Ex Parte Lihl et al

Board of Patent Appeals and Interferences

Oct 21, 2008

10734566 (B.P.A.I. Oct. 21, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte LEICA MIKROSYSTEME GmbH
____________________

Appeal 2008-1973
Application 10/734,566
Technology Center 3700
____________________

Decided: October 21, 2008
____________________

Before JAMESON LEE, RICHARD TORCZON, and JAMES T. MOORE,
Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL

A. Statement of the Case
This is a decision on appeal by the real party in interest, Leica
Mikrosysteme GmbH (LMG), under 35 U.S.C. § 134(a) from a final
rejection of claims 2-7 and 9. We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2008-1973
Application 10/734,566

2
References Relied Upon
Barrett US 4,395,075 Jul. 26, 1983
Söderkvist US 4,532,838 Aug. 6, 1985
Markgraf US 4,603,848 Aug. 5, 1986
Mohr US 5,488,886 Feb. 6, 1996
Niesporek US 5,535,654 Jul. 16, 1996
Jakobi US 5,761,977 Jun. 9, 1998
Nishimoto US 5,787,776 Aug. 4, 1998
Walter US 6,253,653 Jul. 3, 2001

The Rejections on Appeal
The Examiner rejected claims 2-7 and 9 under 35 U.S.C. § 103(a) as
unpatentable over Niesporek, Walter, Markgraf, and Mohr.1
The Examiner rejected claims 2-7 and 9 under 35 U.S.C. § 103(a) as
unpatentable over Söderkvist, Barrett, Jakobi, Nishimoto, Mohr and
Niesporek.
The Invention
The invention relates to an apparatus for cutting into specimens where
the spacing between a knife blade and the specimen is measured using a
light barrier which does not require contact between the blade and specimen.
(Spec. 3:¶¶ 6&7.)

B. Findings of Fact
1. Claim 9 is the independent claim and is reproduced below
(Claims App’x 18:16-23):
9. An ultramicrotome comprising:

1 The Examiner offered additional references as evidence of the general
level of ordinary skill in the art. However, none is necessary for supporting
the rejection.
Appeal 2008-1973
Application 10/734,566

3

a knife, defining a knife edge,

a knife holder for clamping the knife,

a specimen holder for holding a specimen,

a feed device for generating a relative linear motion between
the knife and the specimen,

a light barrier being arranged parallel to the knife edge and
located between the knife and the specimen, the arrangement of
the light barrier is such that the relative linear motion between
the knife and the specimen penetrates the light barrier and
thereby ascertains a spacing of a few micrometers between the
knife and the specimen to prevent contact between the knife and
specimen, and to facilitate the cutting of specimen sections that
are 300 nanometers or less thick.

2. Niesporek discloses a microtome 2 that uses a delimiting
device 20 which establishes the position of a sample 30 to be cut relative to a
cutting knife 10. (Niesporek 2:25-28.)
3. In Niesporek, the delimiting device includes a lever arm 32 that
contacts either the sample or the knife. (Id. at 4:17-22; Figure 1.)
4. Both the Examiner and LMG have characterized Niesporek’s
delimiting device as a contact sensor. (Ans. 4:8-9; App. Br. 5:15.)
5. Niesporak describes the use of a light barrier as a type of sensor
known in the microtome art. (Niesporek 4:60-67.)
6. The Examiner found that contact sensors and light barriers are
well known to a person of ordinary skill in the art as equivalents of one
another. (Ans. 4:10-11.)
Appeal 2008-1973
Application 10/734,566

4
7. One of ordinary skill knew to use a light barrier to determine
the position of an object holder 5 with respect to a cutting blade 4. (Walter
5:44-47.)
8. Markgraf discloses a device for separating sheets in a sheet
feeder. (Markgraf Abstract.)
9. In Markgraf, the device includes a passage gap 16 that is
adjusted based on the thickness of a sheet 23 that is to be separated from a
stack. (Id. at 6:41-46.)
10. In Markgraf, the gap is measured through the use of a
mechanical contact switch 52 that includes contact elements 44 and 45. (Id.
at 7:25-37.)
11. Markgraf also provides that in place of the contact switch a
light barrier may be used that includes a light source 76 and switching
element 77. (Id. at 8:29-33.)
12. Markgraf teaches that the accuracy of measurements made
using a contact switch may be unfavorably affected due to deformation of
the switch’s contacting surfaces. (Id. at 4:8-13.)
13. Markgraf teaches that a light barrier is preferable as it offers
greater measurement accuracy and allows for operation without the
deformation problem of a contact switch. (Id. at 3:65-68; 4:12-25.)
14. Mohr teaches a device for optimizing the process of cutting
sheets of material. (Mohr Abstract.)
15. In Mohr, the device includes a holdfast beam 8 that contacts
and maintains a sheet of material 1 in a position to be cut by cutting blade 7.
(Id. at 5:56-59.)
Appeal 2008-1973
Application 10/734,566

