KARL STORZ SE & CO. KG

Patent Trials and Appeals Board

Dec 20, 2021

2021004152 (P.T.A.B. Dec. 20, 2021)

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.
15/898,614 02/18/2018 Daniel KÄRCHER 76197 2019
23872 7590 12/20/2021
MCGLEW & TUTTLE, PC
P.O. BOX 9227
SCARBOROUGH STATION
SCARBOROUGH, NY 10510-9227
EXAMINER
LEUBECKER, JOHN P
ART UNIT PAPER NUMBER
3795
MAIL DATE DELIVERY MODE
12/20/2021 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 DANIEL KARCHER, and CLAUS KRAMER
Appeal 2021-004152
Application 15/898,614
Technology Center 3700
Before DANIEL S. SONG, BENJAMIN D. M. WOOD, and
BARRY L. GROSSMAN, Administrative Patent Judges.
GROSSMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–5, 7–21. An oral hearing in
accordance with 37 C.F.R. § 41.47 was held on November 15, 2021. A
transcript of the hearing is in the record (cited as “Tr.”). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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
SE & Co. KG. Appeal Br. 1.
Appeal 2021-004152
Application 15/898,614

2
CLAIMED SUBJECT MATTER
The claims are directed to an endoscope (independent claim 1), an
endoscope head (independent claim 11), and a method for producing an
endoscope (independent claim 12). Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. An endoscope comprising:
an endoscope shaft comprising a cylindrical shaft tube;
and
an endoscope head arranged at a proximal end of the
endoscope shaft, the endoscope head having a cylindrical
interior, in a distal end region, with a peripheral groove,
wherein:
the shaft tube is inserted into the cylindrical interior and
comprises a folded portion folded into the peripheral groove;
a bottom of the groove forms a closed, continuously
concave curve; and
the groove is not rotationally symmetrical.
Appeal Br. App. 32 (Claims App.).
Independent method claim 12 is directed to a method of producing an
endoscope as recited in independent claim 1. The method involves
“pushing” a proximal end region of the shaft tube into the cylindrical interior
of the endoscope head; and “press fitting” the proximal end region of the
shaft tube to the distal end region of the endoscope head. Appeal Br. 34
(Claims App.).
To illustrate the claimed subject matter, and the issues in this appeal,
Figure 5 from Appellant’s application is shown below.
Appeal 2021-004152
Application 15/898,614

3

Fig. 5 is a longitudinal sectional view through a part of the housing
of the endoscope head with the shaft tube pressed in. Spec. ¶ 34.

To assemble endoscope 1, proximal end region 5 of shaft tube 4 is
inserted into interior 13 of endoscope head 2 until shaft tube 4 protrudes
sufficiently beyond peripheral groove 15. Spec. ¶¶ 38, 42; see Fig. 2.
Longitudinal groove 16, formed in the inner surface of cone 12, is open at
the proximal side, but closed at the distal side, and communicates with
peripheral groove 15. Id. ¶ 38. Shaft tube 4 is then pressed into distal end
region 11 of endoscope head 6. Id. ¶ 42; see Fig. 2. To do this, shaft tube 4
is compressed in the axial direction by an inserted mandrel. Id. In this way,
shaft tube 4, which has a suitably small wall thickness, “folds into the
groove 15.” Id. Shaft tube 4 is compressed to such an extent that the
material penetrating into peripheral groove 15 substantially fills groove 15.
Id.
Appeal 2021-004152
Application 15/898,614

4

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Salvermoser US 2008/0097160 A1 Apr. 24, 2008
Quitschau US 5,341,566 Aug. 30, 1994

REJECTIONS
Claims 1–2 and 9–21 are rejected under 35 U.S.C. § 102(a)(l) as
anticipated by Salvermoser. Final Act. 2–5. Claims 3–5 are rejected under
35 U.S.C. § 103 as being unpatentable in view of Salvermoser. Id. at 6–7.
Claims 7–8 are rejected under 35 U.S.C. § 103 as being unpatentable in view
of Salvermoser and Quitschau. Id. at 7–8.
OPINION
Claims 1, 2, and 9–21 as anticipated by Salvermoser
Regarding independent claim 1, Appellant argues “[t]he final rejection
contains a clear error in that Salvermoser et al. fails to teach and fails to
suggest a shaft tube that comprises a folded portion folded into a peripheral
groove of an endoscopic head.” Appeal Br. 7–8; see also Tr. 3:14–15
(“Really the point of contention in this case boils down to the peripheral
groove.”). According to Appellant, the “clear error” is that “cavity 30 [in
Salvermoser] is not a groove.” Appeal Br. 8. Appellant argues, without
citing any supporting evidence, that “[a] cavity is different from a peripheral
groove. A cavity is merely an empty space, whereas a groove is a long,
narrow channel or depression.” Id. Appellant further argues that “the prior
art as a whole takes a completely different approach and fails to teach or
Appeal 2021-004152
Application 15/898,614

