Ex Parte Kazakevich et al

Patent Trial and Appeal BoardFeb 25, 2019

13709249 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/709,249 12/10/2012 100935 7590 02/27/2019 Dickinson Wright Smith & Nephew, Inc. 7000 W. William Cannon Drive Building 1 Austin, TX 78735 FIRST NAMED INVENTOR Yuri Kazakevich 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. PT-3538-US-DIV 73888-6500 CONFIRMATION NO. 1140 EXAMINER EDWARDS, JAMES A ART UNIT PAPER NUMBER 2448 NOTIFICATION DATE DELIVERY MODE 02/27/2019 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): dwpatents@dickinsonwright.com Patents.Dept. US@smith-nephew.com smith-nephew _pair@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YURI KAZAKEVICH and TUNG VAN LE Appeal 2018-006627 Application 13/709,249 1 Technology Center 2400 Before CARLA M. KRIVAK, HUNG H. BUI, and JON M. JURGOV AN, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1 and 3-14, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. 2 1 According to Appellants, the real party in interest is Smith & Nephew, Inc. App. Br. 3. 2 Our Decision refers to Appellants' Appeal Brief ("App. Br.") filed January 16, 2018; the Reply Brief ("Reply Br.") filed June 12, 2018; Examiner's Answer ("Ans.") mailed April 30, 2018; Final Office Action ("Final Act.") mailed July 28, 2017; and original Specification ("Spec.") filed December 10,2012. Appeal2018-006627 Application 13/709,249 STATEMENT OF THE CASE Appellants' invention relates to an endoscopic imaging system including components that "are freely attachable and detachable from each other." Spec. ,r 8; Title. Appellants' endoscopic imaging system (500) includes an endoscope (120), a light source assembly (LED endocoupler 125) detachably coupled to the endoscope (120), and an imaging unit (505) detachably coupled to the light source assembly (125) via a coupling means 140, the imaging unit receiving light through the endoscope reflected from a region of interest, shown in Figure 5, as reproduced below. Spec. ,r,r 11-12, 14--15, 17, 35, and 49-50, Fig. 5; Abstract. 120 C'()}.r1Â·1<.C)L. Figure 5 shows an endoscopic imaging system having an imaging unit with a wireless transceiver. Spec. ,r,r 31, 49-50. 2 Appeal2018-006627 Application 13/709,249 Appellants' endoscopic imaging system also includes a rotational joint (128) that allows an LED assembly (305) (of the light source assembly (125)) and the endoscope (120) "to rotate together as a unit about axis 145, via the use of rotation handle 126, relative to the remainder of LED endocoupler 125 and imaging unit 130" shown in Figure 3, as reproduced below. See Spec. ,r 38, Fig. 3. LI:. t) _E.NI)()(:{) 1.)~PL. I~Â·. F:. (~~Â· 12~ ___ .. , Â·---------- -------Â·~~Â·Â·---Â·--Â·------- Â·--Â·-Â·Â·Â·Â·Â· -------- .. - _,, .,., ________________________ _ - - -- ---- ---------Â·-------Â·Â·Â·Â· .. ~Â·Â·Â·Â·Â· Â·Â·Â·Â·Â·Â·Â·Â·Â·Â·Â·------- Â·Â·Â·Â·Â·, / 32G ", .... ~:.--\ 1'2:9 Figure 3 shows a cross-sectional view of an LED endocoupler of the endoscopic imaging system. Spec. ,r 29. Independent claim 1, reproduced below, is exemplary of the subject matter on appeal. 1. An endoscopic imaging system comprising: an endoscope; a light source assembly releasably coupled directly to the endoscope, the light source assembly configured to create and 3 Appeal2018-006627 Application 13/709,249 transmit light to the endoscope for illuminating a region of interest; an imaging unit releasably coupled directly to the light source assembly, the imaging unit configured to receive light through the endoscope reflected from the region of interest; wherein the imaging unit comprises a wireless transceiver that receives and transmits control signals and image data representing the image of the region of interest wirelessly from and to an external unit, wherein the imaging unit is configured to remain stationary while the endoscope and light source assembly rotate together about a shared axis. App. Br. 20-22 (Claims App.). Evidence Considered Thompson US 2002/0028986 Al Mar. 7, 2002 Kazakevich US 2003/0050534 Al Mar. 13, 2003 Rovengno US 2005/0018042 Al Jan.27,2005 MacKinnon et al. US 2005/0228231 Al Oct. 13, 2005 ("Mac Kinnon") Hirose et al. US 2007/0213586 Al Sept. 13, 2007 ("Hirose") Examiner's Rejections (1) Claims 1, 3-7, 9-12, and 14 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over MacKinnon, Kazakevich, and Thompson. Final Act. 4--13. (2) Claim 8 stands rejected under 35 U.S.C. Â§ 103(a) as being 4 Appeal2018-006627 Application 13/709,249 unpatentable over MacKinnon, Kazakevich, Thompson, and Hirose. 