Ex Parte KAKU et al

Patent Trial and Appeal Board

Jan 14, 2019

13934419 (P.T.A.B. Jan. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/934,419 07/03/2013
127226 7590 01/16/2019
BIRCH, STEW ART, KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
Toshihiko KAKU
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.
1259-0554 PUS 1 6539
EXAMINER
HOFFMAN, JOANNE M
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
01/16/2019 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOSHIHIKO KAKU and JIN MURAY AMA
Appeal2017-009608
Application 13/934,419 1
Technology Center 3700
Before FRANCISCO C. PRATS, ELIZABETH A. LA VIER, and DAVID
COTTA, Administrative Patent Judges.
COTTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims directed to
an endoscope system. The Examiner rejected the claims on appeal under 35
U.S.C. § l 12(b) as indefinite and under 35 U.S.C. § 103(a) as obvious.
We reverse.
1 According to the Appellants, Fujifilm Corp. is the real party in interest.
App. Br. 1.
Appeal2017-009608
Application 13/934,419
STATEMENT OF THE CASE
Claims 1 and 4-13 are on appeal. Claim 1 is illustrative and reads as
follows:
1. An endoscope system comprising:
a light source for applying special illumination light to a
body portion, said special illumination light having a wavelength
at which oxyhemoglobin and deoxyhemoglobin have different
absorption coefficients;
an imaging device having a normal image sensor and a
high-sensitivity image sensor whose sensitivity is higher than
that of said normal image sensor, for imaging reflected light of
said special illumination light from said body portion;
a processor configured for:
measuring a reflected light amount of said special
illumination light from said body portion;
choosing which one of said normal and high-sensitivity
image sensors to use for imaging said reflected light of said
special illumination light from said body portion in accordance
with said measured reflected light amount of said special
illumination light; and
producing a special image depicting an oxygen saturation
level of blood based on said signal obtained by imaging said
reflected light of said special illumination light from said body
portion with use of selected one of said normal and high-
sensitivity image sensors
wherein
said processor measures said reflected light amount of said
special illumination light by using a pixel value outputted from
one of said normal and high-sensitivity image sensors, and said
processor chooses which one of said normal and high-sensitivity
image sensors to use for imaging said reflected light of said
special illumination light from said body portion based on said
reflected light amount;
when said normal image sensor is used, said processor
stops using said normal image sensor and starts using said high-
sensitivity image sensor for imaging said reflected light of said
special illumination light from said body portion, if said pixel
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Application 13/934,419
value corresponding to said reflected light amount is less than a
first sensor selection threshold value; and
when said high-sensitivity image sensor is used, said
processor stops using said high sensitivity image sensor and
starts using said normal image sensor for imaging said reflected
light of said special illumination light from said body portion, if
said pixel value corresponding to said reflected light amount is
more than a second sensor selection threshold value, wherein
said second sensor selection threshold value is larger than
said first sensor selection threshold value.
Claims App'x 1.
The claims stand rejected as follows.
Claims 1 and 4-12 were rejected under 35 U.S.C. § l 12(b) as
indefinite.
Claims 1, 5, 11, and 12 were rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Inoue,2 Takasugi,3 Ishikawa,4 and
Kemeny.5
Claims 4, 8, and 9 were rejected under 35 U.S.C. § 103(a) as obvious
over the combination of Inoue, Takasugi, Ishikawa, Kemeny, and Midgley. 6
2 Inoue, US Patent No. 5,233,416, issued Aug. 3, 1993 ("Inoue").
3 Takasugi et al., US Patent No. 5,512,940, issued Apr. 30, 1996
("Takasugi").
4 Ishikawa et al., US Patent Publication No. 2003/0067530 Al, published
Apr. 10, 2003 ("Ishikawa").
5 Kemeny et al., Multiresolution Image Sensor, 7(4) IEEE TRANSACTIONS
ON CIRCUITS AND SYSTEMS FOR VIDEO TECHNOLOGY (1997) ("Kemeny").
6 Midgley et al., US Patent No. 6,642,955 Bl, issued Nov. 4, 2003
("Midgley").
