Ex Parte Irion et al

Patent Trial and Appeal Board

Feb 28, 2013

11361484 (P.T.A.B. Feb. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KLAUS M. IRION, ANDRE EHRHARDT,
REINHOLD BAUMGARTNER, HERBERT STEPP, and
THOMAS PONGRATZ
____________

Appeal 2010-010921
Application 11/361,484
Technology Center 3700
____________

Before LINDA E. HORNER, PHILLIP J. KAUFFMAN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-18. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.
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CLAIMED SUBJECT MATTER
Claim 1 is the only independent claim on appeal. Claim 1,
reformatted and reproduced below, is representative of the subject matter on
appeal.
1. A fluorescence diagnosis system,
comprising
a viewing system,
at least one light source, and
a camera system for recording an image
taken by said viewing system, said at least one
light source being able to be operated
in a first operating mode in which white
light is generated, leading to a white light image,
in a second operating mode in which a first
fluorescence excitation light of a first excitation
wavelength range is generated, producing a
fluorescence image in a visible range, and
in a third operating mode in which a second
fluorescence excitation light of a second excitation
wavelength range is generated, producing a
fluorescence image in a NIR range,
said camera system is sensitive at least in
said visible range and said NIR range,
said fluorescence diagnosis system further
comprising an image processing system via which
said fluorescence image in said NIR range can be
converted into a visible image,
wherein said fluorescence diagnosis system
is adapted to simultaneously display the white light
image, the fluorescence image in a visible range,
and the fluorescence image in a NIR range as
separate images on the viewing system.

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REJECTIONS
The following Examiner’s rejections are before us for review.
Claims 1-11, 13, 14, 17, and 18 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Cline (US 6,821,245 B2, iss. Nov. 23, 2004) and Zeng
(US 2004/0225222 A1, pub. Nov. 11, 2004).1,2,3
Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Cline, Zeng, and Weinberger (Andreas W.A. Wineberger, et al., Persistent
indocyanine green (ICG) fluorescence 6 weeks after intraocular ICG
administration for macular hole surgery, Graefe’s Arch. Clin. Exp.
Ophthalmol., pp. 388-390, Springer-Verlag (2001)).
Claims 15 and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Cline, Zeng, and Ben-Haim (US 6,200,310 B1, iss. Mar.
13, 2001).
OPINION
The Examiner finds Cline discloses everything recited in claim 1
including a fluorescence diagnosis system having a viewing system, and
first, second, and third operating modes, except Cline does not disclose that
its fluorescence diagnosis system is adapted to simultaneously display the

