Ex Parte 7009634 et al

Patent Trial and Appeal Board

Oct 18, 2017

95002175 (P.T.A.B. Oct. 18, 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.
95/002,175 09/11/2012 7009634 514477.2 5020
49443 7590 10/19/2017
Pearl Cohen Zedek Latzer Baratz LLP
1500 Broadway
12th Floor
New York, NY 10036
EXAMINER
LEE, CHRISTOPHER E
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
10/19/2017 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
____________

INTROMEDIC, CO. LTD.
Requester and Appellant

v.

GIVEN IMAGING, LTD.1
Patent Owner
____________

Appeal 2016-006933
Reexamination Control 95/002,175
Patent 7,009,634 B2
Technology Center 3900
____________

Before JAMES T. MOORE, JOHN A. JEFFERY, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL

1 Patent Owner also identifies Covidien Sales LLC, Covidien LP, and
Medtronic, PLC as additional real parties in interest.
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I. BACKGROUND
Requester appeals under 35 U.S.C. §§ 134(c) and 315(b) (pre-AIA)
the Examiner’s final decision not to reject claim 1.2 Patent Owner urges that
the Examiner’s decision should be affirmed.3 We have jurisdiction under
35 U.S.C. §§ 134(b), (c) and 315(a), (b) (pre-AIA).
We AFFIRM the Examiner’s decision not to reject claim 1.
II. STATEMENT OF THE CASE
United States Patent 7,009,634 B2 (hereinafter the “’634 Patent”),
which is the subject of the current inter partes reexamination, issued to
Gavriel J. Iddan, Dov Avni, Arkady Gluhovsky, and Gavriel Meron on
March 7, 2006 from Application 09/800,470, filed March 8, 2001. The ’634
Patent claims priority to provisional application 60/187,883, filed March 8,
2000.
The ’634 Patent relates to a device for imaging within the body. The
device and system of the invention are said to enable obtaining in vivo
images from within body lumens or cavities, such as images of the entire
length of the gastrointestinal tract. The device and system contain an
imaging system that includes a complementary metal oxide semiconductor
(“CMOS”) imaging camera. The device also contains an ultra low power
radio frequency (“RF”) transmitter for transmitting signals from the CMOS

2 See Requester’s Appeal Brief (filed November 13, 2014) (hereinafter
“Requester App. Br.”); Requester’s Rebuttal Brief (filed July 27, 2015)
(hereinafter “Requester Reb. Br.”); Examiner’s Answer (mailed June 26,
2015) (hereinafter “Ans.”); Right of Appeal Notice (mailed July 16, 2014)
(hereinafter “RAN.”).
3 See Patent Owner Respondent Brief (filed April 16, 2015) (hereinafter
“PO Resp’t Br.”).
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imaging camera to a receiving system. ’634 Patent 1:35–44. The device
further contains lights to illuminate the interior of the body. The lights are
elaborated upon in the specification:
Further, the imaging system may utilize a white light emitting
diode (LED) as a light source rather than a reddish
incandescence miniature bulb or an RGB LED presently used in
the art. The white LED enables production of a higher quality
and more pleasant to the eye image.

’634 Patent 1:56–61.

The Specification identifies a specific structure to generate the light:

The illumination source may be a white LED. The term “white
LED” as referred to herein relates to a combination of a blue
LED chip (emitting light in the blue spectrum range) and a
refracting crystal. The blue LED chip is encapsulated within the
refracting crystal such that blue light incident on the crystal is
emitted in different spectrums, resulting in white light. The
white light emitted from the refracting crystal has a small
f[r]action of red light and an even smaller, almost nonexistent,
fraction of infra red (IR) light.

’634 Patent 2:5–13.

Claim 1 is the only claim of the patent, and has been amended to read
as follows:
1. (Amended) A swallowable capsule for in-vivo imaging of the
gastrointestinal tract, said capsule comprising:
a housing, said housing including at least a dome type optical
viewing window portion disposed along a longitudinal axis of said
capsule, said dome type optical viewing window portion being part of
the external surface of said housing, said housing enclosing at least:
at least one CMOS [or CCD] imaging camera;
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at least two white LED illuminating sources for illuminating
[said] a gastrointestinal tract site only through said optical viewing
window portion;
an optical system comprising at least one lens for collecting
light from said gastrointestinal tract site through said optical viewing
window portion onto said CMOS [or CCD] imaging camera for
imaging said gastrointestinal tract site onto said CMOS [or CCD]
imaging camera, said optical system being separated from said dome
type optical viewing window portion, which is not part of said optical
system, by a gap, the at least two white LED illuminating sources
positioned in the vicinity of said optical system and not on the
longitudinal axis of said optical system so that the at least two white
LED illuminating sources illuminate said gastrointestinal tract site
directly through said optical viewing window portion and not through
said optical system, and said CMOS [or CCD] imaging camera
imaging said gastrointestinal tract site via said optical viewing
window portion and via said optical system; and
a transmitter for transmitting the signal of the CMOS [or CCD]
imaging camera to a receiving system.

