Ex Parte Buerk

Patent Trial and Appeal Board

Aug 18, 2017

13631302 (P.T.A.B. Aug. 18, 2017)

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.
13/631,302 09/28/2012 Andre Buerk 02581-P1538A 8047
131672 7590 08/18/2017
Whitmyer IP Group LLC
600 Summer Street
3rd Floor
Stamford, CT 06901
EXAMINER
NEAL, TIMOTHY JAY
ART UNIT PAPER NUMBER
3779
MAIL DATE DELIVERY MODE
08/18/2017 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 ANDRE BUERK
____________________

Appeal 2015-003685
Application 13/631,302
Technology Center 3700
____________________

Before JAMESON LEE, JONI Y. CHANG, and JUSTIN T. ARBES,
Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–12, which constitute all the claims pending in this
application. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b).1
We affirm-in-part.

1 This Decision refers to Appellant’s Appeal Brief (“App. Br.,” filed
Sept. 29, 2014), Examiner’s Answer (“Ans.,” mailed Dec. 4, 2014),
Appellant’s Reply Brief (“Reply Br.,” filed Feb. 4, 2015), Final Office
Action (“Final Act.,” mailed Apr. 29, 2014), and Advisory Action (“Adv.
Act.,” mailed July 7, 2014).
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The Invention
The invention relates to an endoscope with a viewing angle that can
be adjusted within a predetermined angular range. Spec. ¶ 1. The “viewing
angle” is defined as the direction, with respect to the distal end of the
endoscope, in which an object is situated that appears in the center of an
image captured by the endoscope. Id. ¶ 9. The endoscope includes a
movable light-diverting device at a distal end, on whose orientation the
viewing angle of the endoscope depends, and a jointed device for movably
securing the light-diverting device such that the light-diverting device has
mobility beyond pivoting about a single pivot axis. Id. ¶ 8.
Claim 1 is the only independent claim and is reproduced below:
1. An endoscope with a viewing angle that can be adjusted
within a predetermined angular range, having:
a shaft with a distal end and a proximal end,
a movable light-diverting device disposed within the distal
end of the shaft, on whose orientation the viewing angle of the
endoscope depends, and
a jointed device disposed within the distal end of the shaft,
the jointed device connecting the light-diverting device with the
shaft for movably holding the light-diverting device,
such that the jointed device provides mobility of the light-
diverting device within the shaft that includes more than only a
capacity to pivot about a single pivot axis.
The Prior Art
The prior art relied on in rejecting the claims on appeal are:

Durell US Pat. No. 6,638,216 B1 Oct. 28, 2003

Saadat US Pat. Pub. No. 2005/0234296 A1 Oct. 20, 2005

Hoefig US Pat. Pub. No. 2007/0055103 A1 Mar. 8, 2007
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The Rejections
Claims 1–6, 11, and 12 were finally rejected under 35 U.S.C. § 102(b)
as anticipated by Hoefig. Final Act. 2.
Claim 1 was finally rejected under 35 U.S.C. § 103(a) as unpatentable
over Durell and Hoefig. Id. at 5.
Claims 1–12 were finally rejected under 35 U.S.C. § 103(a) as
unpatentable over Durell and Saadat. Id. at 6.
Claims 1–12 were finally rejected under 35 U.S.C. § 103(a) as
unpatentable over Saadat and Hoefig. Id. at 10.
Claims 7–10 were finally rejected under 35 U.S.C. § 103(a) as
unpatentable over Hoefig and Saadat. Id. at 15.
ANALYSIS
A. Rejection of Claims 1–6, 11,
and 12 as Anticipated by Hoefig
Hoefig discloses an endoscope in which the optical imaging system is
pivotable about a first axis that runs about transversely to a longitudinal axis
of the shaft, and also about a second axis, spaced from the first pivot axis,
that runs about transversely to the longitudinal axis of the shaft. Hoefig,
Abstr. Figure 1 of Hoefig is reproduced below:

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Figure 1 illustrates a distal region of an endoscope in a side view, and
partially in a longitudinal section, providing a 0◦ angle of view with respect
to a longitudinal axis of the shaft. Hoefig ¶ 61. Outer shaft 14 is a
stationary portion of shaft 12. Id. ¶ 72. Distal end of endoscope 10
comprises rigid distal head 16 which contains optical imaging system 18.
Id. ¶ 73. Distal head 16 is connected to first shaft portion 32 via a pin
connection so that distal head 16 is pivotable about a first pivot axis 38. Id.
¶ 82. First shaft portion 32 in turn is connected to second shaft portion 34
via another pin connection so that the first shaft portion 34 and distal head
portion 16 are pivotable about a second pivot axis 40. Id. ¶ 83.
Figure 8 of Hoefig is reproduced below:

Figure 8 shows the endoscope, partially in a longitudinal section,
additionally showing a glass ball surrounding the inner shaft portions and the
distal head of the endoscope. Id. ¶ 68.
Claim 1 requires a jointed device that is disposed within the distal end
of the shaft, which connects a movable light-diverting device with the shaft
for movably holding the light-diverting device. Claim 1 also requires the
jointed device to provide mobility of the light-diverting device within the
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shaft. With reference to Figure 8, the Examiner finds that imaging system
18 is the movable light-diverting device and that distal head 16 is the jointed
device connecting imaging system 18 to the shaft for movably holding
imaging system 18. Ans. 2.
Appellant makes three arguments with respect to the ground of
anticipation based on Hoefig. First, Appellant argues that, because Hoefig
discloses an endoscope with an enlarged distal end as seen in Figure 8, that
conflicts with “miniaturizing distal end cross-sections of endoscope.” App.
Br. 6. The argument is misplaced because Appellant has not identified
anything in the rejected claims that requires “miniaturizing distal end
cross-sections of endoscopes.”
Second, Appellant argues that, as seen in Figure 8, because distal head
16 is disposed outside of shaft 14, it does not provide mobility of the
imaging system 18 as the light-diverting device within the shaft. Id. at 6–7.
However, during examination, “the PTO gives a disputed claim term its
broadest reasonable interpretation.” In re Bigio, 381 F.3d 1320, 1324 (Fed.
Cir. 2004); In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). Absent claim
language carrying a narrow meaning, the Office should only limit the claim
based on the specification and prosecution history when those sources
expressly disclaim the broader definition. Bigio, 381 F.3d at 1325; see also
In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). It is reasonable, in
light of the specification, for the Examiner to regard the claim phrase
“within the shaft” to cover the case in which glass ball 74 is properly
considered an extension of shaft 14, as shown in Hoefig’s Figure 8. It is also
reasonable for the Examiner to find (Final Act. 2; Ans. 16) that glass ball 74,
as illustrated in Figure 8, is an extension of shaft 14 and is considered a part
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of the shaft. Appellant has not identified, nor can we discern, any disclosure
in the specification that makes clear that extensions to a shaft cannot be
considered as a part of the shaft.
Appellant further argues that even if glass ball 74 is considered a part
of the shaft, distal end 16 (as the jointed device) does not connect light
imaging system 18 (as the light-diverting device) to glass ball 74. App. Br.
7. The argument is misplaced, because the claims do not require the
connection to the shaft to be implemented at any particular portion of the
shaft. The fact that glass ball 74 is a part of the shaft does not mean that
connection to the shaft must take place at glass ball 74. We agree with the
Examiner (Ans. 16) that it is evident from Figure 8 that distal end 16, which
includes links 32, 34, and 36, is connected to shaft 14.
Prior art references must be “considered together with the knowledge
of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475,
1480 (Fed. Cir. 1994) (citation omitted). In that regard, “it is proper to take
into account not only specific teachings of the reference but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968). As the Court of
Appeals for the Federal Circuit explained, for anticipation, the dispositive
question is “whether one skilled in the art would reasonably understand or
infer from a prior art reference that every claim element is disclosed in that
reference.” Eli Lilly v. Los Angeles Biomedical Res. Inst., 849 F.3d 1073,
1074–1075 (Fed. Cir. 2017) (citation omitted).
It is manifestly evident that, from the perspective of one with ordinary
skill in the art, in order for the endoscope of Hoefig to operate as disclosed,
distal end 16 with links 32, 34, and 36 is not loose and floating freely inside
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shaft 14. Appellant correctly notes that distal head 16 and its links 32 and
34 are freely rotatable relative to stationary shaft 14. Reply Br. 4. But
Appellant mistakenly concludes that that means distal head 16 including its
links must not be connected to shaft 14 in any way. The motion within the
shaft must be positionally controlled with respect to shaft 14 and distal end
16 must be maintained within shaft 14. The Examiner has established a
prima facie case that distal end 16 is connected to shaft 14. Appellant’s
simply noting that distal end 16 moves within shaft 14 is insufficient to
overcome that prima facie showing by the Examiner. The situation is not
unlike that of moving blades inside a fan housing, i.e., the fan blades rotate
but are still connected by some means to the fan housing.
For the foregoing reasons, Appellant has not shown error in the
Examiner’s final rejection of claim 1 as anticipated by Hoefig. That
rejection is affirmed. Appellant has not argued claims 2–6, 11, and 12
separately from independent claim 1. Thus, dependent claims 2–6, 11, and
12 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant has
not shown error in the Examiner’s final rejection of claims 2–6, 11, and 12
as anticipated by Hoefig. That rejection also is affirmed.
B. Rejection of Claim 1 as
Obvious over Durell and Hoefig
Durell relates to arthroscopes, endoscopes, and similar optical
instruments. Durell, 1:5–7. Durell summarizes its invention as a variable
view arthroscope including a variable object input assembly in an elongated
housing tube, a control to vary the view of the object input assembly, and a
lighting assembly to illuminate the viewing area. Id. at 3:25–29. The object
input assembly includes an input lens, a first mirror, and a second mirror.
Id. at 3:31–33. The input lens is movable and the first mirror is rotatable.
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Id. at 3:33–34. The input lens and the first mirror move around the same
axle, and the second mirror is fixed. Id. at 3:34–35. The reflected light from
the viewing area forms a working image and the light image or object rays
pass from the viewing area through the input window and the input lens,
reflect from the first mirror to the second mirror, and reflect from the second
mirror into a relay lens system. Id. at 3:35–40. Figure 3 is reproduced
below:

