Ex Parte Eino

Board of Patent Appeals and Interferences

Mar 10, 2009

10283281 (B.P.A.I. Mar. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte TERUO EINO
__________

Appeal 2008-3046
Application 10/283,281
Technology Center 3700
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Decided:1 March 10, 2009
__________

Before DEMETRA J. MILLS, LORA M. GREEN, and
FRANCISCO C. PRATS, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-3046
Application 10/283,281

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 3-5, and 7-15. We have jurisdiction
under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to an endoscopic system. Claim 1 is
representative of the claims on appeal, and reads as follows:
1. An endoscopic system comprising:
an endoscope to be used to perform endoscopic examination;
a first personal computer having a first display unit on which an
endoscopic image produced by said endoscope and a control panel image
through which said endoscope is controlled or operated are displayed the
first computer and the endoscope being at a first location; and
a second personal computer having a second display connected to said
personal computer over a communications network, the second display
displaying a first and second window, wherein:
the first window displaying the same endoscopic image and control
panel image as those displayed on said first display unit are displayed on the
second display unit included in said second personal computer; and
said endoscope can also be controlled or operated through the control
panel image displayed on said second display unit, wherein the second
window displays a program not for endoscope control chosen from the group
consisting of image management, browser, training manual, repair manual,
and advertising, can be opened on said second display unit, said second
window being displayed simultaneously on the second display unit with the
endoscopic image and control panel image displayed in the first display unit.

The Examiner relies on the following evidence:
Bacus US 6,396,941 B1 May 28, 2002
Griffith US 2002/0065064 A1 May 30, 2002
Wang US 2003/0050733 A1 Mar. 13, 2003
Corby, Jr. US 6,697,764 B2 Feb. 24, 2004

We affirm.
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Application 10/283,281

ISSUE
The Examiner concludes that claims 1, 4, 5, 7, 9, and 12-15 are
rendered obvious by the combination of Wang and Corby, Jr.; that claims 1,
3, 5, 7-10, 12, and 13 are rendered obvious by the combination of Wang and
Bacus; and that claim 11 is rendered obvious by the combination of Wang
and Corby, Jr. or Bacus, as further combined with Griffith.
Appellant contends that the references cited by the Examiner, either
alone or combination, teach or suggest the limitation that the first window
displaying the same endoscopic image and control panel image as those
displayed on said first display unit are displayed on the second display unit
included in said second personal computer.
Thus, the issue on Appeal is: Has Appellant demonstrated that the
Examiner erred in concluding that the references as combined teach or
suggest the limitation that the first window displaying the same endoscopic
image and control panel image as those displayed on said first display unit
are displayed on the second display unit included in said second personal
computer?

FINDINGS OF FACT
FF1 According to the Specification, an object of the invention “is to
provide an endoscopic system enabling a user to operate an endoscope in a
place different from an installation site of the endoscope as if to operate the
endoscope at the installation system.” (Spec. 2.)
FF2 The endoscopic system may include an examination personal
computer that is a personal computer adopted a general-purpose control
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means for controlling the endoscope, and a second personal computer
located at a center separate from the examination site that is connected to the
examination computer over a communications network such as a local area
network of the internet (id. at 6). Existing communications software, such as
NetMeeting developed by Microsoft Corp., may be used to allow the two
computers to communicate and to transfer data between the two computers
(id. at 16).
FF3 Figures 5A and 5B of the instant disclosure are reproduced below.

