the claimed method is performed. In contrast, Patent Owner
contends that “each slide support accommodates only one microscope slide” is a
structural limitation that defines the structure of the claimed slide support as
providing support for only one slide. Appeal Br. 14. The Examiner appeared to
have applied both interpretations, finding that under either interpretation, the
claims are anticipated. Right of Appeal Notice (“RAN”) 13.
Second, Patent Owner contends that the claimed “heating element that
underlies at least one microscope slide” requires the heating element to underlie
only one slide such that each single slide support has an individual heating
element. Requester contends, and the Examiner holds, this interpretation is
improper and imports limitations from the specification. According to both the
Examiner and Requester, claim 2 allows the heating element to underlie more than
one slide support.
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Analysis
The ’672 patent does not expressly define the term “slide support.” The
only time the term appears in the ’672 patent is in the claims. The patent
description also does not define the term “accommodates,” which is also recited for
the first time in the claims.
The term “slide support” first appeared in claims presented by amendment
during examination of Appl. No. 10/864,620 (“the ’620 application”), of which the
’672 patent is the direct continuation. ’672 patent, “Related U.S. Application
Data” (“Continuation of application No. 10/864,620, filed on Jun. 9, 2004, now
Pat. No. 7,217,392”); ’620 application , Amendment dated June 10, 2005. During
the prosecution of the ’620 application, Patent Owner referred to the slide support
as the slide frame of Fig. 2.’620 application, Applicant Remarks, p. 6, dated Feb.
27, 2006.
Fig. 2 and related Fig. 5 of the ’672 patent (same figures and disclosure as in
the ’620 application) are reproduced below:
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Fig. 2 “is a top view of a slide frame providing five sealed cavities [7a
through 7e] above five different slides.” ’672 patent at col. 3, ll. 16-18. Fig. 5 “is a
top view of the slide frame housing with five microscope slides in their appropriate
positions, showing the area [striped region] to which heat is applied.” Id. at col. 3,
ll. 21-23. “The slide frame base 8 includes a heated area 9 which underlies each of
the slide positions 7a-7e and incorporates resistive heating elements, not shown.”
Id. at col. 4, ll. 8-12.
As stated by Patent Owner during the prosecution of the parent ’620
application, the slide frame 8 in Fig. 2 is a “slide support” that holds five slides.
’620 application, Applicant Remarks, p. 6, dated Feb. 27, 2006. This embodiment
is consistent with claim 1 which allows the slide support to accommodate more
than one slide (“having a surface on which the at least one microscope slide rests”
(emphasis added)).
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The question is whether claim 2 has narrowed claim 1 by requiring the slide
support to hold only one microscope slide. In describing the subject matter of
instant claim 2, Patent Owner stated that the claimed invention involves processing
samples on microscope slides which are supported on “slide supports” on a
platform. Appeal Br. 2. Patent Owner explained that “each support 8 [is]
comprised of a heating element 78 that underlies at least one slide (preferably, just
one slide (Fig. 17)) and having a surface 9 on which the slide rests so as to transfer
heat to the slide.” Appeal Br. 2. Fig. 17 is reproduced below:

