UNITED STATES ENDOSCOPY GROUP, INC.

Patent Trials and Appeals Board

Jun 29, 2021

2020006682 (P.T.A.B. Jun. 29, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/616,670 06/07/2017 Rapheal Still 22344/04592 4804
24024 7590 06/29/2021
Calfee, Halter & Griswold LLP
The Calfee Building
1405 East Sixth Street
Cleveland, OH 44114-1607
EXAMINER
BASTIANELLI, JOHN
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
06/29/2021 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):
ipdocket@calfee.com
wfrick@calfee.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAPHEAL STILL, GARY MANN, and CHRISTOPHER KAYE
Appeal 2020-006682
Application 15/616,670
Technology Center 3700
Before DANIEL S. SONG, EDWARD A. BROWN, and LEE L. STEPINA,
Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–10 and 20–27.2 See Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as United States
Endoscopy Group, Inc. Appeal Br. 3.
2 Claims 11–19 are cancelled. See Amendment filed on August 26, 2019, p.
3.
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Application 15/616,670

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CLAIMED SUBJECT MATTER
The claims are directed to a suction valve. Claims 1 and 10 are
independent, and claim 10, reproduced below with emphasis added, is
illustrative of the claimed subject matter:
10. A suction valve, comprising: a stem, a spring, a spring
cup, and a boot, wherein the bottom end of the stem extends
through the spring, the spring cup, and the boot, wherein the stem
comprises:
a button head; and
a stem body connecting to the button head, wherein the
stem body comprises:
an air passage through the center bore of the stem
body, wherein the air passage comprises a side opening
disposed on side surface of the stem body and a bottom
opening disposed at a bottom end of the stem body;
a recessed slot, disposed on the stem body below the
button head and above the side opening, wherein the
recessed slot is disposed 90 degrees from the side opening;
a sealing area, disposed on the stem body below the
side opening;
a first flat formed on the stem body, wherein the first
flat is formed 90 degrees from the side opening and has a
fluid communication to the bottom end of the stem body;
and
a second flat formed on the stem body and separated
from the first flat by at least the first sealing area or the
stem body.
Appeal Br. 23–24 (Claims App.).
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Friend US 2,669,233 Feb. 16, 1954
Ishiguro US 5,871,441 Feb. 16, 1999
Kalsi US 6,338,469 B1 Jan. 15, 2002
Junker US 7,735,803 B2 June 15, 2010
Anderson US 2013/0338442 A1 Dec. 19, 2013

REJECTIONS
I. Claims 10, 25, and 26 are rejected under 35 U.S.C. § 102(a)(1)
and/or 102(a)(2) as anticipated by Anderson. Final Act. 3.
II. Claims 1, 3–10, 21–23, and 27 are rejected under 35 U.S.C.
§ 103 as unpatentable over Anderson and Kalsi. Final Act. 5.
III. Claims 2 and 7–9 are rejected under 35 U.S.C. § 103 as
unpatentable over Anderson, Kalsi, and Friend. Final Act. 8.
IV. Claims 2 and 6 are rejected under 35 U.S.C. § 103 as
unpatentable over Anderson, Kalsi, and Ishiguro. Final Act. 9.
V. Claim 20 is rejected under 35 U.S.C. § 103 as unpatentable
over Anderson, Kalsi, and Junker. Final Act. 9.
VI. Claim 24 is rejected under 35 U.S.C. § 103 as unpatentable
over Anderson and Junker. Final Act. 10.

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OPINION
Rejection I (Anderson)
Finding that Anderson discloses all of the elements recited in claim 1,
the Examiner provides an annotated version of Anderson’s Figure 3 to
identify a “flat” on the stem body of Anderson’s valve 10. Final Act. 3–4,
11. We reproduce this figure below.

The Examiner’s annotated version of Figure 3 of Anderson includes a
side view and a cross-sectional view of Anderson’s stem 10 (unlabeled)
along with identifiers added by the Examiner, one of which demarks the
structure the Examiner equates with the “flat” recited in claim 10.3 See Final
Act. 3–4, 10; Anderson ¶ 19.

3 The Examiner finds that the “flat” depicted in Figure 3 of Anderson is one
of two flats included on stem 10, the second flat being disposed on the
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Appellant argues
nothing in Anderson’s figures and/or specification supports the
Examiner’s annotated version of Fig. 3, as the detailed
description corresponding to Fig. 3 fails to disclose flats of any
type, much less a flat extending to the bottom end of the stem
body such that the flat has a fluid communication to the bottom
end.
Appeal Br. 13. Appellant reiterates, “[n]owhere in Anderson does it
describe the Examiner’ s annotated version of Figure 3, nor does Anderson
disclose [a] flat that extends to a bottom end of its stem. In fact, there is no
flat disclosed in Anderson, not even one that goes to the middle of the stem
15.” Appeal Br. 14. Appellant then asserts, “[i]f Anderson intended for a
flat and/or indentation feature to exist as the Examiner believes, some
description would be provided for such a feature, and more importantly, the
corresponding cross-sectional views would show such features as they
currently show each feature described by Anderson.” Id. at 15 (emphasis
omitted).
In response, the Examiner reproduces portions of Anderson’s Figure 3
magnified to various degrees and finds that the cross-sectional view, in
particular, depicts “the change in width of the device where the flat is clearly
shown as it is recessed in relation to above it.” Ans. 4–7. Below, we
reproduce the portion of Anderson’s Figure 3 provided by the Examiner on
page 6 of the Answer.

