Ex Parte Eisele

Patent Trial and Appeal Board

Oct 31, 2016

12784265 (P.T.A.B. Oct. 31, 2016)

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.
12/784,265 05/20/2010 Hans-Peter Eisele 02581-P1257A 8464
131672 7590 11/01/2016
Whitmyer IP Group LLC
600 Summer Street
3rd Floor
Stamford, CT 06901
EXAMINER
NEWTON, ALEXANDRA L
ART UNIT PAPER NUMBER
3779
MAIL DATE DELIVERY MODE
11/01/2016 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 HANS-PETER EISELE
____________________

Appeal 2014-005931
Application 12/784,265
Technology Center 3700
____________________

Before LINDA E. HORNER, BRANDON J. WARNER, and
LEE L. STEPINA, Administrative Patent Judges.

STEPINA, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Hans-Peter Eisele (“Appellant”) appeals under 35 U.S.C. § 134 from
the Examiner’s decision to reject claims 1–4 and 7–14.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 An oral hearing was conducted on October 21, 2016.
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CLAIMED SUBJECT MATTER
The claims are directed to an endoscope with an eye-piece tiltable via
a metal bellows. Spec. 1 (Title). Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. An endoscope, comprising:
a shaft, which in its distal end area comprises a lens system
for receiving an endoscopic image;
an endoscope head, which includes a first head section,
which is connected with the shaft, as well as a second head
section, which comprises an eyepiece, such that the second head
section is tiltably connected with the first head section; and
an image conductor, which is flexible at least in sections,
for transmitting the image recorded by the lens system to the eye-
piece;
wherein the image conductor is enclosed by protective
tube that continues from the shaft as far as the second head
section, and is flexibly tiltable at least in sections;
wherein the protective tube is surrounded by a metal
bellows in the area of a curvature section; and
wherein the metal bellows is connected in a steam-tight
manner in its distal end area with an exterior housing of the first
head section.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ehmsen
Rutherford
Francois
Schwartz
Renner
US 5,377,668
US 7,487,563 B2
US 2003/0149338 A1
US 2007/0074720 A1
US 2007/0276186 A1

Jan. 3, 1995
Feb. 10, 2009
Aug. 7, 2003
Apr. 5, 2007
Nov. 29, 2007

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Application 12/784,265
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Kiedrowski2

DE 103 51 185 A1 June 9, 2005
REJECTIONS
(I) Claims 1–4, 7–9, and 11 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Kiedrowski, Renner, and Francois.3
(II) Claims 10 and 13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kiedrowski, Renner, Francois, and Ehmsen.4
(III) Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Kiedrowski, Renner, Francois, and Rutherford.
(IV) Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Kiedrowski, Renner, Francois, and Schwartz.

OPINION
Rejection (I)
The Examiner finds that Kiedrowski discloses most of the elements
recited in claim 1, including a protective tube and metal bellows, but does
not disclose that the protective tube is located in a bending section and is
flexibly tiltable in sections. Final Act. 2–3. Nonetheless, the Examiner
finds that Renner discloses these features, and the Examiner reasons that it
would have been obvious “to utilize the protective tube of Renner with the
endoscope of Kiedrowski in order to protect the image carrying system from