Figure 5A shows the monitor screen of the examination personal computer
included with the endoscopic system, and Figure 5B shows the monitor of a
second personal computer located at a second location, such as at a central
location (id. at 3).
FF4 As can be seen in Figure 5A, the monitor 21a of the examination
computer shows an endoscopic image 54a and a control panel image 55a (id.
at 17-18).
FF5 The monitor 53a of the center personal computer has a window 56
that shows the content of examination personal computer, that is, it shows an
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endoscopic image 54b and a control panel image 55b (id. at 18). The
monitor also has a second window 57 that is dedicated to the run of different
software, such as image management software (id. at 17).
FF6 In addition, the center personal computer can also control the
endoscopic system, and an endoscopic examination may be performed
remotely (id. at 19-20).
FF7 The Examiner rejects claims 1, 4, 5, 7, 9, and 12-15 under 35 U.S.C.
§ 103(a) as being obvious over the combination of Wang and Corby, Jr.
(Ans. 4). As Appellant does not argue the claims separately, we thus focus
our analysis on claim 1, and claims 4, 5, 7, 9, and 12-15 stand or fall with
those claims. 37 C.F.R. § 41.37(c)(1)(vii).
FF8 Wang is cited for teaching an endoscopic system with two personal
computers associated therewith, wherein the second personal computer
displays the same endoscopic image and control panel images as the first
personal computer, and wherein the endoscope can be controlled or operated
through the control image panel on said second display unit (Ans. 4-5).
FF9 The Examiner finds that both personal computers disclosed by Wang
receive the same signal from the endoscope via the communication network
and thus displaying the same endoscopic system, and thus both computers
display the same endoscopic image (id. at 5). According to the Examiner,
“Wang explicitly intends that the ‘second console . . .’ display a first
window, wherein the first window displays the same endoscopic image and
control panel image as those displayed on said first display unit.” (Id.)
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FF10 Wang teaches that the two consoles may be coupled through a
network, or may be configured to directly transmit information through the
communications network (Wang, ¶¶25-27).
FF11 Wang teaches that the system is useful wherein one console is used by
a teacher and the other is used by a pupil, allowing the teacher to take
control when desired, and allowing the teacher to instruct the pupil on the
use of the system (id. at ¶49).
FF12 The Examiner then finds that:
The second personal computer . . . having a second
display . . . disclosed by Wang is inherently capable of
displaying a second window. The computer is inherently
capable of displaying said second window on said second
display unit simultaneously with the endoscopic image and
control panel image displayed in the first display unit.
Computers are conventionally ascribed the capability of
running multiple applications in separate windows.

(Ans. 6.)
FF13 The Examiner notes that “Wang does not disclose that the second
window displays a program not for endoscope control chosen from the group
consisting of image management[,] browser, training manual, repair manual,
and advertising.” (Id.)
FF14 The Examiner cites Corby, Jr., for disclosing a training manual or
repair manual program for use with an endoscope (id.).
FF15 The Examiner concludes that:
[I]t would have been obvious to a person of ordinary skill in the
art to include repair manual data in a display window on an
endoscope computer. A skilled artisan would be motivated to
do so in order to provide the endoscopist with important
information relating to a procedure which is being undertaken.
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Computer software is conventionally supplemented by
referenda relating to its proper operation.

(Id.)
FF16 The Examiner rejects claims 1, 3, 5, 7-10, 12, and 13 under 35 U.S.C.
§ 103(a) as being obvious over the combination of Wang and Bacus (Ans.
9).
FF17 Wang is relied upon as above (Ans. 9-10 (see FF8-11)).
FF18 Bacus is relied upon for teaching an image management program
(Ans. 11).
FF19 The Examiner concludes that “it would have been obvious to a person
of ordinary skill in the art that an operating window within the computer
disclosed by Wang be dedicated to image browser software . . . in order to
‘view, reconstruct and manipulate . . . image tiles.’” (Id.)
FF20 The Examiner rejects claim 11 under 35 U.S.C. § 103(a) as being
obvious over the combination of Wang and Corby, Jr. or Bacus, as further
combined with Griffith (Ans. 13).

PRINCIPLES OF LAW
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
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KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, ___, 127 S. Ct. 1727, 1739
(2007).
If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and
a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his
or her skill.

Id. at ___, 127 S. Ct. at 1740. It is proper to “take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
Id. at ___, 127 S. Ct. at 1741. See also id. at ___, 127 S. Ct. at 1742 (“A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.”). “In determining whether obviousness is established by
combining the teachings of the prior art, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.” In re GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir. 1995) (internal
quotations omitted).