5
suggest each of the features recited in the claimed combination [in claim 1].”
Id. at 9. Appellant repeats these same arguments for independent claim 12.
See Appeal Br. 14–15. We disagree.
Salvermoser
First, as stated correctly by the Examiner, Salvermoser addresses the
identical technology claimed by Appellant in independent claims 1, 11, and
12. See, e.g., Final Act. 2–3. Salvermoser discloses an endoscope and a
method for producing an endoscope. The disclosed method includes
providing an endoscope head and an optic tube, pushing a proximal end area
of the optic tube into a distal end area of the endoscope head, and press-
fitting the distal end area of the endoscope head with the proximal end area
of the optic tube. Salvermoser ¶ 15.
Figures 2 and 5 from Salvermoser are reproduced below.2

2 A comparison of Figures 1, 2, and 5 from Salvermoser with Figures 1, 2,
and 5 of Appellant’s application indicates the near identity of Salvermoser to
the illustrated invention in Appellant’s application.
Appeal 2021-004152
Application 15/898,614

6

Fig. 2 from Salvermoser shows
an optic tube (in cutaway
view) and an endoscope head
in longitudinal section at the
start of a method for producing
the endoscope. Salvermoser
¶ 41.
Fig. 5 from Salvermoser shows the
endoscope head, the optic tube and the
pressing tool in a further method step of
the production method, with material of
optic tube 16 engaging with a form fit in
recess 28 of endoscope head 12.
Salvermoser ¶ 62.
In Salvermoser, the distal end area of the endoscope head is provided
on its inside with a circumferential recess 28 into which material of the optic
tube flows with a form fit during the pressing operation. Salvermoser ¶ 27.
Salvermoser discloses that endoscopic head 12 has a “circumferential recess
28 on its inside, and at least one circumferentially limited cavity 30.” Id. 54.
Recess 28 “is preferably designed as a groove 32 that extends about the full
circumference in the distal end area 20 of the endoscope head 12.”
Salvermoser ¶ 55. Thus, recess 28 and groove 32 are referring to the same
element.
An excerpt from Figure 5 of Salvermoser is provided below,
illustrating the relationship of recess 28, cavity 30, and groove 32.
Appeal 2021-004152
Application 15/898,614

7

Cavity 30 “can either be arranged directly on a part of the recess 28 or
can be arranged spatially separate from the latter in the distal end area 20 of
the endoscope head 12.” Salvermoser ¶ 55. Moreover, cavity 30 “can be set
deeper in relation to the recess 28.” Id.
The Anticipation Rejection
With respect to the claimed “peripheral groove,” the Examiner relied
on “groove 28/32 and a portion of cavity 30 connected to groove 28/32,”
citing Figures 2 and 9 of Salvermoser.3 Final Act. 3. The Examiner also
referred to “groove 28/32, 30,” citing Figures 5, 9. Id. Thus, the Examiner,
and Salvermoser, treated the elements of recess 28, cavity 30, and groove 32
as a continuum of space. Salvermoser discloses,

3 Because recess 28 and groove 32 are referring to the same element (see
Salvermoser ¶ 55), we, as did the Examiner, will refer to this element as a
“recess/groove” with the reference numeral designation “28/32.”
Appeal 2021-004152
Application 15/898,614

8
The recess 28 is preferably designed as a groove 32 that
extends about the full circumference in the distal end area 20 of
the endoscope head 12. The cavity 30 can either be arranged
directly on a part of the recess 28 or can be arranged spatially
separate from the latter in the distal end area 20 of the
endoscope head 12. Moreover, the cavity 30 can be set deeper
in relation to the recess 28, as seen in the radial direction of the
distal end area 20 of the endoscope head 12.
Salvermoser ¶ 55 (emphasis added). Thus, recess 28, groove 32, and cavity
30 essentially refer to a continuum: recess 28 is preferably a groove, and
cavity 30 can be “a part of” recess 28. Id. We have not been directed to any
persuasive evidence supporting Appellant’s argument that “cavity 30 [in
Salvermoser] is not a groove.” Appeal Br. 8. At the hearing, counsel for
Appellant further explained Appellant’s position as “[w]e’re making the
distinction that you can’t include the cavity 30 as part of the groove 32
which is what the examiner seems to be taking the position as.” Tr. 7:22–24.
Appellant’s argued distinction, however, ignores the clear disclosure in
Salvermoser that “cavity 30 can either be arranged directly on a part of the
recess 28 or can be arranged spatially separate from” recess/groove 28/32.
See Salvermoser ¶ 55 (emphasis added).
We find helpful and persuasive the Examiner’s comprehensive
analysis and illustrations in the Examiner’s Answer of why Salvermoser
anticipates claims 1, 2, and 9–21. See Ans. 9–12.
The Examiner relies on the following annotated illustration from
Salvermoser. See Ans. 9–10.
Appeal 2021-004152
Application 15/898,614

9

Figure 9 from Salvermoser, annotated by the Examiner (Ans. 9)
shows the endoscope head in a cross section along the line I-I in Figure 8.

As the Examiner states in the rejection of claim 1, “Salvermoser
teaches a circumferential recess (28) in the form of a groove (32) (shown in
Figs. 2, 9), the bottom surface of which forms a continuously concave curve
(indicated at certain portions as B32 in the [Examiner’s annotated Figure
9]).” Ans. 9. The Examiner also explains, “[c]avity (30), which extends to
intersect with groove (32) (best shown in Fig. 2 of Salvermoser), includes a
curved bottom surface which forms a continuously concave curve (indicated
as B30 in the [Examiner’s annotated Figure 9]).” Id. The Examiner further
explains the anticipating disclosure of Salvermoser as shown in the
annotated Figure 9:
Thus, when taken together (i.e. in the vicinity of cavity 30
which aligns with groove 32), the bottom of the groove formed
by following the bottom surface (B32) around the
circumference, and continuing on along bottom surface (B30)
to eventually connect back to bottom surface (B32) again, will
form a groove having a bottom that “forms a closed,
continuously concave curve” as claimed. In addition, the
Appeal 2021-004152
Application 15/898,614

10
concave curved bottom (B30), which creates a portion of the
groove which is deeper than the remainder of the groove
formed by bottom (B32), causes the [entirety] of the groove
(32/30), at least at the bottom of such groove, to be “not
rotationally symmetrical” as claimed.
Ans. 9–10.
The Examiner also explains and illustrates (reproduced below) in the
Examiner’s Answer the continuum among elements 28, 30, and 32 in
Salvermoser:
Salvermoser explicitly states and shows that cavity (30) is
“arranged directly on a part of the recess 28”4 (see paragraph
[0055]). As clearly shown in Figures 2 and 9 of Salvermoser,
which have been reproduced below in correlation with each
other, cavity (30) intersects with and forms part of groove (32).
Ans. 11.

Examiner’s annotated comparison of
Salvermoser’s Figs. 2, 9. Ans. 11.

4 Footnote 2 in the Examiner’s Answer states “As explained in paragraph
[55] of Salvermoser, recess 28 and groove 32 are referring to the same
element.” Ans. 11 (brackets included in the footnote).
Appeal 2021-004152
Application 15/898,614

11
Appellant speculates that “if the cavity 30 of Salvermoser et al. was a
groove, Salvermoser et al. would have stated that the cavity 30 is a groove
and would not have used the term “cavity.” Reply 2. We disagree. There is
no evidence to support Appellant’s speculation. Salvermoser’s selection of a
particular term over another is not dispositive. Indeed, as discussed above,
the clear disclosure of Salvermoser is to the contrary. See, e.g., Salvermoser
¶ 55; Ans. 9–11.
Based on the Examiner’s explanations and annotated illustrations, we
agree with the Examiner that Salvermoser discloses that cavity 30 intersects
with and forms “part of” recess/groove 28/32. See Salvermoser ¶ 55. There
is no persuasive evidence that “cavity 30 of Salvermoser et al. is not a part
of the groove 32,” as argued by Appellant. E.g., see, Reply 1.
Appellant makes specific reference to an alleged “suggestion” in the
Final Action that cavity 30 in Salvermoser could be “excluded.” Appeal
Br. 8 (“[I]f the cavity 30 of Salvermoser et al. is excluded as suggested in the
final rejection, then the groove 28/32 is rotationally symmetrical and does
not provide a groove that is not rotationally symmetrical as claimed.”).
Appellant misconstrues the Examiner’s statements. As the Examiner
explains in the Answer,
this “exclusion” was mentioned ONLY to differentiate the
bottom of the groove (32) from the bottom of the cavity (30)
(groove 32 encompasses a portion of cavity 30 to define the
bottom, but cavity 30 includes more area that is not required to
define the bottom of the groove 30/32) and does not affect the
interpretation that the groove (32), when taken in combination
with the portion of cavity (30) with which it aligns, is not
rotationally symmetrical (as best seen in Figure 9 of
Salvermoser). Any mention of “excluding” the cavity (30) was
used for the purpose of describing different aspects of the
Appeal 2021-004152
Application 15/898,614

