GIVEN IMAGING LTD.

Patent Trials and Appeals Board

May 21, 2020

2019005810 (P.T.A.B. May. 21, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/409,601 12/19/2014 Thomas R. Parks P-76045-US 1881
137540 7590 05/21/2020
Pearl Cohen Zedek Latzer Baratz LLP
Given Imaging Ltd.
1500 Broadway, 12th Floor
New York, NY 10036
EXAMINER
LUONG, PETER
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
05/21/2020 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):
rs.patents.two@medtronic.com
uspto@pearlcohen.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS R. PARKS, SANKET KHANDELWAL, and
SERGIY KANILO
Appeal 2019-005810
Application 14/409,601
Technology Center 3700
Before JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK,
Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–8 and 10–20. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Given Images Ltd.
Appeal Br. 1.
Appeal 2019-005810
Application 14/409,601

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CLAIMED SUBJECT MATTER
Appellant’s invention relates to a system and method for
spatiotemporally synchronizing and displaying bodily organ images and
physiological parameters related to the organ. Claims 1, 18, and 19 are
independent. Claim 1, reproduced below with italics added, is illustrative of
the claimed subject matter:
1. A method for displaying images of bodily organs and
parameters related to the physiological activity of the bodily
organs, the method comprising:
(i) introducing one or more sensing elements into a bodily
organ, each sensing element comprising one or more radio
discernible sensors, each sensor outputting a signal
representative of a physiological parameter associated with the
activity of the bodily organ;
(ii) radioscopically imaging the bodily organ with the one
or more sensing elements introduced into the organ, and
concurrently reading the output of the sensors of the one or more
sensing elements;
(iii) for each sensing element, visually superimposing the
radioscopic image with a displayable representation symbol
associated with the sensing element, the representation symbol
having display characteristics dependent on the location of the
pertinent sensors in the radioscopic image and on the output
values of the sensors.
REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Parks US 2009/0257554 A1 Oct. 15, 2009

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REJECTIONS2
1) Claims 1–8, and 13–20 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Parks.3
2) Claims 10–12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Parks.
ANALYSIS
Rejection 1
In rejecting independent claims 1, 18, and 19 as anticipated by Parks,
the Examiner finds, inter alia, that Parks discloses a displayable
representation symbol 213 with display characteristics that depend on the
output values (shaded area) of the sensors. Non-Final Act. 3 (citing Parks
¶¶ 24, 40, 41, 46, and 77; Figs. 6A–6D).
Appellant argues that Parks’ symbols 213 are simply divisions of the
image that do not “depend on or change with output values of [the] sensors.”
Appeal Br. 5. According to Appellant, the shaded area is a bolus, which is
not a sensor. Id. Appellant contends that, although symbols including
rectangles are “drawn around and correspond to the position of the targets,
they do not represent and are not based on a sensor output value, and the
‘display characteristics’ of these boxes, etc. do not change with any sensor
output value.” Id. at 7–8.

2 A rejection of claim 9 under 35 U.S.C. § 112, second paragraph, as being
indefinite is withdrawn in the Answer. Answer 3; see also Non-Final Act. 2.
3 The caption of this rejection refers to Claim 10. Non-Final Act. 3. This is
a typographical error, however, as the body of the rejection does not contain
a rejection of claim 10, which is addressed in Rejection 2. Non-Final Act. 5.
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The Examiner responds that Figures 6A–6D of Parks represent the
images taken when a bolus is introduced. Ans. 6 (citing Parks ¶ 72). “The
Examiner’s interpretation of Figs. 6A–6D is that the display characteristic
(white squares and local fields which represent the location of the sensor)
depends on the location of the sensor and the output of the sensors (pressure
caused by the traveling bolus).” Id. According to the Examiner, the phrase
“dependent on output value” is interpreted to mean “depending on whether
the sensor produces an output value.” Id.
Appellant replies that the Examiner’s interpretation is inconsistent
with the disclosure of Parks. Reply Br. 3. Appellant contends that the small
white rectangles in Figures 6A–6D of Parks, which the Examiner equates to
sensors, do not have display characteristics that vary “depending on output
values of the reading of the signal from the respective targets 205,” and
rather, “are always a white rectangular box of the same shape and size.” Id.
at 4. According to Appellant, regardless of whether the claims require that
an actual value is displayed, Parks’ “radiopaque targets do not visually
change at all dependent on its output value of its associated radiopaque
target, let alone dependent also on the position of its associated radiopaque
target, as required by independent claim 1.” Id. at 6.
Appellant has the better argument. For the following reasons, we do
not sustain the rejection of claim 1.
Claim 1 recites, inter alia, “visually superimposing the radioscopic
image with a displayable representation symbol associated with the sensing
element, the representation symbol having display characteristics dependent
on the location of the pertinent sensors in the radioscopic image and on the
output values of the sensors.” Appeal Br. 14 (Claims App.). Independent
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claim 18 similarly recites “visually superimposing the radioscopic image
with the representation symbol, the representation symbol positioned in
relation to the locations of the pertinent sensors in the radioscopic image and
having display characteristics corresponding to the output values of the
sensors.” Id. at 17. Independent claim 19 similarly recites “for each sensing
element, to superimpose the radioscopic image with a displayable
representation symbol associated with the sensing element's sensors, the
representation symbol having display characteristics dependent on the
location of the sensors in the radioscopic image and on the output values of
the sensors.” Id. The Specification discloses:
By “a displayable element representing a particular sensor” is
meant that display attributes or particulars of the displayable
element may depend on, or stem or derived from, the location of
the particular sensor in the image, and on/from the output value
of that sensor at the image acquiring time, or shortly before or
after that time.
Spec. 15:15–19.
The Specification further discloses that “[d]isplay
attributes/particulars of a displayable element may include, for example, the
location/position of the displayable element relative to the location/position
of other displayable elements, color, size, shape, length, radius, etc.” Spec.,
15:19–21. Based on this disclosure, we understand the claimed “display
characteristics dependent on … the output values of the sensors” to mean
that the display characteristics depend on or change as the output value
changes. For example, the Figure 2A embodiment has a circle as the
displayable element where the size of the circle, e.g., the radius of the circle
has a value that “depends on the value of sensor S1 at the image acquiring
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time, or shortly before or after that time.” Spec. 15:35–16:1. Figure 2A is
reproduced below.

