Ex Parte Kennedy et al

Patent Trials and Appeals Board

Apr 2, 2019

13749423 - (D) (P.T.A.B. Apr. 2, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/749,423 01/24/2013 Bruce Kennedy
92010 7590 04/04/2019
KARISH & BJORGUM, PC
119 E. Union Street, Suite B
Pasadena, CA 91103
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
01041:11192.11 1931
EXAMINER
HENN, TIMOTHY J
ART UNIT PAPER NUMBER
2697
NOTIFICATION DATE DELIVERY MODE
04/04/2019 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):
marc.karish@kb-ip.com
docketing@kb-ip.com
michell.rudacille@kb-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRUCE KENNEDY, TOM DEPPMEIER, and CRAIG SPEIER
Appeal 2018-005171
Application 13/749,423
Technology Center 2600
Before DENISE M. POTHIER, JAMES W. DEJMEK, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1-3, 5-14, and 18-21, i.e., all pending claims. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify the real party in interest as Arthrex, Inc. App. Br. 3.
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Application 13/749,423
STATEMENT OF THE CASE
The Invention
According to the Specification, the "invention relates generally to
medical camera systems and, more particularly, to endoscopic camera
systems for use in a surgical environment." Spec. ,r 2. 2 The Specification
explains that a "camera system according to an embodiment of the present
invention" includes four components: (1) "a camera head," (2) "a camera
control unit coupleable to the camera head," (3) "a monitor coupleable to the
camera control unit for displaying images from the camera head and
information from the camera control unit," and ( 4) "a tablet computer
coupleable to the camera control unit for control of the camera control unit
and the camera head" that "compris[ es] an application that is authenticated
by the camera control unit for pairing the tablet computer to the camera
control unit." Id. ,r 6, Abstract.
Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads as
follows:
1. A camera system comprising:
a camera head;
a camera control unit coupleable to the camera head, the
camera control unit further comprising an isolated
communication and power port;
2 This decision uses the following abbreviations: "Spec." for the
Specification, filed January 24, 2013; "Final Act." for the Final Office
Action, mailed June 29, 2017; "App. Br." for the Appeal Brief, filed
October 27, 2017; "Ans." for the Examiner's Answer, mailed February 22,
2018; and "Reply Br." for the Reply Brief, filed April 20, 2018.
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Application 13/749,423
a monitor coupleable to the camera control unit for
displaying images from the camera head and information from
the camera control unit; and
a tablet computer coupleable directly to the camera
control unit for control of the camera control unit and the
camera head, the tablet computer further comprising an
application that is authenticated by the camera control unit for
pairing the tablet computer to the camera control unit; and
wherein the tablet computer is initially coupled to the
isolated communication and power port of the camera control
unit for authentication and thereafter the tablet computer is
coupleable to the camera control unit wirelessly.
App. Br. 18 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
As evidence ofunpatentability under 35 U.S.C. § I03(a), the
Examiner relies on the following prior art:
Y amagishi US 6,510,283 Bl Jan.21,2003
Chatenever et al. ("Chatenever") US 2004/0028390 A9 Feb. 12,2004
Ido US 2005/0101316 Al May 12, 2005
Amling et al. ("Amling") US 2005/0200698 Al Sept. 15, 2005
Adler et al. ("Adler") US 2006/0055793 Al Mar. 16,2006
Azar et al. ("Azar") US 2006/0288234 Al Dec. 21, 2006
Crawley et al. ("Crawley") US 2008/0181316 Al July 31, 2008
Melder et al. ("Melder") US 2012/0162401 Al June 28, 2012
Sneh WO 00/08585 Feb. 17,2000
Childress et al. ("Childress") WO 01/80739 Al Nov. 1, 2001
Yamaki JP 2006-198241 Aug.3,2006
Ethernet over USB, WIKIPEDIA (July 10, 2016), https://en.wikipedia.org/w/
index.php?title=Ethemet_over_USB&oldid=458824557 ("WIKIPEDIA")
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Application 13/749,423
The Rejections on Appeal
Claims 1 and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Adler, Melder, Yamaki, Ido, and Crawley. Final
Act. 6-9.
Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Adler, Melder, Yamaki, Ido, Crawley, Childress, and
Azar. Final Act. 11-13.
Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Adler, Melder, Yamaki, Ido, Crawley, and Childress.
Final Act. 13-14.
Claims 7-11 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Adler, Melder, Yamaki, Ido, Crawley, and Official Notice. Final
Act. 9-11.
Claim 11 also stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Adler, Melder, Yamaki, Ido, Crawley, and Yamagishi.
Final Act. 15.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Adler, Melder, Yamaki, Ido, Crawley, and Amling. Final Act. 16.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Adler, Melder, Yamaki, Ido, Crawley, and Sneh. Final Act. 16-17.
Claims 18-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Adler, Melder, Yamaki, Ido, Crawley, and Chatenever. Final
Act. 17-18.
Claim 21 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Adler, Melder, Yamaki, Ido, Crawley, and WIKIPEDIA. Final
Act. 18-19.
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ANALYSIS
We have reviewed the§ 103(a) rejections in light of Appellants'
arguments that the Examiner erred. For the reasons explained below, we
concur with the Examiner's conclusions concerning unpatentability under
§ 103(a). We adopt the Examiner's findings and reasoning in the Final
Office Action (Final Act. 2-19) and Answer (Ans. 2-8). We add the
following to address and emphasize specific findings and arguments.
The§ 103(a) Rejections of Claims 1, 12, and 18-20
INDEPENDENT CLAIMS 1 AND 18: COMBINING MELDER
Appellants argue that the Examiner erred in rejecting independent
claims 1 and 18 because "Melder has a minimal medical imaging device,
that may not even have a display," and "Melder teaches away from" the
"systems of Adler and Yamaki" that "have camera control units, centralized
controllers and separate display devices." App. Br. 9; see Reply Br. 2.
Appellants also argue that "one skilled in the art would have no motivation
to combine either Adler or Yamaki with Melder." App. Br. 8; see Reply
Br. 2.
We disagree that Melder teaches away and that there is no motivation
to combine. "A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant." In re Gurley,
27 F.3d 551, 553 (Fed. Cir. 1994). But a reference does not teach away "if it
merely expresses a general preference for an alternative invention but does
not 'criticize, discredit, or otherwise discourage' investigation into" the
claimed invention. DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
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567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004)).
Here, Appellants fail to explain why an ordinarily skilled artisan
"would be discouraged from following the path set out in" Melder. See App.
Br. 7-9; Reply Br. 2-3. Appellants also fail to explain how Melder
"criticize[ s ], discredit[ s ], or otherwise discourage[ s ]" investigation into the
claimed invention. See App. Br. 7-9; Reply Br. 2-3. Thus, Appellants'
teaching-away argument lacks merit.
Regarding the Examiner's proffered motivation to combine, Melder
"relates generally to portable imaging systems," such as endoscopic imaging
systems. Melder ,r 2; see Final Act. 7. Melder describes some portable
endoscopic imaging systems as "heavy, cumbersome, and expensive."
Melder ,r 11; see id. ,r,r 8-9 ( cited by App. Br. 8). Hence, Melder seeks to
"further improve the portability" of endoscopic imaging systems. Id. ,r 13.
Melder discloses several embodiments of endoscopic imaging systems that
each include a camera, a camera control unit, and a display unit with a
monitor. See, e.g., id. ,r,r 36-39, 52-56, 60, 120-127, Figs. 2-3, 16.
Appellants wrongly assert that Melder' s systems "may not even have a
display." See App. Br. 9.
Further, Appellants mischaracterize Melder's systems as "minimal."
See App. Br. 9. Melder explains that an endoscopic imaging system may
include a "tablet PC," e.g., as a display unit or a control unit (or both).
Melder ,r,r 36-39, 45, 56, 120, Abstract, Figs. 2, 16. Melder also explains
that an endoscopic imaging system may "communicate directly with one or
more conventional, commercially-available external computers," such as
"a PC, a desktop computer, a smartphone such as the Apple® iPhone®, or a
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tablet PC such as the Apple® iPad® or an Android or Linux OS-based tablet
PC." Id. ,r 120; see id. ,r,r 56, 60, 125, 127, Abstract, Fig. 16. The external
computer "display[ s] the captured images" in addition to or instead of an
"attached or attachable" display unit. Id. ,r 120.
