Ex Parte Krattiger

Patent Trial and Appeal Board

Jul 27, 2016

12421254 (P.T.A.B. Jul. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/421,254 0410912009
131672 7590 07/28/2016
Whitmyer IP Group LLC
600 Summer Street
3rd Floor
Stamford, CT 06901
FIRST NAMED INVENTOR
Beat Krattiger
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.
03685-P0025A 4100
EXAMINER
IGYARTO, CAROLYN
ART UNIT PAPER NUMBER
2884
MAILDATE DELIVERY MODE
07/28/2016 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 BEAT KRATTIGER
Appeal2014-007002
Application 12/421,254
Technology Center 2800
Before ST. JOHN COURTENAY III, JASON J. CHUNG, and
JOYCE CRAIG, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1, 3, 4, 6, 8, 9, 11-14, 16-19, 21, and 22. Claims 2, 5, 7,
10, and 20 are cancelled. Claim 15 is objected to. (Final Act. 23). We have
jurisdiction under 35 U.S.C. § 6(b) as to rejected claims 1, 3, 4, 6, 8, 9, 11-
14, 16-19, 21, and 22. An oral hearing was held on July 19, 2016.
We Affirm.
Invention
The invention on appeal relates "to an apparatus and method for
fluorescent imaging." (Spec. i-f 2.)
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Representative Claim
1. An apparatus for fluorescent imaging, comprising:
- a light source adapted to generate at least one modulated
fluorescence excitation beam;
- a light transmission system comprising at least one
illuminating lens adapted to be inserted into a hollow cavity of an
object or of a human or animal body and adapted to transmit the
fluorescence excitation beam onto an area that is to be examined;
-a light imaging system comprising at least one imaging lens
adapted to be inserted into the hollow cavity of an object or of a
human or animal body and a beam splitter, wherein the light imaging
system is adapted to transmit a fluorescent beam and a reflected beam
from the area to be examined to the beam splitter, wherein the beam
splitter divides the fluorescent and reflected beams onto a first image
sensor and a second image sensor, each of which comprises a number
of pixels;
- a common shaft in which the illuminating lens and the
imaging lens are positioned for insertion into the hollow cavity of an
object or of a human or animal body;
- [L 1] a video camera arrangement that is detachably
connected to the common shaft; and
- a control and evaluation apparatus for controlling the light
source, to power the first image sensor and the second image sensor,
and to evaluate data supplied by the first image sensor to generate a
fluorescent image and to evaluate data supplied by the second image
sensor, wherein:
both;
-the reflected beam comprises reflected or scattered light, or
[L2] the control and evaluation apparatus modulates the
fluorescence excitation beam continuously during operation;
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- [L3] the first image sensor is a phase-sensitive solid state
detector contained in the video camera arrangement;
-the data supplied by the first image sensor contains phase
information of the fluorescent beam pixel by pixel;
[L4] the control and evaluation apparatus calculates
fluorescence lifetime data on a pixel by pixel basis using the
phase information from the fluorescent beam such that the
generated fluorescent image contains pixel-by-pixel
fluorescence lifetime information;
-the control and evaluation apparatus generates an image using
the data received from the second image sensor based on the reflected
beam.
(Bracketed matter and emphasis added regarding the contested limitations,
labeled as Ll-L4.)
Rejections 1
A. Claims 1, 3, 4, 13, 19, and 21 are rejected under 35 U.S.C. § 103(a)
over the combined teachings and suggestions of Miura et al. (US
2006/0052710 Al; Mar. 9, 2006) in view ofBambot et al. (US
2004/0021848 Al; Feb. 5, 2004) and Cline et al. (US 2008/0177140
Al; July 24, 2008).
1 The Examiner withdrew all previous rejections under 35 U.S.C. § 112, first
paragraph. Therefore, these rejections are not before us on appeal. (Ans. 3,
Final Act. 2). The Declaration by the named inventor (received April 19,
2013) to overcome the rejections under 35 U.S.C. §112, first paragraph
( enablement and written description) has been fully considered, but is
deemed to be moot because the Examiner withdrew the rejections under
35 U.S.C. § 112, first paragraph.
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B. Claim 6 is rejected under 35 U.S.C. § 103(a) over the combined
teachings and suggestions of Miura, Bambot, Cline, and further in
view of Sampas (US 2003/0218746 Al; Nov. 27, 2003).
