Ex Parte Matsuo

Patent Trial and Appeal Board

Feb 25, 2016

11884340 (P.T.A.B. Feb. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111884,340 08/14/2007
23389 7590 02/29/2016
SCULLY SCOTT MURPHY & PRESSER, PC
400 GARDEN CITY PLAZA
SUITE 300
GARDEN CITY, NY 11530
FIRST NAMED INVENTOR
Shigeki Matsuo
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
21514 3328
EXAMINER
HENDERSON, RY ANN
ART UNIT PAPER NUMBER
3779
NOTIFICATION DATE DELIVERY MODE
02/29/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
Docket@SSMP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHIGEKI MATSUO
Appeal2013-008284
Application 11/884,340
Technology Center 3700
Before NEALE. ABRAMS, THOMAS F. SMEGAL, and
LISA M. GUIJT, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Shigeki Matsuo (Appellant) seeks our review under 35 U.S.C. § 134
from the Examiner's decision rejecting claims 13, 15, 16, and 26. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
Appeal2013-008284
Application 11/884,340
THE INVENTION
The claimed invention is directed to an endoscope. Claim 13,
reproduced below, is illustrative of the subject matter on appeal.
13. An endoscope including an insertion portion which
exhibits flexibility to be inserted into a body cavity, the
endoscope comprising:
a bending portion formed at a distal end side which is
configured to be maximally bent with a first curvature radius and
to be bendable according to a bending operation by an operator,
the bending portion being provided inside thereof a plurality of
annular bending pieces which are rotatably connected in series
by pivots, peripheral edges of opposite surfaces of adjacent ones
of the bending pieces serving as abutment portions to abut to
each other to regulate the curvature radius at which the bending
portion is maximally bent;
a first flexible tube portion connected in series at a
proximal end side of the bending portion, which is maximally
bendable with a second curvature radius larger than the first
curvature radius, and which is bent when applied with an external
force but is not bendable according to a bending operation by an
operator, the first flexible tube portion being maximally bent by
being pushed against an inner wall of the body cavity, the first
flexible tube portion being provided inside thereof a plurality of
curvature regulation pieces rotatably connected in series by
pivots, peripheral edges of opposite surfaces of adjacent ones of
the curvature regulation pieces serving as abutment portions to
abut to each other to regulate the curvature radius at which the
first flexible tube is maximally bent; and
a second flexible tube portion connected in series at a
proximal end side of the first flexible tube portion, the second
flexible tube portion comprising a helical tube, a braid covering
an outer circumference of the helical tube, and an outer coat resin
covering the braid, the second flexible tube portion having a
flexural rigidity larger than a flexural rigidity of the first flexible
tube portion.
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Appeal2013-008284
Application 11/884,340
THE PRIOR ART
The Examiner relied upon the following as evidence of
unpatentability:
Ouchi
Barry
Yokoi
us 4,351,323
US 2004/0044270 Al
JA 2002-330924
THE REJECTION
Sept. 28, 1982
Mar. 4, 2004
Nov. 19, 2002
Claims 13, 15, 16, and 26 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ouchi, Barry, and Y okoi.
OPINION
The Examiner finds that Ouchi discloses all of the subject matter
recited in independent claim 13, except that:
Ouchi does not expressly teach []the first flexible tube being
maximally bendable with a second curvature radius larger than
the first curvature radius and fails to teach of the second flexible
tube portion comprising a helical tube, a braid covering an outer
circumference of the helical tube, and an outer coat resin
covering the braid.
Final Act. 4.
However, it is the Examiner's view that Barry discloses an endoscope
having three flexible curved segments, and teaches that a segment can have a
radius of curvature that is larger than that of an adjacent segment. Id. at 4--5.
The Examiner then concludes:
Therefore, the endoscope of Ouchi can be provided with an
actively bending section having a first radius of curvature and a
passively bending section having a second radius of curvature
larger than the first radius of curvature enabling the endoscope
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Appeal2013-008284
Application 11/884,340
of Ouchi to better conform to the bending on a body cavity to
ease the insertion of the endoscope through the body cavity.
It would have been obvious to one of ordinary skill in the
