Ex Parte Beck et al

Patent Trials and Appeals Board

Apr 30, 2019

12969873 - (D) (P.T.A.B. Apr. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/969,873 12/16/2010 Gerd Beck
154825 7590 05/02/2019
KS - Whitmyer IP Group LLC
600 Summer Street
3rd Floor
Stamford, CT 06901
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
02581-Pl349A 5069
EXAMINER
WERNER, DAVID N
ART UNIT PAPER NUMBER
2487
NOTIFICATION DATE DELIVERY MODE
05/02/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
uspto@whipgroup.com
patent@karlstorz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERD BECK, ANDRE EHRHARDT,
UWE MARTIN, BERNHARD GLOEGGLER,
HILMAR SCHACHENMAYR, BRYAN KENNEDY,
RAYMOND COUSSA, and NATHAN TANG
Appeal2017-007972
Application 12/969,873
Technology Center 2400
Before JOSEPH L. DIXON, JAMES W. DEJMEK, and
STEPHEN E. BELISLE, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-007972
Application 12/969,873
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1, 3, 4, 7, 8, 11, 15-17, and 22-32. We have jurisdiction under
35 U.S.C. § 6(b). A video oral hearing was held on April 18, 2019. Mr.
Duplessis and Examiner W emer presented oral arguments at the hearing.
We affirm.
The claims are directed to a method for testing an optical investigation
system. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for testing an optical investigation
system, the method comprising the steps of:
providing an imaging device, a video camera, and a
singular light source;
providing a test apparatus, the test apparatus having a
housing with an aperture at one end and being closed at the other
end and including a hollow space within the housing, the test
apparatus having a reference body including a reference surface
with at least one predetermined optical property;
positioning a distal end of the imaging device through the
aperture and into the hollow space of the test apparatus, in such
a way that the distal end of the imaging device is positioned at a
predetermined position relative to the reference surface of the
test apparatus;
illuminating the reference surface of the test apparatus
with illuminating light with a first spectrum using the singular
light source alone;
1 According to Appellants, the real party in interest is Karl Storz GmbH &
Co. See Appeal Br. 2.
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illuminating the reference surface with illuminating light
with a second spectrum using the singular light source alone;
recording the reference surface using the imaging device and
video camera; during the recording of an image while
illuminating the reference surface with illuminating light with
the first spectrum, recording a first operating condition of the
video camera;
during the recording of an image while illuminating the
reference surface with illuminating light with the second
spectrum, recording a second operating condition of the video
camera; and
determining at least one of a functionality and a property
of the optical investigation system using the first recorded
operating condition and the second recorded operating condition.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kanno et al.
Y amamori
Leiner et al.
Harano
us 5,111,306
us 5,142,359
US 2008/0228031 Al
EP 1 728 464 Al
REJECTION
The Examiner made the following rejection:
May 5, 1992
Aug. 25, 1992
Sept. 18, 2008
Dec. 6, 2006
Claims 1, 3, 4, 7, 8, 11, 15-17, and 22-32 stand rejected under pre-
AIA 35 U.S.C. § I03(a) as being unpatentable over Yamamori in view of
Leiner, Harano, and Kanno.
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ANALYSIS
With respect to independent claims 1 and 15, Appellants do not set
forth separate arguments for patentability. (App. Br. 4). Therefore, we
select independent claim 1 as the representative claim for the group and will
address Appellants' arguments thereto. 37 C.F.R. § 4I.37(c)(l)(iv) (2016).
Arguments which Appellants could have made but did not make in the
Briefs are waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
We disagree with Appellants' arguments, and agree with and adopt
the Examiner's findings and conclusions in (i) the action from which this
appeal is taken and (ii) the Answer to the extent they are consistent with our
analysis below.
Appellants argue that the proffered combination does not teach or
suggest the claimed "positioning a distal end of the imaging device through
the aperture and into the hollow space of the test apparatus, in such a way
that the distal end of the imaging device is positioned at a predetermined
position relative to the reference surface of the test apparatus." (App. Br. 4).
Appellants further contend that the Y amamori reference "teaches away from
any modification that would have resulted in the positioning of the probe tip
201 of the endoscope probe 200 "at a predetermined position relative to" the
disc 401 (i.e., the alleged "reference surface") in the manner recited in the
above-quoted feature of claim 1. (App. Br. 5; see also Reply Br. 5---6).
