Ex Parte Chatenever et al

Board of Patent Appeals and Interferences

Oct 31, 2011

10034273 (B.P.A.I. Oct. 31, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/034,273 12/28/2001 David Chatenever 02580-P0006B 9457
24126 7590 10/31/2011
ST. ONGE STEWARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
EXAMINER
HENN, TIMOTHY J
ART UNIT PAPER NUMBER
2622
MAIL DATE DELIVERY MODE
10/31/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DAVID CHATENEVER and MARC R. AMLING
____________________

Appeal 2009-009888
Application 10/034,2731
Technology Center 2600
____________________

Before MAHSHID D. SAADAT, MARC S. HOFF, and BRADLEY W.
BAUMEISTER, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-4, 6, and 8-24.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 The real party in interest is Karl Storz Imaging, Inc.
2 Claims 5, 7, and 25-32 have been cancelled.
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Appellants’ invention concerns a video imaging system that includes a
camera head for transmitting image data to a camera control unit (CCU), a
CCU for receiving and processing the image data into a usable format, a
storage device accessible by the CCU and having information stored
thereon, the information being used by the CCU for selecting hardware in
the CCU to process the image data (Spec. ¶ [0019]).
Claims 1 and 22 are exemplary of the claims on appeal:
1. A video imaging system, comprising:

a camera head transmitting image data;

a camera control unit receiving and processing said image data from
said camera head, said camera control unit having a detachable configurable
component;

said detachable configurable component including a processor;

a storage device accessible by said camera control unit; and

a software program stored on said storage device;

said camera control unit receiving said software program and
overwriting an existing software program on said processor, said processor
configuring said detachable configurable component for processing the
image data, wherein said detachable configurable component is completely
removable from said camera control unit such that a different detachable
configurable component is installable in said camera control unit.

22. A video imaging system, comprising:

a camera head transmitting image data;
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a camera control unit receiving and processing the image data from
said camera head;

said camera control unit having a detachable configurable component
comprising a processor; and

a software program executing on said processor and overwriting an
existing software program on said processor, said processor configuring said
detachable configurable component in said camera control unit to process
the image data;

wherein said detachable configurable component is completely
removable from said camera control unit such that a different detachable
configurable component is installable in said camera control unit.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Nakamura US 5,627,583 May 6, 1997
Steinberg US 6,750,902 B1 June 15, 2004
(filed Dec. 20, 1999)
Mochida US 2004/0141054 A1 July 22, 2004
(filed Apr. 7, 2000)

Claims 1-4, 6, and 8-21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Mochida in view of Nakamura.
Claims 22-24 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Steinberg.3

3 The Examiner states that the rejection of claims 22-24 “was made under 35
USC §103(a) due to a clerical error and the rejection should have been made
under 35 USC § 102(e)” (Ans. 15). We note, however, that in the “Grounds
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Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed Oct. 24, 2008), the Reply Brief (“Reply Br.,” filed Mar.
20, 2009), and the Examiner’s Answer (“Ans.,” mailed Jan. 22, 2009) for
their respective details.
ISSUES
With respect to claim 1, Appellants argue, inter alia, that neither
Mochida nor Nakamura teaches a detachable configurable component
(DCC) including a processor that configures the DCC (App. Br. 5).
Contrary to the Examiner’s finding, Appellants argue that Mochida’s FPGA
does not configure itself, but requires a control unit 44, which resides on a
different “substrate,” for configuration (App. Br. 6).
With respect to claim 22, Appellants argue that Steinberg teaches that
either camera 12, or PC 14, may be connected to communication device 10,
but not both simultaneously. Consequently, Appellants argue, Steinberg
does not teach that all elements corresponding to claim limitations are
connected simultaneously, meaning that the Examiner has failed to establish
a prima facie case of obviousness (App. Br. 13).
Appellants’ contentions, and the Examiner’s findings, present us with
the following issues:

of Rejection” section of the Answer, claims 22-24 are rejected under § 103.
Further, there is nothing in the Answer to indicate that a new ground of
rejection has been entered. Therefore, we will continue to treat claims 22-24
as standing rejected under 35 U.S.C. § 103(a).
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1. Does Mochida or Nakamura teach or fairly suggest a detachable
configurable component including a processor, said processor configuring
said detachable configurable component for processing the image data, as
claim 1 requires?
2. Does Steinberg teach or fairly suggest a camera control unit having
a detachable configurable component comprising a processor, the detachable
configurable component being completely removable from said camera
control unit, as claim 22 requires?
FINDINGS OF FACT
Mochida
1. Mochida teaches that “control unit 44 loads any data into the FPGA
452 according to [an] identification number” (Spec. ¶ [0237]).
Steinberg
2. Steinberg teaches that camera communication port 20 is “for
interconnection to either the camera 12 as indicated by cable 22 to port 24,
or to the PC 14 through cable 26. The dashed lines 28 are to indicate that
either the camera 12 or PC 14 can be connected to port 20” (col. 4, ll. 15-
20).
PRINCIPLES OF LAW
“A rejection for anticipation under section 102 requires that each and
every limitation of the claimed invention be disclosed in a single prior art
reference.” See In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007)
(quoting In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994)).
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Anticipation of a claim requires a finding that the claim at issue reads on a
prior art reference. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346
(Fed. Cir. 1999) (quoting Titanium Metals Corp. v. Banner, 778 F.2d 775,
781 (Fed. Cir. 1985)).
Section 103(a) forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, (3) the level of skill in
the art, and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550
U.S. at 407, (“While the sequence of these questions might be reordered in
any particular case, the [Graham] factors continue to define the inquiry that
controls.”)
ANALYSIS
CLAIMS 1-4, 6, AND 8-21
Independent claims 1 and 17 recite a camera control unit having a
detachable configurable component (DCC) including a processor, the
processor configuring said DCC for processing the image data.
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The Examiner finds that Mochida’s expansion substrate 451, which
includes a field programmable gate array (FPGA), may be considered the
DCC, and that the FPGA configures the expansion substrate to process
image data in a certain manner (Ans. 13; see Mochida Fig. 28).
We disagree with the Examiner’s findings. In order to anticipate the
claim under the interpretation advanced by the Examiner, in particular the
limitation “said processor configuring said detachable configurable
component,” FPGA 452 of Mochida must configure something on expansion
substrate 451. The Examiner has not identified any teaching in Mochida that
supports such a finding. FPGA 452 configures neither itself nor any other
component. Rather, we agree with Appellants that control unit 44, located
on the main substrate, loads data into the FPGA according to an
identification number (FF 1). The Examiner does not identify any teaching
in Nakamura to remedy this deficiency of Mochida.
Because neither Mochida nor Nakamura teaches or fairly suggests all
of the limitations of independent claims 1 and 17, we find that the Examiner
erred in rejecting claims 1-4, 6, and 8-21 under § 103. We will not sustain
the Examiner’s rejection.
CLAIMS 22-24
Independent claim 22 recites, inter alia, a camera head and a camera
control unit processing data from the camera head, the camera control unit
having a detachable configurable component (DCC) comprising a processor,
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the DCC being completely removable from the camera control unit such that
a different DCC is installable in the camera control unit.
The Examiner finds that item 12 meets the camera head, camera
control unit corresponds to item 14, and the detachable configurable
component comprising a processor corresponds to item 10 (Ans. 10). In the
Response to Arguments section, the Examiner concedes that Steinberg’s
DCC (item 10) cannot be simultaneously connected to both the camera
control unit and the camera through port 20, but posits that Steinberg teaches
a second communication link 44 for communicating (wirelessly) between
the camera 12 and the DCC (10) (Ans. 16).
While we agree with the Examiner that Steinberg teaches wireless
communication between antenna/emitter 46 and transceiver 44 as an
alternative to a wired connection to the camera, we agree with Appellants
that Steinberg nowhere teaches that camera 12 can be simultaneously
connected to device 10 and PC 14 (Reply Br. 5). Steinberg teaches that
camera communication port 20 is “for interconnection to either the camera
12 as indicated by cable 22 to port 24, or to the PC 14 through cable 26. The
dashed lines 28 are to indicate that either the camera 12 or PC 14 can be
connected to port 20” (FF 2). Although Steinberg teaches that camera 12
may be connected wirelessly to communication device 10, Steinberg does
not disclose that such wireless communication allows for any qualitatively
different operation of the system than the wired operation disclosed at
column 4. We therefore find that the disclosure of a wireless connection
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alternative for camera 12 does not mean that PC 14 and camera 12 may be
simultaneously connected to communication device 10.
Because Steinberg does not teach or fairly suggest all of the
limitations of independent claim 22, we find that the Examiner erred in
rejecting claims 22-24 under § 103. We will not sustain the Examiner’s
rejection.
CONCLUSION
1. Neither Mochida nor Nakamura teaches or fairly suggests a
detachable configurable component including a processor, said processor
configuring said detachable configurable component for processing the
image data, as claim 1 requires.
2. Steinberg does not teach or fairly suggest a camera control unit
having a detachable configurable component comprising a processor, the
detachable configurable component being completely removable from said
camera control unit, as claim 22 requires.

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ORDER
The Examiner’s rejection of claims 1-4, 6, and 8-24 is reversed.

REVERSED

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