Ex Parte Lemasters

Board of Patent Appeals and Interferences

Sep 19, 2002

09065997 (B.P.A.I. Sep. 19, 2002)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOHN J. LEMASTERS
__________
Appeal No. 2001-2201
Application 09/065,997
___________
ON BRIEF
___________
Before KRASS, FLEMING, and RUGGIERO, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1, 4 through 6, 27 through 28 and 31.
The invention relates to a confocal microscope. The
microscope includes a light detector, detecting pinhole and
opaque circular baffles adjacent the detecting pinhole and placed
in a location selected from in front of, behind or both in front
of and behind the detecting pinhole. See Appellant’s
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Application .09/065, 997
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specification on page 3, line 46 through page 4, line 9 and
associated figures 2B-D. The diameter of the baffle is
adjustable, and the position of the baffle relative to the
detecting pinhole is adjustable in all dimensions. See
Appellant’s specification on page 4, lines 19 through 23 and
associated figures 2B-D.
Independent claims 1, 4 through 6, and 27 present in the
application are reproduced as follows:
1. A confocal microscope comprising a detecting pinhole and
an opaque circular baffle placed in front of said detecting
pinhole to block out-of-focus light and improve z-axis
resolution.
4. A confocal microscope comprising a detecting pinhole and
opaque circular baffles placed in a location selected from the
group consisting of (a) in from of, (b) behind, and (c) both in
front of and behind said detecting pinhole to block out-of-focus
light and improve z-axis resolution, wherein the diameter of said
baffles is adjustable.
5. A confocal microscope comprising a detecting pinhole and
opaque circular baffles placed in a location selected from the
group consisting of (a) in front of, (b) behind, and (c) both in
front and behind said detecting pinhole to block out-of-focus
light and improve z-axis resolution, wherein the position of said
baffles relative to the pinhole is adjustable in all dimensions
for alignment.
6. A confocal microscope comprising a detecting pinhole and
opaque circular baffles placed in a location selected from the
group consisting of (a) in front of, (b) behind, and (c) both in
front and behind said detecting pinhole to block out-of-focus
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Application .09/065, 997
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light and improve z-axis resolution, wherein the diameter of said
baffles is adjustable and wherein the position of said baffles
relative to the pinhole is adjustable in all dimensions for
alignment.
27. In a confocal microscope having a detection aperture
and a light detector, the improvement comprising an opaque baffle
positioned adjacent the detection aperture to block out-of-focus
light and improve z-axis resolution.
References
The references relied on by the Examiner are as follows:
Admitted prior art (Figure 1 of Appellant’s specification)
Takahashi 4,902,115 Feb. 20, 1990
Kino et al. (Kino) 4,927,254 May 22, 1990
Tanaami et al. (Tanaami) 5,579,157 Nov. 26, 1996
Rejections at Issue
Claims 1, 5, 27, 28 and 31 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Appellant’s admitted prior art
in view of Kino or Tanaami.
Claims 4 and 6 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Appellant’s admitted prior art in view of Kino
and Takahashi or Tanaami and Takahashi.
Rather than repeat the arguments of Appellant or the
Appeal No. 2001-2201
Application .09/065, 997
1Appellant filed an appeal brief on February 2, 2001, Paper
No. 16. In response to the Examiner’s Answer, Paper No. 17,
mailed April 19, 2001, the Appellants filed a Reply Brief on June
21, 2001, Paper No. 18. The Examiner mailed an office
communication on December 7, 2001, Paper No. 20, stating that the
reply brief has been entered and considered.
4
Examiner, we make reference to the Briefs1 and the Answer for the
respective details thereof.
OPINION
With full consideration being given to the subject matter on
appeal, the Examiner’s rejections and the arguments of Appellant
and Examiner, for the reasons stated infra, we reverse the
Examiner’s rejections of claim 1, 4 and 6 under 35 U.S.C. § 103
and affirm the rejection of claims 5, 27, 28 and 31 under
35 U.S.C. § 103.
As pointed out by our reviewing court, we must first
determine the scope of the claim. “[T]he name of the game is the
claim.” In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523,
1529 (Fed. Cir. 1998). In addition, claims are to be interpreted
as the terms reasonably allow. In re Zletz, 893 F.2d 319, 321,
13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
Independent claim 1 recites “a confocal microscope
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comprising . . . an opaque circular baffle placed in front of
said detecting pinhole[.]” Taking a reasonably broad
interpretation, claim 1 requires the baffle to placed in the
front of the detecting pinhole. We also note that independent
claims 4 through 6 and 27 have a different scope from claim 1.
