Ex Parte Yoneyama

Board of Patent Appeals and Interferences

Dec 18, 2009

10871817 (B.P.A.I. Dec. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte TAKASHI YONEYAMA
____________

Appeal 2009-002261
Application 10/871,817
Technology Center 2800
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Decided: December 18, 2009
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Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejection of claims 26, 28, 29, 38, 40, 49, 51, 61, and 64-70. We have
jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE CASE
Claim 26 is representative of the subject matter on appeal and is set
forth below:
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26. A microscope system, comprising:
a macro image capture unit which captures a macro image of an
observation object;
a definition unit which defines, after the macro image is
captured, a plurality of partial areas such that the plurality of partial
areas covers the captured macro image;
a partial image capture unit which captures a plurality of partial
images of the observation object in each of the partial areas, such that
in each of the partial areas said partial images are: (i) stacked in a
direction along an axis of an objective lens used in capturing the
partial images, with a pitch substantially equivalent to a specific depth
of focus of the objective lens used in capturing the partial images, and
(ii) at same x- and y- coordinates in focal planes perpendicular to the
axis of the objective lens;
a storage unit which stores the macro image and the plurality of
partial images;
a focused partial image generation unit which generates a
properly focused partial image in each of the partial areas by
accumulating respective partial images in the stack corresponding to
the partial area and applying a recovery process to each of the
accumulated images utilizing a spatial frequency filtering such that
the properly focused partial image is in an in-focus state at every
position therein along the direction along the axis of the objective
lens; and
a focused image generation unit which generates a single
properly focused whole image of the observation object by combining
the properly focused partial images which are generated respectively
for the partial areas from the respective partial images in the stack
corresponding to the partial area, each of said partial images in the
stack corresponding to one partial area being at same x- and y-
coordinates in focal planes perpendicular to the axis of the objective
lens;
wherein the properly focused whole image is displayed in
response to receiving an instruction for a low magnification rate
specified by the instruction.

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The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Bacus 6,272,235 B1 Aug. 7, 2001
Bacus 2004/0004614 A1 Jan. 8, 2004
Honda 5,124,842 Jun. 23, 1992

THE REJECTION(S)
Claims 26, 28, 29, 38, 40, 49, 51, 52, 61 and 64-70 are rejected as
being obvious under 35 U.S.C. § 103 in view of Bacus '614, Bacus '235, and
Honda.
ISSUE
Has Appellant shown reversible error in the Examiner’s determination
that the applied art teaches the following aspects of Appellants’ claim 26:
“a partial image capture unit which captures a plurality of partial images of
the observation object in each of the partial areas, such that in each of the
partial areas said partial images are: (i) stacked in a direction along an axis
of an objective lens [emphasis added]. . .”
AND
“a focused partial image generation unit which generates a properly focused
partial image in each of the partial areas by accumulating respective partial
images in the stack corresponding to the partial area . . .”?
We answer this in the affirmative.

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FINDINGS OF FACT
The Examiner’s statement that “both Bacus ‘614 and Honda teach
properly focused partial images that are stacked along the axis of the
objective lens” (Ans. 8) evinces error in the Examiner’s interpretation of
claim 26. Claim 26 does not recite such a feature.

PRINCIPLES OF LAW
When determining whether a claim is obvious, an examiner must
make “a searching comparison of the claimed invention – including all its
limitations – with the teaching of the prior art.” In re Ochiai, 71 F.3d 1565,
1572 (Fed. Cir. 1995) (emphasis added).

ANALYSIS
As an initial matter, Appellant only argues claim 26 and indicate that
the other independent claims 38, 49, and 61 recite similar subject matter. Br.
12-13. In other words, the aspects of claim 26 at issue also exist in these
other claims. Therefore, our determinations with respect to claim 26 apply
to these other claims, i.e., these claims stand or fall with claim 26.
Appellant argues that the Examiner’s interpretation of Baucus ‘614 is
not internally consistent with respect to the focused partial image generation
unit of claim 26. Br. 13. Reply Br. 2-5. Appellant explains that the
Examiner relies upon a modified version of Bacus ‘614’s Figure 9, as shown
on page 7 of the Answer, for teaching “a properly focused partial image”.
Reply Br. 3. Appellant points out that the Examiner asserts that “both Bacus
‘614 and Honda teach properly focused partial images that are stacked along
the axis of the objective lens” (Ans. 8). Reply Br. 3. Appellant rightly
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points out that claim 26 requires that the images that are stacked along the
direction of the axis of the objective lens are “partial images” and not
“properly focused partial images”. Reply Br. 4.
Indeed, claim 26 sets forth a distinction between the (a) “a partial
image capture unit which captures a plurality of partial images . . . such that
in each of the partial areas said partial images are: (i) stacked in a direction
along an axis of an objective lens [emphasis added]” versus (b) “a focused
partial image generation unit which generates a properly focused partial
image in each of the partial areas . . .”.
Hence, it does appears that the Examiner has misconstrued these
separate aspects of claims 26 as meant by Appellants on page 3 of the Reply
Brief when stating that “the Examiner has assigned meanings to the claim
terms that are not supported by the claims or specification”. The Examiner’s
very own statement that “both Bacus ‘614 and Honda teach properly focused
partial images that are stacked along the axis of the objective lens” (Ans. 8)
evinces the error in the Examiner’s interpretation of claim 26. As such, the
Examiner’s position does not support an obviousness determination. In re
Ochiai, 71 F.3d at 1572.
In view of the above, we reverse the rejection.

CONCLUSIONS OF LAW
Appellant has shown reversible error in the Examiner’s determination
that the applied art teaches the following aspects of Appellant’s claim 26:
“a partial image capture unit which captures a plurality of partial images of
the observation object in each of the partial areas, such that in each of the
partial areas said partial images are: (i) stacked in a direction along an axis
of an objective lens [emphasis added] . . .”
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AND
“a focused partial image generation unit which generates a properly focused
partial image in each of the partial areas by accumulating respective partial
images in the stack corresponding to the partial area . . .”.

DECISION
The rejection is reversed.

REVERSED

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