12
Salvermoser device and should not be taken as “excluding” the
cavity from the formation of the totality of the groove.
Ans. 12. Based on the Examiner’s clarification, the Examiner’s position is
that Salvermoser discloses a groove that is not rotationally symmetrical, as
claimed. We agree with the Examiner.
Claim 2
Claim 2, dependent from claim 1, recites that “the groove has a non-
uniform depth about a circumference thereof.”
In the Final Action, the Examiner found that, in Salvermoser, “the
groove has a non-uniform depth about the [sic] circumference thereof
(cavity 30 set deeper than remaining part of groove[]).” Final Act. 3 (citing
Figure 9 of Salvermoser).
For dependent claim 2, Appellant argues “[t]he final rejection contains
a clear [error] in that the cavity 30 of Salvermoser et al. is not a peripheral
groove.” Appeal Br. 9. According to Appellant,
Salvermoser et al. discloses a recess 28 that is designed in the
form of a groove 32. The cavity 32 of Salvermoser et al. cannot
be considered as a part of a peripheral groove as there is no
portion of a shaft tube that has a folded portion that is folded
into the cavity 32 as featured in the present invention.
Salvermoser et al. only discloses a single groove 32 that
receives a folded portion of a shaft 14. The groove 32 of
Salvermoser et al. does not have a non-uniform depth about a
circumference as claimed.
Appeal Br. 9.
Appellant also argues “there is no teaching and no suggestion in
Salvermoser et al. as to the cavity 30 having a bottom that forms a closed,
continuously concave curve as featured in the present invention.” Reply 4
(emphasis added).
Appeal 2021-004152
Application 15/898,614

13
There is no requirement in claim 2 that the continuum of recess 28,
cavity 30, and groove 32, as disclosed in Salvermoser, must also have a
closed, continuously concave curve, as Appellant argues. Moreover,
Appellant fails to address the clear disclosure in Salvermoser that “cavity 30
can . . . be arranged directly on a part of the recess 28” and that “cavity 30
can be set deeper in relation to the recess 28.” Salvermoser ¶ 55.
Based on our analysis above of the Examiner’s rejection of claim 1,
and the Examiner’s explanation that Salvermoser discloses that cavity 30 is a
part of recess/groove 28/32, and that cavity 30 intersects with and forms part
of recess/groove 28/32, we agree with the Examiner’s determination that
Salvermoser anticipates claim 2.
Claim 9
Claim 9, dependent from claim 1, recites that “the folded portion
comprises a fold of the shaft tube that substantially fills the groove.”
In the Final Action, the Examiner found that, in Salvermoser, “the
folded portion comprises a fold of the shaft tube that substantially fills the
groove (not numbered but shown as the compressed curve portion of
proximal end 18 that extends into groove 28/32,[]30.”). Final Act. 3 (citing
Figs. 5, 9). In the Examiner’s Answer, the Examiner further explains that
“Salvermoser explicitly teaches press-fitting (folding) the shaft tube into
groove (30/32) such that it substantially fills such groove.” Ans. 13 (citing
Salvermoser ¶¶ 61, 62, Figs. 2, 8 and 9).
For dependent claim 9, Appellant argues that “Salvermoser et al. does
not provide any teaching or suggestion as to the shaft 14 having a fold that
substantially fills the groove 32.” Appeal Br. 10. According to Appellant,
“Figures 5 and 9 of Salvermoser et al. do not show a fold of tube 16 that
Appeal 2021-004152
Application 15/898,614

14
substantially fills the cavity 30 and the groove 32 as required in the claimed
combination.” Id. Appellant acknowledges, however, that Salvermoser
“discloses that material of the optic tube 16 extends into the cavity 30.” Id.
The Specification provides guidance on the meaning of “fold.” The
Specification states:
[t]he shaft tube is inserted with its proximal end region into the
cylindrical interior and folded into the peripheral groove. This
means that material of the shaft tube engages with a form fit in
the groove, preferably about the entire circumference of the
shaft tube, such that the shaft tube is connected to the
endoscope head with form-fit engagement. The shaft tube can
be press-fitted to the endoscope head, for example by
compression in the longitudinal direction, and thus be folded
into the groove.
Spec. ¶ 10 (all emphasis added). Thus, the “folded” connection recited in
claim 9 is disclosed as a “form fit” or “press fit” between the shaft tube and
the endoscope head wherein material of shaft tube “engages” the peripheral
groove in the endoscope head. The disclosed preferred connection is that the
shaft tube engages the peripheral groove “about the entire circumference of
the shaft tube.” Spec. ¶ 10. This preferred connection, however, is not
included in claim 9. Claim 9 recites only that the “fold” of the shaft tube
“substantially fills the groove.”
The Specification states that there are various options for the fold to
substantially fill the peripheral groove. Spec. ¶ 20. As explained in the
Specification, the shaft tube “is folded into the groove in such a way that the
fold of the shaft tube, i.e. the material of the shaft tube engaging in the
groove, substantially fills the groove or at least touches the bottom or both
flanks of a trapezoid groove.” Id. Also, “[t]he shape of the fold can depend
Appeal 2021-004152
Application 15/898,614

