Ex Parte Bender

Board of Patent Appeals and Interferences

Dec 13, 2010

11183481 (B.P.A.I. Dec. 13, 2010)

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.
11/183,481 07/18/2005 Claus Bender LECP:104US 7258
7590 12/13/2010
C. Paul Maliszewski
Simpson & Simpson, PLLC
5555 Main Street
Williamsville, NY 14221-5406
EXAMINER
CHAPEL, DEREK S
ART UNIT PAPER NUMBER
2872
MAIL DATE DELIVERY MODE
12/13/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CLAUS BENDER
____________________

Appeal 2009-009688
Application 11/183,481
Technology Center 2800
____________________

Before JOHN C. MARTIN, ALLEN R. MacDONALD and
THOMAS S. HAHN, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-009688
Application 11/183,481

2
STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
9, and 10. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim(s)
Exemplary independent claim 1 under appeal reads as follows:
Claim 1. A microscope (1) having a holding apparatus,
insertable reversibly into the microscope (1), wherein the
holding apparatus is arranged to hold at least one optical
component, wherein the holding apparatus is embodied as a
pivoting drawer (10) that is arranged pivotably in and out about
a pivot axis, wherein the pivoting drawer (10) always remains
in mechanical contact with the microscope (1) while the at least
one optical component is removed from the pivoting drawer
(10) or placed on the pivoting drawer (10).
Appellant’s Contentions
Appellant contends that the Examiner erred in rejecting claims 1, 9,
and 10, under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Schalz and Pfeifer, respectively German Patent Documents
DE 4404286 and DE 203 13 678 U1, because:
There is no teaching, suggestion, or motivation to expand the
capacity of the door [in Pheifer] to serve any function other
than providing interior access.
(Corrected App. Br. 6).

Issues on Appeal
Did the Examiner err in rejecting claims 1, 9, and 10 as being obvious
because either the alleged motivation is lacking or unworkable?

Appeal 2009-009688
Application 11/183,481

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ANALYSIS
Appeal Brief
We have reviewed the Examiners’ rejections in light of Appellant’s
Appeal Brief arguments that the Examiner has erred in the rejection as set
forth in the Final Rejection. We agree with Appellant’s conclusion.
Examiner’s Answer 2
In the Examiner’s Answer, the Examiner modifies the rationale in
support of the rejection to add standard pivoting doors as follows:
It is noted by the examiner that a drawer or cabinet, in many
instances, is just some sort of door with some form of storage
area either attached to the back of the door or located just
behind the door. The knowledge generally available to one of
ordinary skill in the art (e.g.[,] the examiner) is what led to the
rationale for the combination since, it is well known to hinge
the door, which is closing off a drawer or storage area (as
shown by Pfeifer), so that the door pivots to allow access to a
storage area. This is commonly seen in "Lazy Susan" style
rotating drawers and cabinets, such as those found in the
corners of kitchens, where the entire drawer pivots around an
axis, or in pantries or cabinets where the access door has
storage areas mounted on the back of the door. The examiner
sees no reason why this style of pivoting drawer would not
also be obvious in a microscope.
(Ans. 8).
Reply Brief
We have reviewed the Examiner’s new rationale in the Examiner’s
Answer in light of Appellant’s new arguments in the Reply Brief that the
Examiner has erred. Appellant argues:

2 Should there be further prosecution of this application, we recommend that
the Examiner consider the Jan. 3, 1933 patent of Weir (1,998,889) Projector
Apparatus having a “swinging drawer or pivoted portion 4, pivoted at 5”
(figure 4).
Appeal 2009-009688
Application 11/183,481

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Appellant respectfully submits that the Examiner's
observations regarding kitchen cabinets are not applicable to
inverse microscopes. Further, the Examiner's assumption that
the functionality of a Lazy Susan kitchen cabinet can be
transferred to the drawer taught by Schalz ignores the
functional and structural problems that would be associated
with an attempt to modify Schalz's inverse microscope to
include the hinged door suggested by the Examiner.
(Reply Br. 7).
Appellant goes on to argue:
[O]ne skilled in the art would not look to a kitchen cabinet and
the access door for Pfeiffer for motivation to perform a
modification of Schalz that would encounter the functional and
structural problems noted above. Hence, assuming arguendo
that Schalz can be modified as suggested by the Examiner, such
modification could only arise by the use of impermissible
hindsight by the Examiner.
(Reply Br. 7-8).
We disagree with Appellant’s conclusion. We concur with the
conclusion reached by the Examiner. First, the Examiner correctly points
out:
In response to applicant's argument that the examiner's
conclusion of obviousness is based upon improper hindsight
reasoning, it must be recognized that any judgment on
obviousness is in a sense necessarily a reconstruction based
upon hindsight reasoning. But so long as it takes into account
only knowledge which was within the level of ordinary skill at
the time the claimed invention was made, and does not include
knowledge gleaned only from the applicant's disclosure, such a
reconstruction is proper. See In re McLaughlin, 443 F.2d 1392,
170 USPQ 209 (CCPA 1971).
(Ans. 8-9).
Further, although Appellant argues that the Examiner's observations
regarding kitchen cabinets are not applicable to inverse microscopes (App.
Appeal 2009-009688
Application 11/183,481

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Br. 7), we disagree. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417
(2007) (“When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the
same field or a different one. If a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability.”). Also, Appellant
has provided no evidence on this record to support his assertion apart from
mere conclusory statements. It is well settled that mere lawyer’s arguments
and conclusory statements, which are unsupported by factual evidence, are
entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1, 9, and 10 as
being unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1, 9, and 10 are not patentable.

DECISION
The Examiner's rejections of claims 1, 9, and 10 are affirmed.
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)(v).

AFFIRMED
KIS

C. Paul Maliszewski
Simpson & Simpson, PLLC
5555 Main Street
Williamsville NY 14221-5406