CELLECT LLC et al.

Patent Trials and Appeals Board

Dec 1, 2021

2021004967 (P.T.A.B. Dec. 1, 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.
90/014,452 02/15/2020 6982740 072374-00002 7472
31013 7590 12/01/2021
KRAMER LEVIN NAFTALIS & FRANKEL LLP
INTELLECTUAL PROPERTY DEPARTMENT
1177 AVENUE OF THE AMERICAS
NEW YORK, NY 10036
EXAMINER
ESCALANTE, OVIDIO
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/01/2021 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 Cellect, LLC
Patent Owner and Appellant
____________________

Appeal 2021-004967
Reexamination Control 90/014,452
Patent 6,982,740 B2
Technology Center 3900
___________________

Before JAMESON LEE, ALLEN R. MacDONALD, and
MICHAEL J. ENGLE, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(b) and 306, Cellect, LLC (Appellant)1
appeals from the final rejection of claims 1 and 2. Patent claims 3–12, 14,
and 15 are not subject to reexamination. Final Act. 19 (PTOL-466).
Appellant has cancelled claim 13. February 24, 2021 Response 2. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 Appellant identifies the real party in interest as Cellect LLC, a wholly
owned subsidiary of Micro Imaging Solutions LLC. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Claims 1 and 2 are the sole claims on appeal (emphasis, formatting,
and bracketed material added):
1. A reduced area imaging device comprising:
[A.] an image sensor lying in a first plane and including an array of
pixels for receiving images thereon,
[A.i.] said image sensor further including circuitry means on
said first plane and coupled to said array of pixels for
timing and control of said array of pixels,
[A.ii.] said image sensor producing a pre-video signal;
[B.] a first circuit board lying in a second plane and communicating
with said image sensor by at least one pre-video conductor
inner-connecting said image sensor and said first circuit board,
[B.i.] said first circuit board including circuitry means for
converting said pre-video signal to a post-video signal for
reception by a standard video device;
[C.] a power supply[:]
[C.i.] coupled with said image sensor for driving said array of
pixels and said timing and control means, and
[C.ii.] electrically coupled to said first circuit board for driving
said first circuit board; and
[D.] a time select switch[:]
[D.i.] electrically communicating with said first circuit board
and
[D.ii.] remote from said first circuit board for selectively
varying integration periods to produce an image of a
desired brightness,
[D.iii.] said switch having a plurality of settings enabling
selective control to produce the image of a desired
brightness.
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2. A device, as claimed in claim 1, wherein:
[A.iii.] said array of pixels includes an array of CMOS
pixels.
REJECTION2
The Examiner rejects claims 1 and 2 on the ground of nonstatutory
(obviousness type) double patenting (OTDP) as being unpatentable over
claim 1 of U.S. Patent No. 6,043,839 to Adair et al. (hereinafter “Adair
’839”) in view of Japanese Patent Publication No. JPH07275198 to
Tomoyasu et al. (hereinafter “Tomoyasu”). Final Act. 11–14.
Separate patentability, in compliance with 37 C.F.R. § 41.37(c)(iv), is
not argued for claim 2 (“Under each heading identifying the ground of
rejection being contested, any claim(s) argued separately or as a subgroup

2 Although the Examiner’s Final Action includes claim 13, Appellant
points out:
[T]he First Advisory Action initially withdrew the rejections of
Claims 1 and 2 of the ’740 Patent . . . . After receiving the First
Advisory Action, Patent Owner cancelled Claim 13 in order to
expedite issuance of an Ex Parte Reexamination Certificate for
the ’740 Patent. However, . . . the Examiner reversed course,
applying a different construction and reinstated the rejection of
Claims 1 and 2 in the Second Advisory Action.
Appeal Br. 9 (emphasis added). To the extent that Appellant is concerned
that the reinstated rejection in the Second Advisory Action is now an
undesignated new ground of rejection, such an issue is a matter for petition
to the Director under 37 C.F.R. § 1.181 and is not appealable to this Board––
similar to 37 C.F.R. § 41.40(a) covering examiner’s answers:
Any request to seek review of the primary examiner’s failure to
designate a rejection as a new ground of rejection in an
examiner’s answer must be by way of a petition to the Director
under § 1.181 of this title.
37 C.F.R. § 41.40(a).
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shall be argued under a separate subheading that identifies the claim(s) by
number.”). Therefore, we select claim 1 as the representative claim for the
OTDP rejection of claims 1 and 2. Except for our ultimate decision, we do
not address the merits of OTDP rejection of claim 2 further herein.3
OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
disagree with Appellant’s conclusions. Except as noted below, we adopt as
our own (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken and (2) the reasons set forth by the Examiner
in the Examiner’s Answer in response to Appellant’s Appeal Brief. We
concur with the conclusions reached by the Examiner as to the OTDP
rejection of claim 1.
