Ex Parte 5827178 et al

Patent Trial and Appeal Board

Feb 24, 2016

90011308 (P.T.A.B. Feb. 24, 2016)

MOD PTOL-90A (Rev.06/08)

APPLICATION NO./
CONTROL NO.
FILING DATE FIRST NAMED INVENTOR /
PATENT IN REEXAMINATION
ATTORNEY DOCKET NO.

EXAMINER
ART UNIT PAPER NUMBER
DELIVERY MODE

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.

UNITED STATES DEPARTMENT OF COMMERCE
U.S. Patent and Trademark Office
Address : COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________________________________________________________________________________

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte JONATHAN BERALL
Appellant, Patent Owner
________________

Appeal 2015-005093
Ex parte Reexamination Controls 90/011,308,
90/011,383 and 90/012,340
Patent US 5,827,1781
Technology Center 3900
________________

Before STEVEN D.A. McCARTHY, DANIEL S. SONG and
MICHAEL L. HOELTER, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

1 Issued October 27, 1998 to Jonathan Berall (the “’178 patent”). Dr.
Berall is the owner of the ’178 patent and the real party in interest in this
proceeding. The ’178 patent issued from Appl. 09/778,079, filed January 2,
1997. The Requesters, believed to be Verathon Medical (Canada) ULC and
Hoya Corporation, inform us that the ’178 patent is the subject of ongoing
litigation, namely, Berall v. Verathon Inc., Pentax of America, Inc., Aircraft
Medical, Ltd., LMA North America, Inc. and AirTraq LLC, Case No. 1:10-
cv-05777-BSJ (SDNY) (filed July 30, 2010). (“Ex Parte Reexamination
Request for U.S. Patent No. 5,827,178,” dated October 29, 2010).

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Patent No. 5,827,178

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STATEMENT OF THE CASE 1
The Appellant/Patent Owner, Jonathan Berall, appeals under 35 2
U.S.C. § 134(b) and 35 U.S.C. § 306 from the Examiner’s decision in these 3
merged reexamination proceedings rejecting claims 1–16.2 Claims 1, 15 and 4
16 are independent. (See generally ’178 patent, col. 6, l. 6 – col. 8, l. 17). 5
The Patent Owner directs his arguments primarily to the rejection of claim 1 6
(see “Response to USPTO/Central Reexamination Office Action dated 30 7
July, 2013,” itself dated March 4, 2014 (“Appeal Brief” or “App. Br.”), at 8
19;3 see generally Appeal Brief; Untitled Document, referred to elsewhere as 9

2 Reexaminations 90/011,308 and 90/011,383 were merged in a
“Decision Merging Reexamination Proceedings,” mailed March 23, 2011.
In response to office actions mailed by the Examiner in the two merged
reexamination proceedings during the period between April 25, 2011 and
January 23, 2013, the Patent Owner cancelled claim 12; amended the
language of each of the remaining original claims except claim 2; and added
new claims 17–35.
In a “Decision Merging Reexamination Proceedings,” mailed January
23, 2013, Reexamination 90/012,340 was merged with Reexaminations
90/011,308 and 90/011,383. On May 10, 2013, the Examiner mailed an
office action rejecting then-pending claims 1–11 and 13–35. The Patent
Owner, in turn, filed a “Response to USPTO/Central Reexamination Unit
Office Action dated 10 May, 2013,” itself dated July 30, 2013. This paper
revoked all of the previously-entered amendments to claims 1–11 and 13–
16; resurrected claim 12; and cancelled new claims 17–35. After the
Examiner mailed the Final Office Action on September 25, 2013, the Patent
Owner appealed to the Board.
3 The Appeal Brief is not paginated. Page numbers appearing in this
opinion correspond to the order of the pages in the record of the merged
proceedings.
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Patent No. 5,827,178

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an Applicant’s Interview Summary, dated March 10, 2015;4 see also Ans. 1
10): 2
1. A laryngoscope comprising: 3
a handle and a blade, with the blade having a distal end 4
projecting laterally therefrom; 5
camera means mounted on the blade in the vicinity of the 6
distal end for observing a visual field; and 7
display means operatively connected to said camera 8
means for displaying the visual field at a preselected location. 9
(’178 patent, col. 6, ll. 6–14). 10
The Patent Owner, who has acted pro se both before the Examiner 11
and during this appeal, presented oral arguments to the Board by telephone 12
on November 17, 2015. A transcript of the hearing was entered into the 13
record on January 4, 2016. We have jurisdiction under 35 U.S.C. § 134(b) 14
and 35 U.S.C. § 306. 15
We AFFIRM the Examiner’s decision rejecting claims 1–4, 8–10 and 16
15 of the ’178 patent under pre-AIA 35 U.S.C. § 103(a) as being 17
unpatentable over Bullard ’787 (US 5,381,787, issued Jan. 17, 1995) and 18
George (US 5,363,838 B1, issued Nov. 15, 1994) (see “Examiner’s 19
Answer,” mailed January 15, 2015 (“Answer” or “Ans.”) at 2–4; “Office 20
Action in Ex Parte Reexamination,” mailed September 25, 2013 (“Final 21
Office Action” or “Final Off. Act.”), at 4–6); and rejecting claims 5–7, 11–22
14 and 16 of the ’178 patent under § 103(a) as being unpatentable over 23

4 The Applicant’s Interview Summary has been treated as the Patent
Owner’s Reply Brief for purposes of this appeal.
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Patent No. 5,827,178

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Bullard ’787, George and Shinichi (JP S60-90320 A, publ. May 21, 1985)5 1
(see Ans. 4–10; Final Off. Act. 6–12). Because our reasons for affirming the 2
rejections of claims 1–15 differ substantially from the Examiner’s reasons 3
for rejecting those claims, we designate our affirmance of claims 1–15 as 4
NEW GROUNDS OF REJECTION pursuant to our authority under 37 5
C.F.R. § 41.50(b). 6
7
ISSUES 8
Three issues are dispositive of this appeal: 9
First, in assessing claim 1, did the Examiner fail to give sufficient 10
deference to the decision of the examiners in the original examination to 11
allow the claims of the ’178 patent; sufficient weight to the failure of the 12
named inventors of Bullard ’787 and George, as well as other intubation 13
professionals, to publish the subject matter of appealed claim 1 before the 14
Patent Owner applied for his patent; and sufficient weight to the failure of 15
past challengers to the patentability of claim 1 to assert that claim 1 is 16
unpatentable over the combined teachings of Bullard ’787 and George? 17
(See, e.g., App. Br. 27–30). 18
Second, did the Examiner fail to articulate a sufficient reason why one 19
of ordinary skill in the art might have combined the teachings of Bullard 20
’787 and George in the fashion claimed in claims 1–4, 8–10 and 15; or to 21
have combined the teachings of Bullard ’787, George and Shinichi in the 22

5 “Shinichi,” as used in this opinion, will refer to the English-language
translation of record in the reexamination proceeding.
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Patent No. 5,827,178

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fashion claimed in claims 5–7 and 11–14? (See, e.g., App. Br. 30–31, 184 1
and 186–89). 2
Third, did the Examiner fail to articulate a sufficient reason why one 3
of ordinary skill in the art might have combined the teachings of Bullard 4
’787 and George in the fashion claimed in claims 1–4, 8–10 and 15; or to 5
have combined the teachings of Bullard ’787, George and Shinichi in the 6
fashion claimed in claim 16? (See, e.g., App. Br. 30–31, 184 and 186–89). 7
8
FINDINGS OF FACT 9
The record supports the following findings of fact (“FF”) by a 10
preponderance of the evidence. 11
1. The Patent Owner explains that: 12
A laryngoscope is an L-shaped hand medical instrument 13
consisting of a handle and a dull blade. In emergencies or in 14
general anesthesia surgery, when a person is not able to breathe 15
on his or her own, a breathing tube is inserted into the patient’s 16
trachea (airway) to supply Oxygen to the patient’s lungs and 17
then to the patient’s brain, heart and other organ/cell systems. 18
Placing the breathing tube into the airway is called ‘intubation’. 19
(“Declaration by Dr. Jonathan Berall, Patent Owner,” dated July 6, 2011 20
(“Berall Decl.”), para. 11). During an intubation procedure, a caregiver uses 21
the laryngoscope to move the patient’s tongue and other soft tissue to one 22
side to expose the patient’s trachea opening. (See ’179 patent, col. 1, ll. 44–23
49; see also Bullard ’919 (US 4,086,919, issued May 2, 1978) at col. 1, ll. 24
35–48). A caregiver will attempt to complete an intubation very quickly, 25
preferably within thirty seconds, in order to prevent an unsafe drop in the 26
patient’s blood oxygen level. (Berall Decl., paras. 12(b) and 15(a)). 27
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2. The Patent Owner states that a significant problem in 1
laryngoscope-assisted airway intubation is the ability to see and access the 2
airway opening in the deep pharynx. (Berall Decl., para. 14). 3
3. The Patent Owner concedes that fiber optic scopes designed to 4
assist the caregiver in visualizing the patient’s airway were known before the 5
Patent Owner applied for the ’178 patent. Two such instruments are 6
identified in column 1 of the ’178 patent. (See generally ’178 patent, col. 1, 7
ll. 12–41). 8
4. One of the instruments identified in column 1 of the ’178 patent 9
is described by George. George describes an intubation procedure which 10
makes use of a scope 1; an endotracheal tube 21; and a conventional 11
laryngoscope having a blade 31 and a handle 33. (See George, col. 5, ll. 25–12
35). The scope 1 includes a semi-malleable tube 3, a handle 5 and a 13
lightweight display unit 13. (See George, col. 4, ll. 49––65; see also id., Fig. 14
1). 15
5. George describes two embodiments of the scope 1. In one 16
embodiment, the scope 1 includes a small optical camera 6 carried in the 17
proximal end of the tube 3 and fiber optic bundles 8 optically coupling the 18
camera with the distal end of the tube. A wire or fiber optic cable 15 19
couples the camera 6 to the display unit 13 to permit the display unit to 20
display images captured by the camera 6. (See George, col. 4, ll. 13–17, 51–21
56 and 63–65; see also id., Figs. 1 and 2). 22
6. George describes another embodiment in which the scope 1 23
also includes an electronic camera positioned at the distal end 9 of the tube 24
3. (George, col. 4, ll. 56–57). The electronic camera, which is not shown in 25
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any of the drawing figures, communicates by way of the wire or fiber optic 1
cable 15 with the portable display unit 13. (George, col. 4, ll. 63–65). 2
7. As the previous two findings of fact imply, and as the Examiner 3
correctly finds (see Ans. 2), George teaches that an electronic camera 4
mounted at the distal end of the tube 3 is interchangeable with the 5
combination of an optical camera 6 mounted near the proximal end of the 6
tube and fiber optic bundles 8 coupled to the optical camera 6 to capture 7
light near the distal end of the tube 3 and conduct the light to the optical 8
camera. 9
8. George describes an intubation procedure in which the 10
endotracheal tube 21 is slid over the semi-malleable tube 3 of the scope 1. 11
Preferably, the distal end 9 of the tube 3 just barely protrudes from the distal 12
end of the endotracheal tube 21. (George, col. 5, ll. 16–20). The portable 13
display unit 13 is positioned on a boom or in an assistant’s hand near the 14
line-of-sight of the caregiver so as to permit the caregiver to easily view both 15
the display and the tools being used to perform the intubation. (See George, 16
col. 5, ll. 6–15). The caregiver uses the laryngoscope to clear the patient’s 17
airway as much as possible. Once this is accomplished, the caregiver uses 18
the semi-malleable tube 3 to guide the endotracheal tube 21 into the airway, 19
assisted both by direct vision and by the image transmitted to the display 20
unit 13. (See George, col. 5, ll. 25–35 and Fig. 3). 21
9. Figure 3 of George depicts the distal end of the endotracheal 22
tube 21 as being near the distal end of the laryngoscope blade 31, but deeper 23
into the airway (and closer to the larynx L) than the distal end of the blade, 24
during an intubation procedure. 25
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10. The other instrument identified in column 1 of the ’178 patent 1
is described by Bullard ’919 (US 4,086,919, issued May 2, 1978). Bullard 2
’919 describes a laryngoscope 10 including a blade 12. (See Bullard ’919, 3
col. 2, ll. 60–64 and Fig. 1). The blade 12 includes a connection member 20 4
at the proximal end of the blade to connect the blade to a handle 27. (See 5
Bullard ’919, col. 3, ll. 3–9). The laryngoscope 10 also includes bundles 38, 6
44 of optical fibers connecting both an eyepiece 32 mounted near the 7
proximal end of the blade 12 and a light bulb 28 located in the connection 8
member 20 with an opening 42 at the distal end of the blade. (See Bullard 9
’919, col. 3, ll. 9–32 and Fig. 2). 10
11. Bullard ’919 criticizes instruments, similar to those taught by 11
George (see FF 4–6 and 8), that mount an endotracheal tube over a tubular 12
probe having internal fiber optics for lighting and viewing the airway during 13
an intubation procedure. Bullard ’919 points out that “[s]uch devices 14
obviously require the use of relatively large diameter endotracheal tubes in 15
order to be carried on the tubular probe, and their use necessarily is limited 16
to patients with sufficiently large airway passages to accommodate the 17
combined size of the probe and the endotracheal tube.” (Bullard ’919, col. 18
2, ll. 4–10). 19
12. George, in turn, criticizes the teaching of Bullard ’919 to use an 20
eyepiece to visualize the patient’s airway during an intubation procedure: 21
If the attending physician looks through the Bullard scope and 22
has to remove his eyes from the eyepiece to make an external 23
assessment of the airway of the patient, a critical lag in time 24
occurs before the physician can refocus on the internal images 25
seen through the eyepiece. The critical lapse of time caused by 26
the process of focusing and refocusing can affect the timely 27
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placement of the endotracheal tube and may even cause the 1
physician to misinterpret certain landmarks, hindering the exact 2
placement of the endotracheal tube. . . . Most importantly, the 3
movement of the physician’s body and head, down to, and 4
away from, the eyepiece can lead to erroneous placement of the 5
endotracheal tube in a structure other than the patient’s airway 6
because of movement of the blade and handle and thus 7
movement of the visual field of the eyepiece. 8
(George, col. 1, ll. 56–66 and col. 2, ll. 1–7). 9
13. George at least partially addresses this problem by means of the 10
electronic camera and the display unit 13: 11
Because the display unit is lightweight, it can be placed in any 12
desired place, such as just below the chin of a patient and next 13
to the direct line-of-sight 25. This allows the physician to 14
simultaneously directly view the airway by line-of-sight 25 and 15
indirectly view the deeper structures of the airway on the 16
lightweight portable screen by line-of-sight 27. 17
(George, col. 5, ll. 55–64). 18
14. George also criticizes the laryngoscope described in Bullard 19
’919, explaining that, “[b]ecause the eyepiece is attached to the 20
laryngoscope blade and handle, the physician may not be able to see deep 21
enough into the oral pharynx and the larynx to visualize the opening to the 22
trachea.” (George, col. 1, l. 66 – col. 2, l. 1). 23
15. The rejections at issue in this appeal rely on Bullard ’787, 24
rather than Bullard ’919, as a reference. Bullard ’787 describes a 25
laryngoscope 20. The laryngoscope 20 includes a blade 40 having a 26
proximal end 44 connected (albeit indirectly) to a “handle” 73. (See Bullard 27
’787, col. 4, ll. 18–19, col. 5, ll. 53–55 and Fig. 1). The blade 40 includes a 28
blade tip section 46 defining the distal end 42 of the blade. (See Bullard 29
’787, col. 4, ll. 19–25 and Fig. 1). The blade tip section 46 is fitted to the 30
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blade 40 by means of alignment guides 100 and a stiff cable 50 to permit a 1
caregiver to lengthen or shorten the blade 40 from the proximal end of the 2
laryngoscope 20 during an intubation procedure. (See Bullard ’787, col. 4, 3
ll. 29–32 and 50–57; see also id., Figs. 1–5). 4
16. The laryngoscope 20 described in Bullard ’787 also includes an 5
optical channel 62 and a light channel 68. The light channel 68 encloses 6
optical fibers 70 for conducting light from a halogen bulb located in the 7
handle 73 to illuminate the patient’s airway. (See Bullard ’787, col. 5, ll. 8
44–55). The optical channel 62 encloses a bundle 64 of optical fibers for 9
collecting light near the distal end 42 of the blade 40, and transmitting the 10
collected optical image. (See Bullard ’787, col. 5, ll. 28–31). Figure 5 11
depicts the bundle 64 as terminating at a location spaced proximally from 12
the distal end 42 of the blade 40. This fact implies that the bundle 64 13
collects light at a location spaced proximally from the distal end 42. (See 14
Ans. 12–13). 15
17. Bullard ’787 describes intubating a trachea of a patient using an 16
intubating instrument (namely, a styletted endotracheal tube) and a 17
laryngoscope. More specifically, Bullard ’787 teaches inserting the blade 18
into the patient’s mouth, lifting the patient’s tongue and moving the tongue 19
to one side. The lifting and moving of the patient’s tongue to one side 20
exposes the patient’s trachea opening and other internal structures to view. 21
(Bullard ’787, col. 2, ll. 5–24). 22
18. Figure 6 of Bullard ’787 is a schematic drawing depicting the 23
laryngoscope of Bullard ’669 (US 4,905,669, issued Mar. 6, 1990) in use 24
intubating a patient. (See Bullard ’787, col. 5, ll. 56–60; see also Bullard 25
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’669, Fig. 9). Figure 7 of Bullard ’787 is a schematic drawing depicting the 1
laryngoscope of Bullard ’787 in use intubating a patient. (See Bullard ’787, 2
col. 3, l. 67 – col. 4, l. 3). Both drawing figures depict the laryngoscopes as 3
including identical features corresponding to the eyepiece 36 described in 4
Bullard ’669. (See Bullard ’669, col. 5, ll. 32–37 and Fig. 2; see also id., 5
col. 4, ll. 57–62 and Fig. 2A (describing the fiber optic bundle 25 conveying 6
images from the distal end 16 of the blade 14 to the eyepiece 36)).6 The 7
passage at column 2, lines 5–8 of Bullard ’787 does not imply that the 8
laryngoscope 20 lacks structure such as an eyepiece and optical fiber bundle 9
for indirect viewing of the patient’s airway during an intubation procedure. 10
(See App. Br. 171). 11
19. Unlike Bullard ’919, Bullard ’787 teaches that: 12
The laryngoscope 20 is preferably adapted so that a video 13
camera [26] may be operably coupled . . . at the proximal end of 14
the optical channel 62 to receive and transmit the optical images 15
from the optical channel 62 to a television monitor (not shown) 16
and to a video recording apparatus such as a video cassette 17
recorder (not shown). 18
(Bullard ’787, col. 5, ll. 37–43). As the Patent Owner correctly points out, 19
this camera is designed to record the intubation procedure rather than to 20
assist the caregiver in performing the procedure. 21
20. As the Patent Owner correctly points out, it appears that a 22
caregiver using the laryngoscope described in Bullard ’787 would use an 23
eyepiece connected to the optical fiber bundle 64, rather than the television 24
monitor, to visualize the patient’s airway during an intubation procedure. 25