Figure 3 is a sectional elevation view of the object input end of Durell’s
arthroscope, illustrating portions of an object input assembly, adjusted for a
maximum upward view. Id. at 4:1–4. Figure 5 is reproduced below:

Figure 5 is a sectional elevation view of the object input end of Durell’s
arthroscope, illustrating superimposed portions of an object input assembly
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adjusted for both a maximum upward view and a maximum downward view.
Id. at 4:8–12.
As shown in Figures 3 and 5, object input end 32 includes object input
assembly 50. Id. at 5:63–64. Object input assembly 50 includes input
window 52, input lens 54, first mirror 56, and second mirror 58. Id. at 5:65–
67. Object rays pass from the viewing area into input window 52 and
through input lens 54, and are reflected from first mirror 56 to second mirror
58. Id. at 6:1–3. Input lens 54 and first mirror 56 are movable and together
vary the view of arthroscope 30 to direct the captured image to second
mirror 58. Id. at 6:33–35. The common axle around which both input lens
54 and first mirror 56 move and, with respect to which they are positioned,
defines a preferred alignment of input lens 54 and first mirror 56. Id. at
6:35–39.
Durell describes that as input lens 54 moves, the position of the first
mirror must change to preserve the desired orientation of the object rays, and
that because of the geometry of mirrors, the angle of change in a ray
reflected from a mirror will be double that of the angle change in the
reflecting plane of the mirror, such as when the mirror rotates from a first
position to a second position. Id. at 6:61–67. Durell describes that in the
illustrated configuration, first mirror 56 rotates around axle 90 at half the
rate of angular change at which input lens 54 rotates around axle 90, in a
complementary direction. Id. at 7:1–3. Together with movement of input
lens 54, rotation of first mirror 56 varies the view of arthroscope 30. Id. at
7:29–31. Movement of parts in Durell’s device is described with reference
to Figures 6–10. Id. at 7:62–63.
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Figure 6 is reproduced below:

