Ex Parte Amit

Patent Trial and Appeal Board

Oct 26, 2016

11723500 (P.T.A.B. Oct. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111723,500 03/20/2007
137540 7590 10/28/2016
Pearl Cohen Zedek Latzer Baratz LLP
Given Imaging Ltd.
1500 Broadway, 12th Floor
New York, NY 10036
FIRST NAMED INVENTOR
Pascal Amit
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P-9136-US 5716
EXAMINER
SANTOS RODRIGUEZ, JOSEPH M
ART UNIT PAPER NUMBER
3737
NOTIFICATION DATE DELIVERY MODE
10/28/2016 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@pearlcohen.com
medtronic_mitg-et_docketing@cardinal-ip.com
SurgicalUS@covidien.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PASCAL AMIT 1
Appeal2014-006857
Application 11/723,500
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
PERCURIAM
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
narrow band in-vivo imaging device. The claims are rejected as obvious.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellant, the Real Party in Interest is Given Imaging, Ltd.
(App. Br. 1).
Appeal2014-006857
Application 11/723,500
STATEMENT OF THE CASE
The Specification describes a narrow band in-vivo imaging device
that captures more than one narrow band image (Spec. i-f 1 ). Claims 1, 5-7,
9-13, and 17-32 are on appeal. Claim 1 is illustrative and reads as follows
(emphasis added):
1. An in-vivo imaging device for providing at least first and
second narrow band images of an in-vivo target area, the in-
vivo imaging device comprising:
a first type and a second type of narrow band
illumination sources of light radiation for simultaneously
illuminating the target area and giving rise to reflected radiation
therefrom, the first and second types of illumination sources
having non-overlapping first and second illumination spectra;
and
an imager to simultaneously capture said at least first and
second images based on simultaneously receiving the radiation
reflected from the target area by illumination from the first and
second types of illumination sources, the imager comprising an
array of a first and a second types of light sensitive elements
covered by wavelength sensitive filters and having differing
first and second sensitivity spectra, the first and the second
types of light sensitive elements being responsive to the first
and the second illumination spectra, respectively,
wherein values of full width half maximum (FWHM) of
the first and the second illumination spectra are less than values
of FWHM of the first and the second sensitivity spectra,
respectively,
wherein values of center wavelength and of FWHM of
the first illumination spectrum are such that an overlap between
the first sensitivity spectrum and the first illumination spectrum
is larger than an overlap between the first sensitivity spectrum
and the second illumination spectrum,
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Application 11/723,500
and wherein values of center wavelength and of FWHM
of the second illumination spectrum are such that an overlap
between the second sensitivity spectrum and the second
illumination spectrum is larger than an overlap between the
second sensitivity spectrum and the first illumination spectrum.
The claims stand rejected as follows:
I. Claims 1, 5-7, 9, 17-20, and 25 stand rejected under 35 U.S.C.
§ 103(a) as being obvious based on Refael, 2 Glukhovsky, 3 and Yaron. 4
II. Claims 1, 5-7, 9, 17-20, 25, 26, 31, and 32 stand rejected under
35 U.S.C. § 103(a) as being obvious based on Refael, Glukhovsky, Yaron,
and Gardiner. 5
III. Claims 10, 11, 21-23, 27, and 28 stand rejected under
35 U.S.C. § 103(a) as being obvious based on Refael, Glukhovsky, Yaron,
Gardiner, and Rotolante. 6
IV. Claims 12, 13, 24, 29, and 30 stand rejected under 35 U.S.C.
§ 103(a) as being obvious based on Refael, Glukhovsky, Yaron, Gardiner,
Rotolante, and Adler. 7
I.
The Examiner has rejected claims 1, 5-7, 9, 17-20, and 25 under
35 U.S.C. § 103(a) as being obvious based on Refael, Glukhovsky, and
Yaron. We focus our discussion on independent claims 1 and 25.
2 Refael, US 2003/0208107 Al, published Nov. 6, 2003.
3 Glukhovsky et al., US 2003/0120130 Al, published June 26, 2003.
4 Yaron, US 2001/0017649 Al, published Aug. 30, 2001.
5 Gardiner, US 2004/0158300 Al, published Aug. 12, 2004.
6 Rotolante et al., US 4,290,844, issued Sept. 22, 1981.
7 Adler, US 6,659,940 B2, issued Dec. 9, 2003.
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Appeal2014-006857
Application 11/723,500
We agree with Appellant that the Examiner erred in rejecting claims 1
and 25 as obvious over Refael, Glukhovsky, and Yaron.