6 We cite Bullard ’669 in this appeal solely for the purpose of
explaining the disclosure of Figure 6 of Bullard ’787.
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(See App. Br. 30–31). The Patent Owner’s assertion is consistent with the 1
disclosure of Bullard ’787; and has not been disproven by the Examiner. 2
21. Shinichi describes an endoscope 1 including an “operation unit” 3
2 and an “insertion unit” 3. (Shinichi 113). The “operation unit” 2 appears 4
to be a handle. Shinichi teaches positioning a solid-state imaging element 4 5
at the tip of the insertion part 3 for capturing images of an object. (Shinichi 6
114). Figure 1 of Shinichi indicates that the imaging element 4 is positioned 7
at the distal end of the insertion part 3. 8
22. Shinichi teaches positioning a small, lightweight liquid crystal 9
display 8 on the “operating unit” or handle 2. The solid-state imaging 10
element 4 and the liquid crystal display 8 are connected by means of an 11
electronic circuit including an amplifier 9 to permit liquid crystal display to 12
display the image captured by the solid-state imaging element. (Shinichi 13
114). Shinichi also teaches tapping the signal from the amplifier 9 so that 14
the image captured by the solid-state imaging element may be displayed 15
simultaneously on a television monitor 11 and recorded by a recording 16
device 12. (Id.) 17
23. Despite the Patent Owner’s argument to the contrary (see App. 18
Br. 186–88), Shinichi is not non-analogous art. As support for this finding, 19
we adopt and incorporate by reference the Examiner’s findings on page 21 20
of the Answer. 21
24. The Patent Owner asserts that he has settled an infringement 22
dispute with one alleged infringer. (See App. Br. 131–32). This assertion is 23
entitled to little weight as evidence of either commercial success or industry 24
recognition. One reason that the settlement is entitled to little weight is that 25
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the settlement appears to have been entered into to end a litigation.7 Another 1
reason that the settlement is entitled to little weight is that the details of the 2
settlement are not provided. Sufficient nexus, in the sense of persuasive 3
evidence or reasoning to show that the alleged infringer took the license due 4
to the alleged infringer’s recognition that the claimed subject matter was 5
inventive, has not been provided. (See Ans. 22). 6
25. The Patent Owner’s statements regarding the reception of the 7
subject laryngoscope at conferences in October 2000 and December 2013 8
(see App. Br. 46–47) are entitled to little weight as evidence of industry 9
recognition. The Patent Owner states that: 10
In October 2000 [the Patent Owner’s] claim 1 was not 11
obvious to 350 anesthesiologists-with-special-interest-and-12
expertise in intubation, when the idea was first formally 13
presented to 350 experts at the Society for Airway Management 14
Annual Meeting in Quebec City. 15
[The Patent Owner’s] claim 1 was also not obvious the 16
following week in Montreal at the World Congress for 9000 17
Anesthesiologists, where [the Patent Owner] again presented 18
[the] concept. 19
(App. Br. 46). The Patent Owner provides little description of what was 20
presented to the experts, how the presentation related to the claimed subject 21
matter or how the experts reacted. The statement is of little probative value. 22
26. Likewise, the Patent Owner statement that, “in December, 2013 23
at the Post Graduate Anesthesia ’67 Conference for 3500 anesthesiologists 24
in NYC it was not obvious to many anesthesiologists why video 25