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Claims 6 and 10 were rejected under 35 U.S.C. § 103(a) as obvious
over the combination of Inoue, Takasugi, Ishikawa, Kemeny, and
Padmanabhan. 7
Claim 7 was rejected under 35 U.S.C. § 103(a) as obvious over the
combination of Inoue, Takasugi, Ishikawa, Kemeny, and Mansurov. 8
Claim 13 was rejected under 35 U.S.C. § 103(a) as obvious over the
combination of Inoue, Takasugi, Ishikawa, Kemeny, and Backman.9
INDEFINITENESS
For claims under examination, a claim is indefinite when it contains
words or phrases whose meaning is unclear, i.e., "ambiguous, vague,
incoherent, opaque, or otherwise unclear in describing and defining the
claimed invention." In re Packard, 751 F.3d 1307, 1310-13, 1322 (Fed. Cir.
2014); see also MPEP § 2173.02(1) (Rev. 07.2015, Nov. 2015) (advising
examiners that a rejection for indefiniteness is appropriate "after applying
the broadest reasonable interpretation to the claim, if the metes and bounds
of the claimed invention are not clear").
The Examiner finds that claims 1 and 4-13 are indefinite on two
bases. 10 First, the Examiner finds that the claims are indefinite because it is
7 Padmanabhan et al., US Patent Publication No. 2005/0105077 Al,
published May 19, 2005 ("Padmanabhan").
8 Mansurov, Understanding ISO -A Beginner's Guide, photographylife
(2009) ("Mansurov").
9 Backman et al., US Patent No. 6,624,890 B2, issued Sept. 23, 2003
("Backman").
10 In the Examiner's Answer, the Examiner withdrew the portion of the
indefiniteness rejection finding claims 1 and 11-12 indefinite on the basis of
their use of the language "wherein said light amount measurement section
measures said reflected light amount of said special illumination light
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Application 13/934,419
not clear what is meant by "special illumination light" as used in claim 1,
and how it differs from "normal illumination light." Ans. 2-3, 19-20.
Second, the Examiner finds that it is not clear what is meant by "normal and
high-sensitivity image sensors." Id. at 20. We are not persuaded.
With respect to the Examiner's first basis for finding the claims
indefinite, the Specification provides clear guidance on what is meant by the
term "special illumination light." In describing the prior art, it states:
There is known an endoscope system that carries out not only
normal observation for imaging an internal body portion under
irradiation with white light (normal light), but also special
observation for imaging the internal body portion under
irradiation with specific narrow band light (special light).
Spec. 1: 17-23. Thus, normal light is defined to be "white light" and special
light is defined to be a "specific narrow band [ of] light." Further, in
describing an endoscope system according to the present invention, the
Specification states:
The lighting section applies special illumination light to a body
portion. The special illumination light has a wavelength at which
oxyhemoglobin and deoxyhemoglobin have different absorption
coefficients.
Id. at 3:15-19. Taking these two disclosures together, it is clear that
"normal light" is white light and "special illumination light" is a specific
narrow band of light, in this case, one having a wavelength at which
oxyhemoglobin and deoxyhemoglobin have different absorption
coefficients, as recited in claim 1. Accordingly, we do not agree with the
Examiner that the term "special illumination light" as used in claim 1 is
indefinite.
repeatedly in certain cycles" because the claims were amended to no longer
include this language. Ans. 19.
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With respect to the Examiner's second basis for finding the claims
indefinite, the claim itself defines the term "high sensitivity sensor" as a
sensor "whose sensitivity is higher than that of said normal image sensor."
We recognize that the term "high sensitivity" is a relative term. However,
relative terms are not necessarily indefinite. See Interval Licensing LLC v.
AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014) ("Claim language
employing terms of degree has long been found definite where it provided
enough certainty to one of skill in the art when read in the context of the
invention."). Here, it is not necessary that the claims quantify how much
more sensitive the high sensitivity sensor is than the normal sensor. Rather,
in the context of the claimed endoscope system, it is sufficient that the high
sensitivity sensor is more sensitive than the normal sensor.
OBVIOUSNESS
The Examiner applies the same underlying combination of Inoue,
Takasugi, Ishikawa, and Kemeny in all five obviousness rejections.
