Tommy Winther. Berg et al.

Patent Trials and Appeals Board

May 21, 2020

14785199 - (D) (P.T.A.B. May. 21, 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.
14/785,199 10/16/2015 TOMMY WINTHER BERG 2012P02213WOUS 6259
24737 7590 05/21/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
AKANBI, ISIAKA O
ART UNIT PAPER NUMBER
2886
NOTIFICATION DATE DELIVERY MODE
05/21/2020 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOMMY WINTHER BERG, ERIK SPILLUM,
MARTIN CHRISTIAN VALVIK, and TOM OLESEN
Appeal 2019-001678
Application 14/785,199
Technology Center 2800

Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
BRIAN D. RANGE, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4–7, 11–13, 16, 18, 19, 25, 26, 29,
and 36–39 under 35 U.S.C. § 102(a)(1) as being anticipated by Olesen.2
Appeal Br. 5. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Koninklijke
Philips N.V. Appeal Br. 2.
2 Olesen et al., US 2011/0261164 A1, published Oct. 27, 2011.
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CLAIMED SUBJECT MATTER
The claims are directed to an optical system (see, e.g., claim 1) and a
method (see, e.g., claim 25) for determining a characteristic as a function of
time of a liquid volume comprising a plurality of objects. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An optical system for determining a characteristic as a
function of time of at least a part of a liquid volume comprising
a plurality of objects, the optical system comprises:
an optical detection assembly comprising at least one
image acquisition device that acquires images of an image
acquisition area;
a sample device comprising a sample container for
holding a sample of said liquid volume, the sample including at
least a portion of the plurality of objects;
a translating arrangement that repeatedly translates said
image acquisition area through at least part of said sample
container to perform multiple consecutive scans along a
scanning path through said at least one part of said sample
container to acquire images of the image acquisition area,
respectively; and
an image analyzing processing system,
wherein the optical detection assembly acquires images
of the image acquisition area at a plurality of positions during
each scan of the image acquisition area as the translating
arrangement translates the image acquisition area along the
scanning path through the at least part of said sample container,
the sample container holding the sample at a substantially
standstill during each scan; and
wherein the image analyzing processing system is
programmed to determine a set of features comprising a set of
values for each object of a plurality of objects captured on the
images from each scan, respectively, and to determine for each
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scan at least one derived result derived from a plurality of the
sets of values, and to present said derived results determined for
the multiple consecutive scans as a function of time, indicative
of the characteristic.
Appeal Br. 16 (Claims Appendix) (emphasis added).
OPINION
Claim 1
With regard to the optical system claims, Appellant focuses the
arguments on the rejection of claim 1. Appeal Br. 6–13. Thus, we select
claim 1 as representative for resolving the issue for the claims directed to the
optical system.
The issue is: Has Appellant identified a reversible error in the
Examiner’s finding that Olesen describes the required translating
arrangement of the apparatus of claim 1?
Appellant has not identified such an error.
First, there is no real question that Olesen teaches a translating
arrangement. Olesen’s optical system, like Appellant’s system, translates
image acquisition area 10 along scanning path 20. Compare Olesen Fig. 1,
and ¶ 130, with Appellant’s Fig. 1, and Spec. 34:1–12.
Claim 1 defines the translating arrangement by what it does, i.e., it
“repeatedly translates said image acquisition area through at least part of
said sample container to perform multiple consecutive scans along a
scanning path through said at least one part of said sample container to
acquire images of the image acquisition area, respectively.”
As pointed out by the Examiner, Olesen’s structure is the same as that
disclosed by Appellant and, as such, the prior art anticipates the optical
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system of claim 1. Ans. 10. Olesen’s translating arrangement (translation
stage 20) translates the image acquisition area 10 in steps through at least a
part of the sample container 18 by moving the sample container 18 relative
to the optical detection assembly 15 along a scanning path through the
container 18 to acquire a plurality of images of the image acquisition area,
for instance, as shown in Figure 1, which is the same as Appellant’s Figure
1. Olesen, Fig 1; ¶¶ 5, 7–9, 130.
The action of repeatedly translating to perform multiple consecutive
scans along the scanning path is a functional limitation. The optical system
of claim 1 must be distinguished from the prior art in terms of structure. It
has long been held that “apparatus claims cover what a device is, not what a
device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464,
1468 (Fed. Cir. 1990). An inventor of a structure (machine or article of
manufacture) is entitled to benefit from all of its uses, even those not
described, Roberts v. Ryer, 91 U.S. 150, 157 (1875), and conversely,
patentability of the structure cannot turn on the use or function of the
structure. In re Michlin, 256 F.2d 317, 320 (CCPA 1958) (“It is well settled
that patentability of apparatus claims must depend upon structural
limitations and not upon statements of function.”). Therefore, the courts
have devised a test: Structures such as machines and articles of manufacture
must be distinguished from the prior art on the basis of structure, and where
there is reason to believe that the structure of the prior art is inherently
capable of performing the claimed function, the burden shifts to the
applicant to show that the claimed function patentably distinguishes the
claimed structure from the prior art structure. See In re Schreiber, 128 F.3d
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1473, 1478 (Fed. Cir. 1997); In re Hallman, 655 F.2d 212, 215 (CCPA
1981).
Olesen’s translation arrangement is capable of performing multiple
consecutive scans. Olesen does not particularly limit the movement of the
translation unit and discloses it can be moved in multiple ways, including to
perform more than one scan. Olesen ¶¶ 20, 47. Moreover, simply placing a
new sample into the system and running another scan results in repeating the
translation. Because it is reasonable to conclude that Olesen’s translation
arrangement is inherently capable of performing the function of repeatedly
translating to perform multiple consecutive scans as recited in claim 1, the
burden shifted to Appellant to show that the function of the claim patentably
distinguishes the claimed translation arrangement from Olesen’s translation
unit. Appellant has not provided convincing evidence of such a structural
difference.
As further found by the Examiner, Olesen, in fact, describes the
function of repeatedly translating the image acquisition area through the
sample container to perform multiple consecutive scans along a scanning
path through the sample container to acquire images of the image acquisition
area, respectively. Final Act. 3; Ans. 7–8. This disclosure is found in, for
instance, paragraphs 81, 88, and 90.
Paragraph 81 describes using the apparatus to determine a parameter
describing microbial activity of individual organisms in a liquid sample.
Olesen ¶ 81. The control unit is adapted to control the optical detection
assembly and the translating unit to acquire images to form at least a first
optical sectioning of biological organisms in said liquid sample. Id. “Given
an optical sectioning of a sample, the relevant biological organisms objects,
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be it cells, bacteria or other objects of interest, may be extracted for further
analysis by applying a first algorithm.” Olesen ¶ 84. The algorithm involves
a step of combining the object pixels classified in step 1 of the algorithm
from each image of the optical sectioning to form stacks of one or more
images. Olesen ¶ 86.
In some embodiments, such as when the parameter is the cell division
rate or living/dead rate, which are time dependent variables, a set of optical
sectionings are acquired and the rate is calculated by extracting the relevant
cells using the first algorithm. Olesen ¶¶ 88, 90. The parameter value (rate)
for all the objects (cells) is calculated and this calculation is repeated “for all
optical sectionings.” Olesen ¶¶ 88, 90. Olesen establishes the cell division
rate and living/dead rate “[b]y observing how the mean values vary over
time.” Olesen ¶¶ 88, 90.
Appellant contends that the “optical sectionings” described by Olesen
are the individual images (e.g., each individual image No. 1, No. 2, etc., in
Figure 6) acquired by image acquisition device 16 during each scan. Appeal
Br. 10–11. But Olesen uses the term “optical sectionings” to refer to the
entirety of the method for a complete scan. Olesen ¶¶ 1, 5. The apparatus for
optical sectioning is “for obtaining a plurality of images of a sample
arranged in relation to a sample device.” Olesen ¶ 7. The use of the term
“plurality of images” distinguishes individual images from optical
sectionings. See Olesen ¶ 20 (“A combining unit may be arranged to
combine the images of said optical sectioning to a 3D reconstruction of said
sample.” (emphasis added)). The algorithm used to extract data from the
optical sectioning involves combining object pixels from multiple images to
form stacks. Olesen ¶ 86. Thus, a preponderance of the evidence supports
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the Examiner’s finding that Olesen’s optical sectioning is the method of
acquiring a plurality of images for an entire scan and a set of optical
sectionings are multiple consecutive scans within the meeting of claim 1.
Ans. 8.
Claim 25
Appellant contends that Olesen does not anticipate the method of
claim 25 “for at least substantially the same reasons discussed above with
regard to claim 1.” Appeal Br. 13. We disagree for the reasons presented
above.
CONCLUSION
The Examiner’s decision to reject claims 1, 2, 4–7, 11–13, 16, 18, 19,
25, 26, 29, and 36–39 is affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis/
Affirmed Reversed
1, 2, 4–7, 11–
13, 16, 18,
19, 25, 26,
29, 36–39
102(a)(1) Olesen 1, 2, 4–7, 11–
13, 16, 18,
19, 25, 26,
29, 36–39

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) (2017).
AFFIRMED