Figure 2A schematically illustrates image and data co-display cycles
according to an exemplary embodiment. Spec., 4:32–33. In Figure 2A,
displayable representation symbols 214 are depicted as filled circles 241–
248, and displayed on top of bodily organ 250 with each filled circle
showing a respective position “according to the locations
{X1,Y1},{X2,Y2}, ... , {X8,Y8} of sensors S1–S8 as identified from the
image, and respectively sized according to the output values S1(out),
S2(out), ... , S8(out) of sensors S1–S8.” Spec. 16:18–25. Here, the
increased radius visually represents, for example, the “peristaltic pressure of
the esophagus.” Spec. 27:9–12.
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By contrast, as Appellant correctly notes, none of Parks’ symbols 213
display characteristics that vary depending on output values of the signal
from respective targets 205, and “are always a white rectangular box of the
same shape and size.” Reply Br. 4. Parks discloses that “ladder structure
213 has been used to define the local image fields at successive intervals in
time as a bolus of contrast material moves through a lumen.” Parks ¶ 73. In
Parks, “the bolus appears as a darkish blob” that “appears to advance
downwards over the sequence of images,” as seen in Figure 6A and 6B,
reproduced below.

Figures 6A and 6B illustrate 2 radiographic images of a catheter
having 36 radiopaque targets inside a bodily lumen with rectangular local
image fields constructed with a ladder structure and superimposed, and
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corresponding profiles with the baseline image subtracted from each of the
series of images. Parks, ¶¶ 26, 27, 29. As seen in Figures 6A and 6B, there
is no change in either ladder structure 213 or the smaller white rectangles
inside the ladder structure, i.e., radiopaque targets, only a change in the
location of the bolus. As such, the Examiner has not adequately established
that Parks’ representation symbol has display characteristics that depend on
the output values of the sensors, as required by claim 1.
As to the Examiner’s position in the Answer that “display
characteristics dependent on … output values” only requires that the display
characteristic depends on “whether the sensor produces an output value,” is
an unreasonably broad interpretation. The term “characteristic” is defined as
“a distinguishing trait, quality, or property.”4 This is consistent with the
Specification, which provides various examples of an attribute or particular
feature such as color, size, shape, length, or radius. See Spec. 15:19–21.
The Examiner does not provide any evidence that merely providing an
output or not providing an output, is a characteristic, consistent with how
one of ordinary skill in the art would understand this term in light of the
Specification. This unreasonably broad claim construction led to the
unsupported finding that Parks’ ladder structure 213 is a displayable
representation symbol that has display characteristics dependent on output
values of the sensors. Therefore, we do not sustain the rejection of
independent claims 1, 18, and 19, and of claims 2–8, 13–17, and 20
depending therefrom as anticipated by Parks.

4 “Characteristic” Merriam-Webster.com Dictionary, Merriam-Webster,
https://www.merriam-webster.com/dictionary/characteristic. (accessed Apr.
30, 2020).
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Rejection 2
Claims 10–12 depend indirectly from claim 1. Appeal Br. 15 (Claims
App.). The Examiner does not rely on the additional disclosure of Parks in
any manner that would remedy the deficiencies in the rejection of claim 1
discussed above. For the same reasons, we do not sustain the rejection of
claims 10–12 as unpatentable over Parks.
CONCLUSION
The Examiner’s rejections are reversed.
More specifically,
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8, 13–20 102(b) Parks 1–8, 13–20
10–12 103(a) Parks 10–12
Overall
Outcome:
1–8, 10–20

REVERSED