Ex Parte Sander

Board of Patent Appeals and Interferences

Sep 27, 2010

10536567 (B.P.A.I. Sep. 27, 2010)

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.
10/536,567 05/26/2005 Ulrich Sander 33997.0115 2192
26712 7590 09/27/2010
HODGSON RUSS LLP
THE GUARANTY BUILDING
140 PEARL STREET
SUITE 100
BUFFALO, NY 14202-4040
EXAMINER
CONSILVIO, MARK J
ART UNIT PAPER NUMBER
2872
MAIL DATE DELIVERY MODE
09/27/2010 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 ULRICH SANDER
_____________

Appeal 2009-004030
Application 10/536,567
Technology Center 2800
______________

Before ROBERT E. NAPPI, ELENI MANTIS MERCADER, and
CARL W. WHITEHEAD Jr., Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL1

1 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.
Appeal 2009-004030
Application 10/536,567

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 14 through 29.
We affirm.
INVENTION
The invention is directed to an apparatus for reflecting out an
observation beam of a stereoscopic microscope. See Page 1 of Appellant’s
Specification. Claim 14 is reproduced below:
14. An apparatus comprising:
a main microscope (1) including a main objective (2) having an
optical axis (4), a pair of main stereoscopic observation beam paths
(4a, 4b) passing through the main objective (2) and a zoom (6) in the
main observation beam paths (4a, 4b), the zoom having an axis
arranged at an angle to the optical axis (4) of the main objective (2);
an assistant's microscope (8); and
a beam splitter (7) arranged in the main observation beam paths
(4a, 4b) between the main objective (2) and the zoom (6) for
reflecting out a pair of assistant's stereoscopic observation beam paths
(9a, 9b) to the assistant's microscope;
wherein the beam splitter (7) is continuously rotatable, together
with the assistant's microscope (8), relative to main microscope (1)
about the optical axis (4) of the main objective (2), whereby the beam
splitter (7) and assistant's microscope (8) are optically usable in any
rotational position.

REFERENCES
Tanaka US 4,640,588 Feb. 3, 1987
Minami US 4,763,968 Aug. 16, 1988
Kleinberg US 5,052,789 Oct. 1, 1991
Howes US 5,528,426 Jun. 18, 1996
Biber US 5,898,518 Apr. 27, 1999
Nakamura US 2001/0010592 A1 Aug. 2, 2001
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Application 10/536,567

Corbisiero US 6,421,173 B1 Jul. 16, 2002
Littman DE 1 217 099 May 18, 1966

REJECTION AT ISSUE
The Examiner has rejected claims 14 through 29 under 35 U.S.C.
§ 103(a) as being unpatentable over Nakamura in view of Biber. The
Examiner’s rejection is on pages 4 through 7 of the Answer.2

ISSUES
Claims 14 through 22, 24 through 27, and 29.
Appellant argues on pages 4 and 5 of the Brief3 that the Examiner’s
rejection of claims 14 through 22, 24 through 27 and 29 under 35 U.S.C.
§ 103(a) is in error. Appellant’s arguments are directed to the combination
of the references being in error as Nakamura teaches away from the
combination proposed by the Examiner.
Appellant’s contentions with respect to claims 14 through 22, 24
through 27 and 29 present us with the issue: did the Examiner err in finding
that the skilled artisan would have combined the teachings of Nakamura and
Biber?

2 Throughout this decision we refer to the Examiner’s Answer dated August
1 2008.
3 Throughout this decision we refer to the Supplemental Appeal Brief dated
June 3, 2008 and Reply Brief dated October 1, 2008.
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Application 10/536,567

Claim 23
Appellant argues on page 6 the Brief that the Examiner’s rejection of
claim 23 is in error as the combination of the references does not teach a
rotatable beam deflection element as claimed.
Appellant’s contentions with respect to claim 23 present us with the
issue: did the Examiner err in finding that the combination of the references
teaches a deflection element rotatable relative to the beam splitter as
claimed?
Claim 28
Appellant argues on page 6 the Brief that the Examiner’s rejection of
claim 23 is in error as the combination of the references does not teach a first
and second objective as claimed.
Appellant’s contentions with respect to claim 28 present us with the
issue: did the Examiner err in finding that the combination of the references
teaches a first objective in the observation path and a second objective in the
illumination beam path as claimed?

PRINCIPLE OF LAW
“‘A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.’” Ricoh Co., Ltd. v. Quanta
Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (quoting Kahn, 441
F.3d at 990). A reference does not teach away if it merely expresses a
general preference for an alternative invention from amongst options
available to the ordinarily skilled artisan, and the reference does not discredit
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or discourage investigation into the invention claimed. In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004).

