Lavie, GOLENBERG

Patent Trials and Appeals Board

Aug 31, 2020

14411877 - (D) (P.T.A.B. Aug. 31, 2020)

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.
14/411,877 12/29/2014 Lavie Golenberg LAG-100US 9111
13173 7590 08/31/2020
Blue Filament Law
700 E. Maple Road
Suite 450
Birmingham, MI 48009
EXAMINER
KWON, YONG JOON
ART UNIT PAPER NUMBER
2486
NOTIFICATION DATE DELIVERY MODE
08/31/2020 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):
ag@bluefilamentlaw.com
ap@bluefilamentlaw.com
patentdocketing@bluefilamentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte LAVIE GOLENBERG and PREM SIVAKUMAR1
_____________

Appeal 2019-006207
Application 14/411,877
Technology Center 2400
______________

Before JOHN A. EVANS, JAMES W. DEJMEK, and RUSSELL E. CASS,
Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1–8, 10, and 12–22. Appeal Br. 2.
Claims 9 and 11 have been canceled. Id. An oral hearing was scheduled for
August 11, 2020, but Appellant waived the hearing. See Resp. to Notice of
Hearing (filed August 10, 2020). We have jurisdiction over the pending
claims under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicants” as defined in
37 C.F.R. § 1.42(a) (2018). The Appeal Brief identifies co-inventor, Lavie
Golenberg, as the real party in interest. Appeal Br. 2.
Appeal 2019-006207
Application 14/411,877
2

INVENTION
The invention is directed to an endoscope. See Spec., Abstr., Claim
1, reproduced below, is the sole independent claim and is representative of
the invention.
1. An endoscope integrating functionality of an optical
tower comprising:
an enclosure integrating the functionality of the optical
tower, said enclosure containing;
an elongated endoscope tube;
a camera;
an image processor, said camera in electrical
communication with said image processor and supplies images
and video to said image processor obtained via said elongated
endoscope tube for display on a head mounted display, heads
up display (HUD), TV if the images are broadcasted on a
specific frequency, video display monitor, mobile computing
devices, cellular phone, tablet, or mobile communication and
entertainment devices;
a light source, illuminating a viewing field of said
endoscope via said elongated tube;
a transmitter module having user selectable transmission
frequencies and video channels, said transmitter module
engaging in frequency switching to account for interfering
signals, and for overlay of images onto a video feed from said
camera that are from another source or piece of medical
equipment or monitoring device via a wired or wireless
connection to the transmitter module;
a communication interface;
a control interface; and
one or more of a power source, said one or more of said
power source supplies powering said camera, said image
processor, said light source, and said transmitter module.

Appeal 2019-006207
Application 14/411,877
3

PRIOR ART
Name Reference Date
Tien US 2005/0085690 A1 Apr. 21, 2005
Ito US 2005/0148854 A1 July 7, 2005
Kato US 2009/0058997 A1 Mar. 5, 2009
Phillips US 2013/0034825 A1 Priority Aug. 2, 2011
Melder US 2012/0162401 A1 Filed Oct. 20, 2011

REJECTIONS AT ISSUE2
1. Claims 1–3, 6, 7, 10, 12, 14, 16, 17, 20, and 21 stand rejected under
pre-AIA 35 U.S.C. § 103(a) as unpatentable over Tien, Phillips, and
Ito. Final Act. 4–8.
2. Claims 4, 5, 8, and 15 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Tien, Phillips, Ito, and Melder. Final
Act. 9–10.
3. Claims 13, 18, and 19 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Tien, Phillips, Ito, and Kato. Final
Act. 10–11.
4. Claim 22 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Tien, Phillips, Ito, and Applicant’s Admitted Prior
Art (AAPA). Final Act. 11.
ANALYSIS
We have reviewed the rejections of claims 1–8, 10, and 12–22 in light
of Appellant’s arguments that the Examiner erred. We have considered in

2 Throughout this Decision, we refer to the Appeal Brief (“Appeal Br.”) filed
February 18, 2019, the Reply Brief (“Reply Br.”) filed August 21, 2019, the
Final Office Action (“Final Act.”) mailed June 1, 2018, the Examiner’s
Answer mailed June 21, 2019, and the Specification (“Spec.”) filed March 7,
2017.
Appeal 2019-006207
Application 14/411,877
4

this decision only those arguments Appellant actually raised in the Briefs.
Any other arguments which Appellant could have made but chose not to
make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(iv). We are not persuaded that Appellant identifies reversible
error. Upon consideration of the arguments presented in the Appeal Brief
and Reply Brief, we agree with the Examiner that all the pending claims are
unpatentable. We adopt as our own the findings and reasons set forth in the
rejection from which this appeal is taken and in the Examiner’s Answer, to
the extent consistent with our analysis below. We provide the following
explanation to highlight and address specific arguments and findings
primarily for emphasis.

CLAIMS 1–3, 6, 7, 10, 12, 14, 16, 17, 20, AND 21: OBVIOUSNESS OVER
TIEN, PHILLIPS, AND ITO.
Frequency switching.
Claim 1, the sole independent claim, recites, inter alia, “a transmitter
module having user selectable transmission frequencies and video channels,
said transmitter module engaging in frequency switching to account for
interfering signals.”
The Examiner finds Tien substantially discloses the invention of claim
1, including a data transmission module, except Tien fails to disclose where
said data transmission module engages in frequency switching. Final Act. 5.
The Examiner finds Phillips teaches a transmitter module having user
selectable transmission frequencies and video channels where said
transmitter engages in frequency switching. Id. (citing Phillips, ¶ 45).
The cited passage of Phillips discloses:
Appeal 2019-006207
Application 14/411,877
5

Using the integrated channel selector contained in the main
controls 21, a user/operator may cycle through the available
channels–for example, eight–to match the device 1 frequency to
the pre-set frequency of the receiver module 4 in the current
operatory, allowing the same device 1 to be used in multiple
operatories.
Phillips ¶ 45.
Appellant contends the cited passage of Phillips discloses a
transmitter having multiple channels among which a user may manually
switch. Appeal Br. 19. Appellant argues:
A fair reading of this language is that a user picks a frequency
matched to the receiver module and in an optionally mode to
only provide options from among the presets (e.g. 8 channels)
to pair with a receiver module. It is submitted that it is an
improper reading of this reference as being adaptive to
interfering signals.
Appeal Br. 20
The Examiner finds the “claim merely discloses that ‘interfering
signals’ are taken in account and Phillips allows the user to switch between
channels which allows the system 200 to take into account for interfering
signals.” Ans. 5.
Appellant’s Specification discloses: “In some inventive
embodiments, a user selects transmission frequencies and video channels for
the endoscope to account for interfering signals.” Spec. ¶ 13. In other
inventive embodiments, a user has the option of providing selectable
transmission frequencies and video channels for the endoscope to account
for interfering signals. Spec. ¶ 14. The Specification further discloses that,
in certain inventive embodiments, the transmitter module 110 may also
allow for user selectable transmission frequencies and video channels for the
endoscope to account for interfering signals. Spec. ¶ 18; see also Reply
Appeal 2019-006207
Application 14/411,877
6