3 Final Act. 13-14. (3) Claim 13 stands rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over MacKinnon, Kazakevich, Thompson, and Rovegno. 4 Final Act. 14--15. ANALYSIS Claims 1. 3-7. 9-12. and 14 With respect to independent claim 1, the Examiner finds MacKinnon's color endoscopy system, shown in Figure 1, teaches an endoscopic imaging system including an endoscope (20), a light source assembly (computer controlled light source (CCLS) 10) releasably coupled directly to the endoscope, and an imaging unit (image capture device described in MacKinnon's paragraph 32) releasably coupled directly to the light source assembly, the imaging unit comprising a wireless transceiver, as 3 The Final Office Action rejects claim 8 as obvious over MacKinnon, Kazakevich, and Hirose, without listing Thompson. Final Act. 13. The Examiner acknowledges "[t]he final office action contains a typo that did not show the Thompson reference" in the rejection of claim 8. Ans. 7-8. We find the Examiner's oversight and typo to be harmless error and consider claim 8 to be rejected underÂ§ 103(a) over MacKinnon, Kazakevich, Thompson, and Hirose. Further discussion of claim 8 is presented in our analysis below. 4 The Final Office Action rejects claim 13 as unpatentable over MacKinnon, Kazakevich, and Rovegno, without listing Thompson. Final Act. 14. The Examiner acknowledges "[t]he final office action contains a typo that did not show the Thompson reference" in the rejection of claim 13. Ans. 9. We find the Examiner's oversight and typo to be harmless error and consider claim 13 to be rejected underÂ§ 103(a) over MacKinnon, Kazakevich, Thompson, and Rovegno. Further discussion of claim 13 is presented in our analysis below. 5 Appeal2018-006627 Application 13/709,249 claimed. Final Act. 4--5 (citing MacKinnon ,r,r 12, 26, 31-32, 40, and 71, Fig. 1); Ans. 3. MacKinnon's Figure 1 is reproduced below with additional markings for illustration. 60 \/II)IÂ·:C) 70 -----0 l L:NJT 50 L\L:\CE C'/\IfL E. "" ) ' rn Figure 1 40 30 20 { ....... ~ I)I:.:,;Â·1 /\I., MacKinnon's Figure 1 shows a color endoscopy system including a computer controlled light source (CCLS) 10. MacKinnon ,r,r 47, 69. The Examiner also relies on Kazakevich and Thompson for teaching and suggesting Appellants' claimed "light source assembly releasably coupled directly to the endoscope." Final Act. 6-7 ( citing Kazakevich ,r,r 32, 46, Fig. 2; Thompson ,r,r 13, 32, 34, Fig. 2). The Examiner further relies on Kazakevich for teaching an imaging unit configured to receive light through the endoscope reflected from a region of interest, the imaging unit configured to remain stationary while the endoscope and light source assembly rotate together about a shared axis, as recited in claim 1. Final Act. 6 (citing Kazakevich ,r,r 32, 46, 49, Fig. 2). 6 Appeal2018-006627 Application 13/709,249 Appellants dispute (1) the Examiner's factual findings regarding MacKinnon and Kazakevich, and (2) the Examiner's rationale for combining MacKinnon, Kazakevich, and Thompson. In particular, Appellants argue MacKinnon's light source assembly (CCLS 10) is coupled to the endoscope indirectly (by way of light guide 90), not directly as required by claim 1. Reply Br. 2; App. Br. 12. Appellants argue the Examiner's claim interpretation (that a "[c]onnection via a light guide/cable falls within the BRI of 'coupled directly,"' see Ans. 5) is "wholly inconsistent with how one of ordinary skill would read the term ['coupled directly'], and wholly inconsistent with Appellant's specification." Reply Br. 4; App. Br. 14--15. Appellants also argue "even if the teachings of Kazakevich and Thompson are precisely as the Office action suggests ... MacKinnon, Kazakevich, and Thompson still fail to [sic] teach 'a light source assembly releasably coupled directly to the endoscope, the light source assembly configured create[ sic] and transmit light to the