Karl Storz Imaging, Inc.Download PDFPatent Trials and Appeals BoardOct 14, 20212021003083 (P.T.A.B. Oct. 14, 2021) Copy Citation 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. 14/048,913 10/08/2013 Timothy King 02580-P0281E 1497 154825 7590 10/14/2021 KS - Whitmyer IP Group LLC 600 Summer Street 3rd Floor Stamford, CT 06901 EXAMINER BEHRINGER, LUTHER G ART UNIT PAPER NUMBER 3793 NOTIFICATION DATE DELIVERY MODE 10/14/2021 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): USPTO@dockettrak.com patent@karlstorz.com uspto@whipgroup.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TIMOTHY KING, THOMAS PRESCHER, and KIM BARNHILL Appeal 2021-003083 Application 14/048,913 Technology Center 3700 Before JENNIFER D. BAHR, MICHAEL J. FITZPATRICK, and WILLIAM A. CAPP, Administrative Patent Judges. BAHR, 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 1–15 and 18–26. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing in accordance with 37 C.F.R. § 41.47 was held on September 27, 2021. We REVERSE and enter a NEW GROUND OF REJECTION. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Karl Storz Imaging, Inc. Appeal Br. 2. Appeal 2021-003083 Application 14/048,913 2 CLAIMED SUBJECT MATTER Appellant’s invention is directed to “a method and apparatus for generating an overlay aid on medical images.” Spec. ¶ 1. Claims 1 and 20 are independent, and claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A medical imaging system for indicating an area of interest on an image, comprising: multiple sources of image data including an endoscopic camera acquiring images; a camera control unit having an image processing unit in communication with said multiple sources of image data through data type converters, said data type converters adapted to convert each of said multiple sources of image data received by the camera control unit into formatted image data readable by said image processing unit: a plurality of overlay patterns stored on the camera control unit; a user interface receiving user input for selecting at least one overlay pattern from said plurality of overlay patterns; software executing on said image processing unit for combining said at least one overlay pattern with said formatted image data to generate overlayed image data to indicate an area of interest: and a plurality of destinations for receiving said overlayed image data, including a first display in a sterile area and a second display outside of the sterile area; wherein the software is configured such that a zoom level of said at least one overlay pattern and a zoom level of said formatted image data may be adjusted independently and the at least one overlay pattern is not affected by changing the zoom level of the formatted image data. Appeal 2021-003083 Application 14/048,913 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Hardy US 5,099,846 Mar. 31, 1992 Ooyatsu US 2002/0026093 A1 Feb. 28, 2002 Katsman US 2003/0083563 A1 May 1, 2003 Onishi US 6,636,254 B1 Oct. 21, 2003 Hale US 2004/0127769 A1 July 1, 2004 REJECTIONS Claims 1–3, 5, 7–14, 19, 22, 23, 25, and 26 stand rejected under 35 U.S.C. § 103 as being unpatentable over Ooyatsu, Hardy, and Katsman. Claims 4, 6, 18, 20, 21, and 24 stand rejected under 35 U.S.C. § 103 as being unpatentable over Ooyatsu, Hardy, Katsman, and Onishi. Claim 15 stands rejected under 35 U.S.C. § 103 as being unpatentable over Ooyatsu, Hardy, Katsman, and Hale. OPINION Appellant’s independent claim 1 recites “[a] medical imaging system” comprising, in relevant part, software for combining at least one overlay pattern with formatted image data to generate overlayed image data, wherein the software is configured such that a zoom level of said at least one overlay pattern and a zoom level of said formatted image data may be adjusted independently and the at least one overlay pattern is not affected by changing the zoom level of the formatted image data. Appeal Br. 14–15 (Claims App.). Appellant’s claim 20 recites a method comprising, in relevant part, transmitting image data to an image processing unit, selecting at least one overlay pattern from a plurality of provided Appeal 2021-003083 Application 14/048,913 4 overlay patterns based on user input, and combining the image data with the at least one overlay pattern in the image processing unit to generate overlayed image data. Appeal Br. 18 (Claims App.). Claim 20 also recites that “a zoom level of said at least one overlay pattern and a zoom level of said image data may be adjusted independently and the at least one overlay pattern is not affected by changing the zoom level of the image data.” Appeal Br. 18 (Claims App.). Much of Appellant’s argument in contesting the rejections of claims 1 and 20, as well as their dependent claims, under 35 U.S.C. § 103, is focused on the recitations of claims 1 and 20 quoted above regarding independent adjustment of the zoom level of the overlay pattern and the zoom level of the image data. See Appeal Br. 6–10; Reply Br. 3–4. Thus, before we can review the merits of the rejections under 35 U.S.C. § 103 in light of Appellant’s arguments, we must determine the proper construction of the claim language to which Appellant’s arguments are directed. Turning