Accordingly, the same issue is dispositive with respect to all five rejections.
The Examiner finds that Inoue discloses most of the elements of claim
1. The Examiner acknowledges, however, that Inoue does not disclose a
processor that chooses between normal and high-sensitivity sensors based on
an amount of reflected light. Ans. 12. For this element, the Examiner relies
on paragraph 18 of Ishikawa, which reads as follows:
The image formation apparatus comprises: a light emitting
device which outputs a light beam; a light beam scanning
member which allows a light beam output from this light
emitting device to scan toward a scanned face so that the light
beam scans the scanned face in a main scanning direction; a pair
of sensors which are arranged on the scanned face or a position
equivalent thereto, detect a light beam scanned by the light beam
scanning member, and output an electric signal; an integrator
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circuit which integrates a difference between electric signals
output from each of the pair of sensors; a first comparator circuit
which compares a value integrated in this integrator circuit with
a first threshold; a second comparator circuit which compares a
value integrated in the integrator circuit with a second threshold
smaller than the first threshold; and a control section which
specifies first and second thresholds to the first and second
comparator circuits, when the comparator circuits yield a normal
comparison result, determines an output value of the integrator
circuit according to magnitude relation between the first and
second thresholds, and, when the comparator circuits yield an
abnormal comparison result, determines whether the offset has
an effect on the abnormal comparison result based on the
predetermined maximum offset amount.
Ishikawa ,i 18. Based on this disclosure, the Examiner concludes that it
would have been obvious "to modify the endoscope imaging means
disclosed by Inoue to further include the threshold values and controller with
comparator circuitry as taught by Ishikawa et al ... in order to understand
the maximum offset amount allowed for imaging." Ans. 13. We are not
persuaded.
We do not read paragraph 18 of Ishikawa as teaching a controller that
chooses a sensor. Rather, we understand it to disclose a pair of sensors that
generate an electric signal which is output to an integrator circuit. Ishikawa
,i 18. The integrator circuit uses the signal from both sensors to integrate a
difference between the two signals. Id. We discern no point at which
Ishikawa chooses to use one of the pair of sensors over the other. Rather,
Ishikawa uses both sensors and determines a difference between their
signals. Id.
In addition, the sensors in Ishikawa are not used for imaging and do
not detect an amount of reflected light. Rather, the sensors in Ishikawa are
used to determine the position of a beam of light in an apparatus such as a
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digital copier or laser printer. See, e.g., id. ,i 144 ("A pair of sensors SP and
SO are patterns used for detecting a light beam's passage position"); see
generally id. ,i,i 1, 140-148, and Fig. 4.
As Ishikawa does not disclose a processor that chooses between
normal and high-sensitivity sensors based on an amount of reflected light,
the Examiner's proposed basis for modifying the endoscope of Inoue to
arrive at the claimed endoscope system is not supported by the record. As
each of the obviousness rejections relies on Inoue and Ishikawa for this
element, we reverse all five of the Examiner's obviousness rejections.
SUMMARY
In summary, we reverse the Examiner's rejection of claims 1 and 4-12
under 35 U.S.C. § l 12(b) as indefinite.
We reverse the Examiner's rejection of claims 1, 5, 11, and 12 under
35 U.S.C. § 103(a) as obvious over the combination of Inoue, Takasugi,
Ishikawa, and Kemeny.
We reverse the Examiner's rejection of claims 4, 8, and 9 under 35
U.S.C. § 103(a) as obvious over the combination of Inoue, Takasugi,
Ishikawa, Kemeny, and Midgley.
We reverse the Examiner's rejection of claims 6 and 10 under 35
U.S.C. § 103(a) as obvious over the combination of Inoue, Takasugi,
Ishikawa, Kemeny, and Padmanabhan.
We reverse the Examiner's rejection of claim 7 under 35 U.S.C.
§ 103(a) as obvious over the combination of Inoue, Takasugi, Ishikawa,
Kemeny, and Mansurov.
We reverse the Examiner's rejection of claim 13 under 35 U.S.C.
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§ 103(a) as obvious over the combination of Inoue, Takasugi, Ishikawa,
Kemeny, and Backman.
REVERSED
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