Ex parte Shipp

Board of Patent Appeals and Interferences

Oct 4, 2001

08531424 (B.P.A.I. Oct. 4, 2001)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 32
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN I. SHIPP
____________
Appeal No. 1999-2039
Application No. 08/531,424
____________
ON BRIEF
____________
Before THOMAS, KRASS, and BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
an examiner’s rejection of claims 10-17, 18, and 29-36. We
reverse.
BACKGROUND
The appellant’s light source is mounted in the distal end
of an endoscope to illuminate an object within a bodily
cavity. A series of four red, fourteen green, and ten blue
light-emitting-diodes (LEDs) is mounted and arranged on a
Appeal No. 1999-2039 Page 2
Application No. 08/531,424
ceramic substrate in a circular pattern concentrically around
the optical path of the endoscope. A reflector cup surrounds
each LED to control the angular distribution of light emitted
by the LED. The LEDs are electrically wired to an
illumination circuit that triggers them to emit red, green,
and blue light, respectively, in synchronization with the
field period of an endoscopic camera. The appellant asserts
that mounting the LEDs in the distal end of the endoscope
avoids the loss of light through fiber optics cables and
connections that plagues the prior art and that it eliminates
the prior art’s need to sterilize the cables and connections.
Claim 15, which is representative for present purposes,
follows:
15. A compact light source for illuminating an
object while in a body cavity, said light source
comprising first, second, and third color LED's
fixed to a common substrate, said first, second, and
third color LED's electrically connected to said
substrate and to each other in a pattern whereby
said first, second and third color LED's can be
separately operated in a sequential manner; said
first, second, and third color LED's arranged in a
generally concentric pattern surrounding a light
transmissive aperture centrally disposed in said
substrate in the center of said pattern, and said
substrate and aperture having a central axis coaxial
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Application No. 08/531,424
with a central axis of an objective lens system of
an endoscopic camera used in conjunction with said
compact light source.
The prior art applied by the examiner in rejecting the
claims follows:
Kakinuma et al. (Kakinuma) 4,074,306 Feb. 14,
1978
Pileski et al. (Pileski) 5,379,756 Jan.
10, 1995
(filed Sep. 11, 1992)
Nagasaki 4,633,304 Dec. 30,
1986
Uehara et al. (Uehara) 4,868,647 Sep. 19,
1989
Moore et al. (Moore) 4,253,447 Mar. 3,
1981.
Claims 10, 11, 15, 17, and 19 stand rejected under 35 U.S.C.
§ 103(a) as being obvious over Kakinuma in view of Pileski.
Claims 29-34 and 36 stand rejected under § 103(a) as being
obvious over Kakinuma in view of Pileski further in view of
Nagasaki. Claims 29-34 and 36 stand rejected under § 103(a)
as being obvious over Kakinuma in view of Pileski further in
view of Nagasaki even further in view of Uehara. Claims 12
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Application No. 08/531,424
and 13 stand rejected under § 103(a) as being obvious over
Moore in view of Kakinuma further in view of Pileski. Claim
14 stands rejected under § 103(a) as being obvious over Moore
in view of Kakinuma further in view of Pileski even further in
view of Nagasaki. Rather than reiterate the arguments of the
appellant or examiner in toto, we refer the reader to the
brief and answer for the respective details thereof.
OPINION
After considering the record, we are persuaded that the
examiner erred in rejecting claims 10-17, 18, and 29-36.
Accordingly, we reverse. We begin by summarizing the
examiner's rejection and the appellant‘s argument.
Admitting that “Kakinuma et al does not particularly
disclose ... light emitting diodes arranged in a generally
concentric pattern surrounding a light transmissive central
aperture in the center of the pattern,” (Examiner’s Answer at
4-5), the examiner asserts, "[i]t is considered obvious that
the light emitting diodes of Kakinuma et al may be provide in
place of the optical fibers of Pileski et al for the same
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Application No. 08/531,424
lighting purposes. Therefore, it would have been obvious to
one of ordinary skill in the art, having the Kakinuma et al
and Pileski et al references in front of him/her and the
general knowledge of imaging techniques within an endoscope,
would have had no difficulty in providing surround lighting
techniques within an endoscope as taught by Pileski et al for
the endoscope system of Kakinuma et al for the same well known
purposes as claimed." (Id. at 5.) The appellant argues,
"Pileski and Kakinuma do not teach an internal light source
(i.e. light source capable of being inserted into a body
cavity) mounted at a distal end of an endoscope concentric
about a light aperture and axially aligned with the endoscope
sheath." (Appeal Br. at 13.)
