Ex Parte Kenny et al

Patent Trial and Appeal Board

Mar 5, 2018

13846490 (P.T.A.B. Mar. 5, 2018)

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.
13/846,490 03/18/2013 Kevin Bernard Kenny 264987-1 1010
6147 7590 03/07/2018
GENERAL ELECTRIC COMPANY
GPO/GLOBAL RESEARCH
901 Main Avenue
3rd Floor
Norwalk, CT 06851
EXAMINER
WALSH, KATHLEEN M.
ART UNIT PAPER NUMBER
2482
NOTIFICATION DATE DELIVERY MODE
03/07/2018 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):
haeckl@ge.com
gpo.mail@ge.com
Lori.e.rooney @ ge.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN BERNARD KENNY and ALEX DAVID CORWIN
Appeal 2017-003911
Application 13/846,490
Technology Center 2400
Before JOHN A. EVANS, ALEX S. YAP, and JASON M. REPKO,
Administrative Patent Judges.
REPKO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—20, which constitute all the claims pending in this
application. App. Br. 2.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify the real party in interest as General Electric Company.
App. Br. 2.
2 Throughout this opinion, we refer to the Final Rejection (“Final Act.”)
mailed September 21, 2015, the Appeal Brief (“App. Br.”) filed April 29,
2016, the Examiner’s Answer (“Ans.”) mailed November 8, 2016, and the
Reply Brief (“Reply Br.”) filed January 6, 2017.
Appeal 2017-003911
Application 13/846,490
THE INVENTION
Appellants’ invention registers slide images to create a composite
image and to allow simultaneous display of multiple biomarkers of the same
cells. Spec. Tflf 17, 21. The system acquires multiples sets of images of a
sample on a slide. Id. 117. The system generates a stitched or composite
image from the image set. Id. 120. Over multiple rounds of imaging the
slide, the sample can be stained with a different agent and returned to the
stage for re-imaging. Id. 118. Appellants’ process produces set of pixels in
a common datum plane that can be subtracted for autofluorescence removal,
combined in a false-color image, superposed for a reviewer to compare, or
analyzed in other ways. Id.
Claim 9 is reproduced below with our emphasis:
9. An image analysis system, comprising:
a memory storing one or more routines; and
a processing component configured to execute the one or
more routines stored in the memory, wherein the one or more
routines, when executed by the processing component, cause acts
to be performed comprising:
performing an alignment operation between a limited set
of images acquired of a sample and a previously acquired full set
of images of the sample wherein the limited set of images
comprise fewer images than the full set of images, wherein the
alignment operation generates at least a rotation relating the
limited set of images to corresponding images of the full set of
images;
rotating a subsequently acquired full set of images by the
rotation; and
translating the rotated images of the subsequently acquired
full set of images to register the rotated images with
corresponding images of the previously acquired full set of
images.
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Appeal 2017-003911
Application 13/846,490
THE REJECTIONS
The Examiner relies on the following as evidence:
Grindstaff et al.
Micheva et al.
Can et al.
Hardy et al.
Henderson et al.
US 2006/0028549 Al
US 2008/0152207 Al
US 2009/0245610 Al
US 7,853,098 B2
US 2011/0249910 Al
Feb. 9, 2006
June 26, 2008
Oct. 1, 2009
Dec. 14, 2010
Oct. 13,2011
Claims 9, 10, and 12—14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Henderson, Grindstaff, and Can. Final Act. 4—8; Ans. 2—
6.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Henderson, Grindstaff, and Hardy. Final Act. 8—9; Ans. 6—7.
Claims 15—18 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Henderson, Grindstaff, and Micheva. Final Act. 9-13; Ans. 7—11.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Henderson, Grindstaff, Micheva, and Hardy. Final Act. 13—14;
Ans. 11-12.
Claims 1—6, 8, and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Henderson, Grindstaff, Micheva, and Can. Final Act. 14—
18; Ans. 12-16.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Henderson, Grindstaff, Micheva, Can, and Hardy. Final Act. 18—19;
Ans. 16—17.
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Appeal 2017-003911
Application 13/846,490
THE OBVIOUSNESS REJECTION OVER HENDERSON,
GRINDSTAFF, AND CAN
The Examiner finds that Henderson teaches every limitation recited in
independent claim 9 except for the recited image alignment and registration
operations. Ans. 2—5. In concluding that claim 9 would have been obvious,
the Examiner cites Grindstaff and Can as teaching these features. Id. at 3—5.
In particular, the Examiner finds that Grindstaff translates and rotates the
images to register the images with previously acquired images. Id. at 3^4.
According to the Examiner, it would have been obvious to use Grindstaff s
alignment operation in Henderson to significantly enhance image
processing, facilitate image alignment, compensate for misalignment, and
provide accurate observation techniques. Id. at 4 (citing Henderson || 2—3,
5; Grindstaff 2, 4, 17).
Appellants argue that the combination of references does not teach