Claims 1 and 18 encompass endoscopic imaging systems, including
portable systems. App. Br. 18, 21 (Claims App.). In view ofMelder's
desire to "further improve the portability" of endoscopic imaging systems,
the Examiner correctly finds that using Melder's "tablet PC" instead of
Adler's "desktop computer" would "result in a more portable system due to
the more portable nature of tablet PCs vs. standard desktop computers such
as those shown in Adler." Final Act. 7; see Ans. 2-3; see also Final
Act. 3--4.
Thus, the Examiner provides "articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness." See
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). "[T]he law does not require
that the references be combined for the reasons contemplated by the
inventor." In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); see Outdry
Techs. Corp. v. Geox S.p.A., 859 F.3d 1364, 1371 (Fed. Cir. 2017). "[A]ny
need or problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining" references.
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007).
Appellants assert that the motivation "to obtain a more portable
system through the use of more compact tablet PC hardware is
unsupported." Reply Br. 2. But the law does not require that the references
expressly articulate a motivation to combine. See, e.g., Arctic Cat Inc. v.
Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1359 (Fed. Cir. 2017).
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Instead, an obviousness analysis can "consider a range of real-world facts to
determine 'whether there was an apparent reason to combine the known
elements in the fashion claimed by the patent at issue."' Intercont 'l Great
Brands LLC v. Kellogg N. Am. Co., 869 F.3d 1336, 1344 (Fed. Cir. 2017)
(quoting KSR, 550 U.S. at 418). In addition, an obviousness analysis can
"take account of the inferences and creative steps that a person of ordinary
skill in the art would employ." KSR, 550 U.S. at 418. Here, the Examiner
identifies a reason that would have prompted a person of ordinary skill to
combine Melder's "tablet PC" with Adler's endoscopic imaging system, i.e.,
to achieve "a more portable system." See Final Act. 3--4, 7; Ans. 2-3.
Further, the Examiner correctly finds that Yamaki discloses a camera
system that includes a "tablet PC." Final Act. 7; see, e.g., Yamaki ,r,r 20, 26,
28, 54, 63----67, 104--113, Figs. 1-2. Yamaki explains that the tablet PC
serves as one of several "system terminals" that "operate the medical
equipment." Yamaki ,r,r 32, 63, 90, 96. Appellants identify no impediment
to using Yamaki's tablet PC with Adler's endoscopic imaging system. See
App. Br. 7-11; Reply Br. 2-3.
INDEPENDENT CLAIMS 1 AND 18: COMBINING loo
Appellants assert that "one skilled in the art would have no motivation
to modify the systems of Adler, Yamaki or Melder with the teachings of
Ido." App. Br. 9; see Reply Br. 3. In particular, Appellants contend that
"Ido is directed to a system for configuring an expansion device, such as a
camera adapter, for a portable information terminal such as a personal digital
assistant." App. Br. 9; see Reply Br. 3. Appellants also contend that "the
portable information terminal [in Ido] has limited functionality and is very
different than the centralized controllers and displays of Adler and Yamaki
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which would allow for wireless programming of the tablet computer without
a user having to remember or generate authentication information, one
primary concern of Ido." App. Br. 9; see Reply Br. 3.
We disagree that there is no motivation to combine Ido with the other
references. Ido discloses an authentication technique that two devices, i.e., a
portable-information device and a function-expansion device, may employ
to communicate with one another. See, e.g., Ido ,r,r 3, 5, 12-15, 26-28, 35,
51, Fig. 4; see Final Act. 8. Ido identifies "personal digital assistants
(PD As) and cellular telephones" as examples of portable-information
devices and a camera as an example of a function-expansion device. See,
e.g., Ido ,r,r 3, 5, 7, 26, 28, 35, 47. To exchange information, the portable-
information device and the function-expansion device communicate either
wirelessly or through a "wired connection via a signal line." See, e.g., id.
,r,r 6-7, 12-14, 26-28, 30, 33-35, 39, 47, Figs. lA-lB, 2-3. When initially
connected through the wired connection, the portable-information device
generates an authentication code, stores the authentication code, and sends
the authentication code to the function-expansion device. Id. ,r,r 39-41,
Fig. 3. The function-expansion device then stores the authentication code.