endoscope for illuminating a region of interest"' as claimed. App. Br. 12. Appellants further argue the combination of MacKinnon, Kazakevich, and Thompson does not teach or suggest, "'an imaging unit releasably coupled directly to the light source assembly' in the situation where the claimed light source assembly is 'releasably coupled directly to the endoscope."' App. Br. 10-11; Reply Br. 2. Appellants additionally assert the skilled artisan would not replace (i) Thompson's light bulb with MacKinnon's "complex and orientationally sensitive" CCLS 10, or (ii) MacKinnon's CCLS 10 with Thompson's single light bulb as "such changes the principle of operation of MacKinnon." App. Br. 15-16. Appellants' arguments are persuasive only in part. Particularly, we agree with Appellants that MacKinnon's connection between light source assembly 10 and endoscope 20 via light guide 90 does not teach the claimed 7 Appeal2018-006627 Application 13/709,249 "coupled directly" (i.e., "light source assembly releasably coupled directly to the endoscope" recited in claim 1 ). The Examiner's rejection, however, is not predicated only on a light guide connection teaching "coupled directly"; rather, the Examiner states "but even if it did not [ (i.e., even if connection via light guide does not fall within the BRI of 'coupled directly')], Thompson explicitly teaches direct connection without the light guide." Ans. 5 ( emphasis added). The Examiner similarly finds Kazakevich teaches and suggests a direct connection of a light source assembly to an endoscope as claimed. Final Act. 6 ( citing Kazakevich ,r,r 32, 46, 49, Fig. 2). Kazakevich's Figure 2 is reproduced below with additional markings for illustration. 168 ' 133 136 44 46 48 \ ' \.~Â·.t}).Et) C_Â·Â·\~:IER.)\ FIG.2 Kazakevich's Figure 2 shows a cross-sectional side view of an endoscope 42, an illumination assembly 26 (including a solid-state light source assembly 44 and a focusing assembly 46), and a video camera assembly 48. Kazakevich ,r,r 21, 32. Kazakevich's Figure 2 shows the light source assembly (26) is releasably coupled directly to the endoscope ( 42), the light source assembly 8 Appeal2018-006627 Application 13/709,249 (26) configured to create and transmit light to the endoscope ( 42) for illuminating a region of interest, as recited in claim 1. Final Act. 6; see Kazakevich ,r,r 12 ("The endoscope is removable and replaceable from the illumination assembly"), 32 ("illumination assembly 26 connected to proximal body 64 of endoscope 42 .... illumination assembly 26 includes a solid-state light source assembly 44 (FIG. 2) for generating white light that is conveyed to a working area 24 via insertion section 16 [ of endoscope 42]"), 34 ("Endoscope 42 is an interchangeable component of endoscopic system 10 which can be interchanged with endoscopes of other configurations"), 36 ("endoscope 42 and solid-state light source assembly 44 [ of illumination assembly 26] are independently hermetically sealed, so that other endoscopes may be removably attached to solid-state light source assembly 44 (e.g., flexible endoscopes)"), 58; Fig. 2. We agree with the Examiner that Kazakevich's video camera assembly ( 48) teaches the claimed imaging unit coupled directly to the light source assembly (26), the imaging unit configured to receive light through the endoscope reflected from the region of interest, as recited in claim 1. Final Act. 6; see Kazakevich ,r,r 32-33 ("Video camera assembly 48 is connected to illumination assembly 26 and transmits video signals representative of images at working area 24 for display on video monitor"), 46; Fig. 2. We also agree with the Examiner that a skilled artisan would understand an imaging unit may be releasably coupled to the endoscope's light source assembly. Final Act. 5 (citing MacKinnon ,r 32); Ans. 3. Particularly, MacKinnon teaches and suggests its image capture device (imaging unit) may be releasably coupled to the endoscope's light source assembly (CCLS 10). See MacKinnon ,r 32 ("the endoscopy system or CCLS provides an image capture device . ... The image capture device may 9 Appeal2018-006627 Application 13/709,249 be integral to the CCLS or it may be a modular component of an endoscopy system" ( emphasis