2 Our references to the text of Kiedrowski are to an English-language,
machine-translation of this reference made of record on May 23, 2012.
3 Although the heading for this rejection lists only claim 1, the discussion
after the heading indicates that the rejection applies to claims 1–4, 7–9, and
11. See Final Act. 2–4.
4 The heading for this rejection lists only claim 10, but the body of the
rejection also addresses claim 13. See Final Act. 4–5.
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being damaged by the bending portion from all sides equally.” Final Act. 3
(citing Renner ¶ 62). Thus, the Examiner’s proposed combination of
Kiedrowski and Renner provides a protective tube around the image
conductor 11 in the area of bending, which is also the area surrounded by
metal bellows 23 of Kiedrowski. See Kiedrowski, Fig. 1.
Appellant contends that one benefit of the arrangement recited in
claim 1 is that the bellows limits the bending range of the protective tube
and the image guide, thereby preventing damage to the image guide. Appeal
Br. 5–6. Appellant argues that Kiedrowski limits bending range via
components other than a bellows, and, in any event, the image guide taught
by Kiedrowski does not need protection from excessive bending. Appeal Br.
7–8. Appellant also contends that the Examiner’s proposed modification to
Kiedrowski would make Kiedrowski’s device unnecessarily stiffer, and there
is no indication that bellows 23 of Kiedrowski would provide anything other
than a protective effect, i.e., there is no need to protect image conductor 11
from bellows 23. Appeal Br. 7–10.
In response, the Examiner notes that claim 1 does not recite any
particular flexibility requirements for the protective tube or any protective
effect of the bellows against over-bending. See Ans. 2–3. As for whether
there would be any benefit to adding the protective tube in the area of
bending (surrounded by bellows 23) in Kiedrowski, the Examiner states,
“Renner teaches that the passage through which the image guide passes is
free from projections to prevent damage to the image guide, and also the
image guide is surrounded by a protective tube to offer additional protection
against the image carrying system being damaged by the joint (paragraph
[0062]).” Ans. 4–5. The Examiner also emphasizes that the rejection of
claim 1 does not rely on any finding that the bellows in Kiedrowski “actively
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damages the image guide,” and instead, the Examiner’s rationale for
modifying Kiedrowski is based on providing additional protection. Ans. 4–
5.
In the Reply Brief, Appellant reiterates the argument that there would
have been no reason to modify Kiedrowski as proposed by the Examiner.
Reply Br. 2–3. In this regard, Appellant states, “Renner’s tube would be
difficult to install inside the metal bellows of Kiedrowski and would provide
no benefit - it would actually degrade the performance of the Kiedrowski
system.” Reply Br. 2.
We do not agree with Appellant’s arguments regarding the
Examiner’s proposed combination of Kiedrowski and Renner. The
Examiner’s rationale for including protective tubing in bending area 5 of
Kiedrowski, surrounded by bellows 23, to provide additional protection to
image conductor 11 (see Final Act. 3; see also Ans. 4–6), does not require an
explicit teaching that an unsolved problem exists in Kiedrowski, such as, for
example, that bellows 23 damages image conductor 11. Rather, the
Examiner’s rationale provides an improvement to Kiedrowski’s device. See
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“if a technique has
been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill.”). Although Appellant asserts that protective tube 56 would be
unsuitable for use in bending area 5 of Kiedrowski and would require
increasing the size of bellows 23 of Kiedrowski (Appeal Br. 9), Appellant
provides no persuasive technical argument or evidence that the Examiner’s
proposed modification would have been beyond the capabilities of a person
of ordinary skill in the art. Further, as the Examiner indicated (Ans. 4–5),
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Renner takes measures to ensure that passage 54, in which image carrying
system 28 is disposed, is free of projections, and “[a]s a result, damage to the
image carrying system 28 by the inner side of the joint 32 is prevented.”
Renner ¶ 62. Notwithstanding the projection-free arrangement of passage
54, Renner states, “[i]n addition, the protective tube 56 offers additional
protection against the image carrying system 28 being damaged by the joint
32.” Renner ¶ 62. Accordingly, Renner provides protective tube 56 as
supplemental protection for image carrying system 28, despite the apparent
lack of any particular problem indicating a need for such protection. Thus,
the Examiner’s rationale for modifying Kiedrowski, to include protective
tubing in bending area 5 (the same way Renner teaches providing additional
protection in a corresponding area) is supported by rational underpinnings.
The Examiner also finds that Kiedrowski does not disclose a “metal
bellows . . . connected in a steam-tight manner with the first head section,
though Kiedrowski does teach being gas-tight in a proximal end portion.”
Final Act. 3 (citing Kiedrowski ¶ 31). The Examiner relies on Francois to
teach an endoscope with a bellows connected at each end via a steam-tight
connection, namely, soldering, and the Examiner determines that it would
have been obvious to use the soldered connection taught by Francois to
provide a leak-proof seal that can withstand high pressures. Final Act. 3
(citing Francois ¶ 77).
Appellant asserts that bellows 10 of Francois are pressurized from the
inside and “[t]he fact that the Francois bellows are soldered to retain an
internal hydraulic pressure does not imply that they are steam-tight. The
Francois bellows are designed to withstand internal pressure, not seal an
interior region from ambient steam.” Appeal Br. 10.
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In response, the Examiner, quoting paragraph 31 of Kiedrowski, finds
that Kiedrowski teaches a steam-tight connection for a bellows made by
soldering, and notes that Renner is relied upon for teaching soldering both
ends of the bellows. Ans. 6.
Discussing an embodiment in which bellows 23 may replace an
external structure 18, 19, 20, Kiedrowski states, “[t]he bellows [23] would
then connect to a gas-tight at its proximal end with the end piece 15, for
example, by soldering. Just as he would connect gas-tight at its proximal
end portion with the cladding tube 8.” Kiedrowski ¶ 31.5 Thus, Kiedrowski
discloses making a gas-tight connection via soldering. Similarly, Francois
teaches providing a leakproof connection for a bellows via soldering.
Francois ¶ 77. Regarding the ability of a soldered connection to seal against
steam, Appellant’s Specification states, “[t]o achieve a steam-tight
connection between the metal bellows and the housing, a cylindrical distal
end section of the metal bellows can be inserted in a corresponding borehole
of the housing and connected in insulated manner with the housing, for
instance through cementing, welding, or soldering.” Spec. ¶ 28. Appellant
does not provide any persuasive evidence or technical reasoning as to why
the soldered connection in the Examiner’s proposed combination of
Kiedrowski and Francois would not be steam-tight. Accordingly, we do not
agree with Appellant’s argument on this point.
Appellant also asserts that “Francois is completely unrelated to the
claimed device or the other two references, [and] a person having ordinary