Id. ,r 42, Fig. 3. Later, when communicating with one another wirelessly,
the two devices use the authentication code stored in each device for
authentication purposes. Id. ,r,r 48--49, 51, Fig. 6.
Ido explains that the authentication technique permits "processing for
connection authentication without reducing security" and "can be easily
performed." Ido ,r,r 12-14. Ido also explains that "automatically generating
authentication information simplifies user operation." Id. ,r 15. "[S]ince the
authentication code for wireless connection is automatically generated" for
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the two devices when in "wired communication" and then stored in each
device, "users are not required to input the authentication code," thus
simplifying user operation "but ensuring security." Id. ,r 51.
In light of those explanations, the Examiner properly finds that a
person of ordinary skill would have been motivated to use Ido 's
authentication technique with a tablet computer and a camera control unit
because "the authentication could be done over a more secure wired
connection rather than a wireless connection which may be open to
interception." Final Act. 8; see Ans. 4; see also Final Act. 3--4. As the
Examiner reasons, "by using a wired connection, authentication information
could be automatically passed between the camera control unit and the tablet
PC, thereby performing authentication without requiring a user to input or be
aware of an authentication code ensuring security." Final Act. 8 (citing Ido
,r 51 ); see Ans. 4.
Appellants assert that "security concerns may be outweighed by the
inconvenience of having to physically connect the tablet to the camera
control unit." App. Br. 10. That assertion constitutes attorney argument.
Attorney argument "cannot take the place of evidence." In re Pearson,
494 F.2d 1399, 1405 (CCPA 1974). Further, the Examiner correctly finds
that even if "a physical connection may be thought to the inconvenient, this
would not be sufficient to teach away from performing a wired connection
for authentication as taught by Ido." Ans. 4.
Appellants argue that Ido "is not analogous art" because Ido "is
directed to authentication of devices without user interfaces such as are
present in tablet computers." Reply Br. 3. That argument does not,
however, respond to any arguments in the Answer. See Ans. 3--4.
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Appellants advance that argument for the first time in the Reply Brief. Such
arguments "will not be considered by the Board" unless an appellant shows
good cause. See 37 C.F.R. § 4I.41(b)(2); see also Ex parte Borden,
93 USPQ2d 14 73, 14 7 5 (BP AI 2010) (informative) ( discussing procedural
difficulties with belated arguments). Here, Appellants have not shown good
cause for the belated nonanalogous-art argument. Thus, we decline to
consider it. "Considering an argument advanced for the first time in a reply
brief ... is not only unfair to an appellee, but also entails the risk of an
improvident or ill-advised opinion on the legal issues tendered." McBride v.
Merrell Dow & Pharm., Inc., 800 F.2d 1208, 1211 (D.C. Cir. 1986).
We note, however, that the claims do not specify that a camera control
unit includes a user interface. See App. Br. 18, 21 (Claims App.). We also
note that Ido identifies "personal digital assistants (PD As) and cellular
telephones" as examples of portable-information devices. See, e.g., Ido ,r,r 5,
7, 26. Like personal digital assistants and cellular telephones, tablet
computers are portable-information devices. Tablet computers, personal
digital assistants, and cellular telephones all include user interfaces. For the
issues decided here, tablet computers differ from personal digital assistants
and cellular telephones in no material way. For instance, a tablet computer
could serve as a personal digital assistant.
INDEPENDENT CLAIMS 1 AND 18: COMBINING CRAWLEY
Appellants contend that in Crawley "the only discussion of medical
devices is in the first paragraph which states 'various communications,
medical, computing, industrial, and other systems implement isolation
barriers to electrically isolate sections of electronic circuitry."' App. Br. 10
( quoting Crawley ,r 1 ); see Reply Br. 3. Appellants further assert that
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"[t ]here is simply no motivation for" an ordinarily skilled artisan "to modify
any of Adler in view of Melder in view of Yamaki in view of Ido to have an
isolated communication and power port in a medical camera system for
connecting a non-medical approved device, such as a tablet, to a camera
control unit as claimed." App. Br. 10; see Reply Br. 3.
