Ex Parte Staton

Board of Patent Appeals and Interferences

May 4, 2010

10912427 (B.P.A.I. May. 4, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte KENNETH L. STATON
__________

Appeal 2010-000018
Application 10/912,427
Technology Center 1600
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Decided: May 4, 2010
__________

Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134 involving claims to systems
and methods of signal analysis. We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse.

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Statement of the Case
Background
“Optical scanners act like a large field fluorescence microscope in
which the fluorescent pattern caused by binding of labeled molecules on the
array surface is scanned” (Spec. 1 ¶ 003). The Specification teaches that
“for many bright areas of a scan, the analog signal produced by a light
detection system may be partially or fully ‘saturated’, i.e., at the maximum
amplitude. Because of this limitation, an integrated signal representing a
pixel may not always accurately represent the amount of light entering the
detector” (Spec. 2 ¶ 005).
The Claims
Claims 1-7, 11-18, and 28 are on appeal. Claims 1, 11 and 15 are
representative and read as follows:
1. A system comprising:
a) a multi-gain detection system that produces a
plurality of analog signals representative of a pixel, wherein
said multi-gain detection system inputs a single signal and
outputs a plurality of analog signals representative of said
pixel;
b) a converter for digitizing the plurality of analog
signals to produce a set of digital signals for each analog
signal;
c) a signal processor that:
i) identifies a set of non-saturated digital signals
for said pixel,
ii) integrates said set of non-saturated digital
signals for said pixel to evaluate said pixel; and
iii) outputs data for said pixel; and
a data storage means configured to store said data on a
computer-readable medium comprising a permanent
memory.
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11. A method comprising:
producing a plurality of analog signals for a pixel
using a multi-gain signal detection system, wherein said
multi-gain detection system inputs a single signal and
outputs a plurality of analog signals representative of said
pixel;
identifying a non-saturated analog signal for said
pixel;
integrating said non-saturated analog signal to
produce data;
outputting said data; and
storing said data on a computer-readable medium
comprising a permanent memory.

15. A computer-readable medium comprising:
programming for execution by a signal processor to
produce data for a pixel represented by multiple sets of
digital signals of varying magnitude, said programming
comprising:
instructions for integrating a set of non-saturated
digital signals for said pixel to produce an integrated signal
representing said signal; and
instructions for outputting said integrated signal to
produce data for said pixel.

The prior art

The Examiner relies on the following prior art reference::
Kaushikkar et al. US 7,062,092 B2 Jun. 13, 2006

The issue1
The Examiner rejected claims 1-7, 11-18, and 28 under 35 U.S.C. §
103(a) as obvious over Kaushikkar (Ans. 3-8).

1 The rejection under 35 U.S.C. § 101 was withdrawn (see Ans. 2).
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The Examiner finds that “Kaushikkar et al. at col. 4, lines 13-36
describe an embodiment of the system wherein the scanner that has one
excitation source performs the step of causing the scanner with the one
excitation source” (Ans. 4). The Examiner finds that “Kaushikkar et al. at
col. 15, lines 55-57 describe the emission detector (PMT) as a device for
‘providing an electrical signal representative of detected light.’” (Ans. 5).
The Examiner finds that “Kaushikkar et al. at col. 20, lines 39-40 describe
‘analog voltage values of the emission signal’ being detected, wherein the
analog voltage values are a plurality of signals representative of a pixel”
(Ans. 5).
Appellant argues that “Kaushikkar’s system scans at one gain and
then re-scans at a different gain. In order to produce multiple output signals,
Kaushikkar’s system requires multiple input signals” (App. Br. 12).
Appellant argues that “[s]ince Kaushikkar’s system inputs multiple signals to
produce multiple output signals and the appealed claims require input of a
single signal, Kaushikkar’s system cannot render the appealed claims
obvious” (App. Br. 12).
Appellant also argues that “Kaushikkar does not teach integrating
signals. Moreover, since, in a single scan, only one signal per pixel is
generated, Kaushikkar cannot even suggest integrating signals because
integration requires more than one signal per pixel” (App. Br. 13).
The Examiner responds that “integrating the non-saturated signal
values identified to evaluate a pixel is one of the common functional
methods used by digital processors and its implementation would have been
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a method immediately recognized as part of the ordinary capabilities of one
skilled in the art” (Ans. 11).
In view of these conflicting positions, we frame the obviousness issue
before us as follows:
Does the evidence of record support the Examiner’s conclusion that
Kaushikkar renders the claims obvious?
Findings of Fact (FF)
1. Kaushikkar teaches “[s]ystems, methods, and software products
to acquire, process, analyze, and/or display data from experiments with
synthesized and/or spotted arrays are described herein” (Kaushikkar, col. 7,
ll. 21-23).
2. Kaushikkar teaches
a method including: (a) selecting an auto-gain value; (b)
adjusting the first gain based, at least in part, on a first
portion of the auto-gain value; c) adjusting the second gain
based, at least in part, on a second portion of the auto-gain
value; (d) causing the scanner to collect a plurality of sample
pixel intensity values using the adjusted first and second
gains; (e) determining a comparison measure based on
comparing one or more of the plurality of sample pixel
intensity values to one or more of a plurality of desired pixel
intensity values; and (f) adjusting the auto-gain value based
on the comparison measure.

(Kaushikkar, col. 4, ll. 19-29).
3. Kaushikkar teaches that a “gain adjustment system is also
described that includes a scanner having (i) one or more excitation sources,
(ii) an emission detector having a first gain, and (iii) a variable gain element
having a second gain” (Kaushikkar, col. 4, ll. 37-40).
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4. Kaushikkar teaches that a “reason for providing gain adjustment
is that, under certain conditions, the dynamic range of scanner 160B may be
exceeded. For example, the dynamic range of scanner 160B may be
exceeded” (Kaushikkar, col. 20, ll. 15-18).
5. Kaushikkar teaches that in “FIG. 6C, analog voltage values of
emission signal 492 (or amplified and/or filtered versions of that signal, as
described below) are sampled by process controller 740 according to pixel
clock pulses 632 . The sampled analog voltages are shown on axis 640 of
FIG. 6C, some of which . . . are above a saturation value 660” (Kaushikkar,
col. 20, ll. 40-44).
6. Kaushikkar teaches “Computer 100B may optionally include
process controller 740 that may, for example, be any of a variety of PC-
based digital signal processing (DSP) controller boards, such as the M44
DSP Board made by Innovative Integration of Simi Valley, Calif.”
(Kaushikkar, col. 19, ll. 14-18).
Principles of Law
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
The Supreme Court has emphasized that “the [obviousness] analysis need
not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
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steps that a person of ordinary skill in the art would employ.” KSR Int'l v.
Teleflex Inc., 127 S. Ct. 1727, 1741 (2007).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness”). KSR at 418, quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006). The Examiner has the initial burden of establishing a prima facie case
obviousness under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.”).
Analysis
Kaushikkar teaches methods of gain adjustment in signal analysis of
pixels on microarrays, including automatic gain adjustment (FF 1-6). We
agree with the Examiner’s finding that the laser input of Kaushikkar will
inherently operate identically to the laser input of the claimed invention, and
that both will therefore result in the output of a plurality of analog signals
(see Ans. 9).
However, the independent claims also require a signal process that
“integrates said set of non-saturated digital signals for said pixel to evaluate
said pixel”” (see, e.g., Claim 1). Similarly, Claim 11 requires “integrating
said non-saturated analog signal to produce data” and Claim 15 requires
“instructions for integrating a set of non-saturated digital signals for said
pixel” (see Claims 11 and 15).
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Appellant argues that “Kaushikkar does not teach integrating signals.
Moreover, since, in a single scan, only one signal per pixel is generated,
Kaushikkar cannot even suggest integrating signals because integration
requires more than one signal per pixel” (App. Br. 13).
The Examiner responds that “integrating the non-saturated signal
values identified to evaluate a pixel is one of the common functional
methods used by digital processors and its implementation would have been
a method immediately recognized as part of the ordinary capabilities of one
skilled in the art” (Ans. 11).
The Examiner does not rely upon evidence to support the conclusion
that the signal integration “would have been a method immediately
recognized” by the ordinary artisan. KSR approvingly cites Kahn for the
proposition that “[r]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness)”. KSR at 418, quoting In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006).
We recognize that the Examiner states that “any variety of digital
signal processing could be implemented in the taught system” (Ans. 11),
implicitly arguing that the method is a predictable equivalent of known
methods. However, the Examiner has not demonstrated that the prior art
digital signal processing boards operate in an equivalent manner to the
integrating signal step in the instant claims.
The Examiner’s finding that integrating the signal would be
immediately recognized as part of the ordinary artisan’s capacity, without
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any evidentiary support, is the sort of mere conclusory statement which is
insufficient to sustain a case of obviousness. We are therefore constrained to
conclude that Kaushikkar does not render the claimed invention obvious.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Kaushikkar renders the claims obvious.

SUMMARY
In summary, we reverse the rejection of claims 1-7, 11-18, and 28
under 35 U.S.C. § 103(a) as obvious over Kaushikkar.

REVERSED

alw

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