Ex Parte Kazakevich et al

Patent Trial and Appeal Board

Feb 25, 2019

13709249 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/709,249 12/10/2012
100935 7590 02/27/2019
Dickinson Wright
Smith & Nephew, Inc.
7000 W. William Cannon Drive
Building 1
Austin, TX 78735
FIRST NAMED INVENTOR
Yuri Kazakevich
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.
PT-3538-US-DIV
73888-6500
CONFIRMATION NO.
1140
EXAMINER
EDWARDS, JAMES A
ART UNIT PAPER NUMBER
2448
NOTIFICATION DATE DELIVERY MODE
02/27/2019 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):
dwpatents@dickinsonwright.com
Patents.Dept. US@smith-nephew.com
smith-nephew _pair@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YURI KAZAKEVICH and TUNG VAN LE
Appeal 2018-006627
Application 13/709,249 1
Technology Center 2400
Before CARLA M. KRIVAK, HUNG H. BUI, and
JON M. JURGOV AN, Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1 and 3-14, which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM. 2
1 According to Appellants, the real party in interest is Smith & Nephew, Inc.
App. Br. 3.
2 Our Decision refers to Appellants' Appeal Brief ("App. Br.") filed January
16, 2018; the Reply Brief ("Reply Br.") filed June 12, 2018; Examiner's
Answer ("Ans.") mailed April 30, 2018; Final Office Action ("Final Act.")
mailed July 28, 2017; and original Specification ("Spec.") filed December
10,2012.
Appeal2018-006627
Application 13/709,249
STATEMENT OF THE CASE
Appellants' invention relates to an endoscopic imaging system
including components that "are freely attachable and detachable from each
other." Spec. ,r 8; Title. Appellants' endoscopic imaging system (500)
includes an endoscope (120), a light source assembly (LED endocoupler
125) detachably coupled to the endoscope (120), and an imaging unit (505)
detachably coupled to the light source assembly (125) via a coupling means
140, the imaging unit receiving light through the endoscope reflected from a
region of interest, shown in Figure 5, as reproduced below. Spec. ,r,r 11-12,
14--15, 17, 35, and 49-50, Fig. 5; Abstract.
120
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Figure 5 shows an endoscopic imaging system having an imaging unit
with a wireless transceiver. Spec. ,r,r 31, 49-50.
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Appeal2018-006627
Application 13/709,249
Appellants' endoscopic imaging system also includes a rotational joint
(128) that allows an LED assembly (305) (of the light source assembly
(125)) and the endoscope (120) "to rotate together as a unit about axis 145,
via the use of rotation handle 126, relative to the remainder of LED
endocoupler 125 and imaging unit 130" shown in Figure 3, as reproduced
below. See Spec. ,r 38, Fig. 3.
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Figure 3 shows a cross-sectional view of an LED endocoupler of the
endoscopic imaging system. Spec. ,r 29.
Independent claim 1, reproduced below, is exemplary of the subject
matter on appeal.
1. An endoscopic imaging system comprising:
an endoscope;
a light source assembly releasably coupled directly to the
endoscope, the light source assembly configured to create and
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Appeal2018-006627
Application 13/709,249
transmit light to the endoscope for illuminating a region of
interest;
an imaging unit releasably coupled directly to the light
source assembly, the imaging unit configured to receive light
through the endoscope reflected from the region of interest;
wherein the imaging unit comprises a wireless
transceiver that receives and transmits control signals and
image data representing the image of the region of interest
wirelessly from and to an external unit,
wherein the imaging unit is configured to remain
stationary while the endoscope and light source assembly rotate
together about a shared axis.
App. Br. 20-22 (Claims App.).
Evidence Considered
Thompson US 2002/0028986 Al Mar. 7, 2002
Kazakevich US 2003/0050534 Al Mar. 13, 2003
Rovengno US 2005/0018042 Al Jan.27,2005
MacKinnon et al. US 2005/0228231 Al Oct. 13, 2005
("Mac Kinnon")
Hirose et al. US 2007/0213586 Al Sept. 13, 2007
("Hirose")
Examiner's Rejections
(1) Claims 1, 3-7, 9-12, and 14 stand rejected under
35 U.S.C. § I03(a) as being unpatentable over MacKinnon, Kazakevich, and
Thompson. Final Act. 4--13.
