Ex Parte Iddan et al

Patent Trial and Appeal Board

Dec 4, 2012

10529735 (P.T.A.B. Dec. 4, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte GAVRIEL J. IDDAN and ZVIKA GILAD
__________

Appeal 2012-000986
Application 10/529,735
Technology Center 3700
__________

Before JEFFREY N. FREDMAN, STEPHEN WALSH, and
ERICA A. FRANKLIN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an in vivo
sensing system. The Examiner rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

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Statement of the Case
Background
The Specification teaches “an in vivo sensing system incorporating a
sensing device which may be moved, for example, in a friction-reduced
manner” (Spec. 2, ll. 9-11). According to the Specification, “the sensing
device is movably disposed within a typically transparent housing or outer
covering such that the orientation of the sensing device may be easily
changed in response to substantially small forces, for example, gravitational
forces, or electro-magnetic torque generating fields, magnetic torque
generating fields” (Spec. 2, ll. 11-15).
The Claims
Claims 1-12, 14, 15, 18, 24-29, 32, 33, 36, 38-40, 43, and 45-48 are
on appeal. Claim 1 is representative and reads as follows:
1. An in vivo sensing system comprising:
a housing comprising:
at least one imaging device that is freely
movable within the housing in any rotational direction
without being mounted to the housing;
at least one directional activator within said
imaging device; and
at least one friction reducing mechanism
disposed between said housing and said imaging
device to permit free movement of said imaging
device within said housing; and
at least one directional actuator external to said
housing to control said at least one directional activator so as
to change the orientation of said imaging device to any
direction with respect to said housing.

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The issues
A. The Examiner rejected claims 1, 3, 4, 7, 10-12, 14, 24-29, 32, 36, 40,
43, 45, 47, and 48 under 35 U.S.C. § 103(a) as obvious over Meron,
1

Dunne,
2
and Canton
3
(Ans. 4-13).
B. The Examiner rejected claims 2, 6, 8, 9, 18, 33, 38, and 39 under 35
U.S.C. § 103(a) as obvious over Meron, Dunne, Canton, and Kilcoyne
4

(Ans. 13-14).
C. The Examiner rejected claims 5, 18, 38, and 39 under 35 U.S.C. §
103(a) as obvious over Meron, Dunne, Canton, and Kovacs
5
(Ans. 15).
D. The Examiner rejected claim 46 under 35 U.S.C. § 103(a) as obvious
over Meron, Dunne, Canton, and Mullick
6
(Ans. 16-17).
E. The Examiner rejected claim 15 under 35 U.S.C. § 103(a) as obvious
over Meron, Dunne, Canton, and Gross
7
(Ans. 17-18).
A. 35 U.S.C. § 103(a) over Meron, Dunne, and Canton
The Examiner finds that Meron teaches “an in-vivo sensing system
(10, 50, 70) comprising a capsule-shaped transparent housing (see figs. 1B, 5
& 7); wherein the housing includes at least one imaging device (14, 54, 74) .
. . configured to image any direction with respect to said housing (see figs. 5
& 7); wherein the system includes at least one transmitter 16” (Ans. 4-5).
The Examiner finds that Dunne teaches:

1
Meron et al., US 2002/0109774 A1, published Aug. 15, 2002.
2
Dunne et al., US 6,626,834 B2, issued Sep. 30, 2003.
3
Canton, D., US 6,145,393, issued Nov. 14, 2000.
4
Kilcoyne et al., US 6,285,897 B1, issued Sep. 4, 2001.
5
Kovacs et al., US 5,833,603, issued Nov. 10, 1998.
6
Mullick et al., US 2003/0167000 A1, published Sep. 4, 2003.
7
Gross, J., US 5,318,557, issued Jun. 7, 1994.
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an in vivo sensing system comprising: (a) a housing (12, 52)
(see figs. 1-12) comprising: (i) at least one imaging device
24 (see col. 12, lines 37-47); (ii) at least one directional
activator 26 within said imaging device 24 (see col. 9, lines
50-52; col. 10, lines 3-6); (iii) at least one friction reducing
(i.e. lubricant) mechanism 20 disposed between said housing
(12, 52) said imaging device 24 to permit movement of said
imaging device within said housing (12, 52) by virtue of
being a lubricant (see col. 9, lines 41-49); and, (b) at least
one directional actuator (120, 146) external to said housing
(12, 52) to control said at least one directional activator 26
so as to change the orientation of said imaging device 24
with respect to said housing (12, 52).

(Ans. 5-6.) The Examiner finds that “Canton discloses a sensing device
comprising an optical platform including: (a) a housing 16 (see fig. 10)
comprising: (b) at least one friction reducing mechanism 18 disposed
between the housing 16 and a sensing device 17” (id. at 9).
The Examiner finds it obvious:
to provide the system and method of Meron et al. with a
housing having at least one imaging device, at least one
directional activator within said imaging device, at least one
friction reducing mechanism between said housing and said
imaging device, and at least one directional actuator as
taught by Dunne et al. in order to achieve wide angle
imaging of body lumens by combining a plurality of images
so as to most effectively view and image said body lumens
via volumetric scanning thereby reducing the cost and
complexity of the electronics process involved in processing
the signals from the individual transducers of the transducer
array which would otherwise be formidable.