A. FIRST ARGUMENT
Appellant raises the following claim construction argument in
contending that the Examiner erred in rejecting claim 1 based on OTDP.
Appellant argues the Specification of the patent under reexamination

3 Even if we were to consider Appellant’s sole claim 2 argument at page 9 of
the Appeal Brief, the argument misinterprets claim 2. Contrary to the
argument, claim 2 is not “explicitly limited to CMOS image sensors.”
Rather, claim 2 requires “said array of pixels includes an array of CMOS
pixels.” Emphasis added. Contrary to Appellant’s assertion that this is “an
issue not addressed by the Examiner’s Answer” (Reply Br. 6), the Examiner
correctly concludes that claim 2 “doesn’t say only CMOS pixels are
included.” Ans. 5. Claim 2 merely requires the array of pixels of claim 1
now include an array of CMOS pixels as part of array of claim 1. We
conclude that nothing in claim 2 requires that the array of claim 1 is now
limited to only CMOS pixels.
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expressly teaches away from (disparages) Tomoyasu’s charge coupled
device (CCD) image sensor. Appeal Br. 7–9; Reply Br. 2–6.
A.1. First Argument – Question of Law
Although Appellant and the Examiner (Final Act. 4) use the phrase
“teaches away” to describe the “disparagement” issue being argued, we do
not find the phrase to be a proper characterization of the “disparagement”
issue before us. A “teaches away” determination is a determination as to the
teaching of a prior art reference. “What a reference teaches is a question of
fact.” In re Beattie, 974 F.2d 1309, 1311 (Fed. Cir. 1992).
A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant.
The degree of teaching away will of course depend on the
particular facts; in general, a reference will teach away if it
suggests that the line of development flowing from the
reference’s disclosure is unlikely to be productive of the result
sought by the applicant.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
The “disparagement” issue argued by Appellant concerns claim
construction in light of Appellant’s Specification. For claim construction,
“when the . . . court reviews only evidence intrinsic to the patent (the patent
claims and specifications, along with the patent's prosecution history), the
judge’s determination will amount solely to a determination of law.” Teva
Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 320 (2015). “The ultimate
construction of a claim term is a legal conclusion.” UltimatePointer, L.L.C.
v. Nintendo Co., Ltd., 816 F.3d 816, 822 (Fed. Cir. 2016).
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To the extent that Appellant argues “teaching away” as a factual
finding, we treat it as arguing “disparagement” by Appellant’s Specification
as a legal conclusion as part of claim construction.
A.2. First Argument – Appellant’s Contentions
In arguing that the Specification of the patent under reexamination
disparages against selectively varying the integration period of a charge
coupled device (CCD) such as Tomoyasu’s image sensor, Appellant presents
the following contentions.
A.2.a. First Argument – Contention 1
Although the Examiner recognizes there is a distinction
between CCD image sensors and CMOS-CID image sensors, the
Examiner incorrectly states that the Specification does not teach
away from[4] using a CCD image sensors described in
Tomoyasu. Final Office Action at 3–4. This analysis, however,
is demonstrably false, as illustrated above, and legally wrong.
See UltimatePointer, L.L.C. v. Nintendo Co., 816 F.3d 816, 823
(Fed. Cir. 2016) (finding[5] that the scope of a limitation was
narrowed where the patent owner repeatedly disparaged and
criticized a feature in contrast to the claimed invention).
Appeal Br. 8 (additional emphasis added).
[T]he Specification explains that a CCD image sensor, like the
one used in Tomoyasu, cannot vary the integration period to
produce an image of a desired brightness because a CCD image
sensor uses a fundamentally different (i.e., destructive) readout
mechanism compared to CMOS-CID image sensors. ’740 Patent
at 5:44–54. . . .

4 For purposes of this appeal, we treat this “teach away from” as reading
“disparage.”
5 For purposes of this appeal, we treat this “finding” as reading
“concluding.”
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The ’740 Patent further describes how CCD image sensors
do not work for the claim charge integration period feature:
While the imager may be used within an endoscopic
instrument, it is also contemplated that the image
sensor may be incorporated within a microscope, or
another imaging device which is used to view cell
cultures and the like. Most commonly available
fluorescence microscopes include CCD type
imagers which are not capable of the variable
charge integration. CCD imagers are charge
storage and transfer devices wherein the detector
signal produced is representative of the total light
impinging or falling upon the pixel array during a
preset exposure time. Because of the construction
of CCD devices, these exposure times cannot be
manipulated for charge integration because CCD
imagers have destructive readout. In other words,
each charge is read by transferring the collected
charge in each pixel in a serial fashion to a readout
amplifier.
’740 Patent at 5:35–49 (emphasis added).
Appeal Br. 7–8 (additional emphasis added).
