Ex Parte IRIE

Patent Trial and Appeal Board

Apr 7, 2015

13768405 (P.T.A.B. Apr. 7, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KEI IRIE
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Appeal 2015-002711
Application 13/768,405
Technology Center 3700
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Before JENNIFER D. BAHR, MICHAEL L. HOELTER, and
THOMAS F. SMEGAL, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1‒9.1 App. Br. 3‒4. We have jurisdiction under
35 U.S.C. § 6(b). We REVERSE.

1 On page 2 of the Appeal Brief, Appellant incorrectly identifies claims 1
and 5‒23 as being finally rejected in the Office Action dated July 3, 2013.
In reality, claims 1‒9 have been finally rejected in the Office Action dated
February 11, 2014. While Appellant subsequently (and correctly) identifies
claims 1‒9 as the claims on appeal in the Appeal Brief (see App. Br. 3‒4),
Appellant continues to (incorrectly) state the date of the Final Office Action
as July 3, 2013 (see App. Br. 4; Reply Br. 2).
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THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to an ultrasound probe provided
with an ultrasound transmission/reception portion having an ultrasound
transmitting/receiving surface configured to transmit and receive ultrasound
and a cable having a distal end electrically connected to the ultrasound
transmission/reception portion.” Spec. 1.2 Sole independent claim 1,
reproduced below, is illustrative of the claims on appeal:
1. An ultrasound probe comprising:
an ultrasound transmission/reception portion having an
ultrasound transmission/reception surface for transmitting and
receiving ultrasound;
a cable having a distal end electrically connected to the
ultrasound transmission/reception portion;
a housing configured to hold the ultrasound
transmission/reception portion such that the ultrasound
transmission/reception surface is exposed;
a hole portion provided to the housing and configured to
lead out the cable from inside of the housing;
an insulation pipe through which the cable is inserted, the
insulation pipe having a distal end side fixed to the hole portion
in a state of contacting an inner circumference of the hole
portion, and a proximal end side exposed outside the housing;
an insulation tube configured to cover an outer
circumference of an exposed region of the insulation pipe
which is exposed from the hole portion and an outer
circumference of the cable led out from a proximal end of the
insulation pipe;
an adhesive disposing area located from a distal end of
the insulation tube for a predetermined distance between the
outer circumference of the exposed region of the insulation pipe
and an inner circumference of a distal end side region of the
insulation tube covering the outer circumference of the exposed
region;

2 Appellant’s Specification does not provide line or paragraph numbering
and, accordingly, reference will only be made to the page number.
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an adhesive permeation preventing area located between
the outer circumference of the exposed region of the insulation
pipe and the inner circumference of the distal end side region of
the insulation tube covering the outer circumference of the
exposed region, at least a part of the adhesive permeation
preventing area being located on a proximal end side with
respect to the adhesive arranging area;
an adhesive located in the adhesive disposing area and
configured to adhere the insulation pipe and the insulation tube
to each other; and
a liquid dripping prevention portion disposed in the
adhesive permeation preventing area between the outer
circumference of the exposed region of the insulation pipe and
the inner circumference of the distal end side region of the
insulation tube, the liquid dripping prevention portion being
configured to prevent the adhesive from flowing out from the
proximal end of the insulation pipe and contacting the cable.
REFERENCES RELIED ON BY THE EXAMINER
Stobie US 4,815,471 Mar. 28, 1989
Sakamoto US 6,017,311 Jan 25, 2000
Imahashi US 2008/0119738 A1 May 22, 2008

THE REJECTIONS ON APPEAL
Claims 1 and 6‒9 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Imahashi and Sakamoto. Final Act. 2.
Claims 2‒5 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Imahashi, Sakamoto, and Stobie. Final Act. 6.
ANALYSIS
The Examiner primarily relies on Imahashi for disclosing the
limitations of claim 1 but relies on the teachings of Sakamoto for disclosing
the use of an adhesive as well as disclosing a liquid dripping prevention
portion arranged and configured as claimed. Final Act. 3‒4. There is no
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dispute that Sakamoto describes a “sheathing tube 15” that is “fitted on the
rear joint portion 11b,” nor is there any dispute that the two are bonded “by
the use of an adhesive.” Sakamoto 6:49‒52. Sakamoto also states that
“outer tube 15 is forcibly fitted over and beyond the annular protuberance
26.” Sakamoto 8:33‒37; see also Sakamoto Figs. 4, 6. For clarity, the
Examiner correlates Sakamoto’s protuberance 26 with the claimed liquid
dripping prevention portion. Final Act. 4. Further, Sakamoto’s
protuberance 26 is located in a mid region of rear joint portion 11b with tube
15 fitted over and extending on both sides of this protuberance. See
Sakamoto Fig. 6.
The main issue before us is the extent to which adhesive is applied to
rear joint portion 11b in Sakamoto. The location of the adhesive along
Sakamoto’s 11b is critical in that claim 1 recites both (a) “an adhesive
disposing area” (where the adhesive is located) which is located a
predetermined distance from the distal end of the tube and also (b) “an
adhesive permeation preventing area” (where the liquid dripping prevention
portion is located), a part of which is “located on a proximal end side with
respect to the adhesive arranging area.”3 While claim 1 recites a specific
location where the adhesive and the “preventing area” are to be located,
Sakamoto is not so specific. Sakamoto states that “the fore end of the outer
sheathing tube 15 is fitted on the rear joint portion 11b of the joint member
11 over a suitable length and bonded to the latter by the use of an adhesive.”