Figure 6 is a sectional elevation view of the object input end of Durell’s
arthroscope, adjusted for an intermediate view, and further showing an input
lens control. Id. at 4:13–16. Regarding motion control, Durell describes:
[A] push rod 70 directs the motion of the input lens 54 and the
first mirror 56. The position of the input lens 54 is adjusted by
the push rod 70 engaging the input lens frame 80 through an input
lens connecting rod 74. The input lens connecting rod 74 is
connected to the push rod 70 at push rod yoke 72 by yoke pin 76.
The input lens connecting rod 74 is connected to the input lens
frame 80 through an input lens frame pin 78. As the push rod 70
moves back and forth along the longitudinal axis of the housing
tube 31, the connecting rod 74 shifts the position of the input lens
frame 80 and, hence, of the input lens 54. The position of the
first mirror 56 is adjusted by the push rod 70 engaging the first
mirror frame 86 through a first mirror connecting rod 82. The
first mirror connecting rod 82 is connected to the push rod 70 at
push rod yoke 72 by yoke pin 77. Yoke pins 76 and 77 are
disposed on opposite sides of the push rod yoke 72 and are
coaxial. The first mirror connecting rod 82 is connected to the
first mirror frame 86 through a first mirror frame pin 84. As the
push rod 70 moves back and forth, the first mirror connecting rod
82 adjusts the angle of the first mirror 56.
The first mirror connecting rod 82 is fastened to the push
rod yoke 72 at yoke pin 77 and the input lens connecting rod 74
is connected to the yoke at yoke pin 76. Because yoke pins 77
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and 76 are coaxial, both connecting rods move synchronously.
Id. at 7:62–8:20.
The Examiner acknowledges that Durell does not disclose a jointed
device (Durell’s connecting rod 74 and yoke pin 76) that includes a capacity
to pivot that is more than about a single pivot axis, as is required by claim 1.
Final Act. 5. However, the Examiner finds that mechanical linkages having
multiple pivotal axes are well-known in the art and that Hoefig discloses one
such example. Id. The Examiner determines that it would have been
obvious to one with ordinary skill in the art to modify Durell’s single pivot
axis implementation to incorporate multiple pivot axes. Id. at 6.
Appellant makes two arguments with respect to this ground of
rejection. First, Appellant argues that like Hoefig, Durell also does not
disclose anything to connect a light-diverting device to a shaft. App. Br. 9–
10. Specifically, Appellant asserts: “Durell merely teaches that the jointed
device 74/77 provides a connection between the light-diverting device 80
and the push rod 70. Nowhere does Durell teach or suggest the connecting
rod 74 and the yoke pin 77 connect the light-diverting device 80 to the shaft
31.” Id. In its Reply, Appellant further explains: “When the control portion
or handle 35 is actuated to adjust the view of the endoscope, the push rod 70
and push rod yoke 72 are pushed/pulled, such that they shift in position
along the longitudinal axis of the endoscope.” Reply Br. 4–5. Appellant
adds that, “[b]ecause the jointed device (i.e., connecting rod and yoke pin) is
not connected to the shaft, the jointed device is not configured to connect the
light-diverting device (i.e., input lens frame 80) with the shaft.” Id. at 5–6.
Appellant’s argument is unpersuasive. We disagree that connecting
rod 74 and yoke pin 77, as a jointed device, is not connected to shaft 31.
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Although no connection is expressed in words, in order for Durell’s
arthroscope to operate as disclosed, elements 74/77 must be connected to the
shaft in some way. As discussed above, the dispositive question is whether
one skilled in the art would reasonably understand or infer from Durell that
elements 74/77 are connected to shaft 31. Eli Lilly, 849 F.3d at 1074–1075.
That is the case here, because movements of elements 74/77 should not be
loose or unguided with respect to the shaft by way of a connection. The
Examiner has made out a prima facie case that elements 74/77 are connected
to shaft 31. That elements 74/77 move within shaft 31 does not mean they
are not secured to the shaft. We note again, for example, that fan blades
turning inside a housing does not mean they are not connected to the
housing.
Second, Appellant argues that the Examiner’s proposed modification
of Durell with the teachings of Hoefig “would require that there no longer be
a common axle with which the input lens 54 and the first mirror 56 rotate,”
and that modification of Durell to incorporate multiple axes “would also
alter the ability of Durell’s endoscope to jointly move the input lens and the
first mirror in complementary fashion to maintain proper orientation of
object rays.” App. Br. 11. Appellant asserts that for those reasons the
proposed modification of Durell “would change the principle of operation of
Durell,” which “involves the first mirror 56 rotating around the axle 90 at
half the rate of angular change at which the input lens 54 (mounted to the
input lens frame 80) rotates around the axle 90, in [the] corresponding
direction.” Id. Appellant’s arguments are persuasive, for reasons discussed
below.

