Karl Storz Imaging, Inc.

Patent Trials and Appeals Board

Mar 22, 2021

2020006028 (P.T.A.B. Mar. 22, 2021)

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.
15/803,207 11/03/2017 Marc R. Amling 02580-P0332C 6860
154825 7590 03/22/2021
KS - Whitmyer IP Group LLC
600 Summer Street
3rd Floor
Stamford, CT 06901
EXAMINER
BAILEY, FREDERICK D
ART UNIT PAPER NUMBER
2483
NOTIFICATION DATE DELIVERY MODE
03/22/2021 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):
patent@karlstorz.com
uspto@whipgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARC R. AMLING and TIMOTHY KING
___________

Appeal 2020-006028
Application 15/803,207
Technology Center 2400
____________

Before CARL W. WHITEHEAD JR., ERIC B. CHEN, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2020-006028
Application 15/803,207

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
A telephonic oral hearing was held on March 4, 2021. The record
includes a written transcript of the oral hearing.
We REVERSE.

CLAIMED SUBJECT MATTER
The claimed subject matter is directed to a modular video imaging
system having a control module connectable to multiple input modules.
(Abstract.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter, with disputed limitations in italics:
1. A modular video imaging system comprising:
a first input module configured to
receive first image data from a first camera,
transmit a first input module identifier,
apply a first processing function to the first image
data based on a first command to generate first processed
image data, and
transmit the first processed image data; and
a control module external to the first input module
and configured to

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Karl Storz
Imaging, Inc. (Appeal Br. 2.)
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Application 15/803,207

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determine the first command based on the first
input module identifier and a user input,
transmit the first command to the first input
module,
receive the first processed image data, and
output the first processed image data to one or
more video displays

REFERENCES
Name Reference Date
Chatenever et al.
(“Chatenever ’390”)
US 2004/0028390 A9 Feb. 12, 2004
Chatenever et al.
(“Chatenever ’750”)
US 2007/0024717 A1 Feb. 1, 2007
Adler et al. (“Adler”) US 2011/0029733 A1 Feb. 3, 2011

REJECTIONS
Claims 1, 2, 4–7, 9–18, and 20 stand rejected under 35 U.S.C. § 103
being unpatentable over Chatenever ’390 and Adler.
Claims 3, 8, and 19 stand rejected under 35 U.S.C. § 103 being
unpatentable over Chatenever ’390, Adler, and Chatenever ’717.

OPINION
§ 103 Rejection—Chatenever ’390 and Adler
We are persuaded by Appellant’s arguments (Reply Br. 3–4) that the
combination of Chatenever ’390 and Adler would not have rendered obvious
independent claim 1, which includes the limitation “a first input module
configured to . . . transmit a first input module identifier.”

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The Examiner found that replaceable hardware component 204 of
Chatenever ’390 corresponds to the limitation “first input module” (Final
Act. 3) and that camera control unit (CCU) 20 of Chatenever ’390
corresponds to the limitation “control module” (id. at 3–4). The Examiner
further found that the camera identifier 84 provided to CCU 20 of
Chatenever ’390 corresponds to the limitation “transmit a first input module
identifier.” (Ans. 4.) We do not agree with the Examiner’s findings.
Chatenever ’390 relates to a “camera control unit [20] for processing
video signals from many different types of video cameras.” (¶ 2.) Figure 3
of Chatenever ’390 illustrates hardware components, including camera
control unit 20 and replaceable hardware components 204. (¶ 44.)
Chatenever ’390 explains that “[r]eplaceable hardware component 204 is
configured to enable CCU 20 to process image data 32 into a useable signal”
and “issues commands 34 via connector 206 and/or CCU 20 to camera
head 12 to adjust camera settings via connector 206.” (¶ 46.) Moreover,
Chatenever ’390 explains that “[c]amera identifier and/or information 84,
therefore, provides useful data to CCU 20 so that the correct hardware
component 82 is properly selected 86 to process image data 32.” (¶ 36.) In
addition, Chatenever ’390 explains that “[o]nce CCU 20 and camera head 12
are in communication, CCU 20 makes requests and/or receives 24
program 42, which is . . . stored on storage device 40” (¶ 42), such that
“information 84 is stored and transmitted from storage device 40” (¶ 44).
Although the Examiner cited to replaceable hardware components 204
and information 84 of Chatenever ’390, the Examiner has provided
insufficient evidence to support a finding that Chatenever ’390 teaches the
limitation “a first input module configured to . . . transmit a first input
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module identifier.” (Ans. 4.) In particular, Chatenever ’390 explains that
information 84 is transmitted from storage device 40 of camera head 12,
rather than being transmitted from replaceable hardware component 204
(¶¶ 42, 44), as required by independent claim 1. Therefore, on this record,
the Examiner has not demonstrated that Chatenever ’390 teaches the
limitation “a first input module configured to . . . transmit a first input
module identifier.” Moreover, the Examiner’s application of Adler does not
cure the deficiencies of Chatenever ’390.
Accordingly, we find Appellant’s following arguments persuasive of
Examiner error:
FIGS. 1-2 show that the CCU 20 transmits the request 88 to the
camera 12 in order to receive camera information/identifier (84 in
FIG. 1; 42 in FIG. 2). However, the camera/camera head 12 is not a
first input module, especially “a first input module configured to
receive first image data from a first camera,” as variously recited in
claims 1 and 11. In fact, the Examiner equates the “replaceable
hardware component” of Chatenever390 to a first input module….
The replaceable hardware component 204, as shown in FIG. 3, is part
of the CCU 20…. With this in mind, nowhere does Chatenever390
suggest that the replaceable hardware component transmits an
identifier or information about itself to the CCU.
(Reply Br. 3–4 (emphasis omitted).)
Thus, we do not sustain the rejection of independent claim 1 under 35
U.S.C. § 103. We do not sustain the rejection of dependent claims 2, 4–7, 9,
and 10 under 35 U.S.C. § 103 for the same reasons discussed with respect to
claim 1.
Independent claim 11 recites limitations similar to those discussed
with respect to claim 1. We do not sustain the rejection of claim 11, as well
as dependent claims 12–18 and 20, for the same reasons discussed with
respect to claim 1.
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§ 103 Rejection—Chatenever ’390, Adler, and Chatenever ’717
Claims 3, 8, and 19 depend from independent claims 1 and 11. The
Examiner cited Chatenever ’717 for teaching the additional features of
claims 3, 8, and 19. (Final Act. 8–9.) However, the Examiner’s application
of Chatenever ’717 does not cure the above noted deficiencies of Chatenever
’390 and Adler.

CONCLUSION
The Examiner’s decision rejecting claims 1–20 under 35 U.S.C. § 103
is reversed.

DECISION
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 2, 4–7, 9–
18, 20
103 Chatenever ’390,
Adler
1, 2, 4–7,
9–18, 20
3, 8, 19 103 Chatenever ’390,
Adler, Chatenever
’717
3, 8, 19
Overall
Outcome
1–20

REVERSED