Ex Parte Ratnakar

Patent Trial and Appeal Board

Feb 22, 2013

10711859 (P.T.A.B. Feb. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte NITESH RATNAKAR
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Appeal 2011-002978
Application 10/711,859
Technology Center 3700
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Before: LINDA E. HORNER, SCOTT A. DANIELS, CARL M.
DeFRANCO, Administrative Patent Judges.

DANIELS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
3, 10, 12, 13, 15, 16, 43, 44, 54-57 and 61-74. Claims 1 and 54 are the
independent claims, and claims 2, 4-9, 11, 14, 17-42, 45-53, and 58-60 are
canceled. We have jurisdiction under 35 U.S.C. § 6(b).

THE INVENTION
The invention is directed to dual view endoscopes “that provide both
forward and rear view in a hollow body organ.” Spec. para. 2. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An endoscope comprising:
a shaft extending along a longitudinal axis, having a
distal end receivable in a hollow organ and a proximal end and
defining a hollow channel therethrough, the shaft including a
steering mechanism for moving the distal end of the shaft from
a first distal endoscope position to a second distal endoscope
position;
a first lens selectively positioned adjacent to the distal
end of the shaft for receiving a first image in a first direction,
the first direction generally being forward and parallel to the
longitudinal axis of the shaft and the first image generally being
a circumferential view of the hollow organ;
a catheter receivable in a hollow channel of the shaft for
extension and retraction therethrough, the catheter including a
catheter distal end, a proximal section and a bending section
interposed between the distal end and the proximal section,
wherein the bending section selectively permits retroflexion of
the distal end from a first position to a second position upon
extension of the distal end of the catheter from the hollow
channel; and
a second lens coupled to the distal end of the catheter, the
second lens selectively positionable with the distal end of the
shaft in the second position so as to receive a second image in a
second direction, the second direction being at a generally 180
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degree angle to the first direction and the second lens being
selectively independently advanced generally parallel to the
axis relative to the first lens.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kaiya
Yoon
Torii
US 5,178,130
US 6,066,090
US 6,482,149 B1
Jan. 12, 1993
May 23, 2000
Nov. 19, 2002

REJECTIONS
The Examiner made the following rejections:
Claim 1 stands rejected under 35 U.S.C. §112, second paragraph, as
being indefinite. Ans. 3.
Claims 1, 3, 10, 12, 13, 43, 44, 54-57, 61-63, and 66-74 stand rejected
under 35 U.S.C. §103(a) as being unpatentable over Kaiya and Torii. Ans.
4.
Claims 15, 16, 64 and 65 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Kaiya, Torii, and Yoon. Ans. 7.
Claims 1, 3, 10, 12, 13, 15, 16, 43, 44, 54-57, 61, 62, and 64-74 stand
rejected under 35 U.S.C. §103(a) as being unpatentable over Yoon. Ans. 8.

ANALYSIS
Claim 1 as indefinite under 35 U.S.C §112, second paragraph.
The Examiner found that the phrase “the second lens selectively
positionable with the distal end of the shaft in the second position”
(emphasis added) in claim 1, is confusing where the second lens was
previously recited in this clause as coupled to the catheter. Ans. 3. The
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Examiner suggested that the word “shaft” should properly be “catheter.” Id.
Appellant contends (at Issue (a))1 that the claim language is clear and
positively “recites the perspective of each lens relative to the shaft.” App.
Br. 9. Appellant explains that the claim language beginning with the
preposition “with” is a “prepositional phrase” and therefore may be moved
within a sentence in a variety of ways to properly convey the intended
meaning of the relative movement between the shaft and the second lens.
Reply Br. 9-10. Essentially, Appellant asserts that any repositioning, or
modification, of this prepositional phrase will not clarify the subject matter
any further, and “submits that different readers may be confused by any
[such] variants” and thus the present language satisfies the requirements of
35 U.S.C. §112, second paragraph. Reply Br. 10.
We agree with Appellant on one hand that “with the distal end of the
shaft in the second position” is a prepositional phrase. On the other hand,
the prepositional phrase confuses us as readers. It is not the position of the
prepositional phrase within the claim which creates ambiguity, but the
prepositional phrase itself. Observing claim 1, what is unclear in the phrase
more so than the preposition, is the object of the preposition, particularly
what “the second position” is modifying. The object of the preposition
includes the functionally recited state of “the second position” which has no
antecedent basis with “the shaft” but rather more so with regards to “the
second lens.” The second lens is coupled to the catheter which has a distal
end permitting retroflexion of the distal end (and hence the second lens) of
the catheter “from a first position to a second position.”

1 As a matter of consistency we note that Appellant has argued each of the
rejections as separate, but sometimes related issues, listing the issues as
“Issue (a), Issue (b)…Issue (m).” Where relevant, we reference Appellant’s
Issues for purposes of clarity and consistency.
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The primary purpose of the definiteness requirement is to ensure that
the claims are written in such a way that they give notice to the public of the
extent of the legal protection afforded by the patent, so that interested
members of the public, e.g., competitors of the patent owner, can determine
whether or not they infringe. All Dental Prodx, LLC v. Advantage Dental
Prods., Inc., 309 F.3d 774, 779-80 (Fed. Cir. 2002). Based on the lack of
antecedent basis for “the shaft in the second position,” and notwithstanding
the mechanics of the prepositional phrase, “the second position” is more
properly modifying “the second lens” and therefore the Examiner’s
suggestion that “the shaft” should be “the catheter” is, from a linguistic
perspective, more correct.
We acknowledge Appellant’s reluctance to change the preposition
“with,” as such a change may not convey the appropriate relative position
and relationships between the shaft, catheter and lens. According to
Appellant, the Examiner’s suggested amendments do not convey the
appropriate meaning of the claim, but Appellant has failed to provide any
amendments to clarify the claims and properly distinguish the structural and
functional relationships between the first and second lenses, and the
respective shaft and catheter elements. The Examiner here has the better
position, and accordingly, we sustain the rejection of claim 1 under 35
U.S.C. §112, second paragraph, as indefinite.

