Ex Parte Dodt

Patent Trial and Appeal Board

Feb 7, 2017

13055755 (P.T.A.B. Feb. 7, 2017)

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.
13/055,755 02/17/2011 Hans-Ulrich Dodt BOE0037US.NP 7929
26259 7590 02/09/2017
LICATA & TYRRELL P.C.
66 E. MAIN STREET
MARLTON, NJ 08053
EXAMINER
TURK, NEIL N
ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
02/09/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PTOactions@licataandtyrrell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HANS-ULRICH DODT
Appeal 2016-000208
Application 13/055,755
Technology Center 1700
Before CATHERINE Q. TIMM, MONTE T. SQUIRE, and
MICHAEL G. McMANUS, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals the Examiner’s final rejection of claims 14—20 and
26. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.
1 In this Decision, we refer to the Final Office Action appealed from, mailed
June 4, 2014 (“Final Act.”); the Appeal Brief dated January 26, 2015 (“App.
Br.”); the Examiner’s Answer to the Appeal Brief dated July 29, 2015
(“Ans.”); and the Reply Brief (“Reply Br.”) dated September 28, 2015.
2 Appellant identifies applicant, Hans-Ulrich Dodt as the real party in
interest. App. Br. 1.
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Application 13/055,755
The Claimed Invention
Appellant’s disclosure relates to a device for the optical imaging of a
sample, having at least one light source for excitation light in order to excite
a fluorescent dye in a sample and for de-excitation light in order to de-excite
the fluorescent dye. Spec. 1; Abstract. Claim 14 is illustrative of the subject
matter on appeal and is reproduced below from the Claims Appendix to the
Appeal Brief (App. Br. 17) (key disputed limitations italicized):
14. A device for the optical imaging of a sample comprising
at least one light source arranged for transmitting excitation light
in a plane in order to excite a fluorescent dye in a sample, which
is held by a sample holder, for spontaneous emission of
fluorescent light over a limited period of time in a spatial region
and generating a total excitation plane through the sample, and
for de-excitation light in order to de-excite the fluorescent dye
again except for a residual zone that is reduced in size relative to
the spatial region, wherein light from the sample comprising
wavelengths other than those of the excitation light and of the de­
excitation light is assignable to the spontaneous emission of
fluorescent light from the residual zone of the spatial region,
wherein the de-excitation light is arranged to be transmitted in
two parallel planes which are separated by a gap for the
excitation plane, and an imaging planar detector located
substantially perpendicular to the excitation plane and
configured to image the excitation plane by detecting fluorescent
light from the total excitation plane through the sample.
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Application 13/055,755
The References
The Examiner relies on the following prior art as evidence in rejecting
the claims on appeal:
McDonald et al. US 4,188,120 Feb. 12, 1980
(hereinafter “McDonald”)
Kleinfeld et al. US 2005/0035305 Al Feb. 17,2005
(hereinafter “Kleinfeld”)
Dyba et al. US 2007/0206278 Al Sept. 6,2007
(hereinafter “Dyba”)
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claim 26 is rejected under 35 U.S.C. § 112(b) or
35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite for failing
to particularly point out and distinctly claim the subject matter which the
inventor, or for pre-AIA, the applicant regards as the invention. Ans. 2;
Final Act. 2.
2. Claims 14—20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dyba in view of McDonald. Ans. 3; Final Act. 3.
3. Claims 18 and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Dyba in view of McDonald, as applied to claims
14—20 above, and further in view of Kleinfeld. Ans. 6; Final Act. 6.
4. Claims 14—20 and 263 are rejected under 35 U.S.C. § 112(a) or
35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement. Ans. 7.
3 We have corrected the fourth ground of rejection to include claim 26,
which appears to have been inadvertently omitted from the Examiner’s
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OPINION
Rejection 1
Claim 26 indirectly depends from claim 14 and adds the limitation
“further comprising PALM to increase lateral resolution.” App. Br. 19
(Claims App’x).
The Examiner concludes that claim 26 is indefinite because it is
unclear what is meant by the term “PALM” being a further element of the
device. Ans. 2. In particular, the Examiner contends that “it does not appear
that ‘PALM’ is a physical element to the device,” and it is unclear “what
constitutes ‘PALM’ and how such is integrated” into the claimed device. Id.
at 2.
