09978957 (B.P.A.I. Jun. 12, 2006)

Ex Parte Eastman et al

Board of Patent Appeals and InterferencesJun 12, 2006

09978957 (B.P.A.I. Jun. 12, 2006)

This appeal is from a rejection of claims 1-7, 20-26 and 29-36. The rejection of claims 21 and 22 is withdrawn in the examiner’s answer (page 2). Claims 8-19 stand withdrawn from consideration by the examiner, and claims 21, 22, 27 and 28 stand objected to as dependent from a rejected claim but allowable if rewritten in independent form. 1 The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _______________ Ex parte JAY M. EASTMAN, MILIND RAJADHYAKSHA and JAMES M. ZAVISLAN ______________ Appeal No. 2006-1025 Application 09/978,957 _______________ ON BRIEF _______________ Before OWENS, CRAWFORD and LEVY, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL 2 THE INVENTION The appellants claim a system and method for enhancing images in confocal microscopy. Claim 1, which claims the system, is illustrative: 1. A system for providing enhanced images in confocal microscopy which is characterized by utilizing cross polarized light in the illumination of tissue and in the detection of light from which the images are formed, respectively, and wherein said tissue has an image enhancing agent containing an effective amount of an alpha hydroxy acid. THE REFERENCES Zavislan et al. (Zavislan) 5,788,639 Aug. 4, 1998 Zahniser et al. (Zahniser) 6,348,325 Feb. 19, 2002 (filed Oct. 29, 1999) THE REJECTIONS Claims 1-7, 20, 23-26 and 29-36 stand rejected under 35 U.S.C. § 103 as being unpatentable over Zavislan in view of Zahniser. OPINION We reverse the aforementioned rejection. Zavislan discloses “a handheld confocal imaging system for in vivo clinical examinations of dermal and subdermal tissues using non-ionizing radiation, and particularly laser radiation which is of a wavelength capable of penetrating into the skin” (col. 1, lines 9- 13). A laser spot is scanned laterally across the skin at a depth varied from the surface of the stratum corneum to a few millimeters below the surface of the stratum corneum (col. 4, lines 1-9 and 23- Appeal No. 2006-1025 Application 09/978,957 3 28). Light scattered from the tissue is collected and converted into an electrical signal (col. 4, lines 16-21). Zahniser discloses a stain, system and method for imaging a cytological sample including nuclear and cytoplasmic material (col. 2, line 66 - col. 3, line 1; col. 5, lines 21-23). “The stain used produces a high contrast between the nuclear material and the cytoplasmic material, such that the cytoplasmic material is relatively transparent, or invisible, to an imaging system viewing the cell, but visible to an observer” (col. 5, lines 56-60). The stain’s pH can be adjusted with an acid that can be almost any acid traditionally used to adjust the pH of a solution (col. 3, lines 9- 11). One of the disclosed acids is citric acid (col. 3, lines 11- 13), which is one of the appellants’ alpha hydroxy acids (claim 2). “The system includes an optical instrument and first and second light sources, the first light source having a first wavelength for verifying that a specific stain was used on the cytological sample, wherein the specific stain will permit transmission of light at a wavelength of about 720 nm. The second light source has a second wavelength for illuminating the cytological sample for imaging, wherein the stained nucleus of the sample will permit transmission of light at a wavelength of about 570 nm and the cytoplasm will be essentially invisible to the system” (col. 5, lines 23-33). “The Appeal No. 2006-1025 Application 09/978,957 4 method includes the steps of staining the nuclear material of the cell, staining the cytoplasmic material of the cell, illuminating the cell with a first light source has [sic, having] a first wavelength for verifying that a specific stain was used, and illuminating the cell with a second light source having a second wavelength for imaging the nuclear material” (col. 5, lines 41-48). Each of the appellants’ independent claims (1, 8 and 19) requires an alpha hydroxy acid for enhancing an image. The examiner argues (answer, pages 6-7): Zahniser was relied upon for teaching that citric acid, which is an alpha hydroxy acid (e.g. note applicant’s specification, p. 2), may be used to assist in binding light-absorbent chemicals to cell features. This, according to Zahniser, results in high contrast between different parts of a cell in an observed image (e.g. see Zahniser abstract, col. 2 line 39, etc.). If incident light is absorbed by a particular cell feature, this feature will contrast with other features which transmit incident light (e.g. in a transmitted illumination system). Likewise, if incident light is absorbed by a particular cell feature, this feature will contrast with other features which reflect incident light (e.g. in a reflected illumination system). Accordingly, Zahniser’s binding solution would find application in both a transmitted illumination system and a reflected illumination system such as Zavislan’s. * * * Zahniser teaches that his binding solution, which contains citric acid, results in high contrast between various features in a cell (col. 2 line 39, etc.). This is the motivation for the combination of references relied upon by the examiner. Appeal No. 2006-1025 Application 09/978,957 5 In order for a prima facie case of obviousness to be established, the teachings from the prior art itself must appear to have suggested the claimed subject matter to one of ordinary skill in the art. See In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976). The mere fact that the prior art could be modified as proposed by the examiner is not sufficient to establish a prima facie case of obviousness. See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992). The examiner has not established that the applied prior art itself would have fairly suggested, to one of ordinary skill in the art, using Zahniser’s stain, which is for enhancing the contrast between the nuclear and cytoplasmic material in cytological samples of the type placed on a slide in a Pap smear test (col. 1, line 30 - col. 2, line 18), in Zavislan’s system wherein dermal tissue is scanned at and below the skin surface with a laser. The examiner’s argument that Zahniser’s stain would find application in the techniques of both Zahniser and Zavislan (answer, page 7) does not establish that the references themselves would have fairly suggested, to one of ordinary skill in the art, using Zahniser’s stain in Zavislan’s system. Appeal No. 2006-1025 Application 09/978,957 6 Hence, the record indicates that the motivation relied upon by the examiner for using Zahniser’s stain in Zavislan’s system comes from the description of the appellants’ invention in their specification rather than coming from the applied prior art and that, therefore, the examiner used impermissible hindsight when rejecting the claims. See W.L. Gore & Associates v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984); In re Rothermel, 276 F.2d 393, 396, 125 USPQ 328, 331 (CCPA 1960). Accordingly, we reverse the examiner’s rejection. DECISION The rejection of claims 1-7, 20, 23-26 and 29-36 under 35 U.S.C. § 103 over Zavislan in view of Zahniser is reversed. Appeal No. 2006-1025 Application 09/978,957 7 REVERSED TERRY J. OWENS ) Administrative Patent Judge ) ) ) ) MURRIEL E. CRAWFORD ) BOARD OF PATENT Administrative Patent Judge ) APPEALS ) AND ) INTERFERENCES ) STUART S. LEVY ) Administrative Patent Judge ) TJO/lg Appeal No. 2006-1025 Application 09/978,957 8 Kenneth J. LuKacher South Winton Court 3136 Winton Road South Rochester, NY 14623