Claims 1, 3, 10, 12, 13, 43, 44, 54-57, 61-63, 66-74 as unpatentable over
Kaiya and Torii.
Appellant argues claims 1, 3, 12, 13, 43, 44, 54-57, 61-63, and 66-74
as a group (at Issues (f)-(m)), where claims 1 and 54 are the only
independent claims, and presents separate arguments as to dependent claim
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10. App. Br. 13-19. We initially select claim 1 as representative of the
group where claims 3, 12, 13, 43, 44, 54-57, 61-63, and 66-74 stand or fall
with claim 1. See 37 C.F.R. §41.37(c)(1)(vii) (2011).
The Examiner found that Kaiya discloses an endoscope including a
shaft (6a) having a first image lens (28a) and defining a hollow channel (16)
therethrough for receiving a catheter (2b) with a second image lens (28b).
Ans. 4. The Examiner found the catheter, and hence the second image lens,
was selectively positionable relative to the shaft so that the second image
lens could be aligned to provide a different image from the first lens. Id.
The Examiner interpreted the “curvable section” of Kaiya’s shaft (6a) and
catheter (2b) as the claimed steering mechanism for moving the distal end of
the shaft into a desired orientation. Id. Acknowledging that Kaiya “fails to
provide any particulars as to the curvable sections of the endoscope/
catheter” and that “the angle to which they can be flexed is not
ascertainable,” the Examiner determined that Torii teaches a flexible
endoscope and actuator mechanism capable of bending well over 180° from
the longitudinal axis, and that use of such a curvable endoscope was known
in the art. Ans. 5. The Examiner reasoned that adding such a known
curvable endoscope to the steerable shaft would be beneficial for “increasing
the view capability and providing the catheter (2b) the ability to be directed
at a target that would not be accessible to the shaft (6a).” Id.
Appellant submits a litany of arguments with respect to Kaiya and the
combination of Kaiya and Torii (at Issue(s) (f)-(m)). App. Br. 13-18.
Appellant points out that Kaiya discloses two videoscopes 2a, 2b, which
have the same forward view (Issue (f)), and view the same tissue in the
forward direction (Issue (g)). App. Br. 13-14. Appellant argues that Kaiya
is directed to the problem of sequentially synchronizing the timing of images
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taken by the two videoscopes 2a, 2b, across a filter, such as a filter color
wheel having red, green and blue filters as shown in Kaiya’s Figure 3, and is
specifically directed towards the problem of synchronizing the color wheels
and eliminating interference between different wavelengths of illuminating
light which emanate from the videoscopes 2a, 2b so that the images from
each endoscope are not compromised. App. Br. 14. Appellant asserts that
what is taught by Kaiya “can only be the case when, as specifically
illustrated in FIGS. 2 and 10 of Kaiya, the two videoscopes are imaging the
same tissue.” Id. A variety of case law is argued by Appellant (at Issue(s)
(h)-(j)) in support of the assertion that modifiying Kaiya with the teaching of
Torii would render the underlying device in Kaiya unsuitable for its intended
purpose. App. Br. 14-16. Appellant also disputes the Examiner’s finding in
Issue (k) that the inner endoscope or “son” videoscope 2b could be curved
sufficiently such that tissue different from tissue viewed by “parent”
videoscope 2a could be observed, and that “providing a different field of
view for the scope 2b runs against the teachings of Kaiya.” App. Br. 16-17.
Appellant additionally argues in Issue (l) that there is no mention of a
steering mechanism for retroflexing the inner “son” videoscope 2b relative
to the parent videoscope 2a and that such a steering mechanism would add
unnecessary complexity to Kaiya’s device. App. Br. 17-18. Appellant
separately argues (at Issue (m)) with respect to claim 10 that Kaiya does not
disclose an “active mechanism” for steering or curving the endoscope and
catheter and even if it could be inferred from the “curvable” aspect of Kaiya,
that Kaiya “would not require an active mechanism to steer both
endoscopes.” App. Br. 18.
Appellant’s position (at Issue (f)) that both videoscopes 2a, 2b in
Kaiya are forward looking is not without merit. It is described in Kaiya’s
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Specification that the son videoscope 2b is used as a “guide scope” while the
parent videoscope 2a more directly observes the surrounding tissue. “In
case the parent side video scope 2a is used as an endoscope of a
comparatively wide visual field angle for routine inspections, the son side
video scope 2b will be adapted to be used as an endoscope of a narrow
visual field angle for magnified observation.” Kaiya col. 7, ll. 49-61. While
this embodiment of Kaiya discloses both videoscopes looking forward and
within different fields-of-view (as illustrated in Kaiya’s Figure 2 in the
visual monitors 5a, 5b), what we cannot discern, and what Appellant does
not point out, is any evidence or technical reasoning that such a forward
view supports Appellant’s further assertion that Kaiya must look at the same
tissue in order to be used for its intended purpose.
In support of their explanation (at Issue (g)) that Kaiya teaches
viewing only the same tissue, Appellant contends (at Issue (h)) that the
Examiner's proposed modification of Kaiya would change its principle of
operation and would render Kaiya unsatisfactory for its intended purpose.
App. Br. 14-15. Appellant respectively relies on, In re Ratti, 270 F.2d 810
(CCPA 1959) and In re Gordon, 733 F.2d 900 (Fed. Cir. 1984), as legal
authority for this contention. Id. In essence, it is the position of Appellant
that modifying Kaiya’s device so that videoscope 2b views different tissue in
an opposite direction from videoscope 2a would change the device's
principle of operation and render it unsatisfactory for its intended purpose.
App. Br. 15. This position is not well taken.
Appellant’s dissection of the Examiner’s remarks in view of In re
Gordon at Issue (i) misses the mark. Appellant provides no technical reason
as to how the device’s principal of operation would be detrimentally altered,
nor any explanation as to why Kaiya’s device would be unsuitable for its
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purpose of viewing tissue if the two lenses looked at entirely different tissue.
While the proposed modification would result in a device that has additional
capabilities with the flexibility of videoscope 2b being capable of turning
180° to view tissue in an opposite direction from videoscope 2a, the
modified device still would operate according to the same principles as the
unmodified device. Specifically, whether modified or unmodified, the
illuminating states of the two field sequential type videoscopes 2a and 2b
will remain substantially synchronized with each other. In other words, even
assuming the son videoscope 2b was observing entirely different tissue in a
180° opposite direction relative to the parent videoscope 2a, the
synchronized illumination states of the videoscopes would still not interfere
with one another and neither image (as shown on respective monitors 5a, 5b)
would be compromised. Appellant has provided insufficient evidence or
technical reasoning that observation of different tissue by the videoscopes
would interfere with the synchronization of the illuminating states or in any
manner alter the quality of the imaging by either of the videoscopes 2a and
2b. Indeed, Kaiya’s videoscopes already look at different tissue, albeit in the
forward direction, where the son videoscope 2b has a narrow angle focus as
a guide scope, and the parent videoscope 2a has a wide angle focus, which
by its nature increases the field-of-view and observes other tissue not seen in
the narrow field-of-view in the son videoscope 2b. Kaiya col. 7, ll. 57-61.
Accordingly, the In re Ratti and In re Gordon decisions do not support the
contention under review.
Regarding the assertion (at Issue (j)) and the holding of In re Gordon
with respect to “inoperability for intended purpose” and its effects on the
Examiner’s statement and reasoning flowing from KSR Int'l Co. v. Teleflex
Inc., 550 U.S. 398, 419 (2007), for the reasons discussed supra, we are not
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persuaded as to the impermissibility of modifying Kaiya in the manner
proposed by the Examiner where such modification has not been shown to
affect the operability or suitability of intended use for Kaiya’s device.
Turning to Appellant’s arguments (at Issue (k)-(l)) that Kaiya does not
suggest the necessity or ability of the son endoscope 2b to curve, and that the
mere use of the term “curvable” in Kaiya does not anticipate a steerable
mechanism as required in the claim, we are also not persuaded of error in the
Examiner’s reasoning. Ans. 17-18. Curving and bending of endoscopes is
well known in the art, as are the mechanisms which accomplish such
curving. Appellant’s Specification in fact explains in the Background and
Prior Art that flexible endoscopes are maneuvered with cables attached to an
actuator. Spec. 1, para. 5. Moreover, although Appellant argues that Kaiya
“makes no mention of a steering mechanism or any other means for
retroflexing the inner endoscope 2b,” (App. Br. 17) claim 1 merely requires
“the shaft including a steering mechanism” (emphasis added) and while the
catheter has a bending section which “selectively permits retroflexion”
neither a steering mechanism nor an actuator for bending or flexing the
catheter is positively recited in claim 1. As stated by our reviewing court in
In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998), “the name of the
game is the claim.” It is well established that limitations not appearing in
the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344,
1348 (CCPA 1982).
Appellant presents separate arguments (at Issue (m)) asserting the
patentability of claim 10 because Kaiya does not specifically disclose an
actuator for bending. App. Br. 18-19. Appellant’s argument however
attacks Kaiya in isolation, whereas the Examiner's proposed combination is
predicated on a combination of the teachings of the two references. See In
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re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references”).
Besides the fact that such actuators are well known in the endoscope art for
bending and curving the endoscope as dictated by a medical procedure or
anatomical organ, the Examiner explained that “the teachings of Torii also
teach an actuator whose wires extend to the distal end of the catheter.” Ans.
5. Accordingly, the Examiner has provided an articulated reasoning with
rational underpinnings, and for the reasons discussed above regarding Issues
(h)-(m) we are not apprised of any error in the Examiner’s reasoning, and
thus we sustain the Examiner’s rejection of claims 1, 3, 10, 12, 13, 43, 44,
54-57, 61-63, and 66-74 as unpatentable over Kaiya and Torii.

