Michael Knop et al.

Patent Trials and Appeals Board

Aug 24, 2020

13371991 - (D) (P.T.A.B. Aug. 24, 2020)

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.
13/371,991 02/13/2012 Michael Knop 4280-149 9822
23448 7590 08/24/2020
HULTQUIST IP
P.O. BOX 14329
RESEARCH TRIANGLE PARK, NC 27709
EXAMINER
ALLEN, STEPHONE B
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
08/24/2020 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):
hip@hultquistip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL KNOP, MALTE WACHSMUTH, and
JÉRÉMIE CAPOULADE

Appeal 2019-005607
Application 13/371,991
Technology Center 2800
____________

Before ROMULO H. DELMENDO, JAMES C. HOUSEL, and
DEBRA L. DENNETT, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 1, 2, and 6–19.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42—i.e., the Inventors (Application Data Sheet filed February
13, 2012 at 1–2). The Appellant identifies “European Molecular Biology
Laboratory (EMBL)” as the real party in interest (Appeal Brief filed
February 11, 2019 (“Appeal Br.”) at 2).
2 See Appeal Br. 7–17; Reply Brief filed July 15, 2019 (“Reply Br.”) at 2–
14; Final Office Action entered July 12, 2018 (“Final Act.”) at 3–14;
Examiner’s Answer entered May 15, 2019 (“Ans.”) at 3–24.
Appeal 2019-005607
Application 13/371,991

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I. BACKGROUND
The subject matter on appeal relates to optical microscopes and to
associated methods (Specification filed February 13, 2012 (“Spec.”) ¶ 2).
Representative claim 1 is reproduced from the Claims Appendix to the
Appeal Brief, as follows:
1. A microscope having an illumination light path for
illuminating with an illumination light beam a sample
through an illumination objective lens and at least one
viewing light path for viewing the sample through a
detection objective lens, the microscope comprising
a tube lens, arranged in the illumination light path, in front
of the illumination objective lens,
an illumination light path focussing arrangement in the
illumination light path in front of the tube lens, the
illumination light path focussing arrangement including a
cylindrical lens, which focusses the illumination light
beam in one direction and leaves the illumination light
beam unchanged in another direction transverse to the
one direction, thus defining, at the intersection of the
illumination light path and the detection light path, a
substantially two-dimensional object illumination region
extending along an illumination direction of the
illumination light path and the other direction, and
an illumination region-confining device in the
illumination light path arranged between the cylindrical
lens and the illumination objective lens and for selectively
illuminating a portion of the substantially two-
dimensional object illumination region, the illumination
region-confining device comprising a width confining slit
and a length confining slit, the length confining slit being
arranged between the tube lens and the illumination
objective lens, wherein the portion of the substantially
two-dimensional object illumination region is confined at
least in the illumination direction and the other direction.
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(Claims App. 1 (emphasis added)). Claim 14, the only other independent
claim on appeal, recites similar “cylindrical lens” limitations as highlighted
above in reproduced claim 1 (id. at 3).
II. REJECTIONS ON APPEAL
The claims stand rejected under 35 U.S.C. § 103(a) (pre-AIA), as
follows:
A. Claims 1, 2, 6, and 14 as unpatentable over Lippert et al.3
(“Lippert”);
B. Claims 7–13, 15, 16, and 19 as unpatentable over Lippert in
view of Betzig4 (including its Provisional Application
61/386,342);
C. Claim 17 as unpatentable over Lippert in view of Wachsmuth et
al.5 (“Wachsmuth”); and
D. Claim 18 as unpatentable over Lippert in view of Huisken.6
(Final Act. 3–14; Ans. 3–24).
III. DISCUSSION
With respect to claim 1, the Examiner finds that Lippert describes a
microscope having many of the limitations recited in the claim, including,
inter alia, an aspherical element 7 that focusses an illumination light beam in
one direction and leaves the illumination light beam unchanged in another
direction transverse to the one direction (Final Act. 3–4 (citing, e.g., Lippert

3 US 2009/0237765 A1, published September 24, 2009.
4 US 2011/0304723 A1, published December 15, 2011.
5 US 2006/0146325 A1, published July 6, 2006.
6 WO 2010/014244 A2, published February 4, 2010.
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Application 13/371,991