first to claim 1, the “software” in the pertinent limitation combines the at least one overlay pattern, selected by the user from among a plurality of overlay patterns stored on the camera control unit, and the formatted image data from the camera control unit to generate overlayed image data. Appeal Br. 14 (Claims App.); Spec. ¶¶ 55, 60–62, 82, 88. Thus, the “formatted image data” and the “at least one overlay pattern,” as recited in claim 1, are distinct from one another and from the “overlayed image data.” Notably, claim 1 does not recite that the software is configured such that a zoom level of the at least one overlay pattern component of the overlayed image data and a zoom level of the formatted image data component of the overlayed image data may be adjusted, leaving ambiguity Appeal 2021-003083 Application 14/048,913 5 as to whether it is the overlayed image data that may be adjusted or the inputs (the at least one selected overlay pattern and the formatted image data) themselves that may be adjusted. Nor is the claim clear as to whether the recited “software” performs the adjustments or whether it is merely capable of receiving inputs with adjusted zoom levels. Paragraph 82 of Appellant’s Specification discloses “software executing on the image processing unit for combining the image data 34 from the source 12 with an overlay pattern 30 and further adjusting the properties of the overlay pattern, such as activation, deactivation, resolution, opacity, opacity distribution, color, brightness, thickness, and size.” However, it is not clear whether this “software” is the same “software” recited in claim 1, or whether claim 1 recites only the software specifically directed to combining the image data and the overlay pattern, in whatever form and at whatever zoom level they are received by this software. Moreover, conspicuously absent from the disclosed list of properties of the overlay pattern to be adjusted is “zoom level.” See also Spec. ¶ 65 (enumerating “[c]ertain properties of the overlay 30 and key 36” that “may be adjustable, including, but not limited to, the resolution (i.e., number of rows by number of columns, number of circles, etc.) of the overlay,” the color, brightness, opacity, and distribution of the opacity of the overlay pattern 30 and/or key 36, the thickness of the lines of the overlay pattern, the size of the font of the key, etc., but not mentioning “zoom level”). Notably, paragraph 82 also discloses that “[t]he software can also be configured to select the desired overlay pattern 30 in response to a user input 18”; however, claim 1 does not recite that the “software” is configured to perform a selection function or otherwise directly operatively associate the Appeal 2021-003083 Application 14/048,913 6 “software” with the claimed “user interface receiving user input for selecting at least one overlay pattern,” further suggesting that the specific embodiments of “software” described in the Specification may be narrower than the “software” claimed. Appellant’s Specification discloses that “the zoom level of the image data 34 may be adjusted independent of the overlay pattern 30, and the software executing on the image processing unit may be configured to enable this feature.” Spec. ¶ 83 (emphasis added). Enabling the zoom level to be adjusted is not the same as adjusting the zoom level. The Specification also discloses that “[t]he software may also be configured to be able to adjust the properties of the overlay pattern and of the images independently. For instance, the image may be zoomed in while the overlay pattern is kept constant.” Spec. ¶ 90 (emphasis added). Notably, paragraph 90 discloses ability to adjust properties of the overlay pattern and images, but specifically mentions zoom only with respect to the image. Thus, based on our review of Appellant’s Specification, there is no explicit disclosure of the “software” itself adjusting a zoom level of the overlay pattern; and the disclosure of the “software” itself actually adjusting a zoom level of the images is implicit at best. Consequently, the ambiguity presented in the language of claim 1 as to whether the “software” must be configured to adjust a zoom level of either the overlay pattern or the formatted image data is not resolved by the Specification. Further, the Specification does not resolve the ambiguity as to whether it is the inputs (the overlay pattern stored on the camera control unit and the formatted image data) themselves or the overlay pattern component and formatted Appeal 2021-003083 Application 14/048,913 7 image data component of the overlayed image data that are capable of being adjusted. Moreover, the claims of the present application recite that “the software is configured such that a zoom level of said at least one overlay pattern and a zoom level of said formatted image data may be adjusted independently,”2 but the Specification does not explicitly disclose that a zoom level of the overlay pattern may be adjusted. This raises an ambiguity as to whether adjusting a “zoom level” should be interpreted as being met by changing at least one of the “properties” (e.g., resolution (number of rows by number of columns), opacity, thickness of the