C. Claims 8, 9, 11, 12, and 18 are rejected under 35 U.S.C. § 103(a) over
the combined teachings and suggestions of Miura, Bambot, Cline, and
further in view of Watanabe et al. (US 6,449,400 Bl; Sept. 10, 2002).
D. Claims 14, 16, and 17 are rejected under 35 U.S.C. § 103(a) over the
combined teachings and suggestions of Miura, Bambot, Cline, and
further in view of Price (US 2003/0184730 Al; Oct. 2, 2003).
E. Claim 22 is rejected under 35 U.S.C. § 103(a) over the combined
teachings and suggestions of Miura, Bambot, Cline, and further in
view of Smith (US 2003/0144650 Al; July 31, 2003).
Grouping of Claims
Based on Appellant's arguments, we decide the appeal of claims 1, 3,
4, 19, and 21, rejected under rejection A, on the basis of representative claim
1. Based on Appellant's arguments, we decide the appeal of claims 8, 9, 11,
12, and 18, rejected under rejection C, on the basis of representative claim 9.
We address separately argued dependent claims 6 (rejection B), 13
(rejection A), and 22 (rejection E), infra. See 37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
We have considered all of Appellant's arguments and any evidence
presented. We disagree with Appellant's arguments, and we adopt as our
own: ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Answer in response to Appellant's arguments (Ans. 3-11). However, we
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highlight and address specific findings and arguments for emphasis in our
analysis below.
Combinability of the Cited References under 35 U.S.C. § 103
As a threshold issue, we decide the question of whether the Examiner
erred by improperly combining the cited references under 35 U.S.C. § 103.
Appellant contends, inter alia, "One of Ordinary Skill in the Art
Would Never Have Made the Combination of Bambot and Miura" (App. Br.
12-13), and "One of Ordinary Skill in the Art Never Would Have Included a
Beam Splitter in the System of Miura" (App. Br. 13-14),
We do not find Appellant's arguments persuasive. We note the
Examiner finds:
Miura teaches providing fluorescent information pixel by pixel
([0088]; [0093]), but does not explicitly teach the first image
sensor is phase-sensitive or that the signal output by the CCD
contains phase information of the fluorescent beam pixel by
pixel. Bambot teaches detecting fluorescent radiation with a
CCD and detecting phase information of the fluorescent
radiation emitted for the benefit of determining characteristics
of the target tissue, for example if a tissue is cancerous or not
and distinguishing between tissue types ([0055]; [0111]).
(Ans. 3--4.)
We observe the background section of Bambot expressly states, "[i]t
is known to look at the decay time of fluorescent emissions to determine the
type or condition of an illuminated tissue." (i-f8.) Bambot further notes that
previous "apparatus for detection of the lifetime of fluorescent emissions
have concentrated on directly measuring the lifetime of the fluorescent
emissions." (i-f9.)
Moreover, (as discussed during the July 19th oral hearing), Appellant's
background section of the Specification (i-f8) describes a prior art apparatus
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that uses phase information from the modulated excitation beam to obtain a
"pixel-by-pixel read back of stored charges" (id.), which appears to be an
admission by Appellant that generating a corresponding image that "contains
pixel-by-pixel fluorescence lifetime information" (claim 1) was known in
the art at the time of the invention. See Spec. (8):
European patent, EP 1746410 Al, disclos[ing] a microscopic
apparatus in which an object is illuminated with high frequency
modulated radiation and is observed with a phase-sensitive
solid-state detector that includes a number of pixels. The
detector makes possible the pixel-by-pixel phase-selective
storage of charge carriers that are released by the impinging
radiation and the pixel-by-pixel read back of stored charges.
Because of a corresponding evaluation of the charge value to be
ascribed to the various phases of the incident signal, a pixel-by-
pixel determination of the phase difference between the
received signal and the light radiation becomes possible, which
in turn is a measure of the fluorescence lifetime.
(Emphasis added).
