Ex Parte Matsuo

Patent Trial and Appeal BoardFeb 25, 2016

11884340 (P.T.A.B. Feb. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111884,340 08/14/2007 23389 7590 02/29/2016 SCULLY SCOTT MURPHY & PRESSER, PC 400 GARDEN CITY PLAZA SUITE 300 GARDEN CITY, NY 11530 FIRST NAMED INVENTOR Shigeki Matsuo 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. 21514 3328 EXAMINER HENDERSON, RY ANN ART UNIT PAPER NUMBER 3779 NOTIFICATION DATE DELIVERY MODE 02/29/2016 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): Docket@SSMP.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHIGEKI MATSUO Appeal2013-008284 Application 11/884,340 Technology Center 3700 Before NEALE. ABRAMS, THOMAS F. SMEGAL, and LISA M. GUIJT, Administrative Patent Judges. ABRAMS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Shigeki Matsuo (Appellant) seeks our review under 35 U.S.C. Â§ 134 from the Examiner's decision rejecting claims 13, 15, 16, and 26. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b ). We REVERSE. Appeal2013-008284 Application 11/884,340 THE INVENTION The claimed invention is directed to an endoscope. Claim 13, reproduced below, is illustrative of the subject matter on appeal. 13. An endoscope including an insertion portion which exhibits flexibility to be inserted into a body cavity, the endoscope comprising: a bending portion formed at a distal end side which is configured to be maximally bent with a first curvature radius and to be bendable according to a bending operation by an operator, the bending portion being provided inside thereof a plurality of annular bending pieces which are rotatably connected in series by pivots, peripheral edges of opposite surfaces of adjacent ones of the bending pieces serving as abutment portions to abut to each other to regulate the curvature radius at which the bending portion is maximally bent; a first flexible tube portion connected in series at a proximal end side of the bending portion, which is maximally bendable with a second curvature radius larger than the first curvature radius, and which is bent when applied with an external force but is not bendable according to a bending operation by an operator, the first flexible tube portion being maximally bent by being pushed against an inner wall of the body cavity, the first flexible tube portion being provided inside thereof a plurality of curvature regulation pieces rotatably connected in series by pivots, peripheral edges of opposite surfaces of adjacent ones of the curvature regulation pieces serving as abutment portions to abut to each other to regulate the curvature radius at which the first flexible tube is maximally bent; and a second flexible tube portion connected in series at a proximal end side of the first flexible tube portion, the second flexible tube portion comprising a helical tube, a braid covering an outer circumference of the helical tube, and an outer coat resin covering the braid, the second flexible tube portion having a flexural rigidity larger than a flexural rigidity of the first flexible tube portion. 2 Appeal2013-008284 Application 11/884,340 THE PRIOR ART The Examiner relied upon the following as evidence of unpatentability: Ouchi Barry Yokoi us 4,351,323 US 2004/0044270 Al JA 2002-330924 THE REJECTION Sept. 28, 1982 Mar. 4, 2004 Nov. 19, 2002 Claims 13, 15, 16, and 26 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Ouchi, Barry, and Y okoi. OPINION The Examiner finds that Ouchi discloses all of the subject matter recited in independent claim 13, except that: Ouchi does not expressly teach []the first flexible tube being maximally bendable with a second curvature radius larger than the first curvature radius and fails to teach of the second flexible tube portion comprising a helical tube, a braid covering an outer circumference of the helical tube, and an outer coat resin covering the braid. Final Act. 4. However, it is the Examiner's view that Barry discloses an endoscope having three flexible curved segments, and teaches that a segment can have a radius of curvature that is larger than that of an adjacent segment. Id. at 4--5. The Examiner then concludes: Therefore, the endoscope of Ouchi can be provided with an actively bending section having a first radius of curvature and a passively bending section having a second radius of curvature larger than the first radius of curvature enabling the endoscope 3 Appeal2013-008284 Application 11/884,340 of Ouchi to better conform to the bending on a body cavity to ease the insertion of the endoscope through