15
on the depth of the groove and can be non-uniform about the circumference.
Thus, in circumferential positions where the groove is deeper, the fold can
have a different shape than it has where the groove is shallower.” Id.
As is shown in Figure 5 of Salvermoser, proximal end area 18 of optic
tube 16 “is axially compressed by the axial force in such a way that axially
compressed material is forced radially outwards.” Id. ¶ 62. Material of
proximal end area 18 of optic tube 16 “thus engages with a form fit in the
recess 28 while the optic tube 16 is press-fitted with the endoscope head 12.”
Id. Engagement of material of optic tube 16 into recess 28 “permits a secure
axial positioning of the optic tube 16 relative to the endoscope head 12.” Id.
The pressing action also causes material of optic tube 16 to engage in
cavity 30 (see Figure 6). Salvermoser ¶ 63. This ensures that optic tube 16
is not able to turn relative to the endoscope head 12 about its longitudinal
axis. Id. Additionally, Salvermoser discloses that “[m]aterial of the optic
tube 16 engages with a form fit in the recess 28, formed as a groove 32
extending about the full circumference, and into the cavity 30.” Id. ¶ 69.
Based on the analysis above and the disclosure of Salvermoser, we
agree with the Examiner’s determination that Salvermoser anticipates claim
9.
Claim 10
Claim 10 recites that “the cylindrical interior has a longitudinal
groove [16] connected to the peripheral groove [15] and extends beyond the
latter in an axial direction, wherein the longitudinal groove [16] is deeper
than the peripheral groove [15] in a connecting region.”
Figure 2 of Appellant’s application is shown below.
Appeal 2021-004152
Application 15/898,614

16

Fig. 2 from Appellant’s application is a longitudinal sectional view through
a part of the housing of an endoscope head and the proximal end
region of the shaft tube of the endoscope. Spec. ¶ 31.

As shown in Figure 2, peripheral groove 15 is in the inner surface 14
of cone 12 and extends in a plane perpendicular to the axis of interior 13.
Longitudinal groove 16 communicates with peripheral groove 15.
The Examiner determined that the cylindrical interior of Salvermoser
“has a longitudinal groove connected to the peripheral groove and extends
beyond the latter in the [] axial direction, wherein the longitudinal groove is
deeper than the peripheral groove in a connecting region (the remainder of
cavity 30 which extends axially proximally of the groove 28/32.” Final
Act. 3 (citing Salvermoser Fig. 2). The Examiner determined that the
structure in Salvermoser constitutes a longitudinal groove that is deeper than
the peripheral groove in a connecting region. Id. A comparison of Figure 2
from Salvermoser, cited by the Examiner, with Figure 2 from Appellant’s
application is below.
Appeal 2021-004152
Application 15/898,614

17

Fig. 2 from Salvermoser Fig. 2 from Appellant’s application

Appellant argues that “the cavity 30 of Salvermoser et al. is not a
longitudinal groove.” Appeal Br. 11. As shown in a comparison of these
figures, Appellant’s longitudinal groove 16 is identical to Salvermoser’s
cavity 30. If there is a distinction, it is without a substantive difference in
the context of the issues before us. We have rejected Appellant’s asserted
distinction of a cavity and a groove in our analysis of claim 1. Appellant
also argues “[n]o portion of the cavity 30 of Salvermoser et al. forms a
groove let alone a longitudinal groove.” Id. Appellant has not directed us to
any persuasive evidence supporting these arguments.
Based on the analyses above and the disclosure of Salvermoser, we
agree with the Examiner’s determination that Salvermoser anticipates claim
10.
Claims 19–21
Claims 19–21 depend directly or indirectly from claim 1. Appellant
repeats the same arguments discussed above. E.g., see Appeal Br. 20
(“[T]he final rejection takes the position that reference characters 28, 30 and
32 define a groove, but that somehow reference character 30 should be
excluded from defining a bottom of the groove is clear error.”).
Appeal 2021-004152
Application 15/898,614