(2) Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
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Appeal2018-006627
Application 13/709,249
unpatentable over MacKinnon, Kazakevich, Thompson, and Hirose. 3 Final
Act. 13-14.
(3) Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over MacKinnon, Kazakevich, Thompson, and Rovegno. 4
Final Act. 14--15.
ANALYSIS
Claims 1. 3-7. 9-12. and 14
With respect to independent claim 1, the Examiner finds
MacKinnon's color endoscopy system, shown in Figure 1, teaches an
endoscopic imaging system including an endoscope (20), a light source
assembly (computer controlled light source (CCLS) 10) releasably coupled
directly to the endoscope, and an imaging unit (image capture device
described in MacKinnon's paragraph 32) releasably coupled directly to the
light source assembly, the imaging unit comprising a wireless transceiver, as
3 The Final Office Action rejects claim 8 as obvious over MacKinnon,
Kazakevich, and Hirose, without listing Thompson. Final Act. 13. The
Examiner acknowledges "[t]he final office action contains a typo that did not
show the Thompson reference" in the rejection of claim 8. Ans. 7-8. We
find the Examiner's oversight and typo to be harmless error and consider
claim 8 to be rejected under§ 103(a) over MacKinnon, Kazakevich,
Thompson, and Hirose. Further discussion of claim 8 is presented in our
analysis below.
4 The Final Office Action rejects claim 13 as unpatentable over MacKinnon,
Kazakevich, and Rovegno, without listing Thompson. Final Act. 14. The
Examiner acknowledges "[t]he final office action contains a typo that did not
show the Thompson reference" in the rejection of claim 13. Ans. 9. We
find the Examiner's oversight and typo to be harmless error and consider
claim 13 to be rejected under§ 103(a) over MacKinnon, Kazakevich,
Thompson, and Rovegno. Further discussion of claim 13 is presented in our
analysis below.
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Appeal2018-006627
Application 13/709,249
claimed. Final Act. 4--5 (citing MacKinnon ,r,r 12, 26, 31-32, 40, and 71,
Fig. 1); Ans. 3. MacKinnon's Figure 1 is reproduced below with additional
markings for illustration.
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MacKinnon's Figure 1 shows a color endoscopy system including a
computer controlled light source (CCLS) 10. MacKinnon ,r,r 47, 69.
The Examiner also relies on Kazakevich and Thompson for teaching
and suggesting Appellants' claimed "light source assembly releasably
coupled directly to the endoscope." Final Act. 6-7 ( citing Kazakevich
,r,r 32, 46, Fig. 2; Thompson ,r,r 13, 32, 34, Fig. 2). The Examiner further
relies on Kazakevich for teaching an imaging unit configured to receive light
through the endoscope reflected from a region of interest, the imaging unit
configured to remain stationary while the endoscope and light source
assembly rotate together about a shared axis, as recited in claim 1. Final
Act. 6 (citing Kazakevich ,r,r 32, 46, 49, Fig. 2).
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Appeal2018-006627
Application 13/709,249
Appellants dispute (1) the Examiner's factual findings regarding
MacKinnon and Kazakevich, and (2) the Examiner's rationale for combining
MacKinnon, Kazakevich, and Thompson. In particular, Appellants argue
MacKinnon's light source assembly (CCLS 10) is coupled to the endoscope
indirectly (by way of light guide 90), not directly as required by claim 1.
Reply Br. 2; App. Br. 12. Appellants argue the Examiner's claim
interpretation (that a "[c]onnection via a light guide/cable falls within the
BRI of 'coupled directly,"' see Ans. 5) is "wholly inconsistent with how one
of ordinary skill would read the term ['coupled directly'], and wholly
inconsistent with Appellant's specification." Reply Br. 4; App. Br. 14--15.
