Ex Parte Eino

Board of Patent Appeals and Interferences

Oct 20, 2010

10150945 (B.P.A.I. Oct. 20, 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.
10/150,945 05/21/2002 Teruo Eino I9780.0001 6166
32172 7590 10/21/2010
DICKSTEIN SHAPIRO LLP
1633 Broadway
NEW YORK, NY 10019
EXAMINER
VO, TUNG T
ART UNIT PAPER NUMBER
2483
MAIL DATE DELIVERY MODE
10/21/2010 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 TERUO EINO
_____________

Appeal 2009-05261
Application 10/150,945
Technology Center 2400
______________

Before ROBERT E. NAPPI, MARC S. HOFF, and KARL D. EASTHOM,
Administrative Patent Judges.

NAPPI, 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 2009-005261
Application 10/150,945

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 21.
We affirm-in-part.

INVENTION
The invention is directed to an endoscope which makes use of a
display that includes a region used for endoscope control. See Page 3
Appellant’s Specification. Claim 1 is reproduced below:
1. An endoscope system comprising:
an endoscope; and
an image display section that displays the image of a subject
captured by an image pick-up element provided in this endoscope,
wherein said endoscope comprises:
a connector for connecting a serial communication cable
detachably; and
a signal processing circuit that converts the image captured by
said image pick-up element to a signal capable of being transmitted
via said serial communication cable; and
wherein said image display section is a screen displayed on the
display section of a terminal device connected to said serial
communication cable; and
said screen comprises an image display region used for display
of an image captured by said image pick-up element and a display
region for directional motion control purposes whereby directional
motion control of said endoscope is performed.

REFERENCES
Sekiguchi US 5,482,029 Jan. 9, 1996
D’Alfonso US 5,896,166 Apr. 20, 1999
Hibner US 6,086,544 Jul. 11, 2000
Eino US 6,120,435 Sep. 19, 2000
Chang US 6,791,601 B1 Sep. 14, 2004
2

Appeal 2009-005261
Application 10/150,945

REJECTIONS AT ISSUE
The Examiner has rejected claims 1 through 13, and 16 through 21
under 35 U.S.C. § 102(e) as being anticipated by Eino. The Examiner’s
rejection is on pages 3 through 5 of the Answer.2
The Examiner has rejected claims 1 through 4, 7 through 10, 13, and
16 through 19 under 35 U.S.C. § 103(a) as being unpatentable over
Sekiguchi in view of D’Alfonso and Hibner. The Examiner’s rejection is on
pages 6 through 9 of the Answer.
The Examiner has rejected claims 5, 6, 11, 12, 20 and 21 under 35
U.S.C. § 103(a) as being unpatentable over Sekiguchi in view of D’Alfonso
and Chang. The Examiner’s rejection is on pages 9 and 10 of the Answer.
The Examiner has rejected claims 14 and 15 under 35 U.S.C. § 103(a)
as being unpatentable over Chang in view of Sekiguchi and Hibner. The
Examiner’s rejection is on pages 10 through 13 of the Answer.

ISSUES
Rejection based upon Eino.
Appellant argues on pages 9 through 13 of the Brief3 that the
Examiner’s rejection of claims 1 through 13, and 16 through 21 under 35
U.S.C. § 102(e) as being anticipated by Eino is in error.
Appellant’s contentions with respect to this rejection present us with
the issue: did the Examiner err in finding that Eino teaches a display region

2 Throughout this decision we refer to the Examiner’s Answer dated May 11,
2007.
3 Throughout this decision we refer to the Appeal Brief dated February 5,
2007 and Reply Brief dated July 3, 2007.
3

Appeal 2009-005261
Application 10/150,945

for directional motion control purposes whereby directional motion control
of the endoscope is performed?

Rejection based upon Sekiguchi in view of D’Alfonso and Hibner
Appellant argues on pages 13 through 17 of the Brief that the
Examiner’s rejection based upon the combination of Sekiguchi in view of
D’Alfonso and Hibner is in error.
Appellant’s contentions with respect to this rejection present us with
the issue: did the Examiner err in finding that the combination of Sekiguchi,
D’Alfonso, and Hibner teaches a display region for directional motion
control purposes whereby directional motion control of the endoscope is
performed?

Rejection based upon Chang in view of Sekiguchi and Hibner
Appellant argues on pages 17 and 18 of the Brief that the Examiner’s
rejection based upon the combination of Chang in view of Sekiguchi and
Hibner is in error.
Appellant’s contentions with respect to this rejection present us with
the issue: did the Examiner err in finding that the combination of Chang,
Sekiguchi, and Hibner teaches an input controlling the direction of motion of
the endoscope.

