Ex Parte Hale et al

Patent Trial and Appeal Board

Aug 22, 2017

12902998 (P.T.A.B. Aug. 22, 2017)

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.
12/902,998 10/12/2010 Eric Lawrence Hale 02580 - P0262C 3087
131672 7590 08/22/2017
Whitmyer IP Group LLC
600 Summer Street
3rd Floor
Stamford, CT 06901
EXAMINER
WOO, JAE KYUN
ART UNIT PAPER NUMBER
3779
MAIL DATE DELIVERY MODE
08/22/2017 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 ERIC LAWRENCE HALE,
HANS DAVID HOEG, and NATHAN JON SCHARA
____________________

Appeal 2015-004835
Application 12/902,998
Technology Center 3700
____________________

Before JOHN C. KERINS, WILLIAM A. CAPP, and
BRENT M. DOUGAL, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Eric Lawrence Hale et al. (Appellants) appeal under 35 U.S.C. § 134
from a final rejection of claims 1–17. We have jurisdiction under 35 U.S.C.
§ 6(b). An oral hearing was conducted on July 20, 2017, with Victor P. Lin
appearing on behalf of Appellants.
We AFFIRM.

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THE INVENTION
Appellants’ invention is directed to a method for helping a user
predict rapid or sudden image rotation in a gravity leveled endoscopic
imaging system. Claim 1, reproduced below, is illustrative:
1. A method for helping a user predict rapid or sudden
image rotation in a gravity leveled endoscopic imaging system,
the method comprising:

monitoring the attitude of the view vector of an endoscope
having a longitudinal axis and a view vector angle that varies
relative to the longitudinal axis, said monitoring comprising
accounting for endoscope pitch, endoscope roll, and view
vector angle relative to the longitudinal axis;

specifying a neighborhood of a viewing singularity; and

displaying a graphical representation of said view vector and a
graphical representation of said neighborhood.

REJECTIONS
The Examiner has rejected:
(i) claims 1, 2, 4–8, 10, and 12–16 under 35 U.S.C. § 103(a) as being
unpatentable over Chatenever (US 2002/0161280 A1, published Oct. 31,
2002) in view of Hale (US 2002/0099263 A1, published July 25, 2002) and
Shahidi (US 2003/0032878, published Feb. 13, 2003);
(ii) claims 3 and 11 under 35 U.S.C. § 103(a) as being unpatentable
over Chatenever in view of Hale, Shahidi, and Banik (US 7,479,106 B2,
issued Jan. 20, 2009); and
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(iii) claims 9 and 17 under 35 U.S.C. § 103(a) as being unpatentable
over Chatenever in view of Hale, Shahidi, and Clayton (US 6,434,507 B1,
issued Aug. 13, 2002).