We disagree that there is no motivation to combine Crawley with the
other references. The Examiner correctly finds that (1) "Crawley discloses
an isolated communication and power port" that "provide[s] data and power
between two systems while maintaining isolation between the two systems"
and (2) "[s]uch a system can provide power and communication lines while
providing surge and galvanic isolation in medical systems." Final Act. 8
(citing Crawley ,r,r 1-2, 59---63, Fig. 8); see Crawley ,r,r 1-2, 59---63, Fig. 8;
see also Ans. 4--5. Consistent with those findings, Crawley explains that
"[ v ]arious communications, medical, computing, industrial, and other
systems implement" isolators "to electrically isolate sections of electronic
circuitry." Crawley ,r 1. Crawley also explains that isolators
advantageously "provide[] isolation both for surge and galvanic isolation"
while still transferring communication signals and power. Id. ,r 2; see
id. ,r 1; see also Final Act. 8 ( citing Crawley ,r,r 1-2 ).
In light of those explanations, the Examiner properly finds that a
person of ordinary skill would have been motivated to use "an isolated
communication and power port" according to Crawley in an Adler-Yamaki-
Melder imaging system "so that surge and galvanic isolation may be
maintained between the tablet computer and the camera control unit." Final
Act. 8-9; see Ans. 4--5; see also Final Act. 3--4. Thus, the Examiner
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provides "articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness." See Kahn, 441 F.3d at 988.
That Crawley discusses medical systems only once does not impair
the rejection. That discussion suffices to identify medical systems, such as
endoscopic imaging systems, as appropriate applications for Crawley's
isolators. "A person of ordinary skill is also a person of ordinary creativity,
not an automaton," and "in many cases ... will be able to fit the teachings of
multiple patents together like pieces of a puzzle." KSR, 550 U.S. at 420-21.
"The rationale of KSR does not support [the] theory that a person of ordinary
skill can only perform combinations of a puzzle element A with a perfectly
fitting puzzle element B." ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1219
(Fed. Cir. 2016).
INDEPENDENT CLAIM 18: CHATENEVER
For claim 18, Appellants contend that Chatenever "fails to teach or
suggest the use of a tablet computer directly coupled to a camera control unit
or 'the camera control unit further comprising an isolated communication
and power port' and 'wherein the tablet computer is initially coupled to the
isolated communication and power port of the camera control unit' as recited
in claim 18." App. Br. 16; see Reply Br. 6. That contention does not
persuade us of Examiner error because the Examiner relies on the other
references-not Chatenever-to teach or suggest the allegedly missing
limitations. See Final Act. 2-3, 6-9, 17; Ans. 2-5.
For claim 18, Appellants assert that "one of skill in the art would have
no motivation" to combine Chatenever with the other references because
"Yamaki already teaches a centralized control device for control of
additional devices." App. Br. 15-16; see Reply Br. 6.
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We disagree that there is no motivation to combine Chatenever with
the other references. As Chatenever explains, a camera head may "house
single or multiple imaging devices, such as charge coupled devices and the
like, for image acquisition," and a camera control unit "is usually difficult to
configure for proper communication with varying types of camera heads
because camera heads use varying types of imaging devices that can differ in
pixel resolution, ... signal output type (i.e. analog or digital), physical size,
and in other characteristics." Chatenever ,r,r 3, 5. Chatenever instructs that
"as repairs, modifications, or improvements are made to camera heads," the
originally designed camera control unit "may become incompatible and may
require upgrading as well." Id. ,r 8. To address those problems, Chatenever
provides a camera control unit with "replaceable and configurable hardware
components" suitable to (1) "maintain[] performance compatibility with
various camera heads utilizing various technologies," (2) "adapt[] to
application needs," and (3) enable "expandable and/or alterable capabilities
as improvements become available." Id. ,r 15; see id. ,r,r 2, 41--44, 55, 62-
67, Figs. 3--4; see also Final Act. 17-18. The Examiner calls those
replaceable and configurable hardware components "expansion ports." Final
Act. 5, 17.