lines, or size of the font of the key) or adjusting a “zoom level” requires effectively changing all of these properties so as to effect a complete magnification or reduction in size of the overlay pattern or of the image. Additionally, the term “independently” is ambiguous, as claim 1 does not specify relative to what a zoom level of the overlay pattern and a zoom level of the formatted image data may be adjusted. For example, there are at least three possible interpretations of this limitation, each of which is plausible in light of the disclosure in the Specification. One plausible interpretation is that a zoom level of the overlay pattern may be adjusted independently of a zoom level of the formatted image data, and a zoom level of the formatted image data may be adjusted independently of the overlay pattern. See Spec. ¶ 69 (disclosing that “the zoom level of the image data 34 may be adjusted independent of the overlay pattern 30” and that “[t]he 2 Notably, this language was in dependent claim 16 as submitted on October 8, 2013 (the filing date of the present application), and, thus, is part of the original disclosure. Appeal 2021-003083 Application 14/048,913 8 resolution of the overlay pattern 30 will remain the same, while the image data 34 is zoomed in or out”);3 Spec. ¶ 90 (disclosing that “[t]he software may also be configured to be able to adjust the properties of the overlay pattern and of the images independently”). Another plausible interpretation is that a zoom level (i.e., one of the certain enumerated “properties”) of the overlay pattern may be adjusted independently of other zoom levels (i.e., others of the certain enumerated “properties”) of the overlay pattern, and a zoom level (i.e., one of the certain enumerated “properties”) of the formatted image data) may be adjusted independently of other zoom levels (i.e., others of the certain enumerated “properties”) of the formatted image data. See Spec. ¶ 67 (disclosing that “the adjustable properties of the overlay pattern and coordinates may be adjusted independently of one another”); Spec. ¶ 90 (disclosing that “[t]he software may also be configured to be able to adjust the properties of the overlay pattern and of the images independently”). A third plausible interpretation is that a zoom level of the overlay pattern and a zoom level of the formatted image data may be adjusted independently relative to other parameters of the system. Further, the language “the at least one overlay pattern is not affected by changing the zoom level of the formatted image data” is ambiguous in that it is not clear whether “the at least one overlay pattern is not affected” means that there is no change in any attribute of the overlay pattern or that 3 This disclosure of the resolution of the overlay pattern remaining the same while the image data is zoomed in or out suggests that adjusting resolution (number of rows by number of columns) may be sufficient to constitute adjusting a “zoom level,” leaving open the possibility that adjusting one of the other enumerated “properties” (font size of key, opacity or thickness of lines) may also be sufficient to constitute adjusting a “zoom level.” Appeal 2021-003083 Application 14/048,913 9 there is no change in a zoom level of the at least one overlay pattern. The ambiguity here is exacerbated by the ambiguity in what constitutes “a zoom level” in light of the disclosure in the Specification, as discussed above. Moreover, given the ambiguity as to whether the “overlay pattern” and “formatted image data” in the “wherein” clause of claim 1 refer to the inputs that are supplied to the “software” for generating the “overlayed image data” or to the overlay pattern and formatted image data components of the overlayed image data, as discussed above, it is not clear whether it is the stored “overlay pattern” that must be unaffected by a change in a zoom level of the formatted image data, or whether the overlay pattern component of the overlayed image data must be unaffected. In other words, it is not clear whether this limitation of claim 1 could be satisfied if the stored overlay pattern available for selection by the user remains unchanged by a change in a zoom level of the formatted image data, even if the overlay pattern component of the overlayed image data changes along with the zoom level of the formatted image data component of the overlayed image data. For the above reasons, the metes and bounds of claim 1 are not clear; claim 1 is indefinite. A claim is properly rejected as indefinite under 35 U.S.C. § 112 second paragraph if, after applying the broadest reasonable interpretation in light of the specification, the metes and bounds of a claim are not clear because the claim “contains words or phrases whose meaning is unclear.” In re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014) (per curiam) (approving, for pre-issuance claims, the standard from MPEP § 2173.05(e)); see also Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing indefiniteness approved by the Federal Circuit in Packard). Appeal 2021-003083 Application 14/048,913 10 “[I]f a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential). Claims 2–15, 18, 19, and 21–26, by virtue of their