(Id. at 10.)
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The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that Meron, Dunne, and Canton
render independent claims 1, 32, and 43 obvious?
Findings of Fact
The following findings of fact (“FF”) are supported by a
preponderance of the evidence of record.
1. Figure 1B of Meron is reproduced below:

“FIG. 1B is a schematic radial cross section illustration of a system
comprising four optical paths 11, 11', 11" and 11'" in all of which remitted
light is directed to a single imager 14” (Meron 2 ¶ 0039).
2. Meron teaches that a “swallowable capsule comprising a video
camera for imaging the GI tract . . . . The capsule 10 comprises . . . a system
19 including lenses 11 and mirrors 18, all positioned behind optical window
12, an imager 14 . . . and transmitter 16 and antenna 17 for transmitting
video signals from imager 14” (Meron 3 ¶ 0035).
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3. Meron teaches that the capsule may be “a transparent sphere
shaped device” (Meron 4 ¶ 0057),
4. Figure 11 of Dunne is reproduced below:

“FIG. 11 shows the incorporation of an annular magnet in any embodiment”
(Dunne, col. 9, ll. 19-20).
5. Dunne teaches an imaging device where
a high voltage pulse generator 150 emits excitation pulses
which cause the transducer 24 to emit pulses of ultrasound,
and thus to interrogate the target volume. The transducer 24
also receives the resultant ultrasonic echo trains, which are
then processed via an imaging subsystem 152 in order to
create images on a display system 154.

(Dunne, col. 12, ll. 39-45.)
6. Dunne teaches that that there “is a moveable carriage 22
mounted in the housing, and on the moveable carriage 22 there is an
ultrasonic transducer 24 and a permanent magnet 26. They are mounted to
the stator assembly 16 by means of a gimbal mount 28” (Dunne, col. 9, ll.
50-54).
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7. Dunne teaches that the “interior of the housing 12 is filled with
a sound-conducting or ultrasonic-conducting fluid 20 . . . The ultrasonic
conducting fluid 20 also serves as a lubricant” (Dunne, col. 9, ll. 45-49).
8. Dunne teaches a directional actuator that:
When energized for attraction, the solenoid electromagnet
120 will tend to bring the transducer axis 36 into alignment
with the probe axis 38. When the solenoid electromagnet
120 is energized for repulsion of the permanent magnet 26,
it will tend to force the transducer axis 36 away from the
probe axis 38. Either case may facilitate proper starting of a
spiral scanning motion, depending upon the specifics of the
electronic means by which the coil drive signals are
generated for the hemispheric electromagnet coil assembly
18.

(Dunne, col. 16, ll. 2-11.)
9. Figure 10 of Canton is reproduced below:

“FIG. 10 is a cross sectional view” of the gimbal platform (Canton, col. 3, ll.
27-28).
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10. Canton teaches that
The suspension fluid 18 is selected so that it is of
approximately the same density as the inner vessel assembly
17, and as a result the inner vessel assembly 17 is able to
float in substantially neutral buoyancy. The suspension fluid
18 must also have similar optical qualities as the viewing
ports 19, 23 in that the fluid must also be transparent to the
wavelengths of light required by the optical device 20.

