Ex Parte Kuiper et al

Patent Trial and Appeal Board

Jun 2, 2017

13002990 (P.T.A.B. Jun. 2, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/002,990 01/07/2011 Stein Kuiper 2008P00581WOUS 5876
24737 7590 06/06/2017
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue GUPTA, VANI
Suite 340
Valhalla, NY 10595 ART UNIT PAPER NUMBER
3786
NOTIFICATION DATE DELIVERY MODE
06/06/2017 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):
marianne. fox @ philips, com
debbie.henn @philips .com
patti. demichele @ Philips, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEIN KUIPER, BERNARDUS HENDRIKUS
WILHELMUS HENDRIKS, and NENAD MIHAJLOVIC1
Appeal 2016-001878
Application 13/002,990
Technology Center 3700
Before JEFFREY N. FREDMAN, TIMOTHY G. MAJORS,
and DEVON ZASTROW NEWMAN, Administrative Patent Judges.
MAJORS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to an
optical imaging probe, system, and method of their use, which have been
rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
Appellants’ “invention relates to an optical image probe, the probe is
particularly suited for miniature application e.g. in-vivo.” (Spec. 1:2—3.)
1 Appellants identify the Real Party in Interest as Koninklijke Philips N. V.
(App. Br. 3.)
Appeal 2016-001878
Application 13/002,990
“Preferably, the probe may form part of an endoscope, a catheter, a needle,
or a biopsy needle for in-vivo applications.” (Id. at 5:12—14.) Appellants’
optical image probe includes, among other things, a fluid lens having
changeable optical power and an image collector displaceable along the
optical path of the fluid lens by an actuator. (Id. at 2:12—19.) According to
the Specification,
[d]ue [to] the possible displacement of the image collector and
the changeable optical power of the fluid lens, and cooperation
between these two elements, it is possible to obtain a compact
endoscope with a wide dynamic range of zoom factor with
satisfactory focusing properties. This way of zooming combines
the best of both worlds: the fluid lens need only to switch over a
small range, the large displacement can be achieved by an
actuator mechanically connected to the image collector, and this
actuator may therefore take relatively less lateral space than
when it would have been designed immediately next to or around
the lens elements (which would increase the endoscope
diameter).
(Id. at 2:21—33.)
Claims 16—33 are on appeal. Claim 16 is illustrative:
16. An optical image probe, comprising:
a housing;
a fluid lens positioned within the housing at an end
portion of the housing, the fluid lens having a changeable
optical power;
an actuator positioned within the housing; and
an image collector positioned within the housing, the
image collector being arranged on an optical path of the fluid
lens, the image collector being displaceable along the optical
path by the actuator.
(App. Br. 25 (Claims App.)
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Application 13/002,990
The claims stand rejected as follows:
I. Claims 16—21, 26—29, and 31—33 under 35 U.S.C. § 103(a) over
Batchko2 (“Rejection I”).
II. Claims 22—25 under 35 U.S.C. § 103(a) over Batchko and
Good3 (“Rejection II”).
III. Claim 30 under 35 U.S.C. § 103(a) over Batchko and Kobrin4
(“Rejection III”).
I
Issue
Has the Examiner established by a preponderance of the evidence that
Claims 16—21, 26—29, and 31—33 would have been obvious over Batchko?
Findings of Fact
The Examiner’s findings of fact and statement of the rejection are
provided at pages 2—7 of the Examiner’s Answer. See also Final Act.5 2—7.
FF 1. “Figure 1 is a schematic cross-sectional drawing of an optical
image probe 20 according to the present invention” and is reproduced below.
2 Batchko et al., US 2009/0052049 Al, published Feb. 26, 2009.
3 Good, US 2008/0245872 Al, published Oct. 9, 2008.
4 Kobrin et al., US 7,256,943 Bl, issued Aug. 14, 2007.
5 Examiner’s Final Action, mailed November 18, 2014 (“Final Act.”)
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Application 13/002,990
20
As shown in Figure 1 of the Specification, “image probe 20 comprises a
housing 19 surrounding and protecting the interior part of the probe. A fluid
lens 5 is positioned at an end portion of the housing 19.” (Spec. 6:25—28.)
As further depicted, “image sensor 40 is positioned within the housing, the
sensor being arranged on the optical path of the fluid lens i.e. behind the
fluid lens . . . [and] [t]he image sensor 40 is displaceably arranged along the
optical path by an actuator 42.” {Id. at 7:10—13.) More specifically, “as
indicated in Figure 1 by the arrow A, the image sensor can be moved a
certain range within the probe 20 so as to facilitate sufficient focusing of the
region or object... to be imaged outside the probe 20.” {Id. at 7:14—16.)