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If the suggested combination of references would require a substantial
reconstruction and redesign of the elements shown in a prior art reference as
well as a change in the basic principles under which the prior art reference
operates, the combination likely is improper. See In re Ratti, 270 F.2d 810,
813 (CCPA 1959). Appellant focuses on these aspects of Durell: (1) first
mirror 56 rotating at half the angular rate of the rotation of input lens 54,
(2) having a common axle for first mirror 56 and input lens 54, and (3)
jointly moving the input lens and first mirror in a complementary fashion.
All of them are centered on one idea, i.e., that there is a common axle of
rotation for input lens 54 and first mirror 56. That idea constitutes a basic
and fundamental principle of operation of Durell. It is expressly stated in
the Summary of the Invention portion of Durell and also expressly required
by the sole independent claim in Durell. Without including that aspect of
Durell, substantial redesign and reconstruction would have to occur. The
Examiner has, in effect, said nothing except to implement more than one
pivotal axis in Durell, and no specific manner of implementation has been
proposed.
The Examiner states that the principle of operation of Durell is
unchanged because ultimately Durell continues to serve as a variable
arthroscope. Ans. 17. That assertion is insufficient to rebut Appellant’s
contention that the basic principle of operation of Durell has been changed
and substantial redesign has to take place. The Examiner also asserts that
“Hoefig’s variable view mechanism replaces Durell’s as indicated by the
rejection.” Id. However, that is not a meaningful explanation because the
Examiner’s statement of rejection merely states that it would have been
obvious “to modify Durell’s single pivot axis to include Hoefig’s multiple
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pivot axis.” Final Act. 5–6. It is unclear what structural modifications, e.g.,
what components of each reference would be used in the combination, and
how, underlie and support the proposed combination. And if all of Durell’s
teachings are discarded, it is not understood how the alleged ground of
unpatentability is based on the combined teachings of Durell and Hoefig.
Also, in that case, the basic principle of operation of Durell, as noted above,
would be eliminated and the required redesign of Durell would be even more
substantial, further adding to the strength of Appellant’s arguments.
Additionally, if all of Durell’s teachings are discarded, it is not understood
why the Examiner still has to rely on a finding that connecting rod 74 and
yoke pin 77, as a jointed device, is connected to shaft 31. In that regard, the
Examiner’s explanations are inconsistent.
With much of Durell’s structure to be modified and essentially all
modification details not expressed by the Examiner, we agree with Appellant
that the basic principle of operation of Durell would be so changed and the
modifications would be so substantial that the Examiner has not set forth a
prima facie case of obviousness of claim 1 over Durell and Hoefig. See
Ratti, 270 F.2d at 813. The rejection of claim 1 as obvious over Durell and
Hoefig cannot be sustained.
C. Rejection of Claims 1–12 as
Obvious over Durell and Saadat
This ground of rejection is much like the rejection of claim 1 as
obvious over Durell and Hoefig discussed above. The Examiner states:
Durell does not explicitly disclose wherein the jointed
device includes more than only a capacity to pivot about a single
pivot axis. Saadat teaches using a linkage system (20) having
multiple pivot axes (22a and 22b) for improved viewing of a
surgical area. Therefore, it would have been obvious to a person
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having ordinary skill in the art at the time the invention was made
to modify Durell’s single pivot to include Saadat’s multi-pivot
axes.
Final Act. 6–7. This alleged ground of obviousness based on Durell and
Saadat shares the same deficiency as that specifically discussed above in the
context of the Examiner’s application of Durell and Hoefig to claim 1. In
essence, with much of Durell’s structure to be modified and essentially all
modification details not expressed by the Examiner, we agree with Appellant
that the basic principle of operation of Durell would be so changed and the
modifications would be so substantial that the Examiner has not set forth a
prima facie case of obviousness of claims 1–12 over Durell and Saadat. See
Ratti, 270 F.2d at 813. The rejection of claims 1–12 as obvious over Durell
and Saadat cannot be sustained.
D. Rejection of Claims 1–12 as
Obvious over Saadat and Hoefig
Saadat relates to a method and apparatus for obtaining endoluminal
access together with off-axis articulation. Saadat ¶ 1. Saadat describes its
invention as obtaining endoluminal access for an apparatus through
relatively small body lumens, where the apparatus includes an articulating
element at a distal region which can, after the apparatus has obtained access
to a small body lumen, articulate off-axis or out-of-line from the working
axis of the elongate body of the apparatus. Id. ¶ 9. As such, the articulating
element, after it has gained entry into a small body lumen, is extendable and
retractable in a radial direction relative to the working axis. Id. The
articulating element has a collapsed profile to facilitate passage through
small body lumens, and an expanded and deployed profile to facilitate
diagnosis or therapy once it is disposed within the body lumen. Id. ¶ 10.
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Figures 1A and 1C of Saadat are reproduced below:

Figure 1A illustrates an example of Saadat’s apparatus including an
articulating element shown in a collapsed configuration. Id. ¶ 13.

Figure 1C illustrates an example of Saadat’s apparatus including an
articulating element shown in an expanded configuration. Id.
Apparatus 10 comprises elongate body 12 configured for insertion
within a body lumen, conduit, organ, orifice, or passageway. Id. ¶ 26.
Apparatus 10 further comprises at least one articulating element 20, shown
in Figures 1A and 1C as two elements 20a and 20b, disposed near or at distal
region 13 of body 12. Id. Figure 1A shows articulating elements 20a and
20b in a collapsed delivery configuration having a reduced delivery profile
suited for delivery within a body orifice, lumen, or cavity. Id. ¶ 29. Figure
1C shows the articulating elements fully articulated to a deployed
configuration of expanded profile. Id.
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The Examiner acknowledges that Saadat does not disclose a movable
light-diverting device and jointed device disposed within a shaft, as recited
in claim 1. Final Act. 11. However, for that requirement, the Examiner
relies on Hoefig’s teaching of adding a glass ball or a transparent flexible
tube as a distal portion of a shaft for protecting the lens mechanism, citing
Paragraphs 110 and 111 of Hoefig. Id. The Examiner states that “[a]
transparent flexible tube is something that could be withdrawn as desired to
allow for tool insertion or further manipulation of the device,” and that use
of the transparent flexible tube is “for the protection of the distal end of the
device during entry.” Id.
The problem with the Examiner’s proposed combination is that it is
unreasonable in light of the disclosure of Saadat. As discussed above,
Saadat pertains to obtaining endoluminal access for an apparatus through
relatively small body lumens, where the apparatus includes an articulating
element at a distal region which can, after the apparatus has obtained access
to a small body lumen, articulate off-axis or out-of-line from the working
axis of the elongate body of the apparatus. That is why, also as discussed
above, articulating elements 20a and 20b have a collapsed delivery
configuration having a reduced delivery profile, and a deployed
configuration having an expanded profile. Adding either a glass ball or a
transparent flexible tube to the distal end of Saadat’s apparatus to surround
articulating elements 20a and 20b runs counter to Saadat’s stated goal and
objective.
For instance, in the case of the proposed addition of Hoefig’s glass
ball, the addition would be undesirable because the large size of the glass
ball would undermine smooth passage through small body lumens. The
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point of Saadat’s instrument, as discussed above, is to not expand the
radially articulating elements until they have been through a small body
lumen. Adding a rigid glass ball that is larger in size than the size of
articulating elements 20a and 20b in their fully expanded state undermines
Saadat’s goal and objective, as the glass ball would not be expected to fit
through small body lumens. For determining obviousness, the mere fact that
the prior art can be modified would not make the modification obvious
unless the prior art suggests the desirability of the modification. In re
Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). Here, the case for adding
Hoefig’s glass ball to Saadat’s instrument is insufficient and unsupported by
the evidence. The same deficiency plagues the Examiner’s proposed
addition of a transparent flexible tube to the distal end of the shaft of
Saadat’s apparatus to surround articulating elements 20a and 20b. If added,
the transparent flexible tube would obstruct or preclude the proper and
required radial expansion of articulating elements 20a and 20b into an
expanded profile. It is without logic to say that articulating elements 20a
and 20b should be protected but not used. We are unpersuaded by the
Examiner’s position.
For the foregoing reasons, we determine that the Examiner has not
made out a prima facie case of obviousness against claims 1–12 as obvious
over Saadat and Hoefig. The rejection of claims 1–12 as obvious over
Saadat and Hoefig cannot be sustained.
E. Rejection of Claims 7–10 as
Obvious over Hoefig and Saadat