Appellant argues that the Examiner’s rejection should be reversed
because the Examiner has failed to establish that the claim is “indefinite
from the perspective of one of ordinary skill in the art.” App. Br. 8. In
particular, Appellant argues that, in light of the Specification, “the recitation
of ‘PALM’ in claim 26 would clearly convey to one of ordinary skill in the
art the structural elements to be included in the claimed device.” Id. at 8, 9.
We agree with Appellant’s argument. To satisfy 35 U.S.C. § 112,
second paragraph the question to be answered is whether the ordinarily
skilled artisan would understand what is claimed when that claim is read in
light of the specification. OrthoJdnetics, Inc. v. Safety Travel Chairs, Inc.,
806 F.2d 1565, 1576 (Fed. Cir. 1986).
Statement of Rejection provided at page 7 of Answer. We note that the
Examiner discusses and rejects claim 26 as part of the rejection at page 8 of
the Answer.
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Application 13/055,755
As described in the Specification, PALM is an imaging method
known in the art for “increasing the lateral resolution.” Spec. 6. The
Specification explains that the PALM system irradiates fluorescent particles
in short, intensive pulses of excitation light to yield separate image points
that are superimposed thereby increasing resolution compared to images
limited in resolution by diffraction. Id. at 6.
The Specification further explains that, according to the PALM
method, “different fluorescent particles are activated each time and on each
imaging operation the position of the luminous particles can be very well
approximated by back-calculation of the point spread function” and as a
result, “the resolution can be increased in comparison with an image that is
limited in its resolution by diffraction.” Spec. 6. The Specification also
explicitly refers to an article, which discusses the PALM method in further
detail. Id. at 6 (citing “Betzig E, Science 313: 1642—1645 (2006)”).4
Thus, we are persuaded that the term “PALM” is not indefinite. It is
evident from reading the Specification in context that PALM is a technique
known in the art for irradiating fluorescent particles. As such it is
reasonable to presume that the structure of the devices required to carry out
PALM would have been known to those of ordinary skill in the art. The
Examiner has not provided the evidence or technical reasoning adequate to
overcome this reasonable presumption. As such, we determine that the
claim language defines the claimed subject matter with an adequate degree
4 The full citation for the “Betzig” article cited at page 6 of the Specification
is: Eric Betzig et al., Imaging Intracellular Fluorescent Proteins at
Nanometer Resolution, Science 313: 1642—1645 (Sept. 15, 2006) (available
at http://science.sciencemag.Org/content/313/5793/1642.full).
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of particularity and distinctness such that one of ordinary skill in the art
would understand what is being claimed regarding the limitation “further
comprising PALM to increase lateral resolution” recited in claim 26.
Accordingly, we reverse the Examiner’s 35 U.S.C. § 112, second
paragraph rejection of claim 26 for indefmiteness.
Rejections 2 and 3
The Examiner finds that the combination of McDonald and Dyba
suggests a microscope satisfying all of the limitations of claim 14 and
concludes that the combination would have rendered claim 14 obvious.
Ans. 3—6. The Examiner finds that Dyba discloses the majority of the
structures required by claim 14, but that the reference “does not specifically
disclose that the imaging planar detector is located substantially
perpendicular to the excitation plane,” as recited in the claim. Id. at 5. The
Examiner, however, relies on McDonald for disclosing this missing
limitation. Id.
In particular, the Examiner finds that McDonald discloses a
radioiodine detector based on laser induced fluorescence and employs a laser
excitation source 10 for providing an excitation light in an excitation plane
to a gas sample chamber 14, and that the fluorescence emission from the gas
sample chamber is detected at a photomultiplier 22 that is located
orthogonally to the excitation plane. Ans. 5 (citing McDonald, Abstract,
cols. 3, 4, Fig. 1).
Based on the above findings, the Examiner concludes that it would
have been obvious to a person of ordinary skill in the art at the time of the
invention
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to modify Dyba to have an imaging planar detector located
substantially perpendicular to the excitation plane and
configured to detect fluorescent light from the total excitation
plane such as taught by McDonald in order to provide an
obvious, alternative optical arrangement which would have a
reasonable expectation of success in Dyba for the likewise-
desired purpose of detecting fluorescence emission arising from
a sample that is interrogated by an excitation light.
Ans. 5—6 (emphasis added).
Appellant argues that the Examiner’s rejection should be reversed
because the Examiner has failed to provide a “reasonable basis” for
concluding that it would have been obvious for one of ordinary skill in the
art to combine the teachings of the McDonald and Dyba to arrive at the
claimed invention. App. Br. 10.
