Ex Parte Akimoto

Board of Patent Appeals and Interferences

Sep 27, 2005

09749752 (B.P.A.I. Sep. 27, 2005)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte TAIZO AKIMOTO
__________

Appeal No. 2005-1234
Application No. 09/749,752
__________

HEARD: August 11, 2005
__________

Before SCHEINER, ADAMS, and GREEN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the examiner’s
final rejection of claims 7, 8, 10, 11 and 18-21, all of the claims in appeal. Claims
8, 11, 20 and 21 are representative of the subject matter on appeal, and read as
follows:
8. An analysis system for analyzing a target substance by causing the target
substance marked with a marker to bind selectively to some of plural types of
probes arranged and fixed on a test piece and detecting positions of the probes
to which the target substance has bound comprising:

means for attaching management information peculiar to the test piece to
a predetermined location on the test piece using a marker the same as or similar
to the marker used for marking the target substance,

means for obtaining information concerning the positions of the probes to
which the target substance has bound and simultaneously detecting the
management information attached to the test piece, and
Appeal No. 2005-1234 Page 2
Application No. 09/749,752

means for storing the management information in association with the
information concerning the positions of the probes to which the target substance
has bound.

11. An analysis system for analyzing a target substance by causing the
target substance marked with a marker to bind selectively to some of plural types
of probes arranged and fixed on a test piece and detecting positions of the
probes to which the target substance has bound comprising:

means for attaching encoded management information to a predetermined
location on the test piece as ID information peculiar to the test piece using a
marker the same as or similar to the marker used for marker used for marking
the target substance,

means for obtaining information concerning the positions of the probes to
which the target substance has bound and simultaneously detecting the ID
information attached to the test piece,

first storing means for storing the management information in association
with the ID information,

means for decoding the detected ID information by searching through the
first storing means referring to the detected ID information to find the
management information associated with the detected ID information, and

second storing means for storing the management information in
association with the information concerning the positions of the probes to which
the target substance has bound.

20. An analysis system for analyzing a target substance by causing the target
substance marked with a marker to bind selectively to some of plural types of
probes arranged and fixed on a test piece and detecting positions of the probes
to which the target substance has bound comprising:

means for attaching management information peculiar to the test piece to
a predetermined location on the test piece,

means for obtaining information concerning the positions of the probes to
which the target substance has bound,

means for detecting the management information attached to the test
piece, and

Appeal No. 2005-1234 Page 3
Application No. 09/749,752

means for storing the management information in association with the
information concerning the positions of the probes to which the target substance
has bound,

wherein obtaining the information concerning the positions of the probes
to which the target substance has bound occurs simultaneously with detecting
the management information attached to the test piece.

21. An analysis system for analyzing a target substance by causing the target
substance marked with a marker to bind selectively to some of plural types of
probes arranged and fixed on a test piece and detecting positions of the probes
to which the target substance has bound comprising:

means for attaching encoded management information to a predetermined
location on the test piece as ID information peculiar to the test piece,

means for obtaining information concerning the positions of the probes to
which the target substance has bound,

means for detecting the ID information attached to the test piece,
first storing means for storing the management information in association
with the ID information,

means for decoding the detected ID information by searching through the
first storing means referring to the detected ID information to find the
management information associated with the detected ID information, and

second storing means for storing the management information in
association with the information concerning the positions of the probes to which
the target substance has bound,

wherein obtaining information concerning the positions of the probes to
which the target substance has bound occurs simultaneously with detecting the
ID information attached to the test piece.

The examiner relies upon the following references:
Perttunen et al. (Perttunen) 5,968,728 Oct. 19,1999
Zeleny et al. (Zeleny) 6,215,894 Apr. 10, 2001
Noblett 6,362,004 Mar. 26, 2002
Appeal No. 2005-1234 Page 4
Application No. 09/749,752