Appellants also argue "even if the teachings of Kazakevich and Thompson
are precisely as the Office action suggests ... MacKinnon, Kazakevich, and
Thompson still fail to [sic] teach 'a light source assembly releasably coupled
directly to the endoscope, the light source assembly configured create[ sic]
and transmit light to the endoscope for illuminating a region of interest"' as
claimed. App. Br. 12. Appellants further argue the combination of
MacKinnon, Kazakevich, and Thompson does not teach or suggest, "'an
imaging unit releasably coupled directly to the light source assembly' in the
situation where the claimed light source assembly is 'releasably coupled
directly to the endoscope."' App. Br. 10-11; Reply Br. 2. Appellants
additionally assert the skilled artisan would not replace (i) Thompson's light
bulb with MacKinnon's "complex and orientationally sensitive" CCLS 10,
or (ii) MacKinnon's CCLS 10 with Thompson's single light bulb as "such
changes the principle of operation of MacKinnon." App. Br. 15-16.
Appellants' arguments are persuasive only in part. Particularly, we
agree with Appellants that MacKinnon's connection between light source
assembly 10 and endoscope 20 via light guide 90 does not teach the claimed
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Appeal2018-006627
Application 13/709,249
"coupled directly" (i.e., "light source assembly releasably coupled directly to
the endoscope" recited in claim 1 ). The Examiner's rejection, however, is
not predicated only on a light guide connection teaching "coupled directly";
rather, the Examiner states "but even if it did not [ (i.e., even if connection
via light guide does not fall within the BRI of 'coupled directly')],
Thompson explicitly teaches direct connection without the light guide."
Ans. 5 ( emphasis added). The Examiner similarly finds Kazakevich teaches
and suggests a direct connection of a light source assembly to an endoscope
as claimed. Final Act. 6 ( citing Kazakevich ,r,r 32, 46, 49, Fig. 2).
Kazakevich's Figure 2 is reproduced below with additional markings for
illustration.
168
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133
136
44 46 48
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FIG.2
Kazakevich's Figure 2 shows a cross-sectional side view of an
endoscope 42, an illumination assembly 26 (including a solid-state light
source assembly 44 and a focusing assembly 46), and a video camera
assembly 48. Kazakevich ,r,r 21, 32.
Kazakevich's Figure 2 shows the light source assembly (26) is
releasably coupled directly to the endoscope ( 42), the light source assembly
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Appeal2018-006627
Application 13/709,249
(26) configured to create and transmit light to the endoscope ( 42) for
illuminating a region of interest, as recited in claim 1. Final Act. 6; see
Kazakevich ,r,r 12 ("The endoscope is removable and replaceable from the
illumination assembly"), 32 ("illumination assembly 26 connected to
proximal body 64 of endoscope 42 .... illumination assembly 26 includes a
solid-state light source assembly 44 (FIG. 2) for generating white light that
is conveyed to a working area 24 via insertion section 16 [ of endoscope
42]"), 34 ("Endoscope 42 is an interchangeable component of endoscopic
system 10 which can be interchanged with endoscopes of other
configurations"), 36 ("endoscope 42 and solid-state light source assembly 44
[ of illumination assembly 26] are independently hermetically sealed, so that
other endoscopes may be removably attached to solid-state light source
assembly 44 (e.g., flexible endoscopes)"), 58; Fig. 2.
We agree with the Examiner that Kazakevich's video camera
assembly ( 48) teaches the claimed imaging unit coupled directly to the light
source assembly (26), the imaging unit configured to receive light through
the endoscope reflected from the region of interest, as recited in claim 1.
Final Act. 6; see Kazakevich ,r,r 32-33 ("Video camera assembly 48 is
connected to illumination assembly 26 and transmits video signals
representative of images at working area 24 for display on video monitor"),
46; Fig. 2. We also agree with the Examiner that a skilled artisan would
understand an imaging unit may be releasably coupled to the endoscope's
light source assembly. Final Act. 5 (citing MacKinnon ,r 32); Ans. 3.
Particularly, MacKinnon teaches and suggests its image capture device
(imaging unit) may be releasably coupled to the endoscope's light source
assembly (CCLS 10). See MacKinnon ,r 32 ("the endoscopy system or
CCLS provides an image capture device . ... The image capture device may
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Appeal2018-006627
Application 13/709,249
be integral to the CCLS or it may be a modular component of an endoscopy
system" ( emphasis added)). We therefore agree with the Examiner that the
combination of Kazakevich and MacKinnon teaches "an imaging unit
releasably coupled directly to the light source assembly, the imaging unit
configured to receive light through the endoscope reflected from the region
of interest" as recited in claim 1. Final Act. 5---6; Ans. 3.
We are also not persuaded by Appellants' arguments that the
Examiner's combination of references (i) lacks articulated reasoning and (ii)
would change MacKinnon's principle of operation when MacKinnon's
CCLS source is replaced by Thompson's light bulb. App. Br. 15-16; Reply
Br. 4--5. It is well settled that "a determination of obviousness based on
teachings from multiple references does not require an actual, physical
substitution of elements." In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir.
2012) (citations omitted). Nor is the test for obviousness whether a
secondary reference's features can be bodily incorporated into the structure
of the primary reference. See In re Keller, 642 F.2d 413,425 (CCPA 1981).
Here, the rejection put forth by the Examiner does not require replacing
MacKinnon's CCLS source with Thompson's light bulb, as Appellants
argue. See App. Br. 16; Reply Br. 5. Rather, the Examiner finds the
collective teachings of Kazakevich, MacKinnon, and Thompson would have
suggested to the skilled artisan an endoscopic imaging system with a light
source assembly releasably coupled directly to an endoscope and to an
imaging unit. Ans. 6-7. The references' teachings suggest that the
combination involves the predictable use of prior art elements according to
their established functions. The Examiner also provides sufficient
articulated reasoning for releasably coupling the endoscopic system's
components, to provide "a system that is easily portable" with components
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Application 13/709,249
"which may be mounted to the scope resulting in increased maneuverability
of the scope and mobility of the entire system." Ans. 6; see KSR Int'! Co. v.
Teleflex, Inc., 550 U.S. 398, 416-18 (2007).
Accordingly, Appellants' arguments have not persuaded us of error in
the Examiner's rejection of claim 1. Therefore, we sustain the Examiner's
rejection of independent claim 1. No separate arguments are presented for
dependent claims 3-7, 9-12, and 14. App. Br. 6, 16. Accordingly, for the
reasons stated with respect to independent claim 1, we sustain the rejection
of dependent claims 3-7, 9-12, and 14. See 37 C.F.R. § 4I.37(c)(l)(iv).
Claims 8 and 13
The Final Office Action rejects claim 8 under 35 U.S.C. § 103(a) as
unpatentable over MacKinnon, Kazakevich, and Hirose, and claim 13 over
MacKinnon, Kazakevich, and Rovegno, without listing Thompson. Final
Act. 13-14. Appellants note "the Office action fails to make aprimafacie
[sic] case of obviousness regarding claim 8" and claim 13 because
Thompson is missing from these rejections. App. Br. 17-18.
The Examiner, however, acknowledges "[ t ]he final office action
contains a typo that did not show the Thompson reference" in the rejections
of claims 8 and 13. Ans. 7-9. The Examiner therefore acknowledges the
rejections of claims 8 and 13 include the Thompson reference. Ans. 8-9.
We find the Examiner's oversight and typos to be a harmless error and
consider claim 8 to have been rejected over MacKinnon, Kazakevich,
Thompson, and Hirose, and claim 13 to have been rejected over MacKinnon,
Kazakevich, Thompson, and Rovegno.
Appellants further argue claims 8 and 13 are patentable because of
their dependency from claim 1, and because Hirose and Rovegno do not cure
the alleged deficiencies ofMacKinnon, Kazakevich, and Thompson. App.
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Application 13/709,249
Br. 17-18. Because we find MacKinnon, Kazakevich, and Thompson are
not deficient, Hirose and Rovegno are not needed to cover any deficiency,
and therefore we sustain the rejection of dependent claims 8 and 13 for the
reasons stated with respect to independent claim 1.
CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 1 and 3-14 under
35 U.S.C. § 103(a).
DECISION
As such, we affirm the Examiner's Final Rejection of claims 1 and 3-
14 under 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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