Ex Parte Hoeg et al

Patent Trial and Appeal Board

Feb 27, 2014

11336212 (P.T.A.B. Feb. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte HANS DAVID HOEG, JOHN C. TESAR,
NATHAN JON SCHARA, and ERIC L. HALE
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Appeal 2011-011778
Application 11/336,212
Technology Center 2600
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Before JOSEPH L. DIXON, JEFFREY S. SMITH, and
IRVIN E. BRANCH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–31. We have jurisdiction under 35 U.S.C.
§ 6(b). An oral hearing was conducted on February 18, 2014.
We affirm.
Illustrative Claim
Appellants’ invention relates to a viewing instrument having a
variable direction of view. Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A viewing instrument having a variable direction of
view, comprising:
a shaft having a distal end and a longitudinal axis;
a sensor mounted in the distal end of said shaft, said
sensor having an image plane substantially parallel to the
longitudinal axis of said shaft; and
a reflecting element located at the distal end of said shaft
that receives incoming light and redirects the light onto the
image plane of said sensor, wherein said element rotates about a
rotational axis substantially perpendicular to the longitudinal
axis of said shaft.
Prior Art
Doi
Nishioka
Takahashi
Kanamori
Nagaoka
Adler
Schara
Utsui
US 4,598,980
US 4,720,178
US 4,916,534
US 4,988,172
US 6,256,155 B1
US 2002/0068853 A1
US 6,648,817 B2
US 6,788,861 B1
Jul. 8, 1986
Jan. 19, 1988
Apr. 10, 1990
Jan. 29, 1991
Jul. 3, 2001
Jun. 6, 2002
Nov. 18, 2003
Sep. 7, 2004

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Rejections
Claims 1, 2, 20–22, 24, 25, and 28–31 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Adler and Schara. Ans. 4–7.
Claims 3, 4, 7, 8, 10, 13, 14, and 23 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Adler, Schara, and Doi. Ans. 8–11.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Adler, Schara, Doi, and Takahashi. Ans. 11.
Claims 6, 9, and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Adler, Schara, Doi, and Nagaoka. Ans. 11–13.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Adler, Schara, Doi, Nagaoka, and Kanamori. Ans. 13.
Claims 15–18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Adler, Schara, and Utsui. Ans. 13–15.
Claims 19, 26, and 27 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Adler, Schara, and Nishioka. Ans. 15–16.