The Examiner’s Answer also relies on the hybrid
CMOS/CCD image sensor in the “Background Art” section of
the ’740 Patent specification to support the position that Claim 1
covers a CCD image sensor. Examiner’s Answer at 5. Here
again, this argument misses the mark. The hybrid CMOS/CCD
image sensor described in the ’740 Patent is part of a common
specification in a family of patents owned by Patent Owner and
is directed towards another aspect of Patent Owner’s invention
which is not claimed by the ’740 Patent.
Reply Br. 5.
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A.2.b. First Argument – Contention 2
In response to rejection based on Tomoyasu, Patent Owner
contrasted this operation of a CCD sensor with the operation of
a CMOS or CID sensor. Response to Office Action at 6–7;
Response after Final Office at 2–6 (“In contrast to CCD image
sensors which have a set predetermined integration period (i.e.,
it cannot be varied once readout), CMOS-CID image sensors
permit real time monitoring (continual readout) of the image
during the charge integration time period, allowing the charge
integration period to continue to collect photons, thus varying the
integration period to produce an image with a desired
brightness.” (citing ’740 Patent at 5:35–49)).
Appeal Br. 8 (additional emphasis added).
Tomoyasu’s CCD imager has a destructive readout which is
incapable of real time readout. However, the claims require that
the desired brightness be obtained within “an image” and thus
require real-time readout possible with a CMOS or CID image
sensor, and not adjustment over a series of separate images that
would be required using a CCD image sensor.
Reply Br. 2 (emphasis added).
[T]he Examiner’s Answer seeks to ignore the claim language and
the express description in the specification by arguing that “the
claims do not recite ‘real time monitoring (or continual
readout) of the image during the charge integration time.[’]”
That argument misses the mark as that “real-time monitoring” or
“continual readout” feature is precisely how a POSITA
understands the image sensor and time select switch terms in
claims 1 and 2.
Reply Br. 4 (emphasis added).
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A.3. First Argument – Panel’s Analysis
We are unpersuaded by Appellant’s argument.
A.3.a. First Argument – Contention 1 – Panel’s Analysis
As to Appellant’s contention that the Specification disparages and
criticizes charge couples device (CCD) image sensors to the point that
claim 1 must be read as limited to complementary metal oxide
semiconductors-charge injection device (CMOS-CID) image sensors, we
disagree. Appellant correctly cites UltimatePointer, 816 F.3d 816 as a
leading case for claim construction based on disparagement. Appeal Br. 8.
However, as an initial matter, Appellant’s argument fails because it has not
even identified which specific claim limitation should be limited to exclude
a CCD.
More importantly, we do not find the patent in the instant appeal to
contain the “repeated derogatory statements” (id., 816 F.3d at 822 (citation
omitted)) underpinning the claim construction in UltimatePointer. For
example, the Federal Circuit emphasized the repeated derogatory statements
in UltimatePointer as follows:
We agree with Nintendo that the district court did not err in
construing “handheld device” as “handheld direct pointing
device.” The specification repeatedly emphasizes that the
invention is directed to a direct-pointing system. The title of the
invention explicitly states that the invention is an “Easily–
Deployable Interactive Direct Pointing System . . .” (emphasis
added). See Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64
F.3d 1553, 1557 (Fed. Cir. 1995) (using patent title to inform
claim construction). The specification also repeatedly
emphasizes that the system is for interacting with a presentation
in a “direct-pointing” manner, ’729 patent, col. 14 ll. 25–28, 33–
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36, 46–49; col. 15 ll. 3–6; col. 20 ll. 32–35, and even describes
the handheld device as a “direct-pointing device,” id. col. 24 ll.
45–46, 51–53; col. 31 ll. 21–24.
The written description also emphasizes how direct pointing is
superior to indirect pointing. In the “Background of the
Invention,” the patentee notes that “pointing devices may be
classified” as either direct or indirect-pointing devices, id. col. 1
ll. 58–60, and that “[i]t needs no argument that direct-pointing
systems are more natural to humans, allowing faster and more
accurate pointing actions,” id. col. 2 ll. 1–3.
The written description further disparages indirect pointing.
For example, indirect pointing is criticized as “less natural” than
direct pointing, id. col. 2 ll. 35–36, and as not providing “the
speed and intuitiveness afforded by direct-pointing systems,” id.
col. 2 ll. 41–43. Even a prior art hybrid system, using both direct
and indirect pointing, is criticized as not “afford[ing] the fast and
more accurate interactive pointing actions provided by some
other direct-pointing systems,” id. col. 4 ll. 52–54, and another
hybrid system is criticized for not providing “the desired
flexibility afforded by truly direct-pointing methods,” id. col. 5
ll. 1–3. Although the ′729 patent does include one embodiment
where the handheld device “may include a conventional, indirect
pointing device,” indirect pointing is only used “where direct
pointing is not possible or not desired,” id. col. 30 ll. 23–26, thus
even further disparaging indirect pointing.
Taken together, the repeated description of the invention as a
direct-pointing system, the repeated extolling of the virtues of
direct pointing, and the repeated criticism of indirect pointing
clearly point to the conclusion that the “handheld device” in
claims 1, 3, 5, 6, and 12 is limited to a direct-pointing device.