Fig. 17 (reproduced above) shows an embodiment with “forty-nine slide
positions” (only 8 positions depicted in drawing). ’672 patent at col. 10, ll. 15-27.
Each slide in this configuration is held in place by slide chamber clips 76 (not
shown) with lateral walls which are said to form a “cavity.” Id. at col. 8, ll. 10-20;
see also Fig. 14A and 14B. The slides are mounted on a slide rotor 77. See Fig.
14A. A single heating element 78 is said to provide “a location 88 for a single
slide to be heated.” Id. at col. 10, ll. 18-20. Patent Owner referred to “slide
support 8” in the Appeal Brief on page 2, but there is no element labeled
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“support 8” in Figure 17. However, there is “location 88” which appears to the
structure referred to by Patent Owner since it contains heating element 78.
Based on this description in the patent specification, Patent Owner construes
“slide support” to be location 88 in Figure 17. Reply Br. 3 (dated December 23,
2013). Patent Owner further argues that because location 88 in Figure 17 holds
only one slide and one heating element 78, claim 2 should be interpreted to
comprise “a heating element that underlies the only one microscope slide and has a
surface on which the only one microscope slide rests so as to transfer heat to the at
least one microscope slide.” Appeal Br. 14 (emphasis added).
This interpretation is not consistent with the language of the claim when
read in view of the specification of the ’672 patent. Philips, 415 F.3d at 1315. The
claim does not require the heating element to be restricted to the slide support
which accommodates only one slide. This language does not appear in the claim.
Patent Owner has not pointed to any persuasive disclosure in the specification that
would dictate such a construction. It is true that Figure 17 shows a single location
88 with a single heating element 87, which does not heat any other location on the
platform. However, claim 1 recites “a heating element that underlies at least one
microscope slide” (emphasis added), indicating that the heating element can
underlie more than one slide. Fig. 5 reproduced above shows such an embodiment.
Claim 2 does not explicitly further limit the heating element, indicating that its
scope is unchanged from claim 1. 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. Thus, Patent Owner’s
argument appears to be based on a reading that would import the specific
embodiment of Figure 17 into the claims, i.e., since “location 88” holds only a
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single slide and such a single slide support is shown to contain an individual heater
87, then claim 2 must require that. Reply Br. 3. However, it is improper to import
limitations from the specification into the claims. “For example, a particular
embodiment appearing in the written description may not be read into a claim
when the claim language is broader than the embodiment.” Superguide Corp. v.
DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).
Patent Owner also argues that slide supports according to claim 2 “(1)
accommodate at least one microscope slide; (2) include a heating element that
underlies the at least one microscope slide; and (3) have a surface on which the at
least one microscope slide rests so as to transfer heat to the at least one microscope
slide.” Reply Br. 4. Based on these requirements, Patent Owner argues that claim
2 “narrows the structural limitations to an embodiment wherein the slide support
accommodates only one microscope slide. Thus, where the slide support
accommodates only one microscope slide, the surface of the slide support
accommodates only one slide and the heating element that is part of the slide
support heats only one microscope slide.” Id. The claim does not recite this. By
the plain language of the claim, the heating element can underlie more than one
slide support and still meet the claim limitation.
The interpretation of the slide support advanced by Patent Owner is, in fact,
expressly embodied by claim 3 of the parent ’392 patent. Claim 1 of the ’392
patent is drawn to a microscope slide staining apparatus, and recites:
a plurality of slide supports, each support being comprised of a
heating element that underlies at least one microscope slide and
having a surface on which the at least one microscope slide rests so as
to transfer heat to the at least one microscope slide.
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Claim 3, which depends from claim 1, recites: “wherein each of the heating
elements hears [bears] only one microscope slide.” These words (or equivalent
words), however, do not appear in appealed claim 2 and we shall not read them
into the claim.
Requester contends that the recited limitation of claim 2 “properly must be
construed to be a method limitation” because “the ’692 [sic,’672] patent does not
disclose any slide support that is structurally capable of ‘accomodat[ing] only one
microscope slide.’ All of the slide supports disclosed in the ’692 [sic,’672]patent –
each slide frame 6 in the first embodiment (see Figure 2) and each slide rotor of the
second embodiment (see Figure 17) – are constructed such that they are able to
‘accommodate’ multiple slides . . . ” Request, Appendix B1, p. 7 (brackets in
original).
We do not agree. Position 88 of Fig. 17 is a slide support for only a single
slide. See supra.at p. 7-8.
III. ANTICIPATION
Claim 2 stands rejected under 35 U.S.C. § 102(b) (pre-AIA) 5 as anticipated
by Tseung. RAN 34.
An applicant may not receive a patent for an invention that was “(b) . . . was
patented or described in a printed publication in this or a foreign country or in
public use or on sale in this country, more than one year prior to the date of
application for patent in the United States.” 35 U.S.C. § 102(b) (pre-AIA). For a
prior art reference to anticipate a claim, it must disclose all of the limitations of the

