Ex Parte Bui

Board of Patent Appeals and Interferences

Sep 30, 2010

11116830 (B.P.A.I. Sep. 30, 2010)

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.
11/116,830 04/28/2005 Huy A. Bui 1094US/NAT 3113
44064 7590 09/30/2010
THERMO FINNIGAN LLC
355 RIVER OAKS PARKWAY
SAN JOSE, CA 95134
EXAMINER
RIGGS II, LARRY D
ART UNIT PAPER NUMBER
1631
MAIL DATE DELIVERY MODE
09/30/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte HUY A. BUI
__________

Appeal 2010-007217
Application 11/116,830
Technology Center 1600
__________

Before TONI R. SCHEINER, FRANCISCO C. PRATS, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134(a) involving claims to a mass
spectrometry apparatus and method for its operation. The Patent Examiner

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-007217
Application 11/116,830

2
rejected the claims as obvious.2 We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
STATEMENT OF THE CASE
The invention concerns a mass spectrometer apparatus and a method
for operating a matrix assisted laser desorption/ionization (MALDI) mass
spectrometer. (Spec. [0001]-[0002]). The Specification states that the
objective of the inventive method “is to locate, via image analysis, regions
of high analyte/matrix density within the target areas so that [a laser beam] is
preferentially directed onto such regions, thereby yielding high-quality mass
spectra.” (Id. at [0028]).
Claims 16, 18-22, and 24-28 are on appeal. Claim 16 is representative
and reads as follows:
16. A method for operating a MALDI mass spectrometer having a sample
plate and a plurality of sample spots deposited thereon, comprising steps of:
acquiring an image of a section of the sample plate, the section
including at least a portion of a target area having a sample spot deposited
thereon;
storing the image as an array of picture elements, each picture element
having associated image data;
determining a threshold value based on the incidence of values of the
image data; and
selectively irradiating a region of the sample plate depending at least
in part on whether the image data of a picture element corresponding to the
region on the sample plate is at least as great as the threshold value;
wherein the step of determining a threshold value includes performing
the steps of:

2 Appellant’s Brief indicates that claims 16 and 18-21 were also rejected as
directed to non-statutory subject matter. (App. Br. 5). However, the
Examiner has not repeated the rejection in the Answer. (See Ans. 3-7,
presenting only an obviousness rejection). We conclude that the Examiner
withdrew the § 101 rejection.
Appeal 2010-007217
Application 11/116,830

3
providing a plurality of bins each corresponding to a range of
image data values;
allocating each picture element to a bin in accordance with the
value of the image data of the picture element; and
identifying the bin at which the incidence exhibits a local
minimum, and setting the threshold value equal to a value within the
range of values assigned to the bin.

The Examiner rejected the claims under 35 U.S.C. § 103(a) as
unpatentable over Lennon3 and Ezel.4
Claims 18-22 and 24-28 have not been argued separately and
therefore stand or fall with claim 16. 37 C.F.R. § 41.37(c)(1)(vii).
OBVIOUSNESS
The Issue
The Examiner’s position is that Lennon disclosed the claimed method
for operating a MALDI mass spectrometer, except for the step of
determining a threshold value based upon a binned data local minimum.
(Ans. 4-5). The Examiner found that Ezel disclosed an image processing
system for identifying a local minimum in a histogram of binned data for an
image in order to define a threshold. (Id. at 5).
According to the Examiner, it would have been obvious to a person of
ordinary skill in the art at the time of the invention to modify Lennon’s
method and apparatus with the image processing method taught by Ezel
because Ezel provided an improved image processing method by which the
threshold is calculated in a shorter process time. (Id. at 7).

3 Patent No. 6,804,410 B2 issued to John J. Lennon et al., Oct. 12, 2004.
4 Patent Application Publication No. EP 0337325 A2 by Ryohei Kumagai,
published Oct. 18, 1989.
Appeal 2010-007217
Application 11/116,830

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Appellant contends that “the Examiner has failed to establish a clear
line of reasoning why one of ordinary skill in the art would modify the
technique and apparatus disclosed by Lennon with the specific threshold
determination technique taught by Ezel.” (App. Br. 7). Appellant asserts
that Lennon only describes, “in highly generalized terms, a process of
determining and applying a threshold to identify crystallized regions on the
sample spot.” (Id.). According to Appellant, Lennon does not “offer any …
information that would be useful in selecting an image processing technique
that would be well-suited for threshold determination.” (Id.). Further,
Appellant asserts that “Ezel does not disclose or suggest that its method is
appropriate to establish thresholds for the identification of crystallized areas
in MALDI sample spots….” (Id.).
Appellant additionally asserts that the Examiner has not established
that Ezel’s image processing technique would have been obvious to try in
Lennon’s method. (Id. at 8). According to Appellant, the Examiner has not
established that there are a “finite (i.e., limited) number of identified,
predictable solutions,” nor that the known techniques would yield
predictable results. (Id.).
The issue with respect to this rejection is whether the record supports
the Examiner’s conclusion that the cited references would have made the
claimed method obvious.
Findings of Fact
1. We agree with the Examiner’s explicit findings regarding the scope
and content of the prior art references. (See Ans. 4-7).

Appeal 2010-007217
Application 11/116,830

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Principle of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Analysis
We are not persuaded by Appellant’s contention (App. Br. 7-9) that
the Examiner did not provide sound reasoning for combining Lennon and
Ezel. The Examiner found that Lennon disclosed that its thresholding step
may be accomplished by several different methods. (Ans. 8-9). The
Examiner also found that Lennon disclosed the use of image processing.
(Id. at 9). Additionally, the Examiner found that Ezel disclosed an image
processing method that advantageously calculated threshold in a shorter
processing time. (Id. at 5). The evidence supports those findings. Based
upon the evidence, the Examiner reasoned that it would have been obvious
for a skilled artisan at the time of the invention to employ Ezel’s image
processing technique to determine the threshold value in Lennon’s method,
motivated by Ezel’s teaching that its method of calculating threshold used a
much shorter processing time than conventional methods. (Id. at 7).
As the Examiner explained, “a person of ordinary skill has good
reason to pursue the known options within his or her technical grasp.”
(Non-Fin. Rej. 11). We agree with the Examiner that the instantly claimed
method is a combination of routine applications that were well known in the
art, and that the combination produces no more than expected results. (Id. at
12). Therefore, we find that the Examiner’s reasoning was in compliance
with obviousness precedent. See KSR, 550 U.S. at 416.
Appeal 2010-007217
Application 11/116,830

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To the extent that Appellant asserts that the Examiner’s obviousness
determination “constitute[d] impermissible hindsight reconstruction,” we are
unpersuaded. Appellant has not established that the Examiner’s
combination relied on knowledge gained solely from the Appellant’s
disclosure. Instead, the combined disclosures of Lennon and Ezel evidence
that all the elements of the claims, and a reason for combining the prior art
teachings, were in the prior art. Accordingly, we affirm the Examiner’s
obviousness rejection.
CONCLUSION OF LAW
The record supports the Examiner’s conclusion that the cited
references would have made the claimed method obvious.
SUMMARY
We affirm the rejection of claims 16, 18-22, and 24-28 under
35 U.S.C. § 103(a) as unpatentable over Lennon and Ezel.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

lp

THERMO FINNIGAN LLC
355 RIVER OAKS PARKWAY
SAN JOSE CA 95134