Appellant additionally refers to the prior art teachings of EP 1746410
Al in the detailed description section of the Specification (i-f75): "Through a
corresponding evaluation, as indicated for instance in EP l 746410Al, the
phase displacement and thus the time lapse may be ascertained pixel by
pixel." (Emphasis added).
Appellant appeared to admit during the oral hearing (held on July 19,
2016) that the principal purported improvement of the instant invention is to
combine an endoscope with known image processing techniques that use
pixel-by-pixel florescence lifetime information obtained with the use of
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.. • £' , • / .. •-t -t -t -.---i-r"'I.. -1 ,_, A / A -1 A .l -1 >. ') TT pnase mrormauon ~e.g., as aescrmea oy bl:" l /4b41UA1J.~ ttowever, we
find medical endoscopes were well known in the art at the time of the
invention, as evidenced by Miura (e.g., Title, Abstract, Fig. 14), and as
described by Bambot (i-f20 "An instrument embodying [the] present
invention could be in the for[ m] of an endoscope ... to be introduced in to ..
. [the] cavity of a patient's body.").
The Examiner looks to the tertiary Cline reference (i-f23) for teaching a
beam splitter, which we find is a familiar optics component. Therefore, on
this record, we are not persuaded the Examiner erred in finding an artisan
would have been motivated:
to try including a beam splitter, as taught by Cline, in the light-
imaging means, as taught by Miura, in order to direct and split
the incoming light to the two separate sensors, for the benefit of
simultaneously detecting different aspects of the incoming light
signal ....
(Final Act. 12.) We also note Bambot (i-fl6) evidences the well-known use
of beam splitters in optics: "The returned fluorescent emissions are
conveyed to a polarizing beam splitter that separates the returned
electromagnetic radiation into two light beams that are polarized in mutually
perpendicular planes." (Emphasis added).
2 A statement by an applicant in the Specification or made during
prosecution identifying the work of another as "prior art" is an admission,
which can be relied upon for both anticipation and obviousness
determinations, regardless of whether the admitted prior art would otherwise
qualify as prior art under the statutory categories of 35 U.S.C. § 102.
Riverwood Int'! Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354 (Fed. Cir.
2003); Constant v. Advanced Micro-Devices Inc., 848 F.2d 1560, 1570 (Fed.
Cir. 1988). Here, we do not rely on EP 1746410Al as a new ground of
rejection, but instead find it to be cumulative to the teachings and
suggestions of Miura and Bambot, as relied on by the Examiner.
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Given the evidence of record before us, we find Appellant's claimed
apparatus is merely a combination of familiar elements (as cited by
Examiner in the respective references), which would have realized a
predictable result when combined using known methods. 3 In other words,
Appellant has not shown the contested claimed invention is "more than a
combination of prior art elements according to known methods to yield
predictable results." KSR, 550 U.S. at 416.
We further agree with the Examiner (Ans. 5---6) that Appellant
principally focuses on attacking the references in isolation. We note the
Examiner's rejections are each based on the combined teachings and
suggestions of the cited references. 4 By not specifically addressing the
Examiner's proffered combinations of references, Appellant has failed to
address the Examiner's specific findings. Moreover, Appellant provides no
evidence that combining the respective teachings of the references cited by
the Examiner would have been "uniquely challenging or difficult for one of
ordinary skill in the art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007).
3 The Supreme Court has determined that the conclusion of obviousness can
be based on the interrelated teachings of multiple patents, the effects of
demands known to the design community or present in the marketplace, and
the background knowledge possessed by a person having ordinary skill in
the art. KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). The
skilled artisan is "a person of ordinary creativity, not an automaton." Id. at
420-21.
4 See In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citing In re
Keller, 642 F.2d 413, 425 (CCPA 1981)); see also In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986) ("One cannot show nonobviousness
by attacking references individually where the rejections are based on
combinations of references.").
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Therefore, for essentially the same reasons articulated by the
Examiner in the Answer ( 5-7), on this record, we are not persuaded by
Appellant's arguments (App. Br. 12-14), alleging the cited references have
been improperly combined under§ 103.
