Ex Parte Hirose

Board of Patent Appeals and Interferences

Jul 20, 2010

10860762 (B.P.A.I. Jul. 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.
10/860,762 06/03/2004 Kenji Hirose P/3541-62 2483
2352 7590 07/20/2010
OSTROLENK FABER GERB & SOFFEN
1180 AVENUE OF THE AMERICAS
NEW YORK, NY 100368403
EXAMINER
KASZTEJNA, MATTHEW JOHN
ART UNIT PAPER NUMBER
3739
MAIL DATE DELIVERY MODE
07/20/2010 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 KENJI HIROSE
____________________

Appeal 2009-011298
Application 10/860,762
Technology Center 3700
____________________

Before: WILLIAM F. PATE III, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

PATE III, 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 2009-011298
Application 10/860,762
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
2, 13, 38-45, and 55-58. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to an observation system. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. An observation system comprising:
an observation device including an optical objective
system for observation of an object;
an image pickup device which picks up an optical image
incident upon the optical objective system of the observation
device;
a display device which is electrically connected to the
image pickup device and which displays the optical image
picked up by the image pickup device; and
at least one holding mechanism including:
a moving mechanism which includes a first moving
mechanism which movably holds the observation device and a
second moving mechanism which movably holds the display
device, the moving mechanism being effective to move one of
the observation device and the display device in conjunction
with movement of the other device; and
a switching mechanism capable of switching the
observation device and the display device to a state in which the
devices are movable by the moving mechanism and a state in
which the devices are fixable in positions moved by the moving
mechanism.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Yoon
Shimmura
US 6,419,626 B1
US 6,514,239 B2
Jul. 16, 2002
Feb. 4, 2003
Appeal 2009-011298
Application 10/860,762
3
REJECTIONS
Claims 1, 2, 13, 38-452, and 55-58 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Shimmura and Yoon. Ans. 4.

OPINION
The Examiner contends that “[i]t would have been obvious to one of
ordinary skill in the art at the time the invention was made to use the
endoscopic instrument of Yoon in place of the optical microscope of
Shimmura et al.” Ans. 4-5. The Examiner contends that doing so would
result in a device wherein “the display device 90 [of Yoon] would move in
conjunction with observation device 50 [of Yoon] when moved by the
moving mechanism 11 of Shimmura et al. and thus meet the limitations of
the recited claims.” Ans. 5. We note that, as clarified on page 6 of the
Answer, and understood by Appellant, it is Shimmura’s endoscope 12, held
by holding section 13, which the Examiner proposed replacing with Yoon’s
endoscopic instrument 10, and not Shimmura’s “microscope” 33. The
Examiner admits that Shimmura fails to disclose a second moving
mechanism and reads Yoon’s electrical connector 96 and flexible stalk 92
holding display 90 as the “second moving mechanism.” Ans. 6.
In Yoon, the display 90 is mounted via electrical connector 96 and
stalk 92 to the housing 18 which includes scissor type handles 20, 22. Col. 5,
ll. 35-38. Barrel distal end 15, which carries the image sensor 50, is also
carried by housing 18. Col. 5, ll. 27-35; col. 6, ll. 6-18. At best, Yoon
teaches mounting the display on a hand-held endoscopic device.

2 Claim 38 should apparently have been included in the rejection statement.
Cf. Ans 3 with Ans. 5; App. Br. 4.

Appeal 2009-011298
Application 10/860,762
4
The Examiner has failed to articulate a reason with rational
underpinnings for mounting the hand-held endoscope on the linkage
mechanism of Shimmura. Since Yoon teaches mounting of the display
device on a hand-held endoscope with its attendant advantages of easy of
manipulation and simplicity, it is unclear what advantage such an easily-
moved and aimed device as Yoon would reap when mounted on the
Shimmura linkage. Furthermore, Yoon’s housing 18 connects the barrel
carrying the image sensor 50 and the stalk 92 carrying the display. This
housing, instrumental to the Examiner’s conclusion that the claimed subject
matter would have been obvious, would be rendered useless by
incorporating Yoon’s endoscope into Simmura’s linkage. Absent that
housing, Yoon’s display could be mounted at a variety of locations.
Accordingly, there is nothing in the prior art or in the understanding of one
of ordinary skill that would have rendered obvious the combination of a
moving mechanism including a first moving mechanism holding the
observation device and a second moving mechanism holding the display
device wherein the moving mechanism is effective to move one of either the
observation device and the display device in conjunction with movement of
the other device as required by independent claims 1 and 43. App. Br. 4-5.
Accordingly, we are constrained to reverse the Examiner’s rejection
of claims 1, 2, 13, 38-45, and 55-58 as being unpatentable over Shimmura
and Yoon.
For the above reasons, the Examiner’s rejection of claims 1, 2, 13, 38-
45, and 55-58 is reversed.

REVERSED

Appeal 2009-011298
Application 10/860,762
5

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