Ex Parte Wimmer

Patent Trial and Appeal Board

Jul 11, 2018

11311095 (P.T.A.B. Jul. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/311,095 12/19/2005 Viktor Josef Wimmer
154825 7590 07/11/2018
KS - Whitmyer IP Group LLC
600 Summer Street
3rd Floor
Stamford, CT 06901
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.
02581-P0778A 9958
EXAMINER
BOLER, RYNAE E
ART UNIT PAPER NUMBER
3779
MAIL DATE DELIVERY MODE
07/11/2018 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 PATENT TRIAL AND APPEAL BOARD
Ex parte VIKTOR JOSEF WIMMER
Appeal2016-005435
Application 11/311,095
Technology Center 3700
Before EDWARD A. BROWN, ARTHUR M. PESLAK, and
SEAN P. O'HANLON, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Viktor Josef Wimmer ("Appellant") 1 seeks review under 35 U.S.C.
§ 134(a) of the Examiner's decision, as set forth in the Final Office Action
dated March 12, 2015 ("Final Act."), rejecting claims 8-11 and 13-20.2 We
heard oral argument on June 28, 2018. We have jurisdiction under 3 5
U.S.C. § 6(b ).
We AFFIRM.
1 The Appeal Brief identifies Karl Storz GmbH & Co. KG as the real party
in interest. Appeal Br. 3 (filed Aug. 7, 2015).
2 Claims 1-7 are cancelled, and claim 12 is withdrawn from consideration.
Id. at 32, 35 (Claims App.).
Appeal 2016-005435
Application 11/311,095
CLAIMED SUBJECT MATTER
Claims 9, 10, and 11 are independent. Claim 9, reproduced below,
illustrates the claimed subject matter:
9. An optical unit for the distal head of a lateral-viewing
duodenoscope, the optical unit comprising:
an optical system for optical preparation of light signals
entering the optical system from outside the head of the
duodenoscope in an axial direction and running through the
optical system essentially in this direction, the optical system
having at least one lens; and
a CCD-chip, the CCD-chip located alongside the optical
system and having a surface for transforming the light signals
that land on the surface, where the surface is positioned
essentially perpendicularly to the axial direction of the light
signals, the optical system and the CCD-chip are combined in a
one-part unit before they are inserted together into the distal
head of the duodenoscope, said one-part unit being formed by
at least one of cementing, bolting, notching, and soldering the
components of the optical unit, said optical unit being insertable
into and removable from an opening of the head using an axial
pushing motion that is perpendicular or approximately
perpendicular to a longitudinal axis of the distal head and being
fixed into the opening of the head after insertion by cementing
or soldering,
wherein the light signals in the optical unit are not
deviated by a deflection device, particularly a prism.
Appeal Br. 32-33 (Claims App.).
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Appeal 2016-005435
Application 11/311,095
REJECTI0NS 3
1. Claims 9, 10, 19, and 20 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Komi (JP 62059914, published Mar. 16, 1987).
2. Claims 8, 13, 14, and 18 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Komi and Okada (US 5,871,440, issued Feb. 16, 1999).
3. Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Komi and Jones (US 5,386,817, issued Feb. 7, 1995).
4. Claims 15-17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Komi and Okada.
5. Claims 15-17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Komi, Jones, and Wulfsberg (US 5,718,663, issued Feb.
17, 1998).
3 37 C.F.R. § 41.39 (a)(l) states, with added emphasis: "An examiner's
answer is deemed to incorporate all of the grounds of rejection set forth in
the Office action from which the appeal is taken ( as modified by any
advisory action and pre-appeal brief conference decision), unless the
examiner's answer expressly indicates that a ground of rejection has been
withdrawn." The Examiner's Answer expressly indicates that a rejection of
claims 8-11 and 13-17 under 35 U.S.C. § 112, first paragraph, enablement
requirement, set forth in the Final Office Action has been withdrawn. Ans.
6; Final Act. 2. As the Examiner's Answer does not expressly indicate that
any other ground of rejection set forth in the Final Office Action has been
withdrawn, the Examiner's Answer is deemed to incorporate the listed
Rejections (1 }-(5). Consistent with this presumption, the Examiner's
Answer addresses the rejection of each of pending claims 8-11 and 13-20 in
the Response to Argument section. See Ans. 6-11.
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Appeal 2016-005435
Application 11/311,095
ANALYSIS
Rejection I-Claims 9, 10, 19, and 20 over Kami
Appellant contests the rejection of claims 9, 10, 19, and 20
collectively. Appeal Br. 24--29. We select claim 9 as the representative
claim, with claims 10, 19, and 20 standing or falling with claim 9. See 3 7
C.F.R. § 4I.37(c)(l)(iv).
