Ex Parte Shahinian et al

Patent Trial and Appeal Board

Jul 31, 2017

12946839 (P.T.A.B. Jul. 31, 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.
CIT-5477-US1 1748
EXAMINER
ITSKOVICH, MIKHAIL
ART UNIT PAPER NUMBER
2483
MAIL DATE DELIVERY MODE
12/946,839 11/15/2010
60337 7590 0!
THORNE & HALAJIAN, LLP
111 WEST MAIN STREET
BAY SHORE, NY 11706
Hrayr Karnig SHAHINIAN
08/01/2017 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 HRAYR KARNIG SHAHINIAN, YOUNSAM BAE,
HARISH M. MANOHARA, VICTOR E. WHITE,
KIRILL V. SHCHEGLOV, and ROBERTS S. KOWALCZYK
Appeal 2017-001452
Application 12/946,839
Technology Center 2400
Before ROBERT E. NAPPI, JOYCE CRAIG, and MATTHEW J. McNEILL
Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1, 3 through 5, 8 through 12, 30, 31, 33
through 44, 53 through 62, and 64 through 67. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
Appeal 2017-001452
Application 12/946,839
INVENTION
Appellants’ disclosed and claimed invention is directed to an
endoscope for insertion into a cavity of a body for providing a stereoscopic
image of a region of interest inside of the body, including an imaging device
at the distal end for obtaining optical images of the region of interest. Spec.,
Abstract. Claim 1 is representative of the invention and reproduced below.
1. An endoscope that provides a stereoscopic three dimensional
image of a region of interest inside of a body, the endoscope
comprising:
a housing having a distal end and a proximal end, the
distal end being insertable into a cavity of the body;
an image capture device at the distal end that obtains
optical images of the region of interest, and processes the
optical images to form video signals;
a folded substrate folded into a U-shape having first and
second legs; and
a connecting device between the image capture device
and the proximal end that connects the image capture device
to an illumination source and a display, the connecting
device providing the video signals to the display to display
the optical images of the region of interest;
the image capture device comprising:
a single focal plane detector array at a front end facing
the region of interest that obtains the optical images, and
processing circuits at a back end behind the single focal
plane detector array, the processing circuits processing
signals from the single focal plane detector array;
a right pupil that receives a right image through a right
multi-band pass filter having right three pass bands;
a left pupil that receives a left image through a left multi­
band pass filter having left three pass bands, the right multi­
band pass filter having the right three pass bands being a
complement of the left multi-band pass filter having left
three pass bands;
a single lens that directly receives the right image from
the right multi-band pass filter and the left image from the
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Application 12/946,839
left multi-band pass filter that images the right image and
the left image directly on the single focal plane detector
array, the single lens having a single continuous portion that
entirely covers both the right pupil and the left pupil and
directly receives the right image from the right pupil and the
left image from the left pupil and directs the right image
from the right pupil and the left image from the left pupil to
the single focal plane detector array; and
an illuminator that illuminates the region of interest
through a stationary multiband pass filter having the right
three pass bands and the left three pass bands, the stationary
multi-band pass filter of the illuminator being identical to
the right multi-band pass filter of the right pupil and the left
multi-band pass filter of the left pupil so that the stationary
multi-band pass filter of the illuminator has filter
characteristics that are identical to filter characteristics of the
right multi-band pass filter of the right pupil and the left
multi-band pass filter of the left pupil, and when the right
pupil passes light reflected from the region of interest then
the left pupil being blocked from passing the light, and
the stationary multi-band pass filter dividing a visible
spectrum into six contiguous and non-overlapping regions
including the right three pass bands being alternately
contiguous with the left three pass bands,
the right three pass bands being separated by right three
stop bands that are identical to the left three pass bands, and
the left three pass bands being separated by left three stop
bands that are identical to the right three pass bands,
all edges of the right three stop bands coinciding with all
edges of the left three pass bands, and all edges of the left
three stop bands coinciding with all edges of the right three
pass bands,
the right multi-band pass filter being joined with and
contacting the left multi-band pass filter to fit over and
entirely cover the single lens, and
the folded substrate consisting of the single focal plane
detector array at an outer side of the first leg facing the
single lens and the processing circuits at an outer side of the
