Ex Parte Kubo et al

Patent Trial and Appeal Board

Jun 8, 2016

12792605 (P.T.A.B. Jun. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121792,605 06/02/2010 Masahiro Kubo
21254 7590 06/09/2016
MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC
8321 OLD COURTHOUSE ROAD
SUITE 200
VIENNA, VA 22182-3817
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.
PA21248US 5073
EXAMINER
DOBBS, KRISTIN SENSMEIER
ART UNIT PAPER NUMBER
2486
MAILDATE DELIVERY MODE
06/09/2016 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 MASAHIRO KUBO, KAZUO OKOY AMA, and
YASUNORIOHTA
Appeal2015-001377
Application 12/792,605
Technology Center 2400
Before ST. JOHN COURTENAY III, CATHERINE SHIANG, and
JIVANI KAMRAN, 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 1-5, 7, and 8, which are all the claims pending in this
application. Claim 6 is cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
Appeal2015-001377
Application 12/792,605
Invention
The invention on appeal relates to an endoscopic apparatus that
obtains spectral estimation images by matrix operations and an endoscopic
image obtainment method. (Spec. 1, 11. 5-7).
Representative Claim
1. An endoscopic apparatus comprising:
a light source unit including a plurality of light emitting
devices that output light of different wavelength bands from each
other, the light source unit being able to output white light by
driving the plurality of light emitting devices;
a scope that obtains an endoscopic image by imaging a
subject illuminated with light output from the light source unit;
a wavelength set setting means that sets a plurality of
wavelength bands, as a wavelength set;
a light source control means that controls, based on the
wavelength set that has been set by the wavelength set setting
means, ON/OFF of each of the plurality oflight emitting devices;
and
a spectral image generation means that generates a spectral
estimation image by perfonning, based on the wavelength set
that has been set by the wavelength set setting means, matrix
operation on the endoscopic image by using matrix parameter,
[L] wherein when at least one of the wavelength bands
included in the wavelength set overlaps with none of the
wavelength bands of the plurality of light emitting devices, the
light source control means drives a combination of light
emitting devices selected from the plurality of light emitting
devices, the combination achieving highest estimation accuracy.
2
Appeal2015-001377
Application 12/792,605
(Bracketing and emphasis added to the contested limitation, labeled as "L").
Rejection
Claims 1-5, 7, and 8 are rejected under 35 U.S.C. §103(a) as being
obvious over the combined teachings and suggestions of Fujita (JP
2007264537 (A); published October 11, 2007), and Patwardhan (US
2009/0137908 Al, May 28, 2009).
Grouping of Claims
Based on Appellants' arguments, we decide the appeal of rejected
claims 1-5, and 7, on the basis of representative Claim 1. We address the
rejection of independent claim 8 separately, infra. See 37 C.F.R.
§ 41.37(c)(l)(iv).
ANALYSIS
We disagree with Appellants' contentions regarding the Examiner's
rejections of the claims. \Ve 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 set forth by the Examiner in the Answer in response to
arguments made in Appellants' Appeal Brief. (Ans. 13-22). We highlight
and address specific findings and arguments below.
Rejection of Claims 1-5 and 7 under 35 U.S.C. § 103(a)
Issue: Under 35 U.S.C. § 103(a), did the Examiner err in finding the
combination of Fujita and Patwardhan would have taught or suggested
contested "wherein" clause conditional limitation L:
wherein when at least one of the wavelength bands
included in the wavelength set overlaps with none of the
3
Appeal2015-001377
Application 12/792,605
wavelength bands of the plurality of light emitting devices, the
light source control means drives a combination of light
emitting devices selected from the plurality of light emitting
devices, the combination achieving highest estimation accuracy,
within the meaning of claim 1?
