Ex Parte HeerenDownload PDFPatent Trial and Appeal BoardDec 28, 201714496446 (P.T.A.B. Dec. 28, 2017) 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. 14/496,446 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. 2 Appeal 2017-004775 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 3 Appeal 2017-004775 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 4 Appeal 2017-004775 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. 5 Appeal 2017-004775 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 6 Appeal 2017-004775 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 7 Copy with citationCopy as parenthetical citation