Ex Parte Schara et al

Patent Trial and Appeal Board

Jan 31, 2013

11053531 (P.T.A.B. Jan. 31, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte NATHAN JON SCHARA,
HANS DAVID HOEG, and ERIC LAWRENCE HALE
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Appeal 2011-002308
Application 11/053,531
Technology Center 3700
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Before GAY ANN SPAHN, WILLIAM V. SAINDON, and
REMY J. VANOPHEM, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Nathan Jon Schara et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 1-15 and 17-25. Appellants
cancelled claim 16. An oral hearing was held on January 24, 2013. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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The Claimed Subject Matter
The claimed subject matter relates to “endoscopes (including devices
such as borescopes, fiberscopes, etc.) in which the rotational orientation of
the endoscopic image is presented in its actual relationship to the viewer’s
reference frame.” Spec. 1, para. [04]. Claims 1, 8, 17, and 25 are
independent and claim 1, reproduced below, with emphasis added, is
illustrative of the subject matter on appeal.
1. A system for orienting an endoscopic image,
comprising an endoscope having a longitudinal
axis, a view vector angularly offset from said
longitudinal axis, a rotation pick-up device, and an
image rotator responsive to said rotation pick-up
device, wherein said rotation pick-up device is
arranged for measuring rotations about an axis
which is generally parallel to said view vector.

Similar to claim 1, each of independent claims 8, 17, and 25 is also
directed to a system for orienting an endoscopic image. Claim 8 includes,
inter alia, a rotation pick-up device that “is arranged for measuring rotations
about an axis which remains generally parallel to said view vector as the
angle at which the view vector is angularly offset from said longitudinal axis
changes.” Claim 17 includes, inter alia, “a rotation pick-up device that
measures rotations about a measurement axis angularly offset from said
longitudinal axis at the same angle as said view vector . . . , wherein said
measurement axis remains generally parallel to said view vector as the angle
of said view vector relative to said longitudinal axis varies.” Claim 25
includes, inter alia, a rotation pick-up device and recites the same claim
language as emphasized in the quotation of claim 1 supra.

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The Rejections
The following Examiner’s rejections are before us for review:
I. claims 1-15 and 17-25 under 35 U.S.C. § 103(a) as
unpatentable over Green (US 6,471,637 B1, issued Oct. 29, 2002) and Cho
(US 4,802,461, issued Feb. 7, 1989); and
II. claims 1-15 and 17-25 under 35 U.S.C. § 103(a) as
unpatentable over Hale (US 2002/0099263 A1, published Jul. 25, 2002) and
Green.

OPINION
Rejection I – Obviousness based on Green and Cho
The Examiner finds that Green substantially discloses the subject
matter of independent claims 1, 8, 17, and 25, but fails to disclose “a view
vector angularly offset from said longitudinal axis.” Ans. 3. To cure the
deficiency of Green, the Examiner turns to Cho to teach an endoscope
“having a longitudinal axis 23 and a distal tip 29 containing [a] lens
assembly producing a view vector angularly offset (90 degrees) from the
longitudinal axis,” and wherein the distal tip 29 is a flexible distal tip “that is
deflectable 180 degrees to one side of the longitudinal axis and which can be
flexed through 360 degrees and provide any necessary angle of view,
facilitating a wider view angle while allowing the endoscope to readily
follow curves of body canals.” Ans. 3-4 (citing Cho, col. 2, ll. 39-45, col. 3,
ll. 30-36, and col. 5, ll. 7-15). The Examiner concludes that it would have
been obvious to one of ordinary skill in the art to modify Green to include a
flexible distal tip as taught by Cho in order to provide an improved
endoscope system (i.e., ureteroscope) “which is rigid enough to provide both
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axial and rotational translation along its length to be easily maneuvered into
a ureter and has a user deflectable tip which enables a wider view angle and
readily follows curves of body canals to provide atraumatic operation.” Ans.
4.
Appellants argue that the combination of Green and Cho “does not
disclose or suggest a system with a rotation pick-up device that measures
rotations about an axis generally parallel to the view vector that is angularly
offset from the longitudinal axis.” App. Br. 5. With respect to Green’s
Figure 3 embodiment which appears to disclose physical rotation of the
image sensor (Green, col. 3, ll. 16-17), Appellants argue that Green’s
accelerometers 40, 42 measure rotation about the longitudinal axis 32 which
is parallel to the laterally offset optical axis and thus, even if Cho’s flexible
distal tip 29 were incorporated in Green’s endoscope 28, the resulting
endoscope “would still not have a rotation pick-up device ‘measuring
rotations about an axis which is generally parallel to said view vector.’”
App. Br. 8.
We are persuaded by Appellants’ arguments. Green relates to video
displays of images obtained from an endoscope, wherein “[i]nertial sensors,
such as accelerometers . . ., are employed to provide a signal proportional to
the angular rotation of the endoscope” and a “compensating rotational signal
is used to re-orient the received image” so that the video display image is
displayed correctly for the surgeon’s frame of reference. Green, col. 1, ll.
12-13, col. 3, ll. 9-14, and col. 4, ll. 42-48. In the Figure 3 embodiment,
Green discloses an endoscope having a y-sensor 40 and a z-sensor 42 each
of which is an accelerometer and the “two accelerometers are used to
determine angular rotation of image sensor 30 about its optical z-axis 32.”
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Green, col. 5, ll. 27-41 and Figs. 2A, 2B, and 3. However, as stated by
Appellants in the Specification, Green’s solution to correcting image
orientation “compensate[s] only for roll about the longitudinal axis and
provide[s] a rotationally corrected image for axial viewing endoscopes.”
Spec. 3, para. [13]; see also Green, col. 4, l. 41 – col. 5, l. 38.
With respect to Green’s Figure 3 embodiment, Green discloses that
“[a] first inertial sensor 40 [is] for sensing rotation of the camera around the
y-axis” and “a second inertial sensor 42 [is] for sensing rotation of the
camera around the z-axis 32.” Green, col. 6, ll. 22-25. The “sensors 40 and
42 are in a fixed spatial relationship and rotate with image sensor 30.”
Green, col. 6, ll. 26-27. Thus, if the distal tip of Green’s endoscope were
modified to be flexible by the teaching of Cho in order to change the
angularity of the view vector, we agree with Appellants that Green’s rotation
pick-up device (accelerometers 40, 42) would not be arranged to be capable
of measuring rotations about an axis which is generally parallel to the view
vector because Green’s accelerometers 40, 42 measure rotations around the
y-axis and the z-axis, respectively, but not at an angle with respect to the z-
axis. With respect to Green’s Figure 5 embodiment, if the distal tip of
Green’s endoscope were modified to be flexible by the teaching of Cho in
order to change the angularity of the view vector, we agree with Appellants
that Green’s rotation pick-up device would not be arranged to be capable of
measuring rotations about an axis which is generally parallel to the view
vector because Green discloses that “the optical image is rotated before
reaching the image sensor 304,” and “the optical image is rotated rather than
the image sensor, to accommodate angular rotation of the endoscope about
its optical axis.” Green, col. 7, ll.50-53.
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Accordingly, we do not sustain the Examiner’s rejection of claims 1-
15 and 17-25 under 35 U.S.C. § 103(a) as unpatentable over Green and Cho.
Rejection II – Obviousness based on Hale and Green
Although Appellants provide separate subheadings for independent
claim 1 (App. Br. 12), dependent claims 2-7 (App. Br. 19), independent
claim 8 (App. Br. 19), dependent claims 9-15 (App. Br. 20), independent
claim 17 (App. Br. 20), dependent claims 18-24 (App. Br. 21), and
independent claim 25 (App. Br. 21), Appellants rely on the arguments set
forth for claim 1 for claims 2-25. Thus, Appellants in essence argue claims
1-15 and 17-25 as a group and we select independent claim 1 as the
representative claim, with claims 2-15 and 17-25 falling with claim 1. See
37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner finds that Hale substantially discloses the subject
matter of independent claim 1, except that Hale fails to disclose “an image
rotator responsive to said rotation pick-up device.” Ans. 9. To cure the
deficiency of Hale, the Examiner turns to Green to teach an image rotator
30, 504 responsive to a rotation pick-up device 40, 42, 505. Id (citing
Green, col. 4, ll. 64-67, col. 5, ll. 1-15 and 32-35, col. 6, ll. 11-46, col. 8, ll.
60-67, and col. 9, ll. 1-9). The Examiner concludes that it would have been
obvious to one of ordinary skill in the art to modify the endoscope system of
Hale by including an image rotator which is responsive to a rotation pick-up
device as taught by Green “in order to have provided an improved
endoscope system which is capable of compensating for the rotation of the
endoscope view vector, producing a displayed image that does not rotate as
the surgeon rotations the endoscope view vector during surgery.” Ans. 10.
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Appellants argue that “Hale does not disclose a system for orienting
an endoscope image.” App. Br. 13. However, the Examiner finds that
Green discloses an image rotator 30, 504 responsive to rotation pick-up
devices 40, 42, 505 in a system for orienting an endoscope image of a
similar endoscope. Ans. 9. Thus, it appears that the Examiner is relying
upon Green, not Hale, to teach this aspect of the invention.
Appellants also argue that Hale does not disclose “a ‘rotation pick-up
device 84, 108, wherein said rotation pick-up device 84, 108 is arranged for
measuring rotations about an axis 14 which is generally parallel to said
vector 22.’” App. Br. 14. We are not persuaded by Appellants’ argument
because Appellants are merely arguing the claim language and have not
explained why the first sensor 84 and the first encoder 108 cannot be
considered to constitute a rotation pick-up device. See In re Lovin, 652 F.3d
1349 (Fed. Cir. 2011) (Statements baldly submitting that the limitations are
not present in the prior art are not persuasive as to error on the part of the
Examiner when the Examiner has specified portions of the prior art to
describe those limitations). Nor have Appellants explained why the
Examiner’s finding that Hale is capable of performing the recited intended
use of being arranged “for measuring rotations about an axis which is
generally parallel to said view vector” is in error.
Appellants also argue that “Hale’s working vector 22, which rotates
about its axis 14, teaches away from the use of an image rotator,” because
“[i]f a user of Hale rotates the working vector 22 by rotating handle 12, there
would be no reason for Green’s image rotator to further rotate the image,”
and “it must be presumed that the purposeful rotation of the view vector is
the image that the user wants to see.” App. Br. 18. This argument is not
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persuasive because in order to “teach away” a reference must “criticize,
discredit, or otherwise discourage the solution claimed ….” In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004). As Hale does not criticize, discredit,
or otherwise discourage the use of an image rotator, we are not convinced
that the Examiner erred. Indeed, we do not agree with Appellants’
presumption that because the user has rotated the view vector, the user
would have no use for an image rotator.
Finally, Appellants also argue the “[e]ven if combined, the
combination would render Green’s image rotator inoperable for its intended
purpose ‘of compensating for the rotation of the endoscope view vector.’”
App. Br. 18. We are not persuaded that modifying Hale to include the image
rotator 30, 504 responsive to the rotation pick-up devices 40, 42, 505 of
Green would render Green’s image rotator inoperable for its intended
purpose. To the contrary, as it is Hale being modified, not Green, we are not
apprised of Examiner error by Appellants’ argument.
Accordingly, we sustain the Examiner’s rejection of claims 1-15 and
17-25 under 35 U.S.C. § 103(a) as unpatentable over Hale and Green.

DECISION
We reverse the Examiner’s rejection of claims 1-15 and 17-25 under
35 U.S.C. § 103(a) as unpatentable over Green and Cho.
We affirm the Examiner’s rejection of claims 1-15 and 17-25 under
35 U.S.C. § 103(a) as unpatentable over Hale and Green.

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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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