OPINION
Claims 1, 2, 4–8, 10, and 12–16--Chatenever/Hale/Shahidi
Appellants present arguments directed to both independent claims 1
and 10. Appeal Br. 4–10. Appellants present no arguments for the separate
patentability of dependent claims 2, 4–8, and 12–16 that are also subject to
this rejection. Accordingly, we take claim 1 as representative, and claims 2,
4–8, 10, and 12–16 stand or fall with claim 1.
The Examiner finds that Chatenever discloses the view vector attitude
monitoring and viewing singularity neighborhood specification steps set
forth in claim 1. Final Act. 2 (citing Chatenever, paras. 86, 89, Fig. 16).
The Examiner finds that Chatenever lacks disclosure of an endoscope having
a view vector angle that varies relative to the longitudinal axis of the
endoscope. Id. at 2–3. The Examiner relies on Hale as disclosing an
endoscope with a variable view vector angle, and reasons that it would have
been obvious to employ such an endoscope in conjunction with the method
steps disclosed in Chatenever, in order to provide the versatility of changing
the view vector without moving the endoscope within the cavity. Id. at 3.
The Examiner further recognizes that the combined disclosures of
Chatenever and Hale fail to disclose the step of displaying a graphical
representation of the view vector attitude and of the viewing singularity
neighborhood. Final Act. 3–4. The Examiner cites to Shahidi as disclosing
the desirability of providing to an endoscope user a graphical representation
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that enables the user to observe physical relationships between the
endoscope, the subject (patient), and the endoscope field of view. Id. at 4.
The Examiner takes the position that it would have thus been obvious to
employ a graphical representation of a view vector of the endoscope, in
order to provide a display of relevant information about the view vector
relative to the endoscope and the patient. Id. The Examiner notes that
Shahidi does not provide for a graphical representation of a viewing
singularity neighborhood, but concludes that it would have been obvious to
include that in a display, in view of Chatenever’s disclosure of the
significance of the position of singularities relative to the view vector and
the significance of there being a neighborhood of the singularity in which
rotational control of an image taken by the endoscope becomes unstable. Id.
at 4–5 (citing Chatenever, para. 89).
Appellants first argue that the cited references “have nothing to do
with helping a user predict rapid or sudden image rotation in a gravity
leveled endoscopic imaging system.” Appeal Br. 5. Appellants, after briefly
providing their characterizations as to what the references are purportedly
directed to, repeat that “the cited references are not relevant to the claimed
method for helping a user predict rapid or sudden image rotation in a gravity
leveled endoscopic imaging system or to viewing singularities.” Id. at 6–7.
The references, according to Appellants, would never have motivated one of
ordinary skill in the art to address this issue in any manner. Id. at 7.
To the extent that Appellants intend these arguments to serve as
assertions that the references are directed to nonanalogous art, they miss the
mark. Appellants acknowledge that the three references “each relate
generally to endoscopic surgery and imaging in such circumstances.”
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Appeal Br. 7. As such, the references, in accordance with Appellants’ own
words, are directed to subject matter that is in the same field of endeavor as
Appellants’ invention.
Moreover, as to the specifics of problems with rapid or sudden image
rotation, Appellants’ statement that Chatenever “does not disclose or suggest
that it relates in any way to rapid or sudden image rotation” (Appeal Br. 6) is
belied by paragraphs 87–89 of Chatenever that specifically address image
rotation instabilities occurring when the endoscope view vector “becomes
closer to the direction of gravity.” Chatenever, paras. 87–89. Appellants
themselves acknowledge that Chatenever, as well as other prior art have, as
objects of their inventions, “provid[ing] schemes which can maintain the
proper upright gravity-leveled orientation of the endoscopic image
regardless of how the endoscope is being manipulated.” Spec. p. 2–3
(identifying Chatenever as U.S. patent application Ser. No. 10/093,650).
As such, Appellants’ arguments addressing the alleged irrelevance of
the references cited by the Examiner do not apprise us of error in the
Examiner’s rejection.
Appellants next argue that the evidence does not support a conclusion
that it would have been obvious to display a graphical representation of a
neighborhood of a viewing singularity. Appeal Br. 7. Appellants maintain,
in this regard, that Chatenever “does not disclose any neighborhood of a
viewing singularity.” Id. Appellants characterize Figure 16 of Chatenever
as showing only “the relationship between the angular regions in which
different control signals are used,” and, “at most, [show] a neighborhood in
which accelerometers experience reduced performance.” Id. Appellants
again miss the mark in arguing that “Chatenever does not disclose or even
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suggest that the accelerometer performance issue it discusses is related to
rapid or sudden image rotation or to a viewing singularity,” and that the
angular regions in Figure 16 are not disclosed as relating in any way to rapid
or sudden image rotation. Id.
At the outset, we fail to see any difference between Appellants’ term
“viewing singularity” and Chatenever’s discussion of a “y-axis” as being
coincident with the direction of gravity. Chatenever, para. 48. In addition,
the discussion that, as the camera head (and its associated view vector)
approach perpendicularity or being parallel to the Y axis and the force of
gravity, there is a spatial angle at which the rotation of the image becomes
unstable, which, to a person of ordinary skill in the art, would mean that the
image would be subject to rapid or sudden rotation, is indicative that there is
a neighborhood surrounding the viewing singularity within which image
instability may occur.1 Chatenever, paras. 87–89 (discussing that the
instability is as a result of an accelerometer no longer being able to output a
valid signal adequate for rotational control). Further, Chatenever leaves
virtually no doubt that it is not merely a coincidence that the purported
“neighborhood in which accelerometers experience reduced performance,”
according to Appellants characterization of Figure 16 of Chatenever, is
effectively the same thing as a neighborhood of a viewing singularity, the
singularity being an axis indicating, or parallel to, the direction of the force
of gravity.
Appellants’ attempt to pigeonhole the Chatenever teachings into a
consideration as to how to overcome performance issues experienced with