Claims 10 and 11 specify in pertinent part the following
limitations: "b. illumination means mounted at the distal end
of said sheath; ... e. the illumination means comprising a
plurality of light emitting diodes arranged in a generally
concentric pattern surrounding a light transmissive central
aperture in the center of said pattern, said central aperture
having a central axis aligned with and coaxial with a central
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Application No. 08/531,424
axis of said objective lens system and with a central axis of
said sheath." Similarly, claims 12-14 specify in pertinent
part the following limitations: "illumination means mounted at
the distal end of a camera sheath, the illumination means
comprising a plurality of light emitting diodes arranged in a
generally concentric pattern surrounding a light transmissive
central aperture, said central aperture having a central axis
coaxially aligned with a central axis of said camera sheath
....” Also similarly, claims 15 and 16 specify in pertinent
part the following limitations: “[a] compact light source for
illuminating an object while in a body cavity, said light
source comprising first, second, and third color LED's fixed
to a common substrate, ... said first, second, and third color
LED's arranged in a generally concentric patter surrounding a
light transmissive aperture centrally disposed in said
substrate in the center of said pattern, and said substrate
and aperture having a central axis coaxial with a central axis
of an objective lens system of an endoscopic camera used in
conjunction with said compact light source.” Similarly,
claims 17 and 19 specify in pertinent part the following
limitations: “illumination mean for emitting light from said
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Application No. 08/531,424
system toward an object to be viewed within body cavity, said
illumination means mounted within the distal end of said
endoscope, said illumination means comprising a plurality of
LED's mounted to a ceramic substrate in an annular pattern
surrounding an aperture centrally formed in said pattern and
in said substrate whereby said substrate an aperture have a
central axis coaxially aligned with a central axis of said
endoscope.” Further similarly, claims 29-36 specify in
pertinent part the following limitations: “an optical head of
the camera, the optical head having a shape and size whereby
the head can be endoscopically inserted and positioned within
the body cavity, the light source positioned in the optical
head and comprising a plurality of light emitting diodes
arranged in a generally concentric pattern surrounding a light
transmissive central aperture in the center of said pattern,
said central aperture and said pattern of light emitting
diodes having a central axis coaxially aligned with a central
axis of the optical lens system.” Accordingly, claims 10-17,
18, and 29-36 require inter alia LEDs arranged concentrically
around a central light aperture and mounted at an end (of an
endoscope) that is inserted into a bodily cavity.
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Application No. 08/531,424
The examiner fails to identify a persuasive suggestion to
combine the teachings of the references. “[I]dentification in
the prior art of each individual part claimed is insufficient
to defeat patentability of the whole claimed invention. In re
Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316 (Fed. Cir.
2000) (citing In re Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d
1453, 1457 (Fed. Cir. 1998)). “Rather, to establish
obviousness based on a combination of the elements disclosed
in the prior art, there must be some motivation, suggestion or
teaching of the desirability of making the specific
combination that was made by the applicant.” Id., 55 USPQ2d
at 1316 (citing In re Dance, 160 F.3d 1339, 1343, 48 USPQ2d
1635, 1637 (Fed. Cir. 1998); In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984).
Here, although Pileski discloses “optical fibers 27 which
are fanned out and arranged in an arc disposed in the annular
space between the lens retainer 20 and the cylindrical wall 28
of the insertion tube,” col. 4, ll. 4-7, the examiner fails to
show some motivation, suggestion, or teaching of the
desirability of disposing Kakinuma’s “light emitting chips
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Application No. 08/531,424
106, 107, 108,” col. 12, l. 61, in the arrangement taught by
Pileski. The examiner’s stated reasons, viz., “for the same
lighting purposes,” (Examiner’s Answer at 5), and “for the
same well known purposes as claimed,” (id.), do not address,
let alone persuade us of, the desirability of his proposed
rearrangement.
