Ex Parte Feng

Patent Trial and Appeal Board

Jun 30, 2014

12822325 (P.T.A.B. Jun. 30, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/822,325 06/24/2010 Wenyi Feng IP-0210A-US /
ILUM:0016-1
5636
83443 7590 06/30/2014
Illumina, Inc.
Fletcher Yoder, P.C.
P.O. Box 692289
Houston, TX 77269-2289
EXAMINER
PAJOOHI GOMEZ, TARA S
ART UNIT PAPER NUMBER
2886
MAIL DATE DELIVERY MODE
06/30/2014 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 PATENT AND TRIAL APPEAL BOARD
____________

Ex parte WENYI FENG
____________

Appeal 2012-005382
Application 12/822,325
Technology Center 2800
____________

Before JEFFREY T. SMITH, ROBERT E. NAPPI, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-27. We have jurisdiction under 35 U.S.C. § 6.
Appellant’s invention is to systems and methods for facilitating the
focusing of an imaging device, such as a confocal microscope. (Spec. ¶
0002). Claims 1 and 17 are representative of the appealed subject matter
and are reproduced below:

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1. An imaging system, comprising:

a radiation source for illuminating at least a portion of a test sample
positioned on a sample stage;

a confocal scanning arrangement adapted to scan a line of the test
sample with radiation from the radiation source at a specific time, the
confocal scanning arrangement including an objective lens for
focusing the radiation at a focal plane;

a detector for detection of a reflectance intensity of the radiation; and

a z-axis focusing arrangement comprising:

a memory device for storing two or more baseline profiles, each of the
baseline intensity profiles having a corresponding correction; and

a processor comprising instructions for calculating a correction
required for a scanline of the test sample by associating a measured
profile for the scanline of the test sample with one of the baseline
profiles.

17. A method of facilitating focusing of an optical scanner,
comprising:

a) providing a library of reference profiles, wherein each reference
profile includes a z-axis variation for at least two points in a scanline;
b) obtaining a dynamic profile including variation in an optical
property for at least two points of a scanline of the test sample
obtained at a specific time;

c) comparing the dynamic profile to reference profiles in the library;

d) identifying a best fit profile for the dynamic profile from the library
of reference profiles; and

e) making a correction based on the best fit profile.

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Appellant’s Appeal Brief page 4 requests review of the following
rejections from the Examiner’s Final Office action:
I. Claims 1-10, 13-15, and 26 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Silvermintz et al. (US
2003/0151742 A1, pub. Aug. 14, 2003) (Silvermintz).
II. Claims 16 is rejected under 35 U.S.C. § 103(a) as obvious over
Silvermintz.
III. Claims 17-25 and 27 are rejected under 35 U.S.C. § 103(a) as
obvious over Silvermintz in view of Friend et al. (US 6,324,479
B1, issued Nov. 27, 2001) (Friend).
OPINION
Claims 1- 2, 13-16 and 261
The dispositive issue for these rejections is: Did the Examiner err in
determining that Silvermintz discloses a processor comprising instructions
for calculating a correction required for a scanline of the test sample by
associating a measured profile for the scanline of the test sample with one of
the baseline profiles as required by the subject matter of independent
claim 1. We reverse for the reasons presented by Appellant. (App. Br. 10;
Reply Br. 5).
According to the Examiner:
Silvermintz discloses (para. 29, lines 26-29) a data processing
system (264) to process images of the test sample and to store data
from the processed images. Silvermintz discloses (para. 54, lines 1-
14) profiling the sample by repeating the measurement of the
scanhead. Silvermintz further discloses (para. 55, lines 4-6) the

1 We limit our discussion to independent claim 1.
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sample is rescanned for a specified number of iteration to attain a
desired statistical confidence level. Since Silvermintz is trying to
attain a desired statistical confidence level in the measurement of the
sample, Silvermintz is inherently comparing scanned images to the
images stored in the processor to attain the desired result. Therefore
meets the claiming limitations of associated the measured profile
(scanned data) with one of the baseline profiles (data stored in the
processor).
(Ans. 12).

We agree with Appellant that Silvermintz does not disclose “a
processor comprising instructions for calculating a correction required for a
scanline of the test sample by associating a measured profile for the scanline
of the test sample with one of the baseline profiles, as required by
independent claim 1. Appellant correctly argues:
The mere fact Silvermintz discloses repeatedly sampling and
repeatedly checking profiles does not mean that a baseline profile is
associated with a measured profile at all, much less for a scanline.
More specifically, merely adjusting z-axis translations of a sample
stage based on repeatedly profiling the specimen does not mean that
one of two or more baseline intensity profiles are associated with a
measured profile at all, much less for a scanline.
(App. Br. 11-12).

Claims 17-25
Appellant argues Silvermintz does not disclose “obtaining a dynamic
profile including variation in an optical property for at least two points of a
scanline of the test sample obtained at a specific time,” as recited by
independent claim 17 because Silvermintz only discloses a confocal
macroscope that focuses a collimated excitation beam to a focal point in an
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object plane in a specimen at any specific time. Appellant also argues,
Friend fails to cure this deficiency of Silvermintz. (App. Br. 16).
Appellant’s arguments are not persuasive of reversible error in the
appealed rejection for the reasons set forth by the Examiner. (Ans. 13). The
Specification ¶ 0030, describes a “dynamic profile” as a profile of a sample
obtained at a specific time. The Specification ¶ 0029, describes a “profile”
as a representation of one or more characteristics of the sample or a portion
thereof. The Specification ¶ 0066, discloses “Each scan line may
correspond to the area of a sample that is detected when excitation radiation
from a radiation source, such as a laser, is directed across one dimension of
the test sample 120.”
The Examiner correctly determined that Silvermintz describes a scan
head that gathers information for creating a profile at multiple locations of a
specimen. Appellant’s arguments regarding the “specific time” at which the
data for the dynamic profile is collected are unpersuasive. It appears that
Appellant is requiring the data for the dynamic profile to be collected at the
“same time.” However, the disputed claim language only requires the
collection of the profile information and a specific time which may or may
not be simultaneous.
Accordingly, the rejection of claims 17-25 over Silvermintz in view of
Friend is affirmed.
Claim 27
Appellant has provided separate arguments addressing the limitations
of claim 27. (App. Br. 17-18). The Examiner has failed to provide a
substantive response to Appellant’s arguments. Accordingly, we reverse the
rejection of claim 27.
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ORDER
The rejection of claims 1-15 and 26 under 35 U.S.C. § 102(b) as
anticipated by Silvermintz is reversed.
The rejection of claim 16 under 35 U.S.C. § 103(a) as obvious over
Silvermintz is reversed.
The rejection of claims 17-25 under 35 U.S.C. § 103(a) as obvious
over Silvermintz in view of Friend is affirmed.
The rejection of claim 27 under 35 U.S.C. § 103(a) as obvious over
Silvermintz in view of Friend is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED-IN PART

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