Claim 9 recites, inter alia, "the optical system and the CCD-chip are
combined in a one-part unit before they are inserted together into the distal
head of the duodenoscope" (hereinafter, "the one-part unit limitation") and
"said one-part unit being formed by at least one of cementing, bolting,
notching, and soldering the components of the optical unit" (hereinafter, "the
forming limitation"). Appeal Br. 32 (Claims App.).
The Examiner finds that Komi discloses the one-part unit limitation.
Final Act. 4--5. Particularly, the Examiner finds Komi discloses that optical
system 106 and CCD-chip 104 are combined in a one-part unit before being
inserted into the distal head of a duodenoscope. Id. ( citing Komi, Fig. 5)
("the optical system 106 is fixed to the CCD-chip 104 before insertion as
seen by the imaginary/dotted line and arrow 'a' in Fig. 5").
Regarding the forming limitation, the Examiner finds that Komi
discloses attachment mechanism 55 for connecting the optical system and
CCD-chip. Id. at 5 ( citing Komi, Figs. 2, 4); see also Ans. 10 ("the optical
system and CCD-chip of Figures 2 and 4 are connected via notching (55)").
In view of this disclosure, the Examiner concludes that it would have been
obvious "to fixedly attach the optical system and CCD-chip by notching, as
a simple substitution of one attachment mechanism for another, with the
results being predictable." Final Act. 5; Ans. 10 ("it would have been
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Appeal 2016-005435
Application 11/311,095
obvious to ... affix 104 and 106 together via notching, as disclosed by
Komi, as [a] simple substitution of one attachment mechanism for another
having the predictable result of the optical system being affixed to the CCD-
chip").
Appellant contends that Komi does not disclose that "the optical
system and the CCD-chip are combined in a one-part unit before they are
inserted together into the distal head o(the duodenoscope." Appeal Br. 24.
Particularly, Appellant contends that Figure 2 of Komi shows that the optical
system including lens 60 is inserted into an opening, but the CCD-chip is not
attached to the optical system prior to the insertion of the optical system into
the distal head of the endoscope. Appeal. Br. 24--25. Instead, Appellant
contends, Figure 4 of Komi shows that "the CCD-chip is located within the
duodenoscope and then the optical system is slid into the opening." Id. at
25. Appellant further contends that Figure 5 of Komi shows that image
sensor 104 is affixed to fitting 102, and fitting 102, image sensor 104, and
optical system 106 are slid from below, which does not disclose the disputed
one-part unit limitation. Id. at 26.
The Examiner responds to Appellant's contentions regarding the one-
part limitation by pointing out that Figure 5 is the figure in Komi cited in the
Office Action for this limitation. Ans. 6-7. The Examiner disagrees with
Appellant's contention that Figure 5 fails to disclose the one-part unit
limitation. Id. at 7. In support, the Examiner submits that Komi explicitly
discloses the following, which pertains to Figure 5:
Then, for assembly, focus adjustment of objective optical system
106 or another optical adjustment is made beforehand outside tip
fitting 102 and the ob;ective optical system is held a(fixed on
plate-like image sensor 104. After this, it is drawn into tip fitting
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Appeal 2016-005435
Application 11/311,095
102 as indicated by the imaginary line in Figure 5. obiective
optical system 106 is inserted from below in the figure (arrow a)
into lens barrel insertion hole 108b. and it is affixed with an
adhesive 110.
Id. (citing Komi, p. 70, col. 1, 11. 23-27).
Appellant replies that the Examiner improperly relies on an English-
language translation of Komi. Reply Br. 2 (referencing Komi, p. 70, col. 1,
11. 23-27). Appellant explains that the quoted passage in Komi set forth in
the Examiner's Answer is from a translation that was prepared by the Office
and sent to Appellant's attorneys via e-mail on November 12, 2014. Reply
Br. 2. Appellant contends that the Examiner never previously cited the
translation, and the translation was never properly entered of record in the
present application, and, thus, the translation cannot be used by the
Examiner to support the Examiner's interpretation of Figure 5 of Komi. Id.
Appellant requests that the Board ignore the portions of the Examiner's
Answer that rely on the Komi translation. Id. at 3. Alternatively, Appellant
requests, if the Board does rely on the Komi translation in any affirmance,
then the Board should designate the affirmance as a new ground of rejection.
Id.
We are not persuaded by Appellant's contentions. Even if the
Examiner did not additionally cite the translation of Komi in the Final Office
Action from which the present appeal was taken, we understand that
Appellant's legal representatives were provided with a copy of the
translation prior to the date of the Final Office Action. Further, Appellant
does not challenge the accuracy of the Examiner's quotation; rather,
Appellant acknowledges the quotation is taken from the copy of the
translation it received from the Office. Id. at 2.
