Ex Parte Kennedy

Patent Trial and Appeal Board

Sep 18, 2017

10662599 (P.T.A.B. Sep. 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.
10/662,599 09/15/2003 Bruce L. Kennedy 02580-P0085B 2356
131672 7590 09/19/2017
Whitmyer IP Group LLC
600 Summer Street
3rd Floor
Stamford, CT 06901
EXAMINER
CHOU, WILLIAM B
ART UNIT PAPER NUMBER
3779
MAIL DATE DELIVERY MODE
09/19/2017 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
____________

Ex parte BRUCE L. KENNEDY
____________

Appeal 2015-006682
Application 10/662,5991
Technology Center 3700
____________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
FREDERICK C. LANEY, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE2

1 According to Appellant’s Appeal Brief, Karl Storz Imaging, Inc. is the real
party in interest. Appeal Br. 2 (filed Dec. 11, 2014).
2 This is Appellant’s third appeal before the Patent Trial and Appeal Board
(or its predecessor Board Of Patent Appeals
And Interferences). In the first appeal (2009-006421, Decision mailed May
25, 2010) (hereafter “First Decision ), the Examiner’s decision to reject
under 35 U.S.C. § 103(a) claims 19–31, 46, and 47 as unpatentable over
Beutter (US 2003/0076410 A1, issued Apr. 24, 2003) and Winkler (US
6,411,851 B1, issued June 25, 2002) and claim 48 as unpatentable over
Beutter, Winkler, and Watai (US 2003/0060678 A1, issued Mar. 27, 2003)
was reversed. The Examiner’s decision to reject claims 19 and 49 under 35
U.S.C. § 103(a) as unpatentable over Beutter and Rosen (US 2002/0149706
A1, issued Oct. 17, 2002) was affirmed. First Decision 6–7. In the second
Appeal 2015-006682
Application 10/662,599

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Bruce L. Kennedy (“Appellant”) appeals under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 19, 21, 22, 24–31, 46, 48–50,
54, 56, and 57.3 Appellant’s representative presented oral argument on
September 6, 2017. We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b).

SUMMARY OF DECISION
We REVERSE.

INVENTION
Appellant’s invention relates to a device for video recording and
image capturing used in surgical procedures. Spec. 1, para. 2.
Claims 19, 24, and 54 are independent. Claim 19 is illustrative of the
claimed invention and reads as follows:
19. A medical video instrument having touch screen control
comprising:
a touch screen for entering control commands to control
said medical video instrument;
said medical video instrument for inserting into a body
cavity and generating an image stream representative of the
body cavity and displayed on said touch screen;

appeal (2012-002478, Decision mailed June 3, 2013) (hereafter “Second
Decision”), the Examiner’s decision to reject claims 19, 26–31, 46, 48, and
49 was affirmed and the decision to reject claims 20–22, 24, and 25 was
reversed. We denominated the affirmance of the rejection of claims 19, 26–
31, 46, 48, and 49 as new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Second Decision 10.
3 Claims 1–18 and 32–45 have been withdrawn and claims 20, 23, 47, 51–
53, and 55 have been cancelled. Appeal Br. 2.
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a processor coupled to said touch screen and the medical
video instrument such that said processor receives said control
commands from said touch screen and generates control signals
to operate said medical video instrument, said processor further
provided for receiving the image stream; and
a medical instrument housing enclosing said processor,
said touch screen movable between a first position at least
partially within a footprint of said medical instrument housing
and a second position extended from said footprint of said
medical instrument housing, said touch screen deflectable about
an axis of said medical instrument housing wherein said touch
screen is unpluggable from said medical instrument housing
such that said touch screen may be disconnected from said
medical instrument housing.

REJECTION
The Examiner rejected claims 19, 21, 22, 24–31, 46, 48–50, 54, 56,
and 57 under 35 U.S.C. § 103(a) as being unpatentable over Branson
(US 5,740,801, issued Apr. 21, 1998), Gill et al. (US 2005/0283048 A1,
published Dec. 22, 2005, hereafter “Gill”), Zerhusen et al.
(US 2003/0052787 A1, published Mar. 20, 2003, hereafter “Zerhusen”), and
Pappalardo et al. (US 2003/0067733 A1, published Apr. 10, 2003, hereafter
“Pappalardo”).