ANALYSIS
Claims 14 through 22, 24 through 27, and 29
Appellant’s arguments have not persuaded us that the Examiner erred
in finding that the skilled artisan would have combined the teachings of
Nakamura and Biber. Appellant argues that Nakamura teaches away from
having a shared objective for the main observer and the co-observer as
Nakamura teaches separate objectives to allow for independent
magnification adjustment. Brief 4. Appellant relies upon paragraphs 15, 29
and 46 of Nakamura to support this allegation. The Examiner responds on
page 8 of the Answer that this feature is not negated by use of a single
objective.
We concur with the Examiner’s finding. Initially, we note that
Nakamura does not explicitly state that using a common objective for both
microscopes is to be avoided. Further, the zoom feature does not preclude
using one objective for both microscopes. Nakamura teaches that the
assistant microscope has a zoom system, item 16. Para 28. We note from
Figure 2 that this zoom system is different from the assistant’s microscope’s
objective lenses L1, and the main microscope’s zoom system 22. See Figure
1, and paras 28 and 32. Thus, we do not find that the assistant’s zoom
feature of Nakamura is negated (and thereby taught away from) by using the
same objective for both microscopes. As such we are not persuaded that
Nakamura teaches away from using one objective for both microscopes
because of the disclosed separate zoom feature.
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Appellant additionally argues that another advantage of Nakamura
that runs counter to modifying the location of the beam splitter is the
teaching that the assistant’s microscope is easily removable to give a wide
view. Brief 5. Appellant asserts that moving the beam splitter would make
removing the assistant’s microscope more challenging and the gain of space
at the bottom of the microscope would not be as great. Appellant asserts that
a purpose of Nakamura’s device is that the observer would gain a wide view
with the naked eye by removing the assistant’s microscope. Thus, Appellant
asserts that the combination is contrary to Nakamura and would change the
principal operation and render the reference inoperative. Brief 5. The
Examiner responds by stating that the proposed combination does not
require the arrangement proposed by Appellant. Answer 9. Further, the
Examiner cites to additional references stating that the skilled artisan would
recognize that the attachment of the assistant microscope is only an optional
alternative to other prior art teaching of attachment of the assistant
microscope. Answer 9. While we have not considered the additional
references cited by the Examiner as they were not listed in the statement of
the rejection we nonetheless concur with the Examiner’s finding of
obviousness.
The Examiner, found that the skilled artisan would have modified the
microscope of Nakamura, to use one objective as taught by Biber as it will
reduce the number of parts. Answer 4-5. We consider this to be a reasonable
rationale to modify the teaching of Nakamura. The Appellant’s arguments
have not shown that this rationale is contrary to the teachings of Nakamura.
Further, while Appellant asserts that removal would be challenging
Appellant has not shown that it is not possible. Thus, Appellant has not
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Application 10/536,567

shown that Nakamura teaches away from the combination, that the
combination changes the principal operation or would render the Nakamura
inoperative. Accordingly, Appellant’s arguments have not persuaded us of
error in the Examiner’s rejection of claims 14 through 22, 24 through 27,
and 29.
Claim 23
Appellant’s arguments have not persuaded us that Examiner erred in
finding that the combination of the references teaches a deflection element
rotatable relative to the beam splitter as claimed. Claim 23 recites that the
deflection element is rotatable relative to the beam splitter. The Examiner
relies upon Nakamura’s Figure 5 and description in paragraph 43.
Appellant argues that the light flux K4 in Figure 5 does not pass through a
beam splitter. We disagree with Appellant’s assertion. Figure 5 is described
as an alternate embodiment to assistant’s microscope. Nakamura para. 0041.
In this second embodiment, light flux (K4) from the target (subject being
viewed) is received by mirror M3, and not beam branching unit B1 of Figure
2. Nakamura para. 0042. While this appears to support Appellant’s
arguments, Nakamura describes a further alternative to this embodiment in
which branching unit (beam splitter), may be used to receive light flux K4,
i.e. the branching unit is used instead of mirror M3. Nakamura para. 0043.
Thus, Appellant’s argument that Nakamura in Figure 5 does not teach that
the light passes through a branching circuit is not persuasive. Accordingly,
Appellant has not persuaded us of error in the Examiner’s rejection of claim
23.
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Claim 28
Appellant’s arguments have not persuaded us that the Examiner erred
in finding that the combination of the references teaches a first objective in
the observation path and a second objective in the illumination beam path as
claimed. Claim 28 recites that the “first part of the main objective (2) is
used for the main observation beam paths (4a, b) of the main microscope (1),
and a second part of the main objective (2) is used for the illumination beam
path (12a), the second part being spaced from the first path and arranged at
an angle to the optical axis (4).” It is clear from the Examiner’s rejection,
that although Appellant has identified items 2 of Appellant’s Figure 1, as the
main and second objective, the Examiner has interpreted item 2 as the main
objective and mirror 13 as the second objective. Assumedly, the mirror item
13 is the only element disclosed as being in the illumination beam path,
spaced apart and at an angle to the optical axis (See Examiner’s comment on
page 10 about this being the only interpretation of claim 28 that is supported
by 35 USC 112 1st paragraph).
We concur with this interpretation by the Examiner as it is consistent
with Appellant’s Specification. Further, Appellant’s mere statement that
they “disagree with the characterization of mirror M1 as being an objective”
(Brief 6) is not persuasive as it neither cites to an alternative interpretation of
the term “objective” nor shows that the Examiner’s interpretation is
inconsistent with the Specification. Thus, Appellant’s arguments, directed
to the combination not teaching the first and second objective parts, is not
persuasive. Appellant’s further argument directed to one skilled in the art of
not combining the references to move the beam splitter and use a common
shared objective, is not persuasive for the reasons discussed above with
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respect to claim 14. Accordingly, Appellant’s arguments have not
persuaded us of error in the Examiner’s rejection of claim 28.

CONCLUSION
Appellant has not persuaded us of error in the Examiner’s decision
rejecting claims 14 through 29.

ORDER
The decision of the Examiner to reject claims 14 through 29 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

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Application 10/536,567

AFFIRMED

ELD

HODGSON RUSS LLP
THE GUARANTY BUILDING
140 PEARL STREET
SUITE 100
BUFFALO, NY 14202-4040
10