added)). We therefore agree with the Examiner that the combination of Kazakevich and MacKinnon teaches "an imaging unit releasably coupled directly to the light source assembly, the imaging unit configured to receive light through the endoscope reflected from the region of interest" as recited in claim 1. Final Act. 5---6; Ans. 3. We are also not persuaded by Appellants' arguments that the Examiner's combination of references (i) lacks articulated reasoning and (ii) would change MacKinnon's principle of operation when MacKinnon's CCLS source is replaced by Thompson's light bulb. App. Br. 15-16; Reply Br. 4--5. It is well settled that "a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements." In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citations omitted). Nor is the test for obviousness whether a secondary reference's features can be bodily incorporated into the structure of the primary reference. See In re Keller, 642 F.2d 413,425 (CCPA 1981). Here, the rejection put forth by the Examiner does not require replacing MacKinnon's CCLS source with Thompson's light bulb, as Appellants argue. See App. Br. 16; Reply Br. 5. Rather, the Examiner finds the collective teachings of Kazakevich, MacKinnon, and Thompson would have suggested to the skilled artisan an endoscopic imaging system with a light source assembly releasably coupled directly to an endoscope and to an imaging unit. Ans. 6-7. The references' teachings suggest that the combination involves the predictable use of prior art elements according to their established functions. The Examiner also provides sufficient articulated reasoning for releasably coupling the endoscopic system's components, to provide "a system that is easily portable" with components 10 Appeal2018-006627 Application 13/709,249 "which may be mounted to the scope resulting in increased maneuverability of the scope and mobility of the entire system." Ans. 6; see KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 416-18 (2007). Accordingly, Appellants' arguments have not persuaded us of error in the Examiner's rejection of claim 1. Therefore, we sustain the Examiner's rejection of independent claim 1. No separate arguments are presented for dependent claims 3-7, 9-12, and 14. App. Br. 6, 16. Accordingly, for the reasons stated with respect to independent claim 1, we sustain the rejection of dependent claims 3-7, 9-12, and 14. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). Claims 8 and 13 The Final Office Action rejects claim 8 under 35 U.S.C. Â§ 103(a) as unpatentable over MacKinnon, Kazakevich, and Hirose, and claim 13 over MacKinnon, Kazakevich, and Rovegno, without listing Thompson. Final Act. 13-14. Appellants note "the Office action fails to make aprimafacie [sic] case of obviousness regarding claim 8" and claim 13 because Thompson is missing from these rejections. App. Br. 17-18. The Examiner, however, acknowledges "[ t ]he final office action contains a typo that did not show the Thompson reference" in the rejections of claims 8 and 13. Ans. 7-9. The Examiner therefore acknowledges the rejections of claims 8 and 13 include the Thompson reference. Ans. 8-9. We find the Examiner's oversight and typos to be a harmless error and consider claim 8 to have been rejected over MacKinnon, Kazakevich, Thompson, and Hirose, and claim 13 to have been rejected over MacKinnon, Kazakevich, Thompson, and Rovegno. Appellants further argue claims 8 and 13 are patentable because of their dependency from claim 1, and because Hirose and Rovegno do not cure the alleged deficiencies ofMacKinnon, Kazakevich, and Thompson. App. 11 Appeal2018-006627 Application 13/709,249 Br. 17-18. Because we find MacKinnon, Kazakevich, and Thompson are not deficient, Hirose and Rovegno are not needed to cover any deficiency, and therefore we sustain the rejection of dependent claims 8 and 13 for the reasons stated with respect to independent claim 1. CONCLUSION On the record before us, we conclude Appellants have not demonstrated the Examiner erred in rejecting claims 1 and 3-14 under 35 U.S.C. Â§ 103(a). DECISION As such, we affirm the Examiner's Final Rejection of claims 1 and 3- 14 under 35 U.S.C. Â§ 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 12