These claims will be addressed separately.
Using the above interpretation, we next review the rejection
of claim 1 under 35 U.S.C. § 103 as being obvious over
Appellant’s admitted prior art and Kino or Tanaami. The Examiner
states that admitted prior art discloses all the recited
elements, except for an opaque baffle positioned in front of the
detection pinhole. See Examiner’s Answer, Page 3, line 17
through page 4, line 1. To provide a motivation for having the
opaque baffle in front of the detection pinhole of Appellant’s
admitted prior art, the Examiner states that both Kino and
Tanaami teach placing opaque baffles in front of the detecting
means in order to block unwanted stray light from reaching the
detector and to improve resolution. See Examiner’s Answer, page
4, lines 1 through 6.
Appellant argues that neither Kino nor Tanaami teach placing
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the baffle in front of the detecting pinhole, but rather both of
the references disclose the baffle located behind the pinhole.
See Appeal Brief, page 4, lines 12 through 16. Additionally,
Appellant asserts that there is no motivation or suggestion to
move the baffles from the position taught in Kino and Tanaami to
the position claimed by Appellant since Kino and Tanaami are
directed to a different problem that results in the baffle on the
wrong side of the pinhole. See Appeal Brief, page 5, line 10
through 12 and 16 through 20.
In rejecting claims under 35 U.S.C. §103, the Examiner bears
the initial burden of establishing a prima facie case of
obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ 1443,
1444 (Fed Cir. 1992). See also In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed Cir. 1984). The Examiner can
satisfy this burden by showing that some objective teaching in
the prior art or knowledge generally available to one of ordinary
skill in the art suggests the claimed subject matter. In re
Fine, 87 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
Only if this initial burden is met does the burden of coming
forward with evidence or argument shift to the Appellant.
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Oetiker, 977 F.2d at 1445, 24 USPQ at 1444. See also Piasecki,
745 F.2d at 1472, 223 USPQ at 788.
An obviousness analysis commences with a review and
consideration of all the pertinent evidence and arguments. “In
reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all the evidence and arguments.” In re
Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. “[T]he Board must
not only assure that the requisite findings are made, based on
evidence of record, but must also explain the reasoning by which
the findings are deemed to support the agency’s conclusion.” In
re Lee, 277 F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir.
2002). With these principles in mind, we commence review of the
pertinent evidence and arguments of Appellant and Examiner.
Upon review, we find that neither Kino nor Tanaami teach the
limitation of the “baffle placed in front of the said detecting
pinhole” as recited in claim 1. “It is axiomatic that, in
proceedings before the PTO, claims in an application are to be
given their broadest reasonable interpretation consistent with
the specification . . . and that claim language should be read in
light of the specification as it would be interpreted by one of
ordinary skill in the art.” In re Sneed, 710 F.2d 1544, 1548,
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Application .09/065, 997
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218 USPQ 385, 388 (Fed. Cir. 1983). When reading the limitation,
“in front of said detecting pinhole” in light of Appellant’s
specification, Page 3, lines 46 through 49 and Figure 2B of
Appellant’s specification describe the position of the baffle “in
front of said detecting pinhole” as being located between the
specimen and the pinhole. We thus find the phrase, “in front of
said detecting pinhole” consistent with and in light of the
specification, would be interpreted by one of ordinary skill in
the art as being located between the specimen and the detecting
pinhole.
On the other hand as Appellant states on page 4, lines 15
through 16 and page 5, lines 1 through 2 of the Appeal Brief, the
baffles of Kino and Tanaami are located behind the pinhole or
between the detector and the detecting pinhole as shown in Figure
2C of Appellant’s specification. Tanaami shows in Figure 3 the
baffle located between the detector (camera) and pinhole (21),
and Kino shows in Figure 1 the baffle (7a) located between the
detector (eyepiece 7) and the pinhole (3). As such, we find that
neither reference teaches the limitation of being located in
front of the detecting pinhole as required in claim 1.
