Ex Parte Stern et alDownload PDFPatent Trial and Appeal BoardMay 23, 201612780825 (P.T.A.B. May. 23, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121780,825 05/14/2010 28315 7590 05/25/2016 Banner & Witcoff, Ltd. 28 State Street Boston, MA 02109 FIRST NAMED INVENTOR David Stern 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. 008065.00059 (3872.1) 1517 EXAMINER SAINI, AMANDEEP SINGH ART UNIT PAPER NUMBER 2665 NOTIFICATION DATE DELIVERY MODE 05/25/2016 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): PTO-28 315 @bannerwitcoff.com patents@affymetrix.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID STERN, CHU AN GAO, MEL VIN YAMAMOTO, and DEVIN NGUYEN Appeal2014-009618 Application 12/780,825 Technology Center 2600 Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL Appeal2014-009618 Application 12/780,825 l. STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of claims 22-36. Appellants have previously canceled claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. A. INVENTION According to Appellants, the disclosed and claimed invention relates to a method "to image a probe array" including "focusing on a plurality of fiducials on a surface of an array." Spec. 2. B. ILLUSTRATIVE CLAIM Claim 22 is exemplary: 22. A method for imaging a probe array, the method comprising: imaging a plurality of fiducials associated with the probe array, wherein the plurality of fiducials are imaged at a plurality of z positions to generate a plurality of z position images; determining a best z position for each of the plurality of fiducials, wherein determining comprises calculating sharpness for each of the plurality of z position images and selecting the best z position based on which of the plurality of z position images associated with each of the plurality of fiducials is sharpest; generating a surface profile based on the best z position for each of the plurality of fiducials; and imaging the probe array, wherein imaging the probe array is based upon one or more surface parameters, and wherein the one or more surface parameters are adjusted based on the surface profile. 2 Appeal2014-009618 Application 12/780,825 C. REJECTIONS The prior art relied upon by the Examiner as evidence in rejecting the claims on appeal is: Barenboim et al. Stem us 5,822,211 US 2006/0253035 Al Oct. 13, 1998 Nov. 9, 2006 C. A. Pellizzari et al., Image registration based on anatomic surface matching, INTERACTIVE IMAGE-GUIDED: NEUROSURGERY, pp. 47-62 (1993). Weiyin Ma and J.P. Kruth, Parameterization of randomly measured points for least squares fitting of B-spline curves and surfaces, COMPUTER-AIDED DESIGN, VOL. 27, No. 9, PP. 663---675, 1995. P.O. Chikomo, J.P. Mills, & S.L. Barr, Adaptive building Model Reconstruction from Airborne Lidar and Optical Imagery, (RSPSoc ANNUAL CONFERENCE, 2007). Xiaoxiao Bai, Vernon L. Towle, Eric J. He, and Bin He, Evaluation of cortical current density imaging methods using intracranial electrocorticograms andfunctional MRL NEUROIMAGE 35(2), pp. 598- 608, April 1, 2007. Claims 22 and 27-31 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Stem and Barenboim. Claims 23 and 24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Stem, Barenboim, and Bai. Claim 25 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Stem, Barenboim, Bai and Chikomo. Claim 26 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Stem, Barenboim, Bai, and Ma. Claims 32-36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Stem, Barenboim, and Pellizzari. 3 Appeal2014-009618 Application 12/780,825 IL ISSUE The principal issue before us is whether the Examiner erred in finding that Stem in combination with Barenboim teaches or would at least suggest "generating a surface profile based on the best z position for each of the plurality of fiducials" (claim 22, emphasis added). III. FINDINGS OF FACT Stern 1. Stem teaches calculating the sharpness of images and calculating the sharpness at z-positions. (i-f 145). 2. Stem teaches the array is in best focus when the calculated sharpness is a maximum. (i-f l 45). 3. Stem teaches probe arrays and positional locations with respect to fiducial references. (i-f 96). Barenboim 4. Barenboim teaches calculating a surface profile from signals and is in the field of optics and images. (Claim 7). IV. ANALYSIS In reaching this decision, we have considered all of Appellants' arguments and any evidence presented. We disagree with Appellants' arguments, and we adopt as our own: ( 1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellants' arguments. However, we highlight and address specific findings and arguments for emphasis as follows. 4 Appeal2014-009618 Application 12/780,825 Although Appellants concede Stem notes that "the plane of probe array 140 is usually not exactly parallel to the XY plane," Appellants contend Stem does not teach claim 22' s step of "generating a surface profile based on the best z position for each of the plurality of fiducials" "[b]ecause Stem treats probe arrays as having a planar shape." (App. Br. 5). Appellants also contend Barenboim does not teach this step because "Barenboim ... contains no disclosure relating to probe arrays" (Id.; App. Br. 9), and "there is nothing equivalent to a best z position in the method of Barenboim" (App. Br. 6). Appellants further contend "The Examiner's argument fails to explain why the results of combining the methods of Stem with the methods of Barenboim et al. would have yielded predictable results." (App. Br. 7). Furthermore, "even if the profiling of Barenboim et al. could be combined with the method of Stem, the combination would necessarily involve the transposition of a technique between entirely different contexts; for entirely different functions." (App. Br. 8). According to Appellants, "This problem of probe array substrates having non-planar, irregular surfaces was not previously recognized in the art." (Id.). That is, "Absent awareness in the art that probe array substrates tend to have irregular, non-planar surfaces that interfere with optimal imaging, there would have been no reason to modify the methods of Stem by adding the step of generating a surface profile." (App. Br. 9). However, the Examiner concludes, and we agree, that the claim language does not limit the probe array to having a planar or non-planar shape. (Ans. 4). In fact, we note claim 22 is silent as to planar shapes. We also agree with the Examiner that the claim itself does not define the claim 5 Appeal2014-009618 Application 12/780,825 term "surface profile" nor do the Appellants point to a definition in their Specification. (Id.). We further agree with the Examiner's finding that the combination of the Stem and Barenboim references provides the determination of the best z position (when sharpness is at a maximum), and from the best z position, the surface profile is calculated. (Ans. 4, FF 1--4). We further agree with the Examiner that the combination of the teachings would provide for analyzing the data as taught in Stem, and using that data to generate a surface profile as taught or at least suggested in Barenboim, to generate an updated parameter. (Id.) Appellants provide no evidence that combining the teachings of Stem and Barenboim as proffered by the Examiner would have been "uniquely challenging or difficult for one of ordinary skill in the art" (Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)), nor have Appellants provided any objective evidence of secondary considerations, which our reviewing court guides "operates as a beneficial check on hindsight." Cheese Systems, Inc. v. Tetra Pak Cheese and Powder Systems, Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013). Although Appellants present several arguments as enumerated above, they are merely attorney arguments as Appellants do not support these arguments with evidence. While attorney arguments are helpful when directing us to evidence in the record, the arguments themselves do not constitute evidence. Here, Appellants' arguments are unsupported by objective evidence. Argument of counsel cannot take the place of evidence lacking in the record. Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). As such, 6 Appeal2014-009618 Application 12/780,825 these arguments are entitled to little probative value. Jn re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Thus, we find Appellants' arguments unpersuasive. Furthermore, contrary to Appellants' argument, even assuming, arguendo, we were to agree that the Stem and Barenboim references solve a different problem than that the Appellants contend, such argument is not persuasive to show nonobviousness. See e.g., In re Lintner, 458 F.2d 1013, 1016 (CCPA 1972) (noting "[t]he fact that appellant uses [a chemical] for a different purpose does not alter the conclusion that its use in a prior art composition [would have been] prima facie obvious from the purpose disclosed in the references"); see also KSR International Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) ("[N]either the particular motivation nor the avowed purpose of the [Appellants] controls" in an obviousness analysis.). On this record, we find no error in the Examiner's rejection of independent claim 22 over Stem and Barenboim. Appellants do not provide different, substantive arguments for dependent claims 23-36. (App. Br. 9-12). Appellants merely repeat the same contentions for these dependent claims. Based on this record, we also affirm the§ 103 rejections of claims 23-3 6. V. CONCLUSION AND DECISION We affirm the Examiner's decision rejecting claims 22-36 under 35 U.S.C. § 103(a). 1 1 ln the event of further prosecution, we leave it to the Examiner to consider if the claims should also be rejected under 35 U.S.C. § lOL \Ve note abstract ideas have been identified by the courts by way of example, as including fundamental economic practices, certain methods of organizing human 7 Appeal2014-009618 Application 12/780,825 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED activities~ a11 idea of"" itself, and mathematical relationsl1ips a'l1d/t1r fOrrr1ulas~ S'ee Alice Corp. Pty. Ltd. v. CLS Bank int'!, 134 S. Ct. 2347, 2355-56 (2014). Here, we leave it to the Examiner to consider whether a person would also be capable of perfmming the claimed steps or functions as mental steps, or with the aid of pen and paper. See Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("That purely rnental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Suprerne Court in Gottschalk v. Benson."). That is, "a method that can be perfonned by human thought alone is merely an abstract idea and is not patent-eligible under§ 101." Id. at 1373. \Ve urge the Examiner to "consider the elements of each claim both individually and 'as an ordered combination' to determine whether the additional elements 'transfonn the nature of the claim' into a patent-eligible appHcation." Alice, 134 S. Ct. at 2355 (quoting Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1298, 1297)). The Supreme Court guides: "the mere recitation of a generic computer cannot transfonn a patent-ineligible abstract idea into a patent-eligible invention." Id. at 2358. 8 Copy with citationCopy as parenthetical citation