Appellants further contend that a person of ordinary skill in the art would
have understood that the Y amamori reference teaches that the probe can be
freely inserted into and extracted from a probe guide pipe, where the probe
tip is inserted into the guide pipe until the test pattern chart is correctly
reproduced on the screen. (App. Br. 6).
Appellants contend that even if the Examiner were correct, :
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the Y amamori system is still incompatible with the probe being
fixed in a predetermined position. Referring again to the
statement in Yamamori that '[t ]he [probe] tip 201 of the
endoscope probe 200 is inserted into the probe guide pipe 422
until the test-pattern chart 403 is correctly reproduced on the
screen of the monitor system 500,' the term 'until' implies that
the appropriate positioning of the probe 200 relative to the test-
pattern chart 403 is determined only after the position of the
probe 200 has been adjusted and the screen checked to see if the
test-pattern chart 403 has been correctly reproduced thereon.
That is, the above-quoted statement in Y amamori implies that the
appropriate positioning of the probe 200 relative to the test-
pattern chart 403 cannot be predetermined.
The Office Action improperly assumes that the type or
content of the test-pattern chart 403 is known or predetermined
to a user of the Y amamori system, and thus the correct
positioning of the probe 200 relative to the test-pattern chart 403
could be predetermined by a user. However, the Office Action
cited nothing in Y amamori to support such an assumption. Even
assuming, for the sake of argument, that the Y amamori system is
configured such that there is a finite number of possible positions
at which the probe 200 could be positioned relative to test-pattern
chart 403, and only one of those positions allows for the test-
pattern chart 403 to be correctly reproduced on the screen, none
of those positions (not even the "correct" position) would be
"predetermined," because a user would still be forced to try one
or more of the positions to determine which one is the "correct"
position.
(App. Br. 6-7; Reply Br. 6-7).
We disagree and find the Y amamori reference is compatible with the
probe being fixed in position during testing after the optics reaches its
predetermined focal position for viewing the pattern.
Additionally, Appellants argue that the Examiner is applying the
broadest reasonable interpretation standard to the prior art rather than to the
claimed invention. Appellants contend that:
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To the extent the Examiner intended to argue that the term
'predetermined position' of claim 1 should be interpreted under
the BRI standard to mean "position," Appellant respectfully
submits that such an interpretation is improper and cannot be
used to form the basis of the rejection. The BRI standard does
not permit the Examiner to simply ignore the inclusion of the
word "predetermined" in claim 1. Further, the outstanding
rejection fails to articulate that the term "predetermined position"
is being interpreted in this manner, let alone explain how such an
interpretation is considered to be reasonable.
(App. Br. 7; see generally Reply Br. 8-9). Moreover, Appellants contend
that the Examiner's interpretation of "predetermined position" is
unreasonable and improper because it renders the term "predetermined"
superfluous. (Reply Br. 9).
The Examiner maintains that "[t]he focal position of the Yamamori
probe is predetermined, even if unknown to an operator at the start of a test"
(Ans. 15) (emphasis omitted).
We disagree with Appellants that the Examiner is reading out the
modifying claim term "predetermined." Rather, we agree with the Examiner
that the optical focal position for the device relative to test pattern would
have been a predetermined position, whether known or not, as the Examiner
indicates. In other words, Y amamori teaches that when the test pattern is
correctly read by the optics of the probe, the probe is in the correct
predetermined position for the particular probe/test position. Further, with
respect to the broadest reasonable interpretation, Appellants have not
identified any additional claim language that further limits the claimed
invention with respect to the predetermined position that would show error
in the Examiner's obviousness rejection of the "method for testing an optical
investigation system." We further note that Appellants have not identified
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any specific definition in the Specification, and the Specification sets forth a
number of different embodiments and using a positioning device. (See
generally Spec. ,r,r 33-36). As a result, we agree with the Examiner that the
claimed terminology should be given a broad yet reasonable interpretation in
light of the Specification.
With respect to the Examiner's claim differentiation explanation
(Ans. 11-12), Appellants argue that the Examiner misapplies the law
regarding claim differentiation and this is irrelevant with respect to the
"positioning" step. (Reply Br. 4).
