Ex Parte Frimberger et al

Patent Trial and Appeal Board

Jun 26, 2013

11507125 (P.T.A.B. Jun. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ECKART FRIMBERGER and
VIKTOR JOSEF WIMMER
__________

Appeal 2012-003738
Application 11/507,125
Technology Center 3700
__________

Before TONI R. SCHEINER, DEMETRA J. MILLS , and ERICA A.
FRANKLIN, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
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STATEMENT OF CASE
1. An endoscope for mother-baby cholangioscopy comprising:
an endoscope shaft,
a working canal that runs in or on the shaft, the working canal having:
at least a first insertion opening, the first insertion opening
being connected flush with the endoscope shaft,
the first insertion opening being essentially in the center area of
the shaft at a distance of 60 to 70 cm from the distal end of the
endoscope, so that the first insertion opening lies outside the patient,
the first insertion opening located in an area of the shaft that is
configured as a rigid sleeve, said rigid sleeve being within the inner
circumference of the endoscope shaft, and
an outlet, the outlet opening distally on the endoscope head.

Cited References

Smith et al., US 2005/0245789 A1 Nov. 3, 2005
Duffy US 2005/0113803 A1 May 26, 2005
Bodicky et al., US 5,665,064 Sept. 9, 1997

Grounds of Rejection
Claims 1, 3-8, 10, 11 and 14 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Smith and Duffy.
Claims 15-19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Smith, Duffy and Bodicky.

FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Answer at pages 4-
13. The following facts are highlighted.

1. Figures 3 and 4 of the Specification are reproduced below.
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Figure 3 shows the shaft port is constructed from a canal segment 7
and the shaft segment 5 in such a way that … the canal segment
with it opening 27 is positioned on the inside of the shaft segment
5 in the area of the opening 25. For simple fastening, the canal
segment 7 can have a semicircular widening in cross-section on the
outer surface, in which threaded bore holes 35 are provided. When
assembled, these bore holes 35 are flush with bore holes 33 in the
shaft segment 5, so that the canal segment 7 can be fixed on the
shaft segment 5 by means of screws 31. In this way the opening 25
of the shaft segment 5 with its slopes 49 and 51 and the opening 7
of the canal segment 7 lead flush into one another. (Spec. 9.)

Figure 4B of the Specification shows the straight tubular-shaped
insertion support 40 leads from left above to right diagonally
below in a flat angle into the working canal 9 in the distal direction
(right side in the illustration), so that this support is braced by
slopes 49 and 51 connecting to one another on the short sides of
the lengthwise openings 25 and 27. (Spec. 10 [00038].)

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2. Fig. 2 of Smith is reproduced below.

Figure 2 of Smith shows breakout box 26 with working canal 32.

3. Duffy Fig. 2 is reproduced below.

Fig. 2.
As shown in FIG. 2, transition shaft 109 has exchange joint
202, which is an opening through the outer wall of transition shaft
109. Attached to an inner surface of transition shaft 109 around a
periphery of exchange joint 202 is a proximal end of guidewire
shaft 120. In this way, guidewire lumen 126 is accessible through
exchange joint 202. Further, this arrangement allows guidewire
106 to slide into and out of guidewire lumen 126 through exchange
joint 202. As seen here in exploded view, guidewire 106 passes
through distal shaft 118, transition shaft 109, and exchange joint
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202 and into clip 108, and further through catheter conversion
shaft 104. (Duffy 4, [0046].)

Discussion
Because both rejections turn on whether the primary combination of
Smith and Duffy is sufficient to support obviousness, we address both
rejections together.
ISSUE
The Examiner concludes that
it would have been obvious to one of ordinary skill in the
art at the time of the invention as a matter of design choice to
substitute the breakout box of Smith with the transition shaft of
Duffy as an alternate means of providing a port along the shaft
of an endoscope, thereby minimizing the length of the surgical
instruments since the port is located closer the distal end of the
endoscope than the conventional ports located on the handle of
the endoscope.

(Ans. 6.)

Appellants argue that
1. “Neither Smith nor Duffy are directed to solving the
problem solved by the presently claimed invention and a
combination of these references amounts to hindsight
reasoning which is improper.” (App. Br. 10.)

2. “Duffy teaches away from the presently claimed
invention because it discloses a catheter conversion shaft
to cover its opening. (App. Br. 14.) Combining Duffy
with Smith would render Duffy unsatisfactory for its
intended purpose because a combination would require
not having guide wire”. (Reply Br. 10.)

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3. “Since neither Smith nor Duffy identifies the problem that the
presently claimed invention is directed to solving such a
substitution would never have been made by a person of skill in
the art.” (App. Br. 15.)

4. “ Smith does not teach that a first insertion opening at a
distance of 60 to 70 cm from the distal end of the endoscope
and that the first insertion opening lies outside the patient.”
(App. Br. 17.)

The issue is: Does the cited prior support the Examiner’s obviousness
rejection?
PRINCIPLES OF LAW
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
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Under the correct obviousness analysis, “any need or problem known
in the field of endeavor at the time of invention and addressed by the patent
can provide a reason for combining the elements in the manner claimed.”
KSR, 550 U.S. at 420. Thus, for a prima facie case of obviousness to be
established, the references need not recognize the problem solved by
Appellants. In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996); In re
Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); Ex parte Obiaya, 227 USPQ
58, 60 (Bd. Pat. App. & Int. 1985) (“The fact that appellant has recognized
another advantage which would flow naturally from following the
suggestion of the prior art cannot be the basis for patentability when the
differences would otherwise be obvious.”)

