Ex Parte Banik et al

Patent Trial and Appeal BoardAug 9, 2017

14092505 (P.T.A.B. Aug. 9, 2017)

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. 14/092,505 11/27/2013 Michael S. BANIK 11219-0008-17000 7051 109610 7590 Bookoff McAndrews, PLLC 2401 Pennsylvania Avenue, NW, Suite 450 Washington, DC 20037 EXAMINER KASZTEJNA, MATTHEW JOHN ART UNIT PAPER NUMBER 3779 NOTIFICATION DATE DELIVERY MODE 08/11/2017 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): usptomail @bookoffmcandrews.com Kross @ bookoffmcandrews.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL S. BANIK, DENNIS R. BOULAIS, LUCIEN A. COUVILLON, ALBERT C.C. CHIN, and IAN W. HUNTER1 Appeal 2015-008325 Application 14/092,505 Technology Center 3700 Before DANIEL S. SONG, KEN B. BARRETT, and WILLIAM A. CAPP, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the final rejection of claims 30-33, 35—38 and 40-46 under 35 U.S.C. 102(a) as anticipated by Hirano (US 6,447,445, iss. Sept. 10, 2002) and of claims 34 and 47 as unpatentable under 35 U.S.C. § 103(a) over Hirano and Konstorum (US 6,749,560 Bl, iss. June 15, 2004). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 The Appeal Brief identifies Boston Scientific Scimed, Inc. as the real party in interest. Appeal Br. 2 Appeal 2015-008325 Application 14/092,505 THE INVENTION Appellants’ invention relates to medical diagnostic endoscopes. Spec. 1. Claim 30, reproduced below with disputed claim language highlighted in italics, is illustrative of the subject matter on appeal. 30. An imaging endoscope assembly comprising: an elongate shaft comprising: a proximal portion having a first stiffness, a cylindrical distal portion having a second stiffness, the second stiffness being different than the first stiffness, the distal portion terminating at a distal end ring; a steering cable extending through the elongate shaft, the steering cable comprising a distal end coupled to the distal end ring; and a housing coupled to a distal end of the elongate shaft, the housing abutting the distal end ring, and the housing comprising a distal end face, wherein the housing is configured to receive an imaging device for producing electronic signals representative of an image. OPINION Anticipation of Claims 30—33, 35—38 and 40 46 by Hirano Claims 30—33 and 42 The Examiner finds that Hirano discloses all of the elements of claim 30. Final Action 2—3. In particular, the Examiner finds that Hirano has a steering cable as claimed, but concedes that the steering cable is not shown. Id. Then, despite conceding that the steering cable is not shown, the Examiner finds that the (not shown) steering cable has a distal end that is coupled to a distal end ring. Id. (citing Figs. 1, 5, and col. 3,11. 35—56). Appellants traverse the Examiner’s rejection by arguing that Hirano lacks the steering cable limitation. Appeal Br. 11. Furthermore, Appellants 2 Appeal 2015-008325 Application 14/092,505 argue that, if the Examiner is relying on inherency to satisfy the steering cable limitation, the Examiner fails to provide a “clear invocation” of inherency. Id. at 13. In response, the Examiner directs our attention to Hirano’s insertion instrument and, more particularly, to hard end portion 2a, angle portion 2b, and flexible portion 2c thereof. Ans. 5; see also Hirano, Figs. 1—2. The Examiner further directs our attention to Hirano, col. 3,11. 35—51, as disclosing a means for steering the insertion instrument through a body cavity. Ans. 5. The Examiner further explains that cable steering means are extremely well known in the art and are “undoubtedly” used to control the angle portion 2b of Hirano. Ans. 5. According to the Examiner, if the cable was not coupled to a distal end ring, the functionality of the endoscope would be lost, as the cable must be coupled to enable a user to articulate the distal end of the insertion section. Id. at 6. The Examiner identifies Hirano’s bendable pipe 51 as corresponding to Appellants’ steering cable limitation. Id. Hirano discloses an endoscopic insertion instrument. Hirano, Abstract. Hirano’s insertion instrument 2 is comprised of a hard end portion 2a, an angle portion 2b, and a flexible portion 2c. Id., Fig. 1. Hirano further discloses that: As shown in FIG. 2, an illuminating means 10, an observing means 20, and a guiding means 30 for treating tools are arranged on the fore-end surface of the hard end portion 2a. The flexible portion has a bendable structure capable of being distorted in an arbitrary direction along an inserting route into a body cavity, etc., forming greater length from a connecting portion to the operation unit. The angle portion 2b is remotely controlled to be distorted by operating angling means 4 3 Appeal 2015-008325 Application 14/092,505 provided on the operation unit 1. Thereby, the hard end portion 2a can be oriented in a desired direction. Id., col. 3,11. 34—51. Although Hirano alludes to steering means of some sort between operating angling means 4 and angle portion 2b, Hirano’s Figure 5 and accompanying teaching disclosure in its specification is inconclusive at best regarding the particular structure that is used between angling means 4 and angle portion 2b to operatively orient end portion 2a in a desired direction. See Hirano, Fig. 5, col. 5,1. 55— col. 7,1. 15. In the instant case, claim 30 specifically requires a “steering cable.” Claims App. Furthermore, the steering cable must be coupled to a “distal end ring.” Id. In the Final Rejection, the Examiner finds that Hirano’s steering cable is “not shown.” Final Action 2. Since the cable is not shown, it follows that a coupling of the cable to a distal end ring is similarly not shown. Later, in the Answer, the Examiner seeks to remedy this situation by identifying bendable pipe 51 as corresponding to the claimed steering cable. Ans. 6. The Examiner then identifies Hirano’s holding member 40 as corresponding to Appellants’ claimed distal end ring. Id. The Examiner finds that Hirano’s bendable pipe 51 is “coupled to” holding member 40. Id. While we agree with the Examiner that bendable pipe 51 is coupled to holding member 40 at its distal end, we are unable to agree that the evidence supports a finding that bendable pipe 51 constitutes a “steering cable” within the meaning of claim 30. Hirano is silent as to the specific structure that operatively connects angling means 4 to angle portion 2b so that “hard end potion 2a can be oriented in a desired direction.” Hirano, col. 3,11. 50-51. For a prior art reference to anticipate a claim, it must disclose all of the limitations of the claim, “arranged or combined in the same way as in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 4 Appeal 2015-008325 Application 14/092,505 2008). Under the circumstances presented here, the Examiner’s finding that Hirano discloses a “steering cable’ with a distal end that is “coupled to” a distal end ring is not supported by a preponderance of the evidence. Accordingly, we do not sustain the Examiner’s anticipation rejection of claim 30, nor do we sustain the rejection of claims 31—33 and 42 that depend therefrom. Claims 35—41 Claim 35 is an independent claim that is similar to claim 30 in that it requires a “steering wire” with a distal end that terminates proximal to a distal end cap. Claims App. The Examiner’s rejection of claim 35 relies on similar findings regarding the presence of a steering wire (or cable) in Hirano that we have previously determined is not supported by a preponderance of the evidence. Final Action 3. Thus, for essentially the same reasons expressed above with respect to claim 30, we do not sustain the anticipation rejection of claim 35 or of claims 36-41 that depend therefrom. Claims 43—46 Claim 43 is an independent claim that is similar to claims 30 and 35 in that it requires a “steering wire” with a distal end that terminates proximal to a distal end cap. Claims App. The Examiner’s rejection of claim 43 relies on similar findings regarding the presence of a steering wire (or cable) in Hirano that we have previously determined is not supported by a preponderance of the evidence. Final Action 3. Thus, for essentially the same reasons expressed above with respect to claims 30 and 35, we do not sustain the anticipation rejection of claim 43 or of claims 44-46 that depend therefrom. 5 Appeal 2015-008325 Application 14/092,505 Unpatentability of Claims 34 and 47 over Hirano and Konstorum Claim 34 depends from claim 30 and adds the limitation: “wherein there are no swiveling links in the distal portion of the elongate shaft.” Claims App. Claim 47 depends from claim 43 and contains a substantially similar limitation. Id. The Examiner relies on Konstorum as disclosing this limitation. Final Action 5. The Examiner’s rejection of these claims suffers from the same infirmity that was identified above with respect to claims 30 and 43. The Examiner’s rejection makes no findings of fact by which this infirmity is cured by reliance on Konstorum. Id. Thus, for essentially the same reason expressed above in connection with claims 30 and 43, we do not sustain the rejection of claims 34 and 47. DECISION The decision of the Examiner to reject claims 30—38 and 40-47 is reversed. REVERSED 6