FF 2. Figure 35 of Batchko is reproduced below.
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Application 13/002,990
Fluidic lens in combination with microscopes
Fig. 35
Figure 35 of Batchko is a schematic diagram of a microscope incorporating
fluidic optical devices. (See Batchko 1 64.) Batchko teaches the microscope
includes fluidic objective lenses 3502A, 3502B, 3502C ... [that]
provide for a wide view, mid-range and close-up optics. The
objectives 3502A, 3502B, 3502C may be mounted to a
microscope housing 3504 in a conventional selective mount that
allows different objectives to be mechanically rotated into the
microscope optical column.
(Id. 1222.)
FF 3. Batchko teaches an alternative embodiment, showing a micro
lens assembly for a cell phone. (See id. at Fig. 22.) In this embodiment,
“microlens assembly 2200 includes a lens housing and dust enclosure 2202,
a fluidic lens 2204 with electronic control of the optical properties (e.g.,
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Application 13/002,990
focus, zoom, and the like) of the fluidic lens. The fluidic lens 2204 is kept
within the lens housing and dust enclosure 2202.” {Id. 1218, bullet 8.)
FF 4. Batchko teaches an actuator may be used with fluidic lenses.
More specifically, Batchko teaches “a compact arrangement of the actuator
structure and fluidic lens. The task of reducing the profile of the actuator is
facilitated in part by judicious choice of its mechanical interface with the
compliant fluid lens.” {Id. 1125.) Batchko teaches “the lenslet may be
placed into an actuator package 120 that circumferentially constrains the
expansion of the membrane 106.” {Id. 1130; see also id. at Figs. 2A-2B.)
Batchko further teaches “actuator package 120 includes an actuator 126 that
exerts a force that tends to deform the membrane 106 [of the lens] in a way
that tends to displace the fluid 104 in the reservoir 110.” {Id. 1130.)
According to Batchko, “[b]y controlling the amount of force that the
actuator 126 exerts, the deformation and focusing properties of the lenslet
100 may be adjusted in a predictable manner.” {Id.)
Analysis
Regarding independent and representative claim 16, the Examiner
finds Batchko “teaches an optical image probe, comprising: a housing (fig.
35, (3504)) ; and a fluid lens positioned at an end portion of the housing, the
fluid lens having a changeable optical power (3502A — 3502C).'” (Ans. 2.)
The Examiner finds “Batchko teaches also an actuator positioned within the
housing (near fluid lens, described in paragraphs [0125], [0130], [0173]” as
well as an “image collector positioned within the housing (‘eye piece’).”
{Id. at 3.) The Examiner reasons that “the image collector [is] capable of
being displaceable along the optical path by the actuator (in that as the
actuator affects the focusing of the lens in a vertical path, the eye piece
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Application 13/002,990
moves along a perpendicular, optical, path to the focusing of the lens by
actuator (as described in paragraph [0125])).” (Id.)
The Examiner finds that “Batchko differs from Claim 16 in that this
particular embodiment does not suggest specifically that the fluidic lens is
also within the housing” and so the Examiner turns to the embodiment
illustrated in Figure 22 of Batchko. (Id. at 2—3.) According to the
Examiner, “[a]s shown in fig. 22, the dust enclosure fits over the fluidic lens
and is in addition [to] the device housing or lens/chip base.” (Id. at 3.) The
Examiner concludes “it would have been obvious ... to modify Batchko’s
disclosed imaging probe so that the housing includes a dust enclosure and
the fluidic lens are further enclosed within the dust enclosure so that the
microfluidic lens remain[s] clean and therefor operate[s] optimally.” (Id.)
We are unpersuaded that the Examiner met the burden to show that
claim 16 would have been obvious over Batchko. We are not persuaded on
the present record that Batchko teaches the limitation of claim 16 requiring
“an image collector positioned within the housing . . . the image collector
being displaceable along the optical path by the actuator.'1'’ To the contrary,
as Appellants point out:
The operating principle of Batchko is to incorporate an actuator
in a fluid lens whereby the actuator may be selectively operated
to change optical properties (e.g., focal length) of the fluid lens
as opposed to being utilized to displace an image collector along
an optical path by the fluid lens.