Although we agree with Appellants that the Examiner's reliance upon
deleted claims does not evidence a differentiation under the doctrine of
claim differentiation, we find that the Specification further identifies:
This arrangement at a predetermined position and possibly in a
predetermined direction can be supported by a positioning
device, which guides and holds the imaging device, and in
particular its distal end. Alternatively, for example on the
reference surface, one or more optically recognizable marks can
be placed, so that the distal end of the imaging device is
positioned relative to the reference surface in such a way that the
marks lie at predetermined sites in the recorded image, for
example on the edge.
(Spec. ,r 33.) We further note that the Specification further discloses:
The arrangement of the distal end of the imaging device at
a predetermined position and possibly in a predetermined
direction improves the precision with which the optical
investigation system can be tested. For this purpose the
predetermined position and possibly the predetermined direction
correspond, for example, to the typical distance or to a maximum
distance between the distal end of the imaging device and the
observed object in an application foreseen for the optical
investigation system.
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(Spec. ,r 34).
As a result, we find Appellants have identified no specific definition
of the claim terminology with which to further limit the interpretation of the
express claim language, and Appellants' argument does not show error in
the Examiner's factual findings or conclusion of obviousness of
representative independent claim 1.
Appellants contend:
The scope of claim 1 is a completely separate question from
whether Y amamori teaches away from any modification
(including the proposed modification in view of Leiner) that
would have resulted in the positioning of the probe tip 201 of the
endoscope probe 200 "at a predetermined position relative to"
the disc 401 in the manner recited in the "positioning" step of
claim 1.
(Reply Br. 3--4 ).
We note "the prior art's mere disclosure of more than one alternative
does not constitute a teaching away from any of these alternatives because
such disclosure does not criticize, discredit, or otherwise discourage the
solution claimed .... " In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
( emphasis added). Appellants do not specifically identify any disclosure
in the Y amamori reference which criticizes, discredits, or otherwise
discourages the solution claimed. As a result, Appellants' argument does
not show error in the Examiner's factual findings or conclusion of
obviousness of representative independent claim 1.
Appellants further contend that the Examiner's new position is a new
ground of rejection and the Examiner fails to comply with the requirements
under 37 C.F.R. § 41.39. (Reply Br. 4). We note that Appellants did not
petition the Director with regards to the new claim differentiation theory.
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Therefore, we address the rejection as set forth in the Final Action and the
Examiner's Answer, as discussed above.
The Examiner maintains that Appellants are arguing the references
individually and that the Leiner reference was relied upon to teach and
suggest the clamp that would be useful to hold the probe in the correct
position once it is placed in the correct position. (Ans. 13-14). The
Examiner further maintains that Appellants' arguments regarding the
repositioning of the probe are speculative. (Ans. 14).
Appellants contend that the Y amamori reference implies repositioning
and the probe tip is inserted until the test pattern chart is correctly
reproduced on the monitor. (Reply Br. 8).
We agree with the Examiner and note that Appellants' argument with
regards to the positioning at a predetermined position implies some duration
of time during the illumination and determination steps or reading a totality
of a test pattern, but the language of independent claim 1 does not set forth
any limitations with regards to the totality of the operation of the
illumination and determination steps. Additionally, we find the language of
independent claim 1 is broad enough to read on a single positioning and
illumination of a part of a test pattern with a corresponding determination
thereafter. The mere fact that the Y amamori reference teaches repositioning
and additional illumination and reading of additional portions of the test
pattern does not differentiate the claimed "method for testing an optical
investigation system" and does not teach away from the claimed invention.
As a result, Appellant's arguments do not show error in the
Examiner's factual findings or conclusion of obviousness of representative
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independent claim 1 and independent claim 15 and the dependent claims not
separately argued.
CONCLUSION
The Examiner did not err in rejecting representative claim 1 based
upon obviousness under pre-AIA 35 U.S.C. § 103(a), and claims 3, 4, 7, 8,
11, 15-17, and 22-32, not separately argued, which we group with
independent claim 1.
DECISION
For the above reasons, we affirm Examiner's obviousness rejection of
claims 1, 3, 4, 7, 8, 11, 15-17, and 22-32 under pre-AIA 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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