dependence from claim 1, incorporate the ambiguous claim language discussed above and, thus, are likewise indefinite. Independent claim 20 is a method claim and, as discussed above, recites combining image data with at least one overlay pattern in an image processing unit to generate overlayed image data. Appeal Br. 18 (Claims App.). As also discussed above, claim 20 further recites that “a zoom level of said at least one overlay pattern and a zoom level of said image data may be adjusted independently and the at least one overlay pattern is not affected by changing the zoom level of the image data.” Appeal Br. 18 (Claims App.). The ambiguities discussed above in regard to the meaning of “zoom level,” “independently,” and “at least one overlay pattern is not affected,” as well as the ambiguity as to whether it is the provided overlay pattern and image data or the overlay pattern and image data components of the overlayed image data that may be adjusted, also pervade claim 20. Unlike claim 1, claim 20 does not recite any structure or positive method step even implicitly associated with the recitation that a zoom level of the overlay pattern and a zoom level of the image data may be adjusted independently. Claim 20 does not, for example, associate the recitation that a zoom level of the overlay pattern and a zoom level of the image data may be adjusted independently with the “combining” step, which is performed in Appeal 2021-003083 Application 14/048,913 11 the image processing unit. The use of the terminology “may be” implies that adjusting a zoom level of the overlay pattern and/or a zoom level of the image data is an optional step that need not be carried out in order to perform the method of claim 20. See Ex parte Schulhauser, Appeal 2013-007847, 2016 WL 6277792, at *4 (PTAB Apr. 28, 2016) (precedential) (holding “[t]he Examiner did not need to present evidence of the obviousness of the remaining method steps of claim 1 that are not required to be performed under a broadest reasonable interpretation of the claim”). Assuming that the proper interpretation of “a zoom level of said at least one overlay pattern and a zoom level of said image data may be adjusted independently” is, as discussed above, an optional step that need not be carried out in order to perform the method of claim 20, it is not clear how, if at all, this recitation limits the scope of claim 20; nor is it clear whether the ambiguities with respect to “zoom level,” “overlay pattern,” “image data,” and “independently” in fact affect the scope of claim 20. Moreover, claim 20 is ambiguous as to whether “the at least one overlay pattern is not affected by changing the zoom level of the image data” is tied to the recitation that “a zoom level of said image data may be adjusted” or is an independent method step. In other words, assuming adjusting a zoom level of the overlay pattern and/or a zoom level of the image data is an optional step, it is not clear whether “the at least one overlay pattern is not affected by changing the zoom level of the image data” is a distinct positive recitation that the zoom level of the image data is changed and that the overlay pattern is not affected by that change or, alternatively, this is part of Appeal 2021-003083 Application 14/048,913 12 the optional step, which need not be carried out in order to perform the claimed method. Thus, for the reasons discussed above with respect to claim 1 and for these additional reasons, the scope of claim 20 is not clear; claim 20 is indefinite. Accordingly, pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection of claims 1–15 and 18–26 under 35 U.S.C. § 112(b) as being indefinite. Having determined that claims 1–15 and 18–26 are indefinite, we cannot sustain the rejections of these claims under 35 U.S.C. § 103 because to do so would require speculation as to the scope of the claims. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (holding that the Board erred in affirming a rejection of indefinite claims under 35 U.S.C. § 103(a) because the rejection was based on speculative assumptions as to the meaning of the claims). It should be understood, however, that our decision in this regard is based solely on the indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the prior art evidence applied in support of the rejections. CONCLUSION The Examiner’s rejections of claims 1–15 and 18–26 under 35 U.S.C. § 103 are REVERSED. We enter a NEW GROUND OF REJECTION of claims 1–15 and 18–26 under 35 U.S.C. § 112(b). Appeal 2021-003083 Application 14/048,913 13 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1–3, 5, 7–14, 19, 22, 23, 25, 26 103 Ooyatsu, Hardy, Katsman 1–3, 5, 7– 14, 19, 22, 23, 25, 26 4, 6, 18, 20, 21, 24 103 Ooyatsu, Hardy, Katsman, Onishi 4, 6, 18, 20, 21, 24 15 103 Ooyatsu, Hardy, Katsman, Hale 15 1–15, 18–26 112(b) Indefiniteness 1–15, 18–26 Overall Outcome 1–15, 18– 26 1–15, 18–26 FINALITY OF DECISION AND TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating Appeal 2021-003083 Application 14/048,913 14 to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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). REVERSED; 37 C.F.R. § 41.50(b) Copy with citationCopy as parenthetical citation