Ex Parte Shafer et al

Patent Trial and Appeal Board

Jun 8, 2018

14341098 (P.T.A.B. Jun. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/341,098 07/25/2014
51947 7590 06/12/2018
Patent Dept. - Intuitive Surgical Operations, Inc.
1020 Kifer Road
Sunnyvale, CA 94086
FIRST NAMED INVENTOR
David Christopher SHAFER
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.
ISRG00900Cl/US 1275
EXAMINER
TORRES DIAZ, ARNALDO
ART UNIT PAPER NUMBER
3779
NOTIFICATION DATE DELIVERY MODE
06/12/2018 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):
dana.ru bens tein @intusurg.com
patent.group@intusurg.com
natalie.hood@intusurg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID CHRISTOPHER and DENNIS C. LEINER
Appeal2017-005219 1
Application 14/341,098
Technology Center 3700
Before RICHARD M. LEBOVITZ, JEFFREY N. FREDMAN, and
DAVID COTTA, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal2 under 35 U.S.C. § 134 involving claims to a
stereoscopic endoscope. The Examiner rejected the claims as obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Statement of the Case
Background
"The field of minimally invasive surgery (e.g., laparoscopic surgery)
requires increasingly smaller, increasingly mobile stereoscopic imaging
systems" (Spec. i-f 3). The Specification teaches:
1 Herein, we refer to the Appeal Brief ("Appeal Br.," filed June 20, 2016),
Reply Brief ("Reply Br.," filed Feb. 7, 2017), Non-Final Office Action
("Non-Final Act." mailed January 19, 2016) and Answer ("Ans.," mailed
Dec. 8, 2016).
2 Appellants identify the real party in interest as Intuitive Surgical
Operations, Inc. (see App. Br. 2).
Appeal2017-005219
Application 14/341,098
To get acceptable stereoscopic imaging without causing viewer
fatigue or eyestrain, the images of the target object viewed by
the two imaging systems should match in at least the following
alignment parameters: ( 1) image location along the horizontal
axis; (2) image location along the vertical axis; (3) image
rotation; ( 4) image scale; ( 5) geometric distortion; ( 5) focus at
the image center; ( 6) focal shift along the horizontal axis; and
(7) focal shift along the vertical axis.
(Spec. i-f 4). "While these parameters are all affected to some degree by the
positions of the optical elements in the imaging system, they are also
affected by the accuracy of the mounting of the two image sensors
conventionally" (Spec. i-f 5). "With two separate image sensors there are a
total of 12 degrees of freedom that must be controlled when mounting the
two sensors to the optical train" (Spec. i-f 6). "Errors in rotation between the
two image sensors, around the axis perpendicular to the sensor surface,
directly affect image rotation and cannot always be corrected by alignment
of the optics, while rotation errors about the other two axes affect the focal
plane shifts across the imaging field." (Id. i-f 5).
The Claims
Claims 1-19 are on appeal. Claim 1 is representative and reads as
follows:
1. A stereoscopic endoscope comprising:
a first lens train defining a first optical path;
a second lens train defining a second optical path; and
a single continuous image sensor surface having a
surface with a right side image area and a left side image area,
wherein the image sensor surface lies in a plane substantially
parallel to a plane in which the first and second optical paths
lie,
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Application 14/341,098
wherein light for a right side image of an object passes
through the first lens train,
wherein light for a left side image of the object passes
through the second lens train, and
wherein the light for the right side image and the light for
the left side image are reflected by a common reflective planar
surface to be incident on the right side image area of the image
sensor surface and the left side image area of the image sensor
surface, respectively, the common reflective planar surface
being positioned to intercept the light passing through both the
first lens train and the second lens train.
The Issue
The Examiner rejected claims 1-19 under 35 U.S.C. § 103(a) as
obvious over Yabe, 3 Miyazaki, 4 and Igarashi5 (Non-Final Act. 3-12).