Claims 7–10 each depend, directly or indirectly, from independent
claim 1 which is anticipated by Hoefig as discussed above. To account for
the additional limitations of claims 7–10, the Examiner states:
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Saadat’s moveable light-diverting device and jointed device can
be substituted for Hoefig’s mechanism. Such a modification
requires the mere substitution of two similar elements designed
for the same purpose, internal viewing of a surgical area, in a
manner that would yield predictable results. Therefore, it would
have been obvious to a person having ordinary skill in the art at
the time the invention was made to substitute Hoefig’s
mechanism for Saadat’s mechanism.
Final Act. 15–16 (claim 7), 16 (claim 8), 17 (claims 9 and 10). Two
problems undermine the Examiner’s explanation.
First, each dependent claims 7–10 incorporates, by reason of its
dependency, the limitations of independent claim 1. To meet the limitations
of claim 1, the Examiner relied on the disclosure of Hoefig. Here, in the
context of the dependent claims, the Examiner proposes to substitute the
entirety of Hoefig’s mechanism for that of Saadat’s. That would render null
the Examiner’s basis for concluding that the limitations of claim 1,
incorporated into the dependent claims by nature of their dependence from
claim 1, are met for this ground of rejection over Hoefig and Saadat.
Second, as discussed above, the mere fact that the prior art can be
modified would not make the modification obvious unless the prior art
suggests the desirability of the modification. Gordon, 733 F.2d at 902.
Here, the case for substituting the entirety of Hoefig’s mechanism for that of
Saadat’s is insufficient and unsupported by the evidence. In Hoefig, it is an
essential goal to be achieved and also a requirement to have the optical
imaging system pivotable by at least 150◦ from the longitudinal axis of the
shaft. That is described in the Summary of the Invention section of Hoefig
in Paragraph 18 and also expressly recited in the only independent claim of
Hoefig. Appellant asserts that Saadat’s linkage system “does not allow for a
range of view of at least 150 degrees.” Reply Br. 11. The Examiner has not
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disputed Appellant’s assertion that Saadat’s linkage system does not provide
for a range of view of at least 150◦ relative to the longitudinal axis of the
shaft, which we find to be accurate and supported by the disclosures of the
references. On this record, the Examiner has not articulated reasoning with
rational underpinning to substitute the mechanism of Saadat for the
mechanism of Hoefig. That both Hoefig and Saadat provide a system for
internal viewing of a surgical area is excessively general and does not
suffice for adequate reasoning to combine under the circumstances.
Furthermore, given Hoefig’s focus on and requirement for providing a range
of viewing of at least 150◦ relative to the longitudinal axis of the shaft, and
Saadat’s inability to provide that range, the Examiner’s statement that both
Hoefig and Saadat are designed for the same purpose is unsupported.
For the foregoing reasons, we conclude that the Examiner has not set
forth a prima facie case that any of claims 7–10 would have been obvious
over Hoefig and Saadat.
CONCLUSION
Appellant has not shown error in the final rejection of claims 1–6, 11,
and 12 as anticipated by Hoefig.
Appellant has shown error in the final rejection of claim 1 as obvious
over Durell and Hoefig.
Appellant has shown error in the final rejection of claims 1–12 as
obvious over Durell and Saadat.
Appellant has shown error in the final rejection of claims 1–12 as
obvious over Saadat and Hoefig.
Appellant has shown error in the final rejection of claims 7–10 as
obvious over Hoefig and Saadat.
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DECISION
The rejection of claims 1–6, 11, and 12 as anticipated by Hoefig is
affirmed.
The rejection of claim 1 as obvious over Durell and Hoefig is
reversed.
The rejection of claims 1–12 as obvious over Durell and Saadat is
reversed.
The rejection of claims 1–12 as obvious over Saadat and Hoefig is
reversed.
The rejection of claims 7–10 as obvious over Hoefig and Saadat is
reversed.
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-IN-PART