7 See Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1324
(Fed. Cir. 2004).
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laryngoscopes with the camera means specifically in the distal region of the 1
laryngoscope blade (Berall’s claim 1), are able to facilitate surer, safer and 2
faster intubations” (App. Br. 46), is entitled to little weight as evidence of 3
industry recognition. As support for this statement, the Patent Owner cites 4
ten videos posted at the Patent Owner’s Internet site, www 5
.berallvideolaryngoscope.com. In the majority of these videos, the Patent 6
Owner appears to demonstrate two products manufactured by third-party 7
manufacturers to visitors to a display maintained at the conference. Neither 8
product was on the market at the time of the conference. In nine of the 9
videos, the Patent Owner praises the two products for having high definition 10
video displays superior to the displays of competitor’s laryngoscopes. In 11
addition, the Patent Owner praises the two products for having the capacity 12
to take either still pictures or video under push-button control. Because 13
neither of these features is recited in claim 1, these nine videos of the two 14
products are of little value as objective evidence of patentability. 15
27. In one of the videos, the Patent Owner did praise the ability of a 16
video camera positioned near the distal end of the blade of a laryngoscope to 17
reach behind the patient’s tongue during an intubation so as to enable the 18
caregiver to visualize the opening of the trachea, even in patients with 19
enlarged or swollen tongues. The unidentified individual to whom the 20
Patent Owner spoke appeared surprised to learn this. The fact that one 21
individual found advantages attributable to the subject matter of claim 1 22
surprising, even sixteen years after the filing date of the ’178 patent, is some 23
evidence of patentability. Nevertheless, this evidence is not entitled to 24
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significant probative weight in view of the teachings of Ballard ’787 and 1
George. 2
3
ANALYSIS 4
First Issue 5
Framing his argument in terms of a figurative negotiation table, the 6
Patent Owner argues that insufficient deference has been given to the 7
decision of the examiners in the original examination to allow the claims of 8
the ’178 patent; that insufficient weight has been given to the failure of the 9
named inventors of Bullard ’787 and George, as well as other intubation 10
professionals, to publish the subject matter of appealed claim 1 before the 11
Patent Owner applied for his patent; and that insufficient weight has been 12
given to the failure of past challengers to the patentability of claim 1 to 13
assert that claim 1 is unpatentable over the combined teachings of Bullard 14
’787 and George. (See, e.g., App. Br. 27–30 and 51–53). 15
A patent is presumed valid during litigation before a federal court. 16
35 U.S.C. § 282. Section 282 codifies the common law presumption of 17
validity declared in such cases as Radio Corp. of America v. Radio Eng’ring 18
Labs., Inc., 293 U.S. 1 (1934). Despite the Patent Owner’s assertion to the 19
contrary (see, e.g., App. Br. 29–30), neither the statutory presumption of 20
validity nor the common law presumption applies in an ex parte 21
reexamination. In re Etter, 756 F.2d 852, 856 (Fed. Cir. 1985). 22
The decision of the examiners in the original prosecution to allow the 23
claims of the ’178 patent is not entitled to deference in this proceeding. At 24
the commencement of the reexamination proceeding, the Examiner 25
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determined that the combined teachings of Bullard ‘787 and George gave 1
rise to a substantial new question of patentability. This determination was 2
reasonable because, as the Examiner correctly found, Bullard ’787 describes 3
a laryngoscope mounting an electronic camera for imaging the airway of a 4
patient during an intubation. This teaching was not of record during the 5
original examination. (See Ans. 15). In view of this substantial new 6
question of patentability, the Examiner in this reexamination could reject the 7
claims over the record in the current proceeding without necessarily 8
disagreeing with the decision of the previous examiners to allow the claims 9
over the record in the original examination. Cf. Microsoft Corp. v. i4i Ltd. 10
Partnership, 564 U.S. 91, 131 S.Ct. 2238 (2011).8 11
Likewise, the fact that neither the named inventor of Bullard ‘787 nor 12
the named inventor of George identically disclosed the claimed subject 13
matter is not entitled to significant weight in this reexamination. Section 14
103(a) contemplates that the subject matter of a claim may be obvious even 15
if not identically disclosed in the prior art. See id. (“A patent may not be 16
obtained though the invention is not identically disclosed or described as set 17
forth in section 102.”). Likewise, the fact that no past challenger to the 18
patentability of claim 1 relied on the combined teachings of Bullard ’787 19