CONTENTIONS AND ISSUE
Appellants argue all claims as a group. App. Br. 5–11. We choose
claim 1 as representative of all claims on appeal.
Appellants contend the Examiner erred because:
1) the references do not teach “a reflecting element located
at the distal end of said shaft that receives incoming light and redirects the
light onto the image plane of said sensor” (id. at 10–11 (emphases omitted));
2) “[t]he USPTO has not provided sufficient factual support
for why one of ordinary skill in the art would have desired such capability in
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the Adler device or why one would have been motivated to modify the Adler
device to achieve such a goal” (id. at 7; see also id. at 7–9);
3) “[t]here is no evidence that ‘increased viewing freedom
including backwards viewing capability’ or ‘an unlimited scanning range’
would have been considered by one of ordinary skill in the art as a desired
feature of the Adler device” and “it is most likely that the pivotable reflector
of Schara would not have worked in the device of Adler” (id. at 7);
4) “[t]here is simply no evidence of how or why one would
have implemented a structure such as Schara’s into the device of Adler
without fundamental changes to Adler’s basic structure to employ the
rotating prism of Schara and the mechanism for rotating it” (id. at 8);
5) “the USPTO’s rationale supporting its rejections actually
amounts to nothing more than piecing together the claimed invention from
various references using the Appellants’ disclosure as a roadmap, which is
improper” (id.);
6) “Appellants were the first to conceive of the distinct
advantages of combining the increased viewing ability afforded by variable
direction of view capability with the advantages achievable by using a shaft-
parallel image sensor in the distal end of the instrument, and to provide a
way of doing this” (id. at 9);
7) Schara teaches away (id. at 9–10);
8) “the design of the Adler device is such that the addition
of a pivotal reflector would not have improved the Adler device” (Reply Br.
2);
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9) “[o]ne of ordinary skill in the art would have recognized
that this modification would have significantly reduced—if not eliminated—
the utility of the variable volume transparent balloon 6 of Adler” (id.);
10)
a likely combination of Adler and Schara would have resulted
in a device with a view vector rotatable only in a plane
perpendicular to the axis of the catheter. . . . [and] would have
lacked at least the “end on” view vector and would have
required significant pivoting to capture images from locations
outside of the perpendicular viewing plane. Such pivoting
would be much more difficult that [sic] rotation of the catheter,
and extremely undesirable. These limitations, which would
have been recognized by those of ordinary skill in the art,
would have far outweighed any “design incentives or other
market forces” alleged to exist by the Examiner.
Id. at 3–4 (emphasis omitted); and
11) “[i]t is an inescapable conclusion that, if one of ordinary
skill in the art had incorporated the pivotable camera 98 of Schara into the
device of Adler . . . , he or she would not have obtained the claimed
invention” (id. at 4).
Appellants’ contentions raise the issue of whether the Examiner erred
in finding claim 1 obvious over Adler and Schara.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments in the Appeal Brief (“App. Br.” filed Feb. 22, 2011) and Reply
Brief (“Reply Br.” filed July 12, 2011). We refer to the Briefs and the
Answer (“Ans.” mailed May 12, 2011) for the respective positions of
Appellants and the Examiner.
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We are unpersuaded by Appellants’ contentions. We agree with the
Examiner and adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and (2) the reasons
set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Appeal Brief. See Ans. 4–18. We highlight and address
specific findings for emphasis as follows.
Appellants’ first contention is unpersuasive because the Examiner
cites Adler for the claimed reflecting element (Ans. 5 (citing Adler, Fig. 4A,
element 22)) and Schara for “wherein said element rotates about a rotational
axis substantially perpendicular to the longitudinal axis of said shaft” (id.
(citing Schara, Fig. 2B; col. 3, ll. 39–42)). To the extent Appellants argue
the Examiner erred because the references do not teach “the rotating
reflecting element can fold the optical path of the light onto the image sensor
without it having to be folded again and without the light having to be
transmitted a significant distance, which results in substantially increased
signal quality” (App. Br. 11), we are not persuaded because Appellants’
argument is not commensurate with the scope of the claim.
As to Appellants’ contentions 2–6 and 8–11, we are unpersuaded of
error. 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). If a technique has
been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill. KSR, 550 at 417. Thus, when considering obviousness of a
combination of known elements, the operative question is “whether the
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improvement is more than the predictable use of prior art elements according
to their established functions.” Id.
Here, the Examiner has shown all elements to exist in the prior art,
and Appellants have not presented sufficient argument or evidence to
persuade us that Appellants’ invention is more than the predictable use of
these elements or that combining them would have been beyond the skill of
an ordinarily skilled artisan.
Moreover, all features of the structure in a secondary reference need
not be bodily incorporated into the primary reference, but consideration
should be given to what the combined teachings, knowledge of one of
ordinary skill in the art, and the nature of the problem to be solved as a
whole would have suggested to those of ordinary skill in the art (see In re
Keller, 642 F.2d 413, 425 (CCPA 1981)). Further, the artisan is not
compelled to blindly follow the teaching of one prior art reference over the
other without the exercise of independent judgment (see Lear Siegler, Inc. v.
Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984)). Accordingly,
Appellants’ contentions are unpersuasive because they do not consider the
knowledge and independent judgment of the skilled artisan, they do not
consider what the nature of the problem would have suggested to the skilled
artisan.
We are unpersuaded by Appellants’ contention that Schara teaches
away (contention 7). Whether a reference teaches away from a claimed
invention is a question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir.
2005). “A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, . . . would be led in a direction divergent
from the path that was taken by the applicant.” In re Haruna, 249 F.3d
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1327, 1335 (Fed. Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich. Inc.,
192 F.3d 1353, 1360 (Fed. Cir. 1999)). “When a piece of prior art ‘suggests
that the line of development flowing from the reference’s disclosure is
unlikely to be productive of the result sought by the applicant’ the piece of
prior art is said to ‘teach away’ from the claimed invention.” Medichem,
S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (quoting In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). A prior art reference must be
considered in its entirety, i.e., as a whole, including portions that would lead
away from the claimed invention. W.L. Gore & Assoc., Inc. v. Garlock, Inc.,
721 F.2d 1540, 1550 (Fed. Cir. 1983). However, “[t]he prior art’s mere
disclosure of more than one alternative does not constitute a teaching away
from any of these alternatives because such disclosure does not criticize,
discredit, or otherwise discourage the solution claimed . . . .” In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004).
Here, Appellants argue Schara’s disclosure of an alternative
embodiment that “completely eliminates the use of a rotating reflecting
element and employs slip rings to alleviate possible difficulties associated
with the twisting of the cable 99” “would have motivated one of ordinary
skill in the art who desired a variable direction of view in the device of Adler
to simply mount the image sensor in a pivotable configuration, perpendicular
to the shaft of the endoscope.” App. Br. 10 (citing Shara, Fig. 8; col. 5, ll.
62–66). This does not persuade us of error, however, because, while Schara
discloses an alternative embodiment, it does not criticize, discredit, or
otherwise discourage the solution claimed.
Accordingly, Appellants’ have not persuaded us of error in the
Examiner’s rejection of claim 1 and the remaining claims argued therewith.
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CONCLUSIONS
On the record before us, we conclude that the Examiner has not erred
in rejecting claims 1–31 as obvious.

DECISION
For the above reasons, the Examiner’s rejection of claims 1–31 is
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)(iv).

AFFIRMED

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