Harald Baumann

Patent Trials and Appeals BoardAug 26, 2019

13045321 - (D) (P.T.A.B. Aug. 26, 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. 13/045,321 03/10/2011 Harald Baumann 02581 - P1360A 2682 154825 7590 08/26/2019 KS - Whitmyer IP Group LLC 600 Summer Street 3rd Floor Stamford, CT 06901 EXAMINER BOLER, RYNAE E ART UNIT PAPER NUMBER 3795 NOTIFICATION DATE DELIVERY MODE 08/26/2019 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 HARALD BAUMANN ____________ Appeal 2018-0005611 Application 13/045,3212 Technology Center 3700 ____________ Before PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and KENNETH G. SCHOPFER, Administrative Patent Judges. SCHOPFER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the rejection of claims 1, 7, 9, 11–21, and 23–27. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on August 7, 2019. We AFFIRM-IN-PART. 1 Our decision references the Appeal Brief (“Appeal Br.,” filed Apr. 25, 2017), the Reply Brief (“Reply Br.,” filed Oct. 23, 2017), the Examiner’s Answer (“Ans.,” mailed Aug. 23, 2017), and the Final Office Action (“Final Act.,” mailed Nov. 29, 2016). 2 According to Appellant, the real party in interest is Karl Storz GmbH & Co. KG. Appeal Br. 2. Appeal 2018-000561 Application 13/045,321 2 BACKGROUND The Specification discloses that “[t]he present invention relates to a swing prism endoscope with a viewing direction that can be adjusted by swinging a prism on the distal end of the endoscope and to a prism for a swing prism endoscope.” Spec. ¶ 2. CLAIMS Claims 1, 7, and 19 are the independent claims on appeal. Claims 1 and 19 are illustrative of the appealed claims and recite: 1. A swing prism endoscope with adjustable viewing direction, comprising: a shaft with a proximal end and a distal end, a window of a transparent material that seals an opening on the distal end of the shaft so that it is fluid-tight, and a pivotable prism made of monocrystalline diamond and by chemical vapor deposition, the pivotable prism located on the distal end of the shaft for adjustable diversion of light falling through the window into the shaft of the swing prism endoscope onto an object lens, the pivotable prism having antireflective coatings on a light entry surface and on a light exit surface of the pivotable prism, wherein the viewing direction ranges from a first position that is parallel to the axis of the shaft to a second position that is 120 degrees from the axis of the shaft, wherein a viewing direction range within which the viewing direction of the swing prism endoscope can be adjusted includes an axial direction and a direction that is perpendicular to the axial direction, wherein the viewing direction range includes an angle of at least 110 degrees. 19. A swing prism endoscope with adjustable viewing direction, comprising: a shaft with a proximal end and a distal end, Appeal 2018-000561 Application 13/045,321 3 a window of a transparent material that seals an opening on the distal end of the shaft so that it is fluid-tight, and a pivotable prism made of monocrystalline diamond, the prism having antireflective coatings on a light entry surface and on a light exit surface of the prism, the pivotable prism located on the distal end of the shaft for adjustable diversion of light falling through the window into the shaft of the swing prism endoscope onto an object lens, wherein the monocrystalline diamond is produced by means of chemical vapor deposition (CVD), wherein no cross-section of the shaft on the distal end extends beyond a contour provided by a prevailingly cylindrical shape of the shaft, wherein a distance L between edges where the light entry surface and the light exit surface border on a reflecting base surface is approximately 5 mm to 7 mm, wherein a distance H between the reflecting base surface and a roof surface of the prism is approximately 2.5 mm to 3.5 mm, and wherein a distance B between lateral surfaces of the prism is approximately 2 mm to 3 mm. Appeal Br. 14, 16–17. REJECTIONS 1. The Examiner rejects claims 1, 7, 9, 18, 20, 21, and 23–26 under 35 U.S.C. § 103(a) as unpatentable over Hoeg3 in view of Durell4 and Godfried.5 3 Hoeg, US 2010/0022838 A1, pub. Jan. 28, 2010. 4 Durell, US 6,638,216 B1, iss. Oct. 28, 2003. 