Timothy King

Patent Trials and Appeals BoardSep 30, 2019

14145620 - (D) (P.T.A.B. Sep. 30, 2019)

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. 14/145,620 12/31/2013 Timothy King 02580-P0339A 4406 154825 7590 09/30/2019 KS - Whitmyer IP Group LLC 600 Summer Street 3rd Floor Stamford, CT 06901 EXAMINER IP, JASON M ART UNIT PAPER NUMBER 3793 NOTIFICATION DATE DELIVERY MODE 09/30/2019 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): patent@karlstorz.com uspto@whipgroup.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TIMOTHY KING Appeal 2018-002490 Application 14/145,620 Technology Center 3700 Before BRETT C. MARTIN, ANNETTE R. REIMERS, and LEE L. STEPINA, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant,1 Karl Storz Imaging, Inc., appeals from the Examiner’s decision to reject claims 1–11 and 28. Final Act. 1. Claims 12–27 were withdrawn. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). Oral argument was heard in this matter on September 24, 2019 and a transcript of the hearing will be entered into the record in due course. We REVERSE. 1 We use the word “Appellant” to refer to “Applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Karl Storz Imaging, Inc. Appeal Br. 2. Appeal 2018-002490 Application 14/145,620 2 CLAIMED SUBJECT MATTER The claims are directed “to diagnostic imaging techniques generally, and more specifically to automatically displaying the last live video image of tissue prior to a switch in the mode of illumination as a reference still image.” Spec. ¶ 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An imaging system comprising: an endoscope; a first source providing illumination with a first light; a second source providing illumination with a second light; an imager capturing video from the endoscope; a first display area displaying a live video image; a second display area displaying a still image taken from a frame of the live video image prior to a first change between illumination with the first light and illumination with the second light; and a control module receiving a user-generated light mode change signal for toggling at least between illumination with the first light and illumination with the second light; wherein, in response to each subsequent change between illumination with the first light and illumination with the second light initiated by the user-generated light mode change signal, both the first display area is updated to display a different live video image that is being captured after the respective subsequent change, and the second display area is updated to display a different still image that is taken from a frame of the live video image prior to the respective subsequent change. Appeal 2018-002490 Application 14/145,620 3 REFERENCES The prior art relied upon by the Examiner is: Givol Fulghum Fukuyama Iketani US 2001/0027475 A1 US 6,364,829 B1 US 2006/0173240 A1 US 2006/0256191 A1 Oct. 4, 2001 Apr. 2, 2002 Aug. 3, 2006 Nov. 16, 2006 REJECTIONS Claims 1, 3–11, and 28 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Iketani, Givol, and Fukuyama. Ans. 2. Claim 2 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Iketani, Givol, Fukuyama, and Fulghum. Ans. 6. OPINION This case hinges on whether the Examiner has properly interpreted the claim element “a control module receiving a user-generated light-mode change signal for toggling between illumination with the first light and illumination with the second light.” Appellant argues that the proper interpretation, is that a light change mode signal is transmitted when a user engages a control interface (e.g., button on an endoscope), wherein the light change mode signal toggles between one light mode (first source providing illumination with a first light) and another light mode (second source providing illumination with a second light).” Reply Br. 5. The Examiner alleges that Appellant’s interpretation is too narrow and that a proper, broader construction is “that a user, who is at the control interface toggles between imaging modes (i.e. images that are display).” Ans. 8–9. The Examiner goes on to explain “that if the user changes from one mode of view to another, he/she is toggling a change that Appeal 2018-002490 Application 14/145,620 4 manifests itself in the change of the viewed display, and not necessarily the light source.” Id. 9 (emphasis added). The Examiner’s own explanation shows error in this construction. Nowhere in the Examiner’s explanation/construction is there reference to toggling between light modes. Appellant’s claims very specifically recite that a user toggles between light modes that provide first and second illumination and that upon that toggle, an image is captured from the first light source and displayed as a still while a second display shows live video from the target being illuminated by the second light source. Simply switching between display modes, as asserted by the Examiner, does not encompass the claimed toggle between two light sources. Again, the display is specifically tied to the light source and the Examiner does not account for this feature. The Examiner further asserts that “[t]he claim does not clearly set forth toggling between the sources, but merely ‘illumination.’” Ans. 9. This simply is not true. The claim discusses both the light sources and the illumination provided thereby, and the illumination is specifically tied to each of the two light sources. In the context of the claim, toggling between illumination is toggling between the light sources. Regardless, the Examiner’s interpretation simply refers to a toggling of images. Even if a user were to toggle between images having differing light sources, this is not the same as toggling between illumination from two lights sources that then causes a change in what is displayed on the two monitors as claimed. The Examiner does not account for this link between toggling light and changing the two displayed images/videos. Accordingly, we do not sustain the Examiner’s rejections, all of which rely on this faulty interpretation of the claims as applied to the references. Appeal 2018-002490 Application 14/145,620 5 DECISION The Examiner’s rejections are REVERSED. DECISION SUMMARY Claims Rejected Basis Affirmed Reversed 1, 3–11, and 19 § 103 over Iketani, Givol, and Fukuyama None All 2 § 103 over Iketani, Givol, Fukuyama and Fulghum None 2 REVERSED