Ex Parte Spizig et al

Patent Trial and Appeal Board

Feb 27, 2017

13580324 (P.T.A.B. Feb. 27, 2017)

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.
13/580,324 08/21/2012 Peter Spizig 18630-12US1 1494
53590 7590 03/01/2017
OPTICUS IP LAW, PLLC
7791 ALISTER MACKENZIE DRIVE
SARASOTA, EL 34240
EXAMINER
AHMED, JAMIL
ART UNIT PAPER NUMBER
2886
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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):
JG@OPTICUS-IP.COM
opticusip @ gmail. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER SPIZIG, WOLFRAM IBACH, DETLEF SANCHEN,
GERHARD VOLSWINKLER, and OLAF HOLLRICHER
Appeal 2016-000717
Application 13/580,324
Technology Center 2800
Before KAREN M. HASTINGS, N. WHITNEY WILSON, and
JENNIFER R. GUPTA, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 18, 20—25, 27, 29-33, 35, 36, and 38-45 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Marx et al.,
(US 2006/0109483 Al, published May 25, 2006) (“Marx”), Zeng et al.,
(US 2009/0270702 Al, published Oct. 29, 2009) (“Zeng”), and Hansma et
al., (US 5,581,082, issued Dec. 3, 1996) (“Hansma”). We have jurisdiction
over the appeal pursuant to 35 U.S.C. § 6(b).
WE AFFIRM.
1 The real party in interest is stated to be Witec Wissenschaftliche
lnstrumente und Technologic GMBH (App. Br. 2).
Appeal 2016-000717
Application 13/580,324
Claim 18 is illustrative of the claimed subject matter:
18. A method for imaging an area of a surface of a sample having a
surface topography and a size greater than 300 pm and supported on a
movable sample table, comprising:
scanning the sample surface with a substantially point image formed
by a Raman confocal microscope having a first optical path that includes an
objective lens and that has a focal plane, thereby causing the sample surface
to emit Raman light;
capturing and directing to a detector a first spectral range including the
Raman light over the first optical path to perform Raman microscopy of the
emitted Raman light with the Raman confocal microscope;
directing light having a second spectral range different from the first
spectral range over a second optical path between the sample surface and a
chromatic optical sensor, wherein the second optical path includes the
objective lens, and wherein the chromatic sensor measures a distance
between the topography of the sample surface and the objective lens based on
scanning of the sample surface; and
substantially maintaining the sample surface in the focal plane by
moving the sample table or the objective lens by operation of a control unit
operably connected to the sample table or to the objective lens based on the
measured distance between the sample surface and the objective lens.
App. Br. 17 (Claims Appendix).
Appellants’ arguments focus on limitations common to independent
claims 18, 27, 38, and 41 (App. Br. 14-15). We choose independent
claim 18 as representative (App. Br. 15 (Appellants state that claims 27, 38,
and 41 include same basic features as claim 18 (note claims 27 and 41 are
directed to apparatus; claims 3 8 is directed to a method) and are patentable
for similar reasons as claim 18)). Appellants do not present any arguments to
the dependent claims (e.g., App. Br. 11). Accordingly, all the claims stand or
fall together.
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Appeal 2016-000717
Application 13/580,324
ANALYSIS
Upon consideration of the evidence on this appeal record and each of
Appellants’ contentions, we find that the preponderance of evidence on this
record supports the Examiner’s conclusion that the subject matter of
Appellants’ claims is unpatentable over the applied prior art. We sustain the
Examiner’s § 103 rejection essentially for the reasons set out by the
Examiner in the Answer.
We add the following for emphasis.
Appellants mainly discuss each reference separately (App. Br. 11—13)
and do not appear to fully address the applied prior art as a whole.
Appellants argue that Marx does not teach scanning, only positioning, and
that Marx teaches away from scanning (App. Br. 14; Reply Br. 4, 6). These
arguments are not persuasive. Whether the prior art teaches away from the
claimed invention is a question of fact. DyStar Textilfarben GmbHv. C.H.
Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006); In re Harris, 409 F.3d
1339, 1341 (Fed. Cir. 2005); cf. Para-Ordnance Mfg. v. SGSImporters Int’l,
73 F.3d 1085, 1090 (Fed. Cir. 1995) (to teach away, a reference must state
that a feature “should not” or “cannot” be used in combination with other
features in the prior art). Based on these principles, Marx does not teach
away from scanning. Indeed, Appellants do not direct us to any explicit
definition in their Specification that would prevent the movement discussed
in Marx from being encompassed by scanning as recited in the claim (e.g.,
Ans. 6, 7). In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (if the specification does not provide a definition for claim terms,
the broadest reasonable interpretation consistent with the specification is
applied). However, even assuming arguendo that Appellants claimed
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Appeal 2016-000717
Application 13/580,324
scanning requires more, the Examiner’s determination that scanning requires
only routine skill in the art is reasonable (Ans. 7). Indeed, Appellants’
Specification discusses Hansma which exemplifies scanning a sample
(Spec. 2; see also Hansma, col. 7,11. 20-22 “[t]he operation of a scanning
probe microscope with such a modulation is well known in the art”)).
Appellants also argue that Marx does not use a Raman microscope
(App. Br. 14); however, the Examiner relies upon Zeng to exemplify the
known use of Raman confocal microscopy, and also points out that Hansma
uses confocal microscope. Ans. 5—6. Furthermore, there is no dispute that
Raman confocal microscopes were known (Spec. 2).2
Appellants argue that the Examiner’s reliance on Hansma is
inapplicable because one would only look to the reflective embodiments in
Hansma (App. Br. 14; Reply Br. 7). However, Hansma points out that their
invention is directed to a “combined scanning probe and scanning energy
microscope” (Hansma, col. 3,11. 34—35) and also that “[t]he operation of a
scanning probe microscope with such a modulation [as described therein] is
well known in the art” (Hansma, col. 7,11. 20-22). Appellants have not
persuasively shown that the Examiner’s reliance upon Hansma to exemplify
the obviousness of maintaining the sample surface in a focal plane by using a
control unit as recited in claim 1 (e.g., Ans. 6, 7, 9) is unreasonable. “It is
well settled that a prior art reference is relevant for all that it teaches to those
2 An applicant cannot defeat an obviousness rejection by asserting that the
cited references fail to teach or suggest elements which the applicant has
acknowledged are taught by the prior art. Constant v. Advanced Micro-
Devices, Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988) and In reNomiya, 509
F.2d 566, 571 n.5 (CCPA 1975) (A statement by an applicant that certain
matter is prior art is an admission that the matter is prior art for all purposes).
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Appeal 2016-000717
Application 13/580,324
of ordinary skill in the art.” In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir.
1992).
It has also been established that the reason for combining references
does not have to be identical to that of the applicant in order to establish
obviousness. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996). In KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 419-420 (2007) the Supreme Court
observed that:
In determining whether the subject matter of a . . . claim
is obvious, neither the particular motivation nor the
avowed purpose of the patentee controls. What matters is
the objective reach of the claim. If the claim extends to
what is obvious, it is .. . [unpatentable] under § 103.
Appellants have not shown error in the Examiner’s determination that
one of ordinary skill in the art, using no more than ordinary creativity, would
have used admitted known Raman confocal microscope in combination with
known confocal chromatic sensor with scanning the probe/sensor as well as
the microscope for a “scanned-sample approach” (Hansma, col. 3,1. 36) as
exemplified in the applied prior art (e.g., Ans. 3—9; App. Br. generally, Reply
Br. generally). In reKubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009)
(obviousness only requires a reasonable expectation of success). See also In
re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference .... Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.”); In reNievelt, 482 F.2d 965, 968 (CCPA 1973)
(“Combining the teachings of references does not involve an ability to
combine their specific structures.”).
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Application 13/580,324
As the Supreme Court has noted, “[t]he combination of familiar
elements [or steps] according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR, 550 U.S. at 416.
Appellants have not persuaded us that the Examiner erred in concluding that
the claimed combination of familiar steps/elements is such a case of
obviousness. Appellants’ assertion that the proposed combination “requires
changing the principle of operation of at least Hansma” for Hansma to be
applicable (Reply Br. 6) is not persuasive of error.
Accordingly, we affirm the Examiner’s rejections.
The Examiner’s decision 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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