5 Godfried et al., US 7,740,824 B2, iss. June 22, 2010. Appeal 2018-000561 Application 13/045,321 4 2. The Examiner rejects claims 11–17 under 35 U.S.C. § 103(a) as unpatentable over Hoeg in view of Durell, Godfried, West,6 and Mathyssek.7 3. The Examiner rejects claim 19 under 35 U.S.C. § 103(a) as unpatentable over Goldfarb8 in view of Durell, Godfried, West, and Mathyssek. 4. The Examiner rejects claim 27 under 35 U.S.C. § 103(a) as unpatentable over Hoeg in view of Durell, Godfried, and Navok.9 DISCUSSION Rejection over Hoeg, Durell, and Godfried Appellant does not provide separate groupings for the claims and instead groups all claims together in arguing against this rejection. See Appeal Br. 6–10. We select claim 1 as representative, and, because we sustain the independent claim 1’s rejection for the reasons discussed below, claims 7, 9, 18, 20, 21, and 23–26 fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). With respect to claim 1, the Examiner finds that Hoeg teaches a swing prism endoscope as claimed except that Hoeg does not “disclose a [viewing] window of a transparent material that seals an opening on the distal end of the shaft so that it is fluid-tight” and “that the pivotable prism is made of monocrystalline diamond.” Final Act. 2–4 (citing Hoeg Figs. 1, 2A, 2B; ¶¶ 16, 27, 30, 31). The Examiner relies on Durell and Godfried to cure these 6 West, US 6,002,473, iss. Dec. 14, 1999. 7 Mathyssek et al., US 4,556,292, iss. Dec. 3, 1985. 8 Goldfarb et al., US 2010/0030031 A1, pub. Feb. 4, 2010. 9 Navok et al., US 2006/0173242 A1, pub. Aug. 3, 2006. Appeal 2018-000561 Application 13/045,321 5 deficiencies, respectively. Id. In particular, with respect to the claimed diamond prism, the Examiner finds: Godfried discloses a single crystal diamond made by chemical vapor deposition that is suitable for use in, or as, an optical device or element (abstract), including optical reflectors (abstract and col. 12, ll. 42–58). Godfried discloses that its single crystal diamond has low level of crystal defects and is capable of achieving key characteristics for optical applications (abstract). Godfried also discloses that anti-reflective coatings may be applied to the single crystal diamond (col. 6, ll. 39–43). Godfried discloses the excellent materials [sic] properties of the single crystal diamond that are selectable as key properties for a particular application of an optical device or element (col. 1, ll. 15–27). Id. at 4. The Examiner also finds “the suitability of diamond for components in optical devices is generally known” and one may form diamond lenses or diamond prisms in endoscopic devices as taught by Nelissen10 and Bindig,11 respectively. Id. The Examiner further finds that “it is generally known in the art that dove prisms are optical reflectors.” Id. The Examiner concludes It would have been obvious to one having ordinary skill in the art to form the prism of Hoeg out of monocrystalline diamond, as the material taught by Godfried for use as an optical reflector in optical devices due to its desirable materials properties, and since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416 (CCPA 1960). The Examiner notes that Applicant’s use of diamond is based on its inherent properties, which have made it a suitable material in endoscopic windows, 10 Nelissen et al., US 2009/0022951 A1, pub. Jan. 22, 2009. 11 Bindig et al., Fibre-optic IR-spectroscopy for biomedical diagnostics, 17 Spectroscopy 323–44 (2003). Appeal 2018-000561 Application 13/045,321 6 optical reflectors and refractors, lenses and prisms, as discussed above. Id. at 4–5. Appellant argues that the rejection relies on impermissible hindsight and that the Examiner fails to set forth a prima facie showing of obviousness. Appeal Br. 6–7. In support, Appellant asserts that the Examiner only states that it would have been within the general skill of an ordinary artisan “to select a diamond as the claimed prism,” which is not a sufficient reason to support a prima facie case of obviousness. Id. We disagree. Not only does the Examiner determine that it would have been “within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use” but the Examiner also specifically determines that one of ordinary skill in the art would have found it obvious to use a monocrystalline diamond in Hoeg’s device based on the desirable material properties of