JEOL Ltd.

Patent Trials and Appeals Board

May 27, 2021

2020003180 (P.T.A.B. May. 27, 2021)

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.
14/667,746 03/25/2015 Shinichi Tomii 7314-153372 4361
28289 7590 05/27/2021
THE WEBB LAW FIRM, P.C.
ONE GATEWAY CENTER
420 FT. DUQUESNE BLVD, SUITE 1200
PITTSBURGH, PA 15222
EXAMINER
XU, XIAOYUN
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
05/27/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHINICHI TOMII
Appeal 2020-003180
Application 14/667,746
Technology Center 1700
Before CATHERINE Q. TIMM, JAMES C. HOUSEL, and
DEBRA L. DENNETT, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON REHEARING
Appellant1 requests rehearing of a Decision on Appeal mailed March
31, 2021,2 affirming the Examiner’s decision rejecting claims 1 and 4–7.
A Request for Rehearing must state with particularity the points
believed to have been misapprehended or overlooked by the Board.
Arguments not raised and evidence not previously relied upon in the briefs

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies JEOL Ltd. as the real party in interest.
Replacement Appeal Brief (“Appeal Br.”) filed January 8, 2020, 2.
2 Hereinafter, “Decision.” In re Tomii, Appeal No. 2020-003180 (Mar. 31,
2021).
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Application 14/667,746

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before the Board are not permitted in a Request except as permitted by
37 C.F.R. §§ 41.52(a)(2) and (a)(3). See 37 C.F.R. § 41.52(a)(1) (2018).
We have reconsidered the Decision in light of Appellant’s comments
in the Request for Rehearing filed May 17, 2021,3 and find no points
misapprehended or overlooked in the disposition of the affirmed
obviousness rejection. We remain of the opinion that the subject matter of
the claims listed in the affirmed rejection is unpatentable.
I.
The Board’s Decision affirmed the Examiner’s rejection of claims 1
and 4–7 under 35 U.S.C. § 103(a) as unpatentable over Wakatake in view of
MLab and McNeil. Decision 5–15.
In the Request, Appellant submits that the Board misapprehended or
overlooked a number of points Appellant raised, in particular, with regard to
the feature of displaying, on a graph measurement data, a mark in the form
of a line or non-numeric symbol indicating the actual timing of when a
reagent and a specimen were mixed. Request 2. Appellant believes that the
Board may not have appreciated the purpose and reason for displaying such
a mark that indicates the actual timing that the specimen and reagent were
mixed. Id. Appellant explains that this mark enables an operator to check
whether the specimen and reagent were added at a correct timing set in
advance and to determine that the analysis is appropriately performed based
on the time difference between this actual time and the start of the reaction
process. Id. at 2–5. In contrast, Appellant contends that McNeil’s vertical
line shown in Figure 9C does not correspond to the claimed mark although