The Examiner finds that Y abe teaches an endoscope with "a lens train
defining an optical path" to a CCD image sensor where "the CCD surface is
substantially parallel to an imaginary axis along the lens train" and where
"the light for the image is reflected by a reflective planar surface" (Non-
Final Act. 4, emphasis omitted).
The Examiner acknowledges "Y abe remains silent as to disclose the
endoscope describe above in a stereoscopic fashion" (Non-Final Act. 4).
The Examiner finds Miyazaki teaches a three dimensional viewing
endoscopic device with first and second optical paths and lens trains and "a
single continuous image sensor surface ... with a right side image area (22,
3 Yabe, US 4,832,003, issued May 23, 1989.
4 Miyazaki et al., US 4,873,572, issued Oct. 10, 1989.
5 Igarashi, US 2003/0125608 Al, published July 3, 2003.
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Application 14/341,098
figs. 2A-2B) and a left side image area (21, figs. 2A-2B)" (Non-Final Act. 5,
emphasis omitted).
The Examiner finds it obvious to "modify the endoscope of Y abe with
the three dimensional elements of Miyazaki in order to have a three
dimensional endoscope with enhance viewing capabilities by providing the
so needed depth perception and fine details of the in-vivo tissue surface as
taught by Miyazaki" (Non-Final Act. 5).
The Examiner acknowledges that the combination of Y abe and
Miyazaki would result in "two prism[ s] ... side by side in order to deflect
the light beams onto the two sided image sensor contrary to . . . the claim
require[ ment] ... that the right side image and the light for the left side
image are reflected by a common reflective planar surface" (Non-Final Act.
6).
The Examiner finds "Igarashi teaches a prism for converting the line
of sight is arranged between an object and the pair of negative lenses" (Non-
Final Act. 7). The Examiner finds selection of one or two prisms obvious
because "either option would provide the same predictable result of
deflecting the images into the image sensor, [so] either option would have
been obvious to one of ordinary skill" (Non-Final Act. 7).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner's conclusion that the prior art renders the method of
the claims obvious?
Findings of Fact
1. Y abe teaches "an electronic endoscope provided with such solid
state imaging device as a CCD (charge coupled device) in the tip of an
insertable part has come to be developed" (Yabe 1:9-13).
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2. Figure 1 of Yabe is reproduced below:
FIG.1
!8
(
9
/'" 31
}
~ ~ ~·~
~-~m~~IBmi*:~:::~~·
,..,... ~ ' \ ~
16"' A1-I 24 26 25
Figure 1 depicts
in the tip 9, a tip pipe 16 is secured to the rear side of a
columnar tip forming member 15 made of such rigid member as
a metal to form a tip containing part containing an objective
system 17, prism 18, CCD chip 19 as a solid state imaging
device, CCD base 20 packaging the CCD chip 19 and substrate
22 connected to this CCD base 20 and fitted with an electronic
part 21.
(Yabe 3:7-14).
3. Y abe teaches:
A prism 18 reflecting the beam incident in the optical axial
direction of this objective system 17 to be deflected in the
direction at right angles is arranged in the inner part of this
objective system 17. The beam reflected in the direction at
right angles by the sloped surface of this prism 18 is incident
upon the imaging surface of the CCD chip 19 sealed with a
light transmissive resin 34 on the periphery of the imaging
surface so that the imaging surface may be parallel.
(Yabe 3:38--46).
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Application 14/341,098
4. Miyazaki teaches "it is important to discriminate fine concavo-
convexes on the surface. However, with the conventional endoscope, the
observed or displayed image is plan[ ar] and it has been difficult to
discriminate fine concavo-convexes" (Miyazaki 1:21-25).
5. Miyazaki teaches "an endoscope whereby a three-dimensional
viewing is possible by using ... pair of image guide fiber bundles for the
right eye and left eye" (Miyazaki 1 :34--39).
6. Figure 1 of Miyazaki is reproduced below:
[A]s shown in FIG. 1, a pair of objective lens systems 15 and
16 are arranged in parallel or as inclined inward in two
positions where the tip side of the above mentioned tip part 9
can be three-dimensionally seen. One solid state imaging device
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17 is arranged in the image forming positions of these objective
lens systems 15 and 16.