In light of Chatenever' s disclosure, the Examiner properly finds that a
person of ordinary skill would have been motivated to combine Chatenever
with the other references "so that the functionality of the camera control unit
could be expanded through the use of additional devices," thus "expanding
the capabilities of the system." Final Act. 17; Ans. 7. As the Examiner
reasons, "having a centralized control device" expandable "to include new
features would be desirable as it would allow for new features to be added to
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the system thereby removing the need to replace the centralized control
device when expansions or upgrades are required." Final Act. 5; see Ans. 7.
Yamaki does not disclose replaceable and configurable hardware
components as taught by Chatenever. Those replaceable and configurable
hardware components provide benefits absent from Yamaki. Contrary to
Appellants' assertion, Chatenever and Yamaki do not overlap in a way that
negates a motivation to combine. Further, as the Examiner properly
determines, "nothing in Yamaki or the concept of centralized control in
general would forbid or make undesirable a centralized control device with
expansion ports to increase the functionality of the centralized control
device." Final Act. 5; see Ans. 7.
In addition, Appellants argue that "no prima facie case of obviousness
has been made for claim 18" because "there is no teaching or suggestion in
the cited prior art that the additional device would be controllable by the
tablet computer." Reply Br. 6. Appellants advance that argument for the
first time in the Reply Brief. Because that argument does not respond to any
arguments in the Answer and Appellants have not shown good cause, we
decline to consider that argument. See 37 C.F .R. § 41.41 (b )(2).
SUMMARY FOR INDEPENDENT CLAIMS 1 AND 18
For the reasons discussed above, Appellants' arguments have not
persuaded us that the Examiner erred in rejecting claims 1 and 18 under
§ 103(a). In our view, the claimed subject matter exemplifies the principle
that "[ t ]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results."
KSR, 550 U.S. at 416. Thus, we sustain the§ 103(a) rejections of claims 1
and 18.
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DEPENDENT CLAIM 12
Claim 12 depends directly from claim 1. Appellants do not argue
patentability separately for this dependent claim. App. Br. 10-11. Thus, we
sustain the§ 103(a) rejection of this dependent claim for the same reasons as
claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
DEPENDENT CLAIMS 19 AND 20
Claim 19 depends from claim 18 and specifies that "the tablet
computer transfers at least one of software and firmware updates to the
camera control unit." App. Br. 21 (Claims App.). Claim 20 depends from
claim 19 and specifies that "the tablet computer transfers at least one of
software and firmware updates to" an "additional device." Id.
For claims 19 and 20, Appellants again challenge the motivation to
combine Chatenever with the other references. See App. Br. 16; Reply
Br. 7. In particular, Appellants contend that "Yamaki teaches a network and
local storage device and one skilled in the art would have no motivation to
combine Yamaki and Chatenever or to have" Yamaki' s tablet PC "transfer
software/firmware updates to the camera control unit or an additional
device." Reply Br. 7; see App. Br. 16.
Contrary to Appellants' contention, Chatenever and Yamaki do not
overlap in a way that negates a motivation to combine. The Examiner
correctly finds that ( 1) Chatenever "discloses transferring updated software
from a storage device to the camera control unit and [a] replaceable
hardware device" and (2) "[t]he inclusion of such an update system allows
the camera control unit and additional devices to be configured as needed
according to an attached camera head." Final Act. 18 ( citing Chatenever
,r,r 41--43, 62----67, Fig. 1); see Chatenever ,r,r 2, 15, 41--43, 62----67, Figs. 1, 4.
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For example, Chatenever discloses a system where a program for an updated
or replacement camera head "overwrite[ s] an existing application contained"
in a camera control unit. Chatenever ,r 43; see id. ,r 66. Appellants fail to
identify in Yamaki an update system similar to Chatenever' s update system.
See App. Br. 15-16; Reply Br. 6-7. Hence, Chatenever provides benefits
absent from Yamaki.
Because Appellants' arguments have not persuaded us that the
Examiner erred in rejecting claims 19 and 20 under§ 103(a), we sustain the
§ 103(a) rejection of these dependent claims.
