Ex Parte Denk

Board of Patent Appeals and Interferences

Sep 16, 2008

10493593 (B.P.A.I. Sep. 16, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WINFRIED DENK
____________

Appeal 2008-5072
Application 10/493,593
Technology Center 2800
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Decided: September 16, 2008
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Before TERRY J. OWENS, CATHERINE Q. TIMM, and
ROMULO H. DELMENDO, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 13, 16, 18, and 21-24 (Appeal Brief filed September 17, 2007,
hereinafter “App. Br.”; Final Office Action mailed April 17, 2007). We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2008-5072
Application 10/493,593

Appellant’s invention relates to an imaging device for optical-
microscopic imaging of an object, particularly an optical microscope having
an adjustable objective (Specification, hereinafter “Spec.,” 1). According to
Appellant, the invention “particularly allows free setting of the relative
coordinates between the objective and object without restriction of the
imaging properties of the imaging device” (Spec. 2-3).
Claim 13 on appeal reads as follows:
13. An imaging device for microscopic imaging of an
object having:
an objective having an objective exit pupil, which
objective is set up to generate an object image in infinity, and
a fixed tube optic, which is set up to generate an
intermediate image from the object image, wherein the
objective is movable in relation to the tube optic in at least one
reference direction which deviates from the alignment of the
optical axis of the objective,
a deflection device, having adjustable reflectors, which
direct the beam path from the objective onto the tube optic in
any position of the objective in such a way that the beam path
runs perpendicularly to the tube optic and parallel to its optical
axis, wherein the adjustable reflectors comprise an objective
reflector, a tube reflector, and an intermediate reflector, and the
objective reflector and the intermediate reflector being jointly
displaceable in such a way that in the event of adjustment of the
tube reflector, the length of the beam path from the objective to
the tube optic remains constant and a displacement of an image
of the objective exit pupil along the optical axis is avoided, and
an adjustment device for moving the objective reflector,
the intermediate reflector and the tube reflector, wherein the
adjustment device has
an X translation drive, using which the objective and the
adjustable reflectors are displaceable jointly along the optical
axis of the tube optic,
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an Y translation drive, using which the objective and at
least one of the objective reflector and the intermediate reflector
being jointly displaceable along a reference direction
perpendicular to the optical axis of the tube optic, and
a Z translation drive, using which the objective and at
least one of the objective reflector and the intermediate reflector
being jointly displaceable along an optical axis of the objective.

The Examiner relied upon the following prior art references to reject
the claims on appeal:
Muller 4,448,498 May 15, 1984
Yoshinaga 4,744,642 May 17, 1988
Anderson 5,995,283 Nov. 30, 1999
The Examiner rejected the claims as follows: (i) claims 13, 16, 21,
23, and 24 as unpatentable over the combined teachings of Yoshinaga and
Muller; and (ii) claims 18 and 22 as unpatentable over the combined
teachings of Yoshinaga, Muller, and Anderson (Examiner’s Answer mailed
Nov. 19, 2007, hereinafter “Ans.,” 4-7).

ISSUES
Has Appellant demonstrated reversible error in the Examiner’s
determination that a person having ordinary skill in the art would have found
the subject matter of the appealed claims obvious in view of the applied
prior art?

FINDINGS OF FACT
1. Appellant’s Specification (p. 2, first full paragraph) states:
Microscopes are known in which the
objective is displaced in relation to the remaining
construction of the microscope for focusing, i.e., to
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set the objective on a focal plane in the object. . . .
The conventional focusing movement of the
objective is restricted to axial displacements,
however. Free setting of the relative position
between object and microscope in all spatial
directions is therefore not possible.
2. Appellant’s Specification further acknowledges that “focusing
in the Z direction is known per se...” (Spec. 9, last three lines).
3. Appellant’s Specification states (p. 5, last paragraph):
According to a further preferred
embodiment of the present invention, the
deflection device is additionally equipped with an
intermediate reflector, the objective and
intermediate reflectors being displaceable and
settable together in such a way that if the tube
reflector and/or the objective reflector are
displaced with the objective, the length of the
beam path from the objective to the tube optic
remains constant.
4. Yoshinaga teaches that “a primary object...is to provide a
microscope whereby the sample observing position can be
varied over a wide range without requiring a large objective”
(col. 1, ll. 46-49).
5. Yoshinaga characterizes the prior art as follows (col. 1, ll. 12-
16):
Generally a microscope is formed fundamentally
of an objective, an eyepiece and a stage for holding
a sample observing position, the sample held on
the stage itself used to be moved in the direction
vertical to the optical axis.
6. Yoshinaga’s Figure 4 is reproduced below:
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7. Yoshinaga’s Figure 4 is said to depict an embodiment in which
an objective optical system is arranged so as to move in two
dimensions X and Y (col. 3, ll. 10-12).
8. Yoshinaga explains Figure 4 as follows:
The reference numeral 11 represents a first mirror
arranged slidably in the direction X along such
guide 12 as, for example, a dovetail together with
the objective 4, 13 represents a second mirror
arranged slidably in the direction Y along a guide 14
formed the same as the guide 12 integrally with the
objective 4, first mirror 11 and guide 12. The same
as in the embodiment shown in FIG. 2, the light
coming out of the sample 3 will be made an afocal
light by the objective 4, will be reflected in the
direction X by the first mirror, will be reflected in
the direction Y by the second mirror 13, will be
further reflected by the half mirror 6 and then will
be made to form an image by the image forming
lens 7. This image will be observed through the
eyepiece 8. Therefore, by properly adjusting the
light path length between the first mirror 11 and
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second mirror 13 with the guide 12 and the light
path between the second mirror 13 and half mirror 6
with the guide 14, the objective 4 can be moved in
the directions X and Y without varying the image
forming position and the sample 3 can be observed
in any position. Thus, such large sample as a brain
slice or large silicon wafer can be easily and
precisely observed.
9. Muller’s Abstract, upon which the Examiner relies (Ans. 4),
teaches:
The invention contemplates an operation
microscope in which three-dimensional viewing
adjustment is possible with respect to an object (8)
to be observed, all without forcing the surgeon or
any co-observing person or instrumentality to
move. To this end, exit pupils and thus all viewing
windows are positionally invariant, i.e., they are
stationary and therefore can be securely related to
a microscope support (5). An objective housing
(7) in front of the microscope housing (1) is
associated with all viewing systems (2, 3, 4), and
this objective housing contains an objective of
variable back focus as well as optical components
(11, 12) for selective deflection of the observation
ray path in each of two polar-coordinate directions.
In making any one or all of the three-dimensional
viewing adjustments, only elements of relatively
low mass within the objective housing (7) need be
moved.
10. Anderson teaches a confocal microscope including an image
plane rotation assembly, which includes three scanning
elements for scanning a light beam along three orthogonal axes
(col. 1, l. 41 to col. 2, l. 33; Figure 5).

