Ex Parte ROBERTSON

Patent Trial and Appeal Board

Jun 2, 2017

13539975 (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.
13/539,975 07/02/2012 David W. ROBERTSON 09423-0142-00000 3997
06/06/2017109610 7590
Bookoff McAndrews, PLLC
2401 Pennsylvania Avenue, NW, Suite 450
Washington, DC 20037
EXAMINER
CHOU, WILLIAM B
ART UNIT PAPER NUMBER
3779
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):
usptomail @bookoffmcandrews.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID W. ROBERTSON1
Appeal 2016-001938
Application 13/539,975
Technology Center 3700
Before FRANCISO C. PRATS, RICHARD J. SMITH,
and TIMOTHY G. MAJORS, 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
apparatus, system, and method for illuminating and capturing an image of an
object. The claims been rejected as indefinite and anticipated. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant identifies the Real Party in Interest as Boston Scientific Scimed,
Inc. (App. Br. 1.)
Appeal 2016-001938
Application 13/539,975
STATEMENT OF THE CASE
Appellant’s “invention include[s] imaging systems and more
particularly imaging systems for endoscopes and related methods of use.”
(Spec. 12.)
According to the Specification, “ [conventional digital imaging
systems may include an illumination source and an image capture device
including a plurality of pixels configured to detect light intensity.” {Id. 13.)
Appellant discloses that, in conventional systems, “light to each pixel is
filtered so that each pixel only records light intensity information for the
specific color (i.e., red, green, or blue) deposited on the respective pixel.”
{Id.) Appellant further discloses “[sjince each pixel is capable of detecting
light intensity information for only one specific color, the conventional
digital imaging system is inefficient, especially for miniaturized cameras
with a limited number of pixels.” {Id.)
Claims 1—21 are on appeal. Claim 1 is illustrative:
1. An apparatus comprising:
at least one illumination source configured to emit
illumination energy;
an illumination control system connected to the at least
one illumination source to receive the illumination energy, the
illumination control system being configured to control the
illumination energy to output a sequence of different
illumination wavelengths using the illumination energy;
an elongate member configured to be at least partially
inserted into a patient;
a plurality of optical fibers connected to the illumination
control system and disposed within the elongate member, the
plurality of optical fibers being configured to sequentially output
the different illumination wavelengths, each optical fiber being
configured to transmit a different illumination wavelength of the
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Application 13/539,975
sequence to output the sequence of different illumination
wavelengths from the optical fibers toward an object; and
an image capture device, wherein the image capture device
includes a plurality of pixels, each pixel of the image capture
device being configured to detect the illumination energy
associated with all of of [sic] the plurality of different
illumination wavelengths reflected from the object.
(App. Br. 17 (Claims App’x).)
The claims stand rejected as follows:
I. Claims 1, 12, and 16 under 35 U.S.C. § 112, second paragraph
(pre-AIA), for indefmiteness (“Rejection I”).
II. Claims 1—21 under 35 U.S.C. § 102(b) as anticipated by
Sendai2 (“Rejection II”).
I-INDEFINITENESS
The Examiner rejected claims 1, 12, and 16 “as being incomplete for
omitting essential structural cooperative relationships of elements, such
omission amounting to a gap between the necessary structural connections.
See MPEP § 2172.01.” (Ans. 2.) According to the Examiner:
In order for the image capture device to detect illumination
energy associated with a sequence of different illumination
wavelengths controlled by the illumination control system, there
is synchronization between a processor, the illumination control
system, and the image capture device via control signals, startup
signals, and/or signals associated with the image frames as
described in Pars. [029]-[033].
2 Sendai, US 2002/0105505 Al, published Aug. 8, 2002.
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Application 13/539,975
(Id.) The Examiner concludes claims 1 and 12 are indefinite for omitting the
essential elements of “(i) a processor and (ii) control signals, startup signals,
and/or signals associated with the image frames.” (Id.) The Examiner
further concludes claim 16 is indefinite for omitting the essential elements of
“(i) an illumination control system and (ii) control signals, startup signals,
and/or signals associated with the image frames.” (Id. at 2—3.)
We are unpersuaded. MPEP § 2172.01 states that “essential matter
may include missing elements . . . described by applicants) as necessary to
practice the invention . . . [and] a claim which fails to interrelate essential
elements of the invention as defined by applicants) in the specification may
be rejected” as indefinite. (MPEP § 2172.01 (emphases added).) Also, as
pointed out by Appellant, “MPEP 2172.01 cites MPEP 2164.08(c) for
further discussion of essential/critical features and states that ‘[b]road
language in the disclosure, including the abstract, omitting an allegedly
critical feature, tends to rebut the argument of criticality.’” (App. Br. 10—11
(quoting MPEP § 2164.08(c).)
The Examiner identifies no clear disclosure in Appellant’s
Specification describing or defining the missing elements as essential.
