Ex Parte Buerk et al

Patent Trial and Appeal BoardAug 17, 2017

12817615 (P.T.A.B. Aug. 17, 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. 02581-P1286A 5930 EXAMINER NEWTON, ALEXANDRA L ART UNIT PAPER NUMBER 3779 MAIL DATE DELIVERY MODE 12/817,615 06/17/2010 131672 7590 Whitmyer IP Group LLC 600 Summer Street 3rd Floor Stamford, CT 06901 Andre Buerk 08/17/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDRE BUERK, STEFAN HESELER, and ELMAR TEICHTMANN Appeal 2016-000843 Application 12/817,615 Technology Center 3700 Before STEFAN STAICOVICI, JAMES P. CALVE, and SEAN P. O’HANLON, Administrative Patent Judges. CALVE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Final Action rejecting claims 1, 3, 4, 6, 7, 9, and 10. Appeal Br. 2; see Final Action 1. Claims 2, 5, and 8 are cancelled. Appeal Br. 2. Claims 11—14 have been withdrawn. Id. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2016-000843 Application 12/817,615 CLAIMED SUBJECT MATTER Appellants claim an endoscope made of materials having coefficients of thermal expansion that facilitate autoclaving. See Spec. ]Hf 4—6, 9. Claim 1, the sole independent claim, is reproduced below. 1. An endoscope having: a window on a distal end of the endoscope; an interior body with a first material on the distal end, which said interior body forms no external surface of the endoscope, said interior body enclosing at least one of optical or imaging components of the endoscope; a mantle with a second material on the distal end; such that the window is mounted to the interior body forming a hermetic seam directly between the window and the interior body, and a cementing seam or insulation is disposed between a border of the window and the mantle; wherein a difference in thermal expansion coefficients of the first material and of a material of the window is smaller than a difference in thermal expansion coefficients of the second material and of the material of the window to maintain the interior body in a hermetic insulated state. REJECTIONS Claims 1,3,4, 6, and 7 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Hibbard (US 5,599,278, iss. Feb. 4, 1997), Forkey (US 2004/0176662 Al, pub. Sept. 9, 2004), and Harley (US 6,100,972, iss. Aug. 8, 2000). Claim 9 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Hibbard, Forkey, Harley, and Hagihara (US 2008/0228035 Al, pub. Sept. 18,2008). Claim 10 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Hibbard, Forkey, Harley, and Lee (US 2009/0131931 Al, pub. May 21, 2009). 2 Appeal 2016-000843 Application 12/817,615 ANALYSIS Claims 1, 3, 4, 6, and 7 as unpatentable over Hibbard, Forkey, and Harley Regarding claim 1, the Examiner found that Hibbard discloses an endoscope, substantially as claimed, but lacks a window that is hermetically sealed to an interior body, and an interior body and a mantle that are made of different materials. Final Act. 2—3. The Examiner relied on Forkey to teach an optics assembly with window 22 mounted directly to interior body 21 by a hermetic seam, as claimed. Id. at 3. The Examiner relied on Harley to teach an endoscope with an interior body (tubular spacer) made of Invar™ and an outer mantle (insertion tube 3) made of stainless steel. Id. The Examiner determined that using Harley’s materials on Hibbard’s endoscope would provide an interior body of Invar™, a stainless steel mantle, and a sapphire window, and these materials would have a smaller difference in the thermal expansion coefficients between the Invar™ interior body and the sapphire window than between the stainless steel mantle and the sapphire window, as claimed. Id. The Examiner determined that it would have been an obvious design choice to use Harley’s materials in Hibbard’s endoscope involving the selection of a known material on the basis of its suitability for an intended use that is within the general skill in the art. Id. at 3—4. The Examiner has not provided sufficient evidence or reasoning to support a determination that a skilled artisan would have been motivated to make Hibbard’s interior tube out of Invar™ based on Harley’s teaching of tubular spacers made of Invar™. See Appeal Br. 8—11. Design choice is not a sufficient rationale when the claimed interior tube functions differently than the spacers of Harley. Id. at 12—13; In re Chu, 66 F.3d 292, 299 (Fed. Cir. 1999); In re Gal, 980 F.2d 717, 719-720 (Fed. Cir. 1992). 3 Appeal 2016-000843 Application 12/817,615 Claim 1 recites the features of the interior body as “enclosing at least one of optical or imaging components of the endoscope” and “the window is mounted to the interior body forming a hermetic seam directly between the window and the interior body.” In contrast to these features, spacers are understood to be part of an endoscope’s optical system. They help to focus the lenses and are positioned within the interior body. Hibbard, 4:24—32, Figs. 1, 2A; Harley, 16:22—38; Spec. 146, Fig. 5. We agree with the Examiner that claim 1 does not recite an interior body extending from the distal end to the proximal end of the endoscope (Ans. 2), but we agree with Appellants that claim 1 recites features of the interior body that distinguish it over a tubular spacer (Appeal Br. 8 (encloses optical or imaging components), 13 (hermetic seal)). Therefore, we are not persuaded that a skilled artisan would consider the choice of materials for the interior body of Hibbard’s endoscope to be an obvious design choice or to be obvious in view of materials used for spacers in Harley. Final Act. 4. We appreciate the Examiner’s finding that Harley teaches the use of Invar™ for tubular spacers and stainless steel for an outer mantle to account for the effects of expansion and contraction with temperature variations, but we are not persuaded that this teaching would motivate a skilled artisan to make Hibbard’s interior body of Invar™. See Ans. 4. If anything, this teaching would motivate a skilled artisan to make Hibbard’s metal spacers 76 of an Invar™ material to maintain the focal positions and measurement accuracy of Hibbard’s optical system and lenses, as Harley teaches to do. Hibbard, 4:25—34; Harley, 16:17—37. Like Harley, Hibbard teaches to make insertion tube 18, which comprises outer cannula 56 and inner cannula 60, of stainless steel. Hibbard, 4:1—4, 5:1—4; see Harley, 16:22—24. 4 Appeal 2016-000843 Application 12/817,615 Although we appreciate that the test for obviousness is not bodily incorporation (Ans. 3), the Examiner has not explained sufficiently how Harley’s teaching regarding suitable materials for an optical system spacer and endoscope insertion tube would have motivated a skilled artisan to make Hibbard’s stainless steel interior tube 60, which encases optical system 56 and spacers 76, of the same Invar™ material as Harley’s spacers. We also appreciate that spacers can have tubular configurations similar to insertion tubes; however, they are understood to have different functions (focusing lenses) in different systems (optical system) than the interior tubes, which contain the spacers. Therefore, we are not persuaded that materials that improve the function of spacers for focusing lenses at temperatures at which an endoscope is used (Harley, 16:32—37) would be considered by skilled artisans as useful for an interior body, which contains the spacers and seals hermetically to a sapphire window, in view of the prior art’s teachings. Thus, we do not sustain the rejection of claims 1,3,4, 6, and 7. Claims 9 and 10 as unpatentable over Hibbard, Forkey, Harley, and Hagihara/Lee The Examiner’s reliance on Hagihara to teach features of claim 9 and Lee to teach features of claim 10 does not overcome the deficiencies of the other references as to claim 1 from which claims 9 and 10 depend. See Final Act. 4—5. Thus, we do not sustain the rejection of claims 9 and 10. DECISION We reverse the rejections of claims 1, 3, 4, 6, 7, 9, and 10. REVERSED 5