Ex Parte Sieckmann et al

Patent Trial and Appeal Board

Sep 18, 2013

10576453 (P.T.A.B. Sep. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte FRANK SIECKMANN and
GERHARD JOHANNSEN
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Appeal 2011-010475
Application 10/576,453
Technology Center 3700
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Before: JENNIFER D. BAHR, STEFAN STAICOVICI, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/576,453

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STATEMENT OF THE CASE
Frank Sieckmann and Gerhard Johannsen (Appellants) appeal under
35 U.S.C. § 134 from the Examiner’s decision rejecting claims 25-50. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The Claimed Subject Matter
Claim 25, reproduced below, is illustrative of the claimed subject
matter.
25. A method for laser microdissection comprising:
capturing an electronic image of at least one image detail
of a specimen;
processing the at least one image detail using image
analysis so as to automatically ascertain at least one object to be
cut out;
automatically calculating a contour of the at least one
object;
automatically defining, based on the calculated contour, a
nominal cutting line around the at least one object to be cut out;
and
subsequently cutting out the at least one object in
response to a relative motion between a laser beam and the
specimen.

Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Schütze ‘129
Sakai
US 5,998,129
US 2001/0053245 A1
Dec. 7, 1999
Dec. 20, 2001
Bova
Saund
Ganser
Schutze ‘291
US 2002/0025511 A1
US 6,377,710 B1
US 2002/0048747 A1
US 2004/0252291 A1
Feb. 28, 2002
Apr. 23, 2002
Apr. 25, 2002
Dec. 16, 2004

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Mengel DE 196 36 074 A1 Mar. 26, 1998
Schütze ‘266 WO 03/036266 A1 May 1, 2003

Bruce J. Schachter et al., SOME EXPERIMENTS IN IMAGE
SEGMENTATION BY CLUSTERING OF LOCAL FEATURE VALUES, 11
Pattern Recognition, 19-28 (1979) (hereinafter “Schachter”).
Rejections
Appellants request our review of the following rejections:
I. Claims 25, 26, 29, 45, and 47 under 35 U.S.C. § 102(b) as being
anticipated by Schütze ‘129;
II. Claims 25, 26, 29, 45, and 47 under 35 U.S.C. § 103(a) as being
unpatentable over Schütze ‘129 and Schutze ‘291;
III. Claims 27 and 28 under 35 U.S.C. § 103(a) as being unpatentable
over Schütze ‘129, Schutze ‘291, and Schachter;
IV. Claims 30-37, 48, and 49 under 35 U.S.C. § 103(a) as being
unpatentable over Schütze ‘129, Schutze ‘291, Schachter, and
Mengel;
V. Claims 38, 46, and 50 under 35 U.S.C. § 103(a) as being
unpatentable over Schütze ‘129, Schutze ‘291, and Bova;
VI. Claims 39 and 40 under 35 U.S.C. § 103(a) as being unpatentable
over Schütze ‘129, Schutze ‘291, and Ganser;
VII. Claims 41 and 42 under 35 U.S.C. § 103(a) as being unpatentable
over Schütze ‘129, Schutze ‘291, Ganser, and Saund;
VIII. Claim 43 under 35 U.S.C. § 103(a) as being unpatentable over
Schütze ‘129, Schutze ‘291, and Sakai; and
IX. Claim 44 under 35 U.S.C. § 103(a) as being unpatentable over
Schütze ‘129, Schutze ‘291, Schachter, and Schütze ‘266.
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OPINION
Rejection I – Anticipation based on Schütze ‘129
The rejection is predicated in part on the Examiner’s finding that
Schütze ‘129 discloses automatically calculating a contour of the at least one
object at column 7, lines 10-13. Ans. 4. In particular, the Examiner found
that Schütze ‘129’s disclosure that the microscopic slide “‘travels
automatically under the control of a computer program in accordance
with a predetermined patterned [sic: pattern] in essentially circulation
[sic: circular] or a spiral shape around the chosen object 10’ [is]
inherently the same as automatically calculating a contour of the at least one
object.” Id.
The Examiner further explained that:
The microscope slide travels automatically under the control of
a computer program in accordance with a predetermined pattern
in essentially circular or a spiral shape around the chosen object
10. Therefore, the computer program does all the calculating of
the contour of the object so that the microscope slide travels
automatically.
Ans. 16.
For the reasons set forth by Appellants on page 4 of their Appeal Brief
and in the first full paragraph on page 3 of their Reply Brief, we agree with
Appellants that the passage of Schütze ‘129 does not adequately support the
Examiner’s finding. Thus, we do not sustain the rejection of claim 25 and
its dependent claims 26, 29, 45, and 47 as anticipated by Schütze ‘129.
Rejection II – Obviousness based on Schütze ‘129 and Schutze ‘291
As an alternative position, the Examiner conceded that “Schütze ‘129
does not disclose automatically calculating a contour of the at least one
object,” but found that “Schutze ‘291 discloses automatically calculating a
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contour of the at least one object.” Ans. 6 (citing Schutze ‘291, paras.
[0015], [0042]). As correctly pointed out by Appellants (App. Br. 5), the
paragraphs of Schutze ‘291 relied upon by the Examiner are directed to
automatically calculating surface area of the object after the drawing of the
cutting line around the desired object, and thus do not make up for the
deficiency in Schütze ‘129.
Accordingly, we do not sustain the rejection of claim 25 and its
dependent claims 26, 29, 45, and 47 as unpatentable over Schütze ‘129 and
Schutze ‘291.
Rejections III-IX
In rejecting the remaining dependent claims, the Examiner does not
rely on any teachings in the additional references applied that would
overcome the deficiency in Schütze ‘129 and Schutze ‘291. Thus, we also
do not sustain these rejections.
DECISION
The Examiner’s decision rejecting claims 25-50 is reversed.

REVERSED

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