(App. Br. 11; see also id. at 12—13 (“the operating principle of Batchko [is]
to selectively change the operating properties (e.g., focal length of each fluid
lens 3502 by changing a radius of curvature of each fluid lens 3502.”) Put
differently, the cited actuator in Batchko displaces fluid in the fluid lens, but
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Application 13/002,990
is not capable of displacing (i.e., moving) the image collector as required in
claim 16. (FF1,4.)6
We also recognize, but are unpersuaded by, the Examiner’s assertions
about enclosing the fluidic lenses of Batchko’s Figure 35 “within the
housing” as required in claim 16. Figure 35 of Batchko teaches expressly
that the objective lens assembly is mounted to — and thus is not within —
microscope housing 3504. (FF 2.) Yet the Examiner asserts that “if each
lens is supplied with its own dust cover, then it would be logical and within
the ordinary skill in the art that the entire group of lenses is provided one
(whole) dust cover.” (Ans. 10.) The Examiner does not persuasively
explain why such a modification would be made, particularly when a dust
cover mounted as suggested would appear to impede the ability to rotate the
objective lenses as taught in Batchko. (FF 2.) As Appellants point out,
Batchko shows “a mechanically rotatable fluid lens arrangement being
mounted to the microscope housing as opposed to be[ing] positioned within
the microscope for purposes of selecting a particular focal power fluid lens.”
(App. Br. 14.)
6 By changing the radius of curvature of the fluid lens via use of the actuator
of Batchko, the distance between the lens and alleged image collector might
arguably change to some small extent, even if the image collector is fixed. It
is unclear whether the Examiner is interpreting Batchko and claim 16 in this
way. But we are unpersuaded claim 16 reads on mere displacement of fluid
in the lens by use of the actuator as described in Batchko. Instead,
Appellants’ Specification consistently discloses that the actuator causes
displacement/movement of the image collector itself, and avoids movement
of the lens or placement of an actuator next to or around the lens element.
(See, e.g., FF 1; see also Spec. 2:21-33, 3:13-18, 4:5-11, 9:3-5, 11:5-7.)
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Application 13/002,990
In short, based on the Examiner’s findings and reasoning on this
record, we are unpersuaded that Batchko renders obvious independent claim
16, or dependent claims 17—21, 26—29, and 31.
The other independent claims — claims 32 and 33 — similarly
require, inter alia, “a fluid lens positioned within the housing” and “the
image collector being displaceable along the optical path by the actuator.”
The Examiner has not shown that Batchko teaches or suggests these claim
limitations for the reasons explained above.
Conclusion of Law
The preponderance of the evidence does not support the Examiner’s
conclusion that claims 16—21, 26—29, and 31—33 would have been obvious
over Batchko.
II & III
The Examiner rejected claims 22—25 over Batchko and Good
(Rejection II) and claim 30 over Batchko and Kobrin (Rejection III).
With respect to Rejection II, the Examiner finds that “Batchko differs
from Claim 16 [from which claims 22—25 directly or indirectly depend] in
that Batchko does not teach . . . the fluid lens includes at least two
immiscible fluids that are separated over a meniscus within a fluid
container.” (Ans. 7.) The Examiner turns to Good for its teaching of a
liquid lens having a fluid chamber filled with two immiscible fluids
separated by a meniscus, wherein the shape of the meniscus is changeable to
adjust the focal distance of the lens. (Id. at 7—8.) The Examiner has not,
however, shown that Good makes up for the deficiencies of Batchko
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discussed above related to claim 16 and Rejection I. We are thus
unpersuaded Batchko and Good render obvious claims 22—25.
With respect to Rejection III, the Examiner finds “Batchko differs
from Claim 30 [which depends from claim 29 and indirectly from claim 16]
in that Batchko does not teach the probe according to claim 29, wherein the
pressure driven actuator is one of a pneumatic actuator or a hydraulic
actuator.” (Id. at 9.) The Examiner turns to Kobrin as teaching pneumatic
and hydraulic actuators for deforming a liquid-filled lens. (Id.) But the
Examiner fails to show that Kobrin makes up Batchko’s deficiencies
discussed above related to claim 16 and Rejection I. We are thus
unpersuaded Batchko and Kobrin render obvious claim 30.
SUMMARY
We reverse the rejection of claims 16—21, 26—29, and 31—33 under 35
U.S.C. § 103(a) over Batchko.
We reverse the rejection of claims 22—25 under 35 U.S.C. § 103(a)
over Batchko and Good.
We reverse the rejection of claim 30 under 35 U.S.C. § 103(a) over
Batchko and Kobrin.
REVERSED
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