diamond, as disclosed by Godfried. Final Act. 4. The Examiner further explains that Godfried teaches that its single crystal diamond has low level of crystal defects and is capable of achieving key characteristics for optical applications (abstract). Godfried teaches the excellent material properties of the single crystal diamond that are selectable as key properties for a particular application of an optical device or element (col. 1, ll. 15-27). Ans. 13; see also id. (citing Godfried col. 1, ll. 15–27; col. 15, ll. 8–9). Thus, the Examiner makes clear that it is the desirable properties disclosed in Godfried that would have led one of ordinary skill in the art to choose to use a diamond prism as claimed in Hoeg’s device. See id. at 14. We agree with the Examiner’s findings regarding Godfried and we determine that the Appeal 2018-000561 Application 13/045,321 7 Examiner has articulated an adequate reason with sufficient rational underpinnings to support the conclusion of obviousness with respect to claim 1. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). As for hindsight, the Appellant does not explain, and we do not see, how any finding included in the rejection is based on information gleaned only from Appellant’s disclosure. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Next, Appellant argues that Godfried does not disclose the use of diamond prisms. See Appeal Br. 7–9. We are not persuaded of reversible error by this argument. First, we note that the rejection does not specifically rely on Godfried as teaching a diamond prism. Rather, the Examiner finds that Godfried teaches “a single crystal diamond made by chemical vapor deposition that is suitable for use in . . . optical reflectors” and that a dove prism is one type of optical reflector. Final Act. 4 (citing Godfried, Abstract). Second, although Godfried does not specifically disclose the use of a diamond prism, we agree with the Examiner that one of ordinary skill in the art would understand that the range of optical applications for the monocrystalline diamonds disclosed in Godfried would encompass, or at least suggest, the use of a monocrystalline diamond prism. Specifically, Godfried discloses that “[a]pplications arising from the CVD diamond material of the invention, where performance is enabled by these unique material properties, include but are not limited to: optical windows,” “laser windows,” “optical reflectors,” “optical refractors and lenses,” “diffractive optical elements,” “etalons,” “ornamental use[s],” and “anvils for high pressure temperature experiments.” Godfried col. 12, l. 42–col. 13, l. 3. We find that one of ordinary skill in the art would understand such a broad range Appeal 2018-000561 Application 13/045,321 8 of uses to include the use of diamond prisms, particularly given that Godfried discloses applicability to optical refractors. This is supported by the meaning of the term prism as it is used here, which is “a transparent body that is bounded in part by two nonparallel plane faces and is used to refract or disperse a beam of light.” Merriam-Webster.com (last visited Aug. 21, 2019), https://www.merriam-webster.com/dictionary/prism. Appellant argues that the art of record does not disclose a pivotable diamond prism. Appeal Br. 9. This argument does not address adequately the rejection before us, which relies on the combination of Hoeg and Godfried as rendering the use of a pivotable diamond prism obvious. Specifically, the Examiner finds that Hoeg teaches a pivotable prism and Godfried teaches the use of a monocrystalline diamond and that it would have been obvious to use monocrystalline diamond as the material for Hoeg’s prism. Finally, Appellant argues that “even in combination one would not arrive at the claimed invention. Instead one would simply arrive at Hoeg’s pivotal prism (not diamond) with Godfried’s diamond window.” Appeal Br. 9. Appellant provides no indication why this would be the case, and because the rejection does not rely on the specific bodily incorporation of any device from Godfried into Hoeg’s device, we are not persuaded. Based on the foregoing, we are not persuaded of error in the rejection of claim 1. Accordingly, we sustain the rejection of claim 1. We also sustain the rejection of claims 7, 9, 18, 20, 21, and 23–26, which fall with claim 1. Appeal 2018-000561 Application 13/045,321 9 Claim 19 Regarding claim 19, the Examiner acknowledges that Goldfarb, Durell, and Godfried do not disclose the specific dimensions of the prism claimed. See Final Act. 10.12 However, the Examiner finds that the claimed device would not be patentably distinct from the prior art devices based on the claimed dimensions because “a device having the claimed relative dimensions would not perform differently than the prior art device.” Id. The Examiner also finds that Mathyssek and West disclose prisms having the claimed dimensions. Id. at 10–11 (citing Mathyssek col. 3, ll. 35–45; West col. 3, l. 47–col. 4, l. 11). The Examiner determines it would have been obvious to one having ordinary skill in the art at the time of the invention to have made the dove prism of Hoeg with the dimensions disclosed by West and Mathyssek as it is generally known in the art to form dove prisms with such dimensions and a device having the claimed relative dimensions would not perform differently than the prior art device. Id. at 11. We find reversible error in the Examiner’s determination that the claimed device represents only a mere change in dimensions over the prior art devices. Rather, the claim requires a pivotable diamond prism. Although, as found above, Godfried discloses the desirable properties that may be obtained from the use of a monocrystalline diamond, none of the art of record provides a comparison of the functionality between the use of a prism as in Goldfarb and a prism made of monocrystalline diamond or the specific properties of a monocrystalline diamond prism of varying sizes. 12 We note that the Examiner refers to Hoeg instead of Goldfarb in portions of this rejection. We consider this to be a typographical error. Appeal 2018-000561 Application 13/045,321 10 Thus, we do not agree with the Examiner’s finding that the only difference between the prior art and the claim is the required prism dimensions. There is no evidence provided to support this finding. Although a device having the claimed prism dimensions for a non-diamond prism may function in the same manner as the prior art, the Examiner has not established that this would also perform in the same manner as the claimed device, which includes a monocrystalline diamond prism. Based on the foregoing we do not sustain the rejection of claim 19. Claims 11–17 With respect to the rejection of claims 11–17, Appellant argues only that claims 11–14 have similar limitations to those discussed above with respect to claim 19. See Appeal Br. 11. Appellant does not address claims 15–17, and thus, we sustain the rejection of these claims for the reasons discussed above with respect to claim 1. Claim 12 depends from claim 7 and further requires that the prism comprises “a roof surface.” Appeal Br. 15. The Examiner finds that Hoeg discloses a prism with a roof surface. Final Act. 6 (citing Hoeg Fig. 2B). Appellant does not address this finding or otherwise explain why the Examiner erred in rejecting claim 12, which does not include any dimensional requirements for the prism. Thus, we sustain the rejection of claim 12 for the reason discussed above with respect to claim 1. Claims 11, 13, and 14 each ultimately depend from claim 7 and require specific dimensions for the claimed prism. We determined that the Examiner erred in rejecting these claims for similar reasons to those discussed above with respect to independent claim 19. See Final Act. 7–8. Appeal 2018-000561 Application 13/045,321 11 In particular, the Examiner has not established adequately that the claims represent only a mere change in dimensions over the prior art devices such that the devices do not perform differently. Accordingly, we do not sustain the rejection of claims 11, 13, and 14. Claim 27 The Examiner separately rejects claim 27 over Hoeg in view of Durell, Godfried, and Navok. Claim 27 depends from claim 1, and Appellant does not provide separate arguments regarding this rejection. Accordingly, we also sustain the rejection of claim 27 for the reasons provided above. CONCLUSION We AFFIRM the rejections of claims 1, 7, 9, 12, 15–18, 20, 21, and 23–27. We REVERSE the rejections of claims 11, 13, 14, and 19. 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)(iv). AFFIRMED-IN-PART