opposite side of stem 10 from the first “flat,” and, thus, hidden in
Anderson’s Figure 3. See Final Act. 3.
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The portion of Anderson’s Figure 3 depicted on page 6 of the Answer is a
cross-sectional view of stem 10 magnified and including arrows identifying
the portions of stem 10 the Examiner finds are recessed and which each
correspond to a “flat” as recited in claim 10. See Ans. 4–8; Anderson ¶ 19,
Fig. 3.
After providing the above-noted portion of Figure 3 of Anderson, the
Examiner states, “[t]he fact of the matter is that Anderson clearly shows
flat(s) as claimed by the [A]ppellant. It does not matter if they are
specifically written about in the specification, drawings are part of the
disclosure and the drawings disclose the argued features.” Ans. 9.
We agree with the Examiner that the drawings are part of Anderson’s
disclosure and are available for what they disclose. “[A] drawing is
available as a reference for all that it teaches a person of ordinary skill in the
art.” In re Meng, 492 F.2d 843, 847 (CCPA 1974; see also In re Aslanian,
590 F.2d 911, 914 (CCPA 1979) (same). Furthermore, things shown clearly
in patent drawings are not to be disregarded. In re Mraz, 455 F.2d 1069,
1072 (CCPA 1972). Therefore, “a drawing in a utility patent can be cited
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against the claims of a utility patent application even though the feature
shown in the drawing was unintended or unexplained in the specification of
the reference patent.” Aslanian, 590 F.2d at 914; see also In re Seid, 161
F.2d 229, 231 (CCPA 1947) (“an accidental disclosure, if clearly made in a
drawing, is available as a reference.”).
The next issue is whether the structure the Examiner identifies in
Figure 3 of Anderson is encompassed by the broadest reasonable
interpretation, in light of the Specification, of a “flat” or “flats” as recited in
claim 10. Regarding the possible shapes of a “flat,” Appellant’s
Specification states:
Referring to Figure 3A, in some embodiments, the cross
sectional view of the flat 36 is a plane shape. Referring to Figure
3B, in some embodiments, the cross sectional view of the flat 36
is a concave shape. Referring to Figure 3C, in some
embodiments, the cross sectional view of the flat 36 is a pit
shape. Referring to Figure 3D, in some embodiments, the cross
sectional view of the flat 36 is a slot shape.
Spec. ¶ 52. Thus, the Specification, with reference to Figures 3A–3C,
describes a “flat” as having a planar shape, or, alternatively, any of various
disclosed non-planar shapes. In other words, in light of the Specification,
the term “flat,” by itself, does not require a flat shape. This interpretation of
the word “flat” is supported by and consistent with claims 6–9, which
depend from claim 1. See Appeal Br. 23 (Claims App.).
We agree with the Examiner’s finding that the portion of Anderson’s
Figure 3 identified by the Examiner is a “change in width of the device,”
which is “recessed” in relation to the area above it. Ans. 4. Based on this
structure, and given that the broadest reasonable interpretation of the word
“flat” in claim 10 does not require a planar shape, a preponderance of the
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evidence supports the Examiner’s finding that Figure 3 of Anderson
discloses a flat.
As for Appellant’s argument that “[t]here is no other disclosure in . . .
Anderson concerned with Fig. 3, and which supports the Examiner’s
conclusion that Fig. 3 discloses a flat (indentation) that has fluid
communication with the bottom end of the stem body” Appeal Br. 14, we
agree with the Examiner that Figure 3 of Anderson depicts its “flat” as being
in fluid communication with the bottom end of the stem body. In this
regard, Figure 3 of Anderson depicts the recessed area extending from
approximately the midpoint of the stem to the bottom of the stem. See
Anderson, Fig. 3.
We have considered all of Appellant’s arguments in support of the
patentability of claim 10,4 but find them unavailing. Accordingly, we
sustain the rejection of claim 10, and claims 25 and 26 depending therefrom,
as anticipated by Anderson.

Rejections II–VI (Anderson, Kalsi, Friend, Ishiguro, and Junker)
Rejections II–VI address claims 1–10, 20–24, and 27 and, like
Rejection I, rely on Anderson to teach a “flat.” See Final Act. 5–10.
Appellant does not make arguments traversing Rejections II–VI aside from

4 On page 13 of the Appeal Brief, Appellant argues, “nothing in Anderson
discloses or fairly suggests . . . a sealing area that extends to a bottom end of
the stem body.” This argument is not commensurate with the scope of claim
10. See Appeal Br. 23–24 (Claims App.). Further, although dependent
claim 2 recites “the sealing area extends to the bottom end of the stem
body,” id. at 22, the Examiner relies on each of Friend and Ishiguro, not
Anderson, as disclosing this limitation. See Final Act. 8–9.
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those discussed above regarding Rejection I. See Appeal Br. 17–21.
Accordingly, for the same reasons, we sustain Rejections II–VI.

CONCLUSION

The Examiner’s decision to reject claims 1–10 and 20–27 is affirmed.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
10, 25, 26 102 Anderson 10, 25, 26
1, 3–10, 21–
23, 27
103 Anderson, Kalsi 1, 3–10, 21–
23, 27

2, 7–9 103 Anderson, Kalsi,
Friend
2, 7–9
2, 6 103 Anderson, Kalsi,
Ishiguro
2, 6
20 103 Anderson, Kalsi,
Junker
20
24 103 Anderson, Junker 24
Overall
Outcome
1–10, 20–27

AFFIRMED