5 The claims are not subject to the first inventor to file provisions of the American
Invents Act (“AIA”).
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claim, “arranged or combined in the same way as in the claim.” Net MoneyIN, Inc.
v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008).
In the Request for Reexamination, the Third Party Requester identified in
Appendix B.1 where all the limitations of claims 1 and 2 can be found in Tseung.
Request, Appendix B.1. Claim 2 recites that “each slide support accommodates
only one microscope slide.” For this feature, Requester identified Tseung’s
teaching of “raised areas 202 of a heater block 200 [which] contacts and supports
the bottom of only one microscope slide.” Request, Appendix B1, p. 7, citing
Tseung, col. 12, ll., 12-24 and 49-56; Figs. 9B and 11B.
The method of claim 2 requires: (1) a slide support that comprises a heating
element that underlies at least one microscope slide; (2) having a surface on which
the at least one microscope slide rests so as to transfer heat; (3) heating one slide to
a different temperature than a second slide; and (4) each slide support
accommodates only one microscope slide.
All the claimed features are described by Tseung.
First, we address limitations (1), (2), and (4) of claims 2.
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Figure 9B, reproduced below, shows the heating block 200 and raised
areas 202.

Fig. 9B shows heating block 200, with raised areas 202 which contact the
slide, and depressions 204 which fit the slide carrier. Tseung at col. 12, ll. 51-52.
The raised area 202 meets the limitations of the claimed slide support
because it has (1) a heating element (block 200) which underlies it; and (2) a
surface on which the slide rests to transfer heat (raised area 202). Each raised
area (4) accommodates only one slide as required by claim 2. The raised area is
similar to location 88 in Figure 17 of the ’672 patent which Patent Owner argued
serves as the claimed slide support accommodating only one slide.
With regard to element (3) (heating one slide to a different temperature than
a second slide), the following disclosures from Tseng are pertinent:
Tseng teaches that “[e]ach of the individual heater blocks 200 shown in FIG.
9 can be assembled into an array of multiple blocks.” Tseung, col. 12, ll. 59-61.
Figure 10 of Tseung, reproduced below, shows an array of heater blocks.

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Figure 10 show the heater blocks arranged in an array. Tsuen teaches: “It is
then possible to individually heat each of the heater blocks to different
temperatures, thereby concurrently providing different temperatures of operation
for different reagent configurations without operator intervention.” Tseung, col.
12, ll. 62-66.
Based on these disclosures, the preponderance of the evidence supports the
Examiner’s determination that Tseung describes (3) heating one slide to a different
temperature than a second slide. Specifically, the disclosure at column 12 of
Tseung refers to heating the blocks to different temperatures. When two blocks are
each loaded with at least one slide, each slide is heated to a different temperature
as required by claim 2.
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Patent Owner argues that “Tseung does not disclose a method for processing
microscope slides that includes heating each slide individually as claimed in
Claim 2.” Appeal Br. 13. As already discussed, Patent Owner’s interpretation of
the claim is not proper. There is no requirement that each slide support have its
own individual heater. This language simply does not appear in the claim.
Patent Owner attempts to distinguish Tseung, stating “[e]ach heating
element [in Tseung] does not underlie only one microscope slide and each slide
support does not have a surface on which the only one microscope slide rests so as
to transfer heat to the only one microscope slide as required by Claim 2 of the '672
Patent.” Appeal Br. 13. To the contrary, area 202 is expressly taught by Tseung to
“press upward into the open bottoms of the wells of the tray and closely contact the
individual microscope slides.” Tseung at col. 12, ll. 54-56.
Patent Owner argues that configuration described by Tseung with different
heating blocks being heated to different temperatures is no different from the prior
art four block thermal recycler disclosed in the specification at column 2,
lines 20-26. Appeal Br. 15. Patent Owner does not explain how the disclosure of
the four block thermal recycle was clearly disavowed in the specification or during
prosecution of the claim. See SkinMedica, Inc. v. Histogen, Inc., 727 F.3d 1187,
1211 (Fed. Cir. 2013); Aventis Pharmaceuticals Inc. v. Amino Chemicals Ltd., 715
F.3d. 1363, 1371-72 (Fed. Cir. 2013). This argument is therefore ineffective in
distinguishing claim 2 from Tseung.
In sum, a preponderance of the evidence supports the Examiner’s
determination that claim 2 is anticipated by Tseung.