Requester App. Br., Claims App’x.

Figure 1, reproduced below, illustrates the invention.

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Figure 1 is a sectional view of an endoscopic capsule.

III. Procedural Background

Because the procedural posture of this case is important to
understanding the burdens of persuasion that underlie our decision, we look
into the reexamination proceedings as they occurred before the Examiner in
some detail.
The original inter partes reexamination request (“Req.”) was filed
September 11, 2012 with four proposed rejections. They were proposed as
follows:
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1. Independent Claim 1 is obvious under 35 U.S.C. § 103 in view of
the Toshiba Patent, and in further view of Olympus Patent and/or German
‘177 Patent. Req. 19.
2. Independent Claim 1 is obvious under 35 U.S.C. § 103 in view of
the Olympus reference, and in further view of the Toshiba reference. Req.
22.
3. Independent Claim 1 is obvious under 35 U.S.C. § 103 in view of
the German ‘177 Patent, and in further view of the Toshiba reference and/or
the Olympus reference. Req. 25.
4. Independent Claim 1 is obvious under 35 U.S.C. § 103 in view of
the Olympus reference, and in further view of the Toshiba reference. Req.
29.
On November 27, 2012 the Examiner determined (“Det.”) that a
reexamination should proceed, but only on the fourth listed ground, and
including an additional reference - U.S. Patent 7,039,453 to Mullick. In so
doing, the Examiner found that LED’s contained in the references as applied
in the request were not presumed to be white. Det. 3–4. The Examiner
further found that Toshiba did not describe a white LED, and did not find
grounds 1–3 convincing because of this missing limitation. Id. 5–6.
Mullick, on the other hand, specifically mentioned white light.
Patent Owner filed a response (“Resp.”) on January 28, 2013,
traversing the one ground, making amendments to claim 1 (inter alia
deleting CCD from the claim), and submitting declarations of the inventors
to antedate the Mullick reference. Resp. 5–6. Patent Owner also asserted
that the combination of Toshiba and Olympus lacked a CMOS camera,
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illumination through the optical viewing window, and the white LED. Id. 7–
12. Patent Owner also asserted it would not have been obvious to combine
the references. Id., 13–23. Finally, Patent Owner submitted evidence of
non-obviousness. Id., 24–33.
Requester submitted comments (“Comm.”) in response, on February
26, 2013. In those comments, Requester cited two additional references,
Kanno and Adair, and proposed new rejections. Comm. 3. In response to
the claim amendment, Adair was relied upon to establish that CMOS and
CCD devices were known alternatives. Id. Kanno was relied upon to show
RGB LEDs were known to create white light. Id. The Requester
consequently restructured the rejections to include the new references. Id.
6–10. The Requester also attacked the evidence of non-obviousness as
lacking nexus to the claimed subject matter. Id. 29–35.
On May 30, 2014, the Examiner issued the Action Closing
Prosecution (ACP). In it, the Examiner found that Patent Owner had
antedated the Mullick reference. ACP 4. The Examiner also found the
evidence of nonobviousness was not commensurate in scope with the
claimed subject matter. Id. 5.
Of the now five rejections, the Examiner declined to adopt any.
Ground 1 was sworn behind. Id. 7. Grounds 2–5 were not adopted because
the references were said to fail to teach a white LED as defined in the instant
specification. Id. 8–10.

IV. Issues on Appeal
Requester contests the Examiner’s final decision not to reject
the claim and phrases the issue as follows:
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Whether claim 1 is unpatentable under 35 U.S.C. §103 over JP 04-
144533 (“Olympus”) in view of JP 04-109927 (“Toshiba”), and in
further view of U.S. 5,817,015 (“Adair”) and U.S. 4,884,133
(“Kanno”).

Requester App. Br. 3. This appears to correspond most closely to Ground
#4 in the Right of Appeal Notice dated July 16, 2014. RAN 4.
The Examiner declined to make this rejection principally because of
the limitation “at least two white LED illuminating sources.” RAN 7.
According to the Examiner, the claimed subject matter “white LED” is
clearly and explicitly defined in the specification of the ’634 Patent as a blue
LED within a refracting crystal, which is explicitly distinguished from an
RGB LED. Id. The Examiner found that all the references applied in this
claim 1 rejection fail to teach the claimed subject matter “white LED” and
concluded that the third party requester failed to indicate any proper teaching
from Olympus in view of Toshiba, Adair, and Kanno showing the
obviousness of the claimed invention. Id.

