Ex Parte Zust et al

Patent Trial and Appeal Board

Aug 20, 2013

11469976 (P.T.A.B. Aug. 20, 2013)

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 Claims 8-31 have been withdrawn by the Examiner.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

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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.

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Application 11/469,976

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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.
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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
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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
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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
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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,
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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

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