Ex Parte Wong et al

Board of Patent Appeals and Interferences

Dec 15, 2011

10794334 (B.P.A.I. Dec. 15, 2011)

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
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/794,334 03/05/2004 Kam Lin Wong 11.033011 US 9392
41696 7590 12/15/2011
VISTA IP LAW GROUP LLP
12930 Saratoga Avenue
Suite D-2
Saratoga, CA 95070
EXAMINER
WHALEY, PABLO S
ART UNIT PAPER NUMBER
1631
MAIL DATE DELIVERY MODE
12/15/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte KAM LIN WONG, LOUISE EISENSTEIN,
and DAVID ZAHNISER
__________

Appeal 2011-010674
Application 10/794,334
Technology Center 1600
__________

Before TONI R. SCHEINER, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the Patent
Examiner’s rejection of claims to a method for classifying a biological
specimen. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.
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STATEMENT OF THE CASE
Claims 17-23, 56-62, and 116-145 are on appeal. (App. Br. 2.) Claim
17 is representative and reads as follows:
17. A method for classifying a biological specimen, comprising:
identifying a number of objects of interest (OOIs) within the
biological specimen;
measuring a nuclear area of each OOI;
measuring a nuclear integrated optical density of each OOI;
generating a scatter plot of the measured nuclear areas versus the
nuclear integrated optical densities; and
classifying the biological specimen as normal at least partially based
on a distribution characteristic of points within the scatter plot.

The claims stand rejected as follows:
 claims 17-23, 116-117, and 122-128 under 35 U.S.C. 103(a) as
unpatentable over Lee,1 Bacus,2 and Asano Toshio3 (Ans. 5-9);
 claims 17-23, 56-62, 116-132, 134-145, 148, 149 under 35 U.S.C.
103(a) as unpatentable over Lee, Bacus, Asano Toshio, Greenfield,4
and Ellis5 (Ans. 10-13); and
 claims 17-23 and 56-62, provisionally, on the ground of nonstatutory
obviousness-type double patenting over claims 16-20 and 61-64 of co-

1 Shih-Jong J. Lee et al., US 6,137,899, Oct. 24, 2000.
2 James W. Bacus, US 4,097,845, June 27, 1978.
3 Asano Toshio et al., Automatic Color Quality Evaluation of Imaging
Device, J71-D TRANSACTIONS OF THE INSTITUTE OF ELECTRONICS,
INFORMATION AND COMMUNICATION ENGINEERS D 118-25 (1988).
4 Mary Lou V. H. Greenfield et al., A Statistics Primer Correlation and
Regression Analysis, 26 AM. J. SPORTS MED. 34-39 (1998).
5 Tim Ellis et al., Ellipse Detection and Matching with Uncertainty, 10
IMAGE AND VISION COMPUTING ARCHIVE 136-144 (1992).
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pending Application No. 10/795,012 in view of Lee, Bacus, and
Asano Toshio.
OBVIOUSNESS
The Issue
The same issue is dispositive for both obviousness rejections and we
therefore consider them together.
The Examiner’s position is that Lee taught a method for classifying
biological specimens as normal or suspicious using an image processor that
performs all the claimed steps except that Lee (i) generated a histogram of
measured nuclear area and nuclear integrated density rather than a scatter
plot, and (ii) used the histogram to classify the specimen rather than a scatter
plot. (Ans. 6-7.) According to the Examiner, Bacus taught a method and
system for classifying biological specimens, involving summed optical
density and nuclear area. (Id. at 7.) The Examiner found that Bacus
generated scatterplots including size and hemoglobin content data, wherein
the hemoglobin content was represented as integrated optical density. (Id. at
8, citing Bacus col. 23; see also Ans. 16, citing Bacus col. 11.) According to
the Examiner, samples were classified as normal or abnormal based on
decision logic graphically represented by a decision space consisting of data
points on scatter plots. (Id., citing Figs. 12-15.) Citing in addition Asano
Toshio’s methods using scatterplots to evaluate images, the Examiner
concluded that it would have been obvious to have generated a scatter plot
with Lee’s optical density and nuclear area data “since one skilled in the art
would recognize that scatter plots are a generic tool for graphically
representing different types of known data with predictable results, as shown
by Bacus, for the benefit of making positive or negative correlations
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between the data, as suggested by Bacus.” (Id. at 9.) “It would have been
obvious to someone of ordinary skill in the art at the time of the instant
invention to have classified unclassified specimen as normal based on the
distribution of points within the scatter plots made obvious by Lee and
Bacus . . . since one skilled in the art would recognize that qualitative
decisions about data can be made using scatter plots, as taught by Bacus, and
since Asano additionally shows that scatter plots enable one to evaluate
images as good or defective using intensity and area data.” (Id.)
Appellants contend that even if Lee, Bacus, or Asano teach using a
scatter plot for any purpose, “none of these references teach classifying a
specimen as ‘normal’ at least partially based on a distribution characteristic
of points within a scatter plot.” (App. Br. 5.) According to Appellants, “Lee
does not teach or suggest the use of histogram plots and scattergrams for
classification,” and the rejection “failed to provide a rational basis for why it
would have been obvious . . . to use histogram plots and scattergrams for
classification.” (Id. at 6.) Appellants read Bacus as teaching classifying
cells according to threshold values, which threshold values were determined
by generating scatter plots of area vs. hemoglobin of cells in samples known
to have specific abnormalities. (Id. at 7.) “Thus, Bacus does not teach or
suggest generating a scatter plot of the measured nuclear areas versus the
nuclear integrated optical densities of the plurality of OOIs in an
unclassified biological specimen, and then classifying the unclassified
biological specimen based on a distribution characteristic of points within
the scatter plot.” (Id.) Appellants dispute the Examiner’s finding that Bacus
taught representing hemoglobin content as integrated optical density. (Id. at
8; Reply Br. 3-4.) Appellants further contend that Bacus’ area vs.
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hemoglobin scatter plots do not teach or suggest nuclear area vs. nuclear
integrated optical density scatter plots. (App. Br. 8.) Appellants contend
that Asano Toshio is not analogous art, and also argue that Asano Toshio
“does not cure the deficiencies of Lee and Bacus.” (Id. at 9.)
Analysis
Appellants dispute the rejections’ finding that Bacus described using
nuclear area data. The rejections did not cite an explicit disclosure by Bacus
on this point, and the Examiner responded that “one skilled in the art would
have recognized that scatter plots, such as those taught by Bacus, could be
populated with nuclear data and IOD [integrated optical density] data, since
histograms and scatter plots are equivalent statistical tools for graphically
representing data.” (Ans. 16-17.) This response seems to concede that
Bacus did not in fact describe acquiring and using nuclear area, which is a
reasonable concession in view of the notorious fact that the red blood cells
Bacus described do not have nuclei. While the person of ordinary skill in
the art may have known that scatter plots could be populated with nuclear
data and IOD data for graphically representing data, the claimed invention is
not simply a method of graphical representation. That is, the alleged
equivalence of histograms and scatter plots for the limited purpose of
graphical representation is insufficient to show the obviousness of a method
including a step in addition to generating a graphical representation.
The claimed method additionally includes classifying the biological
specimen at least partially based on a distribution characteristic of points
within the scatter plot. Appellants contend that neither Lee nor Bacus
classified cells in this way, and that while Bacus showed scatterplots, they
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were generated not from unclassified cell data (as in the claimed method)
but from data taken from cells known to have specific abnormalities. (Reply
Br. 3.) Appellants’ contentions are consistent with the evidence. The
rejections did not present an evidenced-based rationale showing that it
would have been obvious to generate a scatter plot from nuclear area data
and nuclear integrated optical density acquired from a specimen and then
classify the specimen based on a distribution characteristic of points within
the plot.

OBVIOUSNESS-TYPE DOUBLE PATENTING
Appellants do not contest the provisional rejection of claims 17-23
and 56-62 on the ground of nonstatutory obviousness-type double patenting
(see App. Br. 4.) We therefore summarily affirm it. See MANUAL OF
PATENT EXAMINING PROCEDURE § 1205.02 (“If a ground of rejection stated
by the examiner is not addressed in the appellant’s brief, that ground of
rejection will be summarily sustained by the Board.”).

SUMMARY
We reverse the rejection of claims 17-23, 116-117, and 122-128 under
35 U.S.C. 103(a) as unpatentable over Lee, Bacus, and Asano Toshio.
We reverse the rejection of claims 17-23, 56-62, 116-132, 134-145,
148, 149 under 35 U.S.C. 103(a) as unpatentable over Lee, Bacus, Asano
Toshio, Greenfield, and Ellis.
We affirm the provisional rejection of claims 17-23 and 56-62 on the
ground of nonstatutory obviousness-type double patenting.

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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-IN-PART

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