V. Requester’s Arguments

The core argument made by Requester for reversal of the Examiner’s
determination not to adopt the rejection is that Olympus discloses two LED
lights that are positioned so as to illuminate a gastrointestinal tract site
through the optical viewing window. While Requester admits that Olympus
does not specify that its two LEDs are white, Requester asserts that the
configuration of the LEDs in the Olympus capsule is exactly the same as that
claimed in the ’634 patent. Requester asserts that the use of a particular type
of LED does not confer patentability on the claimed capsule because it
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would have been obvious to the person of ordinary skill in the art that the
LEDs in Olympus should be white LEDs. App. Br. 6.
As the term was found by the Examiner to be defined within the
specification, we look there initially. Returning to Column 1, we observe
that it provides insight as to what is not meant by a white LED:
Further, the imaging system may utilize a white light emitting
diode (LED) as a light source rather than a reddish
incandescence miniature bulb or an RGB LED presently used in
the art. The white LED enables production of a higher quality
and more pleasant to the eye image.

’634 Patent 1:56–61.

Evidently, the inventors considered a white LED to be something
different from an RGB LED which emits white light. We see further
definition at column 2 as to what the white LED might be:
The illumination source may be a white LED. The term “white
LED” as referred to herein relates to a combination of a blue
LED chip (emitting light in the blue spectrum range) and a
refracting crystal. The blue LED chip is encapsulated within the
refracting crystal such that blue light incident on the crystal is
emitted in different spectrums, resulting in white light. The
white light emitted from the refracting crystal has a small
f[r]action of red light and an even smaller, almost nonexistent,
fraction of infra red (IR) light.

’634 Patent 2:5–13.

We therefore find no error in the Examiner’s conclusion, and agree
with the Examiner that “white LED” as used in the claim refers to a blue
LED chip encapsulated in a refracting crystal such that it emits white light.
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Appellant does not challenge the Examiner’s claim construction.
App. Br. 9–10. Rather, Appellant refocuses the issue, stating that “the use of
one known type of ‘white LED’ light (RGB-generated white light) renders
obvious the use of another known type of ‘white LED’ (blue/crystal-
generated white light).” Id. 10.
The issue presently framed on appeal originated with a fairly
substantial evidentiary gap in the original Request. The Request treated all
LEDs as equivalent. The Request initially did not address the specialized
white LED defined in the specification and required by the claim at the
outset – instead treating any generic description of any LED as sufficient to
render “white LED” light obvious. See, e.g. Req. 20.
Only when the Request described the fourth proposed rejection
including a reference to the Mullick reference did the request detail a
description of a white, albeit ring-shaped, LED. Req. 30. The Examiner
noted this evidentiary infirmity in refusing to proceed on the first three
grounds, then found a reasonable likelihood of prevailing based upon
Mullick combined with other references in the Request in a fourth ground.
Det. 6.
Patent Owner then submitted declarations which established the
reduction to practice involving the voyage of a capsule through a human on
October 17, 1999. Resp. 6, Meron Decl. Mullick’s earliest possible benefit
date is of a provisional application dated February 8, 2000.
No doubt recognizing the risk that Mullick could be removed as a
reference, Requester proposed further rejections including Kanno. Comm.
3. According to Petitioner, Kanno “shows that RGB LEDs were used to
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create white light (and are therefore ‘white LEDs’), and were widely used in
endoscopy for years prior to the ‘634 Patent.” Id. As pointed out by
Requester:
By the electric power fed by the above mentioned LED lighting
power source 41, the above mentioned respective LED 26R,
26G and 26B will respectively simultaneously emit a red color
light, green color light and blue color light which will be
radiated onto the object through the light distributing lenses 25.
This object will be illuminated by a white color light by the
composition of the above mentioned respective color lights.