Assuming the claimed predicate negative condition (of no overlap
between "the wavelength bands of the plurality of light emitting devices"
and "at least one of the wavelength bands included in the wavelength set") is
satisfied, and, assuming the claimed conditional functional limitation is
responsively performed, we find a preponderance of the evidence supports
the Examiner's underlying factual findings and legal conclusion of
obviousness, for the reasons discussed below. (Claim 1 ). 1
The Examiner finds Fujita's figure 3D depicts that wavelength band
"ro does not overlap with either bo or go" and this is the result of "driving
circuits 15a-15c [driving] the intensities of light sources 14a-14c
accordingly," through the performance of "expressions 5 and 9 ... which
contain matrix operations." (Final Act. 4, citing Fujita Figs. 1 and 3D, and i-fi-1
22, 24).
1 In the event of further prosecution, we leave to the Examiner to consider
whether the claim limitation "the combination achieving highest estimation
accuracy" (claims 1 and 8) is indefinite under 35 U.S.C. § 112, 2nd
paragraph. "[I]f a claim is amenable to two or more plausible claim
constructions, the USPTO is justified in requiring the applicant to more
precisely define the metes and bounds of the claimed invention by holding
the claim ... indefinite." Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BP AI
2008) (precedential). Although, the Board is authorized to reject claims
under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board
elects not to do so. See Manual of Patent Examining Procedure (MPEP) §
1213.02 (9th Ed., Rev. 7, Nov. 2015).
4
Appeal2015-001377
Application 12/792,605
Appellants initially assert, "[t]he Examiner's rejection is erroneous as
a matter of law" (App. Br. 14), then cite to case law (id. at 15), and then
merely recite the language of contested "wherein" clause L, as not being
taught or suggested by Fujita, in view of Patwardhan. (id. at 16; claim 1 ).
However, "[a] statement which merely points out what a claim recites will
not be considered an argument for separate patentability of the claim." See
37 C.F.R. § 41.37(c)(l)(iv). Attorney arguments and conclusory statements
that are unsupported by factual evidence are entitled to little probative value.
In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).2 Therefore, we do not
find Appellants' initial allegation persuasive.
Appellants further urge the combination of Fujita and Patwardhan
fails to disclose contested limitation L because the claimed invention is
"unlike a conventional endoscope" and performs better than "a
conventional method." (App. Br. 17, emphasis added). However, claim 1
is silent regarding the argued language (Id.). Appellants' arguments are not
commensurate with the scope of the claim. Appellants fail to address the
Examiner's specific findings regarding the cited prior art. Therefore, we do
not find this second line of argument persuasive.
Appellants further contend the Examiner, "does not fully appear to
understand the disclosure of Figures 3A-3D of Fujita" because the non-
overlapping wavelength band of Fujita is "obtained by matrix calculations."
(App. Br. 19). The Examiner responds by concluding "[t]he language of
2 See also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold
that the Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.").
5
Appeal2015-001377
Application 12/792,605
claim 1 of the present application does not preclude such a derivation .... "
(Ans. 18). We agree with the Examiner's broad but reasonable claim
interpretation. 3
Appellants additionally contend, "the Examiner has changed her
position" (App. Br. 19), because the wavelength set was initially mapped to
Sci, Sc2, and Sc3, which overlap (at Final Act. 3), but "the Examiner is now
alleging that bo, go, and ro (i.e., Fig. 3D) teach [] the alleged wavelength set,"
which "is in direct contradiction to the rejection of the wavelength set setting
means." (App. Br. 20).
The Examiner responds, by finding: "Figs. 3A-3D are related, and so
are the values Sci, Sc2, and Sc3 and bo, go, and ro, as the second set of values is
derived from and part of the first." (Ans. 18).
We agree with the Examiner's findings, and again note Appellants'
contentions are not commensurate with the scope of the claim. The claims
do not preclude performing matrix operations on the wavelength bands of
the wavelength set. In fact, claim 1 recites "performing ... [a] matrix
operation on the endoscopic image by using matrix parameter." Therefore,
we find Appellants' argument unavailing.
Appellants further contend:
while one of ordinary skill in the art potentially could have
modified the alleged wavelength sets (Sci, Sc2, and Sc3) of Fujita
by performing matrix operations such that they do not overlap,
there is no reason why one of ordinary skill in the [art] would
3 Because "applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
6
Appeal2015-001377
Application 12/792,605
have made the proposed modification, without the benefit of the
instant application.