18
Based on the analyses above and the disclosure of Salvermoser, we
agree with the Examiner’s determination that Salvermoser anticipates claims
19–21.
Claim 11
Independent claim 11 is directed only to the endoscope head, which is
one of the components included in independent claim 1. Claim 11 recites
that the claimed endoscope head includes a “housing with a distal end region
having a cylindrical interior with a peripheral groove, wherein the peripheral
groove is not rotationally symmetrical and a bottom of the peripheral groove
forms a closed, continuously concave curve.”
The Examiner determined that Salvermoser discloses an endoscope
head having a housing a peripheral groove (28/32 and a portion of cavity
30), wherein the peripheral groove is not rotationally symmetrical. See
Salvermoser ¶ 12, Fig. 2; Final Act. 4. The Examiner also determined that a
bottom of the groove forms a closed, continuously concave curve when
viewed from either a side cross-section, as shown in Figure 2 of
Salvermoser, or a front cross-section, as shown in Figure 9 of Salvermoser.
Final Act. 4. In making these determinations, the Examiner noted
Salvermoser discloses that a “portion of cavity 30 can be arranged directed
on a part of the recess 28 and set deeper than the recess 28, [0055], making
the entirety of groove 28/32/30 rotationally asymmetric as shown in Fig. 9.”
Id.
Appellant repeats its argument that “cavity 30 [in Salvermoser] does
not form any part of a groove.” Appeal Br. 12, 13 (“There is no portion of
the cavity 30 of Salvermoser et al. that defines a portion of a bottom of the
groove 32 that forms a closed, continuously concave curve as claimed.”).
Appeal 2021-004152
Application 15/898,614

19
We have discussed, and rejected, these same arguments in our analyses
above. Moreover, there is no evidence to support Appellant’s argument that
“the prior art as a whole takes a completely different approach” than the
claimed invention. Id. at 13.
Based on the analyses above and the disclosure of Salvermoser, we
agree with the Examiner’s determination that Salvermoser anticipates
claim 11.
Claims 16–18
Claims 16–18 depend directly or indirectly from claim 11. Appellant
repeats its arguments addressed above. Based on the analyses above and the
disclosure of Salvermoser, we agree with the Examiner’s determination that
Salvermoser anticipates claims 16–18.
Claims 12–15
Claims 12–15 are method counterparts to claims directed to the
endoscope structure in independent claim 1 and the claims dependent from
claim 1. Salvermoser discloses an endoscope device, an endoscope head,
and a method of making an endoscope. Salvermoser ¶ 2 (“The invention
relates to a method for producing an endoscope, the endoscope comprising
an endoscope head and an optic tube.”).
Appellant repeats its arguments addressed above. E.g., Appeal Br. 14
(“There is no teaching or suggestion in Salvermoser et al. as to the cavity 30
defining a bottom portion of a groove 32 that forms a closed, continuously
concave curve as featured in the present invention.”).
Based on the analyses above and the disclosure of Salvermoser, we
agree with the Examiner’s determination that Salvermoser anticipates claims
12–15.
Appeal 2021-004152
Application 15/898,614

20
Conclusion for Claims 1, 2, and 9–21
We find no error in the rejection of claims 1, 2, and 9–21 as
anticipated by Salvermoser.
Claims 3–5 as obvious in view of Salvermoser
Claim 3, dependent on claim 2, states that “a maximum depth of the
groove is about twice as great as a minimum depth of the groove.”
Claim 4, also dependent on claim 2, states that “the groove has a
plurality of depth maxima distributed uniformly about the circumference and
a plurality of depth minima, wherein each of the plurality of depth minima is
positioned lying between adjacent ones of the plurality of depth maxima.”
Claim 5, dependent on claim 4, states “the groove has three depth
maxima and three depth minima.”
As to claim 3, the Examiner found that “Salvermoser discloses that
pressing the tube into the deeper cavity 30 prevents the tube from rotating
(about longitudinal axis) relative to the endoscope head.” Final Act. 6
(citing Salvermoser ¶ 63). The Examiner also found that Salvermoser
“shows the maximum depth of the groove (at cavity 30) is almost about
twice as great as the minimum depth (see Fig. 9, depth of groove 28 being
the minimum and depth of cavity 30 being maximum) but fails to explicitly
teach twice the depth.” Id. The Examiner concluded, however, it would
have been obvious to one of ordinary skill in the art “to have made cavity
(30) of Salvermoser slightly deeper (up to about twice as deep as groove
28/32).” Id. The reason why it would have been obvious, according to the
Examiner, is that “doing so would be readily recognized as an endeavor to
improve the resistance to rotation by increasing the amount of material of
Appeal 2021-004152
Application 15/898,614

21
the tube within the cavity (30), thereby providing more reliable resistance to
rotation.” Final Act. 6.
Appellant argues “the cavity 30 of Salvermoser et al. is not a groove
and does not form a groove as featured in the present invention.” Appeal
Br. 24. Appellant also argues that Figure 9 in Salvermoser “does not show
that a maximum depth of the cavity 30 is about twice a minimum depth of
the groove.” Id. at 25. Appellant also repeats its previous argument that
“the prior art as a whole takes a completely different approach” from the
claimed invention. We disagree.
Figure 9 from Salvermoser, on which the Examiner relies, is
reproduced below.