Claims 7, 8, 10, 11 and 18-21 stand rejected under 35 U.S.C. § 102 as
being anticipated by either Zeleny, Noblett or Perttunen. After careful review of
the record and consideration of the issues before us, we reverse all of the
rejections of record.
DISCUSSION
The issue before us turns on the construction of the claims on appeal.
Both the examiner and appellants agree, and we do not disagree, that the claims
are written as “means-plus-function.” The construction of the claims is thus
governed by 35 U.S.C. § 112, sixth paragraph; therefore, in construing the claim,
we must “look to the specification and interpret that language in light of the
corresponding structure, material, or acts described therein, and equivalents
thereof, to the extent that the specification provides such disclosure.” In re
Donaldson, 16 F.3d 1189, 1193, 29 USPQ2d 1845, 1848 (Fed. Cir. 1994) (en
banc).
Focusing first on independent claims 8 and 11, the portion of the claims
that we find to be dispositive of the issues on appeal is the construction of the
phrase “means for obtaining information concerning the positions of the probes to
which the target substance has bound and simultaneously detecting the
management information attached to the test piece.”
The examiner interprets the structure for a means for obtaining information
concerning the positions of the probes to which the target substance has bound
and simultaneously detecting the management information attached to the test
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Application No. 09/749,752

piece as a photomultiplier. See Examiner’s Answer, pages 5-6. Moreover, the
examiner interprets “simultaneously” as encompassing multiple, sequential
manipulations. Thus, for example, with respect to the Zeleny reference, the
examiner asserts that the scanning in of information, opening a file folder, and
scanning a microarray image, while apparently acknowledging that those are
three continuous steps, “is all one step, albeit complex in nature directed to
microarray scanning,” which, he contends, “supports the instant rejection.” Id. at
12.
Appellants do not contest the examiner’s construction that “the means for
obtaining information concerning the positions of the probes to which the target
substance has bound” is a photomultiplier. Rather, appellants argue that the
examiner “seems to be asserting that ‘simultaneously’ means ‘requiring no
additional step,’” arguing that “[a]lthough the performing of two operations
simultaneously would logically follow that no additional steps are required to
perform those two operations, it does not necessarily mean that combining
multiple steps into one complex step would mean that the combined multiple
steps would be performed simultaneously.” Reply Brief, page 8. Appellants
contend that “the term ‘simultaneously’ recited in the appealed claims should
maintain its plain meaning, since the meaning of the term ‘simultaneously’ is
known to one of ordinary skill in the art.” Id.
Following the mandate of Donaldson, we look to the specification and
interpret the phrase “means for obtaining information concerning the positions of
the probes to which the target substance has bound and simultaneously
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Application No. 09/749,752

detecting the management information attached to the test piece” in light of the
corresponding structure, material, or acts described by the specification, as well
as equivalents thereof. Moreover, as the determination of function, as well as the
determination of the corresponding structure disclosed in the specification are
issues of claim construction and thus questions of law, see Chiuminatta Concrete
Concepts Inc. v. Cardinal Industries Inc., 145 F.3d 1303, 1307,
46 USPQ2d 1752, 1755-56 (Fed. Cir. 1998), we are not bound by the claim
construction of the examiner.
The claim limitation at issue therefore requires the structure to perform two
functions, the first being obtaining information concerning the positions of the
probes to which the target substance has bound, and the second being
simultaneously detecting the management information attached to the test piece.
Looking to the specification, we find that the structure required by the
specification is a “stimulable phosphor sheet.”1 See, e.g., Specification, page

20. Thus, the specification teaches at page 23, “[a]ccordingly, the ID information
stored on the stimulable phosphor sheet 30 may be detected concurrently with
the information concerning the positions of the hybridized probes stored on the
same stimulable phosphor sheet,” and also teaches that “[m]oreover, in the
above embodiment, the ID information and the information concerning the
positions of the hybridized probes can be detected simultaneously requiring no

1 At oral argument, counsel for appellants’ appeared to agree that was the structure that met the
two limitations disclosed by the specification.
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Application No. 09/749,752

additional step, as the radioactive isotope the same as or similar to the
radioactive isotope used as the marker is used for printing the ID information to
the test piece 1.” See also id. at 31-32 (“the stimulable phosphor sheet 30 is
capable of storing the ID information peculiar to the test piece 1, i.e., the encoded
form of the management information of the test piece 1 . . . as the ID information
has been printed on the test piece 1 by the printing device 53 using the
radioactive isotope the same as the one used as the marker. Accordingly, the ID
information stored on the stimulable phosphor sheet 30 may be detected
concurrently with the information concerning the positions of the hybridized
probes stored on the same stimulable phosphor sheet 30.”).
We have considered the portions of the specification that describe the use
of a photomultiplier tube without the use of a stimulable phosphor sheet. Page
24 of the specification teaches “[i]n addition, fluorescent dye . . . may be used in
place of the radioactive isotope . . . as the marker to mark the target substance.
In that case, the PMT can detect the direct information from the test piece without
the use of the stimulable phosphor sheet by projecting stimulating light capable
of stimulating the fluorescent dye directly onto the test piece 1.” See also, id. at
33.
The above passage, however, only makes reference to the marker to
mark the target substance. As opposed to the passages that refer to the use of a
stimulable phosphor sheet, it makes no reference to the management
information. Thus, we do not find that a photomultiplier serves the two functions
required by the claim limitation “means for obtaining information concerning the
Appeal No. 2005-1234 Page 8
Application No. 09/749,752