8 Even in a court proceeding where the statutory presumption of
validity does apply, “[w]hen new evidence touching validity of the patent
not considered by the PTO is relied on, the [court] considering it is not faced
with having to disagree with the PTO or with deferring to its judgment or
with taking its expertise into account. The evidence may, therefore, carry
more weight or go further toward sustaining the attacker’s unchanging
burden.” i4i Ltd. Partnership, 131 S.Ct. at 2251 (quoting American Hoist &
Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1360 (Fed. Cir. 1984)).
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and George is entitled to no weight. A challenger may choose to propose 1
one ground of rejection and omit another for reasons unrelated to the 2
persuasiveness of the omitted ground. 3
The issue before us is not whether the claimed subject matter would 4
have been obvious to the named inventor of Bullard ’787, the named 5
inventor of George or any other practitioner in the intubation art. The 6
question before us is whether “the subject matter as a whole would have 7
been obvious at the time the invention was made to a person having 8
ordinary skill in the art to which said subject matter pertains.” § 103(a) 9
(italics added for emphasis). “The person of ordinary skill in the art is a 10
hypothetical person who is presumed to know the relevant prior art.” In re 11
GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Moreover, "[a] person of 12
ordinary skill is also a person of ordinary creativity, not an automaton." 13
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). 14
The teachings of the art might have suggested more than one path of 15
development. The choice of a particular natural person to pursue one path of 16
development does not imply that other available paths were not obvious. Cf. 17
ACCO Brands Corp. v. Fellowes, Inc., Appeal No. 2015-1045 slip op. at 12 18
(Fed. Cir. Feb. 22, 2016) (“But even if one possible obvious combination 19
falls outside of the claims, it fails to undercut the fact that the other possible 20
obvious combination lies within their scope.”), available at http://www.cafc 21
.uscourts.gov/sites/default/files/opinions-orders/15-1045.Opinion.2-19-22
2016.1.PDF. For this reason, the fact that any particular natural person or 23
persons failed to identically disclose the subject matter of a claim is entitled 24
to little weight in determining whether the claim would have been obvious to 25
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the hypothetical person having ordinary skill in the art. In this appeal, the 1
fact that neither the named inventor of Bullard ’787, the named inventor of 2
George nor any other practitioner in the field of intubation published the 3
subject matter of appealed claim 1 before the Patent Owner does not imply 4
that claim 1 is patentable. 5
6
Second Issue 7
Claims 1–4 and 8–10 8
The Examiner concludes that the subject matter of claim 1 would have 9
been obvious from the combined teachings of Bullard ’787 and George. The 10
Examiner correctly finds that Bullard ’787 describes a laryngoscope 20 11
including a handle 73 and a blade 40, with the blade 40 having a distal end 12
42 projecting laterally therefrom; a camera 26 for observing a visual field; 13
and display means (that is, a television monitor not shown in the drawing 14
figures) operatively (that is, electronically) connected to the camera 26 for 15
displaying the visual field at a preselected location. (See Ans. 2; see also FF 16
15, 16 and 19). Bullard ’787 does not describe the camera 26 as being 17
“mounted on the blade in the vicinity of the distal end.” Instead, Bullard 18
’787 describes the camera 26 as being mounted near the proximal end of the 19
blade 40. A fiber optic bundle 64 collects light in the vicinity of the distal 20
end of the blade 40 (that is, near, but not at, the distal end) and conducts that 21
light to the camera 26. (See Ans. 12–13; see also FF 16 and 19). 22
George teaches that an electronic camera mounted at the distal end of 23
a tubular probe 3 is interchangeable with the combination of an optical 24
camera 6 mounted near the proximal end of the tube and fiber optic bundles 25
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8, at least one of which collects light at or near the distal end of the tube 3 1
and conducts the light to the optical camera 6. (See Ans. 2; FF 7; see also 2
FF 5 and 6). The Examiner concludes in view of this teaching that it would 3
have been obvious to replace the camera means 26 and the fiber optic bundle 4
64 described by Bullard ’787 with a camera mounted on the blade in the 5
vicinity of the distal end. In the Examiner’s words, it would have been 6
obvious: 7
to [have] replace[d] the camera means of Bullard [’787], with a 8
camera means mounted at the distal end of the optical channel, 9
which is in the vicinity of the distal end 46, in view of the 10
teachings of equivalency in George, and involves mere 11
substitution of one element for another known in the field to 12
yield predictable results. 13
(Ans. 2–3, citing KSR Int’l, 550 U.S. at 416). 14
The Patent Owner correctly argues that the proposed modification 15
would have required more than merely substituting one element for another 16
known in the field. (See App. Br. 184). As the Patent Owner points out (see 17
App. Br. 30–31), the laryngoscope 20 described by Bullard ’787 appears to 18
use the optical fiber bundle 64 to conduct light collected at or near the distal 19
end of the blade 40 both to an eyepiece used by the caregiver to visualize the 20
patient’s airway during an intubation procedure and to the camera 26 used 21
when recording the procedure (see FF 16 and 18–20). Mere substitution of 22
an electronic camera mounted in the vicinity of the distal end of the blade 40 23
of the laryngoscope 20 described in Bullard ’787 for the camera 26 and the 24
optical fiber bundle 64 would have cut off the eyepiece from its source of 25
light near the distal end of the blade 40. The Examiner has not proven that 26
the television monitor described by Bullard ’787 (see FF 19) would have 27
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provided a practical alternative enabling a caregiver to visualize the patient’s 1
airway during an intubation procedure. In order to implement the 2
substitution, one of ordinary skill in the art would have had to further modify 3
the laryngoscope described in Bullard ’787 to provide a display unit or some 4
other means near the caregiver’s line-of-sight to permit the caregiver to 5
visualize the patient’s airway. 6
Even though the proposed modification would have required more 7
than merely substituting one element for another known in the field, it would 8
have been obvious in view of the teachings of George to replace the camera 9
26, the fiber optic bundle 64 and the eyepiece described by Bullard ’787 10
with the combination of an electronic camera mounted near the distal end of 11
the blade and a lightweight display unit positioned near the caregiver’s line-12
of-sight. On one level, it would have been obvious to update the optical 13
visualization system described by Bullard ’787 with modern electronic 14
components such as those described by George. See Leapfrog Enterps., Inc. 15
v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). 16
On another level, George taught that an electronic camera mounted at 17
the distal end of a tubular probe 3 is interchangeable with the combination of 18
an optical camera 6 mounted near the proximal end of the tube and fiber 19
optic bundles 8, at least one of which collects light at or near the distal end 20
of the tube 3 and conducts the light to the optical camera 6. (See Ans. 2 and 21
8; see also FF 7). In addition, George criticized the use of a fiber optic 22
bundle and an eyepiece to visualize a patient’s airway, as taught by both 23
Bullard ’787 and Bullard ’919. (See FF 12). Instead, George taught the use 24
of a lightweight display unit positioned near the caregiver’s line-of-sight to 25
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visualize the airway during an intubation procedure. (See Ans. 3–4 and 8; 1