UltimatePointer, 816 F.3d at 823 (emphasis added). Based on the repeated
derogatory statements, the court concluded that “the ordinary meaning of
‘handheld device,’ when read in the specific context of the specification of
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the ’729 patent, is limited to a direct-pointing device.” UltimatePointer, 816
F.3d at 824.
Appellant contends varying the integration periods in claim 1 must be
read as limited to CMOS-CID image sensors. However, our review of the
patent in the instant appeal finds that the title of the invention explicitly
states “utilizing selected charge integration periods,” but it is silent as to any
particular type of image sensor. Also, we find that the Abstract similarly
states an “imaging device is provided which utilizes selected charge
integration periods” (i.e., the invention requires selected charge integration
periods). The Abstract mentions, but does not similarly require, a CMOS-
CID device (“[t]he imaging device can be defined as a CMOS-CID device”)
(emphasis added).
Further, the Specification repeatedly discusses the importance of
utilizing selected charge integration periods without tying the selected
charge integration periods to a CMOS-CID device. At column 4, line 65,
through column 5, line 27, the Specification introduces four embodiments,
none of which include either (a) selected charge integration periods or
(b) a CMOS-CID device. Then, without mentioning a CMOS-CID device,
the Specification adds four more embodiments by stating:
For each of the embodiments, selected charge integration
periods may be used to enhance the image to a desired brightness
or intensity. Particularly in the field of medical fluorescence
detection, the ability to adjust charge integration periods greatly
enhances the ability to observe fluorescence from a group of cells
which might otherwise be unobservable with normal or preset
integration periods.
Spec. column 5, lines 28–34 (emphasis added).
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In addition to use of the imaging device in endoscopy, it is
also contemplated that the imaging device of the invention can
be incorporated within a microscope which may be used to
analyze cell cultures and the like. Although size is not as much
of a concern with use of the imaging device within a microscope,
there are still great advantages to be obtained by providing the
imaging device with selected charge integration periods to
intensify the brightness of an image in fluorescence detection of
cell culture media which has no observable fluorescence as
observed under standard integration periods.
Spec. column 7, lines 20–30 (emphasis added).
The Specification at column 5, lines 35–49, discusses the limitations
of certain CCD imagers in a certain context. However, contrary to
Appellant’s contention quoting this portion of the Specification (Appeal Br.
7–8), this portion is not a disparagement of all CCD imagers in all contexts.
Particularly, the Specification states that “[m]ost commonly available
fluorescence microscopes include CCD type imagers which are not capable
of the variable charge integration.” Claim 1 is not limited to such
fluorescence microscopes, but rather is directed more broadly to “[a]
reduced area imaging device.”
Also, we find Appellant’s reading of column 5, lines 41–47 of the
Specification to be strained. That portion of the Specification states:
CCD imagers are charge storage and transfer devices wherein the
detector signal produced is representative of the total light
impinging or falling upon the pixel array during a preset
exposure time. Because of the construction of CCD devices,
these exposure times cannot be manipulated for charge
integration because CCD imagers have destructive readout.
Spec. column 5, lines 41–47 (emphasis added). While Appellant focuses on
the second sentence above and reads this as saying any CCD imager having
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destructive readout (the typical construction) cannot include variable charge
integration periods, we read the two sentences together as saying any CCD
imager having a construction including a preset exposure time and having
destructive readout cannot include variable charge integration periods.
Contrary to Appellant’s argument, it is not “destructive readout” that
precludes variable charge integration periods, but rather having a preset
exposure time which triggers that destructive readout. The Specification at
this portion only disparages CCD imagers having such a preset exposure
time and only in the context of fluorescence microscopes. At most, the
Specification overgeneralizes about “CCD imagers,” but the point remains
that what the actual claim language requires is “selectively varying
integration periods,” which on its face excludes a preset or fixed period but
does not necessarily exclude a CCD imager capable of selectively varying
integration periods. Therefore, we do not find here the level of
disparagement argued by Appellant.
Also, the Specification at column 13, lines 30–35, states:
[I]t will be clearly understood that the invention claimed herein
is not specifically limited to an image sensor as disclosed in the
U.S. Pat. No. 5,471,515, but encompasses any image sensor
which may be configured for use in conjunction with the other
processing circuitry which makes up the imaging device of this
invention.
Spec. column 13, lines 30–35 (emphasis added). Contrary to Appellant’s
assertion that this is merely background art (Reply Br. 5), we conclude that it
speaks to using the invention of “selectively varying integration periods”
with “any image sensor.”
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Finally, the discussions at column 6 and of Figures 9 and 10, at
column 18, line 49, through column 20, line 20 of the Specification, do
connect the use of variable charge integration and a CMOS-CID imager
in a single device. However, Appellant’s argument does not point to
disparagement in these sections of the Specification, and we do not find
therein the disparagement required by UltimatePointer.
