Ex Parte Pascal et al

Patent Trial and Appeal Board

Jun 2, 2016

12986384 (P.T.A.B. Jun. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/986,384 01107/2011
137540 7590 06/06/2016
Pearl Cohen Zedek Latzer Baratz LLP
Given Imaging Ltd.
1500 Broadway, 12th Floor
New York, NY 10036
FIRST NAMED INVENTOR
Amit PASCAL
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-73303-US 6248
EXAMINER
BRUMFIELD, SHANIKA M
ART UNIT PAPER NUMBER
2487
NOTIFICATION DATE DELIVERY MODE
06/06/2016 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
arch-uspto@pearlcohen.com
medtronic_mitg-et_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMIT PASCAL and HAIM BEZDIN1
Appeal2015-000633
Application 12/986,384
Technology Center 2400
Before CAROLYN D. THOMAS, SHARON PENICK, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-5, 7, 8, and 10-16, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Technology
The application is directed to a swallowable capsule containing a
camera that allows for both a wide field of view with moderate
1 According to Appellants, the real parties in interest are Given Imaging Ltd.
and Covidien plc. App. Br. 1.
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Application 12/986,384
magnification and a narrow field of view with substantially higher
magnification. Spec. 1, Abstract.
Representative Claim
Claim 1 is representative and reproduced below with the key
limitations emphasized:
1. An autonomous in-vivo imaging device comprising:
a source for illumination; and
an optical imaging system comprising:
a two-dimensional detector array;
a wide field of view imaging system for providing a
first image of an object on said detector array, said first
image having a first magnification relative to said object;
and
a narrow field of view imaging system for providing
a second image of part of said object on said detector array,
said second image of part of said object having a second
magnification substantially greater than said first
magnification, wherein said narrow field of view imaging
system comprises lenses disposed axially within said wide
field of vievv imaging system, and wherein both of said
imaging systems utilize at least one common lens to
project an image onto said detector array, the at least one
common lens comprising a lens disposed in front of said
detector array for focusing both of said first and said
second images onto said array.
Rejections
Claims 11-13 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Y okoi (US 2006/0209185 A 1; Sept. 21, 2006) in
view of Whitney et al. (US 5,161,051; Nov. 3, 1992).2 Final Act. 6.
2 For claim 11, we note the Examiner "inadvertently left out the rejection for
the limitation 'said second image is captured using lenses disposed axially
within lenses used for capturing said first image.'" Ans. 2. The Examiner
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Claims 1-3, 5, 7, 10, and 14--16 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Yokoi, Whitney, and
Lyons (US 6,734,911 Bl; May 11, 2004). Final Act. 9-10.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination ofYokoi, Whitney, Lyons, and Mizumoto (US 4,278,077;
July 14, 1981). Final Act. 21-22.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination ofYokoi, Whitney, Lyons, and Lannestedt (US
2004/0196372; Oct. 7, 2004). Final Act. 23.
ISSUES
1. Did the Examiner err in finding the combination of Y okoi,
Whitney, and Lyons teaches or suggests "said narrow field of view imaging
system comprises lenses disposed axially within said wide field of view
imaging system," as recited in claim 1, or "using lenses disposed axially
within lenses used for capturing said first image," as recited in claim 11?
2. Did the Examiner err in finding the combination of Y okoi,
Whitney, and Lyons teaches or suggests "said second image of part of said
object having a second magnification substantially greater than said first
magnification," as recited in claim 1, and commensurately recited in claim
11?
determines the rejection of this limitation is identical to that of the same
limitation in claim 1, which relies upon the prior art Lyons. Id. Appellants
correctly assumed the same in their Appeal Brief and relied upon the same
arguments made for claim 1. App. Br. 7. Thus, for claim 11 (and dependent
claims 12 and 13), we interpret, as do Appellants, the Examiner's rejection
as being based on the combination of Y okoi, Whitney, and Lyons, just as
claim 1. Accordingly, we view the Examiner's mistake as harmless error.
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3. Did the Examiner err in finding Lyons teaches or suggests "at
least one common lens comprising a lens disposed in front of said detector
array for focusing both of said first and said second images onto said array,"
as recited in claim I, and commensurately recited in claim I I?
4. Did the Examiner err in finding a person of ordinary skill in the
art at the time of the invention would have combined Y okoi, Whitney, and
Lyons as suggested by the Examiner?
ANALYSIS
Claims 1-5, 7, 8, and 10--16
Appellants make identical arguments for both independent claims I
and I 1. App. Br. 7. Appellants first argue Figure 5A of Lyons fails to teach
or suggest "said narrow field of view imaging system comprises lenses
disposed axially within said wide field of view imaging system" (App. Br.
9-I I), but this argument is unpersuasive because Appellants do not dispute
that Figure IA of Lyons also teaches or suggests this limitation, a further
finding the Examiner made in the Response to Arguments section of the
Final Action. See Final Act. 3; App. Br. I2 (admitting that "lens element IO
in Lyons' Fig. IA is a single lens element with both a wide angle field of
view and a narrow-angle field of view").
For Figure IA of Lyons, Appellants instead argue that the system fails
to teach or suggest "a second image that has a magnification substantially
greater than the magnification of the wide angle field of view imaging
system." App. Br. I2-I3. We are not persuaded. The Examiner relies upon
two separate sources for satisfying the magnification limitation: Lyons and
Y okoi. First, the Examiner relies upon Figure I I of Lyons and the
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Application I2/986,384
accompanying text. Ans. 6. Figure I I depicts a different embodiment "that
uses a zoom lens ... to provide the wide angle and narrow angle images."
Lyons I I :62---64. In particular, the system will "zoom out to the wide-angle
view" and "zoom in to the narrow-angle view." Lyons Fig. I2 (caps
omitted), I2:6-7; see also 8:I-IO, 7:55 (teaching "zoom" and "changing the
magnification" for Fig. IA). Thus, the magnification of the narrow-angle
view in Figure I I is greater than that of the wide-angle view, and Appellants
do not dispute the obviousness of the difference being substantial.
Appellants contend "Lyons' zoom lens suggests that Lyons' tracking
system has only a single imaging system that switches between a wide field
of view and a narrow field of view." Reply Br. 2. Appellants have not
sufficiently explained how the independent claims preclude this (cf claim 3,
which introduces the requirement of a composite image as a dependent
claim), but regardless, this argument only addresses the system shown in
Figure I I in Lyons, whereas the Examiner cites other embodiments as
teaching a composite image simultaneously including both the wide field of
view and the narrow field of view. Final Act. I5 (citing Lyons Fig. 5B,
8:52---6I); see also Lyons Fig. 2B, 4:46-47 (teaching same for Fig. IA).
Moreover, the Examiner does not rely solely on Lyons for the
magnification limitation and separately finds Y okoi teaches an "in-vivo
imaging system comprising a magnified field of view and a wide-range field
of view." Final Act. 3 (citing Yokoi i-f 47). We agree with the Examiner,
and Appellants do not persuasively dispute Yokoi's teaching. See App. Br.
8-9. Instead, Appellants merely question whether a person of ordinary skill
would combine the references as suggested.
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Specifically, Appellants argue that if the magnification of Y okoi is
combined with Lyons, "[t]he magnification of the narrow-angle field of view
may disrupt Lyons' complex tracking system" because zooming may slow
Lyons' tracking system and because "a small part of the imaging plane of
the low magnification system is blocked by the high magnification
components." App. Br. 14 (citing Lyons 4:6-8; Spec. 3). We are not
persuaded. As the Examiner correctly points out, Lyons already teaches
magnification. Ans. 6. With respect to the speed of the transition between
narrow angle and wide angle, Figure 11 of Lyons depicts a system that
zooms in for narrow angle and zooms out for wide angle (Lyons 5:25-26,
Fig. 12), so Lyons already determined that any time required for zooming
out is sufficiently rapid. Similarly, Figure IA of Lyons depicts a lens
element with a narrow-angle portion in the center and a wide-angle portion
in the periphery, and Lyons teaches such a system can have zooming or
magnification (Lyons 8: 1-10, 7:55) with no discussion of concerns about
blockage or speed. Nor have Appellants sufficiently persuaded us that a
person of ordinary skill-rather than a mere automaton---could not
overcome any minor challenges of blockage or speed that did arise from
such a combination using nothing more than ordinary skill and predictable
results.
Appellants next argue a person of ordinary skill would not modify
Y okoi to have a narrow-angle lens systems "axially within" a wide-angle
lens system because "Y okoi contends that the space constraint problem has
already been solved" by "placing the two optical systems vertically adjacent
to each other." App. Br. 15 (citing Yokoi i-f 47), 18-19; Reply Br. 3. We are
not persuaded. The cited paragraph of Y okoi actually teaches that sharing a
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"common cover glass 37" and "common solid-state image pickup element 7"
is what "enables the capsule type endoscope to be smaller." Y okoi i-f 4 7
(emphasis added). Thus, contrary to Appellants' assertion, Y okoi actually
teaches towards "common" elements and away from "separate" elements.
Id. As the Examiner correctly notes, the combination of Y okoi with Lyons
and Whitney also would have the benefit of viewing two fields of view
simultaneously (Ans. 9) and having Lyons' tracking system. Ans. 4, 6.
Appellants further argue "Lyons teaches away from a common lens
for focusing both narrow-angle images and wide angle images onto a single
detector." App. Br. I 7. We are not persuaded. For example, in Figures IA
and I I of Lyons, camera I 7 will contain one or more lens elements (Lyons
5:35, 5:54-59; see also 6:6-7, 6:63---65), all of which are common to both the
narrow-angle and wide-angle images. Similarly, in Figure IA, "a combined
lens element I 0 distorts the visual field viewed by a camera I 7 to produce
coaxial wide angle and narrow angle views of a scene." Lyons 5:30-32.
Nothing in the claim language as written prevents lens element I 0 from
satisfying the "common lens" limitation.
Finally, Appellants contend "placing Whitney's relay lens system 28
into a system resulting from the combination of Y okoi and Lyons ... is not a
simple combination and would not necessarily solve the above issue of
focusing both" the narrow- and wide-angle systems. App. Br. I 9. Similarly,
Appellants argue "neither Lyons nor Whitney teaches systems readily
capable of incorporation within [an] autonomous in-vivo imaging device."
Reply Br. 3. However, Appellants fail to sufficiently support these
assertions. Moreover, Appellants contend a person of ordinary skill would
"have no motivation to combine a common focusing lens as allegedly taught
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by Whitney" with Lyons because Lyons does not teach or suggest a common
lens (App. Br. 17-18), but Appellants' arguments are unpersuasive because
as discussed above, we find that Lyons does teach or suggest a common
lens.
Accordingly, we sustain the Examiner's rejection of independent
claims 1 and 11, and claims 2-5, 7, 8, 10, and 12-16, which Appellants
argue are patentable for similar reasons. See App. Br. 7, 19; 37 C.F.R.
§ 41.37(c)(l)(iv).
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 1-5, 7, 8, and 10-16.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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