3 Hereinafter, “Request.”
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Application 14/667,746

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aligned with sample addition, because it does not indicate any specific
sample addition timing with respect to any particular sample. Id. at 6.
Appellant also contends that McNeil shows that the reaction starts
immediately after sample addition, and does not display a mark for
determining if an abnormality exists in the reaction after reagent addition. Id.
II.
We are not persuaded that our Decision misapprehended or
overlooked Appellant’s arguments regarding the limitation of displaying, on
a graph measurement data, a mark in the form of a line or non-numeric
symbol indicating the actual timing of when a reagent and a specimen were
mixed. The Decision affirms the Examiner’s obviousness rejection “based
essentially on the factual findings and reasons the Examiner provides in the
Answer, Advisory Action, and Final Office Action.” Decision 5. In this
context, the Examiner found that Wakatake discloses an automatic analyzer
having a recording section that records an actual timing when a specimen
and reagent were actually mixed. Ans. 4. However, the Examiner
acknowledged that Wakatake does not teach a display control section that
creates a graphical display of the measurement data indicating a change over
time of the optical property being measured in the reaction container holding
the mixed specimen and reagent with a line or non-numerical mark
indicating the actual mixing time. Id. at 6. Nonetheless, the Examiner found
that McNeil teaches an automatic analyzer having a display control section
with a graphical user interface creating a display of the measurement data
indicating a change over time of the optical property being measured in a
reaction container holding the mixed specimen and reagent with a line mark
indicating the actual mixing time. Id. at 6–7. The Examiner concluded that it
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4
would have been obvious to have modified Wakatake’s analyzer to provide a
graphical display of the measurement data indicating a change over time of
the optical property being measured in a reaction container holding the
mixed specimen and reagent with a line mark indicating the actual mixing
time, “to gain the advantage of easily checking the operation status” and
“because a necessary wait time is required for the [optical property] to be
developed after mixing.” Id. at 7–8.
To the extent, that Appellant contends that McNeil’s vertical line
mark for sample addition is not used for the same purpose as Appellant’s
mark, we note that the prior art need not have the same purpose, and the
reason for combining need not be the same as Appellant’s. It is well settled
that a conclusion of obviousness does not require that the motivation or
purpose of the skilled artisan be the same as an applicant’s for practicing a
claimed invention. In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996); In re
Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990), cert. denied, 500 US 904 (1991).
“In determining whether the subject matter of a patent claim is obvious,
neither the particular motivation nor the avowed purpose of the patentee
controls. What matters is the objective reach of the claim. If the claim
extends to what is obvious, it is invalid under § 103.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 419 (2007). “As long as some motivation or
suggestion to combine the references is provided by the prior art taken as a
whole, the law does not require that the references be combined for the
reasons contemplated by the inventor.” In re Beattie, 974 F.2d 1309, 1312
(Fed. Cir. 1992).
Here, Wakatake already discloses recording the actual time of mixing
the specimen and reagent. McNeil is merely relied on to demonstrate that it
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was known in the art to display measurement data including sample addition
(i.e., specimen and reagent mixing) timing. An ordinary artisan would have
understood from McNeil’s teaching that Wakatake’s measurement data,
which corresponds to McNeil’s measurement data, could likewise have been
graphically displayed with a line mark at the actual mixing time, and would
have done so in order to permit visualization of the measurement data over
time including the actual mixing time. Whatever additional advantage
Appellant asserts in graphically displaying the measurement data over time,
including the mark for the actual mixing time, is likewise necessarily present
in McNeil’s display.
Moreover, even if Appellant is correct that McNeil’s vertical line
shown in Figure 9C, although aligned with sample addition, does not
correspond to the claimed mark because it does not indicate any specific
sample addition timing with respect to any particular sample, Wakatake’s
display as modified in view of McNeil would display a line mark indicating
the actual mixing time for a specific reaction container because Wakatake
teaches recording the actual mixing time for a specific reaction container.
Appellant’s argument in this regard focuses solely upon McNeil without
consideration of what the combination of the applied references, as a whole,
would have suggested to one of ordinary skill in the art. In re McLaughlin,
443 F.2d 1392, 1395 (CCPA 1971). “[T]he test for combining references is
not what the individual references themselves suggest but rather what the
combination of disclosures taken as a whole would suggest to one of
ordinary skill in the art.”
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Application 14/667,746

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III.
The status of the rejection and claims remains as follows.
Outcome of Decision on Rehearing:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Denied Granted
1, 4–7 103(a) Wakatake, MLab,
McNeil
1, 4–7

Final Outcome of Appeal after Rehearing:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reverse
d
1, 4–7 103(a) Wakatake, MLab,
McNeil
1, 4–7
IV.
The Decision has been reconsidered in light of Appellant’s arguments
set forth in the Request. However, the Request is denied, and the Decision is
not modified in any respect.
This Decision on the Request incorporates our Decision, mailed
March 31, 2021, and is final for the purposes of judicial review. See 37
C.F.R. § 41.52(a)(1).
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

REHEARING DENIED