The§ 103(a) Rejections of Claims 2, 3, 5, 6, 13, 14, and 21
Claims 2, 3, 5, 6, 13, 14, and 21 depend directly or indirectly from
claim 1. For these dependent claims, Appellants assert that the additionally
cited secondary references do not "remedy the defects" in Adler, Melder,
Yamaki, Ido, and Crawley as applied to claim 1. App. Br. 12-15. As
discussed above, however, no such defects exist. Thus, we sustain the
§ 103(a) rejections of these dependent claims for the same reasons as
claim 1.
The§ 103(a) Rejection of Claims 7-11
DEPENDENT CLAIM 7
Claim 7 depends directly from claim 1 and specifies that "the tablet
application locks out all other functionality on the tablet computer upon
connection with the camera control unit." App. Br. 19 (Claims App.).
Appellants argue that the Examiner erred in rejecting claim 7 because "the
Examiner's use of Office [sic] Notice ... constitutes improper hindsight
reasoning." App. Br. 11; see Reply Br. 3--4. Appellants also argue that a
person of ordinary skill "would [have] no motivation to modify any of the
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cited references to have a tablet application that lock[ s] out all other
functionality on the tablet computer." App. Br. 11; see Reply Br. 3--4.
Appellants' arguments do not persuade us of Examiner error. The
Examiner takes Official Notice "that it is well known in the art to use
applications which lock out all other functionality of a tablet computer to
ensure that access to the application is not hindered by other applications on
the computer." Final Act. 9. Ensuring "that access to the application is not
hindered by other applications on the computer" constitutes a reason that
would have prompted a person of ordinary skill to modify the references to
achieve claim 7's subject matter. As discussed above, an obviousness
analysis can "consider a range of real-world facts to determine 'whether
there was an apparent reason to combine the known elements in the fashion
claimed by the patent at issue."' Intercont 'l Great Brands, 869 F .3 d at 1344
(quoting KSR, 550 U.S. at 418).
Because Appellants' arguments have not persuaded us that the
Examiner erred in rejecting claim 7 under§ 103(a), we sustain the§ 103(a)
rejection of this dependent claim.
DEPENDENT CLAIMS 8-10
Claims 8-10 depend directly from claim 1. Appellants do not argue
patentability separately for these dependent claims. App. Br. 11-12; Reply
Br. 3--4. Thus, we sustain the§ 103(a) rejection of these dependent claims
for the same reasons as claim 1. See 37 C.F .R. § 41.37 ( c )(1 )(iv).
DEPENDENT CLAIM 11
Claim 11 depends directly from claim 1 and specifies that "when the
tablet computer is displaying live images from the camera head an indication
that the tablet computer is displaying live images is displayed on the
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monitor." App. Br. 20 (Claims App.). Appellants argue that the Examiner
erred in rejecting claim 11 because (1) "[t ]he Office action states that it is
well known to provide an indication that displayed images are live" and
(2) claim 11 recites "a different concept; namely, that the monitor displays
an indicator not that the monitor is displaying live images, but rather that the
tablet is displaying live images." App. Br. 12; see Reply Br. 4.
Appellants' arguments do not persuade us of Examiner error because
the rejection rests on the combined disclosures in the references as well as
Official Notice, and the combined disclosures teach or suggest claim 11 's
subject matter. See Final Act. 9-11. An obviousness analysis should
consider what the combined disclosures in the references "taken as a whole
would suggest to one of ordinary skill in the art." In re McLaughlin,
443 F.2d 1392, 1395 (CCPA 1971).
Here, the Examiner correctly finds that Yamaki "discloses receiving
images from the camera head on the tablet computer." Final Act. 11 (citing
Yamaki ,r 96); see Yamaki ,r 96. Yamaki explains that the tablet computer
displays "the endoscope image and vital sign measurement data at the time
of an operation." Yamaki ,r 96. The "vital sign measurement data"
constitutes "an indication that the tablet computer is displaying live images"
according to claim 11. Further, the Examiner correctly finds that Melder
"discloses transmitting received images to multiple computers," and thus
"the monitor displays the image" currently on the tablet computer. Final
Act. 11 ( citing Melder Fig. 16); see Melder ,r 120, Abstract, Fig. 16.
