Ex Parte Heeren

Patent Trial and Appeal Board

Dec 28, 2017

14496446 (P.T.A.B. Dec. 28, 2017)

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.
14/496,446 09/25/2014 Tammo Heeren PAT055993-US-NP 1140
26356
ALCON
IP LEGAL
7590 01/02/2018 EXAMINER
PINKNEY, DA WAYNE
6201 SOUTH FREEWAY
FORT WORTH, TX 76134 ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
01/02/2018 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, docketing @ alcon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAMMO HEEREN1
Appeal 2017-004775
Application 14/496,446
Technology Center 2800
Before CATHERINE Q. TIMM, WESLEY B. DERRICK, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL2
Appellant appeals the Examiner’s decision to finally reject claims 1—
20, which constitute all the claims pending in this application. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant is the Applicant, Novartis AG, which, according to the Appeal
Brief, is the real party in interest. App. Br. 2.
2 In our Decision, we refer to the Specification filed September 25, 2014
(“Spec.”); Final Office Action dated March 3, 2016 (“Final Act.”); Appeal
Brief dated July 29, 2016 (“App. Br.”); Examiner’s Answer to the Appeal
Brief dated December 1, 2016 (“Ans.”); and Reply Brief dated January 26,
2017 (“Reply Br.”).
Appeal 2017-004775
Application 14/496,446
The Claimed Invention
Appellant’s disclosure relates to surgical microscopes having an
optical element controllable to selectively reduce glare from light reflected
from a surgical field. Spec. 11; Abstract. Claim 1 is illustrative of the
claimed subject matter on appeal and is reproduced below from the Claims
Appendix to the Appeal Brief (Appeal Br. 13) (key disputed claim language
italicized and bolded):
1. A method of operating a surgical microscope positioned in
an optical pathway between a surgical field and an observer, the
method comprising:
receiving light reflected from the surgical field at an image
sensor of the surgical microscope;
processing the received light to generate image data',
identifying portions of the image data representative of
glare from the surgical field', and
controlling an optical element positioned in the optical
pathway to limit the transmission of light associated with the
glare.
The References
The Examiner relies on the following references as evidence in
rejecting the claims on appeal:
Gross US 7,452,067 B2 Nov. 18,2008
Castelberg et al., US 2014/0063377 A1 Mar. 6, 2014
(hereinafter “Castelberg”)
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 1—15 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Gross (“Rejection 1”). Final Act. 2; Ans. 2.
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Application 14/496,446
2. Claims 16—19 are rejected under 35 U.S.C. § 103 as being
unpatentable over Gross as applied to claims 10 and 14 above (“Rejection
2”). Final Act. 4; Ans. 2.
3. Claim 20 is rejected under 35 U.S.C. § 103 as being
unpatentable over Gross in view of Castelberg (“Rejection 3”). Final Act. 5;
Ans. 2.
OPINION
Rejection 1
The Examiner determines that Gross discloses all of the limitations of
claim 1 and thus, anticipates the claim. Final Act. 2—3 (citing Gross, col. 14,
11. 52—67, col. 15,11. 1—21, col. 17,11. 54—62). Regarding the limitations
“processing the received light to generate image data” and “identifying
portions of the image data representative of glare from the surgical field,”
the Examiner interprets the phrase “image data” to mean “the light that is
received at the image sensor.” Ans. 2—3 (citing Spec. 134,11. 1—3, 9—11).
As support for construing the phrase “image data” to mean the light
that is received at the image sensor, the Examiner relies on paragraph 34 of
the Specification (Ans. 2—3), which states that “the method 10 can include
identifying portions of the image data or the light received at the image
sensor representative of glare from the surgical field” (Spec. 134,11. 1—3)
and “portions of the image data or the light received at the image sensor .. .
may also be identified” {id. at 11. 9-11).
Appellant argues that the Examiner’s rejection of claim 1 should be
reversed because Gross does not disclose or suggest “processing the
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Application 14/496,446
received light to generate image data” and “identifying portions of the image
data representative of glare from the surgical field,” as recited in the claim.
App. Br. 7; Reply Br. 2. In particular, Appellant argues that the Examiner’s
interpretation of the phrase “image data” is erroneous and inconsistent with
the language of the claim and the Specification. Reply Br. 2.
We concur with Appellant’s argument in this regard. Specifically, in
light of the Specification and language of the claims, we find that the
Examiner has improperly construed the phrase “image data,” as recited in
claim 1. On the record before us, we are also not persuaded that a
