Ex Parte Horne et al

Board of Patent Appeals and Interferences

Jan 30, 2012

10766295 (B.P.A.I. Jan. 30, 2012)

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.
10/766,295 01/27/2004 Guy E. Horne JR. 02579-P0027B 9340
24126 7590 01/30/2012
ST. ONGE STEWARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
EXAMINER
KASZTEJNA, MATTHEW JOHN
ART UNIT PAPER NUMBER
3779
MAIL DATE DELIVERY MODE
01/30/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GUY E. HORNE JR and JAMES P. BARRY
____________________

Appeal 2010-000500
Application 10/766,295
Technology Center 3700
____________________

Before STEVEN D.A. McCARTHY, ROBERT A. CLARKE and
CHARLES N. GREENHUT, Administrative Patent Judges.

CLARKE, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-000500
Application 10/766,295

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A. Statement of the Case

Appellants seek review under 35 U.S.C. § 134(a) of a rejection mailed
November 7, 2008. An oral hearing was held on October 25, 2011. A
transcript of the hearing was mailed on November 30, 2011.
The application was filed on January 27, 2004. The application
claims the benefit of the prior provisional application 60/443,491 filed on
January 29, 2003.
Claims 1-7 and 10-13 are on appeal. Claims 8, 9, 14 and 15 have
been cancelled. App. Br.
1
2. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The following prior art has been cited by the Examiner:
Krauter U.S. Patent 5,275,152 4 Jan. 1994
Abe U.S. Patent 6,540,669 B2 01 Apr. 2003, filed on
31 Aug. 2001
2

Konstorum U.S. Patent 6,749,560 B1 15 Jun. 2004, filed on
26 Oct. 1999

B. Findings of Fact
The following findings of fact are supported by a preponderance of
the evidence.

1
All references to App. Br. are to the appeal brief of April 1, 2009.
2
Konstorum and Abe are available as prior art under at least 35 U.S.C.
§ 102(e). Appellants did not contest that the references were available as
prior art.
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Application 10/766,295

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Field of the Invention
The Appellants’ claimed invention relates to a composite flexible
endoscope insertion shaft. Spec.
3
1, [0002].

Claims on Appeal
Independent Claim 1 reads
1. An endoscope insertion shaft comprising:
a tubular member including
a continuous wall to form a closed interior,
said tubular member having an axis and
said continuous wall including
at least one aperture for increasing the flexibility thereof; and
a sheath comprising at least the following layers:
a braided layer;
a laminating layer;
a wear layer;
wherein the braided layer jackets the continuous wall of said
tubular member; and
a barrier layer comprising a polyester wrap is disposed
between the continuous wall of said tubular member and the
braided layer and jackets the tubular member to form a seal
therebetween along the length of the tubular member.

Claim 13, the other independent claim, adds that at least the barrier, braided
and laminating layers are formed as a single composite structure, but does
not require that the four layers form a sheath.

3 All references to Spec. are to Appellant’s Specification filed January 27,
2004.
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Application 10/766,295

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Examiner’s Rejection
In the Examiner’s Answer the Examiner maintained the rejection of
Claims 1-7 and 10-13 under 35 U.S.C. § 103(a) as being unpatentable over
Krauter, Konstorum and Abe. Ans. 4.
4

Prior Art
(1) Krauter
The Examiner found and Appellants agree that Krauter describes a
tubular member 21, and a sheath having a braided layer 23 jacketing the
tubular member, a wear layer 24 and a barrier layer 22 between the tubular
layer and the braided layer. Ans. 4, App. Br. 5, 6. We note that coating 24
impregnates and adheres to the braid 23 and to the jacket 22 and that jacket
22 is made of urethane or other plastic, elastomeric non conductive material.
Col. 3, ll. 43-49. See figure 2 of Krauter below.

Figure 2 of Krauter illustrates a multi-layer structure.
(2) Abe
The Examiner found and Appellants agree that Abe describes an outer
cover made up of an inner layer 32, an intermediate layer 33 and an outer
layer 34. Moreover, the Examiner and Appellants agree that layer 32 adheres
to at least the braided layer which it jackets. Appellants argues that Abe
does not have a barrier layer and that the layer 32 functions by adhering to

4 All references to Ans. are to the Answer dated June 17, 2009.

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both a braided layer 22 and inner coil 21. Ans. 5-6, App. Br. 6-7. We note
that Abe describes the alternative construction of outer cover 3 from a
plurality of layers as making it possible to enjoy the advantages of the
respective materials used in each layer. Col. 12, ll. 31-34. See figure 5 of
Abe below.
Figure 5.

Figure 5 of Abe illustrating a multi layer construction.

(3) Konstorum
The Examiner and Appellants agree that Konstrum describes an
endoscope shaft that includes a slotted tube made of a superelastic or shape
memory alloy. They also agree that the slots are arranged to increase the
flexibility of the tube. Ans. 4-5, App. Br. 7.
Specification
The Specification indicates that the advantage of providing a layered
structure for the at least four layers of the sheath is that the sheath will
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exhibit the additive characteristics of the individual layers in a single
composite structure. Spec. 6-7, paras [0021-0022].

