Ex Parte Zust et alDownload PDFPatent Trial and Appeal BoardAug 20, 201311469976 (P.T.A.B. Aug. 20, 2013) Copy Citation 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 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/469,976 09/05/2006 Reto Zust 033997.00141 7323 26712 7590 08/20/2013 HODGSON RUSS LLP THE GUARANTY BUILDING 140 PEARL STREET SUITE 100 BUFFALO, NY 14202-4040 EXAMINER MICHALSKI, SEAN M ART UNIT PAPER NUMBER 3724 MAIL DATE DELIVERY MODE 08/20/2013 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RETO ZUST and HEINZ ZIMMERMANN ____________ Appeal 2011-008310 Application 11/469,976 Technology Center 3700 ____________ Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and JOHN W. MORRISON, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 1 and 5-7. App. Br. 2. Claims 2-4 have been cancelled. Id. Claims 8-31 have been withdrawn by the Examiner. See id. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. Appeal 2011-008310 Application 11/469,976 2 CLAIMED SUBJECT MATTER Claim 1, the sole independent claim on appeal, is representative of the subject matter on appeal and is reproduced below. 1. An apparatus for producing multiple images of a specimen, the apparatus comprising: a sliding microtome including a specimen holder movable in a plane for carrying a specimen, a knife holder arranged above the plane, and a knife held by the knife holder, the knife having a cutting edge for removing layers of the specimen and for producing a respective new cut surface on the specimen, the cutting edge facing a front end of the sliding microtome corresponding to a starting position of the specimen holder; a knife holder support for mounting the knife holder on the apparatus, wherein the knife holder support for the knife holder is displaceable along a direction perpendicular to the plane in which the specimen holder is movable; a microscope mounted on the sliding microtome, the microscope defining an object field and a focal plane, wherein the focal plane of the microscope is coplanar with each new cut surface on the specimen; a microscope holder for mounting the microscope on the apparatus above the plane in which the specimen holder is movable; and a camera attached to the microscope for respectively acquiring an image of each new cut surface of the specimen when the specimen is moved by the specimen holder into the object field of the microscope to a photo position located at a rear end of the sliding microtome opposite from the front end of the sliding microtome. Appeal 2011-008310 Application 11/469,976 3 REJECTIONS The following Examiner’s rejections are before us for review: I. claims 1 and 5 are rejected under 35 U.S.C. § 103(a) as unpatentable over So (US 7,372,985 B2, iss. May 13, 2008)1; II. claims 6 and 7 are rejected under 35 U.S.C. § 103(a) as unpatentable over So and Persson (US 3,103,844, iss. Sep. 17, 1963); III. claim 1 is rejected under 35 U.S.C. § 103(a) as unpatentable over Reichel (US 4,505,175, iss. Mar. 19, 1985), Mohun (US 6,992,760 B2, iss. Jan. 31, 2006), Leighton (US 5,301,671, iss. Apr. 12, 1994) and Persson; and IV. claims 1 and 5-7 are rejected under 35 U.S.C. § 103(a) as unpatentable over Reichel, Mohun, Leighton, Persson, and McCormick (US 5,461,953, iss. Oct. 31, 1995). OPINION Rejections I and II: Obviousness over So, and So and Persson, respectively Claim 1 is directed to “[a]n apparatus for producing multiple images of a specimen” and calls for a sliding microtome, “including a specimen holder movable in a plane for carrying a specimen” and “a knife holder arranged above the plane.” The Examiner finds that So’s figure 6 illustrates a sliding microtome with a specimen holder 158 holding a specimen 160 and a knife holder, which is depicted to the right of the specimen in figure 6. See Ans. 4. 