Claims 15, 16, 64 and 65 as unpatentable over Kaiya, Torii and Yoon.
Dependent claims 15 and 16 include the further limitation of
“illumination bulbs disposed on the distal end of the catheter” and claims 64
and 65 recite “one or more illumination bulbs for illuminating an area
adjacent the second lens.” Yoon discloses that while illumination may be
transmitted from a source at a proximal end of the endoscope, “[i]n an
alternative embodiment, the lamp is situated proximate the distal end of the
endoscope branch.” Yoon col. 5, ll. 11-12. The Examiner reasoned that
“[o]ne would be motivated to use an illumination bulb (e.g., LED) at the
distal end to eliminate the need [for] optical fibers to extend through the
shaft, which fibers attenuate (degrade) light and are capable of breaking.”
Ans. 7. Appellant has provided no separate arguments as to the patentability
of these claims apart from the arguments raised for the patentability of the
independent claims from which they depend, and thus we are not apprised of
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any error in the Examiner’s reasoning and rationale supporting the
obviousness rejection. For this reason we also sustain the Examiner’s
rejections of claims 15, 16, 64, and 65 as unpatentable in view of Kaiya,
Torii, and Yoon.

Claims 1, 3, 10, 12, 13, 15, 16, 43, 44, 54-57, 61, 62, and 64-74 as
unpatentable over Yoon.
Our affirmance of the rejection of claims 1, 3, 10, 12, 13, 43, 44, 54-
57, 61-63, and 66-74 under § 103(a) as unpatentable over Kaiya and Torii
and of the rejection of claims 15, 16, 64, and 65 under § 103(a) as
unpatentable over Kaiya, Torii, and Yoon constitutes a general affirmance of
the decision of the Examiner on these claims. 37 C.F.R. § 41.50(a). Bearing
in mind that Appellant’s Issues (b)-(e) address the patentability of these
same claims over Yoon reference alone, we do not separately address the
rejections of claims 1, 3, 10, 12, 13, 15, 16, 43, 44, 54-57, 61, 62, and 64-74
under 35 U.S.C. § 103(a) as obvious in view of Yoon.

DECISION
For the above reasons, the Examiner’s rejection of claims 1, 3, 10, 12,
13, 15, 16, 43, 44, 54-57, and 61-74 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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