3 Both the Examiner and Appellant overlook the fact that there is no
antecedent basis for “the adhesive arranging area.” Instead, both appear to
identify this term as meaning the aforesaid “adhesive disposing area.” Final
Act. 4; App. Br. 5. For purposes of this rejection under § 103, we do the
same.
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Sakamoto 6:49‒52 (emphasis added). Hence, while Sakamoto clearly
describes the use of an adhesive, Sakamoto is not specific as to that part of
11b to which the adhesive is applied, and thus, it is not clear whether
Sakamoto discloses the specific location for the claimed adhesive and also
the “preventing area” containing the “liquid dripping prevention portion.”4
Appellant argues that “it is clear that ‘a suitable length’ is an entire
length of the joint portion 11b” (App. Br. 8) with the implication being that
Sakamoto’s adhesive is on both sides of Sakamoto’s corresponding liquid
dripping prevention portion 26, this being contrary to the limitations of
claim 1. See also Reply Br. 3. The Examiner replies that “[A]ppellant
appears to speculate and interpret the ‘suitable length’ as ‘entire length.’”
Ans. 2. However, the Examiner then finds that “suitable length” is a
reference to the “longer side,” i.e., the right side, of bump or protuberance
26 as illustrated in the Examiner’s annotation of Sakamoto Figure 6. 5 Ans.
4. The Examiner and Appellant also each discuss whether Sakamoto’s
protuberance 26 can act as a dam in order to block any adhesive flow. Ans.
3, 5; App. Br. 10‒11; Reply Br. 3.

4 Claim 1 further recites that “a liquid dripping prevention portion [is]
disposed in the adhesive permeation preventing area” with this “liquid
dripping prevention portion being configured to prevent the adhesive from
flowing out from the proximal end of the insulation pipe and contacting the
cable.” Hence, we understand this “liquid dripping prevention portion” acts
as a stop to contain the adhesive.
5 The Examiner also finds that “practically no adhesive is needed on the
short [left] side” (Ans. 4) and reiterates that “no additional adhesive is
needed on the short side of the bump” (Ans. 5). It seems the Examiner is
indicating that adhesive can be found on both sides, just that “practically no
adhesive” or “no additional adhesive” is needed on the shorter, left side of
protuberance 26.
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In short, what is known for certain from Sakamoto is that tube 15 is
fitted on item 11b “over a suitable length” and also that tube 15 is “bonded
to the latter [i.e., 11b] by the use of an adhesive.” Sakamoto 6:49‒52. All
statements premised on the exact location along 11b where the adhesive is
applied, and specifically which side of protuberance 26 the adhesive can be
found, are merely speculative because Sakamoto is silent in this regard
(furthermore, Sakamoto does not illustrate any adhesive in any figure).
In such a situation, we are instructed by the predecessor to our
reviewing court that
The Patent Office has the initial duty of supplying the factual
basis for its rejection. It may not, because it may doubt that the
invention is patentable, resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies
in its factual basis. To the extent the Patent Office rulings are
so supported, there is no basis for resolving doubts against their
correctness. Likewise, we may not resolve doubts in favor of the
Patent Office determination when there are deficiencies in the
record as to the necessary factual bases supporting its legal
conclusion of obviousness.
In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (emphasis added).
As indicated supra, Sakamoto does not provide any clear indication as
to which side of protuberance 26 such adhesive can be found (or whether it
can be found on both sides). Appellant presents arguments supporting one
premise as to where the adhesive is located and, conversely, the Examiner
reasons that Sakamoto’s protuberance 26 is the claimed adhesive stop that is
not only located as claimed but also is “configured to prevent the adhesive
from flowing out from the proximal end of the insulation pipe and
contacting the cable.” See Briefs and Answer generally. Accordingly, in
view of the instructions provided by Warner that the Patent Office “has the
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initial duty” of providing the factual basis for its rejection, we reverse the
Examiner’s rejection of claim 1 because such rejection must involve
speculation, unfounded assumptions and/or hindsight reconstruction. This is
also consistent with a more recent U.S. Supreme Court case providing
instructions that for an obviousness rejection “there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
In the present matter, which is lacking in a rational underpinning as to
how or why a person skilled in the art would have understood Sakamoto to
be disclosing a location of the adhesive on only one side of protuberance 26,
and not on another or both sides, we reverse the Examiner’s rejection of
independent claim 1. For similar reasons we likewise reverse the
Examiner’s rejections of dependent claims 2‒9.
DECISION
The Examiner’s rejections of claims 1‒9 are reversed.

REVERSED

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