A.3.b. First Argument – Contention 2 – Panel’s Analysis
Appellant contends that “[i]n contrast to CCD image sensors which
have a set predetermined integration period (i.e., it cannot be varied once
readout), CMOS-CID image sensors permit real time monitoring (continual
readout) of the image during the charge integration time period.” Id.
(emphasis added). We do not find Appellant’s contention “contrast[ing]
operation of a CCD sensor with the operation of a CMOS or CID sensor”
(Appeal Br. 8), to be relevant to the rejection before us.
First, Appellant’s contention is not commensurate with the scope of
the claim language. Appellant’s contention focuses on (a) integration
variability “once readout” has occurred (i.e., readout occurs prior to varying
the integration period) and (b) real time monitoring (continual readout).
However, claim 1 recites “selectively varying integration periods to produce
an image of a desired brightness” which places no such restrictions on the
invention. The Examiner correctly points out that “the claims do not recite
‘real time monitoring (or continual readout) of the image during the charge
integration time.[’]” Ans. 4–5. Nor do we find claim 1 requires real time
monitoring or continual readout during any time period. Further, we find
nothing in claim 1 that requires the sensor be varied once readout occurs,
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that is, nothing in claim 1 precludes varying the integration period prior to
the readout.
Second, Appellant’s contention overlooks that not all CCD image
sensors have a set predetermined integration period, as evidenced by
Tomoyasu showing it was known in the art to have a CCD image sensor
with an integration period which can be varied before readout.
[T]he greater the integration controlling voltage, the longer the
exposure time, increasing the image integrating function as the
integrating means. Note that when the integration controlling
voltage is zero, then there will be a constant image exposure
time.
Tomoyusa ¶ 23.
B. SECOND ARGUMENT
Also, Appellant raises the following claim construction and
procedural arguments in contending that the Examiner erred in rejecting
claim 1 based on OTDP.
B.1. Second Argument – Appellant’s Contentions
Appellant contends (a) the “time select switch” is not governed
by a means plus function interpretation and (b) the Examiner’s “reliance
on that false premise is a fundamental error that warrants reversal and
reinstatement of the previously granted allowance of claim[] 1.” Appeal
Br. 9–10. Appellant further contends:
The Examiner . . . suggested that Patent Owner provided
an inconsistent position (which it did not) between the related
IPR and this reexamination. Second Advisory Action at 2–3.
However, the Examiner embraced a mistaken understanding of
Patent Owner’s position - assuming thought Patent Owner’s
argument was premised on the fact that the time select switch of
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claim 1 was construed as a means plus function. Id.; First
Advisory Action at 6–7. In fact, Patent Owner did not take that
position and has not changed its position and is consistent with
the related IPR––IPR 2020-00474.
Appeal Br. 9.
B.2. Second Argument – Panel’s Analysis
We are unpersuaded by Appellant’s arguments. First, the Board lacks
authority to order the requested “reinstatement of the previously granted
allowance of claim[] 1.” Such authority rests with the Director by way of
petition.
The Director shall cause an examination to be made of the
application and the alleged new invention; and if on such
examination it appears that the applicant is entitled to a patent
under the law, the Director shall issue a patent therefor.
35 U.S.C. § 131.
Second, the rejection before us is not premised on the “time select
switch” being governed by a means plus function interpretation. While the
First Advisory Action was so premised, in the Second Advisory Action “the
Examiner withdraws his previous comments regarding the requirement of
circuitry 318 since it creates inconsistencies among the proceedings”
(Second Advisory Action 3), and returns to the claim interpretation of the
Final Action which does not treat the “time select switch” as being governed
by a means plus function interpretation.
[S]ince the Patent Owner did not assert that the claimed “time
select switch” must be constructed under 112 6th paragraph . . . ,
then the Examiner maintains the same position set forth in the
Final Rejection in that the claim term does not require any
additional structure and therefore does not require circuitry 318
since it is not a claimed element. For this reason, the double
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patenting rejection of Tomoyasu remains since the Examiner,
upon reconsideration, maintains that circuitry 318 is not required
for the claimed time select switch.
Therefore, the rejection of claims 1 and 2 will remain for
the reasons set forth in the Final Rejection.
Second Advisory Action 3.
Third, we agree with the Examiner that:
Patent Owner’s current construction of the claim term “time
select switch” is inconsistent with [Appellant’s proposed]
construction in IPR2020-00474 since [Appellant’s proposed]
construction in the IPR did not include “circuitry 318”.
Second Advisory Action 3. Contrary to Appellant’s contention, the
Examiner does not premise his determination of inconsistent construction on
a means plus function interpretation of the “time select switch,” but rather on
failure of Appellant’s proposed IPR construction of the “time select switch”
to include circuitry 318.
C. THIRD ARGUMENT
Further, Appellant raises the following prior art teaching argument in
contending that the Examiner erred in rejecting claim 1 based on OTDP.