Fig. 9 from Salvermoser shows a cross-section view
of an endoscope head. Salvermoser ¶ 48.
As shown in Figure 9, proximal end area 18 of optic tube 16 is press-
fitted with distal end area 20 of endoscope head 12. Salvermoser ¶ 62.
Appeal 2021-004152
Application 15/898,614

22
Material of optic tube 16 engages with a form fit in “the recess 28, formed as
a groove 32 extending about the full circumference, and into the cavity 30.”
Salvermoser ¶ 69.
We recognize that patent drawings are not drawn to scale.
See Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d 951, 956
(Fed. Cir. 2000) (“[I]t is well established that patent drawings do not define
the precise proportions of the elements and may not be relied on to show
particular sizes if the specification is completely silent on the issue.”). The
description of the article pictured, however, can be relied on, in combination
with the drawings, for what they would reasonably teach one of ordinary
skill in the art. In re Wright, 569 F.2d 1124, 1127-28 (CCPA 1977). Patent
drawings, however, “must be evaluated for what they reasonably disclose
and suggest to one of ordinary skill in the art. In re Aslanian, 590 F.2d 911
(CCPA 1979); see also Bradium Technologies LLC v. Iancu, 923 F. 3d
1032, 1049 (Fed. Cir. 2019) (citing Alsanian, for the proposition that “in
determining obviousness, all references are assessed ‘on the basis of what
they reasonably disclose and suggest to one skilled in the art.’”) (quoting In
re Baum, 374 F.2d 1004, 1009 (CCPA 1967)).
With reference to Figure 5, Salvermoser discloses the proximal end
area 18 of optic tube 16 is axially compressed by the axial force in such a
way that axially compressed material from tube 16 “is forced radially
outwards.” Salvermoser ¶ 62. Material of proximal end area 18 of optic
tube 16 thus engages with a form fit in “recess 28,” and thus also into groove
32, while optic tube 16 is press-fitted with endoscope head 12. Id.
Engagement of the material of the optic tube 16 into the recess/groove 28/32
Appeal 2021-004152
Application 15/898,614

23
“permits a secure axial positioning of the optic tube 16 relative to the
endoscope head 12.” Id.
Paragraph 63 of Salvermoser, specifically cited by the Examiner,
further explains that “[t]he pressing action also causes material of the optic
tube 16 to engage in the cavity 30 (see FIG. 6).” Salvermoser ¶ 63. Thus,
the material of the optic tube is “folded” or extended into both recess/groove
28/32 and cavity 30. The reason for this engagement is that it “ensures that
the optic tube 16 is not able to turn relative to the endoscope head 12 about
its longitudinal axis.” Id. The more fully or substantially the material is
extended into both recess/groove 28/32 and cavity 30, the more secure will
be the connection between optic tube 16 and endoscopic head 12.
We agree with the Examiner that based on the drawings and the
disclosure, it would have been obvious to a person of ordinary skill in the
relevant technology to provide groove depths sufficient to “secure axial
positioning of the optic tube 16 relative to the endoscope head 12.”
Salvermoser ¶ 62.
As to claims 4 and 5, the Examiner found that “Salvermoser discloses
that pressing the tube into the deeper groove (30) prevents the tube from
rotating relative to the endoscope head ([63]) and discloses only one deeper
groove (30) (which forms a depth maximum).” Final Act. 6. The Examiner
acknowledges that Salvermoser “fails to disclose the groove has a plurality
of depth maxima distributed uniformly about the circumference and a
plurality of depth minima, wherein each of the plurality of depth minima is
positioned lying between adjacent ones of the plurality of depth maxima,” as
recited in claim 4. Id. at 6–7. The Examiner also acknowledged that
Salvermoser fails to disclose “the groove has three depth maxima and three
Appeal 2021-004152
Application 15/898,614

24
depth minima,” as recited in claim 5. Id. The Examiner concluded,
however,
it would have been obvious to one of ordinary skill in the art
before the effective filing date of the claimed invention to
provide multiple deeper grooves (similar to 30) about the
circumference of groove (28/32) since doing so would be
readily recognized as an endeavor to improve the resistance to
rotation by increasing the amount of material of the tube within
the deeper grooves, thereby providing more reliable resistance
to rotation. The number of additional deeper grooves would be
a matter of design choice and their positioning would logically
be evenly spaced about the circumference in order to provide a
more uniformly distributed resistance to rotation. Hence,
providing one additional deeper groove (30) would logically be
positioned at 180 degrees from the original (180 degrees from
the one in Fig. 9), providing two additional grooves would
logically be positioned 120 degrees from the original, and so
on. Provision of three deeper grooves will form a
corresponding number of depth minima positioned in between
the adjacent deeper grooves (depth maxima).
Final Act. 7.
Appellant argues “[t]he groove 28 and the cavity 30 of Salvermoser et
al. do not form a peripheral groove that is not rotationally symmetrical and
do not form a bottom of the groove that forms a closed, continuously
concave curve as claimed.” Appeal Br. 26. According to Appellant, the
claimed structure “provides reliable prevention of rotation of an endoscope
shaft.” Id. This is the exactly the purpose of Salvermoser’s structure. See
Salvermoser ¶ 62. We agree with the Examiner that providing a groove
structure with a plurality of redundant depth maxima distributed uniformly
about a circumference and a plurality of depth minima for the purpose of
preventing rotation of the endoscope shaft would have been obvious to a
Appeal 2021-004152
Application 15/898,614