(App. Br. 21).
To the extent Appellants are alleging the Examiner has relied on
impermissible hindsight, Appellants have not provided any objective
evidence of secondary considerations, which our reviewing court guides
"operates as a beneficial check on hindsight." Cheese Systems, Inc. v. Tetra
Pak Cheese and Powder Systems, Inc., 725 F.3d 1341, 1352 (Fed. Cir.
2013). Nor have Appellants provided any evidence demonstrating the
Examiner's proffered combination 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). Therefore, we do
not find Appellants' hindsight argument persuasive. 4
Appellants further urge, "Patwardhan does not cure the deficiencies of
Fujita." (App. Br. 21). However, Appellants' contention is grounded on an
erroneous premise -that Fujita fails to teach or suggest contested limitation
L. We found this argument unpersuasive, for the reasons discussed above.
For at least these reasons, we find a preponderance of the evidence
supports the Examiner's underlying factual findings and legal conclusion of
obviousness regarding claim 1. Because Appellants have not persuaded us
the Examiner erred, we sustain the § 103 rejection of representative claim 1.
Grouped claims 2-5, and 7, fall with claim 1. See Grouping of Claims,
supra.
4 See Evidence Appendix (App. Br. 32, "Not Applicable").
7
Appeal2015-001377
Application 12/792,605
Rejection of Independent Claim 8 under 35 U.S.C. § j03(a)
Issue: Under 35 U.S.C. § 103(a), did the Examiner err in finding the
combination of Fujita and Patwardhan would have taught or suggested:
wherein when at least one of the wavelength bands included in
the wavelength set overlaps with none of the wavelength bands
of the plurality of light emitting devices, the light source
controller drives the plurality of light emitting devices of
wavelength bands that are necessary to generate the spectral
estimation image, and wherein when at least one of the
wavelength bands included in the wavelength set overlaps with
none of the wavelength bands of the plurality of light emitting
devices, the light source controller drives a combination of light
emitting devices selected from the plurality of light emitting
devices, the combination achieving highest estimation
accuracy[,]
within the meaning of claim 8? (emphasis added).
Appellants contend the aforementioned portion of claim 8, "would be
construed similarly to the construction given the limitation in claim 1," and
therefore the combination of Fujita and Patwardhan fails to teach or suggest
this limitation, for the same reasons previously argued regarding claim 1.
(App. Br. 24).
Similar to our discussion above regarding claim 1, we find
Appellants' contention is grounded on an erroneous premise - that the
combination of Fujita and Patwardhan fail to teach or suggest contested
limitation L (Claim 1 ).
Appellants additionally contend:
[c]learly, Fujita does not teach or suggest generating the spectral
estimation image when at least one of the wavelength bands
included in the wavelength set overlaps with none of the
wavelength bands of the plurality of light emitting devices.
That is, the alleged bands do not overlap after a matrix
operation is performed.
8
Appeal2015-001377
Application 12/792,605
(App. Br. 24).
As discussed above, Fujita discloses that, after performing matrix
calculations to a set of wavelength bands, the resultant set of wavelength
bands, namely bo, go, and ro, contain a wavelength band (ro) that does not
overlap with the other wavelength bands (See Fujita Fig. 3D). Therefore, we
find Appellants' argument unpersuasive.
Accordingly, on this record, we are not persuaded the Examiner erred,
and we sustain the § 103 rejection of independent claim 8.
Reply Brief
To the extent Appellants advance new arguments in the Reply Brief
not in response to a shift in the Examiner's position in the Answer, we note
arguments raised in a Reply Brief that were not raised in the Appeal Brief or
are not responsive to arguments raised in the Examiner's Answer will not be
considered except for good cause. See 37 C.F.R. § 41.4l(b)(2).
Conclusion
For at least the aforementioned reasons, on this record, Appellants
have not persuaded us 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.
9
Appeal2015-001377
Application 12/792,605
DECISION
We affirm the Examiner's rejection of claims 1-5, 7, and 8 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 )(iv). See 37 C.F.R. § 41.50(f).
AFFIRMED
10