Rejection A of claims 1, 3, 4, 19, and 21under35 U.S.C. § 103(a)
Issue: Under 35 U.S.C. § 103(a), did the Examiner err in finding the
cited combination would have taught or suggested the following contested
limitations L 1-L4:
[L 1] a video camera arrangement that is detachably connected to the
common shaft; and {Examiner takes Official Notice-Final Act. 12}
[L2] the control and evaluation apparatus modulates the fluorescence
excitation beam continuously during operation;
[L3] the first image sensor is a phase-sensitive solid state detector
contained in the video camera arrangement;
[L4] the control and evaluation apparatus calculates fluorescence
lifetime data on a pixel by pixel basis using the phase information from the
fluorescent beam such that the generated fluorescent image contains pixel-
by-pixel fluorescence lifetime information;
within the meaning of claim 1? 5
5 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997). See Spec. i-f97: "While the invention has been
specifically described in connection with certain specific embodiments
thereof, it is to be understood that this is by way of illustration and not of
limitation .... " (Emphasis added).
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Regarding contested limitation Li, we agree with the Examiner that
"Appellant has not adequately traversed the official notice regarding a video
camera being detachably connected to a common shaft." (Ans. 9.) In
particular, Appellant has not specifically identified the supposed error in the
Examiner's action, which would include stating why the noticed fact is not
considered to be common knowledge or well-known in the art. See MPEP §
2144.03.6 Because Appellant has not met his burden, on this record, we are
not persuaded the Examiner erred. Absent any contrary evidence in the
record proffered by Appellant, we find the claimed arrangement of a camera
being detachably connected to a common shaft would have produced a
predictable result, and therefore would have been obvious to an artisan
possessing an ordinary level of skill at the time of the invention. See KSR,
550 U.S. at 416.
Regarding contested limitation L2 ("the control and evaluation
apparatus modulates the fluorescence excitation beam continuously during
operation"), we conclude claim 1 does not specify exactly how long the
modulation of the excitation beam must continue or persist to be considered
continuous modulation during operation. Because Bambot (i-142) expressly
teaches using amplitude modulation to modulate the excitation light at a
constant frequency over some (longer) time interval, "instead of simply
illuminating the target tissue with a short burst of light," we find Bambot at
least suggests (and thus renders obvious) contested limitation L2 (i.e.,
6 We note the Examiner may take notice of facts or common knowledge in
the art which are capable of such instant and unquestionable demonstration
as to defy dispute. In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970).
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continuous modulation during operation).
Regarding limitation L3 ("the first image sensor is a phase-sensitive
solid state detector contained in the video camera arrangement"), the
Examiner finds Miura teaches "the first image sensor is a solid state detector
(for example 35b );" (Final Act. 11 ). We note the Examiner relies on
Bambot (i-fi-f 55, 111) for teaching or suggesting detecting phase information.
(Final Act. 13.)7 The Examiner's rejection is based on the combined
teachings and suggestions of the references. Because Appellant attacks the
references in isolation (App. Br. 9-11), on this record, we are not persuaded
the Examiner erred.
Contested limitation L4 of claim 1:
[L4] the control and evaluation apparatus calculates fluorescence
lifetime data on a pixel by pixel basis using the phase information from the
fluorescent beam such that the generated fluorescent image contains pixel-
by-pixel fluorescence lifetime information;
Regarding limitation L4, Appellant contends, inter alia:
Although Bambot discloses utilizing the pixels of a CCD, it
does not utilize them as claimed, i.e., to capture phase
information of the fluorescent beam. Bambot describes using
the pixels of the CCD to capture the different wavelengths of
light returned from the target tissue so that each line of pixels
on the CCD would correspond to the different wavelengths of
light carried by a single detection fiber. (Paragraph [O 111 ]).
7 See also the detector described in Bambot (i-f 15), which detects amplitude
and timing characteristics regarding the phase of the reflected or scattered
excitation radiation.
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There is no disclosure in Bambot of calculating fluorescence
lifetime data on a pixel by pixel basis using the phase
information from the fluorescent beam and generating a lifetime
image therefrom.
(App. Br. 11-12.)
However, we find Appellant is again following a pattern of arguing
the references separately. (Id.) The Examiner relies on "Bambot [for]
teach[ ing] detecting fluorescent radiation with a CCD and detecting phase
information of the fluorescent radiation emitted for the benefit of
determining characteristics of the target tissue, for example if a tissue is
cancerous or not and distinguishing between tissue types ([0055]; [0111])."
