Ex Parte Okada

Board of Patent Appeals and Interferences

Jan 26, 2011

10696532 (B.P.A.I. Jan. 26, 2011)

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.
10/696,532 10/28/2003 Naobumi Okada 03653/LH 6456
1933 7590 01/27/2011
HOLTZ, HOLTZ, GOODMAN & CHICK PC
220 Fifth Avenue
16TH Floor
NEW YORK, NY 10001-7708
EXAMINER
ELVE, MARIA ALEXANDRA
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
01/27/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte Naobumi Okada
__________

Appeal 2009-007131
Application 10/696,532
Technology Center 3700
___________

Before: RICHARD E. SCHAFER, SALLY C. MEDLEY, and
MICHAEL P. TIERNEY, Administrative Patent Judges.

SCHAFER, Administrative Patent Judge.

DECISION ON APPEAL
Applicant appeals the Final Rejection of Claims 1-36 under 35 U.S.C.
§ 103(a) as unpatentable over Baer1 and Portney2. 35 U.S.C. §§ 6(b) and
134(a). We reverse.

1 U.S. Patent 6,639,657.
2 U.S. Patent 4,842,782.
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ANALYSIS
Subject Matter of the Claimed Invention
The claimed subject matter relates to a laser microdissection
device and a method for laser microdissecting. A laser
microdissection device is used to examine a sample of biological
material, identify areas of the sample containing cells of interest and
separate those areas for further analysis. Applicant refers to the
portion of the sample including the cells of interest as the “necessary
area.” Applicant’s device includes two essential parts: (1) a laser and
(2) an optical system that directs the laser beam onto the sample. The
laser is used to irradiate the sample and separate the necessary parts
from the undesired “unnecessary” portions of the sample. The optical
system includes an “active optical element” and an objective lens. The
lens is located between the active optical element and the sample. The
active optical element forms a pattern that delineates the identified
necessary areas and acts as a mask that blocks irradiation of those
areas. The objective lens focuses the laser on the unnecessary areas,
vaporizing those parts resulting in separation of the necessary areas.
Claims 1-11, 30, and 32-36
Representative Claim 1(emphasis added) recites:
1. A microdissection apparatus comprising:
a laser light source to emit laser light; and
a laser light irradiation optical system to irradiate
a sample with the laser light from the laser light source,
wherein the laser light irradiation optical system
comprises: (i) an active optical element on which a
variable pattern set to correspond to a necessary area is
formed, and (ii) an objective lens which is positioned
between the active optical element and the sample; and
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wherein the laser is irradiated through the active
optical element on which the variable pattern is formed,
and guided to the sample by the objective lens so that a
part of the sample excluding the necessary area is
irradiated with the laser light.
Baer
Baer relates to a laser microdissection device and method for
separating desired biological samples. Baer 1: 46-64. Baer’s apparatus
includes both a laser light source and an optical system for irradiating a
sample with laser light. Baer 6:29-34. The optical system includes an
objective or focusing lens 350 that guides the laser beam to the sample.
Baer 6:32-34, Fig. 3. The lens 350 may include a variable aperture that
changes the laser beam diameter. Baer 6:34-37.
Differences from Baer
The Examiner found that Baer did not teach, inter alia, a “pattern
forming means.” Ans., p. 3. We understand the Examiner’s reference to a
pattern forming means to refer to the active optical element having a pattern
corresponding to the necessary area of the sample. The Examiner relies on
Portney for the teaching of the use of a pattern-forming mask.
Portney
Portney discloses a laser device and method for cutting ophthalmic
lenses from a blank piece of plastic material. Portney 1:35-42. The device
includes a laser, a mask, and an objective lens that focuses the laser beam on
to the plastic. Portney 2:58 – 3:9. The mask delineates the areas of the
plastic to be cut by the laser while protecting the portions that will form the
contact lens. Portney 1:43-51. Portney’s Figs. 1 and 3 show an example of
a lens cut from the plastic and the mask used to cut out the lens, respectively.
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Portney 2:10-11 and 14-15. Different masks are substituted depending on
the desired configuration of the lens. Portney 3:10-14.
Contentions
The Examiner held that it would have been obvious to employ the
masks taught by Portney with Baer’s device to ensure that the exact desired
area is processed. Ans., p. 4.
Applicant responds, inter alia, that Portney discloses the use of
multiple fixed masks rather than an active mask as required by Claim 1.
Brief, p. 15. According to Applicant, the mask used in the claimed device
and method has a variable, i.e. changeable, pattern. Applicant directs us to
the liquid crystal displays and micro mirror arrays disclosed in the written
description as examples of what Applicant means by “active optical
element.” Brief, p. 15.
Obviousness
We agree with Applicant’s claim construction. The “active optical
element on which a variable pattern is set to correspond to a necessary area