5
16. Mohr discloses that the device includes a light barrier formed
by light source 13 and photocell 14. (Id. at 6:14-18.)
17. As shown in Mohr’s Figure 6, multiple light barriers are
arranged parallel to cutting blade 7 such that the position of blade 7 with
respect to the material 1 to be cut is determined when the blade penetrates
the light barriers. (Id. at 7:12-38.)
18. Mohr supports the Examiner’s finding that a person of ordinary
skill in the art would have recognized that light barriers are well known to be
positioned parallel to a knife blade in order to measure the positioning of the
blade with respect to the material that it is to cut.

C. Analysis
LMG must show error in the Examiner’s rejection of claims 2-7
and 9. The Examiner rejected all the claims over Niesporek, Walter,
Markgraf, and Mohr. The Examiner alternatively rejected all the claims
over Söderkvist, Barrett, Jakobi, Nishimoto, Mohr and Niesporek.
The Rejection Based on
Niesporek, Walter, Markgraf, and Mohr

Claims 2-7 are argued collectively with independent claim 9. We
focus our analysis on the contested limitations.
The Examiner found that Niesporek discloses all the limitations of
claim 9 with the exception of the use of a light barrier. According to the
Examiner, rather than a light barrier, Niesporek discloses the use of a contact
sensor 20 to determine the position of a sample relative to a cutting knife.
The Examiner reasoned that a person of ordinary skill in the art would
Appeal 2008-1973
Application 10/734,566

6
recognize that contact sensors and light barriers are equivalents of one
another. (Ans. 4:17-20.)
LMG does not dispute that Niesporek discloses all the limitations of
claim 9 with the exception of a light barrier. What LMG does dispute is the
Examiner’s contention that light barriers and contact sensors are recognized
equivalents in the microtome or ultramicrotome arts. According to LMG,
the Examiner has not pointed to any evidence that suggests the use of a light
barrier in a microtome to measure the gap between a knife and specimen to
be cut.
Niesporek discloses a microtome 2 that uses a delimiting device 20
which establishes the position of a sample 30 to be cut relative to a cutting
knife 10. (Niesporek 2:25-28.) The delimiting device is characterized by
contact of a lever arm 32 with either the sample or the knife. (Id. at 4:17-22;
Figure 1.) Both the Examiner and LMG have characterized Niesporek’s
delimiting device as a contact sensor. (Ans. 4:8-9; App. Br. 5:15.) The
Examiner found that the contact sensor does not satisfy the limitation of a
light barrier. However, the Examiner reasoned that a person of ordinary
skill in the art would recognize that contact sensors and light barriers are
both well known measuring devices. In support of that reasoning, the
Examiner pointed to a portion of Niesporak that describes the use of a light
barrier as a type of sensor known in the microtome art. (Niesporek 4:60-67.)
The Examiner also cited to Walter, which provides evidence of the known
use of a light barrier in a microtome for detecting the position of a sample
holder with respect to a cutting blade. (Walter 5:44-47.)
Appeal 2008-1973
Application 10/734,566

7
The Examiner further pointed to Markgraf and Mohr as evidence of
the one of ordinary skill’s understanding of light barriers as devices for
measuring spatial relationships.
Markgraf discloses a device for separating sheets in a sheet feeder.
The device includes a passage gap 16 that is adjusted based on the thickness
of a sheet 23 that is to be separated. (Markgraf 6:41-46.) The gap is
measured through the use of a mechanical contact switch 52 that is formed
by contact elements 44 and 45. (Id. at 7:25-37.) Markgraf also provides that
as an alternative to the contact switch, a light barrier may be used that
includes a light source 76 and switching element 77. (Id. at 8:29-33.)
Markgraf teaches that a light barrier is preferable to a contact switch as the
accuracy of measurements made using a contact switch may be unfavorably
affected by deformation of the contacting surfaces. (Id. at 4:8-13). The light
barrier offers greater measurement accuracy without the deformation
problem (id. at 3:65-68; 4:12-25).
Mohr discloses a device for optimizing the process of cutting sheets of
material. The device includes a holdfast beam 8 that contacts and maintains
a sheet of material 1 in a position to be cut by cutting blade 7. Mohr also
discloses that the device includes a light barrier formed by light source 13
and photocell 14. As shown in Mohr’s Figure 6, multiple light barriers are
arranged parallel to cutting blade 7 such that the position of blade 7 with
respect to the material 1 to be cut is determined when the blade penetrates
the light barriers. (Mohr 7:12-38.)
A combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.
KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1739 (2007). If a technique
Appeal 2008-1973
Application 10/734,566

8
has been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill. Id. at 1740. Furthermore, a basis to combine teachings need not be
expressly stated in any prior art reference. In re Kahn, 441 F.3d 977, 989
(Fed. Cir. 2006). There need only be an articulated reasoning with rational
underpinnings to support a motivation to combine teachings. Id. at 988.
As is evident from both Niesporek and Walter, it was well known that
light barriers are a type of sensing device used in the microtome art. As is
evident from Markgraf, it was well known that a light barrier sensor is
preferable to a contact sensor as the light barrier provides higher accuracy
measurements. As is evident from Mohr, it was well known that light
barriers are positioned parallel to a knife blade in order to measure the
positioning of the blade with respect to a material that it is to be cut.
In light of what was well known to a person of ordinary skill in the
art, the Examiner concluded that an ultramicrotome having all the limitations
of LMG’s claim 9, including the required light barrier, would have been
obvious. That conclusion is credible as it reasonably takes into account the
knowledge and ability of a person of ordinary skill in the microtome art in
choosing between known sensor types. In choosing between a contact
sensor and a light barrier to measure the distance between a knife blade and
sample, a person of ordinary skill would reasonably select a light barrier in
order to take advantage of its known greater measurement accuracy.
We first reject LMG’s argument that the Examiner has not offered any
evidence to support the position that contact sensors and light barriers are
recognized equivalents in the microtome or ultramicrotome arts. (App. Br.
Appeal 2008-1973
Application 10/734,566

9
9:15-17.) As discussed above, Niesporek teaches both the use of a contact
sensor 20 and a light barrier 58 as sensors for measuring the spacing
between two components of a microtome. Walter teaches that a microtome
is known to use a light barrier to determine the position of an object holder 5
with respect to a cutting blade 4.
Prior art references must be considered for everything they teach by
way of technology and are not limited to the particular invention they are
describing and attempting to protect. EWP Corp. v. Reliance Universal Inc.,
755 F.2d 898, 907 (Fed. Cir. 1985). One with ordinary skill in the art is
presumed to have knowledge apart from what the prior art references
explicitly say. See KSR Int’l Co, 127 S.Ct. at 1740-41. Additionally, a
person of ordinary skill in the art is also a person of ordinary creativity, not
an automaton. Id. at 1742.
While neither Niesporek nor Walter are explicit in their teaching of
the interchangeability of measurement sensors, a person of ordinary skill and
creativity would have understood from those teachings that a contact sensor
and a light barrier are available as alternatives when selecting sensors for
measuring the positioning of microtome components. Because each was
known in the microtome art to provide those positioning measurements, it
follows that a person of ordinary skill in the art would have reasonably
recognized that those sensors are equivalents of one another.
We next reject LMG’s argument that the references cited by the
Examiner that are not related to microtomes, such as Markgraf and Mohr,
are non-analogous art and not available as evidence of the obviousness of
LMG’s claim 9. (App. Br. 9:23-11:6.) A reference is analogous art when it
is either in the field of an applicant’s endeavor or if it is pertinent to the
Appeal 2008-1973
Application 10/734,566

10
particular problem with which the inventor was concerned. In re Oetiker,
977 F.2d 1443, 1447 (Fed. Cir. 1986). Furthermore, common sense applies
in deciding which fields a person of ordinary skill in the art would look to
for a solution to the problem facing the inventor. Id.
Here, it is clear from LMG’s own specification that the field of
endeavor of LMG’s invention is generally cutting apparatuses where
microtomes and ultramicrotomes are but merely exemplary types of such
cutting apparatuses. From LMG’s specification (Spec. 1:9-16):
FIELD OF THE INVENTION
The invention concerns an apparatus for cutting into
specimens, in particular a microtome or ultramicrotome….

In the operation of cutting apparatuses, in particular a
microtome or ultramicrotome, it is routinely necessary to position the
specimen exactly with respect to the knife in accurately positioned
and rapid fashion. (Emphasis added).

Mohr is directed to a device that cuts material. A person of ordinary
skill in the art would understand that Mohr is within the field of “cutting
apparatuses” to which LMG’s invention is directed and is analogous art.
Also, the problem that LMG’s invention addresses is that of
accurately measuring the distance between a knife and a sample to be cut
using a light barrier. (Spec. ¶¶ 6 & 7.) Both Mohr and Markgraf involve the
use of a light barrier to measure the distance between a material and a
component that acts on the material. Mohr teaches a cutting device that
includes light barrier 14 which measures the distance between knife blade 7
and material 1. Markgraf teaches a sheet separator in which light barrier 78
measures the thickness of sheet passage gap 16 so that only a single sheet of
material 23 is advanced a between cylinder 5 and retaining member 6.
Appeal 2008-1973
Application 10/734,566

11
Common sense would lead a person of ordinary skill in the art seeking
to measure spacing in a microtome to look to areas where sensors are used
for reliably measuring a gap between components. Mohr and Markgraf both
provide guidance in deriving a solution to the problem of measuring the
spacing between two components using a light barrier. Accordingly, Mohr
and Markgraf are pertinent to the problem with which LMG is concerned
and are correctly considered analogous art.
We also reject LMG’s argument that Niesporek cannot be combined
with any teaching of a light barrier because the inventor in Niesporek did not
recognize the benefits of a light barrier in specifically measuring the gap
between his microtome knife and sample. (App. Br. 6:14-21.) That
argument is misplaced. What the inventor of a single prior art reference
would understand from his invention is not the relevant inquiry to determine
the obviousness of LMG’s claims. Pursuant to the statutory language of 35
U.S.C. § 103(a), the relevant inquiry is whether the subject matter of the
claims would have been obvious to person having ordinary skill in the art at
the time LMG’s invention was made. The Examiner determined that at the
time LMG’s invention was made, a person of ordinary skill in the art would
understand LMG’s claim 9 as being obvious. As set forth above, that
determination is reasonably supported by the evidence of record and is not
undermined by LMG’s argument.
Finally, we reject LMG’s contention that substituting a light barrier
for Niesporek’s contact sensor 20 as proposed by the Examiner would
require such substantial modification of Niesporek as to change its principles
of operation. (App. Br. 11:7-24.) Niesporek discloses a sensor for
measuring the relative positions of a sample to be cut and a cutting knife.
Appeal 2008-1973
Application 10/734,566

12
The Examiner’s proposed substitution of one type of known prior art sensor,
i.e. a light barrier, for the contact sensor of Niespork results in a microtome
that still provides the same positioning measurement. The evidence also
reveals that the measurement is improved when a light barrier is used by
virtue of its higher measurement accuracy. Thus, the incorporation of a light
barrier not only maintains the measurement function disclosed in Niesporek
but improves upon that function. The principle of operation of Niesporek’s
invention is not altered by substituting an improved sensor for a lesser
sensor to more accurately make the same measurement.
Moreover, it is not even necessary that the inventions of the references
be immediately combinable, without modification, to render obvious the
invention under review. See In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir.
1983). Here, the substitution of a light barrier for Niesporek’s contact
sensor 20 without any modification is not required. As discussed above, the
Examiner correctly determined how a person of ordinary skill in the art
would view the collective teachings of the prior art in modifying Niesporek
to incorporate a light barrier. The Examiner correctly took into account the
knowledge of one of ordinary skill in the art in determining that LMG’s
claim 9 is obvious.
For all the foregoing reasons, we sustain the rejection of claims 2-7
and 9 as unpatentable under 35 U.S.C. § 103(a) based on Niesporek.
The Rejection Based on
Söderkvist, Barrett, Jakobi, Nishimoto, Mohr and Niesporek

For the reasons discussed above, the Examiner correctly determined
that LMG’s claims 2-7 and 9 are unpatentable under 35 U.S.C. § 103(a) over
Niesporek, Walter, Markgraf, and Mohr. We need not and do not reach the
Appeal 2008-1973
Application 10/734,566

13
Examiner’s alternative rejection of claims 2-7 and 9 under 35 U.S.C.
§ 103(a) over Söderkvist, Barrett, Jakobi, Nishimoto, Mohr and Niesporek.

D. Conclusion
The rejection of claims 2-7 and 9 as unpatentable under 35 U.S.C.
§ 103(a) over Niesporek, Walter, Markgraf, and Mohr is affirmed.
We do not reach the merits of the rejection of claims 2-7 and 9 as
unpatentable under 35 U.S.C. § 103(a) over Söderkvist, Barrett, Jakobi,
Nishimoto, Mohr, and Niesporek.

AFFIRMED

ack

cc:

Robert P. Simpson, Esq.
Simpson & Simpson, PLLC
5555 Main Street
Williamsville, NY 14221