(Ans. 4.) Regarding the "pixel by pixel" element, the Examiner finds (id.):
Miura teaches the CCD generates image signals in
corresponding to the image formed by, for example,
the first fluorescence FL 1 ([0088]). It necessarily follows that
the image signals generated by the CCD would provide pixel by
pixel information of the image being detected, which in this
instance is from fluorescence. Therefore, Miura does teach
providing fluorescent information pixel by pixel ([0088];
[0093]).
Regarding the contested "control and evaluation apparatus" of
limitation L4, we noted above Bambot teaches that prior "apparatus for
detection of the lifetime of fluorescent emissions have concentrated on
directly measuring the lifetime of the fluorescent emissions." (i-f9, emphasis
added.) Thus, Bambot improves on prior techniques by using phase shift
information. We observe Figure 7 of Bambot illustrates a flow chart, which
employs amplitude modulation, and calculates the phase shift between the
excitation and return radiation. Bambot (i-f 15) expressly teaches:
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In phase shift techniques for measuring either reflected or
scattered excitation radiation, or fluorescent emissions caused
by the excitation radiation, the excitation electromagnetic
radiation is amplitude modulated at a predetermined
frequency. A detector that senses the returned radiation (either
reflected/scattered excitation radiation or fluorescent emissions)
is used to detect the amplitude and timing characteristics of the
returned electromagnetic radiation. The excitation and returned
radiation will have the same frequency, but the amplitude of the
returned radiation should be smaller than the amplitude of the
excitation radiation, and the returned radiation will be out of
phase with the excitation radiation. The demodulation and
phase shift between the excitation and returned electromagnetic
radiation gives a measure of the characteristics of the target
tissue. (Emphasis added).
Although the Examiner (Final Act. 13) relies on Miura (i-f 88, 93) for
teaching or suggesting the pixel-by-pixel feature of contested limitation L4,
we additionally note Bambot (i-f 111 ), as pointed to by the Examiner (Final
Act. 13), teaches an embodiment where lines of pixels are dedicated to
capturing light of different wavelengths. We particularly note the
corresponding individual capacitor elements of a conventional charge-
coupled device (CCD) image sensor (that captures pixel intensity
information "line by line") only appear to be capable of capturing phase
information to the extent the captured returned modulated light (as emitted
from the tissue sample) is compared to an illuminating modulated light of a
known reference phase. Appellant's claim 1 does not specify the details of
the "first image sensor" that is recited as being "phase-sensitive." Therefore,
within the scope of claim 1, we are left to speculate exactly how the phase
difference between the excitation (reference) and return radiation is
determined. (Claim 1 ).
The "control and evaluation apparatus" of claim 1 is recited as
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performing the function of "calculat[ing] fluorescence lifetime data on a
pixel by pixel basis using the phase information from the fluorescent beam
.... " (Emphasis added.) We conclude, under a broad but reasonable
interpretation, the claim language of performing a calculation "such that the
generated fluorescent image contains pixel-by-pixel fluorescence lifetime
information" is a statement of intended use of the results of the calculation.
(Claim 1.) 8
We further conclude the informational content of the "generated
fluorescent image" is not positively recited as actually being used to change
or affect any function of the apparatus of claim 1. Instead, the generated
image appears be intended for human perception (e.g., intended to be
displayed to a medical doctor). Therefore, we conclude the particular
informational content of the generated image is non-functional descriptive
material (NFDM). 9 The Manual of Patent Examining Procedure (MPEP)
8 "An intended use or purpose usually will not limit the scope of the claim
because such statements usually do no more than define a context in which
the invention operates." Boehringer Ingelheim Vetmedica, Inc. v. Schering-
Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although "[s]uch
statements often ... appear in the claim's preamble," In re Stencel, 828 F.2d
751, 754 (Fed. Cir. 1987), a statement of intended use or purpose can appear
elsewhere in a claim. Id.