positions of the probes to which the target substance has bound and
simultaneously detecting the management information attached to the test
piece,” which requires the structure to perform the two functions of obtaining
information concerning the positions of the probes to which the target substance
has bound, and simultaneously detecting the management information attached
to the test piece.
With respect to independent claims 20 and 21, those claims require
“means for obtaining information concerning the positions of the probes to which
the target substance has bound,” “wherein obtaining the information concerning
the positions of the probes to which the target substance has bound occurs
simultaneously with detecting the management information attached to the test
piece.” We read those two limitations together to again require that the structure
perform two functions, that is obtaining information concerning the positions of
the probes to which the target substance has bound and simultaneously
detecting the management information attached to the test piece. Thus, using
the analysis set forth above, we construe the structure for the recited means as
being a stimulable phosphor sheet.
Turning to the anticipation rejections of record, the examiner has rejected
all of the claims on appeal as being anticipated by either Zeleny, Noblett or
Perttunen. Under 35 U.S.C. § 112, sixth paragraph, the claim is “construed to
cover corresponding structure, material, or acts described in the specification and
equivalents thereof.” Thus, a reference may still be anticipatory even if the
structure disclosed by that reference is not identical to that claimed, if the
Appeal No. 2005-1234 Page 9
Application No. 09/749,752

reference describes an equivalent structure. See In re Bond, 910 F.2d 831, 833,
15 USPQ2d 1566, 1568 (Fed. Cir. 1990). “If the examiner finds that a prior art
element (1) performs the function specified in the claim, (2) is not excluded by
any explicit definition provided in the specification for an equivalent, and (3) is an
equivalent of the means- . . . plus-function limitation, the examiner should provide
an explanation and rationale in the Office action as to why the prior art element is
an equivalent.” Supplemental Examination Guidelines for Determining the
Applicability of 35 U.S.C. 112, para. 6, 65 Fed. Reg. 38,510, 38,514 (June 21,
2000).
In the anticipation rejections over Zeleny, Noblett or Perttunen, the
examiner has construed the structure corresponding to the “means for obtaining
information concerning the positions of the probes to which the target substance
has bound and simultaneously detecting the management information attached
to the test piece” as a photomultiplier (PMT). See Examiner’s Answer pages 6-
72, 163 and 23.4 (“a means for obtaining information concerning the positions of
the probes to which the target substance has bound and simultaneously
detecting the management information attached to the test piece, i.e. a
photomultiplier (PMT)).
As we have discussed above with respect to the construction of the
limitation at issue, the specification specifically excludes a photomultiplier tube as
performing both functions required by the means, that is, obtaining information

2 Setting forth the anticipation rejection over Zeleny.
3 Setting forth the anticipation rejection over Noblett.
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Application No. 09/749,752

concerning the positions of the probes to which the target substance has bound
and simultaneously detecting the management information attached to the test
piece. Moreover, even if the specification did not exclude a photomultiplier tube
as an equivalent to the stimulable phosphor sheet, the examiner has not
provided an explanation and rationale as to why the photomultiplier is an
equivalent, and we would also be compelled to reverse the rejection on that basis
as well.

4 Setting forth the anticipation rejection over Perttunen.
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Application No. 09/749,752

CONCLUSION
Based on our construction of the claims, we find that Zeleny, Noblett and
Perttunen do not anticipate the claimed subject matter, and we thus reverse all of
the rejections of record.

REVERSED

Donald E. Adams )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Toni R. Scheiner )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Lora M. Green )
Administrative Patent Judge )

LG/dym
Appeal No. 2005-1234 Page 12
Application No. 09/749,752

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