the body cavity. It would have been obvious to one of ordinary skill in the art at the time of the invention to provide the apparatus of Ouchi with the varying radius of curvature of Barry thereby allowing the first flexible tube portion of Ouchi to have a larger radius of curvature than the bending portion for allowing different angles of manipulation with the endoscope shaft. Id. at 5 (emphasis added). Appellant takes issue with the analysis and conclusions presented in the Final Action, pointing out that [t]he endoscope flexible tube of claim 13 includes the feature of the curvature radius of the first flexible tube portion [ 13] in a maximum bent state is larger than the curvature radius of the bending portion [12] in a maximum bent state. Such feature results in advantages, not disclosed or suggested by the prior art. Namely, when the bending portion [12] is bent to the limit by an external [operator] force, a bending shape is formed wherein the radius becomes gradually larger from the bending portion to the second flexible tube portion [13]. Br. 6-7 (emphasis added). Appellant goes on to explain that the Barry endoscope is configured to be applied to a duct that has a small degree of rigidity and therefore is easily deformed, and in order to prevent deformation of the duct when the scope is inserted, the Barry scope includes a bending portion at a distal end portion which actively bends having two bending curvatures so as to actively match the shape of the distal end portion with the shape of the duct. Id. at 7. In contrast, Appellant asserts, the endoscope according to claim 13 is to be applied to a duct with a high degree of rigidity, and is configured such that the flexible tube portion that passively bends has a first flexible tube portion 4 Appeal2013-008284 Application 11/884,340 13 having a larger bending curvature than the bending portion 12, so that portion 13 is passively bent by contact with the inner wall of the duct with high rigidity when the endoscope is inserted into the duct but "is prevented from being locally largely bent when it abuts on the inner wall." See id. at 7-8. In response to Appellant's arguments, the Examiner further explains: Applicant also argues that Barry does not teach [] a second flexible tube portion having a larger flexural rigidity than the first flexible tube portion. . . . Barry is not being used to provide a teaching of a second flexible tube portion having a larger flexural rigidity than the first flexible tube portion, but instead Ouchi and Yokoi are used to teach this feature. Specifically, in Col. 3, Line 63 - Col. 4, Line 11 Ouchi provides a teaching that the flexible tube (4) has a small amount of flexibility and the first flexible tube portion (7) is not stiff but quite bendable indicating that the second flexible tube portion has a larger flexural rigidity than the first flexible tube portion. Furthermore, Y okoi is used to teach of the structure of the second flexible tube portion and further teaches of a hardness varying mechanism (24) for increasing the rigidity of the second flexible tube portion. Ans. 12. We agree with the Appellant's reasoning that the Examiner's rejection is in error. As the Examiner admits on page 4 of the Final Action, there is no express teaching in Ouchi that the first flexible tube portion 7 of the endoscope is "maximally bendable" to a curvature radius that is larger than the curvature radius of bending portion 2. This deficiency is not cured by Barry or Y okoi. The extent of Barry's teaching with regard to the radii of curvature of various portions of an endoscope is that they can be variable (see, for example, paras. 5 and 37). Nor is it cured by Yokoi, which has been cited for teaching that an endoscope can consist of a helical coil 5 Appeal2013-008284 Application 11/884,340 covered by a metal braid and a watertight tube, and that its segments can vary in stiffness. Final Act. 5---6. Furthermore, to the extent that the Examiner seeks to justify the conclusion of obviousness by relating stiffness to bendability, absent evidence or persuasive explanation, it is our view that the stiffness of a portion is not, in and of itself, an indication of how far the portion can be bent. A prima facie case of obviousness therefore has not been established with regard to the subject matter recited in independent claim 13, and the rejection of this claim, and dependent claims 15, 16, and 26, is not sustained. DECISION The rejection is not sustained. The decision of the Examiner is reversed. REVERSED 6