9 The PT AB has provided guidance in decisions regarding claims that differ
from the prior art based only on NFDM which is data. See Ex parte Nehls,
88 USPQ2d 1883, 1889 (BPAI 2008) (precedential) ("[T]he nature of the
information being manipulated does not lend patentability to an otherwise
unpatentable computer-implemented product or process."); Ex parte
Mathias, 84 USPQ2d 1276, 1279 (BP AI 2005) (informative)
("[N]onfunctional descriptive material cannot lend patentability to an
invention that would have otherwise been anticipated by the prior art."),
aff'd, 191 Fed. Appx. 959 (Fed. Cir. 2006) (Rule 36); Ex parte Curry, 84
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guides that "[ e ]vidence against a functional relationship" may exist, for
example, "where the claim as a whole is directed towards conveying a
message or meaning to a human reader independent of the supporting
product." MPEP § 2111.05 (I.)(B.) (9th Revision 07.2015, revised Nov.
2015).
Regarding apparatus claims generally, our reviewing court guides the
patentability of an apparatus claim "depends on the claimed structure, not on
the use or purpose of that structure." Catalina Marketing Int 'l., Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). 10 Thus, we find
unavailing Appellant's repeated attempts to distinguish the structure of the
apparatus of claim 1 based on the type or informational content of an image,
which appears to be generated for human perception. Therefore, we
conclude claim 1, when considered as a whole, is directed to generating an
image consisting ofNFDM, which is intended for human perception.
For at least these reasons, we are not persuaded of error regarding the
Examiner's underlying factual findings and legal conclusion of obviousness
for claim 1. Therefore, based on a preponderance of the evidence, we sustain
rejection A of representative independent claim 1. Claims 3, 4, 19, and 21
(also rejected under rejection A, but not separate I y argued), fall with claim 1.
See Grouping of Claims, supra.
USPQ2d 1272, 1274 (BPAI 2005) (informative) ("Nonfunctional descriptive
material cannot render nonobvious an invention that would have otherwise
been obvious."), ajfd, No. 06-1003 (Fed. Cir. June 12, 2006) (Rule 36).
10 See also Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1090
(Fed. Cir. 2009).
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Rejection A of Dependent Claim jJ under 35 U.S.C. § j03(a)
Claim 13 recites: "The apparatus according to Claim 1, further
comprising a third image sensor adapted to generate a fluorescence intensity
image."
In the statement of rejection (Final Act. 14--15) the Examiner
concludes:
It would have been obvious to one having ordinary skill in the
art at the time the invention was made to a third image sensor
adapted to generate a fluorescence intensity image, since it has
been held that mere duplication of the essential working parts
of a device involves only routine skill in the art.
(Citing St. Regis Paper Co. v. Bemis Co., 549 F.2d 833 (7th Cir. 1977) as
persuasive authority (duplication of parts of a device involves only routine
skill)). 11
In the Appeal Brief (15), Appellant contends:
Miura does not recite a third image sensor, and there is no
evidence that it \~1ould have been obvious to do so. The third
image sensor is adapted to generate a fluorescence intensity
image, which complements the fluorescence lifetime image.
The third image sensor is not duplicative of the first and second
image sensors of claim 1 but, instead, provides a
complementary function different than those claimed with
respect to the first and second sensors.
11 As a general issue, we agree with the Examiner that the mere duplication
or use of plural known elements, without more (e.g., a showing of
unexpected results), is a "predictable use of prior art elements according to
their established functions" and, as such, is not a patentable distinction.
KSR, 550 U.S. at 398.
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In the response to arguments (Ans. 10), the Examiner further explains
the basis for the rejection of claim 13: "Miura in combination with Bambot
teach that the CCDs receive/detect phase and intensity information. The
duplication of these CCDs would provide a third image sensor adapted to
generate a fluorescence intensity image."
Because Appellant does not provide any additional response in the
Reply Brief to the Examiner's further explanation and findings regarding
claim 13 (Ans. 10), on this record, we are not persuaded of error regarding
the Examiner's underlying factual findings and legal conclusion of
obviousness. Based on the insufficiency of Appellant's response, and a
preponderance of the evidence, we sustain rejection A of dependent claim
13.
Rejection B of Dependent Claim 6 under 35 U.S. C. § 103 (a)
Claim 6 recites: "The apparatus according to Claim 1, wherein the
light source is adapted to generate beams of varying coherence."
Appellant urges claim 6 is not obvious for the same reasons
previously advanced regarding claim 1. (App. Br. 17.) Because we find no
deficiencies regarding rejection A of independent claim 1, we are not
persuaded the Examiner erred regarding the rejection of claim 6. However
Appellant advances an additional, separate argument for dependent claim 6:
Claim 6 recites that the light source is adapted to generate
beams of varying coherence. Sampas discloses a light source
that is a microlaser array, where each microlaser in the array
has the same coherence length: "approximately 70 mm."
(Sampas at [0041 ]). Sampas discloses that microlaser arrays of
one of a number of sizes and one of a number of coherence
lengths can be used, but it does not disclose a microlaser array
wherein individual microlasers have different coherence
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lengths. (Id.). The Office Action's assertion that this disclosure
in Sampas is equivalent to the claimed light source adapted to
vary the coherence of the beam is improper. The claims recite a
light source that is itself able to vary the beam coherence,
Sampas discloses only that light sources with one of a number
of different coherences can be used.
(App. Br. 17.)
The Examiner disagrees and responds:
Sampas discusses each microlaser having the same coherence
length," "[h]owever, microlasers ... of varying coherence
lengths can be employed in the light source system." Same or
varying coherence lengths in a light source system are taught as
two embodiments by Sampas. Therefore, Sampas does teach
that using a light source system that has microlaser arrays of
varying coherence lengths is an acceptable source in a
fluorescence imaging system ([0041 ]).
(Ans. 10-11.)
Although Appellant characterizes the various microlaser arrays in
Sampas as teaching plural light sources (Reply Br. 4--5), we find Sampas
actually describes the plural microlaser arrays as being part of a (single)
light source system: "micro laser arrays of varying sizes and of varying
coherence lengths can be employed in the light source system." (Sampas,
i-f 41, emphasis added.)
Given this evidence (id.), we find "the light source system" in Sampas
(i-f 41) is "adapted to generate beams of varying coherence," within the
meaning of claim 6, because the "light source system" in Sampas is
described as being comprised of "micro laser arrays of varying sizes and of
varying coherence lengths .... " (i-f41), which we find would have been
capable of being employed by the (single) light source system to generate
beams of varying coherence. Therefore, on this record, and based on a
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preponderance of the evidence, we are not persuaded the Examiner erred.
Accordingly, we sustain rejection B of dependent claim 6.
Rejection C of Dependent Claims 8, 9, 11, 12, and 18 under§ 103(a)
Appellant urges these claims are not obvious for the same reasons
previously advanced regarding claim 1. (App. Br. 15-16.) Because we find
no deficiencies regarding rejection A of independent claim 1, we are not
persuaded the Examiner erred regarding the rejection of claims 8, 9, 11, 12,
and 18. However Appellant presents a separate argument for dependent
claim 9:
The rejection of claim 9 is improper for the following
additional reason. Claim 9 was rejected in view of Miura and
"Official Notice that it is well known to incorporate an
adjustment lens for adapting the visual field of sensors for the
benefit of increasing the range of the sensors." This rejection is
baseless and improper. An adjustment lens does not generally
increase the range of the sensors.
In particular, Applicant disputes that it is known to incorporate
an adjustment lens in an apparatus of the kind claimed in the
present application. Moreover, the adjustment lens of claim 9 is
configured in such a manner as to adapt the fields of view of the
first image sensor and the at least one additional image sensor.
The purpose of the adjustment lens is not to increase the range
of the sensors, as assumed in the Office Action. In fact, it is not
generally known that adjustment lens's increase the range of
sensors. The rejection of claim 9 is improper and should be
reversed for this additional reason.
(App. Br. 16-17, emphasis added.)
The Examiner disagrees, and responds (Ans. 10):
Appellant has not adequately traversed the official notice
regarding incorporation of an adjustment lens for adapting the
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visual field of sensors for the benefit of increasing the range of
the sensors. Adequate traversal of such findings includes stating
why the noticed fact is not considered to be common
knowledge or well-known in the art. See MPEP 2144.03(C).