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PRINCIPLES OF LAW
On appeal to this Board, Appellant must show that the Examiner
reversibly erred in finally rejecting the claims. Cf. In re Kahn, 441 F.3d 977,
985-986 (Fed. Cir. 2006) (“‘On appeal to the Board, an applicant can
overcome a rejection by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.’”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)); see also 37 C.F.R. § 41.37(c)(1)(vii).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727,
1734 (2007).
KSR reaffirms the analytical framework set out in Graham v. John
Deere Co., 383 U.S. 1 (1966), which states that an objective obviousness
analysis includes: (1) determining the scope and content of the prior art; (2)
ascertaining the differences between the prior art and the claims at issue; and
(3) resolving the level of ordinary skill in the pertinent art. KSR, 127 S. Ct.
at 1734. Secondary considerations such as commercial success, long felt but
unsolved needs, or failure of others “might be utilized to give light to the
circumstances surrounding the origin of the subject matter sought to be
patented.” Id. (quoting Graham, 383 U.S. at 17-18).
KSR disapproved a rigid approach to obviousness (i.e., an analysis
limited to lack of teaching, suggestion, or motivation). KSR, 127 S. Ct. at
1741 (“The obviousness analysis cannot be confined by a formalistic
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conception of the words teaching, suggestion, and motivation, or by
overemphasis on the importance of published articles and the explicit
content of issued patents.”). See also DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006)
(“Our suggestion test is in actuality quite flexible and not only permits, but
requires, consideration of common knowledge and common sense”); Alza
Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1291 (Fed. Cir. 2006) (“There is
flexibility in our obviousness jurisprudence because a motivation may be
found implicitly in the prior art. We do not have a rigid test that requires an
actual teaching to combine...”).
KSR further instructs “that when a patent claims a structure already
known in the prior art that is altered by mere substitution of one element for
another known in the field, the combination must do more than yield a
predictable result.” KSR, 127 S. Ct. at 1740.

ANALYSIS
Appellant has argued both grounds of rejections together, relying on
the same contentions for all claims. Accordingly, we confine our discussion
to claim 13. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellant does not contest the Examiner’s findings that Yoshinaga
describes an imaging device that is adjustable in the X and Y directions
substantially as claimed herein (Facts 6-8). Rather, Appellant’s only
contentions against the Examiner’s rejections are that: “[c]ontrary to the
inventive imaging device, the tube reflector 6 of Yoshinaga is not
moveable”; and when Yoshinaga’s objective reflector 11 and intermediate
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reflector 13 are moved along guides 12 and 14, “the length of the optical
path from the objective 4 to the tube optic 7, 8 is changed...” (App. Br. 4).
We cannot agree with Appellant. While Yoshinaga does not state that
the microscope is adjustable in the Z direction, adjustment in the Z direction
was well known in the art (Facts 5 and 9). Indeed, Appellant admits as
much (Facts 1 and 2). Thus, a person having ordinary skill in the art would
have found it prima facie obvious to modify Yoshinaga’s imaging device
with Z-direction adjustability (e.g., by providing Z-direction adjustability to
Yoshinaga’s tube reflector 6), as is well known in the art, in order to obtain
the known advantages of such adjustability. This determination is
particularly compelling because Yoshinaga’s purpose is the same or similar
to that of Appellant (Fact 3, 4, and 8; Spec. 2-3).
Second, as to Appellant’s contentions that Yoshinaga’s half mirror 6
is not adjustable and that the length of the optical path would change when
Yoshinaga’s mirrors 11 and/or 13 are adjusted, Yoshinaga suggests that light
path length should be properly adjusted (Fact 8). Hence, a person having
ordinary skill in the art would have found it prima facie obvious to provide
adjustability to any one of Yoshinaga’s mirrors in order to adjust the light
path length. For example, when reflector 13 is moved in the Y-direction by
some length “a,” thus shortening the light path length by “a,” reflector 11
could be adjusted to lengthen the light path length by “a.”
We have considered all the arguments, including those in the Reply
Brief filed on January 14, 2008, but find them unpersuasive for reasons
given above. Cf. Hartman v. Nicholson, 483 F.3d 1311, 1315 (Fed. Cir.
2007) (all remaining arguments were considered, but none were found that
warrant reversal).
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CONCLUSION
On this record, we determine that Appellant has failed to demonstrate
any reversible error in the Examiner’s determination that a person having
ordinary skill in the art would have found the subject matter of the appealed
claims obvious over the applied prior art within the meaning of 35 U.S.C. §
103(a).

DECISION
The Examiner’s decision to reject appealed claims 13, 16, 18, and 21-
24 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

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