is formed” refers to a reconfigurable or changeable mask rather than
replaceable fixed masks as described by Portney. We interpret the quoted
language as meaning an optic element with active components (i.e., capable
of changing condition) that adjust to vary the pattern. Our interpretation is
based on the claim, as a whole, and the Specification’s repeated discussion
of adjusting the active components of “active optic elements” (e.g., moving
micro mirrors of an array) to vary a laser pattern. Written Description
13:10-18; 21:13-25; 22:24-23:7; 24:4-10; 24:27-5; 26:14-21; 33:20-27;
34:19-22; 35:23-36:24; 38:2-8.
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The Examiner also identifies the “active optical element” as the
objective lens 350 disclosed by Baer and noting that it may be “associated
with structure for changing the beam diameter such as, for example, a
variable aperture.” Ans. 14. Baer does not describe and the Examiner has
not explained how the aperture is associated with the lens. In any event, it
appears that the aperture is used to vary the size of the laser beam to control
its intensity rather than to select the area to be illuminated. Baer, 6:34-36.
Selection of the area to be illuminated is done using the translation stage
145. Baer 5:30-47.
Based upon the combined teachings of the references before us, the
use of a reconfigurable mask of the type required by Claim 1 in Baer’s
device has not been shown to have been obvious. We therefore reverse the
rejections of Claim 1 and its dependent Claims 11, 30, 32-36.
Claims 23-29, 31
Claim 23 (emphasis added) is directed to a method:
23. A microdissection method comprising:
forming a variable pattern on an active optical
element such that the pattern is set to correspond to a
necessary area of a sample; and
irradiating the active optical element with laser
light; and
guiding the laser light from the active optical
element to the sample, via an objective lens positioned
between the active optical element and the sample, so as
to irradiate a part of the sample excluding the necessary
area with the laser light.
Similarly to Claim 1, Claim 23 requires the step of “forming a
variable pattern on an active optical element such that the pattern is set to
correspond to a necessary area.” For the reasons we stated above with
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respect to Claim 1, we construe the above quoted limitation to require the
use of a reconfigurable mask rather than multiple fixed masks. For the
reasons already stated with respect to the subject matter of Claim 1, the use
of a reconfigurable mask in the process described by Baer has not been
shown to have been obvious from Baer and Portney. We reverse the
rejection of Claims 23 and its dependent Claims 24-29 and 31.
Claims 12-22
These claims are also directed to a microdissection a device, but the
subject matter is described using means plus function language (emphasis
added):
12. A microdissection apparatus comprising:
a light source means for emitting laser light; and
a laser light irradiation optical system to irradiate a
sample with the laser light from the light source means;
wherein the laser light irradiation optical system
comprises: (i) pattern forming means for transmitting or
reflecting the laser light selectively in accordance with a
variable pattern which is set to correspond to a necessary
area, and (ii) an objective lens which is positioned
between the pattern forming means and the sample; and
wherein the laser light is irradiated to the sample
through the variable pattern formed by the pattern forming
means, and guided to the sample by the objective lens so
that a part of the sample excluding the necessary area is
irradiated with the laser light.
Applicant notes that these claims use the means plus function format
and are subject to mandatory construction of 35 U.S.C. § 112, ¶ 6. Brief,
p. 32.
Claim 12 includes the limitation “pattern forming means for
transmitting or reflecting the laser light selectively in accordance with a
variable pattern which is set to correspond to a necessary area.” The
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disclosed structure corresponding to the “pattern forming means” is the
transmission liquid crystal displays and the reflective micro mirror arrays
used to mask the necessary areas from the laser beam. Neither Baer nor
Portney describe these structures or their equivalents. On the record argued
before us, we fail to see a reason for modifying Baer’s device by including a
transmission liquid crystal display, a reflective micro mirror array or their
equivalents. Thus, the subject matter of Claim 12 has not been shown to
have been obvious.
We reverse the rejection of Claim 12 and its dependent claims 13-22.
DECISION
The Examiner’s rejection of the subject matter of Claims 1-36 under
35 U.S.C. § 103(a) 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(a). The two-month
time period for filing an appeal or commencing a civil action, as recited in
37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in
37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery
mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown
on the PTOL-90A cover letter attached to this decision.
REVERSED

ak

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