1 The Examiner additionally cited to So (US 2005/0036667 A1, Feb. 17, 2005). Ans. 3. In this opinion, citations to So refer to US 7,372,985 B2. Appeal 2011-008310 Application 11/469,976 4 Figure 6 is a diagram illustrating a procedure for cutting serial sections from a sample block. So, col. 4, ll. 34-37. It is notable that “So . . . defines the optical axis (‘up-down’ of the page) as the z-axis, ‘left-right’ of the page as the x-axis, and ‘in-out’ of the page as the y-axis.” Reply Br. 2, n.1 (citing So, col. 12, ll. 38-41). The Examiner finds that the Y-Z plane corresponds to the claimed plane in which the specimen holder is movable. Ans. 19 (“[The] examiner was relying upon the y-z movement plane of the sample holder.”). The Appellants assert that, according to claim 1, if the Y-Z plane is the movement plane of the specimen holder, then So’s knife holder is required to be arranged above the Y-Z plane. See Reply Br. 2; App. Br. 5. The Appellants persuasively contend that “the Y-Z plane intersects the knife holder cutting plane.” Reply Br. 2 (emphasis omitted). As such, So’s knife holder is not arranged above the Y-Z plane and the Examiner’s finding is in error. Additionally, it is notable that the Examiner finds that specimen holder 158 moves in all planes. Ans. 4. For the purposes of this appeal only, even if we were to assume this is true, the Examiner’s rejection is still in error. If the Examiner relied on So’s X-Y plane to be the plane in which the specimen holder was moveable, the Examiner’s rejection is in error because claim 1 also calls for a knife holder support for the knife holder which “is displaceable along a direction perpendicular to the plane in which the specimen holder is movable.” The only direction the knife is displaced is to the left to cut the sample and then to the right to retract the knife to its original position. See So, fig. 6, steps 4-5. For the purposes of the appeal only, assuming that the knife holder support is also displaced during this motion, then it would also move left and right. However, a left-right Appeal 2011-008310 Application 11/469,976 5 displacement of the knife holder support is parallel rather than perpendicular the X-Y plane, as required in claim 1. See App. Br. 5. Furthermore, if the Examiner relied on So’s X-Z plane to be the plane in which the specimen holder was moveable, the Examiner’s rejection is also in error. Simply put, So’s knife holder is required to be arranged above the X-Z plane, but So’s knife holder intersects the knife holder cutting plane. See So, fig. 6. As such, So’s knife holder is not arranged above the X-Z plane. For the foregoing reasons the rejection of claim 1, and dependent claim 5, as unpatentable over So is not sustained. The remaining rejection of claims 6 and 7 based on So and Persson relies on the same erroneous findings as discussed above. As such, we cannot sustain the rejection of claims 6 and 7 as unpatentable over So and Persson. Rejection III: Obviousness over Reichel, Mohun, Leighton, and Persson The Examiner finds that Reichel’s specimen slide 19 and dual cylindrical blade clamps 16 corresponds to the claimed specimen holder and knife holder, respectively. Ans. 7. As discussed above, claim 1 calls for the knife holder to be arranged above the plane in which the specimen holder is movable. Accordingly, for the Examiner’s finding to have adequate evidentiary support, the cylindrical blade clamps 16 must be arranged above the plane in which the specimen holder is movable. Reichel discloses that the specimen slide 19 is movable up and down in a slide guide 20. Reichel, col. 2, ll. 39-41, fig. 1. The up and down motion defines the plane in which the specimen holder is movable. That plane is depicted in figure 1 to the right of the cylindrical blade clamps 16. As such, the cylindrical blade clamps 16 are not above the plane in which Appeal 2011-008310 Application 11/469,976 6 the specimen slide 19 is movable. The Examiner acknowledges that in a “gravitational sense” the cylindrical blade clamps 16 are not above the plane in which the specimen slide 19 is movable. See Ans. 7. The Examiner also finds that “[f]rom some orientations the knife holder [16] of Reichel would be viewed as ‘above’ the plane of the sample holder movement.” Ans. 7-8, 14. However, the Examiner does not explain what orientations of Reichel’s knife holder are “above” the plane of the movement of the specimen slide 19. As such, this finding is unsubstantiated and cannot be relied upon as evidence to support the Examiner’s rejection. Alternatively, the Examiner finds that “Mohun and Leighton both disclose microtomes which function in a horizontal attitude (with respect to the slice plane) whereas Reichel discloses a vertical attitude (the slice is in the vertical plane). Mohun specifically contemplates both attitudes for the knife (see figures 1 and 2 respectively).” Ans. 17 (emphasis omitted). See Ans. 8, 14. The Examiner concludes that: It would have been obvious to one of ordinary skill in the art to have the attitude of the Reichel Microtome be rotated 90 degrees, since tissue samples are known in the microtome art to be cut in a vertical and horizontal attitude as seen in Mohun and Leighton specifically, and changing the attitude does not materially affect the action of the device in any unexpected or unobvious ways. Ans. 17. The Appellants contend that the Examiner lacks a disclosure in the prior art, i.e., Reichel, Mohun, and Leighton, that teaches altering the vertical attitude of a microtome to be a horizontal attitude by rotating the microtome 90 degrees. See Reply Br. 4-6. The Appellants also contend that Reichel’s microtome would be materially altered and would not function Appeal 2011-008310 Application 11/469,976 7 properly if rotated on its side. App. Br. 12, Reply Br. 5. The Appellants point out that blade holder 15 is as resting atop the blade slide 14 via a three point base comprising support points 29, 30, and 31, and each support point includes a ball and ball socket positioned to bear the weight of blade holder 15 in a vertical orientation. App. Br. 12. The Appellants assert that “[i]f the microtome were placed on its side, there would be no vertical support to hold the displaceable blade holder 15 up because the support points 29, 30, and 31 are intended to bear the weight of the blade holder 15 in its original orientation.” Id. In addition, the Appellants point out that “placing the microtome on its side would angle the microtome because the specimen slide holder 12 and the base 10 are offset from one another.” Id. The Examiner’s response, at pages 25-26, of the Answer, lacks sufficient details to address the Appellants’ contentions. Thus, we agree with the Appellants that the Examiner’s conclusion that it would have been obvious to one of ordinary skill in the art to rotate the attitude of Reichel’s microtome 90 degrees lacks rational underpinning. App. Br. 11-12. The Examiner also concludes that “[i]t would have been obvious to one skilled in the art at the time of the invention to rotate the relative positions of the blade and sample holder, since it has been held that rearranging the parts of an invention involves only routine skill in the art.” Ans. 17 (emphasis added) (citing In re Japikse, 181 F.2d 1019 (CCPA 1950)). However, for similar reasons discussed above, this reasoning would not result in the cylindrical blade clamps 16 being above the plane in which the specimen slide 19 is movable and/or lacks rational underpinning. Lastly, after finding that Leighton and Mohun both disclose microtomes with horizontal attitudes and Mohun includes a vertical attitude, Appeal 2011-008310 Application 11/469,976 8 the Examiner concludes that “[t]he substitution of art recognized equivalents is ordinarily a matter of routine skill, and not an invention.” Ans. 17. However, the substitution proposed by the Examiner does not strike us as being an obvious combination of prior art elements or a simple substitution of one known element for another, leading to predictable results, or any other indicator of obviousness. Rather, an extensive amount of modification is needed to alter the attitude of Reichel’s microtome 90 degrees. Thus, the rejection of claim 1 as unpatentable over Reichel, Mohun, Leighton, and Persson is not sustained. Rejection IV: Reichel, Mohun, Leighton, Persson, and McCormick Under this ground of rejection the Examiner rejects claim 1 along with dependent claims 5-7. Ans. 17-19. However, the Examiner relies of the same findings and conclusions for the rejection of claim 1 under Reichel, Mohun, Leighton, and Persson. See Ans. 17-19. Additionally, the remaining rejection based on Reichel, Mohun, Leighton, Persson, and McCormick relies on the same erroneous findings and/or lack of rational underpinning as discussed above with regard to the rejection of claim 1 as unpatentable over Reichel, Mohun, Leighton, and Persson. As such, we cannot sustain the rejection of claims 1 and 5-7 under 35 U.S.C. § 103(a) as unpatentable over Reichel, Mohun, Leighton, Persson, and McCormick. DECISION We REVERSE the rejections of claims 1 and 5-7. REVERSED Appeal 2011-008310 Application 11/469,976 9 hh Copy with citationCopy as parenthetical citation