(Miyazaki 4:4--10).
7. Miyazaki teaches:
solid state imaging device 17 has a long rectangular imaging
surface 18 in the arranging direction of the above mentioned
pair of the objective lens systems 15 and 16. Two image
forming regions 21 and 22 in which object images are formed
by the above mentioned pair of the objective lens systems 15
and 16 are provided on this imaging surface 18. These two
image forming regions 21 and 22 may be provided without
overlapping with each other.
(Miyazaki 4: 17-25).
8. Figure 3(b) oflgarashi is reproduced below:
FIG. 3 (b)
1
FIG. 3(b) is a side view of the object optical system. In this
example, the object optical system is different from the object
optical system of the first example in that a cover glass 9 and a
prism 10 are arranged at the object side for converting a line of
sight
(Igarashi i-f 65).
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Application 14/341,098
9. Igarashi teaches "a prism for converting the line of sight is
arranged between an object and the pair of negative lenses" (Igarashi i-f 33).
Principles of Law
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
Analysis
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Non-Final Act. 3-12; FF 1-9) and agree
that the claims are obvious over the cited prior art. We address Appellants'
arguments below.
Claims 1 and 14
Appellants contend
the Office fails to: (1) adequately determine the scope and
content of Yabe, and (2) properly ascertain the differences
between the claimed invention and the base reference, Y abe ...
Accordingly, the Office fails to establish a prima facie case of
obviousness and the rejection of claims 1-19 should be
reversed.
(App. Br. 15).
We find this argument entirely unpersuasive because the Examiner
specifically identifies the teachings of Yabe relied upon for obviousness (see
Non-Final Act. 4 ), acknowledges that "Y abe remains silent as to disclose the
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endoscope describe above in a stereoscopic fashion" (id.) and acknowledges
that Yabe (along with Miyazaki) do not teach a single prism (Non-Final Act.
7), but rather relies upon Miyazaki and Igarashi for those missing elements
(see Non-Final Act. 4--7).
Appellants contend
the Office has failed to establish how any combination of Y abe,
Miyazaki, and lgarashi suffices to disclose or otherwise suggest
the following recitations of claim 14: "after transmitting
through the first and second lens trains, reflecting the right side
image light and the left side image light off the same surface of
a single prism to be incident on a right side image area and a
left side image area, respectively, of a single continuous image
sensor surface."
(App. Br. 16).
We find this argument unpersuasive because, as the Examiner
explained (see Non-Final Act. 3-12), Yabe teaches endoscopic devices that
transmit image light through a lens train, a prism and a sensor surface (FF 1-
3 ), Miyazaki teaches that it is desirable to modify endoscopic devices to be
stereoscopic and provide images for the right and left eye (FF 4--5) with a
single continuous image sensor surface (FF 6-7) and Igarashi demonstrates
that a single prism may be used to provide two separate images (FF 8). The
ordinary artisan would have had reason to improve Y abe' s monoscopic
endoscope to stereoscopic because Miyazaki teaches stereoscopic
endoscopes permit three-dimensional viewing that improves image
discrimination (FF 4--5) and would have had reason to use Igarashi' s single
prism as a known and predictable alternative to the use of two prisms. See
KSR, 550 U.S. at 416, 421. Thus, we agree with the Examiner that the Yabe,
Miyazaki, and Igarashi render claim 14 obvious.
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Appellants individually discuss Yabe and Miyazaki (see App. Br. 17)
and then contend "Y abe and Miyazaki, taken individually or in combination,
fail to disclose or otherwise suggest that light for the right side image and
the light for the left side image are reflected by a common reflective planar
surface" (App. Br. 18).
We find this argument unpersuasive because it fails to incorporate the
teachings of Igarashi, relied upon by the Examiner for this limitation. "Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Here, Appellants are simply arguing about Y abe and Miyazaki without
considering the teachings of Igarashi.
Appellants contend
Igarashi only discloses that prism 10 is arranged at the object
side of an object optical system for "converting a line of
sight." See lgarashi at i-f [0065]. In other words, light enters, is
reflected by, and exits the prism 10 before passing through the
lens trains of lgarashi, the lens trains being defined in part by a
pair of negative lenses 1, a pair of positive lenses 2, the
brightness diaphragm 3, and a pair of second positive lenses 4,
of the object optical system. See id. at i-f [0066].
Accordingly, like Yabe in view of Miyazaki, Yabe in
view of Miyazaki and further in view of lgarashi also fails to
disclose or otherwise suggest a "common reflective planar
surface being positioned to intercept the light passing through
both the first lens train and the second lens train," as recited in
claim 1.
(App. Br. 19).
We are not persuaded because Appellants' argument fails to recognize
that the rejection is based on the combination of references, not any single
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reference alone. While it is true that Igarashi teaches the use of a single
prism to convert the line of sight in an endoscopic device into two separate
images for a stereoscopic view prior to the lens train (FF 8-9), Y abe teaches
a prism may also be placed after the lens train as required by claims 1 and 14
(FF 2). Miyazaki teaches that stereoscopic imaging, as performed by
Igarashi, is desirable (FF 4---6). Therefore, the ordinary artisan, interested in
obtaining the benefit of stereoscopic imaging and interested in using a single
prism as taught by Igarashi, would have reasonably modified Y abe to place a
single prism after the lens train in order to obtain stereoscopic imaging in the
endoscopic device of Y abe, consistent with the position of the Examiner (see
Ans. 12-13). See In re Keller, 642 F.2d 413, 425 (CCPA 1981) ("The test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference; nor is it that
the claimed invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.")
Appellants contend "the Office improperly distills each of the
independent claims 1, 7, and 14, down to the aspect of using a common
planar surface to deflect light beams gathered by objective systems" (App.
Br. 22). Appellants contend "the Office fails to consider the cited references
Y abe, Miyazaki, and lgarashi, as a whole by concluding that a person having
ordinary skill in the art would have only considered two solutions of having
'two side-by side prisms' or 'one prism for converting the line of sight"'
(App. Br. 23).
We find these arguments unpersuasive. The Examiner clearly
identified the elements in the prior art of Y abe, Miyazaki, and Igarashi that
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rendered the claims obvious, where all of these references dealt with
endoscopic images, and suggested various known alternatives for
transmitting those images to the physician using either monoscopic or
stereoscopic lens systems in combination with prisms and CCD sensor
devices (see Non-Final Act 3-12; FF 1-9). The Examiner found the
combination of these known components obvious because the "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.
Appellants contend
the Office's assertion that "two side-by side prisms" or "one
prism for converting the line of sight" make up the entire
"limited universe of potential options" improperly fails to
consider that there are an incalculable number of prism
configurations that a person having ordinary skill in the art
would have considered
(App. Br. 24).
We find this argument unpersuasive because the Examiner never
stated that these options represent the "entire limited universe" but rather the
Examiner, based on the teachings of the prior art of Miyazaki and Igarashi
showing these two alternatives, determined there was "a limited universe of
potential options" (Non-Final Act. 7). Appellants provide only attorney
argument, not evidence, that the ordinary artisan would have identified an
"incalculable number of prism configurations." See In re Pearson, 494 F.2d
1399, 1405 (CCPA 1974) ("Attorney's argument in a brief cannot take the
place of evidence."). See also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984) (Arguments and conclusions unsupported by factual evidence carry no
evidentiary weight.)
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Appellants contend
the Office appears to piecemeal pick and choose different
portions of the cited references by using Appellant's claims as a
roadmap, with no other sound rationale or motivation provided
for making the proposed combinations. Relying on such
hindsight, however, is improper and cannot establish motivation
to support a prima facie case of obviousness
(App. Br. 25).
While we are fully aware that hindsight bias may plague
determinations of obviousness, Graham v. John Deere Co., 383 U.S. 1, 36
(1966), we are also mindful that the Supreme Court has clearly stated that
the "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. Here, the Examiner has provided a reason to modify the
monoscopic endoscope of Y abe with the stereoscopic system of Miyazaki in
order to obtain the benefit of depth perception (three dimensional viewing)
(FF 5) and has demonstrated that the prism arrangement is a known
alternative shown by Igarashi as used to create stereoscopic images (FF 8-
9). Appellants provide no evidence that any of the modifications suggested
by the Examiner would have had any degree of unpredictability.
Appellants contend "Y abe does not contemplate a stereoscopic
endoscope and, thus, to modify a monoscopic endoscope of Y abe to make a
stereoscopic endoscope destroys the monoscopic principle of operation"
(App. Br. 25).
We find this argument unpersuasive because any obviousness position
requires some reconstruction of the starting device, and Appellants do not
identify any reason why Y abe' s "monoscopic" view is a principle of
operation. Our position finds substantial support in the underlying facts of
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the KSR decision itself, where the Supreme Court was not persuaded by the
Federal Circuit's reliance upon a statement from an "expert that claim 4 was
nonobvious because, unlike in Rixon, the sensor was mounted on the support
bracket rather than the pedal itself." KSR, 550 U.S. at 415. That is, like the
current case where improvement of Y abe' s monoscopic endoscope with
Miyazaki' s stereoscopic approach to endoscopes would have been obvious,
some reconstruction of the prior art elements in KSR amounting to a change
in the principle of operation of the pedal sensor from mechanical to
electrical would have been required to arrive at the claimed invention. The
Court, however, found that "if a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill." Id. at 417. Just as
the improvement of a pedal from a mechanical to electrical sensor did not
destroy the "principle of operation", so too, the improvement of a
monoscopic endoscope to a stereoscopic endoscope does not destroy any
principle of operation.
Claim 7
Appellants contend "claim 7 recites that 'the right side image and left
side image optical paths are parallel to each other' and the Office fails to
address this recitation in the rejection of claim 7" (App. Br. 20). While
Appellants concede "that Miyazaki discloses that the embodiment of FIG. 1
includes 'a pair of objective lens systems 15 and 16 are arranged in parallel
or as inclined inward in two positions' (see Miyazaki at col. 4, 11. 4--10),"
Appellants still contend "that no sufficient rationale has been provided by
the Office regarding why a person having ordinary skill in the art would
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have incorporated the parallel configuration rather than the inclined
configuration of Miyazaki into a modification of Yabe" (id.).
We find this argment unpersuasive. Here, Miyazaki expressly
recognizes, as admitted by Appellants, that lens may be used in two
alternative, equivalent approaches, either "parallel" or "inclined inward" (FF
7). An "[ e ]xpress suggestion to substitute one equivalent for another need
not be present to render such substitution obvious." In re Fout, 675 F.2d
297, 301 (CCP A 1982). Moreover, the flexible analysis set out by the
Supreme Court in KSR recognizes the obviousness of pursuing known
options within the technical grasp of the skilled artisan, e.g., known
equivalents. See KSR, 550 U.S. at 421. Here, it is fair to say that there were
a finite number of identified, predictable solutions to the arrangement of lens
systems, with only two disclosed by Miyazaki, either "parallel" or "inclined
inward" (FF 2). Therefore, selection of one of these was the "product not of
innovation but of ordinary skill and common sense." See Wm. Wrigley Jr.
Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1364---65 (citing KSR, 550
U.S. at 421 ).
Conclusion of Law
The evidence of record supports the Examiner's conclusion that the
prior art renders the method of the claims obvious.
SUMMARY
In summary, we affirm the rejection of claims 1, 7, and 14 under 35
U.S.C. § 103(a) as obvious over Yabe, Miyazaki, and Igarashi. Claims 2---6,
8-13, and 15-19 fall with claims 1, 7, and 14.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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