see also FF 13). In view of these teachings, it would have been obvious to 2
replace the optical camera 26 located at the proximal end of the 3
laryngoscope blade described by Ballard ’787 with an electronic camera 4
located near the distal end of the blade, as proposed by the Examiner; and 5
additionally to replace the eyepiece depicted in the drawing figures of 6
Ballard ’787 with a lightweight display unit coupled to the electronic camera 7
by a wire or optical fiber bundle. 8
Because Bullard ’787 teaches collecting light for use in visualizing 9
the patient’s airway at a point near, but spaced from, the distal end of the 10
blade (see Ans. 12–13; see also FF 16), it would have been obvious to 11
position the electronic camera intended to collect light for generating the 12
image to be displayed on the display unit near, but spaced from, the distal 13
end of the blade (see Ans. 16 and 18). Despite the Patent Owner’s argument 14
to the contrary (see App. Br. 166), the proposed placement of the electronic 15
camera would not have resulted in obstruction of the camera’s view of the 16
deep pharynx while using the blade to move soft tissues in the patient’s 17
airway. 18
George suggested that a camera affixed to a laryngoscope, in 19
accordance with the proposed modification of Ballard ’787, may not be able 20
to see deeply enough into the oral pharynx and the larynx to visualize the 21
opening to the trachea. (See FF 9). On the other hand, Bullard ’919 22
criticized the use of tubular probes having internal fiber optics for lighting 23
and viewing a patient’s airway, such as that described by George, to guide 24
an endotracheal tube into the airway. Bullard ’919 suggested that the use of 25
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such probes was limited to patients with sufficiently large airway passages to 1
accommodate tracheal tubes large enough to fit over such probes. (See FF 2
11). In view of these competing design considerations, one of ordinary skill 3
in the art would have had reason to modify the laryngoscope described by 4
Bullard ’787 despite George’s criticism of positioning the optical system 5
used to visualize the airway on the laryngoscope. See Medichem, S.A. v. 6
Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“[A] given course of 7
action often has simultaneous advantages and disadvantages, and this does 8
not necessarily obviate motivation to combine.”). 9
Nevertheless, George’s suggestion that a camera affixed to the 10
laryngoscope may not be able to see deeply enough into the oral pharynx 11
and the larynx to visualize the opening to the trachea helps to explain why 12
the named inventor of George chose not pursue the subject matter of claim 1 13
personally. 14
The probative value of the teachings of Bullard ’787 and George 15
outweighs the probative value of any objective evidence submitted by the 16
Patent Owner. We adopt and incorporate by reference the Examiner’s 17
findings and reasoning on pages 22 and 23 of the Answer. Neither the 18
Appeal Brief nor the Applicant’s Interview Summary identifies persuasive 19
evidence of commercial success or a long felt, but unmet, need. (See, e.g., 20
App. Br. 124–25 and 171). In view of the Examiner’s findings and 21
reasoning on pages 22 and 23 of the Answer; and our FF 24–27, we 22
conclude that the probative value of the teachings of Ballard ’787 and 23
George outweighs the probative value of any objective evidence presented 24
by the Patent Owner. 25
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We sustain the Examiner’s decision to reject claim 1 under § 103(a) as 1
being unpatentable over Bullard ’787 and George, but we do so for reasons 2
that differ from those of the Examiner. For this reason, we designate our 3
affirmance a new ground of rejection of claim 1. 4
Likewise, we sustain the Examiner’s decision to reject claims 2–4 and 5
8–10 under § 103(a) as being unpatentable over Bullard ’787 and George. 6
For the same reason that we designate the rejection of claim 1 a new ground 7
of rejection, we designate the rejections of claims 2–4 and 8–10 new 8
grounds of rejection. Nevertheless, we adopt and incorporate by reference 9
the Examiner’s findings on pages 3 and 4 of the Answer regarding the 10
teachings of George. We find that these teachings would have provided one 11
of ordinary skill in the art reason to modify the laryngoscope 20 in the 12
fashion claimed in claims 2–4 and 8–10. 13
14
Claims 5–7 and 11–14 15
We sustain the Examiner’s decision to reject claims 5–7 and 11–14 16
under § 103(a) as being unpatentable over Bullard ’787, George and 17
Shinichi, relying on our analysis set forth above relative to the combination 18
of Bullard ’787, George. In particular, we adopt and incorporate by 19
reference the Examiner’s finding that Shinichi is not non-analogous art. (FF 20
21, citing Ans. 21; see App. Br. 186–88). For the same reason that we 21
designate the rejection of claim 1 a new ground of rejection, we designate 22
the rejections of claims 5–7 and 11–14 new grounds of rejection. 23
Nevertheless, we adopt and incorporate by reference the Examiner’s 24
findings on pages 4–6 of the Answer regarding the teachings of George. We 25
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find that these teachings would have provided one of ordinary skill in the art 1
reason to modify the laryngoscope 20 in the fashion claimed in claims 5–7 2
and 11–14. 3
The Patent Owner argues that the subject matter of claims 5–7 and 4
11–14 would not have been obvious from the combined teachings of Bullard 5
’787, George and Shinichi because Shinichi describes “an old, straight, rigid 6
protoscope/sigmoidoscope type of endoscope” that could not be inserted into 7
a patient’s mouth and maneuvered through the patient’s throat. (See App. 8
Br. 188–89). The proposed rejection relies on Shinichi solely for the 9
teaching to mount a lightweight display unit, namely, a liquid crystal 10
display, on an operation unit 2 of the endoscope. Neither the Examiner’s 11
rejection, nor the new ground of rejection entered by the Board, proposes 12
maneuvering an endoscope of the type described by Shinichi through a 13
patient’s throat. Because this argument does not address the rejection either 14
as adopted by the Examiner or entered as a new ground by the Board, it is 15
not persuasive. 16
17
Claim 15 18
With respect to claim 15, the Examiner correctly finds that Bullard 19
’787 describes a laryngoscope 20 including a handle 73 for a Professional 20
Intubator to grasp in a first hand; and a blade 40 with a proximal end 44 21
connected to the handle 73 and a distal end 42 extending laterally therefrom 22
for insertion into a patient’s mouth during the procedure to elevate and move 23
to one side the patient’s tongue steadily and constantly. (See FF 15). The 24
laryngoscope also includes a camera and a bundle 64 of optical fibers 25
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terminating near the distal end 42 of the blade 40 for observing a visual field 1
that includes the patient’s trachea opening and other oral internal structures. 2
(See FF 19). The camera 26 is operatively (that is, electronically) connected 3
to a display in the form of a television monitor. (See id.) 4
For the reasons discussed with respect to the rejection of claim 1, it 5
would have been obvious to replace the optical camera 26 located at the 6
proximal end of the laryngoscope blade described by Ballard ’787 with an 7
electronic camera located near the distal end of the blade, as proposed by the 8
Examiner; and additionally to replace the eyepiece depicted in the drawing 9
figures of Ballard ’787 with a lightweight display unit coupled to the 10
electronic camera by a wire or optical fiber bundle. Once this modification 11
was performed, the modified laryngoscope would have satisfied the 12
limitations reciting “a camera means mounted on the blade in the vicinity of 13
the distal end of the blade” and “the camera means connected operatively to 14
a portable lightweight display means.” Were the display unit positioned 15