5 Paragraphs 22 and 23 of Kiedrowski also indicate that connections between
protective tube 8, transition piece 22, and bellows 23, as well as transition
piece 24, are gas-tight and made via soldering.
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skill would see no reason to combine it with the other two to attempt to
construct the device of claim 1.” Appeal Br. 10.
To the extent Appellant asserts that Francois is non-analogous art, we
disagree. Our reviewing court has set forth a two-prong test for determining
whether a prior art reference is analogous: (1) whether the reference is from
the same field of endeavor as the claimed invention, and (2) even if the
reference is not within the same field of endeavor, whether the reference is
reasonably pertinent to the particular problem with which the inventor is
involved. In re Klein, 647 F.3d 1343 (Fed. Cir. 2011). Appellant’s
argument is not persuasive because, as noted by the Examiner (Ans. 7), both
Appellant’s claimed invention and Francois relate to the field of endoscopes
(see, e.g., Francois ¶ 1).
To the extent Appellant asserts that the Examiner has not provided an
adequate rationale for combining Kiedrowski and Francois, Appellant has
provided no persuasive explanation as to why the Examiner’s reasoning to
modify Kiedrowski, “to provide a leakproof seal that can withstand high
pressures” (Final Act. 3), would be insufficient.
We have considered all of Appellant’s arguments for the patentability
of claim 1, but we find them to be unpersuasive. Accordingly, we sustain
the Examiner’s rejection of claim 1 as unpatentable over Kiedrowski,
Renner, and Francois. Appellant makes no separate arguments for the
patentability of any of claims 2–4, 7–9, and 11 (Appeal Br. 11–12), and
these claims fall with claim 1, from which they depend.
Rejections (II)–(IV)
Appellant relies on the above-noted arguments for Rejection (I) to
address Rejections (II)–(IV). Appeal Br. 12–14. For the same reasons
discussed above for Rejection (I), we sustain Rejections (II)–(IV).
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DECISION
The Examiner’s decision to reject claims 1–4 and 7–14 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED