Ex Parte Wong et al

Board of Patent Appeals and Interferences

Dec 16, 2011

10795012 (B.P.A.I. Dec. 16, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/795,012 03/05/2004 Kam Lin Wong 11.039011 US 9016
41696 7590 12/16/2011
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
12/16/2011 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 ISENSTEIN,
and DAVID ZAHNISER
__________

Appeal 2011-008167
Application 10/795,012
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 16, 18-31, 61, 63-75, 149, 151, 161, and 162.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
Appeal 2011-008167
Application 10/795,012

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STATEMENT OF THE CASE
Claim 16 is representative and reads as follows:
16. A method for determining the stain quality of a plurality of stained
biological specimen slides, comprising:
using an imaging station to obtain images of each of the specimen
slides; and
using an image processor to process the specimen slide images to
identify a respective number of objects of interest (OOIs) within each of the
specimen slides, wherein for each specimen slide the image processor
measures a nuclear area of each identified OOI,
measures a nuclear integrated optical density of each identified OOI,
generates a scatter plot of the measured nuclear areas versus the
nuclear integrated optical densities, and
determines a stain quality of the specimen slide based at least partially
upon a distribution characteristic of points within the scatter plot.

The claims stand rejected as follows:
A) claims 16, 18, 19, 20, 61, 63, 64, 161, and 162 as unpatentable under
35 U.S.C. §103(a) over Lee,1 Bacus,2 and Wang;3
B) claims 21-23, 65-67, 149, and 151 as unpatentable under 35 U.S.C.
§103(a) over Lee, Bacus, Wang, and Greenfield;4
C) claims 24-28, 30, 31, 68-72, 74, and 75 as unpatentable under
35 U.S.C. §103(a) over Lee, Bacus, Wang, Greenfield, and Wilhelm;5

1 Shih-Jong J. Lee et al., US 6,137,899, issued Oct. 24, 2000.
2 James W. Bacus et al., Optical microscope system for standardized cell
measurements and analyses, 26 APPLIED OPTICS 3280-3293 (1987).
3 Xujing Wang et al., Quantitative quality control in microarray image
processing and data acquisition, 29 NUCLEIC ACIDS RES. e75 1-8 (2001).
4 Mary Lou V. H. Greenfield et al., A Statistics Primer Correlation and
Regression Analysis, AMER. J. SPORTS MED. 34-39 (1998).
5 Paul S. Wilhelm et al., US 5,671,288, issued Sept. 23, 1997.
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D) claims 16, 18-31, 61, 63-75, 149, 151, 161, and 162 as unpatentable
under 35 U.S.C. §103(a) over Lee, Bacus, Wang, Greenfield, Wilhelm, and
Riese;6 and
E) claims 16-20 and 61-64 as unpatentable on the grounds of
nonstatutory obviousness-type double patenting over claims 17-23 and 56-
62 of co-pending U.S. Patent Application Serial No. 10/794,334 in view of
Lee, Bacus, and Wang.
OBVIOUSNESS
The Issue
All the obviousness rejections are bottomed on findings that Lee
taught an image processor implemented method of determining stain quality
on specimen slides that differed from Appellants’ method at the steps where
Appellants’ method generates a scatter plot, and then determines stain
quality of the specimen slide based on a distribution characteristic of points
within the scatter plot. (Paper 20110215 at 2.) The Examiner found that at
those steps, Lee’s method generated a histogram and used the histogram to
determine stain quality. (Id.) After further finding that Bacus taught image
processor statistical analysis of similar specimen slide data by using both
histograms and scatter plots, and that Wang taught programs using scatter
plots for quality control of microarray image data, the Examiner concluded
that
[i]t would have been obvious to someone of ordinary skill in the art at
the time of the instant invention to have practiced the method of Lee
using SCATTER PLOTS, as taught by Bacus, above, instead of stain

6 W. de Riese et al., Quantitative DNA measurement by flow cytometry and
image analysis of human nonseminomatous germ cell testicular tumors, 22
UROL. RES. 213-220 (1994).
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histograms for analyzing the optical density and nuclear area data,
with a reasonable expectation of success, since one of ordinary skill in
the art would have recognized that scatter plots and histograms are
equivalent statistical tools for performing data analysis.

(Id.)
Appellants dispute that Lee taught using a histogram to determine
stain quality: “Lee only discloses that a stain histogram of cell size and
integrated optical density can be generated. Significantly, the stain histogram
is not a histogram of stain quality, but rather a histogram of stain related
features. (See col. 24, lines 27-31 of Lee).” (App. Br. 6.) Appellants’
reading is that
Lee does not teach or suggest that the stain quality is determined
based at least partially upon a distribution characteristic of points with
the histogram. In fact, Lee does not specifically disclose how or if the
histogram 140 is used in evaluating the stain quality.
After thoroughly reviewing Lee, Appellants cannot find any
disclosure that the Fig. 5 histogram 140 is used for any purpose other
than to collect and plot data. Lee discloses generating values
immediately after discussing the Fig. 5 histogram 140; however, these
values are computed independent of the histogram 140, and are used
to determine the confidence level that an object is truly abnormal (see
col. 25, line 66 to col. 26, line 10)—not the quality of the stain.

(Id.)
In sum, according to Appellants, the evidence does not support the
rejection’s finding that Lee taught determining a stain quality with the
histogram. After studying the record, we agree with Appellants’ reading of
Lee, and agree that the finding is not supported by the evidence. Because
that finding was crucial to each of the obviousness rejections, A through D
as listed above, and because the evidentiary deficiency is not made up for in
the rejections of record, we reverse the obviousness rejections.
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OBVIOUSNESS-TYPE DOUBLE PATENTING
Claim 17 from copending Application No. 10/794,334, over which
claim 16 and others were rejected, reads as follows:
17. A method for classifying an unclassified biological specimen, wherein
the unclassified biological specimen has not previously been classified as
normal or suspicious, the method comprising:
identifying a plurality of objects of interest (OOIs) within the
unclassified biological specimen;
measuring a nuclear area of each OOI in the unclassified biological
specimen;
measuring a nuclear integrated optical density of each OOI in the
unclassified biological specimen;
generating a scatter plot of the measured nuclear areas versus the
nuclear integrated optical densities of the plurality of OOIs in the
unclassified biological specimen;
and
classifying the unclassified biological specimen as normal at least
partially based on a distribution characteristic of points within the scatter
plot, wherein the identifying, measuring, generating and classifying are
performed by at least one image processor.

The Issue
The Examiner’s position is:
The instant claims result in determining stain quality of specimen
slides based upon a distribution of points within a scatter plot, while
the copending claims result in classification of specimen as normal or
abnormal based upon a distribution of points within a scatter plot.
However, a person of ordinary skill in the art would conclude that the
invention defined in the instant claims at issue would have been an
obvious variation of the claims of the cited copending application in
view of the teachings of Lee, Bacus, and Wang, who make obvious
the determination of stain quality using scatter plots, as set forth
above, and since Lee suggests stained slides are also analyzed to
determine their normality or abnormality [See at least Col. 25, Col.
26].

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(Final Rej. 11.)
Appellants contend:
None of the references cited, or claims 17-23 and 56-62 of co-pending
U.S. Patent Application Serial No. 10/794,334, teach or suggest
determining a stain quality of a specimen slide based at least partially
upon a distribution characteristic of points within a scatter plot, or
determining a stain quality of a specimen slide based at least partially
upon a spread of the point distribution within a scatter plots, as
required by independent claims 16 and 61, respectively. Further, these
limitations of independent claims 16 and 61 are not addressed in the
obviousness-type double patenting rejection.

(App. Br. 13.)
The image processor in copending claim 17 classifies a specimen as
normal, but that activity does not appear to be or suggest determining stain
quality. We have agreed with Appellants that Lee, Bacus, and Wang did not
suggest a method using an image processor to determine stain quality based
at least partially upon a distribution characteristic of points within a
scatterplot, for the reasons given above under the Obviousness heading. We
conclude the evidence is insufficient to show that the claims on appeal are an
obvious variant of the copending claims.

SUMMARY
We reverse the rejection of claims 16, 18, 19, 20, 61, 63, 64, 161, and
162 as unpatentable under 35 U.S.C. §103(a) Lee, Bacus, and Wang.
We reverse the rejection of claims 21-23, 65-67, 149, and 151 as
unpatentable under 35 U.S.C. §103(a) over Lee, Bacus, Wang, and
Greenfield.
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Application 10/795,012

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We reverse the rejection of claims 24-28, 30, 31, 68-72, 74, and 75 as
unpatentable under 35 U.S.C. §103(a) over Lee, Bacus, Wang, Greenfield,
and Wilhelm.
We reverse the rejection of claims 16, 18-31, 61, 63-75, 149, 151,
161, and 162 as unpatentable under 35 U.S.C. §103(a) Lee, Bacus, Wang,
Greenfield, Wilhelm, and Riese.
We reverse the rejection of claims 16-20 and 61-64 as unpatentable on
the grounds of nonstatutory obviousness-type double patenting over claims
17-23 and 56-62 of co-pending U.S. Patent Application Serial No.
10/794,334 in view of Lee, Bacus, and Wang.

REVERSED

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