Appellant argues Tomoyasu does not disclose the claimed features. Appeal
Br. 10–13; Reply Br. 2, 6–10.
C.1. Third Argument – Appellant’s Contentions
In arguing that Tomoyasu does not disclose the claimed features,
Appellant presents the following contentions.
C.1.a. Third Argument – Contention 1
[A]s Patent Owner has noted, Tomoyasu uses automatic gain
control (AGC) circuitry and never allows a user to vary the
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actual integration period to produce an image of a desired
brightness, independent of the AGC circuit––the gain control
knob for adjusting integration merely gains priority over AGC.
Response to Office Action at 6; Response after Final Office
Action at 6-7; Tomoyasu at [0018], [0040].
Appeal Br. 10 (additional emphasis added).
C.1.b. Third Argument – Contention 2
The time select switch in Tomoyasu is not remote from the first
circuit board as required by the claims because the functionality
to adjust the integration period is on the first circuit board with
the image processing circuit (rather than a remote switch), as
shown in Figure 3 of Tomoyasu.
Appeal Br. 10 (additional emphasis added).
The Examiner’s assertion that the claims do not require a time
select switch with the remote functionality in circuit 318 is
contrary to the Specification and recited claim limitations which
require the switch to selectively vary the integration period. See,
e.g., Claim 1 (“said switch having a plurality of settings enabling
selective control to produce the image of a desired brightness”).
Further, the Specification of the ’740 Patent explains that the
time select switch . . . cannot work without the readout clock
select circuitry 318 which is must be [sic] remote from the first
circuit board:
FIG. 10 is a schematic diagram of an imager and its
processing circuitry which incorporate variable
charge integration capability. Imager 40 is coupled
to its video processing circuitry 50. Power supply
52 supplies power to the 40 imaging device and the
additional circuitry to achieve charge integration.
In order to incorporate variable charge integration
capability, imager readout clock select circuitry
318 is added which communicates with one or
more of the video processor boards 50. An imager
integration time select . . . switch 320 is provided
enabling an operator to manually select the
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desired integration period. As shown, the
integration periods may be periods of less than one
second, or more than one second.
’740 Patent at [19:]37–49 (emphasis added).
Figure 10, further confirms that circuitry 318 is remote
from the first circuit board. . . . Therefore, the time select switch
includes the functional element, circuity (318), and is remote
from the first circuit board to vary the integration period.
Appeal Br. 11–12 (additional emphasis added).
[T]he time select switch element in claim[] 1 . . . recites
that this element is “remote from the first circuit board.” The
Examiner’s Answer, however, fails to demonstrate that the
circuitry or components in Tomoyasu that encompass the time
select switch element are remote from the first circuit board.
Rather, the Tomoyasu “time select switch” components
identified in the Examiner’s Answer are directly on the first
circuit board.
Reply Br. 2 (emphasis added).
Claim[] 1 . . . . of the ’740 Patent require that the time
select switch for selectively varying integration periods be
remote from the first circuit board. Tomoyasu fails to meet this
limitation because the control knob in Tomoyasu is just that, a
knob with no supporting circuitry for varying the integration
periods and thus not a remote “time select switch.” More
particularly, as a matter of claim construction, a “time select
switch” is not a simple “switch.” The “time select switch” must
include the functionality to vary the integration period and must
be remote from the first circuit board. The Examiner’s Answer
rejection of claims 1 and 2, however, is premised on a flawed
construction that a “time select switch” is synonymous with any
kind of “switch” and does not require the functionality for
varying the integration periods to be remote. Examiner’s
Answer at 7–10. This is wrong and under the proper
construction, Tomoyasu does not disclose the claimed remote
“time select switch.”
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Reply Br. 6–7 (additional emphasis added).
It is undisputed that the Automatic Gain Control (AGC)
circuit 27, Exposure Time Control circuit 30 and Integration
Control circuit 31 (collectively referred to as “integration time
select circuits”) in Tomoyasu, which performs the actual
function “varying” the integration period, is not remote from the
first circuit board 20, but in fact is located on the first circuit
board with the image processing circuitry 26, as shown in Figure
3 of Tomoyasu[.] . . . Thus, control knob 23, including the
integration time select circuits, are not remote from the first
circuit board in Tomoyasu.
Reply Br. 7 (emphasis added).
Based on the specification (and claims), the proper
construction for a remote “time select switch” requires the
functionality for varying integration periods be remote.
Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005)
(“The construction that stays true to the claim language and most
naturally aligns with the patent’s description of the invention will
be, in the end, the correct construction.”). Under the correct
construction, Tomoyasu does not disclose a remote “time select
switch” because AGC 26, Time Exposure Control circuit 30
and Integration Control circuit 31 are all on the same circuit
board 20 and are not remote from circuit board 20.
Reply Br. 9 (emphasis added).
C.2. Third Argument – Panel’s Analysis
We are unpersuaded by Appellant’s argument.