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¶¶ 65–66; Fig. 1)). According to the Examiner, Lippert’s aspherical element
7 is “anamorphotic” (Final Act. 3). The Examiner acknowledges that “[t]he
embodiment of FIG. 1 of Lippert does not specifically disclose the
anamorphotic lens is a cylindrical lens” (id. at 4 (presumably addressing the
“cylindrical lens” limitation recited in claim 1)). The Examiner finds,
however, that Lippert teaches an alternative embodiment (Figure 7) in which
a cylindrical lens 29 is used, wherein the benefits of the embodiment include
preventing or substantially reducing shadows cast from non-transparent
specimen substances within the illuminated specimen plane (Final Act. 4
(citing Lippert ¶ 89)). The Examiner then concludes that
it would have been obvious to an ordinarily skilled artisan . . . to
use the teaching of the cylindrical lens of the embodiment of FIG.
7 of Lippert in the system of the embodiment of FIG. 1 of Lippert
so as to prevent or substantially reduce shadows cast from non-
transparent specimen substances within the illuminated
specimen plane.
(Final Act. 5).
The Appellant contends, inter alia, that, contrary to the Examiner’s
finding, Lippert does not disclose the aspherical element 7 as being a light-
focusing element but, rather, as a light-expanding element (Appeal Br. 11–
12). The Appellant argues that, therefore, “Lippert fails to disclose the
cylindrical lens . . . as specified in claim 1” (id. at 12). In addition, the
Appellant argues that “the Examiner fails to mention which feature of the
embodiment shown in [Lippert’s] Fig. 1 is to be replaced with the cylindrical
lens 29” and “which role the cylindrical lens 29 is to play in the set-up of
Fig. 1 of Lippert” (id. at 14–15 (bolding added)).
We concur with the Appellant that the Examiner’s rejection is not
well-founded. In re NuVasive, Inc., 842 F.3d 1376 (Fed. Cir. 2016) (“[T]he
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[PTO] must make the necessary findings and have an adequate ‘evidentiary
basis for its findings.’”) (internal citation omitted).
As the Appellant points out (Appeal Br. 11–12), Lippert explicitly
teaches that the aspherical element 7, which the Examiner relies on to
account for the “cylindrical lens” limitations recited in claim 1, expands the
illumination light beam 5 (Lippert ¶ 66 (“By passing through the aspherical
element 7, the light bundle 5 is expanded in the Y-Z plane shown in FIG. 1a,
while the light bundle 5 passes the aspherical element 7 in the X-Z plane,
shown in FIG. 1b, substantially unchanged.”) (emphasis added)). By
contrast, claim 1 recites that the “cylindrical lens . . . focusses the
illumination light beam in one direction and leaves the illumination light
beam unchanged in another direction transverse to the one direction”
(Claims Appendix 1 (emphasis added)).
The Examiner takes the position that “the light [is] focused inside
anamorphotic aspherical element 7 before expanding after this focus” (Final
Act. 3 (bolding added)). But such a finding, even if accepted as supported
by sufficient evidence, fails to demonstrate that the “cylindrical lens”—not
an interior portion thereof—focuses the illumination light beam, as required
by claim 1.
Furthermore, as the Appellant points out (Appeal Br. 14–15),
Lippert’s aspherical element 7, as shown in Figure 1, and cylindrical lens 29,
as shown in Figure 7, perform different functions in a different environment
(compare, e.g., Lippert’s ¶¶ 65–66 and Fig. 1 with ¶ 89 and Fig. 7). The
Examiner does not adequately explain how Lippert’s cylindrical lens 29 of
Figure 7 would be implemented in the microscope shown in Lippert’s Figure
1 such that the requirements disclosed for the Figure 1 device would be
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retained (Ans. 22–23). NuVasive, Inc., 842 F.3d at 1382 (“[A]s an
administrative agency, the [PTO] ‘must articulate logical and rational
reasons for [its] decisions’”) (internal citation omitted).
As stated above, claim 14, the only other independent claim, recites
similar “cylindrical lens” limitations (Claims App. 3). Therefore, our
reasoning above for claim 1 applies equally to claim 14. Additionally, none
of the other references have been applied to cure the deficiencies in the
Examiner’s rejection as maintained against claims 1 and 14.
Accordingly, we do not sustain the Examiner’s rejections as
maintained against any of the claims on appeal.

IV. CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 6, 14 103(a) Lippert 1, 2, 6, 14
7–13, 15, 16,
19
103(a) Lippert, Betzig 7–13, 15, 16,
19
17 103(a) Lippert, Wachsmuth 17
18 103(a) Lippert Huisken 18
Overall
Outcome
1, 2, 6–19

REVERSED