(Canton, col. 4, ll. 53-59.)
11. Canton teaches that “[i]ntegral to the outer vessel 16 is a first
viewing port 19 that is transparent to the wavelengths of light required by
the optical instrument in use” (Canton, col. 3, ll. 57-59).
12. The Specification teaches that the “field of view that can be
captured by the imaging device may be widened. In one embodiment the
external actuation may orient the optical axis to any desired direction”
(Spec. 2, ll. 23-25).
13. The Specification teaches that “each of the housing 110 and the
liquid 114 are partially transparent or substantially transparent relative to the
wavelength or wavelengths of the light used by the imaging sensor 116 or by
the illumination source 118 to illuminate the area to be imaged” (Spec. 5, ll.
3-6).
Principles of Law
“Although operational characteristics of an apparatus may be apparent
from the specification, we will not read such characteristics into the claims
when they cannot be fairly connected to the structure recited in the claims.”
In re Hiniker Co., 150 F.3d 1362, 1368 (Fed. Cir. 1998).
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“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).“If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417. As noted by the Court in KSR, “[a] person of
ordinary skill is also a person of ordinary creativity, not an automaton.” Id.
at 421.
Analysis
Claims 1 and 32
We begin with claim interpretation. In addition to requiring a freely
movable imaging device, an external directional activator, and a friction
reducing mechanism, claim 1 requires the actuator be able “to change the
orientation of said imaging device to any direction with respect to said
housing” (Claim 1). We first look to the Specification for guidance on the
interpretation of the “any direction” requirement. The Specification teaches
that the “field of view that can be captured by the imaging device may be
widened. In one embodiment the external actuation may orient the optical
axis to any desired direction” (Spec. 2, ll. 23-25; FF 12).
We therefore interpret claim 1, consistent with the Specification, to
require that the optical axis may be oriented in any direction. Claims 1 and
32 do not, however, include a requirement that the apparatus must be able to
capture images from any orientation. That is, there is no requirement in
either claim 1 or 32 that the entire housing is transparent. This is supported
by the limitation of claim 7, which requires that “the housing is at least
partially transparent,” which reasonably supports the interpretation that the
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housing of claim 1 is not entirely transparent or claim 7 would not be further
limiting.
Appellants contend that the “Examiner has not shown where any of
the cited references disclose to change the orientation of said imaging
device/image sensor to any direction with respect to the housing or to
capture images from any orientation with respect to the housing” (App. Br.
6).
With regard to Appellants’ first argument, the ability to change the
orientation of the image sensor in any direction, Figure 10 of Canton
discloses a floating gimbal with optical sensors which may be oriented in
any desired configuration with respect to the housing (FF 9-11). We agree
with the Examiner that “the imaging device 17 of Canton is fully capable of
free movement within the housing/outer covering 16 of the device of
Canton” (Ans. 20).
With regard to Appellants’ second argument, the ability to “capture
images from any orientation with respect to the housing,” this limitation is
not found in claim 1. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(“Many of appellant’s arguments fail from the outset because . . . they are
not based on limitations appearing in the claims.”).
Claim 43
Claim 43 stands on different grounds, however, since claim 43 recites
a step of “capturing images from any of said orientations.” Appellants have
correctly pointed out that each of the prior art references teaches accessing
the images through optical windows or view ports, where the optical
window in Meron (FF 2), Dunne (FF 12), and the view port of Canton (FF 9,
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11) would not permit image capture from any orientation. The Examiner
points to Meron’s teaching that the capsule may be “a transparent sphere
shaped device” (Meron 4 ¶ 0057; FF 3), but provides no evidence that the
entire sphere would have been transparent. Meron is teaching a sphere in
the context of cylindrical shapes or other shapes, and there is no indication
that Meron’s device is intended to capture images from any orientation as
required by claim 43. Indeed, Meron’s disclosed device can only capture
images through optical windows and not the opaque rear portion, which
would exclude about half of the device (FF 1-2).
Conclusions of Law
The evidence of record supports the Examiner’s conclusion that
Meron, Dunne, and Canton render claims 1 and 32 obvious.
The evidence of record does not support the Examiner’s conclusion
that Meron, Dunne, and Canton render claim 43 obvious.
B., C., and E. 35 U.S.C. § 103(a)
Appellants do not separately argue the claims in these obviousness
rejections. Having affirmed the obviousness rejection of Claims 1 and 32
over Meron, Dunne, and Canton, we also find the further combinations with
Kilcoyne, Kovacs, or Gross, renders claims 2, 5, 6, 8, 9, 15, 18, 33, 38, and
39 obvious for the reasons given by the Examiner (see Ans. 13-15, 17-18).
D. 35 U.S.C. § 103(a)
This rejection relies upon the underlying obviousness rejection over
claim 43 of Meron, Dunne, and Canton. Having reversed the rejection of
claim 43 over Meron, Dunne, and Canton, we necessarily reverse the
obviousness rejection of claim 46 further including Mullick, since Mullick
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does not address a step of “capturing images from any of said orientations”
as required by claim 43.
SUMMARY
In summary, we affirm the rejection of claims 1 and 32 under 35
U.S.C. § 103(a) as obvious over Meron, Dunne, and Canton. Pursuant to 37
C.F.R. § 41.37(c)(1), we also affirm the rejection of claims 3, 4, 7, 10-12,
14, 24-29, 36, 40, as these claims were not argued separately.
We reverse the rejection of claims 43, 45, 47, and 48 under 35 U.S.C.
§ 103(a) as obvious over Meron, Dunne, and Canton.
We affirm the rejection of claims 2, 6, 8, 9, 18, 33, 38, and 39 under
35 U.S.C. § 103(a) as obvious over Meron, Dunne, Canton, and Kilcoyne.
We affirm the rejection of claims 5, 18, 38, and 39 under 35 U.S.C. §
103(a) as obvious over Meron, Dunne, Canton, and Kovacs.
We reverse the rejection of claim 46 under 35 U.S.C. § 103(a) as
obvious over Meron, Dunne, Canton, and Mullick.
We affirm the rejection of claim 15 under 35 U.S.C. § 103(a) as
obvious over Meron, Dunne, Canton, and Gross.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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