ANALYSIS
Appellant argues that the combination fails to disclose a limitation of
each of independent claims 1, 12, and 14—specifically, “a first display unit
on which an endoscope image produced by said endoscope and a control
panel through which said endoscope is controlled or operated and a second
display where the second display displays a duplicate image of the first
display as well as a second window which is not for endoscope control, the
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image of the first display on the second display is an exact copy of the first
display and displayed simultaneously therewith.” (App. Br. 8.)
In Wang, Appellant asserts, each console is a separate controller,
wherein the pending claims require that the second display displays an
image of the first display, and neither console displays the control panel for
the other console as required by the claims (id. at 10). In other words,
Appellant asserts, “each console and related computer [of Wang] is separate
and distinct in contrast to the claimed system wherein the second display . . .
includes a display of the first display . . . and a second window . . . .” (Id. at
11.) Thus, Appellant asserts, “two monitors displaying the same information
as shown in the Wang reference does not anticipate the pending claims.”
(Reply Br. 1.)
Corby, Jr., Appellant asserts, fails to cure the deficiencies of Wang, as
“Corby fails to disclose a second display including the endoscopic image
and control functionality of the first display.” (App. Br. 12.) Thus,
Appellant asserts, “neither Wang nor Corby discloses ‘the first window
displaying the same endoscopic image and control panel image as those
displayed on said first display unit are displayed on the second display unit
included in said second personal computer.’” (Id. at 13.)
Appellant’s arguments have been carefully considered, but are not
found to be convincing. Claim 1 requires that “the first window displaying
the same endoscopic image and control panel image as those displayed on
said first display unit are displayed on the second display unit included in
said second personal computer.” Thus, all that is required is that the second
display have the same image and control panel in a window as found in the
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first display. The fact that the consoles and computers of Wang are
independent controllers, and may be separate and distinct is irrelevant, as we
agree with the Examiner that Wang intends that the second console display
the same endoscopic image and control panel as on the first display unit
(FF9). Such a situation is supported by Wang’s teaching that system is
useful for a teacher pupil situation (FF11), as the teacher can follow on the
second console what the pupil is doing on the first console if the images are
the same. Moreover, Appellant explicitly admits that Wang discloses “two
monitors displaying the same information.” (Reply Br. 1.)
Thus, all that is missing from Wang, as noted by the Examiner, is
opening a second window on the second display (FF13). We agree with the
Examiner, however, and Appellant does not present any evidence or
scientific reasoning to the contrary, that personal computers are inherently
capable of opening a second window concurrently with the first window
showing the same endoscopic image and control panel image as those
displayed on said first display unit (FF12). Thus, it would have been
obvious to open a second window, such as a window showing a training
manual for the system, in one of the second display unit of Wang (see, e.g.,
FF15).
As to the combination of Wang and Bacus, Appellant reiterates their
arguments as to Wang (App. Br. 13-14). Bacus, Appellant asserts, does not
remedy the deficiencies of Wang, as Bacus was only cited for its disclosure
of its ability to share an image with another display unit (id. at 14).
We do not find Appellant’s arguments convincing for the reasons set
forth above with respect to the combination of Wang and Corby, Jr.
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As Appellant does not provide separate arguments as to the rejection
of claim 11 as being obvious over the combination of Wang and Corby, Jr.
or Bacus, as further combined with Griffith, that rejection is affirmed for the
same reasons set forth above.

CONCLUSIONS OF LAW
We conclude that Appellant has not demonstrated that the Examiner
erred in concluding that the references as combined teach or suggest the
limitation that the first window displaying the same endoscopic image and
control panel image as those displayed on said first display unit are
displayed on the second display unit included in said second personal
computer.
The rejection of claims 1, 4, 5, 7, 9, and 12-15 under 35 U.S.C.
§ 103(a) as being obvious over the combination of Wang and Corby, Jr.; the
rejection of claims 1, 3, 5, 7-10, 12, and 13 under 35 U.S.C. § 103(a) as
being obvious over the combination of Wang and Bacus; and the rejection of
claim 11 under 35 U.S.C. § 103(a) as being obvious over the combination of
Wang and Corby, Jr. or Bacus, as further combined with Griffith; are
therefore all affirmed.

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Appeal 2008-3046
Application 10/283,281

TIME LIMITS
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

cdc

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