Appellant, on the other hand, points out that the Specification describes the
invention in broad terms without the allegedly essential processor, etc. (See,
e.g., Reply Br. 3 (“paragraphs [004]-[006] of the specification summarize
the disclosure and omit the allegedly critical features suggested by the
Examiner.”) And Appellant argues persuasively that the Specification —
including the portions identified by the Examiner — describes the use of a
processor, etc. in optional implementations of the invention recited in claims
1, 12, and 16. (App. Br. 10-11; Reply Br. 2-A.)
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Application 13/539,975
We thus conclude the preponderance of the evidence does not support
the Examiner’s rejection of claims 1, 12, and 16 for indefmiteness.
II-ANTICIPATION
The Examiner rejected claims 1—21 as anticipated by Sendai. (Ans.
3.) Regarding illustrative claim 1, the Examiner finds that “Sendai discloses
a similar apparatus in Fig. 4.” (Id.) Figure 4 of Sendai is reproduced below.
FI G . 4
(Sendai Fig. 4 (illustrating a schematic drawing of an endoscope apparatus).)
As depicted in Figure 4, the Examiner finds Sendai discloses illumination
source (110), illumination control system (150) configured to control
illumination energy to output a sequence of different illumination
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Application 13/539,975
wavelengths, and elongate member (100). According to the Examiner,
Sendai further discloses
a plurality of optical fibers (101) . . .each optical fiber
being configured to transmit a different illumination wavelength
of the sequence (the optical fibers transmitting various
illumination wavelengths) to output the sequence of different
illumination wavelengths from the optical fibers toward an
object; and
an image capture device (107) . . . [that] includes a
plurality of pixels “pixels” in Par. [0115], each pixel of the
image capture device being configured to detect the illumination
energy associated with all of the plurality of different
illumination wavelengths reflected from the object (during the
respective illumination period of each of the white light, IR
reflected light, and fluorescent-light image acquisition
periods).
(Ans. 3—4.)
Appellant argues the Examiner has improperly characterized CCD
photographing element 107 of Sendai as the image capture device of claim
1. (App. Br. 12.)
Appellant contends “the device of Fig. 4 [of Sendai] may be operated
to produce (1) a normal image, an IR reflected light image, and a
fluorescent-light image in an alternating time division manner (Sendai, |
[0120]); and (2) a normal image (Sendai, 1 [0133]).” (Id.) In a first
operation, according to Appellant, light guides (i.e., optical fibers) 101b and
101a are used respectively to emit fluorescent-stimulating light (wavelength
of 410 nm) and white light onto living tissue; light emitted from the tissue
upon irradiation by the respective fluorescent-stimulating light or white light
is received by fiber 103 and passes various filters (e.g., switching filter 122),
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after which it is received by CCD 125. (Id; see also Sendai Fig. 4 and
11121-127.)
In a second operation, according to Appellant, the device of Sendai’s
Figure 4 emits white light from light guide/optical fiber 101a that is
projected onto living tissue. (App. Br. 12.) Here, however, light reflected or
emitted by the tissue does not traverse fiber 103 or switching filter 122, etc.,
and is not received by CCD 125. (Id. at 12; see also Sendai Fig. 4 and
133—135.) Instead, reflected light is focused by objective lens 105, reflected
by prism 108 and focused on CCD photographing element 107. (App. Br.
12; Sendai Fig. 4 and 1134.) Thus, Appellant contends, in Sendai’s device,
“all light received by CCD 107 comes from a single white-light source 112,
and is therefore the same wavelength.” (App. Br. 12—13.)
Based on these contentions about the device depicted in Figure 4 of
Sendai, Appellant argues Sendai does not disclose the invention of claim 1.
More specifically, Appellant argues “any pixels of CCD 107 which receive
reflected light, likely receive the same wavelength of light and are not
‘configured to detect the illumination energy associated with all of the
plurality of different illumination wavelengths reflected from the object,”’ as
required by claim 1. (App. Br. 13.) Appellant points out that “the Examiner
characterized light guide[] 101 (which includes light guide 101a and light
guide 101b) as the claimed plurality of optical fibers configured to
sequentially output different illumination wavelengths.” (Id. at 13—14.)
Appellant asserts that “the only light received by CCD 107 is delivered via
white-light light guide 101a.” (Id. at 14.) And so, Appellant argues,
“regardless of how many wavelengths of light are contained within the light
reflected from the living tissue . . . this light [detected by CCD 107] does not
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Application 13/539,975
comprise the claimed plurality of different illumination wavelengths output
by the claimed plurality of optical fibers.” (Id.)