ANALYSIS
Each of independent claims 19, 24, and 54 requires a touch screen that
is “movable between a first position at least partially within a footprint of
said medical instrument housing and a second position extended from said
footprint of said medical instrument housing.” Appeal Br. 19, 20, 24
(Claims App.).
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The Examiner finds that Branson fails to disclose the above noted
limitation, but Zerhusen discloses a touch screen, as called for by each of
independent claims 19, 24, and 54. Non-Final Act. 4–5 (transmitted Aug. 1,
2014). According to the Examiner, Figure 124 and paragraph 167 of
Zerhusen disclose a screen that “is movable between a first position at least
partially within a footprint of said medical instrument housing (in an upright
position) and a second position extending from said footprint of said medical
instrument housing (in a non-upright position).” Ans. 6 (transmitted May 7,
2015).
The Examiner’s annotated Figure 124 of Zerhusen is shown below:

Figure 124 of Zerhusen, as annotated by the Examiner, shows display
1324 movable along arc “D” to an angle denoted with plane “C” as arms
1416, 1418 pivot along arc “A” from a position in plane “B.” See Ans. 6.
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The Examiner explains that
[W]hen the arms [1416, 1418] are pivoted from the plane “B”
to an exemplary angle denoted with a plane “C”, the display can
still be slideably translated along the channels 1432 and pivoted
about the arc “D”. Accordingly, it is clear that when the arms
are in a non-upright position and held at an angle (e.g.[,] “C”),
the display device can be moved along channels 1432 and
pivoted along “D” beyond a footprint, labeled as “FOOT”,
coincidental to the boundaries of the storage tray 1414.
Id.
Appellant argues that Zerhusen’s screen, as shown in Figure 124, “is
fully contained within the footprint of the housing.” Appeal Br. 7.
According to Appellant, because channels 1432 of Zerhusen are used for
guiding display 1324 into tray 1414 for storage, Zerhusen fails to disclose
that display 1324 “can be slidably translated along the channels” and “is
extended from the footprint of the housing.” Reply Br. 2–3 (filed July 7,
2015).
An ordinary and customary meaning of the term “footprint” is “the
area on a surface covered by something.” First Decision 4 (citing Merriam
Webster’s Collegiate Dictionary (10th Ed. 1997)). Hence, as in our previous
decision, we construe the phrase “extended from said footprint of said
housing” to mean, “extending out from the vertically extending boundaries
of the footprint of the housing.” Id. at 5. Such an interpretation is consistent
with Appellant’s Specification, which “describes screen 102 as ‘extended
out’ from the plane of the housing, that is, extending out from the vertically
extending boundaries of a footprint of the housing.” Id. (citing Spec. 17,
para 55, Fig. 15).
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Zerhusen discloses that arms 1416, 1418 “provide for pivoting
movement of display device 1324 from an open or use position wherein
display device 1324 is extending upwardly out of storage tray 1414 to a
closed or storage position wherein display device 1324 is received within
storage tray 1414.” Zerhusen, para. 167 (emphasis added). Therefore, we
agree with the Examiner that Zerhusen’s tray 1414, which stores display
1324 when not in use, constitutes a “footprint,” as understood by a person of
ordinary skill in the art. See Ans. 6 (“a footprint, labeled as “FOOT”,
coincidental to the boundaries of the storage tray 1414.”).
However, in contrast to the Examiner’s position, display device 1324
does not “extend out” from the plane of tray 1414 when in an open position
(second position). Rather, display device 1324, when in the open position, is
located within the boundaries of the plane of tray 1414 but merely shifted
upward. In other words, Zerhusen’s display device 1324, when in an open
position, is still within the footprint of tray 1414 because it is located within
the vertically extending boundaries of the footprint. As such, Zerhusen does
not disclose pivoting display device 1324 “beyond a footprint coincidental to
the boundaries of the storage tray 1414.” See Ans. 6.
We appreciate the Examiner’s position that Zerhusen’s arms 1416,
1418 are slidably received within channels 1432. See id. However, the
Examiner’s finding that Zerhusen’s display device 1324 pivots along arc
“D” such that it extends beyond the footprint of tray 1414 (see Ans. 6) is
based on speculation and conjecture grounded on an unfounded assumption
that arms 1416, 1418 can slide within channels 1432 to such an extent that
display device 1324 would pivot along arc “D” beyond the footprint of tray
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1414. We could not find any portion in Zerhusen, and the Examiner has not
pointed to any portion, to support such a finding. Speculation and
conjecture cannot form the basis for concluding obviousness. See In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967). As such, Zerhusen’s display
device 1324 does not extend out from the plane of tray 1414, that is, does
not extend from a footprint of the housing, as called for by each of
independent claims 19, 24, and 54.
The disclosures of Gill and Pappalardo do not remedy the deficiency
of the combined teachings of Branson and Zerhusen discussed supra. See
Non-Final Act. 4–6. Accordingly, we do not sustain the rejection under
35 U.S.C. § 103(a) of independent claims 19, 24, and 54, and their
respective dependent claims 21, 22, 25–31, 46, 48–50, 56, and 57, as
unpatentable over Branson, Gill, Zerhusen, and Pappalardo.

SUMMARY
The Examiner’s decision to reject claims 19, 21, 22, 24–31, 46, 48–50,
54, 56, and 57 under 35 U.S.C. § 103(a) an unpatentable over Branson, Gill,
Zerhusen, and Pappalardo is reversed.

REVERSED