Ex Parte Marcelpoil et alDownload PDFPatent Trial and Appeal BoardMay 25, 201613946723 (P.T.A.B. May. 25, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/946,723 07/19/2013 63863 7590 05/27/2016 David W. Highet, VP & Chief IP Counsel Becton, Dickinson and Company (Lerner David Littenberg) 1 Becton Drive, MC 110 Franklin Lakes, NJ 07417-1880 FIRST NAMED INVENTOR Raphael Marcelpoil 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 ATTORNEY DOCKET NO. CONFIRMATION NO. BECTON 3.0-275 DIV 1443 EXAMINER FRITCHMAN, REBECCA M ART UNIT PAPER NUMBER 1797 NOTIFICATION DATE DELIVERY MODE 05/27/2016 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): lorraine_kowalchuk@bd.com ip_docket@bd.com eOfficeAction@ldlkm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RAPHAEL MARCELPOIL, RYAN WILLIAMS, and CEDRICK ORNY Appeal2014-009669 Application 13/946, 723 Technology Center 1700 Before JEFFREY T. SMITH, KAREN M. HASTINGS, 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 a final rejection of claims 19 and 20. We have jurisdiction under 35 U.S.C. § 6. Appellants' appealed invention is illustrated by independent claim 19, reproduced below: Appeal2014-009669 Application 13/946,723 19. A method of determining optical density data for at least one dye staining a sample from an image obtained with an imaging device, comprising: capturing a series of images of the sample at different integration times; selecting a highest non-saturated intensity in each of a red, green, and blue channel of the imaging device; and reconstructing an optimized image of the sample using the highest non-saturated intensity levels in the red, green, and blue channels such that the optimized image is suitable for chromogen separation. Appellants (App. Br. 2-3) request review of the following rejections from the Examiner's Final Office Action: I. Claim 19 rejected under 35 U.S.C. § 102(b) as anticipated by, or in the alternative under§ 103(a) as unpatentable over Fattal et al. (US 2005/0254722 Al, published November 17, 2005) ("Fattal"). II, Claim 20 rejected under 35 U.S.C. § 103(a) as unpatentable over Fattal and Pawluczyk et al. (US 2006/0173266 Al, published August 3, 2006) ("Pawluczyk"). OPINION Rejection I After review of the respective positions provided by Appellants and the Examiner, we REVERSE the Examiner's prior art rejection of claim 19 for the reasons presented by Appellants. We add the following. 2 Appeal2014-009669 Application 13/946,723 Independent claim 19 is directed to a method of determining optical density data for at least one dye staining a sample from an optimized image suitable for chromogen separation. We refer to the Examiner's Final Action for a statement of the rejection. Final Act. 2-3. Appellants argue that the claimed invention is directed to a method of determining optical density data for at least one dye staining a sample through chromogen separation while Fattal is "directed to a gradient domain compression system for generating an output image having a low luminance dynamic range (LDR) from an input image having a high luminance dynamic range (HDR)." App. Br. 3; Fattal i-f 14. Thus, Appellants argue Fattal does not anticipate the claimed invention because there is no teaching in Fattal of chromogen separation, nor is there any discussion regarding any need to perform chromogen separation. App. Br. 5. Appellants further argue that the Examiner failed to establish a prima facie case of obviousness because the Examiner did not provide a reasonable foundation or rationale for one skilled in the art to modify the teachings of Fattal to arrive to the subject matter of independent claim 19. Id. at 6-7. We agree with Appellants that the Examiner has not established a prima facie case of anticipation or obviousness. The Examiner relies principally on Fattal's disclosure of a method of combining photographs of a scene taken at different shutter speeds to form a single image containing visible details of the various objects in the scene (emphasis added). Final Act. 2-3; Ans. 6-8; Fattal i-fi-12, 22, 28, 69. However, the Examiner directs us to no portion of Fattal describing the method as used for determining optical density data for at least one dye staining a sample to be analyzed 3 Appeal2014-009669 Application 13/946,723 through chromogen separation or that would have led one skilled in the art to use Fattal's method for such a purpose. The Examiner has not adequately explained how one skilled in the art would have used or adapted Fattal's method to be used as required by the subject matter of independent claim 19. Under these circumstances, we cannot conclude that the Examiner has met the minimum threshold of establishing anticipation under 35 U.S.C. § 102(b) or obviousness under 35 U.S.C. § 103(a). See In re King, 801 F.2d 1324, 1326-27 (Fed. Cir. 1986); In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); KSRint'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)). Accordingly, we reverse the Examiner's prior art rejection of claim 19 under 35 U.S.C. § 103(a) for the reasons presented by Appellants and given above. Rejection II The Examiner's prior art rejection of claim 20 under 35 U.S.C. § 103(a) is premised on the teachings of Fattal anticipating or rendering obvious to one skilled in the art the method of determining optical density data of the subject matter of independent claim 19. Final Act. 4. As discussed above, such is not the case. The Examiner did not rely on the additionally cited secondary reference to overcome the previously noted deficiencies of Fattal. Id. Accordingly, we also reverse the Examiner's prior art rejection of claim 20 for the reasons presented by Appellants and given above. 4 Appeal2014-009669 Application 13/946,723 ORDER The Examiner's prior art rejections under 35 U.S.C. § 103(a) are reversed. REVERSED 5 Copy with citationCopy as parenthetical citation