We agree with Appellant’s argument in this regard. On the record
before us, we are not persuaded that the Examiner has provided an adequate
technical explanation or directed us to sufficient evidence to support the
conclusion that it would have been obvious to one of ordinary skill in the art
to combine Dyba’s and McDonald’s teachings to arrive at the claimed
invention. See KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(requiring “reasoning with some rational underpinning to support the legal
conclusion of obviousness”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006)); In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (holding
that the examiner bears the initial burden of establishing a prima facie case
of obviousness).
The Examiner does not adequately explain why one of ordinary skill
would have had reason to modify or combine the teachings of the prior art to
arrive at the claimed invention. As Appellant correctly points out (App. Br.
10), Dyba is directed to a method and microscope for high spatial resolution
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examination of samples. Dyba || 2, 8, 10. In particular, Dyba discloses a
method and a laser scanning fluorescence microscope with an optical
arrangement for examining samples that can be repeatedly converted from a
fluorescence state to a nonfluorescence state. Id. at || 2, 4. Dyba’s
microscope is specifically configured “in such a way that the optical signal
is provided in the form of a focal line with a cross-sectional profile having at
least one intensity zero point with laterally neighboring intensity maxima.”
Id. at || 9, 10.
McDonald, on the other hand, is directed to a radioiodine detector and
a method for measuring the concentration of a radioisotope in a gaseous
sample. McDonald, Abstract, Title. McDonald’s apparatus involves
measuring the concentration of an iodine radioisotope (i.e., “I2 isotope”) in a
sample of a gaseous mixture produced from a nuclear reactor and employs a
“specific lasing medium (i.e., 3He22Ne)” to excite the I2 isotope. Id. at col. 1,
11. 5—8, 15—17, col. 2,11. 42, 43, col. 4,11. 59-61. McDonald’s apparatus
requires the use of a “photomultiplier 22,” which receives a fluorescence
signal and a “photomultiplier 24,” which converts the fluorescence signal to
an electrical signal. Id. at col. 3,11. 52—56. The “detector 28” determines the
concentration of the iodine radioisotope from the electrical signals received
from the photomultipliers. Id. at col. 3,11. 64—66.
The Examiner does not adequately address the differences between
Dyba’s high spatial resolution examination microscope’s configuration and
the arrangement of McDonald’s radioiodine detection apparatus or direct us
to any teaching or suggestion in the prior art regarding the technical
feasibility and capability of modifying Dyba’s microscope to include the
radioiodine detection apparatus taught by McDonald. For example, the
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Examiner does not provide any meaningful discussion regarding the optical
arrangement and specific configuration Dyba’s microscope requires (see
Dyba 9, 10) and how the arrangement and inclusion of McDonald’s
detector and photomultipliers would affect Dyba’s optical arrangement and
configuration, including the microscope’s capability to perform high spatial
resolution examination of samples (id. at || 2, 8, 10).
The Examiner also does not identify sufficient evidence in the record
to support or adequately explain why one of ordinary skill would have had a
reasonable expectation of success in modifying Dyba’s microscope based on
McDonald’s teachings. The Examiner’s assertion that McDonald provides
“an obvious, alternative optical arrangement which would have a reasonable
expectation of success in Dyba” (Ans. 5, 6) is conclusory and, without more,
insufficient to sustain the Examiner’s obviousness conclusion and satisfy the
Examiner’s evidentiary burden in this regard. See In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006) (holding “rejections on obviousness grounds cannot be
sustained by mere conclusory statements”); Oetiker, 977 F.2d at 1445.
Accordingly, we reverse the Examiner’s rejection of claim 14 as
obvious over the combination of Dyba and McDonald. Because claims 15—
20 depend from claim 14, we also reverse the Examiner’s rejections of these
claims.
Because the foregoing deficiencies in the Examiner’s analysis and
conclusion regarding the combination of Dyba and McDonald are not
remedied by the Examiner’s findings regarding the additional Kleinfeld
reference or combination of Dyba, McDonald, and Kleinfeld cited in support
of the third ground of rejection, we also reverse the Examiner’s Rejection 3.
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Rejection 4
Claims 14—20 and 26 stand rejected for failing to comply with the
written description requirement. Ans. 7 (“NEW GROUNDS OF
REJECTION”).
For an applicant to comply with the 35 U.S.C. § 112, first paragraph,
written description requirement, the applicant’s specification must “convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention.” Carnegie Mellon
Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008)
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir.
1991)).
