Tommy Winther. Berg et al.Download PDFPatent Trials and Appeals BoardMay 21, 20202019001678 (P.T.A.B. May. 21, 2020) 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. 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. Appeal 2019-001678 Application 14/785,199 2 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 Appeal 2019-001678 Application 14/785,199 3 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 Appeal 2019-001678 Application 14/785,199 4 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 Appeal 2019-001678 Application 14/785,199 5 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, Appeal 2019-001678 Application 14/785,199 6 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 Appeal 2019-001678 Application 14/785,199 7 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 Copy with citationCopy as parenthetical citation