Claim 1
Claim 1 recites an imager that includes an array of light sensitive
elements that exhibit particular characteristics. Relevant to this appeal, the
claimed array includes "a first and a second types of light sensitive elements
covered by wavelength sensitive filters and having differing first and second
sensitivity spectra, the first and the second types of light sensitive elements
being responsive to the first and the second illumination spectra,
respectively" (claim 1 ).
Claim 1 further defines the characteristics of the above-described
array, reciting:
wherein values of full width half maximum (FWHM) of
the first and the second illumination spectra are less than values
of FWHM of the first and the second sensitivity spectra,
respectively,
wherein values of center wavelength and of FWHM of
the first illumination spectrum are such that an overlap between
the first sensitivity spectrum and the first illumination spectrum
is larger than an overlap between the first sensitivity spectrum
and the second illumination spectrum,
and wherein values of center wavelength and of FWHM
of the second illumination spectrum are such that an overlap
between the second sensitivity spectrum and the second
illumination spectrum is larger than an overlap between the
second sensitivity spectrum and the first illumination spectrum.
(Claim 1.)
In view of the plain language of claim 1, read in light of the
Specification, we agree with Appellant that the wavelength properties of the
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Application 11/723,500
illumination sources and the light sensitive elements are structural, rather
than functional limitations, because they define what the claimed elements
are, and therefore, define the array (App. Br. 8). We also agree with
Appellant that "an illumination source emitting light in a certain wavelength
region will not be able to emit light in another wavelength region, or will
have first to undergo structural change" and that "adjusting the sensitivity
spectra of the light sensitive elements in order to achieve the required
overlapping requires using physically different filters" (id.; see also Reply
Br. 4).
Accordingly, we conclude that the Examiner erred in determining that
[t]he limitation of how the light sensitive elements are responsive to
illumination spectra having spectral regions being overlapped fails to set
forth a structural limitation and is not given patentable weight" (Ans. 3). We
likewise conclude that the Examiner erred in determining that "[ t ]he
limitation of modifying the values of center wavelength and of full width
half maximum (FWHM) have obtained a specific overlap between the
illumination and sensitivity spectrum fails to set forth a structural limitation
and is not given patentable weight" (id. at 3--4).
Therefore, because the Examiner does not give patentable weight to
the above-described claim limitations (Ans. 14--15), and does not identify
any disclosure in the cited art of an array with light sensitive elements and
filters in which the light sensitive elements are responsive to spectra having
values of center wavelength and FWHM as claimed, we reverse the rejection
of claim 1 based on Refael, Glukhovsky, and Yaron. We likewise, reverse
the rejection of claims 5-7, 9, and 17-20, as those claims depend from
claim 1.
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Application 11/723,500
Claim 25
Claim 25 recites
A method for providing a plurality of narrow band images of an
in-vivo target area by an in-vivo imaging device, the method
comprising: ... capturing the plurality of narrow band images
simultaneously based on simultaneously receiving radiation
reflected from the target area by an imager comprising an array
of a plurality of light sensitive elements covered by wavelength
sensitive filters and having differing corresponding sensitivity
spectra, ... (emphasis added).
Claim 25 further recites
wherein each of the plurality of light sensitive elements is
responsive to a corresponding illumination spectra,
wherein values of full width half maximum (FWHM) of
each of the plurality of illumination spectra are less than the
corresponding values of FWHM of sensitivity spectra,
respectively, and
wherein values of FWHM of each of the plurality of
illumination spectra are such that for each pair of corresponding
illumination source and light sensitive element, an overlap
between sensitivity spectrum of the light sensitive element and
the corresponding illumination spectrum is larger than overlaps
of the sensitivity spectrum and illumination spectra of other
illumination sources.
The Examiner relies on the same determinations discussed above with
regard to claim 1 in rejecting claim 25 (id. at 3--4). We are not persuaded for
the reasons discussed above. We also note that claim 25 is directed to a
method instead of an apparatus, and therefore, we agree with Appellant that
the Examiner has not established an evidentiary basis on this record to
support a conclusion that Refeal, Glukhovsky, and Yaron render obvious the
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Application 11/723,500
claimed method (App. Br. 10). Accordingly, we reverse the rejection of
claim 25.
II.