The Examiner finds that adequate written descriptive support is not
provided in the Specification to describe “what is meant by the light source
providing both excitation light and de-excitation light so as to ‘de-excite’ the
fluorescent dye again except for a residual zone” and “the disclosure does
not adequately describe how the excitation light is introduced substantially
only in the gap between the two de-excitation light planes.” Ans. 7 (citing
111 and 12 of Appellant’s pre-grant publication, US 2011/0186754); see
also Spec. 1, 4, 5.
We disagree with the Examiner’s determination (Ans. 7) in this
regard. Based on our review of the Specification and the reasons provided
by Appellant at pages 2 through 4 of the Reply Brief, we find that the
Examiner reversibly erred in rejecting the claims for lack of written
description based on the claimed “light source.”
Rather, we are persuaded that the Specification, as filed, provides
sufficient written descriptive support such that the skilled artisan would have
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understood that: (1) the light source provides both excitation light and de­
excitation light as claimed, including that the de-excitation light is arranged
to be transmitted in two parallel planes which are separated by a gap for the
excitation plane (see Spec. 7, 8, Fig. 1; Reply Br. 2-4); and (2) the inventor
was, indeed, in possession of the claimed light source. Carnegie Mellon,
541 F.3d at 1122.
The Examiner further finds that the written description is inadequate
“in describing PALM (claim 26) and its inclusion into the apparatus.” Ans.
8. We disagree with the Examiner’s rejection of claim 26 in this regard for
largely the same reasons previously discussed above in reversing the
Examiner’s Rejection 1 and the reasons provided by Appellant at pages 4
and 5 of the Reply Brief.
In particular, considering the disclosures regarding PALM provided at
page 6 of the Specification, we are persuaded that the as-filed Specification
provides sufficient written descriptive support for PALM and the skilled
artisan would have understood that: (1) PALM is a technique known in the
art for irradiating fluorescent particles and PALM’s inclusion in the claimed
device (Spec. 6; Reply Br. 4, 5); and (2) the inventor was in possession of a
device which included PALM. Carnegie Mellon, 541 F.3d at 1122.
Lastly, the Examiner finds that the written description is lacking “with
respect to the claimed ‘imaging planar detector’ and its imaging
functionality.” Ans. 8; see also Spec. 8 (“photodetector 9”); Fig. 1.
Appellant argues that “the imaging planar detector is described in the
last paragraph at page 3 of the specification” and “this disclosure makes it
clear to one of ordinary skill in the art that photodetector 9 is an imaging
planar detector as claimed.” Reply Br. 4.
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On the record before us, we find that a preponderance of the evidence
supports Appellant’s argument in this regard and are persuaded that the
“imaging planar detector” recitation is adequately supported by the
Specification.
The Specification discloses that
The detection device ... is located substantially perpendicular
to the excitation plane, so that in the case of imaging the sample
onto a planar detector the total excitation plane that has been
rendered thin by de-excitation is detected.
Spec. 3. The Specification also discloses that fluorescent light is transmitted
from the sample and the light spectrum is subsequently filtered, so that only
the fluorescent light reaches the photodetector 9. Id. at 8. Additionally,
Figure 1 of the Specification depicts item “9,” which corresponds to the
disclosure regarding the “detection device” and “photodetector 9” described,
respectively, at pages 3 and 8 of the Specification.
In light of the foregoing disclosures, we are persuaded that the
Specification, as filed, provides sufficient written descriptive support such
that the skilled artisan would have understood: (1) the function of the
claimed imaging planar detector; (2) that “photodetector 9” disclosed in the
Specification corresponds to the claimed imaging planar detector (Spec. 3, 8,
Fig. 1); and (3) that the inventor was in possession of the imaging planar
detector as claimed. Carnegie Mellon, 541 F.3d at 1122.
Accordingly, we reverse the Examiner’s rejections of claims 14—20
and 26 for failing to comply with the written description requirement.
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DECISION/ORDER
The Examiner’s rejection of claim 26 under 35 U.S.C. § 112(b) or
35 U.S.C. § 112 (pre-AIA), second paragraph, for indefmiteness is reversed.
The Examiner’s rejection of claims 14—20 under 35 U.S.C. § 103(a) as
being unpatentable over Dyba in view of McDonald is reversed.
The Examiner’s rejection of claims 18 and 19 under
35 U.S.C. § 103(a) as being unpatentable over Dyba in view of McDonald,
and further in view of Kleinfeld is reversed.
The Examiner’s rejection of claims 14—20 and 26 under
35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, for failing
to comply with the written description requirement is reversed.
It is ordered that the Examiner’s decision is REVERSED.
REVERSED
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