near the Professional Intubator’s line-of-sight as taught by George (see Ans. 16
3–4; FF 8), the display unit would have been “arranged for the Professional 17
Intubator to see the field of view on the display means, whereby the 18
Professional Intubator’s second hand [was] available to manipulate the 19
intubating instrument without disturbing the camera means.” 20
On the basis of this reasoning, we sustain the Examiner’s decision to 21
reject claim 15 under § 103(a) as being unpatentable over Bullard ’787 and 22
George. Because our reasoning differs from that of the Examiner, we 23
designate our affirmance a new ground of rejection of claim 15. 24
25
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Third Issue 1
The Examiner correctly finds that Bullard ’787 describes each step of 2
the method recited in claim 16 except “providing camera means mounted on 3
the blade in the vicinity of the distal end of the blade so that it observes a 4
field of view that includes a patient’s trachea opening and other oral internal 5
structures;” “inserting the intubating instrument into the mouth of a patient 6
using a second hand of the Professional Intubator and manipulating the 7
intubating instrument for insertion of a tube into the patient’s trachea 8
opening;” and: 9
positioning the display means on the handle so that while the 10
Professional Intubator inserts and manipulates the intubating 11
instrument into the patient’s trachea the Professional Intubator 12
observes the trachea opening and other oral internal structures of 13
the patient on the display means unaffected by the manipulating 14
of the intubating instrument. 15
The Examiner correctly finds that George taught an electronic camera 16
mounted at the distal end of a tubular probe 3 is interchangeable with the 17
combination of an optical camera 6 mounted near the proximal end of the 18
tube and fiber optic bundles 8, at least one of which collects light at or near 19
the distal end of the tube 3 and conducts the light to the optical camera 6. 20
(See Ans. 8; see also FF 7). In addition, the Examiner correctly finds that 21
George criticized the use of a fiber optic bundle and an eyepiece to visualize 22
a patient’s airway, as taught by both Bullard ’787. (See FF 12 and 18). 23
Instead, George taught the use of a lightweight display unit positioned near 24
the caregiver’s line-of-sight to visualize the airway during an intubation 25
procedure. (See Ans. 8; see also FF 13). In view of these teachings, it 26
would have been obvious to replace the optical camera 26 located at the 27
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proximal end of the laryngoscope blade described by Ballard ’787 with an 1
electronic camera located near the distal end of the blade; and additionally to 2
replace the eyepiece depicted in the drawing figures of Ballard ’787 with a 3
lightweight display unit coupled to the electronic camera by a wire or optical 4
fiber bundle. In other words, it would have been obvious to “provid[e] 5
camera means mounted on the blade in the vicinity of the distal end of the 6
blade so that it observes a field of view that includes a patient’s trachea 7
opening and other oral internal structures” as recited in claim 16. 8
Bullard ’787 described intubating a trachea of a patient using an 9
intubating instrument (namely, a styletted endotracheal tube) and a 10
laryngoscope. (See FF 17). George taught “inserting the intubating 11
instrument [that is, the tubular probe mounting the endotracheal tube] into 12
the mouth of a patient . . . and manipulating the intubating instrument for 13
insertion of a tube into the patient’s trachea opening.” (See FF 4 and 8). It 14
would have been obvious to use the more specific teachings of George 15
regarding the steps performed during an intubation procedure to supplement 16
the teaching of Bullard ’787. 17
The Examiner correctly finds that Shinichi teaches positioning a 18
lightweight display unit on the handle of a medical scope. (Ans. 9; see also 19
FF 21 and 22). The Examiner quotes Shinichi for the teaching that a 20
purpose of Shinichi’s invention was “to provide an endoscope that can 21
perform image display close at hand, without affecting operability.” (Ans. 9, 22
quoting Shinichi 113). In view of the teachings of George to provide a 23
lightweight display near the Professional Intubator’s line-of-sight, it would 24
have been obvious to position the display on the handle of the laryngoscope 25
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as suggested by Shinichi “so that while the Professional Intubator inserts and 1
manipulates the intubating instrument into the patient’s trachea the 2
Professional Intubator observes the trachea opening and other oral internal 3
structures of the patient on the display means unaffected by the manipulating 4
of the intubating instrument.” 5
In short, the Examiner provides sufficient reasons on pages 7–10 of 6
the Answer to explain why one of ordinary skill in the art would have 7
combined the teachings of Bullard ’787, George and Shinichi in the fashion 8
claimed. In view of this reasoning, the Patent Owner’s argument that the 9
proposed modification would have required more than merely substituting 10
one element for another known in the field (see App. Br. 184) is not 11
persuasive as to the rejection of claim 16. The Examiner’s findings at page 12
21 of the Answer show that Shinichi is not non-analogous art (see App. Br. 13
186–88); and the Patent Owner’s arguments attempting to explain why one 14
of ordinary skill in the art would not have combined the teachings of 15
Shinichi with those of Bullard ’787 and George, as proposed by the 16
Examiner (see App. Br. 188–89), do not persuasively address the 17
Examiner’s reasoning. 18
The probative value of the teachings of Bullard ’787, George and 19
Shinichi outweigh the probative value of any objective evidence of 20
patentability submitted by the Patent Owner. (See Ans. 22–23). Therefore, 21
we affirm the Examiner’s decision to reject claim 16 under § 103(a) as being 22
unpatentable over Bullard ’787, George and Shinichi. 23
24
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DECISION 1
We AFFIRM the Examiner’s decision rejecting claim 16 under 2
§ 103(a) as being unpatentable over Bullard ’787, George and Shinichi. 3
We AFFIRM the Examiner’s decision rejecting claims 1–15. 4
Pursuant to our authority under 37 C.F.R. § 41.50(b), we designate our 5
decision affirming the rejection of claims 1–4, 8–10 and 15 under § 103(a) 6
as being unpatentable over Bullard ’787 and George; and our decision 7
affirming the rejection of claims 5–7 and 11–14 under § 103(a) as being 8
unpatentable over Bullard ’787, George and Shinichi, NEW GROUNDS OF 9
REJECTION of those claims. 10
37 C.F.R. § 41.50(b) provides that, “[a] NEW GROUND OF 11
REJECTION pursuant to this paragraph shall not be considered final for 12
judicial review.” Regarding the NEW GROUND OF REJECTION, 37 13
C.F.R. § 41.50(b) also provides that Appellant must exercise, WITHIN 14
TWO MONTHS, one of the following options: 15
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the proceeding will be
remanded to the examiner . . . .
(2) Request rehearing. Request that the 16
proceeding be reheard under § 41.52 by the Board 17
upon the same record . . . . 18
No time period for taking any subsequent action in connection with 19
this appeal may be extended under 37 C.F.R. § 1.136(a). See, e.g., 37 C.F.R. 20
§ 41.50(f). 21
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The results of this reexamination proceeding may affect the legal 1
rights of the Patent Owner. The Patent Owner is encouraged to seek legal 2
advice to assist in the conduct of any future proceedings. 3
4
AFFIRMED—37 C.F.R. § 41.50(b) 5
6
7
8
Patent Owner: 9
10
JONATHAN BERALL 11
173 COLUMBIA HEIGHTS 12
BROOKLYN, NY 11201 13
14
For the Requester in Ex parte Reexaminations 90/011,383 and 90/012,340: 15
16
OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, LLP 17
1940 DUKE STREET 18
ALEXANDRIA, VA 22314 19
20
For the Requester in Ex parte Reexamination 90/011,308: 21
22
FOSTER PEPPER PLLC 23
1111 3RD AVENUE, SUITE 3400 24
SEATTLE, WA 98101-3299 25