second leg facing the connecting device that processes the
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Application 12/946,839
signals from the single focal plane detector array located at
the outer side of the first leg.
REJECTIONS AT ISSUE1
The Examiner has rejected claims 1, 3 through 5, 8 through 12, 30, 31,
33 through 44, 53, 54, 60 through 62, and 64 through 67 under
35 U.S.C. § 103(a) as unpatentable over Schechterman (US 2002/0154215
Al, published Oct. 24, 2002), Richards (US 2008/0284982 Al, published
Nov. 20, 2008), and Khait (US 2006/0224040, published Oct. 5, 2006).
Final Act 4—20.
The Examiner has rejected claims 55—59 under 35 U.S.C. § 103(a) as
unpatentable over Schechterman, Richards, Khait, and Ives (US 1,960,011,
issued May 22, 1934). Id. at 20.
ANALYSIS
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejections, and the Examiner’s response to Appellants’
arguments. Appellants’ arguments have persuaded us of error in the
Examiner’s rejection of claims 1, 3 through 5, 8 through 12, 30, 31, 33
through 44, 53 through 62, and 64 through 67.
Appellants present several arguments directed to the rejection of
independent claims 1, 30, 33, 37, 41, and 61 on pages 24 through 40 of the
Appeal Brief and pages 2 through 13 of the Reply Brief. The dispositive
issue presented by these arguments is: did the Examiner err in finding the
1 Throughout this Decision we refer to the Appeal Brief filed March 15,
2016, Reply Brief filed October 31, 2016, the Final Office Action mailed
October 15, 2015, and the Examiner’s Answer mailed August 31, 2016.
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Application 12/946,839
combination of Schechterman, Richards, and Khait teaches a folded U-
shaped substrate where the focal plane detector array is on an outer side of a
first leg of the substrate and the processing circuits are on an outer side of a
second leg facing the connecting device. App. Br. 25—27; Reply Br. 7.
The Examiner, in the response, states:
Appellant fails to cite evidence to contradict the Graham
factors established by the Examiner and the obviousness
rejection of these features under section 103. 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. See In re Keller,
642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Given Khaits teaching that optical and electronic
components can be arranged on a folded substrate (as in Fig. 3),
and to be used for the same purpose as the claimed invention (in
vivo imaging), it would have been obvious for a person of skill
in the art of medical imaging to create the claimed arrangement
of components.
A person of skill in the art of medical images would have
known that components come from different manufacturers and
their combination and placement may naturally differ without
changing the inventive structure and function of the apparatus.
Appellant provides no objective evidence to contradict these
determinations.
Ans. 17.
We disagree with the Examiner. Each of the independent claims 1,
30, 33, 37, 41, and 61 recites a folded U-shaped substrate where the focal
plane detector in on a first leg and the processing circuits on the second leg.
Khait teaches the imager (item 319, which the Examiner equates to the
claimed focal plane detector) and the transmitter (item 320, which the
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Application 12/946,839
Examiner equates to the processing circuits) are on the same leg and side of
the substrate (item 350, 403). See Khait, Figs. 3, 4A, 4B. Further, we note
that the alternative embodiments of attaching the imaged and the circuit to
the circuit board show the two being on the same side of the circuit board.
See id. at Figs. 5A-C. Thus, we do not find that the Khait teaches or
suggests the focal plane detector on one leg and processing circuit on
another leg. Further, the Examiner has not provided objective evidence or a
reasoned rationale to demonstrate how or why the skilled artisan would
mount the focal plane detector and processing circuit on two legs of the
substrate in the manner recited in the independent claims. Accordingly, we
do not sustain the Examiner’s rejection of independent claims 1, 30, 33, 37,
41, and 61, or dependent claims 3 through 5, 8 through 12, 31, 34 through
36, 38 through 40, 42 through 44, 53, 54, 60, 62, and 64 through 67.2
The Examiner has not shown that the teachings of Ives make up for
the deficiency in the rejection of the independent claims, discussed above.
Accordingly, we do not sustain the Examiner’s rejection of claims 55
through 59.
DECISION
We reverse the Examiner’s rejections of claims 1, 3 through 5, 8
through 12, 30, 31, 33 through 44, 53 through 62, and 64 through 67.
REVERSED
2 Because we agree with at least one of the dispositive arguments advanced
by Appellants, we need not reach the merits of Appellants’ other
contentions. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir.
1984) (finding an administrative agency is at liberty to reach a decision
based on “a single dispositive issue”).
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