Timothy King et al.

Patent Trials and Appeals Board

Oct 1, 2019

14573457 - (D) (P.T.A.B. Oct. 1, 2019)

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.
14/573,457 12/17/2014 Timothy King 02580-P0339B 1021
154825 7590 10/01/2019
KS - Whitmyer IP Group LLC
600 Summer Street
3rd Floor
Stamford, CT 06901
EXAMINER
IP, JASON M
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
10/01/2019 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):
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, KLAUS-MARTIN IRION, and WERNER
GOEBEL
Appeal 2018-002459
Application 14/573,457
Technology Center 3700
Before BRETT C. MARTIN, ANNETTE R. REIMERS, and
LEE L. STEPINA, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Karl Storz Imaging, Inc.,
appeals from the Examiner’s decision to reject claims 1–9 and 19. Final
Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
Oral argument was heard in this matter on September 24, 2019, and a
transcript of the hearing will be entered into the record in due course.
We REVERSE.

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 2018-002459
Application 14/573,457

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CLAIMED SUBJECT MATTER
The claims are directed “to diagnostic imaging techniques generally,
and more specifically to automatically displaying the last live video image of
tissue prior to a switch in the mode of illumination as a reference still
image.” Spec. ¶ 1. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. An imaging system comprising:
an endoscope;
a first source providing illumination with a first light;
a second source providing illumination with a second
light;
an imager capturing video from the endoscope;
a first display area displaying a live video image;
a second display area displaying a still image taken from a
frame of the live video image prior to a first change between
illumination with the first light and illumination with the second
light; and
a control module receiving a user-generated light mode
change signal for toggling at least between illumination with the
first light and illumination with the second light;
the first light comprising visible light and the second light
comprising an excitation light;
wherein, in response to each subsequent change between
illumination with the first light and illumination with the second
light initiated by the user-generated light mode change signal,
both the first display area is updated to display a different live
video image that is being captured after the respective
subsequent change, and the second display area is updated to
display a different still image that is taken from a frame of the
live video image prior to the respective subsequent change.

Appeal 2018-002459
Application 14/573,457

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REFERENCES
The prior art relied upon by the Examiner is:
Givol
Fulghum
Fukuyama
Iketani

US 2001/0027475 A1
US 6,364,829 B1
US 2006/0173240 A1
US 2006/0256191 A1
Oct. 4, 2001
Apr. 2, 2002
Aug. 3, 2006
Nov. 16, 2006

REJECTIONS
Claims 1, 3–11, and 192 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Iketani, Givol, and Fukuyama. Ans. 2.
Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Iketani, Givol, Fukuyama, and Fulghum. Ans. 6.

OPINION
This case hinges on whether the Examiner has properly interpreted the
claim element “a control module receiving a user-generated light-mode
change signal for toggling between illumination with the first light and
illumination with the second light.” Appellant argues that the proper
interpretation
“is that a light change mode signal is transmitted when a user
engages a control interface (e.g., button on an endoscope),
wherein the light change mode signal toggles between one light
mode (first source providing illumination with a first light) and
another light mode (second source providing illumination with
a second light).

2 We note that Appellant has withdrawn claims 10–18 and there is no claim
28, but there is a claim 19. Accordingly, we assume this rejection is
intended to be directed to claims 1, 3–9, and 19.
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Application 14/573,457

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Reply Br. 5. The Examiner alleges that Appellant’s interpretation is too
narrow and that a proper, broader construction is “that a user, who is at the
control interface toggles between imaging modes (i.e. images that are
displayed).” Ans. 7–8. The Examiner goes on to explain “that if the user
changes from one mode of view to another, he/she is toggling a change
[that] manifests itself in the change of the viewed display, and not
necessarily the light source.” Id. at 8 (emphasis added).
The Examiner’s own explanation shows error in this construction.
Nowhere in the Examiner’s explanation/construction is there reference to
toggling between light modes. Appellant’s claims very specifically recite
that a user toggles between light modes that provide first and second
illumination and that upon that toggle, an image is captured from the first
light source and displayed as a still while a second display shows live video
from the target being illuminated by the second light source. Simply
switching between display modes, as asserted by the Examiner, does not
encompass the claimed toggle between two light sources. Again, the display
is specifically tied to the light source and the Examiner does not account for
this feature.
The Examiner further asserts that “[t]he claim does not clearly set
forth toggling between the sources, but merely “illumination.” Ans. 8. This
simply is not true. The claim references illumination, but the illumination is
specifically tied to each of the two light sources. In the context of the claim,
toggling between illumination is toggling between the light sources.
Regardless, the Examiner’s interpretation simply refers to a toggling of
images. Even if a user were to toggle between images having differing light
sources, this is not the same as toggling between illumination from two
Appeal 2018-002459
Application 14/573,457

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lights sources that then causes a change in what is displayed on the two
monitors. The Examiner does not account for this link between toggling
light and changing the two displayed images/videos. Accordingly, we do
not sustain the Examiner’s rejections, all of which rely on this faulty
interpretation of the claims as applied to the references.
DECISION
The Examiner’s rejections are REVERSED.
DECISION SUMMARY
Claims
Rejected
Basis Affirmed Reversed
1, 3–11, and
19
§ 103 over
Iketani, Givol,
and Fukuyama
All None
2 § 103 over
Iketani, Givol,
Fukuyama and
Fulghum
2 None
REVERSED