art at the time of the invention to provide the apparatus of Ouchi
with the varying radius of curvature of Barry thereby allowing
the first flexible tube portion of Ouchi to have a larger radius of
curvature than the bending portion for allowing different angles
of manipulation with the endoscope shaft.
Id. at 5 (emphasis added).
Appellant takes issue with the analysis and conclusions presented in
the Final Action, pointing out that
[t]he endoscope flexible tube of claim 13 includes the feature of
the curvature radius of the first flexible tube portion [ 13] in a
maximum bent state is larger than the curvature radius of the
bending portion [12] in a maximum bent state. Such feature
results in advantages, not disclosed or suggested by the prior art.
Namely, when the bending portion [12] is bent to the limit by an
external [operator] force, a bending shape is formed wherein the
radius becomes gradually larger from the bending portion to the
second flexible tube portion [13].
Br. 6-7 (emphasis added).
Appellant goes on to explain that the Barry endoscope is configured to
be applied to a duct that has a small degree of rigidity and therefore is easily
deformed, and in order to prevent deformation of the duct when the scope is
inserted, the Barry scope includes a bending portion at a distal end portion
which actively bends having two bending curvatures so as to actively match
the shape of the distal end portion with the shape of the duct. Id. at 7. In
contrast, Appellant asserts, the endoscope according to claim 13 is to be
applied to a duct with a high degree of rigidity, and is configured such that
the flexible tube portion that passively bends has a first flexible tube portion
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Appeal2013-008284
Application 11/884,340
13 having a larger bending curvature than the bending portion 12, so that
portion 13 is passively bent by contact with the inner wall of the duct with
high rigidity when the endoscope is inserted into the duct but "is prevented
from being locally largely bent when it abuts on the inner wall." See id. at
7-8.
In response to Appellant's arguments, the Examiner further explains:
Applicant also argues that Barry does not teach [] a second
flexible tube portion having a larger flexural rigidity than the first
flexible tube portion. . . . Barry is not being used to provide a
teaching of a second flexible tube portion having a larger flexural
rigidity than the first flexible tube portion, but instead Ouchi and
Yokoi are used to teach this feature. Specifically, in Col. 3, Line
63 - Col. 4, Line 11 Ouchi provides a teaching that the flexible
tube (4) has a small amount of flexibility and the first flexible
tube portion (7) is not stiff but quite bendable indicating that the
second flexible tube portion has a larger flexural rigidity than the
first flexible tube portion. Furthermore, Y okoi is used to teach
of the structure of the second flexible tube portion and further
teaches of a hardness varying mechanism (24) for increasing the
rigidity of the second flexible tube portion.
Ans. 12.
We agree with the Appellant's reasoning that the Examiner's rejection
is in error. As the Examiner admits on page 4 of the Final Action, there is
no express teaching in Ouchi that the first flexible tube portion 7 of the
endoscope is "maximally bendable" to a curvature radius that is larger than
the curvature radius of bending portion 2. This deficiency is not cured by
Barry or Y okoi. The extent of Barry's teaching with regard to the radii of
curvature of various portions of an endoscope is that they can be variable
(see, for example, paras. 5 and 37). Nor is it cured by Yokoi, which has
been cited for teaching that an endoscope can consist of a helical coil
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Appeal2013-008284
Application 11/884,340
covered by a metal braid and a watertight tube, and that its segments can
vary in stiffness. Final Act. 5---6. Furthermore, to the extent that the
Examiner seeks to justify the conclusion of obviousness by relating stiffness
to bendability, absent evidence or persuasive explanation, it is our view that
the stiffness of a portion is not, in and of itself, an indication of how far the
portion can be bent.
A prima facie case of obviousness therefore has not been established
with regard to the subject matter recited in independent claim 13, and the
rejection of this claim, and dependent claims 15, 16, and 26, is not sustained.
DECISION
The rejection is not sustained.
The decision of the Examiner is reversed.
REVERSED
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