ANALYSIS
We agree with the Examiner’s fact finding, statement of the rejection
and responses to Appellants’ arguments as set forth in the Answer. We find
that the Examiner has provided evidence to support a prima facie case of
obviousness. We provide the following discussion for emphasis only. The
Examiner states that
Smith and Duffy each provide an apparatus for allowing
an instrument to be inserted into the working channel of a
medical device along variable lengths of the insertion portion.
Specifically, the breakout box of Smith provides an entrance to
a working channel along a length of the endoscope shaft and the
transition shaft of Duffy provides an entrance to the working
channel of the insertion portion of a catheter.

(Ans. 14.)

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The Examiner further states that

since Smith and Duffy are geared toward providing an
entrance to the working channel of a medical device along an
insertion portion of the medical device, it would merely be a
matter of design choice to substitute the breakout box structure
of Smith with the flush channel opening of Duffy. The working
channel entrance of Duffy provides the added benefit that a
catheter conversion shaft is attachable over the channel entrance
for guiding medical instrument into the channel opening at
predetermined angles.

(Ans. 16.)

We find that these statements by the Examiner provide a reason why
one of ordinary skill in the art would have substituted the working channel
entrance of Duffy for that of Smith. Thus, we find that the Examiner has
established that the combination of the cited references supports a prima
facie case of obviousness.
“[W]hen a prima facie case is made, the burden shifts to the applicant
to come forward with evidence and/or argument supporting patentability.”
In re Glaug, 283 F.3d 1335, 1338 (Fed. Cir. 2002). Rebuttal evidence is
“merely a showing of facts supporting the opposite conclusion.” In re
Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984).
In rebuttal, Appellants argue that neither Smith nor Duffy are directed
to solving the problem solved by the presently claimed invention and a
combination of these references amounts to hindsight reasoning which is
improper. (App. Br. 10.) We are not persuaded by Appellants’ arguments.
As discussed above, we find that the Examiner has provided a reason why
one of ordinary skill in the art would have substituted the working channel
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entrance of Duffy for that of Smith. The cited references do not need to
present motivation to solve the same problem as the claimed invention. In
re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996). Furthermore, we do not
find Omeprazole Pat. Lit., 536 F.3d 1361 (Fed. Cir. 2008), to be controlling
here.
In Omeprazole, the problem of degradation of omeprazole by
interaction with an enteric coating had not been recognized in the prior art.
Therefore, a person of skill in the art would have had no reason to include an
additional subcoating in an omeprazole pill formulation (further, doing so
would add cost and complexity), even though the addition of a subcoating
was within the skill of a person of ordinary skill in the art. (Omeprazole Pat.
Lit., 536 F.3d at 1381; App. Br. 7.) In the present case, both Smith and
Duffy are geared toward providing an entrance to the working channel of a
medical device along an insertion portion of the medical device, and thus
solve the same problem in alternative ways.
Appellants argue that Duffy teaches away from the presently claimed
invention because it discloses attaching a catheter conversion shaft to cover
its opening (App. Br. 14) and that combining Duffy with Smith would
render Duffy unsatisfactory for its intended purpose because such a
combination would require not having guide wire (Reply Br. 10). Again we
are not persuaded.
Appellants claim 1 includes the transitional phrase “comprising”
which does not preclude the inclusion of additional elements such as a
catheter conversion shaft. Furthermore, dependent claim 7 includes such a
insertion support/catheter conversion shaft. Moreover, Appellants claims do
not exclude a guidewire or limit the first insertion opening to surgical
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instruments. If a prior art structure is capable of performing the intended use
as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber,
128 F.3d 1473, 1477 (Fed. Cir. 1997). In this case the structure of Smith
combined with Duffy is capable of performing the claimed intended use.
Smith teaches that it is well known to use an endoscope for the early
detection and treatment of disease of internal structures such as the
alimentary and excretory canals and airways, e.g., the colon, esophagus,
stomach, urethra, bladder, ureter, kidney, lungs, bronchi, uterus and other
organ systems. (Smith 1, [0003].) Many of these structures are at or near
the location of the gallbladder and pancreas, as claimed. Appellant provides
no evidence that the prior art endoscopes would be unable to treat the
claimed locations.
Appellants argue that Smith does not teach a first insertion opening at
a distance of 60 to 70 cm from the distal end of the endoscope and that the
first insertion opening lies outside the patient.
Smith teaches that the location of the working channel lumen is a
result effective variable. More particularly, Smith teaches that, “the
entrance to the working channel lumen may be positioned further towards
the proximal end of the endoscope or the endoscope may include more than
one working channel having entrances located at different positions along
the endoscope.” (Smith 4, [0069].) Thus, one of ordinary skill in the art
would reasonably have adjusted the a first insertion opening distance to 60
to 70 cm from the distal end of the endoscope, depending upon the required
position for the procedure.
Additional arguments of Appellants are addressed fully in the Answer.
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We find that Appellants have failed to rebut the prima facie case of
the Examiner by a preponderance of the evidence, and the obviousness
rejections are affirmed for the reasons of record.

CONCLUSION OF LAW
The cited references support the Examiner’s obviousness rejections.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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