Although Appellant "disputes that it is known to incorporate an
adjustment lens in an apparatus of the kind claimed in the present
application" (App. Br. 16 (italics and bold added for emphasis)), we agree
with the Examiner (Ans. 10), that Appellant has not met his burden by
affirmatively stating in the record that it was not well-known at the time of
the invention "to incorporate an adjustment lens in an apparatus of the kind
claimed in the present application." (Italics and bold added for emphasis).
Therefore, on this record, we are not persuaded of error regarding the
Examiner's underlying factual findings and legal conclusion of obviousness
for claim 9. Accordingly, we sustain rejection C of dependent claim 9, and
rejection C of dependent claims 8, 11, 12, and 18 (not argued separately),
which fall with claim 9. See Grouping of Claims, supra.
Rejection D of Dependent Claims 14, 16, and 17 under 35 U.S.C. § 103(a)
Appellant advances no separate, substantive arguments regarding
these dependent claims. Instead, Appellant urges that these claims are
patentable for the same reasons previously advanced regarding claim 1.
(App. Br. 18.) Because we find no deficiencies regarding rejection A of
independent claim 1, we are not persuaded the Examiner erred regarding the
claims rejected under rejection D. A.rguments not made are considered
waived. See 37 C.F.R. § 41.37(c)(l)(iv). Therefore, we sustain rejection D
of claims 14, 16, and 17.
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Rejection E of Independent Claim 22 under 35 U.S.C. § j03(a)
Appellant urges claim 22 is not obvious for the same reasons
previously advanced regarding independent claims 1 and 21. (App. Br. 17.)
Because we find no deficiencies regarding rejection A of independent claims
1 and 21, we are not persuaded the Examiner erred regarding the rejection of
claim 22. However, Appellant advances additional, separate arguments for
independent claim 22:
First, Smith does not relate to fluorescent imaging in any way.
Smith discloses a system of wavefront analysis and narrow-
beam scanning photoablation for use in corneal surface
reshaping. Smith uses lasers to photoablate the cornea as well
as to perform real-time topography during the ablation process.
There is no disclosure of the use of a laser diode to create a
fluorescence excitation beam.
For this reason, one of ordinary skill in the art never would
have been motivated to modify the fluorescence detection
endoscope apparatus of Miura based on the disclosure of Smith.
The use of a laser in Smith has no rationale relationship to the
use of a laser in fluorescence imaging; and no aspect of Smith
could have possibly been viewed by those of ordinary skill in
the art as likely to improve the performance of the system of
Miura.
(App. Br. 19.)
However, the Examiner further explains the basis for the rejection in
the response to arguments (Ans. 11 ): "Smith teaches using a narrow beam
scanning technique and the fluorescent spectral component is imaged
([0017]). It necessarily follows the laser source of Smith produces a
fluorescence excitation beam." (Emphasis added.)
Appellant advances a second argument regarding claim 22:
Second, Smith does not even disclose that the operation of the
laser is such that the coherence of the beam is reduced, as
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recited in claim 22. In Smith, the excimer laser itself has a
"relatively low spatial coherence," i.e., the laser itself was
chosen to have this coherence. There is no disclosure in Smith
to reduce the coherence of the beam by virtue of how it is
operated.
(App. Br. 19).
In the response to arguments (Ans. 11), the Examiner finds "[t]he
laser of [S]mith is operated at low spatial coherence and [therefore] a
reduced coherence ([0016])."
Because Appellant does not provide any additional response in the
Reply Brief to the Examiner's further explanation and findings regarding
claim 22 (Ans. 11 ), on this record, we are not persuaded of error regarding
the Examiner's underlying factual findings and legal conclusion of
obviousness. Based on the insufficiency of Appellant's response, and a
preponderance of the evidence, we sustain rejection E of independent claim
22.
Conclusion
For at least the aforementioned reasons, on this record, we are not
persuaded the Examiner erred. We find a preponderance of the evidence
supports the Examiner's underlying factual findings and ultimate legal
conclusion of obviousness for all claims on appeal.
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DECISION
We affirm the Examiner's rejections of claims 1, 3, 4, 6, 8, 9, 11-14,
16-19, 21, and 22 under§ 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 41.50(±).
AFFIRMED
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