The Examiner has rejected claims 1, 5-7, 9, 17-20, 25, 26, 31, and 32
under 35 U.S.C. § 103(a) as being obvious based on Refael, Glukhovsky,
Y aron, and Gardiner. We focus our discussion on independent claims 1 and
25.
We agree with Appellant that the Examiner erred in rejecting claims 1
and 25 as being obvious over Refael, Glukhovsky, Yaron, and Gardiner.
The Examiner asserts that Gardiner teaches controlling the center
wavelength, and that the spectral bandwidth of the illumination light
spectrum would inherently provide a desired overlapping between the
illumination spectrum and the sensitivity spectrum (Ans. 7).
We are not persuaded. We agree with Appellant that Gandiner does
not teach adjusting wavelength of light sources to conform to the above-
described limitations of claims 1 and 25 (App. Br. 14). Accordingly,
because the Examiner does not point to any clear or specific teachings in
Gardiner that addresses the deficiencies discussed above of Refael,
Glukhovsky, and Yaron, we reverse the rejection of claims 1and25. We
likewise reverse the rejection of claims 5-7, 9, 17-20, 26, 31, and 32, which
depend, respectively, from claims 1 and 25.
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III.
The Examiner has rejected claims 10, 11, 21-23, 27 and 28 under
35 U.S.C. § 103(a) as being obvious based on Refael, Glukhovsky, Yaron,
Gardiner, and Rotolante. Because the Examiner has pointed to no clear or
specific teaching in Rotolante that addresses the deficiencies discussed
above of Refael, Glukhovsky, Yaron, and Gardiner, with respect to claim 1
or claim 25, from which claims 10, 11, 27, and 28 respectively depend, we
reverse the rejection of these claims.
Akin to independent claims 1 and 25, independent claim 21 recites, in
pertinent part:
an imager compnsmg a plurality of light sensitive
elements covered by wavelength sensitive filters and having
differing corresponding sensitivity spectra arranged in a mosaic
array for capturing a plurality of narrow band images
simultaneously,
wherein each of the plurality of light sensitive elements is
responsive to a corresponding illumination spectra,
wherein values of full width half maximum (FWHM) of
each of the plurality of illumination spectra is less than the
corresponding values of FWHM of sensitivity spectra,
respectively, and
wherein values of FWHM of each of the plurality of
illumination spectra are such that for each pair of corresponding
illumination source and light sensitive element, an overlap
between sensitivity spectrum of the light sensitive element and
the corresponding illumination spectrum is larger than overlaps
of the sensitivity spectrum and illumination spectra of other
illumination sources.
The Examiner relies on the same assertions concerning the disclosures
of Refael, Glukhovsky, Yaron, and Gardiner, discussed above with regard to
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Application 11/723,500
claims 1 and 25 in rejecting claim 21 (Ans. 10-12). Because the Examiner
has pointed to no clear or specific teaching in Rotolante that addresses the
above-identified deficiencies of Refael, Glukhovsky, Yaron, and Gardiner,
we reverse the rejection of this claim for the reasons set forth above.
Because they depend from claim 21, the rejection of claims 22 and 23 is also
reversed.
IV.
The Examiner has rejected claims 12, 13, 24, 29, and 30 under
35 U.S.C. § 103(a) as being obvious based on Refael, Glukhovsky, Yaron,
Gardiner, Rotolante, and Adler. Because the Examiner has pointed to no
clear or specific teaching in Adler that addresses the deficiencies discussed
above of Refael, Glukhovsky, Yaron, Gardiner, and Rotolante with respect
to claim 1, claim 21 or claim 25, from which claims 12, 13, 24, 29, and 30
respectively depend, we also reverse the rejection of these claims.
SUMMARY
We reverse the rejection of claims 1, 5-7, 9, 17-20, and 25 under
35 U.S.C. § 103(a) based on Refael, Glukhovsky, and Yaron.
We reverse the rejection of claims 1, 5-7, 9, 17-20, 25, 26, 31, and 32
under 35 U.S.C. § 103(a) based on Refael, Glukhovsky, Yaron, and
Gardiner.
We reverse the rejection of claims 10, 11, 21-23, 27 and 28 under 35
U.S.C. § 103(a) based on Refael, Glukhovsky, Yaron, Gardiner, and
Rotolante.
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Application 11/723,500
We reverse the rejection of claims 12, 13, 24, 29, and 30 under
35 U.S.C. § 103(a) based on Refael, Glukhovsky, Yaron, Gardiner,
Rotolante, and Adler.
REVERSED
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