Relying on Nagasaki to “teach[] wireless transmitter
means (12, 13 of Figure 1) for transmitting video data from
video sensor means 4 of Figure 1 to a remote receiver,“
(Examiner's Answer at 7); Uehara to “disclose[] an electronic
endoscopic apparatus as shown in Figure 2, and teach[] the
conventional use of generation of chrominance and luminance
color video signals (see 46-48 of Figure 2) from light
reflected from objects;” (id. at 8); and Moore “disclose[] a
color endoscope with charged coupled device and television
viewing as shown in Figures 1, 2, and 5, and substantially the
same endoscopic video camera system as claimed in claims 12
and 13,” (id. at 9-10); the examiner fails to allege, let
alone show, that the additional references cure the
aforementioned deficiency. Because Kakinuma’s light emitting
Appeal No. 1999-2039 Page 10
Application No. 08/531,424
chips are not disposed around a central light aperture, and
there is no evidence that Pileski’s arrangement of optical
fibers would have been desirable for the former reference’s
chips, we are not persuaded that teachings from the prior art
would have suggested the proposed combination of Kakinuma and
Pileski nor the limitations of "b. illumination means mounted
at the distal end of said sheath; ... e. the illumination
means comprising a plurality of light emitting diodes arranged
in a generally concentric pattern surrounding a light
transmissive central aperture in the center of said pattern,
said central aperture having a central axis aligned with and
coaxial with a central axis of said objective lens system and
with a central axis of said sheath;" “illumination means
mounted at the distal end of a camera sheath, the illumination
means comprising a plurality of light emitting diodes arranged
in a generally concentric pattern surrounding a light
transmissive central aperture, said central aperture having a
central axis coaxially aligned with a central axis of said
camera sheath;” “[a] compact light source for illuminating an
object while in a body cavity, said light source comprising
first, second, and third color LED's fixed to a common
Appeal No. 1999-2039 Page 11
Application No. 08/531,424
substrate, ... said first, second, and third color LED's
arranged in a generally concentric patter surrounding a light
transmissive aperture centrally disposed in said substrate in
the center of said pattern, and said substrate and aperture
having a central axis coaxial with a central axis of an
objective lens system of an endoscopic camera used in
conjunction with said compact light source;” “illumination
mean for emitting light from said system toward an object to
be viewed within body cavity, said illumination means mounted
within the distal end of said endoscope, said illumination
means comprising a plurality of LED's mounted to a ceramic
substrate in an annular pattern surrounding an aperture
centrally formed in said pattern and in said substrate whereby
said substrate an aperture have a central axis coaxially
aligned with a central axis of said endoscope;” and “an
optical head of the camera, the optical head having a shape
and size whereby the head can be endoscopically inserted and
positioned within the body cavity, the light source positioned
in the optical head and comprising a plurality of light
emitting diodes arranged in a generally concentric pattern
surrounding a light transmissive central aperture in the
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Application No. 08/531,424
center of said pattern, said central aperture and said pattern
of light emitting diodes having a central axis coaxially
aligned with a central axis of the optical lens system.”
Therefore, we reverse the rejection of claims 10, 11, 15, 17,
and 19 as being obvious over Kakinuma in view of Pileski, of
claims 29-34 and 36 as being obvious over Kakinuma in view of
Pileski further in view of Nagasaki, of claims 29-34 and 36 as
being obvious over Kakinuma in view of Pileski further in view
of Nagasaki even further in view of Uehara, of claims 12 and
13 as being obvious over Moore in view of Kakinuma further in
view of Pileski, and of claim 14 as being obvious over Moore
in view of Kakinuma further in view of Pileski even further in
view of Nagasaki.
CONCLUSION
In summary, the rejection of claims 10-17, 18, and 29-36
under § 103(a) is reversed.
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Application No. 08/531,424
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
LLB/gjh
Appeal No. 1999-2039 Page 14
Application No. 08/531,424
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APPEAL NO. 1999-2039 - JUDGE BARRY
APPLICATION NO. 08/531,424
APJ BARRY - 2 copies
APJ KRASS
APJ THOMAS
Prepared By: APJ BARRY (GJH)
DRAFT SUBMITTED: 06 Nov 02
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