Br. 4 (citing Spec. ¶¶ 13, 14, 18) (“the specification of the present
application describes the ‘interfering signals’ language of claim 1 at least
three separate times all in the context of data transmission frequencies.”).
The question is how to interpret the claimed requirement that the
transmitter module engages in frequency switching “to account for
interfering signals,” in view of the Specification? We find both Phillips and
claim 1 allow a user to pre-select, or pre-designate, frequencies for use by an
endoscope. We find no written description support for a construction where
the device itself automatically switches frequencies to account for
“interfering signals,” nor has Appellant so directed our attention. Therefore,
we find that the claim language “said transmitter module engaging in
frequency switching to account for interfering signals” encompasses
allowing the user to pre-select, or pre-designate, frequencies for use by the
transmitter module. We are loath to construe the claims to require that the
device itself must automatically switch frequencies, as Appellant suggests,
because doing so is not disclosed in the Specification and would render the
claims invalid under 35 U.S.C. § 112, as lacking written description support
and/or enablement. As we construe the claims, we agree with the Examiner
the limitation is taught by Phillips.
Overlay of video images.
Claim 1 recites, inter alia, “a transmitter module having user
selectable transmission frequencies and video channels, . . . for overlay of
images onto a video feed from said camera that are from another source.”
Appellant contends Ito teaches overlay of still images, but fails to
teach overlay of video images. Appeal Br. 20.
The Examiner finds Ito discloses a “diagnosis supporting device for
Appeal 2019-006207
Application 14/411,877
7

displaying a composite image, which is created by superimposing a
perspective image of a body captured by a tomography scanner . . . over an
endoscopic image inside a body taken by a video endoscope device.” Ans. 5
(quoting Ito ¶ 1).
Appellant’s Reply Brief does not respond to this aspect of the Answer.
We are not persuaded the Examiner errs.
CLAIM 10: OBVIOUSNESS OVER TIEN, PHILLIPS, AND ITO.
Claim 10 recites, inter alia, “endoscope of claim 1 wherein said
transmitter module is switchable between two or more video channels.”
Appellant argues claim 10 separately. Appeal Br. 21–22. We adopt
the Examiner’s findings set forth in the Final Office Action and the Answer.
Appellant’s Reply Brief does not respond to the Examiner’s findings in the
Answer. We are not persuaded the Examiner errs.

CLAIM 16: OBVIOUSNESS OVER TIEN, PHILLIPS, AND ITO.
Claim 16 recites, inter alia, “said endoscope is in wired or wireless
contact with one or more personal viewers configured with a heads up
display (HUD).”
Appellant argues claim 16 separately. Appeal Br. 22–23. We adopt
the Examiner’s findings set forth in the Final Office Action and the Answer.
Appellant’s Reply Brief does not respond to the Examiner’s findings in the
Answer. We are not persuaded the Examiner errs.

CLAIM 20: OBVIOUSNESS OVER TIEN, PHILLIPS, AND ITO.
Claim 20 recites, inter alia, “wherein said transmitter module is
Appeal 2019-006207
Application 14/411,877
8

switchable between two or more video channels to access shared views
between two or more additional users operating additional endoscopes via
said image processor.”
Appellant argues claim 20 separately. Appeal Br. 23–24. We adopt
the Examiner’s findings set forth in the Final Office Action and the Answer.
Appellant’s Reply Brief does not respond to the Examiner’s findings in the
Answer. We are not persuaded the Examiner errs.
CLAIMS 5, 8, 15, 18, AND 19: OBVIOUSNESS OVER
TIEN, PHILLIPS, ITO, MELDER, AND KATO.
With respect to these claims, Appellant argues generally there is no
motivation to combine the references. Appeal Br. 24–25. We adopt the
Examiner’s findings set forth in the Final Office Action and the Answer.
Appellant’s Reply Brief does not respond to the Examiner’s findings in the
Answer. We are not persuaded the Examiner errs.

CONCLUSION

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 6, 7,
10, 12, 14,
16, 17, 20,
21
103 Tien, Phillips, Ito 1–3, 6, 7,
10, 12, 14,
16, 17, 20,
21

4, 5, 8, 15 103 Tien, Phillips, Ito,
Melder
4, 5, 8, 15
13, 18, 19 103 Tien, Phillips, Ito,
Kato
13, 18, 19
22 103 Tien, Phillips, Ito,
AAPA
22
Overall
1–8, 10,
12–22
1–8, 10,
12–22

Appeal 2019-006207
Application 14/411,877
9

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED