Ex Parte Richardson et al

Patent Trial and Appeal BoardFeb 22, 2019

14214412 (P.T.A.B. Feb. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/214,412 03/14/2014 John Richardson 112802 7590 02/26/2019 TechLaw Ventures, PLLC 3290 West Mayflower Ave. Lehi, UT 84043 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. OMC-0017.NP 9492 EXAMINER ABAZA, AYMAN A ART UNIT PAPER NUMBER 2486 NOTIFICATION DATE DELIVERY MODE 02/26/2019 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): terrence.edwards@techlawventures.com docket@techlawventures.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN RICHARDSON, LAURENT BLANQUART, JEREMIAH D. HENLEY, and DONALD M. WICHERN Appeal2017-011410 1 Application 14/214,4122 Technology Center 2400 Before ERIC S. FRAHM, BARBARA A. BENOIT, and JOHN D. HAMANN, Administrative Patent Judges. HAMANN, Administrative Patent Judge. DECISION ON APPEAL Appellants file this appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1-10 and 12-34. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. 1 Our Decision relies upon Appellants' Appeal Brief ("App. Br.," filed May 22, 2017), Reply Brief ("Reply Br.," filed Sept. 7, 2017), and Specification ("Spec.," filed Mar. 14, 2014), as well as the Examiner's Answer ("Ans.," mailed July 7, 2017) and the Final Office Action ("Final Act.," mailed Dec. 22, 2016). 2 According to Appellants, the real party in interest is Depuy Synthes Products, Inc. App. Br. 3. Appeal2017-011410 Application 14/214,412 THE CLAIMED INVENTION Appellants' claimed invention relates to an endoscopic device having a fixed handpiece and a rotatable lumen with an image sensor located near the lumen's distal tip. Abstract. The claimed invention corrects the orientation of the images obtained from the image sensor as the user rotates the lumen with respect to the fixed handpiece, thereby providing a final displayed image with the desired orientation. Id. Claim 1 is illustrative of the subject matter of the appeal and is reproduced below. 1. An endoscopic device comprising: a hand-piece; a proximal portion and a distal portion comprising a tip; a lumen; an image sensor disposed within the lumen for providing visualization of an area, wherein the image sensor is at the distal portion near the tip of the endoscope; an angle sensor for detecting an angle of rotation of the hand-piece relative to the lumen; wherein the lumen is rotatable about an axis of the endoscope and with respect to the hand-piece; and an image signal processing pipeline for performing rotation transformations upon images that are captured by the image sensor based on the angle of rotation detected by the angle sensor, wherein the image signal processing pipeline is configured to rotate the images counter to the angle of rotation detected by the angle sensor to maintain a constant image horizon for a user on a display, and wherein an orientation of rotated images for display on the display is rotationally different than the orientation of the lumen. 2 Appeal2017-011410 Application 14/214,412 REJECTIONS ON APPEAL (1) The Examiner rejected claims 1, 10, 22, 23, and 34 under 35 U.S.C. Â§ I03(a) as being unpatentable over the combination of Robertson (US 2010/0286475 Al; published Nov. 11, 2010), Gunday (US 2003/0142753 Al; published July 31, 2003), and Henzler (US 2010/0125166 Al; published May 20, 2010). Final Act. 5-11; Ans. 2, 12, 14. The Examiner added Henzler to the combination of references for this rejection in the Answer without designating a new ground of rejection. Ans. 2, 12, 14. The Manual of Patent Examining Procedure (MPEP) provides that when "an answer includes a new ground of rejection that has not been designated as such," Appellants can file a petition with the Director or address the arguments in a Reply. See MPEP Â§ 1207.03 (b) 3 (9th ed., Rev. 7, Nov. 2015). Rather than filing a petition, Appellants addressed Henzler's disclosure in the Reply. Reply Br. 4. (2) The Examiner rejected claims 2, 3, and 5 under 35 U.S.C. Â§ I03(a) as being unpatentable over the combination of Robertson, Gunday, Henzler, and Schneider (US 6,073,043; issued June 6, 2000). Final Act. 11- 13. 3 "37 CPR 41.40 sets forth the exclusive procedure for an appellant to request review of the primary examiner's failure to designate a rejection as a new ground of rejection via a petition to the Director under 3 7 CPR 1.181. This procedure should be used if an appellant feels an answer includes a new ground of rejection that has not been designated as such and wishes to reopen prosecution so that new amendments or evidence may be submitted in response to the rejection. However, if appellant wishes to submit only arguments, the filing of a petition under 3 7 CPR 1.181 would not be necessary because appellant may submit the arguments in a reply brief." MPEP Â§ I207.03(b) (9th ed., Rev. 7, Nov. 2015). 3 Appeal2017-011410 Application 14/214,412 (3) The Examiner rejected claim 4 under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Robertson, Gunday, Henzler, Schneider, and Velasquez (US 2010/0033170 Al; published Feb. 11, 2010). Final Act. 13. (4) The Examiner rejected claims 6 and 7 under 35 U.S.C. Â§ I03(a) as being unpatentable over the combination of Robertson, Gunday, Henzler, and Wright (US 2011/0263941 Al; published Oct. 27, 2011). Final Act. 14. (5) The Examiner rejected claims 8 and 9 under 35 U.S.C. Â§ I03(a) as being unpatentable over the combination of Robertson, Gunday, Henzler, and Smith (US 6,296,635 Bl; issued Oct. 2, 2001). Final Act. 15-16. (6) The Examiner rejected claims 12-15, 17, 18, 20, 21, 24--27, 29, 30, 32, and 33 under 35 U.S.C. Â§ I03(a) as being unpatentable over the combination of Robertson, Gunday, Henzler, and Ito (US 2009/0220156 Al; published Sept. 3, 2009). Final Act. 16-20. (7) The Examiner rejected claims 16, 19, 28, and 31 under 35 U.S.C. Â§ I03(a) as being unpatentable over the combination of Robertson, Gunday, Henzler, Ito, and Gattani (US 2008/0071142 Al; published Mar. 20, 2008). Final Act. 20-21. ISSUE The dispositive issue for this appeal is whether the combination of Robertson, Gunday, and Henzler teaches or suggests an "image signal processing pipeline [that] is configured to rotate the images ... to maintain a constant image horizon for a user on a display." 4 Appeal2017-011410 Application 14/214,412 ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments that the Examiner errs. We find Appellants' arguments discussed herein4 persuasive. Appellants argue that the combination of Robertson, Gunday, and Henzler fails to teach or suggest an "image signal processing pipeline [that] is configured to rotate the images ... to maintain a constant image horizon for a user on a display," as recited in independent claims 1, 22, 23, and 34. App. Br. 14--17; Reply Br. 3-5. As to Robertson, Appellants argue that it instead teaches that a user can rotate an image from an endoscope on a video display to a desired orientation. App. Br. 15. More specifically, Appellants argue that Roberston teaches that the user can change the orientation of the image on the video display by manually rotating an actuator. Id. ( citing Robertson ,r,r 12-13, Fig. 6). According to Appellants, to facilitate the user rotating the image to a desired orientation, Robertson also teaches displaying on the image a mark associated with the endoscope's initial orientation and rotating the mark as the image is rotated to maintain the reference to the location of the initial orientation of the endoscope (e.g., "top" or "up"). Id. (citing Robertson ,r 65, Figs. 6-7). As to Gunday, Appellants argue Gunday teaches rotating a current image before applying correction factors so as to align the current image with the image used to obtain the correction factors. App. Br. 16-17 (citing Gunday ,r,r 55, 64--65, 67, 70-71). According to Appellants, Gunday, in 4 Because we agree with at least one of the dispositive arguments advanced by Appellants as to each rejection, we need not reach the merits of Appellants' other arguments. 5 Appeal2017-011410 Application 14/214,412 relevant part, only teaches "that it is known how to rotate images using software." Reply Br. 4 (citing Ans. 12). As to Henzler, Appellants argue Henzler fails to remedy Roberston's and Gunday's failings. Id. The Examiner finds that the combination of Robertson, Gunday, and Henzler teaches the disputed limitation. See, e.g., Ans. 2, 12, 14; Final Act. 6-7. The Examiner finds that Robertson teaches adding a mark to the displayed image to indicate the rotation angle when the image has been rotated. Ans. 12 (citing Roberston Figs. 6-7). The Examiner concludes that this teaching "is [a] KSR equivalent of displaying the image 'not rotated' and the [] mark represents the rotation from horizontal or vertical axis." Ans. 14. In particular, the Examiner finds that Robertson's added mark allows the user to "resolve the image orientation problem." Ans. 4. The Examiner finds that Henzler teaches "that the user can manually rotate the image based on the displayed indicators." Ans. 2, 12, 14 (citing Henzler Figs. 4---6). As to Gunday, the Examiner finds it teaches that "the technique of image rotation in the field of endoscope ... is well known in the art." Ans. 12. We agree with Appellants that the combination of Roberston, Henzler, and Gunday fails to teach or suggest the disputed limitation. Although Robertson teaches adding a mark to the displayed image so that the user knows the angular displacement of the image, Robertson does not teach "maintain[ing] a constant image horizon" of the displayed image based on this mark. Roberston ,r 65, Figs. 6-7. Rather, Roberston only teaches that a user can "tum[] the image to a desired position." Id. ,r 65 (emphasis added). Moreover, Roberston's teaching that the added mark can be located at an axis of the endoscope does not teach that the image's display is maintained 6 Appeal2017-011410 Application 14/214,412 along that axis for a constant image horizon. Id. Such a teaching simply locates the added mark. Id. The cited portions of Henzler and Gunday do not remedy this deficiency. Rather, these cited portions simply teach that a user or a processor can rotate an image to a desired orientation. E.g., Henzler Figs. 4---6; Gunday ,r,r 55, 64---65, 67, 70-71. In addition, the Examiner's conclusion that adding a mark to a displayed image to indicate the image's rotation angle is an obvious equivalent of maintaining a constant image horizon is unsupported by the factual record. Rather, the combination teaches that this added mark allows a user to rotate the image to a desired orientation. There is no teaching of rotating the image to maintain a constant image horizon. A rejection based onÂ§ 103 must rest upon a factual basis rather than conjecture or speculation. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) ("The Patent Office ... may not, because it may doubt that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis."). Nor does the Examiner support that a user would have been motivated to rotate continually the image so as to maintain a constant image horizon. "[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention." See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Accordingly, we do not sustain the Examiner's rejection of independent claims 1, 22, 23, and 34. With respect to the Examiner's rejections of the dependent claims, the Examiner relies on the above findings and the additional cited references do not cure the above deficiencies. 7 Appeal2017-011410 Application 14/214,412 Accordingly, we also do not sustain the Examiner's rejection of (i) claim 10; (ii) claims 2, 3, and 5; (iii) claim 4; (iv) claims 6 and 7; (v) claims 8 and 9; (vi) claims 12-15, 17, 18, 20, 21, 24--27, 29, 30, 32, and 33; and (vii) claims 16, 19, 28, and 31. DECISION We reverse the Examiner's decision rejecting claims 1-10 and 12-34. REVERSED 8