1 The Answer at page 4 states that the claims are rejected “as being
anticipated by Cline.” Since the claims are rejected under section 103 and
not section 102 it is understood that the rejection is based on obviousness
and not anticipation. Accordingly, the proper phrase is “unpatentable over
Cline” and not “anticipated by Cline.”
2 We have consolidated the Examiner’s rejection of claims 1-4, 7-11, 13, 14,
17 and 18 set forth on page 4 of the Answer and the Examiner’s rejection of
claims 5 and 6 set forth on page 7 of the Answer since both rejections are
based on the combination of Cline and Zeng.
3 The Examiner includes Sage (US 4,600,302, iss. Jul. 15, 1986) as extrinsic
evidence for the rejection of claim 11. Ans. 4, 6.
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white light image from the first operating mode, the fluorescence image in a
visible range from the second operating mode, and the fluorescence image in
a NIR range from the third operating mode as separate images on the
viewing system. Ans. 4-5. To remedy this deficiency with regard to the
rejection of claim 1, the Examiner turns to Zeng’s disclosure and finds that it
teaches “displaying images overlaid or as separate images as an alternative
expedient in the art.” Ans. 5 (citing Zeng, para. [0054]). The Examiner
concludes that “[i]t would have been obvious to one of ordinary skill in the
art to modify the display of Cline[] to present the images as overlaid or as
separate images since this is taught by Zeng[] to be an alternative expedient
in the art of displaying.” Id.
The Appellants concede that Cline’s light source 40 has three
operating modes. App. Br. 6. The first operating mode uses white light.
The second operating mode, the “fluorescence/fluorescence” mode, and the
third operating mode, the “fluorescence/reflectance” mode, are similar in
that a fluorescence image is normalized. App. Br. 6-7. The Appellants point
out that normalization helps distinguish “changes in the signal strength that
are due to pathology and those that are due to imaging geometry and
shadows.” App. Br. 6 (quoting Cline, col. 7, ll. 31-35), see Reply Br. 3. The
Appellants also point out that: in the second operating mode, normalizing a
first fluorescence image occurs by acquiring a second fluorescence image
that is not significantly affected by tissue pathology as a reference signal and
then superimposing the first and second fluorescence images; and, in the
third operating mode, normalizing a fluorescence image occurs by acquiring
a reflected light image that does not detect tissue pathology and then
superimposing the first fluorescence image and the reflected light image.
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App. Br. 6-7 (citing Cline, col. 7, ll. 35-47). The Appellants contend that in
each of the second and third operating modes the images acquired to
normalize the first fluorescence image “would provide no additional useful
information to the surgeon when displayed by themselves,” and as such, one
of ordinary skill in the art would not have reason to modify Cline to display
the normalizing images separately. See App. Br. 7-9. Moreover, the
Appellants contend that displaying both images separately “would be a
waste of display space or, worse, confusing to the operator.” Reply Br. 2-3.
In response, the Examiner reasons that viewing Cline’s images
separately “could assist with images calibration as Cline teaches the
importance of constant gain ratio for the video system calibration (Col. 14,
Line 33-47).” Ans. 11. We agree with the Examiner’s reasoning. Cline
describes the function of the gain ratio “is to provide the operator with the
best combination of sensitivity (ability to detect suspect tissue) and
specificity (ability to discriminate correctly)” and that “[t]here is an optimal
gain ratio for which tissue suspicious for early cancer in a fluorescence
image will appear as a distinctly different color than normal tissue.” Cline,
col. 7, ll. 59-65. The Appellants do not cogently explain why the
Examiner’s reasoning is in error.
The Appellants also contend that Cline teaches away from
simultaneously viewing separate images, since the heart of Cline’s invention
is to “display only the overlaid primary and normalizing images.” See Reply
Br. 3-4, App. Br. 9. One of ordinary skill in the art would understand that a
purpose of Cline is to display a superimposed image, not that it would be
undesirable to simultaneously display separate images along with the
superimposed image. See Ans. 10. Zeng teaches that it is desirable to
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simultaneously display separate images along with the superimposed image.
Ans. 10-11 (citing Zeng, paras. [0055], [0065]); see App. Br. 7 (the
Appellants concede that “Zeng discloses a multi-modal imaging system, and
discloses that white light images and fluorescence images may be displayed
on different partitions on the same viewing monitor.” (citing Zeng, para.
[0054])); see also In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). As such,
the Appellants’ contention is not persuasive.
For the above reasons, we agree with the Examiner’s conclusion of
obviousness. Thus, the rejection of claim 1, and its dependent claims 2-11,
13, 14, 17, and 18, as unpatentable over Cline and Zeng is sustained.
The Appellants have not provided further arguments for the rejection
of claim 12 as unpatentable over Cline, Zeng, and Weinberger and the
rejection of claims 15 and 16 as unpatentable over Cline, Zeng, and Ben-
Haim. Accordingly, the Appellants rely on the arguments presented for the
Examiner’s rejection of claim 1 for these grounds of rejection.
For the same reasons we have sustained the rejection of claim 1, we
likewise sustain the rejection of claim 12 as unpatentable over Cline, Zeng,
and Weinberger and the rejection of claims 15 and 16 as unpatentable over
Cline, Zeng, and Ben-Haim.
DECISION
We AFFIRM the rejections of claims 1-18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED
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