“[UJnless a prior art reference discloses within the four comers of the
document not only all of the limitations claimed but also all of the
limitations arranged or combined in the same way as recited in the claim, it
cannot be said to prove prior invention of the thing claimed and, thus, cannot
anticipate under 35 U.S.C. § 102.” Net MoneyIN, Inc. v. VeriSign, Inc., 545
F.3d 1359, 1371 (Fed. Cir. 2008); Gechterv. Davidson, 116 F.3d 1454, 1457
(Fed. Cir. 1997) (“Under 35 U.S.C. § 102, every limitation of a claim must
identically appear in a single prior art reference for it to anticipate the
claim.”). Applying these legal principles, the Examiner has not shown by a
preponderance of the evidence on this record that Sendai anticipates claim 1.
Appellant has persuasively argued that CCD 107 in the device
depicted in Figure 4 of Sendai only detects reflected light from a single
white-light source emitted from a single optical fiber. We read claim 1 as
requiring something different.
Claim 1 recites, inter alia, “an image capture device . . . [with] each
pixel of the image capture device being configured to detect the illumination
energy associated with all of the plurality of different illumination
wavelengths reflected from the object.” (App. Br. 17 (emphasis added).)
The phrase “the plurality of different illumination wavelengths” relates back
to earlier limitations of the claim and, in particular, “a sequence of different
illumination wavelengths” where “a different illumination wavelength” is
output on “each optical fiber” of the “plurality of optical fibers.” (Id.) Put
differently, claim 1 requires at least two optical fibers, each of which
sequentially output different illumination wavelengths (e.g., red and green
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Application 13/539,975
illumination), as well as an image capture device where each pixel is
configured to detect the illumination energy reflected from the object upon
the object’s irradiation with the different wavelengths emitted from the
plurality of optical fibers.3
We are unpersuaded that Figure 4 of Sendai discloses the same device
recited in claim 1. As noted, CCD 107, which the Examiner identifies as the
claimed image capture device, receives/detects reflected light from a single
optical fiber emitting white light. See Net Money IN, 545 F.3d at 1371 (To
anticipate “it is not enough that the prior art reference discloses part of the
claimed invention, which an ordinary artisan might supplement to make the
whole, or that it includes multiple, distinct teachings that the artisan might
somehow combine to achieve the claimed invention.”).
The Examiner responds that “[i]t is unclear as to how or why CCD
107 would be different than CCD 125, when there is no indication that CCD
107 is of a different structure having reduced functionality compared to
CCD 125.” (Ans. 7.) The burden of demonstrating anticipation is, however,
with the Examiner and we are directed to nothing in Sendai suggesting the
CCD 107 and CCD 125 are the same. In any event, even if CCD 107 might
be capable of detecting illumination energies associated with a plurality of
different wavelengths emitted from a plurality of optical fibers, it is not
configured that way in the device shown in Figure 4 of Sendai.
3 This is described further in the Specification. (See, e.g., Spec. Tflf 27—29
(“when an object is imaged serially with each of red, green, and blue
illumination, the image capture device 60 may use each pixel 132 to produce
an image frame of the object 70 based on each color of illumination.”).)
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We also recognize, but are not persuaded by, the Examiner’s
suggestion that the plurality of optical fibers and image capture device
“being configured to” perform a functionality imparts no distinction over
Sendai. (Ans. 7—8.) Instead we agree with Appellant that, as used in claim
1, the phrase “being configured to” is not a mere intended use. (App. Br.
14.) In this context, “being configured to” requires the claimed device and
its interrelated structural elements “be ‘set up’ to perform the claimed
functions.” (Id.) The Examiner has not established that the device of Figure
4 of Sendai is set up the same as the apparatus of claim 1.
Finally, we recognize the Examiner’s assertion that
under broadest reasonable interpretation, “illumination energy
associated with all of the plurality of different illumination
wavelengths reflected from the object” depends on the
illumination emitted, and therefore have a temporal relationship
with the specific wavelengths emitted by an illumination source
at a given time (e.g. under one mode of operation).
(Ans. 8.) Inasmuch as the Examiner is suggesting the final limitation of
claim 1 is met merely because CCD 107 detects whatever illumination
energy is reflected from an object during one mode of operation (white
light/normal image generation), that is not the correct claim interpretation as
explained above.
For these reasons, we conclude the Examiner did not establish by a
preponderance of the evidence that claim 1 is anticipated by Sendai. We
thus reverse the rejection of claim 1 and dependent claims 2—11 and 21.
Independent claims 12 and 16 include similar limitations to claim 1
that, for the reasons explained above, the Examiner has not persuasively
shown are disclosed in Sendai. Accordingly, we also reverse the rejection of
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claim 12 (and dependent claims 13—15) and claim 16 (and dependent claims
17—20) as anticipated by Sendai.
SUMMARY
We reverse the rejection of claims 1, 12, and 16 under 35 U.S.C.
§112, second paragraph, as indefinite.
We reverse the rejection of claims 1—21 under 35 U.S.C. § 102(b) as
anticipated by Sendai.
REVERSED
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