Comm. 4, citing Kanno 5:11–19. (emphasis added by Requester omitted).
Again, though, Requester failed to address the white LED limitation
as defined in the specification, arguing that RGB LEDs are used for their
ability to create white light. Comm. 5. As noted above, the specification
appears to exclude the use of RGB LEDs by specifically defining a white
LED as used in the claim.
In the ACP, the Examiner noted the specific definition of white LED
and found that “all the references applied in this claim 1 rejection fail to
teach, at least, the claimed subject matter ‘white LED’ recited in the claim 1
because (i) Toshiba discloses a light emitting element 4 of Fig. 1; (ii)
Olympus discloses LED 11 in Fig. 1; (iii) Adair discloses light fibers 14 of
Fig. 1; and (iv) Kanno discloses Red LED 26R, Green LED 26G, and Blue
LED 26B in Fig. 1 (c); but they are silent upon the ‘white LED’ recited in
the claim 1.” ACP 8.
Appellant asserts on appeal that the claim construction “does
not support a finding of nonobviousness because the use of one
known type of ‘white LED’ light (RGB-generated white light) renders
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obvious the use of another known type of ‘white LED’ (blue/crystal-
generated white light).” App. Br. 9–10. On its surface, the argument
appears plausible, but it conceals a lack of timely evidence provided
in the record by the Requester.
Appellant elaborates:
The state of the art at the time of the invention thus included
both types of white LED light, RGB-generated and blue/crystal-
generated. A person of ordinary skill in the art would have been
aware of both white light sources and known that, in order to generate
an accurate color image, it was necessary to use white light rather than
light of some other color because using a non-white light source
would change the apparent color of the tissue being imaged. For
example, illuminating the gastrointestinal tract with only green light
would cause red tissue to appear black. The RGB-generated white
light disclosed in Kanno avoids this problem. A person of ordinary
skill in the art would have understood that other sources of white light
could also avoid this problem.
The choice to include one type of known white light over
another does not render the claimed capsule nonobvious. There are a
finite number of possibilities for producing white light using a LED -
RGB does so by combining red, green and blue light, blue/crystal
does so by combining blue light with yellow phosphor crystal. The
result of using a blue/crystal LED in an endoscopic capsule was
entirely predictable; the LED illuminates the target tissue in a manner
that allows a full color image. The blue/crystal LEDs is thus nothing
more than a predictable combination of known elements.

App. Br. 11–12.

When backed with persuasive evidence and timely presented, such an
argument could be compelling. However, we observe that these assertions
are simply attorney argument with little probative value. See Estee Lauder
Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997) (Argument of
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counsel cannot take the place of evidence lacking in the record). Counsel
for Appellant argues that white light is white light, but never addresses the
observation in the instant specification (cited above) that the specific light
produced by the blue LED and crystal prisms is good because of its qualities
– low reds and an almost nonexistent IR component.
The instant specification, relied upon by the Examiner in making
findings, indicates the inventors believed this type of white light was in fact
different and improved imaging. See ’634 Patent 1:56–61 and 2:5–13. To
overturn the Examiner’s finding, which is based upon the evidence in the
record, requires more than attorney argument. See Estee Lauder, 129 F.3d at
595.
Appellant points to Sumitomo EP 0977278 A2, and Perkins US
6,106,457 as evidence supporting its argument. Patent Owner urges these
references should not be considered as it is too late on appeal to formulate
new rejections including them. PO Resp’t. Br. 13.
Nonetheless, we have carefully reviewed both Sumitomo and Perkins.
Sumitomo describes a blue LED emission and a parasitic yellow phosphor
fluorescent emission from a substrate, which together appear white.
Sumitomo ¶¶ 12–13. Perkins discusses bulb-type white LEDs (15:43), but
gives no indication of their composition. Neither, however, appears to
describe encapsulation and refraction.
Requester also urges that there is evidence of simultaneous invention
to support a “secondary consideration” of obviousness. App. Br. 16–19;
Reb. Br. 12–13. More specifically, Requester asserts that Mullick and Asahi
simultaneously invented capsules which are “strikingly similar.” Id. 13.
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While this may be true, we remain of the view that the Requester has not
shown with sufficient evidence that the specific type of light – the blue LED
encapsulated in a refracting crystal, is described or simultaneously invented.
Consequently, even considering these belated arguments and the
proffered evidence, we find there remains a lack of sufficient persuasive
evidence to determine the Examiner erred in making the finding, and
conclusion that obviousness had not been established. We therefore decline
to reverse the Examiner’s decision that insufficient evidence was presented
to conclude the claim was obvious.

DECISION
The Examiner’s decision not to reject claim 1 is affirmed.

In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c)–(d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (c) of this
section, and for submitting comments under paragraph (b) of this section
may not be extended.
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An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141–144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after
November 2, 2002 may not be taken “until all parties’ rights to request
rehearing have been exhausted, at which time the decision of the Board is
final and appealable by any party to the appeal to the Board.” 37 C.F.R.
§ 41.81. See also MPEP § 2682 (8th ed., Rev. 8, July 2010).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED

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PATENT OWNER:
PEARL COHEN ZEBEK LATZER BARATZ LLP
1500 Broadway
12th Floor
New York, NY 10036

THIRD-PARTY REQUESTER:
KILPATRICK, TOWNSEND & STOCKTON LLP
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309

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