1 Chatenever refers to this as an “annular region ha[ving] a conical shape . . .
defined by the solid angle α.” Chatenever, para. 89, Fig. 16.
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accelerometers in the neighborhood of a singularity, i.e., in a conical region
surrounding an axis of, or parallel to, the force of gravity, fails to consider
the more far-reaching teachings of the reference to persons of ordinary skill
in the art.
Appellants additionally argue that there is nothing in Chatenever that
suggests that the information conveyed by Figure 16 thereof, would be
relevant to a user of the Chatenever device. Appeal Br. 8. This argument
fails to take into account that the Examiner relies on Shahidi for the teaching
that graphical representations or displays of information are useful in aiding
the user to determine the physical relationships between the endoscope, the
patient, and the field of view of the endoscope. Final Act. 4. The
Examiner’s position is that this teaching would have led one of ordinary skill
in the art to include the information from Figure 16 of Chatenever, letting a
user know when the view vector is approaching a neighborhood of a viewing
singularity.
Appellants further maintain, in this regard, that “evidence that it was
known that an accelerometer will perform poorly in a vertical orientation is
NOT evidence that it would be valuable to display a neighborhood of a
viewing singularity.” Appeal Br. 9. However, this ignores that persons of
ordinary skill in the art would understand that this poor performance is as a
result of being in a region approaching the vertical, in the direction of
gravitational force, i.e., in a neighborhood of a viewing singularity, where
the accelerometer cannot detect gravity. Cf., Chatenever, para. 88 (valid
rotational control signal only when accelerometer can detect gravity). In
Appellants’ words, this vertical position has no unique upright image
orientation, a situation similar to standing on the North Pole and having to
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define what direction is South. Spec., para. 5. Since this phenomenon is not
unique to accelerometer-based sensors, the Chatenever graphic would be
useful regardless as to how the orientation of the view vector is determined.
Appellants additionally maintain that nothing in Hale nor Shahidi
would have motivated a person of ordinary skill in the art to display
Chatenever’s graphical representation in Figure 16 to a user of an
endoscope. Appeal Br. 9. Hale is not relied on in this context, and
Appellants argue with respect to Shahidi that the specific control signal
arrangements employed in Chatenever would not have any relevance to a
user. Id. The Examiner, however, does not propose to incorporate the
specifics of the control signal arrangement of Chatenever in the Shahidi
system, and instead concludes that it would have been obvious to include, in
the Chatenever system, a display constituting a graphical representation of
the neighborhood of the viewing singularity neighborhood and of the view
vector.
Appellants, in the Reply Brief, respond to certain positions taken by
the Examiner that construe the claimed “user” to include a person
programming the Chatenever endoscope system. Reply Br. 2–3; Ans. 3.
We agree with Appellants that this is an unreasonably broad interpretation as
to who would constitute a user in the context of the claims.
Notwithstanding, we are not apprised of Examiner error in the initially-
stated basis for rejecting the claims over a combination of the teachings of
Chatenever, Hale, and Shahidi. The rejection of claim 1 is therefore
sustained. Claims 2, 4–8, 10, and 12–16 stand or fall with claim 1.

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Claims 3 and 11--Chatenever/Hale/Shahidi/Banik
Appellants do not proffer any arguments for the separate patentability
of these claims, and rely on those arguments advanced with respect to
claims 1 and 10. Appeal Br. 10. For the reasons presented above, we are
not apprised of error in the Examiner’s position, and the rejection of
claims 3 and 11 is sustained.

Claims 9 and 17--Chatenever/Hale/Shahidi/Clayton
Appellants do not proffer any arguments for the separate patentability
of these claims, and rely on those arguments advanced with respect to
claims 1 and 10. Appeal Br. 10. For the reasons presented above, we are
not apprised of error in the Examiner’s position, and the rejection of claims
9 and 17 is sustained.

DECISION
The rejections of claims 1–17 under 35 U.S.C. § 103(a) are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED