Ex Parte SIECKMANN et al

Patent Trials and Appeals Board

Jun 26, 2019

14410263 - (D) (P.T.A.B. Jun. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/410,263 12/22/2014
70098 7590 06/28/2019
Maria Eliseeva
Patentbar International PC
1666 Massachusetts Ave, Suite 12
Lexington, MA 02420
FIRST NAMED INVENTOR
Frank SIECKMANN
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.
21295.0167US1 9332
EXAMINER
LEI, JIE
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
06/28/2019 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):
pat.docket@patentbar.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK SIECKMANN and STEP AN HUBER
Appeal2019-000174
Application 14/410,263
Technology Center 2800
Before MARK NAGUMO, DONNA M. PRAISS, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1--4 and 7-13. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 We cite to the Specification ("Spec.") filed December 22, 2014; Final
Office Action ("Final Act.") dated December 7, 2017; Appellant's Appeal
Brief ("App. Br.") filed April 24, 2018; Examiner's Answer ("Ans.") dated
August 9, 2018; and Appellant's Reply Brief ("Reply Br.") filed October 9,
2018.
2 Appellant is the Applicant, Leica Microsystems CMS GmbH, which is
identified at page 1 of the Appeal Brief as the real party in interest.
Appeal2019-000174
Application 14/410,263
REJECTION
Claims 1--4 and 7-13 stand finally rejected under 35 U.S.C. § I03(a)
as unpatentable over Tiimpner. 3
BACKGROUND
The subject matter on appeal relates to a microscope. Spec. ,r 2.
According to the Specification, information regarding a sample viewed
under a microscope may be better conveyed to a user when it involves
information perceived by feel, taste, smell, or hearing. Id. ,r 11. Claim I-
the sole independent claim on appeal-seeks to capture that concept as
follows:
1. A microscope for investigating a microscopic sample by
a user, the microscope comprising:
a receiving apparatus receiving primary signals from the
sample, said primary signals detecting a property of the sample;
an output apparatus generating, from the primary signals,
secondary signals of the sample perceptible by the user
auditorily and/or perceptible olfactorily and/or perceptible
gustatorily and/or perceptible tactilely and/or perceptible
thermoreceptively; and
a feedback apparatus with which the user controls the
receiving apparatus in real time during detecting the property of
the sample,
wherein the receiving apparatus comprises multiple
detection channels; and first secondary signals are generated
from the primary signals of a first detection channel; and
independently thereof, second secondary signals are generated
from the primary signals of a second detection channel, and
wherein the first and second secondary signals differ
from one another in terms of the nature of their perceptibility;
or the first and second secondary signals are outputted
separately from one another.
3 US 2009/0244697 Al, published October 1, 2009.
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Appeal2019-000174
Application 14/410,263
Appeal Br. 9 (Claims Appendix).
OPINION
Appellant argues the claims as a group. See generally App. Br.;
Reply Br. In accordance with 37 C.F.R. § 4I.37(c)(l)(iv), we select claim 1
as representative. Claims 2--4 and 7-13 stand or fall with claim 1.
Relevant to Appellant's arguments on appeal, the Examiner finds that
Tiimpner discloses a microscope that includes a receiving apparatus for
receiving image information, including recorded and/or reproduced images
as well as sample views observed by a user, and an output apparatus
including sensors 9, 15, configured to generate optical, acoustic, and/or
tactile signals in response to a user's manipulation, via operating elements 7,
14, of the sample position relative to an eyepiece. Final Act. 2---6.
Particularly, referring to Tiimpner' s Figure 1, Tiimpner provides operating
elements 7, 14 for enabling a user to adjust the position of a sample relative
to a viewing lens, to facilitate selection of sample regions of interest and
adjustment of focus. Tiimpner ,r,r 7, 14. Tiimpner's operating elements 7,
14, include sensors 9, 15 which, in use, generate feedback signals perceived
by the user auditorily, tactilely, or visually when the movement reaches or
exceeds a threshold value. Id. ,r 9 ("It is advantageous if this feedback signal
is a tactile and/or acoustical and/or optical operator stimulus."). We
understand the Examiner's reading of Tiimpner' s sample view or recorded
image as the recited "primary signals detecting a property of the sample," as
referring to the x, y, and z coordinates of a region of interest in the sample.
Similarly, we understand the Examiner to read Tiimpner' s feedback signals
as the recited "secondary signals of the sample perceptible by the user."
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Appeal2019-000174
Application 14/410,263
Thus, under the Examiner's reading of Tiimpner, the user viewing a sample
would receive primary signals "detecting a property of the sample," i.e., the
coordinates of a view or image of the sample. Based on the received
primary signals, the user would manipulate the operating elements to adjust
the sample position or focus, which manipulation would result in generation
of secondary signals perceived auditorily, tactilely, or visually when a
threshold is reached or exceeded-i.e., when the borders of the region are
reached. Cf Tiimpner's statement that "example in the case of a sample
having a three-dimensional structure-sharp images are recorded in the
individual image segments. In this connection, the manipulation unit can
mark the borders of the depth focus region, in each instance, as the operator
stimulus, in each instance." Tiimpner ,r 17.
Appellant argues that signals "received by sensors 9" in Tiimpner' s
device relate to positioning of a sample table and, therefore, are not
"secondary signals of the sample" as is recited in claim 1. App. Br. 4. More
particularly, Appellant contends that the recited primary signals "detect a
property of the sample, and the secondary signals are generated from the
primary signals." (Emphasis omitted). Id. at 3
The foregoing arguments are not persuasive of reversible error. To
meet the recited secondary signals, the Examiner points to signals generated
by Tiimpner's sensors 9 and 15, not signals received by those sensors. See
Final Act. 3 ( explaining that "the secondary signals from sensor 9 give the
position information of the sample images; and the secondary signals from
sensor 15 give the focusing position information"). Moreover, to the extent
that Tiimpner's sensors issue signals that relate to a position and/or focus of
a sample region under view, such signals would generally be "of the
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Appeal2019-000174
Application 14/410,263
sample," as required by claim 1. Appellant does not present persuasive
reasoning why Tiimpner's signals relating to sample position and/or focus
would not fall within the recited phrase, "of the sample."
Appellant also argues that claim 1 "does not require triggering a
threshold value as a prerequisite to generating a secondary signal," which
Appellant contends would be required when using Tiimpner's microscope.
App. Br. 6. However, Appellant neither contends nor demonstrates why
claim 1 excludes elements that provide such prerequisite.
Appellant argues that the Examiner applies an incorrect interpretation
of the phrase "property of the sample" by reading movement of Tiimpner' s
sample table as an example of a sample property. Id. at 7. This argument is
not persuasive of error. Only the recited primary signal is characterized in
the claim as "detecting a property of the sample." While the recited
secondary signals are characterized in the claim as being "generated" from
the primary signals, Appellant does not point to language in the claim that
requires the secondary signals also to correspond to a property of the
sample. 4
4 In the Reply Brief, Appellant argues that there is no "direct correlation or
direct relationship" between Tiimpner's observed sample image (primary
signal) and the signals generated by sensors 9 and 15 ( secondary signals).
Reply Br. 3. Claim 1 does not require a direct relationship. Rather, the
claims recites that the secondary signals are generated "from the primary
signals." According to Tiimpner, a user manipulates the adjustment
elements in response to aspects perceived in viewing the sample, such as the
region being viewed or the focus, and the [secondary] signals generated by
sensors 9 and 15 are due to, e.g., adjustment of the elements beyond the
borders of the region of interest. Tiimpner ,r 1 7. Appellant does not present
persuasive reasoning why the foregoing use taught by Tiimpner would not
have generated secondary signals from the primary signals as claimed.
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Appeal2019-000174
Application 14/410,263
For the foregoing reasons, Appellant's arguments do not persuade us
of reversible error. The Examiner's rejection is sustained.
DECISION
The Examiner's decision rejecting claims 1--4 and 7-13 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).
AFFIRMED
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