We next turn to the rejection of independent claim 5 also
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rejected under 35 U.S.C. § 103 as being unpatentable over
Appellant’s admitted prior art in view of Kino and Tanaami.
Claim 5 has a different scope from claim 1 and recites that the
baffle is “placed in a location selected from the group
consisting of (a) in front of, (b) behind, and (c) both in front
and behind said detecting pinhole . . ., wherein the position of
said baffles relative to the pinhole is adjustable in all
dimensions for alignment.” As stated above and as Appellant
admits, the baffle taught by Kino and Tanaami are located behind
the detecting pinhole.
Appellant argues, however, that the baffles in Kino and
Tanaami function to prevent stray light from reaching the
detector and not “to block out-of-focus light and improve z-axis
resolution” as recited in claim 5. See Appeal Brief, page 4,
line 21 through page 5, line 7 and page 5, line 20 through page
6, line 6. Appellant also states that the out-of-focus light
recited in the claims originates “from the specimen and not the
disk” and does not improve z-axis resolution. See Reply Brief,
page 1, lines 19 through 23. Lastly, Appellant argues that no
extrinsic evidence has been provided to demonstrate that the
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baffle is inherently adjustable in all dimensions relative to the
pinhole for alignment. See Appeal Brief, page 7, lines 3 through
12.
Upon review of the prior art, we sustain the rejection of
claim 5. First, the Examiner cites Figure 1 (Appellant’s
admitted prior art) to disclose all the limitations recited in
claim 1, except for the inclusion of the baffle. See Examiner’s
Answer, page 3, line 17 through page 4, line 1. Kino and Tanaami
are then cited to provide a motivation for placing a baffle in a
confocal microscope behind the pinhole. The Examiner has only
relied on Kino and Tanaami for the general teaching of placing a
baffle between the pinhole and a detector in order to avoid stray
light from reaching the detector. See Examiner’s Answer, page 4,
lines 3 through 6. There is no discussion of relying on
Appellant’s admitted prior art, Kino or Tanaami to teach any
additional structure. Thus, the resulting structure, based on
the teachings of Kino or Tanaami, corresponds to that shown in
Figure 2C of Appellant’s specification. This proposed structural
combination is our focus when determining whether the Examiner
has established a prima facie case of obviousness.
Second, it is not required that the Examiner show that the
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motivation to make the modification is the same motivation as
Appellant’s. In In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309,
1311 (Fed. Cir. 1996) citing In re Dillon, 919 F.2d 688, 693, 16
USPQ2d 1897, 1901 (Fed. Cir. 1990) (en banc), our reviewing court
states:
[a]lthough the motivation to combine here differs from that
of the applicant, the motivation in the prior art to combine
the references does not have to be identical to that of the
applicant to establish obviousness.
As such, the Examiner has cited column 2, lines 20 through 24 of
Tanaami and column 3, line 65 through column 4, line 4 of Kino to
teach including a baffle behind a pinhole of a confocal
microscope in order to reduce stray light. More importantly,
Appellant has not demonstrated why one skilled in the art would
not have been motivated to use the teachings of Kino and Tanaami
with the Appellant’s admitted prior art. Rather, Appellant has
focused his arguments on the different reasons why Appellant and
the Kino and Tanaami references have the baffle behind the
pinhole.
Additionally, Appellant admits on page 3, lines 46 through
page 4, line 3 and associated Figure 2C of Appellant’s
specification, that placement of a baffle behind the pinhole
blocks out-of-focus light and improve z-axis resolution. As
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Application .09/065, 997
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discussed above, Kino and Tanaami also teach placing the baffle
behind the pinhole. Therefore since Kino and Tanaami teach
placing the baffle behind a detecting pinhole, these baffles,
while reducing stray light, also will function to block out-of-
focus light and thus improve z-axis resolution as recited in
claim 5.
Finally, the Examiner’s statement that the baffles of Kino
and Tanaami are adjusted “at some point” to be aligned with the
optical axis in order to function properly to screen out stray
light is persuasive. See Examiner’s Answer, page 4, lines 7
through 10. In order for the baffle to function properly to
screen out stray light as taught by Kino and Tanaami, the baffle
must be adjustable until the proper position or alignment of the
baffle to reduce stray light is determined. Additionally,
Appellant’s specification on page 4, lines 21 through 23 do not
provide any particular structure used to describe how the baffle
is adjustable in all dimensions for alignment. As such, the
Examiner has presented the requisite factual findings that “the
position of said baffles relative to the pinhole is adjustable in
all dimensions for alignment” as recited in claim 5. We thus
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sustain the Examiner’s rejection of claim 5 under 35 U.S.C.
§ 103.
We next address the rejection of independent claim 27 under
35 U.S.C. § 103 as being unpatentable over Appellant’s admitted
prior art in view of Kino or Tanaami. Claim 27 also has a
different scope from independent claims 1 and 5 and recites “an
opaque baffle positioned adjacent the detection aperture.”
Taking a reasonably broad interpretation of the claim, claim 27
requires the baffle to be adjacent or nearby the baffle.
The Examiner states that Kino and Tanaami teach positioning
a baffle adjacent the detection aperture in order to screen out
stray light and thus improve resolution. See Examiner’s Answer,
page 4, lines 3 through 6. Appellant argues that Kino and
Tanaami teach placing the baffle adjacent relay lens or the eye
piece, respectively, and not adjacent the detection aperture.
See Appeal Brief, page 4, lines 16 through 18.
Upon review, we find that Kino and Tanaami teach placing a
baffle adjacent or nearby the detection pinhole. The Examiner
cites Kino and Tanaami only to provide a motivation for one of
ordinary skill in the art to include a baffle behind a detecting
pinhole of a confocal microscope and not to incorporate other
features of the Kino and Tanaami device into the Appellant’s
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admitted prior art. As such, the proximity of the baffles in
Kino and Tanaami relative to the relay lens or an eye piece is
immaterial. Additionally, we refer Appellant to the above
discussion regarding teaching the limitation, “to block out-of-
focus light and improve z-axis resolution” found in claim 27.
Appellant has grouped claims 28 and 31 with claim 27 and has
not presented separate arguments. See Appel Brief, page 3, lines
11-12 and page 6, lines 16-19. As such, we also sustain the
rejection of claims 28 and 31 under 35 U.S.C. § 103.
We finally turn to the rejection of claims 4 and 6 under
35 U.S.C. § 103 as being unpatentable over Appellant’s admitted
prior art in view of Kino and Takahashi or Tanaami and Takahashi.
The Examiner cites Takahashi to teach the limitations, “the
diameter of the baffles is adjustable” found in claims 4 and 6.
To provide a motivation to combine the references, the Examiner
states that “[i]t would have been obvious at the time of [the]
invention to use such a baffle with [an] adjustable diameter in
the above discussed combination of prior art teachings in order
to provide the user with active control over the amount of light
reaching various portions of the detector.” See Examiner’s
Answer, page 4, line 18 through page 5, line 2. Appellant argues
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that one skilled in the art would not have been motivated to
combine Takahashi with the other references since Takahashi is
“unrelated to microscope performance with relation to axial
resolution. The Takahashi device changes the f-stop of the
camera system to keep brightness constant and to increase depth
of field during close focussing.” See Appeal Brief, page 8,
lines 3 through 5.
Upon careful review, we are persuaded that there is no
motivation in Takahashi to combine its teachings with Kino or
Tanaami. The adjustable baffle of Takahashi is used in thin
fiber optical systems to provide a wider observation range and
brighter images. See Takahashi, Column 2, lines 30 through 68.
There is no suggestion in Takahashi to apply its teachings to a
confocal microscopic environment or that the teachings are
reasonably pertinent to assist in solving the problem of blocking
out-of-focus light with which Appellant was concerned. As such,
we fail to find that the Examiner has presented the requisite
findings or reasons in Takahashi for one skilled to combine its
teachings with Appellant’s admitted prior art and Kino or Tanaami
in order to provide the user with active control over the amount
of light reaching the detector as the Examiner suggests.
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In conclusion, we sustain the rejection of claims 5 and
27-28 and 31. We cannot sustain the rejection of claims 1, 4 and
6 under 35 U.S.C. § 103.
AFFIRMED-IN-PART
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
MRF:pgg
Appeal No. 2001-2201
Application .09/065, 997
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Myers Bigel Sibley & Sajovec
P.O. Box 37428
Raleigh, NC 27627