C.2.a. Third Argument – Contention 1 – Panel’s Analysis
Appellant contends that the Examiner errs because Tomoyasu uses
automatic gain control (AGC) circuitry and never allows a user to vary the
actual integration period independent of the AGC circuit. We disagree.
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First, Appellant’s contention is not commensurate with the scope of
the claim language. Claim 1 does not preclude use of an AGC circuit to
vary the actual integration period.
Second, even if claim 1 were construed to require varying the actual
integration period independent of the AGC circuit, such would have been
obvious in light of Tomoyasu teaching it was known for a still image to
“extend[] the integration time of the image sensor” with “little negative
effect on the S/N of the image.” Tomoyasu ¶¶ 3–5.
C.2.b. Third Argument – Contention 2 – Panel’s Analysis
C.2.b.i.
Appellant asserts that Tomoyasu does not disclose the claimed “a
remote time select switch” because Tomoyasu’s Exposure Time Control
circuit 30 and Integration Control circuit 31 perform the actual function of
“varying” the integration period, and thus, the functionality to adjust the
integration period is on the Tomoyasu’s first circuit board (Appeal Br. 10;
Reply Br. 7 and 9). We disagree with Appellant’s assertion.
We do not construe claim 1 to require integration control circuitry as
part of the claimed time select switch. Indeed, claim 1 does not even recite
“integration control circuitry.” Appellant is conflating the claimed function
of “selectively varying integration periods” with the function of performing
the actual integration (control circuitry) based on selectively varying the
integration period. Claim 1 requires the first function, but not anything that
performs the second.
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C.2.b.ii.
As to Appellant’s assertion that claim 1 must be read as the time
select switch including circuitry 318 (Appeal Br. 11–12; Reply Br. 7 and 9),
we disagree.
First, the Specification states “[a]n imager integration time select
switch 320 is provided enabling an operator to manually select the desired
integration period.” Spec. 19:45–47 (emphasis added). That is, the function
of “select[ing] the desired integration period” is the sole function recited for
time select switch 320 at column 19. Reviewing Figure 10, we also find an
electrical communication line shown from near the center of time select
switch 320 to a first circuit board (via circuitry 318). We find disclosure of
two functions (selecting and electrically communicating) disclosed as
performed by time select switch 320.
Second, the description of circuitry 318 states “imager readout clock
select circuitry 318 is added which communicates with one or more of the
video processor boards 50.” Spec. 19:43–45 (emphasis added). We find the
sole function performed by circuitry 318 is communicating. Claim 1
requires time select switch functions of “electrically communicating” and
“selectively varying integration period” which the disclosure shows time
select switch 320 as performing. We do not find circuitry 318 to be required
by claim 1. As Appellant was not required to claim circuitry 318, we will
not read it into claim 1. Even if we were to agree with Appellant that claim
1 must be read such that the time select switch includes circuitry 318, given
the limited disclosed function of circuitry 318, nothing more would be
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required than basic communication signal conditioning circuitry well-known
to an artisan.
C.2.b.iii.
As to Appellant’s assertion that (a) Tomoyasu’s “time select switch”
components are directly on Tomoyasu’s first circuit board (not remote) and
(b) Tomoyasu has only a knob with no supporting circuitry for varying the
integration periods (Reply Br. 2 and 6–7), we disagree.
Although Appellant repeatedly references Figure 3 of Tomoyasu
(Appeal Br. 10; Reply Br. 7), Appellant overlooks that:
(i) Figure 3 of Tomoyasu, in addition to knob 23, shows
supporting circuitry for varying the integration periods at
item 25 (“sensitivity adjusting means” para. 17),
(ii) Figure 1 of Tomoyasu shows the supporting circuitry at item 25
is attached to the knob 23, and
(iii) Figure 2 of Tomoyasu shows the knob 23 (and therefore the
supporting circuitry) is attached “on the front panel 13” (para.
16) and thus the knob and supporting circuitry are remote from
Tomoyasu’s signal processing circuit 20 (Figure 3).
D. FOURTH ARGUMENT
Furthermore, Appellant raises the following legal argument in
contending that the Examiner erred in rejecting claim 1 based on OTDP.
Appeal Br. 13–14.
D.1. Fourth Argument – Appellant’s Contention
Patent Owner reiterates its . . . position that the record is
completely devoid of any “unjustified or improper timewise
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extension.” Furthermore, the First Advisory Action and Final
Office Action fail to identify any acts by Patent Owner to support
such an allegation since obviousness-type double patenting is a
judicial doctrine based on the principle of preventing unfair
extensions of patent term, which is not at issue here.
. . .
Obviousness-type double patenting is a judicially created
doctrine that is equitable in nature and requires some form of
gamesmanship by the Patent Owner to unjustifiably or
improperly extend the term of the patent. Patent Owner
respectfully submits that the record is completely devoid of any
“unjustified or improper timewise extension,” and the First
Advisory Action and Final Office Action fail to identify any acts
by Patent Owner to support such an allegation.