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Application 11/311,095
The quoted passage from the Komi translation appears to merely
elaborate upon what is depicted and taught in Figure 5 of Komi, which the
Examiner previously cited in the Final Office Action to support the
rejection. Ans. 7; Final Act. 4--5. To the extent it is now Appellant's
position that the citation to the Komi translation in the Examiner's Answer
necessitated designating the rejection as a new ground of rejection in the
Examiner's Answer, we note 37 C.F.R. § 41.40 states:
(a) Timing. Any request to seek review of the primary
examiner's failure to designate a rejection as a new ground of
rejection in an examiner's answer must be by way of a petition
to the Director under § 1.181 of this title filed within two months
from the entry of the examiner's answer and before the filing of
any reply brief. Failure of appellant to timely file such a petition
will constitute a waiver of any arguments that a rejection must be
designated as a new ground of rejection.
As Appellant points to no evidence of record that it did timely file such a
petition, any argument that the rejection must now be designated as a new
ground of rejection is considered to be waived.
Accordingly, Appellant has not provided any persuasive reason why
we should ignore the portions of the Examiner's Answer that rely on the
Komi translation. In the Reply Brief, Appellant does not address
persuasively the substance of the passage in Komi quoted by the Examiner.
Reply Br. 2-3. Accordingly, Appellant does not apprise us of any error in
the Examiner's finding that Figure 5 of Komi and the quoted passage
demonstrate that optical system 106 is held affixed on image sensor 104 and
then inserted into the endoscope, as represented by arrow 'a,' and, thus,
Komi discloses the limitation "the optical system and the CCD-chip are
combined in a one-part unit before they are inserted together into the distal
head of the duodenoscope." Ans. 7.
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Application 11/311,095
Regarding the Examiner's position with respect to the forming
limitation that Komi discloses that the optical system and CCD-chip are
connected via notching 55 (id. at 10), Appellant acknowledges that Komi
discloses an attachment mechanism 55, but contends this does not disclose
cementing, bolting, notching, or soldering, as claimed. Appeal Br. 29.
However, this contention does not explain why Appellant believes the
Examiner's finding that attachment mechanism 55 corresponds to the
claimed "notching" is in error. Id. For example, Appellant does not direct
us to any description in the Specification that defines "notching" or may
otherwise preclude this finding. Nor does Appellant apprise us of error in
the Examiner's reasoning that it would have been obvious to one of ordinary
skill in the art to form the "one-part unit" in Komi by notching as a simple
substitution of one attachment mechanism for another with predictable
results. See Final Act. 5; Ans. 10.
The Examiner also submits that Appellant improperly relies on
method steps in an apparatus claim to distinguish over prior art devices that
have the same structure as claimed. Ans. 8. The Examiner determines that
the device illustrated in Figure 5 of Komi has the same final structure as the
claimed invention-i.e., "an optical unit comprising an optical system
affixed to a CCD-chip that is located in the distal head of a lateral viewing
endoscope." Id. Appellant does not apprise us of any error in this position.
The Examiner submits that Komi is not required to disclose the
purported advantages of Appellant's one-part unit. Ans. 9; see Appeal Br.
26-28. We agree, as Appellant has not apprised us of error in the
Examiner's finding that Komi discloses the one-part unit limitation. Ans. 9.
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Appeal 2016-005435
Application 11/311,095
For the foregoing reasons, we sustain the rejection of claim 9 as
unpatentable over Komi. Claims 10, 19, and 20 fall with claim 9. As for
Appellant's request that the Board designate any affirmance as a new ground
of rejection (Reply Br. 3), although the Examiner relies on the passage from
the Komi translation to support findings pertaining to what Figure 5 of Komi
depicts, this reliance by the Examiner does not affect whether we should
designate our affirmance of the Examiner's rejection as a new ground of
rejection. That is, "the ultimate criterion of whether a rejection is considered
'new' in a decision by the board is whether [Appellant has] had fair
opportunity to react to the thrust of the rejection." In re Kronig, 539 F.2d
1300, 1302 (CCPA 1976). Appellant had a fair opportunity to react to the
thrust of the Examiner's rejection in the Reply Brief. Our affirmance of the
rejection set forth by the Examiner does not change the thrust of that
rejection. Accordingly, we decline to designate our affirmance as a new
ground of rejection.
Rejection 2-Claims 8, 13, 14, and 18 over Kami and Okada
Rejection 3-Claim 11 over Kami and Jones
Rejection 4-Claims 15-17 over Kami and Okada
Rejection 5-Claims 15-17 over Kami, Jones, and Wulfsberg
As noted by the Examiner, Appellant does not present any additional
substantive argument for patentability for any one of these rejections. Ans.
10, 11; Appeal Br. 29-31. Accordingly, we sustain the rejections of claims
8, 11, and 13-17 for the same reasons as those discussed above for claim 1.
DECISION
We affirm the Examiner's decision to reject claims 8-11 and 13-20.
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Appeal 2016-005435
Application 11/311,095
No time period for taking any subsequent action in connection with
this appeal may be extended according to 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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