C. Appellants’ Contentions

I. Krauter fails to disclose a laminating layer and only describes three
layers jacketing the monocoil. App. Br. 5-6, Rep. Br. 2.
II. Abe fails to disclose a barrier layer between the braided layer and
the helical coil. App. Br. 6.
III. Abe’s inner layer 32 of the outer cover not only adheres to braided
layer 22 but also coil 21 and therefore layer 32 can not function as the
laminating layer of the present invention. App. Br. 7, 9; Rep. Br. 3-4.
IV. That Krauter requires a barrier layer to isolate monocoil 21, thus
coating layer 24 of Krauter would not extend into the monocoil 21. Rep. Br.
3.
V. That Claims 1 and 13 require the laminating layer be over the
braided layer, and the wear layer. App. Br. 9
VI. That the inner layer of Abe if arranged as proposed in the device
of Krauter would not function as intended by Abe because the jacket 22 of
Krauter would prevent any protrusions formed by the inner layer of Abe
from reaching through the braid layer and into the gaps of the monocoil.
App. Br. 9-10.

Issue:

Whether a person of ordinary skill in the art aware of the teaching in
Abe that separating outer layer 3 into at least an inner layer 32 and outer
layer 34 would allow for selection of materials for inner layer 32 to provide
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improved adhesion characteristics, would have replaced the single layer 24
of Krauter which provides both durability and adhesion to the braided layer
of Krauter with a first durable layer made of a material to have improved
durability and a second inner adhesive layer made from a material to
improve adhesion?

PRINCIPLES OF LAW

The test for obviousness is whether the references, taken as a whole,
would have suggested Appellant’s invention to a person having ordinary
skill in the art at the time the invention was made. See In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 426
(CCPA 1981) (One cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references.).
“To justify combining reference teachings in support of a rejection it
is not necessary that a device shown in one reference can be physically
inserted into the device shown in the other. The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the references.”
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (Internal citations omitted).
See also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not
necessary that the inventions of the references be physically combinable to
render obvious the invention under review.”); and In re Nievelt, 482 F.2d
965, 968 (CCPA 1973) (“Combining the teachings of references does not
involve an ability to combine their specific structures.”). Moreover, an
artisan must be presumed to know something about the art apart from what
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the references disclose, see In re Jacoby, 309 F.2d 513, 516 (CCPA 1962),
the artisan is not compelled to blindly follow the teaching of one prior art
reference over the other without the exercise of independent judgment, see
Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984),
and skill is presumed on the part of those practicing in the art, see In re
Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985).

D. Analysis
Abe recognizes that replacing a single outer layer 3 of Abe into
constituent layers make it possible to select materials for use in each
constituent layer based on the properties desired. Col. 10, ll. 40-47.
Moreover, Abe specifically describes that an inner most layer 32 be
provided as part of the outer layer to improve adhesion. Col.10, ll. 55-57.
We agree with the Examiner that a person of ordinary skill in the art would
have recognized this description in Abe and would have been motivated to
provide improved adhesion between the outer layer to the braided layer of
the Krauter device.
Appellant’s first and second contentions attack the references
individually while the rejection was made on a combination of references.
We are not persuaded by those arguments.
Appellant’s third and fourth contentions are based on a premise that
since Abe describes its adhesive layer as adhering to both the braided and
tubular member, that a person of ordinary skill in the art would only
consider the teaching if used in the same manner. A person of ordinary skill
in the art is not an automaton and would consider improved adhesion as
being beneficial regardless of whether adhesion is made between two layers
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or between a first layer to and through a second layer and into a third layer.
Moreover, Krauter describes that the adhesive material of the outer layer 24
would adhere to both the jacketed braided layer 23 and underlying jacket 22.
The modification proposed by the Examiner is nothing more than the simple
substitution of one known element, namely the improved multi-layer outer
layer of Abe that adheres to both the braided layer and its underlying layer,
for another, namely the single layer having adhesive properties that binds to
both the braided layer and its underlying layer of Krauter to perform the
same function. See KSR, 550 U.S. at 416, 417. See also Anderson's-Black
Rock, Inc. v. Pavement Salvage Co., Inc., 396 U.S. 57 (1969) (paving repair
apparatus consisting of a combination of three known elements, all
performing their established functions in the combination, held obvious).
Contention V is inconsistent with the actual language of Claims 1 and
13 which do not require any particular order between the wear and laminate
layers, is inconsistent with dependent claim 11 which requires that the wear
layer jacket the laminating layer, and with the order described in the
specification which describes that the wear layer jackets the laminate layer.
Spec. [0020]. Accordingly we are not persuaded by contention V.
Contention VI is an argument by counsel that a device constructed as
proposed by the Examiner would be inoperative. The Examiner made
findings, which we adopt, that Krauter teaches a barrier layer made of
urethane which is similar to the coating layer 231 of Abe. Ans. 8. Given that
the adhesive layer 32 in Abe is selected to have a strong bond with coating
layer 231, the Examiner found that using an adhesive layer such as described
in Abe in the Krauter device would not only be operative, but would have a
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strong bond to both the braided and barrier layers. Ans. 8. We adopt the
Examiner’s findings.

DECISION

The decision to reject claims 1-7 and 10-13 under 35 U.S.C. § 103(a)
as being unpatentable over Krauter, Konstorum and Abe is affirmed.

AFFIRMED

KMF

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