. . .
Moreover, an obviousness-type double patenting rejection was
never intended to invalidate a patent-only to ensure there would
be no “unjustified or improper” extension of term, which is not
present here. . . .
As such, an equitable doctrine should not be applied in a
manner that would be inequitable akin to sandbagging and
depriving Patent Owner of its property rights due solely to
anomalies by the PTO.
Appeal Br. 13–14 (additional emphasis added).
D.2. Fourth Argument – Panel’s Analysis
We are unpersuaded by Appellant’s arguments. First, Appellant does
not support the assertions with any case law showing that more is required
than what the Examiner has already shown. That is, Appellant has not
shown that demonstrating “gamesmanship” or “acts by Patent Owner” is a
requirement on the Examiner to show obviousness-type double patenting.
Based on the Examiner’s rejection (Final Act. 11–14) and our analysis
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supra, we agree with the Examiner that “double patenting is proper under
reexamination and cannot be avoided since the claims are not patentably
distinct from those in the earlier [Adair ’839] Patent and Tomoyasu.”
Ans. 13.
Second, Appellant does not address that double patenting also applies
to prevent harassment by multiple assignees. One goal of double patenting
and terminal disclaimers is to preemptively prevent the risk of such
harassment:
Even though both patents are issued to the same patentee or
assignee, it (is) possible that ownership of the two will be divided
by later transfers and assignments. The possibility of multiple
suits against an infringer by assignees of related patents has long
been recognized as one of the concerns behind the doctrine of
double patenting.
In re Van Ornum, 686 F.2d 937, 944 (CCPA 1982) (quoting Chisum on
Patents § 9.04(2)(b) (1981)).
Third, Appellant does not address preserving the public’s right to
make what is covered by the earlier patent after it expired:
The bar against double patenting was created to preserve that
bargained-for right held by the public. See, e.g., Miller v. Eagle
Mfg. Co., 151 U.S. 186, 197–98, 202 (1894) . . . Odiorne v.
Amesbury Nail Factory, 18 F.Cas. 578, 579 (C.C.D.Mass.1819).
If an inventor could obtain several sequential patents on the same
invention, he could retain for himself the exclusive right to
exclude or control the public’s right to use the patented invention
far beyond the term awarded to him under the patent laws. As
Justice Story explained in 1819, “[i]t cannot be” that a patentee
can obtain two patents in sequence “substantially for the same
invention[] and improvements”; “it would completely destroy
the whole consideration derived by the public for the grant of the
patent, viz. the right to use the invention at the expiration of the
term.” Odiorne, 18 F.Cas. at 579. Thus, the doctrine of double
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patenting was primarily designed to prevent such harm by
limiting a patentee to one patent term per invention or
improvement.
Gilead Scis., Inc. v. Natco Pharma Ltd., 753 F.3d 1208, 1212 (Fed. Cir.
2014) (parallel citations omitted).
Fourth, the Federal Circuit has explained that the inequity is
Appellant’s enjoyment of a second patent’s term beyond the expiration of
the first patent:
When the claims of a patent are obvious in light of the claims of
an earlier commonly owned patent, the patentee can have no
right to exclude others from practicing the invention
encompassed by the later patent after the date of the expiration
of the earlier patent. But when a patentee does not terminally
disclaim the later patent before the expiration of the earlier
related patent, the later patent purports to remain in force even
after the date on which the patentee no longer has any right to
exclude others from practicing the claimed subject matter. By
permitting the later patent to remain in force beyond the date of
the earlier patent’s expiration, the patentee wrongly purports to
inform the public that it is precluded from making, using, selling,
offering for sale, or importing the claimed invention during a
period after the expiration of the earlier patent.
By failing to terminally disclaim a later patent prior to the
expiration of an earlier related patent, a patentee enjoys an
unjustified advantage—a purported time extension of the right to
exclude from the date of the expiration of the earlier patent. The
patentee cannot undo this unjustified timewise extension by
retroactively disclaiming the term of the later patent because it
has already enjoyed rights that it seeks to disclaim.
Boehringer Ingelheim Int’l GmbH v. Barr Labs., Inc., 592 F.3d 1340, 1347–
48 (Fed. Cir. 2010) (citations omitted); see also In re Lonardo, 119 F.3d
960, 965 (Fed. Cir. 1997).
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CONCLUSIONS
The Examiner has not erred in rejecting claims 1 and 2 as being
unpatentable on the ground of nonstatutory (obviousness type) double
patenting.
The Examiner’s rejection of claims 1 and 2 as being unpatentable on
the ground of nonstatutory (obviousness type) double patenting is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2 Nonstatutory
(obviousness type)
double patenting

Adair ’839, Tomoyasu
1, 2
Overall
Outcome

1, 2

REQUESTS FOR EXTENSIONS OF TIME
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED
cc Third Party Requester:

ROPES & GRAY LLP
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