Covidien LP

Patent Trials and Appeals Board

Oct 2, 2020

2020001162 (P.T.A.B. Oct. 2, 2020)

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.
14/729,664 06/03/2015 Desheng Huang 355630 (203-10376) 5483
50855 7590 10/02/2020
Covidien LP
60 Middletown Avenue
Mailstop 54, Legal Dept.
North Haven, CT 06473
EXAMINER
WU, PAMELA F
ART UNIT PAPER NUMBER
3795
NOTIFICATION DATE DELIVERY MODE
10/02/2020 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@carterdeluca.com
rs.patents.two@medtronic.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte DESHENG HUANG,
RUOXI SUN, and WEI ZHANG
__________

Appeal 2020-001162
Application 14/729,664
Technology Center 3700
__________

Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.

REIMERS, 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, 3, 8–13, 19–24, and 27–32. Claims
2, 4–7, 14–18, 25, and 26 have been canceled. Final Act. 1–2.2 We have
jurisdiction under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “Covidien
LP. The ultimate parent of Covidien LP is Medtronic plc.” Appeal Brief
(“Appeal Br.”) 1, filed May 28, 2019.
2 Final Office Action (“Final Act.”), dated Dec. 31, 2018.
Appeal 2020-001162
Application 14/729,664

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We REVERSE.

CLAIMED SUBJECT MATTER
The claimed subject matter “relates to endosurgical devices and
systems for observing internal features of a body during minimally invasive
surgical procedures, and more particularly, to endoscope systems and the
like.” Spec. ¶ 1.
Claim 1, the sole independent claim on appeal, is representative of the
claimed subject matter and recites:
1. An endoscope comprising:
a handle;
an elongated body having a cylindrical wall extending
distally from the handle, the cylindrical wall of the elongated
body including a distal portion terminating at a distal end;
an image sensor disposed within the distal portion of the
cylindrical wall;
a lens disposed at the distal end of the cylindrical wall;
a light source including light-emitting diodes disposed at
the distal end of the cylindrical wall and positioned radially
outward of the lens;
a thermally conductive substrate disposed within the distal
portion of the cylindrical wall and including a distal side affixed
to the light source;
a heat sink disposed within the distal portion of the
cylindrical wall and extending to the distal end, the heat sink
having a cylindrical shape including an outer surface in full
contact with the cylindrical wall of the elongated body and an
inner surface having a profile matching the lens and the light
source, the heat sink including a distal side coupled to the
thermally conductive substrate; and
Appeal 2020-001162
Application 14/729,664

3
a thermally conductive adhesive disposed between the
distal side of the heat sink and the thermally conductive
substrate.

THE REJECTIONS3
I. Claims 1, 3, 8–10, 24, and 28–32 stand rejected under 35 U.S.C. § 103
as unpatentable over Krivopisk (US 2014/0316198 A1, published Oct. 23,
2014) and Rogers (US 2012/0320581 A1, published Dec. 20, 2012).
II. Claims 11–13, 19–23, and 27 stand rejected under 35 U.S.C. § 103 as
unpatentable over Krivopisk, Rogers, and Yamaguchi (US 2002/0184122
A1, published Dec. 5, 2002).

ANALYSIS
Rejection I – Obviousness over Krivopisk and Rogers
As to independent claim 1, the Examiner finds that Krivopisk
discloses an endoscope having a light source (illuminators 740a–740c), a
thermally conductive substrate (substrate 720), and a heat sink (manifold
2700 and housing 780). Final Act. 4–5 (citing Krivopisk Figs. 25, 27A).4
Appellant contends that Krivopisk does not disclose the limitation
“the heat sink having . . . an inner surface having a profile matching . . . the
light source,” as claimed. Appeal Br. 6. Appellant points out that

3 The rejection of claim 31 under 35 U.S.C. § 112, second paragraph, as
indefinite, has been withdrawn. See Examiner’s Answer (“Ans.”) 9, dated
Sept. 26, 2019; Final Act. 3.
4 The Examiner relies on Rogers for disclosing limitations other than those
discussed above. Final Act. 5–6.
Appeal 2020-001162
Application 14/729,664

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Krivopisk’s illuminators 740a–740c “are disposed on” substrate 720,
“which, in turn, is placed against a distal end of” housing 780. Id. at 7.
The Examiner responds that the limitation at issue is disclosed in
Krivopisk’s Figure 27A. Ans. 10. The Examiner asserts that this limitation
is broad and interprets “profile matching” as “any configuration and/or
shape that correspondingly ‘matches’ or ‘fits’ with the lens and the light
source.” Id. at 12.
Appellant has the better position here. The Specification does not
define “profile matching.” Spec., passim. However, the Specification
discloses that “[t]he profile of the heat sink 172 may be designed to match
the lens 144 and the light source 150 so that in addition to conducting heat,
the heat sink 172 also aids in fixing the lens 144 and the light source 150
within the elongated body 114.” Spec. ¶ 39 (emphases added). We thus
construe “profile matching” as “any configuration or shape that
correspondingly matches or fits for aiding fixation” within the elongated
body of the endoscope.
Figure 25 of Krivopisk is reproduced below.

Appeal 2020-001162
Application 14/729,664

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Figure 25 of Krivopisk above “shows a perspective view of a flexible
illumination circuit board” including substrate 720 having connector 726,
and illuminators 740a–740c. Krivopisk ¶¶ 245, 683, 690.
Figure 27A of Krivopisk is reproduced below.

Figure 27A of Krivopisk above “shows a perspective view of an
endoscope’s tip section” having illuminators 740a–740c, manifold 2700, and
housing 780. Krivopisk ¶¶ 250, 682, 693, 696. As seen from Figures 25 and
27A, illuminators 740a–740c are positioned on connector 726. It is
connector 726––rather than illuminators 740a–740c––that contacts the inner
surfaces of manifold 2700 and housing 780. Thus, the inner surfaces of
manifold 2700 and housing 780 (corresponding to the claimed heat sink)
cannot be said as having a configuration or shape that correspondingly
matches or fits with illuminators 740a–740c (corresponding to the claimed
light source) for aiding fixation within the elongated body of the endoscope.
As such, the Examiner does not establish adequately by a preponderance of
the evidence that Krivopisk discloses the limitation “the heat sink having
. . . an inner surface having a profile matching . . . the light source,” as
required by claim 1.
Appeal 2020-001162
Application 14/729,664

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Accordingly, for the above reasons, we do not sustain the Examiner’s
rejection of claim 1, and claims 3, 8–10, 24, and 28–32 depending therefrom
as unpatentable over Krivopisk and Rogers.

Rejection II – Obviousness over Krivopisk, Rogers, and Yamaguchi
Claims 11–13, 19–23, and 27 depend either directly or indirectly from
claim 1. Appeal Br. 16–17 (Claims App.). The Examiner relies on
Yamaguchi for disclosing “an integrated processor disposed within the
handle.” Final Act. 8. Thus, the Examiner does not rely on the teachings of
Yamaguchi in any manner that remedies the deficiencies of the combination
of Krivopisk and Rogers discussed above. Accordingly, for reasons similar
to those discussed above for claim 1, we do not sustain the Examiner’s
rejection of claims 11–13, 19–23, and 27 as unpatentable over Krivopisk,
Rogers, and Yamaguchi.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 3, 8–10, 24,
28–32
103 Krivopisk,
Rogers
1, 3, 8–10,
24, 28–32
11–13, 19–23,
27
103 Krivopisk,
Rogers,
Yamaguchi
11–13, 19–
23, 27
Overall
Outcome
1, 3, 8–13,
19–24, 27–32

REVERSED