preponderance of the evidence supports the Examiner’s determination that
Gross discloses the steps of “processing the received light to generate image
data” and “identifying portions of the image data representative of glare
from the surgical field,” as required by the claim. In re Gleave, 560 F.3d
1331, 1334 (Fed. Cir. 2009) (requiring that to serve as an anticipatory
reference, “the reference must disclose each and every element of the
claimed invention.”).
During prosecution, claims are given their broadest reasonable
interpretation consistent with the specification. In re Am. Acad. Of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The words used in a claim
must be read in light of the specification, as they would have been
interpreted by one of ordinary skill in the art at the time of the invention. Id.
We are not persuaded that the Examiner’s interpretation constitutes the
broadest reasonable interpretation in light of the Specification and the
language of the claims.
Claim 1 recites “processing the received light to generate image data”
and the Specification discloses that “the received light may be processed to
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Application 14/496,446
generate image data.” Spec. 133. The Specification further discloses that
the image sensor 124 can include circuitry to generate electrical signals
and/or image data representative of the received light and provide the image
data to the computing device 118. Spec. 133, Figs. 1,2.
The Specification also discloses that
the computing device 118 generates the image data when
electrical signal(s) representative of the received light are
received from the image sensor/camera 124. Processing the
received light can include any one or more signal processing
steps.
Spec. 133.
In light of the Specification and the language of the claims, we
conclude that a person of ordinary skill in the art at the time of the invention
would have understood the term “image data” as recited in claim 1 as being
generated by some affirmative process and representative of the light
received at the image sensor—and not merely the natural transmission of
light that is received at the image sensor.
Applying the proper interpretation of the term “image data” discussed
above, the Examiner has not established by a preponderance of the evidence
that Gross discloses the “processing the received light to generate image
data” and “identifying portions of the image data representative of glare
from the surgical field” steps of claim 1.
As Appellant correctly points out (App. Br. 5), although the portions
of Gross that the Examiner relies on for disclosing these claim steps discuss
a sensor configured to trigger a transparency regulation element 30 to darken
portions of lens 22 based on detecting, for example, an infrared signal
generated by a device coupled to a monitor (Gross, col. 14,11. 52—67, col.
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Application 14/496,446
15,11. 1—21), the cited portions do not teach, suggest, or even mention
“processing the received light to generate image data” or “identifying
portions of the image data representative of glare,” as required by the claim.
As Appellant also notes (App. Br. 7), the “side-blinders 70” described
at column 17 of Gross are nothing more than passive devices attached to
either side of frame 24 (see Gross, col. 17,11. 54—62, Fig. 8) and do not teach
or suggest processing received light to generate image data or actually
identifying portions of the image data representative of glare in the manner
claimed.
We, therefore, cannot sustain the Examiner’s determination that Gross
discloses a method satisfying all of the steps of claim 1 and anticipates the
claim.
Because claims 2—9 depend from claim 1 and claims 10—15 include
the step of identifying portions of the light received associated with the glare
similar to claim 1, we also cannot sustain the Examiner’s rejection of these
claims.
Accordingly, we reverse the Examiner’s rejection of claims 1—15
under 35 U.S.C. § 102(b) as being anticipated by Gross.
Rejections 2 and 3
The foregoing deficiencies in the Examiner’s findings and conclusions
regarding the Gross reference are neither remedied by the Examiner’s
findings regarding the reference provided at pages 4—5 of the Final Office
Action in support of the second ground of rejection nor by the Examiner’s
findings regarding the combination of references including an additional
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Application 14/496,446
reference provided at pages 5—6 of the Final Office Action and cited in
support of the third ground of rejection.
Accordingly, we also reverse Rejections 2 and 3.
DECISION
The Examiner’s rejections of claims 1—20 are reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED
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