Referring to Figure 16, Melder explains that an endoscopic imaging system
may "communicate directly with one or more conventional, commercially-
available external computers," e.g., a desktop computer or a tablet computer
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( or both), and the external computer "display[ s] the captured images" in
addition to or instead of an "attached or attachable" display unit. Melder
,r 120; see id. ,r,r 56, 60, 125, 127, Abstract, Fig. 16. The external
computer's monitor constitutes a monitor according to claim 11. See Final
Act. 11; Ans. 5. As the Examiner reasons, "if both displays are displaying
the same image, a 'live' indicator would" appear on the monitor, e.g., the
"vital sign measurement data" that also appears on the tablet computer.
Ans. 5; see Final Act. 4. Thus, the combined disclosures in the references
teach or suggest claim 11 's subject matter.
Because Appellants' arguments have not persuaded us that the
Examiner erred in rejecting claim 11 under§ 103(a), we sustain the§ 103(a)
rejection of this dependent claim.
The Additional§ 103 (a) Rejection of Claim 11 in View of Yamagishi
Appellants argue that the Examiner erred in rejecting claim 11
because the "claim recites 'an indication that the tablet computer is
displaying live images"' and, therefore, requires "an indication of what is
being done on the tablet computer." App. Br. 13; see Reply Br. 5.
Appellants seek to distinguish Y amagishi from claim 11 by asserting that
Y amagishi' s "display indicative of the state of connection of an external
computer" merely provides "an indication that a table [sic] is connected."
App. Br. 13; see Reply Br. 5.
Appellants' arguments do not persuade us of Examiner error because
the rejection rests on the combined disclosures in the references, and the
combined disclosures teach or suggest claim 11 's subject matter. See Final
Act. 15; Ans. 6. As discussed above, the Examiner correctly finds that
(1) Yamaki "discloses receiving images from the camera head on the tablet
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computer" and (2) Melder "discloses transmitting received images to
multiple computers," and thus "the monitor displays the image" currently on
the tablet computer. Final Act. 11, 15 ( citing Yamaki ,r 96; Melder Fig. 16);
see Yamaki ,r 96; Melder ,r 120, Abstract, Fig. 16. Further, the Examiner
correctly finds that Y amagishi "discloses a camera apparatus including a
display which provides a display of various data including a display
indicative of the state of connection with an external computer." Final
Act. 15 (citing Yamagishi, 5:11-26); see Yamagishi, 1:11-15, 4:66-5:47,
Fig. 1.
In particular, Y amagishi describes "a photo-taking apparatus for
photo-taking a still image and/or a moving image." Yamagishi, 1: 11-15,
2: 18-20, Fig. 1. The photo-taking apparatus includes a display part that
"displays the operating state" of the apparatus. Id. at 4:66-5:3. The display
part also displays operating parameters and status information for the
apparatus, such as "a display indicative of the state of connection with an
external computer." Id. at 5:11-26.
The Examiner maps an external computer in Y amagishi to a tablet
computer in an Adler-Yamaki-Melder imaging system. Final Act. 15; see
Ans. 6. The Examiner correctly finds that an Adler-Yamaki-Melder imaging
system with a Y amagishi display "allow[ s] a user to quickly determine
whether or not the tablet computer is connected for viewing of live
streaming images." Final Act. 15. That improvement provides a motivation
to combine Yamagishi with the other references. Id. "[T]he desire to
enhance commercial opportunities by improving a product or process is
universal .... " DyStar Textilfarben GmbH v. CH Patrick Co., 464 F.3d
1356, 1368 (Fed. Cir. 2006). "[A]n implicit motivation to combine" may
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result from a desire to make a product or process "stronger, cheaper, cleaner,
faster, lighter, smaller, more durable, or more efficient." Id.
Further, the Examiner reasons that an Adler-Yamaki-Melder imaging
system with a Yamagishi display includes "an indication that the tablet is
connected" that "is effectively an indication that the tablet is displaying live
images since once the tablet is connected, images from the system are
transmitted and displayed." Ans. 6 (citing Melder Fig. 16). Thus, the
combined disclosures in the references teach or suggest claim 11 's subject
matter.
Because Appellants' arguments have not persuaded us that the
Examiner erred in rejecting claim 11 under§ 103(a), we sustain the§ 103(a)
rejection of this dependent claim.
DECISION
We affirm the Examiner's decision to reject claims 1-3, 5-14,
and 18-21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED
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