ANALYSIS
Rejection based upon Eino.
Claims 1 through 13 and 17 through 21
Appellant’s arguments have persuaded us that the Examiner erred in
finding that Eino teaches a display region for directional motion control
4

Appeal 2009-005261
Application 10/150,945

purposes whereby directional motion control of the endoscope is performed.
The Examiner has found that the zoom control (item 31 of Figure 3) in
Eino’s endoscope meets this limitation. Further, the Examiner finds that the
zoom control adjusts the lens of the endoscope and thereby control of the
endoscope. Answer 14. We disagree with the Examiner’s claim
interpretation?.
Claim 1 recites that the display includes a region for directional
motion control, where the directional motion control of the endoscope is
performed. Appellant’s Specification describes the directional motion
control as controlling the curve of the easily bent curved section of the
endoscope. See pages 6, 15, and 16 of Appellant’s Specification.
Independent claims 7, 14, and 17 include limitations which similarly recite
directional motion control of the endoscope.
We disagree with the Examiner’s claim interpretation that the zoom
function meets the claimed directional motion control. We do not find that
the zoom function controls the directional motion of the endoscope. The
zoom feature, item 31 of Figure 3, does not control the lens of the
endoscope. In another embodiment depicted in Figures 20 and 21, Eino
teaches that the magnification buttons control movement of the lens. Col 16,
ll. 36-53. However, this teaching is directed to controlling the position of a
lens and not the directional motion of the endoscope. Accordingly, we will
not sustain the Examiner’s rejection of claims 1 through 13, and 17 through
21 under 35 U.S.C. § 102(e).
Claim 16
We will however sustain the Examiner’s rejection of claim 16. Claim
16 does not recite a limitation directed to controlling the directional motion
5

Appeal 2009-005261
Application 10/150,945

of the endoscope. As such Appellant’s arguments directed to the rejection of
claim 16 under 35 U.S.C. § 102(e) are not convincing as they are not
commensurate in scope with the claim.

Rejection based upon Sekiguchi in view of D’Alfonso, and Hibner
Claims 1 through 4, 7 through 10, 13, and 17 through 19
Appellant’s arguments have persuaded us that the Examiner erred in
finding that the combination of Sekiguchi, D’Alfonso, and Hibner teaches a
display region for directional motion control purposes whereby directional
motion control of the endoscope is performed. The Examiner finds that
Sekiguchi’s disclosure of the patterns (a) through (e) of Figure 13 teach
controlling direction motion of the endoscope. Answer 16. We disagree
with this finding by the Examiner. As discussed above, the scope of
independent claims 1, 7, 14, and 17 includes controlling directional motion
of the endoscope. The patterns shown in Sekiguchi’s Figures are flexibility
patterns which identify the sections of endoscope pipe in which the
flexibility is to be adjusted. Col. 9, l. 49 - col. 10, l. 12. We do not find that
this teaching corresponds to controlling the directional motion of the
endoscope.
The Examiner also finds that Hibner’s Figure 15 display depicts
buttons which control the motion of the endoscope. We disagree with the
Examiner’s finding that the controls in Figure 15 of Hibner meet the claimed
directional motion control. As argued by Appellant on pages 16 and 17 of
the Brief, these controls provide for operation of a biopsy tip and do not
control the directional motion of the endoscope. Accordingly, we will not
sustain the Examiner’s rejection of claims 1 through 4, 7 through 10, 13, and
6

Appeal 2009-005261
Application 10/150,945

17 through 19 under 35 U.S.C. § 103(a) as being unpatentable over
Sekiguchi in view of D’Alfonso and Hibner.
Claim 16.
We will however sustain the Examiner’s rejection of claim 16. As
discussed above, claim 16 does not recite a limitation directed to controlling
the directional motion control of the endoscope. As such Appellant’s
arguments directed to the rejection of claim 16 under 35 U.S.C. § 103(a) are
not convincing as they are not commensurate in scope with the claim.

Rejection of claims 5, 6, 11, 12, 20, and 21
The Examiner’s rejection of dependent claims 5, 6, 11, 12, 20, and 21
rely upon the teachings of Sekiguchi in view of D’Alfonso to teach the
limitations of independent claims 1, 7, and 17. As discussed above we will
not sustain the Examiner’s rejection of independent claims 1, 7, and 17.
Accordingly, we will not sustain the Examiner’s rejection of claims 5, 6, 11,
12, 20, and 21 under 35 U.S.C. § 103(a) for the same reasons as discussed
above with respect to claims 1, 7, and 17.

Rejection based upon Chang in view of Sekiguchi, and Hibner
Appellant’s arguments have persuaded us that the Examiner erred in
finding that the combination Chang, Sekiguchi, and Hibner teaches an input
controlling the direction of motion of the endoscope. The Examiner’s
rejection relies upon the teachings of Sekiguchi and Hibner to teach the
control of the direction of the motion of the endoscope. Answer 12, 13, and
18. As discussed above with respect to claim 1 we disagree with the
Examiner’s findings that Sekiguchi and Hibner teach controlling the
7

Appeal 2009-005261
Application 10/150,945

direction of motion of the endoscope. Accordingly, we will not sustain the
Examiner’s rejection of claims 14 and 15 under 35 U.S.C. § 103(a) as being
unpatentable over Chang in view of Sekiguchi and Hibner.

CONCLUSION
Appellant has not persuaded us of error in the Examiner’s decision to
reject claim 16. However, Appellant’s arguments have persuaded us of error
in the Examiner’s decision rejecting claims 1 through 15 and 17 through 21.

ORDER
The decision of the Examiner to reject claims 1 through 21 is affirmed
in part.
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).

8

Appeal 2009-005261
Application 10/150,945

AFFIRMED-IN-PART

ELD
DICKSTEIN SHAPIRO LLP
1633 BROADWAY
NEW YORK, NY 10019
9