generating a rotation from an alignment of two different images sets.
App. Br. 12. According to Appellants, Henderson does re-acquire a set of
images to improve quality, but there is no benefit to comparing the re­
acquired images to the previous sets. Id. at 10. We agree.
In particular, claim 9 requires, in part, “the alignment operation
generates at least a rotation relating the limited set of images to
corresponding images of the full set of images” and “rotating a subsequently
acquired full set of images by the rotation” (emphasis added). That is, there
are three sets of images recited in claim 9: (1) “the limited set of images,”
(2) “a previously acquired full set of images,” and (3) “a subsequently
acquired full set of images.” The claimed alignment relates (1) the limited
set of images to (2) the full set of previously acquired images to generate a
rotation for (3) the subsequently acquired full set of images.
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Appeal 2017-003911
Application 13/846,490
The Examiner relies on Henderson for teaching acquiring two full sets
of images. Ans. 3. Henderson assesses the quality of a digital image that is
a composite of tiles of image segments. Henderson, Abstract. For example,
Henderson is especially concerned with focus accuracy for a microscopic
pathology sample. Id. Henderson’s system repeatedly images a slide over
adjacent areas and merges the images to form a composite image. Id. 1 84,
cited in Ans. 7. Instead of compositing images segments that have different
quality, Henderson’s system can re-acquire the images of the worst quality.
Henderson || 58, 135, Fig. 9. For example, Henderson may re-image the
whole slide. Id. 1105. Therefore, in this example, Henderson does acquire
at least two full sets of images—a poor quality set and a re-acquired set. See
id.
The Examiner has not shown that Henderson uses a rotation generated
from the poor quality images for the re-acquired images. Ans. 3 (citing
Henderson | 58, Fig. 9); see also Ans. 22 (discussing Henderson’s re­
imaging). Nor has the Examiner shown it would have been obvious to
modify Henderson with Grindstaff to do so. Accord App. Br. at 9—10.
To be sure, Henderson does align images. See, e.g., Henderson 125.
But Henderson aligns adjacent images of the same set. Id. That is, adjacent
images in the set overlap. Id. When creating the composite image,
Henderson knits or stiches the adjacent images together to merge over the
adjacent-tile transitions. Id. Notably, Henderson counsels against using
images of differing quality to create a composite image. Id. 1135.
Even assuming that Grindstaff s rotation could be used for creating
Henderson’s composite image from one image set (e.g., the re-imaged set),
we agree that the Examiner has not shown how the combination uses two
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Appeal 2017-003911
Application 13/846,490
full images sets in the manner claimed. See App. Br. 12. Furthermore, we
agree that the Examiner has not adequately explained why aligning
Henderson’s two full image sets would significantly enhance image
processing, facilitate image alignment, compensate for misalignment, and
provide accurate observation techniques. See Id. at 9-10. Rather, the cited
teachings merely show that Henderson re-images the slide to obtain a better
quality set and aligns adjacent images within that set. Henderson H 58, 135,
Figs. 2, 9, cited in Ans. 3.
Because we find this issue dispositive, we need not reach Appellants’
additional arguments.
On this record, we do not sustain the Examiner’s rejection of
independent claim 9 and dependent claims 10 and 12—14, for similar
reasons.
THE REMAINING OBVIOUSNESS REJECTIONS
The Examiner rejects claims 1—8, 11, and 15—20 as being obvious
over Henderson and Grindstaff, and various combinations of Hardy,
Micheva, and Can. Final Act. 8—19. Independent claims 1 and 15 recite a
step similar to the rotating step recited in claim 9. In particular, claims 1 and
15 require registering a first and second set of images using a rotation. In
addressing this limitation in claims 1 and 15, the Examiner provides a
similar rationale to the one presented in the rejection of claim 9. Compare
Final Act. 5 (rejecting claim 9) with Final Act. 10 (rejecting claim 15),
Final Act. 15 (rejecting claim 1). Appellants present arguments for the
patentability of the claims 1 and 15 that are similar to those presented for
claim 9. See App. Br. 13, 15. Claims 2—8, 11, and 16—20 depend from one
of independent claims 1, 9, or 15.
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Appeal 2017-003911
Application 13/846,490
Because the additional references are not relied upon to teach the
limitation missing from Henderson and Grindstaff, the additional references
do not cure the deficiency discussed above. Final Act. 8—19. Accordingly,
we do not sustain the Examiner’s rejections of claims 1—8, 11, and 15—20 for
the same reasons discussed above in connection with claim 9.
DECISION
We reverse the Examiner’s rejection of claims 1—20.
REVERSED
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