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IV. OBVIOUSNESS
Claim 2 stands rejected under 35 U.S.C. § 103 as obvious in view of Tseung.
In the event claim 2 is determined to require that each slide support have its
own individual heating element, the Examiner held 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. RAN 36. The Examiner
explained: “Depending on how many samples a user has or needs to examine will
determine how many supports [raised area 202] 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.” Id.
Patent Owner contends that if heating were “to be implemented on an
automated slide stainer, such as the system in Tseung, it would have been batch
heating, with all slides heated to the same temperature for IHC
[immunohistochemistry] staining.” Appeal Br. 16. This argument, and the related
one concerning the complexity of individual heating, ignores the explicit teaching
in Tseung “to individually heat each of the heater blocks to different temperatures,
thereby concurrently providing different temperatures of operation for different
reagent configurations without operator intervention.” Tseung at col. 12, ll. 62-66.
Likewise, Patent Owner’s arguments that there was no need for individual slide
heating in IHC is unpersuasive because Tseung expressly teaches utilizing
different temperatures in the same apparatus. Appeal Br. 16-19. Indeed, Tseung’s
automated staining apparatus is not limited to immuno-staining. Tseung at col. 2,
ll. 25-31.
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Regarding the arguments about the wiring complexity (Appeal Br. 18),
Patent Owner appears to have misunderstood the Examiner’s argument. 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.
Even if the configuration with fewer slide supports is less optimal, a
teaching that a result would be inferior or less desirable is not a teaching away
unless the use “would render the result inoperable.” In re ICON Health and
Fitness Inc., 496 F.3d 1374, 1381 (Fed. Cir. 2007). Patent Owner has not directed
our attention to credible evidence that the fewer-slide configuration would have
been inoperable.
In addition to this, even were the disputed limitation that “each slide support
accommodates only one microscope slide” is construed to be a method limitation,
it would have been obvious to one of ordinary skill in the art to load the tray with a
single slide when only one slide was to be processed by the user.

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
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evidence of copying is derived from a talk given by Jack Schuler, Chairman of
Ventana. Ex. C of Bogen Decl.on. 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”
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.

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).
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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
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. 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 Ventana device has been
identified in the Appeal Brief before us.
Appeal 2014-002692
Reexamination Control 95/001,671
Patent 7,553,672 B2

21

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 CytoLogix’s business plan and knowledge
of CytoLogix’s concept of individually controlling heat to a microscope slide,
Patent Owner did not show that 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 filed a patent application directed to
device incorporating individual heating to the sample, 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 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.
Requester did not adequately rebut the Patent Owner’s contention that the
’809 patent provides evidence of copying. Neither did the Examiner.
Appeal 2014-002692
Reexamination Control 95/001,671
Patent 7,553,672 B2

22

Nonetheless, the evidence that Ventana copied Patent Owner’s concept of
heating individual slides by incorporating into their patent application 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.

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

23

TIME PERIOD FOR RESPONSE
In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the appeal may
file a request for rehearing of the decision within one month of the date of: . . .
[t]he original decision of the Board under § 41.77(a).” A request for rehearing
must be in compliance with 37 C.F.R. § 41.79(b). Comments in opposition to the
request and additional requests for rehearing must be in accordance with 37 C.F.R.
§ 41.79(c) & (d), respectively. Under 37 C.F.R. § 41.79(e), the times for
requesting rehearing under paragraph (a) of this section, for requesting further
rehearing under paragraph (d) of this section, and for submitting comments under
paragraph (c) of this section may not be extended.
An appeal to the United States Court of Appeals for the Federal Circuit
under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an inter partes
reexamination proceeding “commenced” on or after November 2, 2002 may not be
taken “until all parties’ rights to request rehearing have been exhausted, at which
time the decision of the Board is final and appealable by any party to the appeal to
the Board.” 37 C.F.R. § 41.81. See also MPEP § 2682 (8th ed., Rev. 7, July 2008).
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable
under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See 37 C.F.R.
§§ 90.1 and 1.983.

AFFIRMED
Appeal 2014-002692
Reexamination Control 95/001,671
Patent 7,553,672 B2

24

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