25
person of ordinary skill because multiple grooves would provide greater
prevention of rotation of the endoscope shaft than a single groove.
Claims 7–8 as obvious in view of Salvermoser and Quitschau
Claim 7, dependent from claim 1, recites that “the groove has a
trapezoid shape in a cross section of the groove, the groove comprising a
longitudinal section parallel to an axis of the cylindrical interior through the
endoscope head.”
Claim 8, also dependent from claim 1, recites that “the groove has a
bottom and, arranged on both sides thereof, flanks, wherein an inclination of
the flanks measures approximately 60.”
The structure claimed is shown in Figures 2 and 3 of Appellant’s
application, illustrating oblique flanks 18, 19 in peripheral groove 15.
The Examiner determined that Quitschau discloses a polygonal
groove with a bottom surface and side surfaces angled at approximately 60
degrees. Final Act. 8 (citing Quitschau Fig. 2, (groove 18, 20)). The
Examiner found that Quitschau discloses “a suitably shaped groove
accommodating a press fit tube (wall of tubing 10 press fit into the groove as
shown in Fig. 3, col. 2, lines 56–64).” Id.
The Examiner concluded “[i]t would have been obvious to one of
ordinary skill in the art before the effective filing date of the claimed
invention to have provided a groove in Salvermoser with a cross-section of
any suitable shape, including trapezoidal, since such shape would provide a
secure and immovable attachment.” Final Act. 8 (citing Quitschau, col. 3,
lines 1–5).
Appellant argues “Quitschau et al. discloses a groove 20 that has a
square and conical cross section as clearly shown in Figures 2 and 3.”
Appeal 2021-004152
Application 15/898,614

26
Appeal Br. 29. According to Appellant, “there is no teaching and no
suggestion in Quitschau et al. as to a groove that has a trapezoid shape in a
cross section of the groove.” Id.
Concerning claim 8, Appellant argues “there is no teaching and no
suggestion in Quitschau et al. as to a groove that has a bottom and, arranged
on both sides thereof, flanks, wherein an inclination of the flanks measures
approximately 60.” Appeal Br. 30.
A “trapezoid,” as recited in claim 7, “is a quadrilateral with at least
one pair of parallel sides.”5 Claim 8 does not use the word “trapezoid.” It
describes the groove as having a bottom and angled “flanks.” A groove with
a flat bottom and two angled flanks is not a trapezoid because it does not
have two parallel sides.
Figures 2 and 3 of Quitschau are reproduced below.

5 See https://elementarymath.edc.org/resources/shape-trapezoid/ (last
accessed Dec. 9, 2021).
Appeal 2021-004152
Application 15/898,614

27
Quitschau discloses that [c]ounterbore 12 has an undercut groove
formed therein in the cylindrical wall of the counterbore, with the groove
having chamfered sides.” Quitschau, 2:21–23. Quitschau also discloses that
tapered surface 40 expands the thickened end of the insert 30
radially outwardly, causing the wall of tubing 10 to bulge
outwardly locally into the chamfered area 18 of the groove 20.
Bulging of the tubing in the groove in the block retains the
tubing securely and seals the outer periphery thereof against the
inner diameter of the seal ring 22.
Quitschau, 2:58–64.
Here, we determine that Quitschau discloses the same shape as
disclosed, illustrated, and claimed in Appellant’s application, and used for
the same purpose, which is to securely connect two elements. Whether the
shape is properly termed a trapezoid under standard geometry definitions is
irrelevant to this determination. We agree with the Examiner that it would
have been obvious to make the groove structure in Salvermoser with a flat
bottom and angled flanks, as suggested in Quitschau because this would
provide a suitably secure connection of the components.
CONCLUSION
For the foregoing reasons, we affirm the Examiner’s rejection of
claims 1–5, 7–21.

Appeal 2021-004152
Application 15/898,614

28
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1, 2, 9–21 102 Salvermoser 1, 2, 9–21
3–5 103 Salvermoser 3–5
7, 8 103 Salvermoser,
Quitschau
7, 8
Overall
Outcome
1–5, 7–21

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED