13461966 (P.T.A.B. May. 22, 2017)

Ex Parte Buerk et al

Patent Trial and Appeal BoardMay 22, 2017

13461966 (P.T.A.B. May. 22, 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. 13/461,966 05/02/2012 Andre Buerk 02581-P1509A 1025 131672 7590 Whitmyer IP Group LLC 600 Summer Street 3rd Floor Stamford, CT 06901 05/22/2017 EXAMINER HENDERSON, RYAN N ART UNIT PAPER NUMBER 3779 MAIL DATE DELIVERY MODE 05/22/2017 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 and MICHAEL EGLE Appeal 2015-0013371 Application 13/461,9662 Technology Center 3700 Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and KEVIN W. CHERRY, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1—10. We have jurisdiction under 35 U.S.C. § 6(b). We held an oral hearing on May 16, 2017. We REVERSE. 1 Our decision references Appellants’ Specification (“Spec.,” filed July 18, 2012), Appeal Brief (“Appeal Br.,” filed July 28, 2014), and Reply Brief (“Reply Br.,” Nov. 5, 2014), as well as the Final Office Action (“Final Action,” mailed May 1, 2014) and Examiner’s Answer (“Answer,” mailed Sept. 11,2014). 2 According to Appellants, “Karl Storz GmbH & Co. KG” is the real party in interest. Appeal Br. 3. Appeal 2015-001337 Application 13/461,966 According to Appellants, their “invention relates to a drying agent arrangement for optical instruments, in particular for endoscopic instruments, having a hygroscopic substance installed in the instrument housing, such that the hygroscopic substance configured as individual moulded bodies is positioned in an intake receptacle that can be replaceably inserted in the instrument housing.” Spec. 11. Claim 1 is the only independent claim on appeal. Appeal Br., Claims App. We reproduce the claim, below, as illustrative of the claims on appeal. 1. A drying agent arrangement for optical instruments, having a hygroscopic substance installed inside an instrument housing of the optical instrument, such that the hygroscopic substance, configured as individual moulded bodies, is installed in an intake receptacle that can be replaceably inserted in the instrument housing, characterized in that the intake receptacle is configured as a double-walled sleeve, such that the two walls, forming an intake space for the moulded bodies of the hygroscopic substance, are distanced radially from one another and positioned so that the walls, closing the intake space at an axial end of the sleeve, are connected with one another at the end, and at the other axial end of the sleeve, releasing the intake space, are distanced radially from one another at the end. Id. REJECTION AND PRIOR ART The Examiner rejects claims 1—10 under 35 U.S.C. § 102(b) as anticipated by Hsu (US 2010/0174144 Al, pub. July 8, 2010). ANALYSIS Independent claim 1 recites, among other limitations, “the hygroscopic substance, configured as individual moulded bodies, is installed 2 Appeal 2015-001337 Application 13/461,966 in an intake receptacle that can be replaceably inserted in the instrument housing.” Appeal Br., Claims App. The Examiner finds that Hsu’s film 3, device body 6, and the device body’s slits 7 and 8 teach the claimed hygroscopic substance, instrument housing, and intake receptacle, respectively. See, e.g., Final Action 2—3; see also, e.g., Answer 2-4. We agree with Appellants, however, that “Hsu . . . discloses that a lens cover film 3 can be moved along the outside of the objective lens 2 of the endoscope body 1 with the lens cover film 3 being guided through longitudinal guide slits 7 and 8 arranged in the device body 6.” Appeal Br. 5 (citing Hsu 131, and Figs. 1, 2A, 3, 5). Thus, inasmuch as Hsu teaches that slits 7 and 8 are formed in device body 6, rather than teaching that the slits are somehow “replaceably inserted in” device body 6, the Examiner does not adequately support the finding that Hsu teaches a hygroscopic substance installed in an intake receptacle that is replaceably inserted into an instrument housing. See, e.g., Appeal Br. 5—6. Further, Hsu also teaches that “device body (6). . . is designed to fit over an endoscope.” Hsu 146 (italics added); see also, e.g., Appeal Br. 5. Thus, inasmuch as it is Hsu’s device body 6 that includes film 3, and we agree with Appellants that device body 6 does not fit in anything but rather fits on an endoscope, it does not appear that Hsu otherwise teaches an intake receptacle with a hygroscopic substance which is inserted in an instrument housing. See, e.g., Appeal Br. 5—6. Therefore, based on the foregoing, we do not sustain the rejection of claim 1, or its dependent claims 2—10. 3 Appeal 2015-001337 Application 13/461,966 DECISION We REVERSE the Examiner’s rejection of claims 1—10. REVERSED 4