Ex Parte Kindler

Patent Trial and Appeal Board

Jul 11, 2018

14013366 (P.T.A.B. Jul. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/013,366 08/29/2013 Gereon Kindler
154825 7590 07/11/2018
KS - Whitmyer IP Group LLC
600 Summer Street
3rd Floor
Stamford, CT 06901
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
02581-Pl638A 6341
EXAMINER
BOLER, RYNAE E
ART UNIT PAPER NUMBER
3779
MAIL DATE DELIVERY MODE
07/11/2018 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 GEREON KINDLER
Appeal 2016-005534
Application 14/013,366
Technology Center 3700
Before EDWARD A. BROWN, ARTHUR M. PESLAK, and
SEAN P. O'HANLON, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek review under 35 U.S.C. § 134(a) of the Examiner's
decision, as set forth in the Final Office Action dated April 9, 2015 ("Final
Act."), rejecting claims 1-20. We heard oral argument on June 28, 2018.
We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE and enter a NEW GROUND OF REJECTION.
1 Appellants are the Applicants, Karl Storz GmbH & Co. KG and Storz
Endoskop Produktions GmbH. Karl Storz GmbH & Co. KG is identified as
the real party in interest. Appeal Br. 2.
Appeal 2016-005534
Application 14/013,366
CLAIMED SUBJECT MATTER
Claims 1, 9, and 10 are independent. Claim 1 illustrates the claimed
subject matter, and reads:
1. A shank for a flexible endoscope or for a flexible
endoscopic instrument, comprising a first shank portion and,
arranged in the distal direction from the first shank portion, a
second shank portion, wherein the second shank portion can be
angled relative to a distal end region of the first shank portion
by a longitudinal adjustment of at least one tensioning means
which is guided in a longitudinally displaceable manner inside
the second shank portion and connected to a distal end region of
the second shank portion, wherein, for the longitudinal
adjustment of the at least one tensioning means, provision is
made for at least one threaded drive, which can be driven by at
least one torsion shaft extending inside the first shank portion.
Appeal Br. 12 (Claims App.).
REJECTIONS
1. Claims 1--4, 6-9, and 11 are rejected under 35 U.S.C. § I03(a)
as unpatentable over Takahashi (US 4,203,430, issued May 20, 1980) and
Adachi (US 5,531,664, issued July 2, 1996).
2. Claim 5 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Takahashi, Adachi, and Lin (US 2010/0036202 Al, published Feb. 11,
2010).
3. Claim 12 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Takahashi, Adachi, and Smith (US 2008/0192236 Al, published Aug.
14, 2008).
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Appeal 2016-005534
Application 14/013,366
4. Claims 13-15 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Takahashi, Adachi, Smith, and Miyoshi (US
2013/0102960 Al, published Apr. 25, 2013).
5. Claims 10 and 16 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Y amaya, Takahashi, and Adachi.
6. Claim 17 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Yamaya, Takahashi, Adachi, and Smith.
7. Claims 18-20 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Y amaya, Takahashi, Adachi, Smith, and Miyoshi.
ANALYSIS
Rejection I-Claims 1-4, 6-9, and 11 over Takahashi and Adachi
Claims 1-4 and 6-8
As for claim 1, the Examiner finds that Takahashi discloses a shank
comprising a first shank portion (flexible connecting pipe 2), a second shank
portion (end section 3), at least one tensioning means (actuating wires 12,
13), and at least one threaded drive (wire control cylinder 8/bolt 6a, wire
control cylinder 9/bolt 7a) driven by at least one torsion shaft (rack gears 6,
7). Final Act. 2-3 (citing Takahashi, Figs. 1, 2). The Examiner finds
Takahashi does not disclose that the at least one threaded drive extends
within the first shank portion. Id. at 3. The Examiner further finds that
Adachi discloses a shank for a flexible endoscope comprising tensioning
means (wire 32) extending inside a bendable, second shank portion
(bendable portion 4) and a non-bendable drive (wire joint member 34/SMA
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Appeal 2016-005534
Application 14/013,366
wire 36/coil sheath 38/plug 40) extending inside "second shank portion
(2)."2 Final Act. 3 (citing Adachi, Fig. 2).
The Examiner concludes that it would have been obvious in view of
Adachi to place Takahashi's drive inside the first shank portion "as it
comprises components that cannot be bent in the second shank portion." Id.
The Examiner submits, "[t]he threaded drive of Takahashi is capable of
being driven by a torsion shaft placed anywhere inside of the apparatus.
Applicant has not claimed that the threaded drive 'is driven' by at least one
torsion shaft extending inside the first shank portion." Adv. Act. 2 (dated
July 13, 2015) (emphasis added).
Appellants contend that Takahashi discloses pinion and rack gears to
affect longitudinal displacement of wires, and not "at least one torsion shaft
extending inside the first shank portion," as claimed. Appeal Br. 6 ( citing
Takahashi, Abstract, col. 2, 1. 51---col. 3, 1. 2, Fig. 2).
The Examiner's finding that Takahashi discloses "at least one torsion
shaft extending inside the first shank portion" is not supported by a
preponderance of the evidence. Appellants' Specification describes, for
example, "the torsion shaft 10 can, for example, be driven by motor, in
particular be driven in a rotary manner by an electric motor ... [ and the]
torsion shaft 10 is elongate, thin and as rigid as possible in respect of
rotation." Spec. ,r 48 ( emphasis added). Accordingly, torsion shaft 10 is a
shaft that is rotated. In contrast, Figure 2 of Takahashi shows that rack gears
2 We understand the Examiner inadvertently refers to "second shank portion
(2)" instead of "first shank portion (2)" because Figure 2 of Adachi shows
elements 34, 36, 38, and 40 located inside flexible tube portion 2, not
bendable portion 4. See Adachi, Fig. 2.
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Appeal 2016-005534
Application 14/013,366
6, 7 are arranged in parallel mesh with pinion 5. See Takahashi, col. 2, 11.
51-56. Rotation of operating knob 4 causes rotation of pinion 5, resulting in
rack gears 6, 7 moving in opposite directions. Id. Even assuming rack gears
6, 7 can be considered a "shaft," rack gears 6, 7 undergo translational
movement, not rotation. See id. at Fig. 2. Accordingly, the Examiner does
not establish with evidence that rack gears 6, 7 are "at least one torsion
shaft," as this term would be understood by one of ordinary skill in the art in
view of the Specification.
Appellants also contend that Adachi fails to teach a torsion shaft.
Appeal Br. 8. We agree with Appellants that the Examiner does not
establish with evidence that the non-bendable drive of Adachi corresponds
to "at least one torsion shaft," as this term would be understood by one of
ordinary skill in the art.
Further, the Examiner has not provided an adequate reason with a
rational underpinning to modify Takahashi's endoscope such that rack gear
6 or 7 ("at least one torsion shaft") or wire control cylinder 8/bolt 6a or wire
control cylinder 9/bolt 7a ("at least one threaded drive") extends into flexible
connecting pipe 2. See Final Act. 3. However, claim 1 does not recite any
limitation that defines the location of the at least one threaded drive relative
to either the first shank portion or the second shank portion. Appeal Br. 12
(Claims App.). Hence, Takahashi need not be modified to result in the "at
least one threaded drive" extending into flexible connecting pipe 2 to meet
any claim limitation.
Appellants also contend that Takahashi's pinion 5 and rack gears 6, 7
for activating actuating wires 12, 13 are disposed entirely inside manual
operating section 1, and do not extend into the first shank portion. Id. at 6;
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Appeal 2016-005534
Application 14/013,366
Reply Br. 2 (citing Takahashi, col. 2, 11. 53-54, 63---65); see also Takahashi,
claim 1. We agree with Appellants that modifying Takahashi' s device by
moving rack gear 6 and/or 7, or wire control cylinder 8/bolt 6a and/or wire
control cylinder 9/bolt 7a, to extend into flexible connecting pipe 2 would
require substantial reconstruction and redesign of the depicted arrangement
of elements. Appeal Br. 9.
We also agree with Appellants that modifying Takahashi in this
manner would appear to result in flexible connecting pipe 2 no longer being
flexible, or in requiring rack gears 6, 7 (and wire control cylinder 8/bolt 6a,
wire control cylinder 9/bolt 7a) to be modified and made sufficiently flexible
to retain flexibility of the flexible connecting pipe 2. Reply Br. 3. The
Examiner has not, however, explained how or why Takahashi would be
further modified to address these resulting effects of the proposed
modification, without making Takahashi unsatisfactory for its intended
purpose. See Appeal Br. 9.
Thus, we do not sustain the rejection of claim 1, or of claims 2--4 and
6-8 depending therefrom, as unpatentable over Takahashi and Adachi.
Claims 9 and 11
Claim 9 is directed to a flexible endoscope with a shank as recited in
claim 1. Id. at 13 (Claims App.). The Examiner's findings and reasoning in
rejecting claim 9 are substantially the same as for claim 1. Final Act. 4--5.
Accordingly, we do not sustain the rejection of claim 9, or of dependent
claim 11, as unpatentable over Takahashi and Adachi for the same reasons
as for claim 1.
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Appeal 2016-005534
Application 14/013,366
Rejection 2-Claim 5 over Takahashi, Adachi, and Lin
Rejection 3-Claim 12 over Takahashi, Adachi, and Smith
Rejection 4-Claims 13-15 over Takahashi, Adachi, Smith, and Miyoshi
The Examiner's reliance on Lin, Smith, and/or Miyoshi in rejecting
dependent claims 5 and 12-15 does not cure the deficiencies in the rejection
of parent claims 1 or 9. Final Act. 5-7. Accordingly, we do not sustain the
rejections of claims 5 and 12-15 for the same reasons as for claims 1 and 9.
Rejection 5-Claims 10 and 16 over Yamaya, Takahashi, and Adachi
Regarding claim 10, the Examiner finds that Y amaya discloses a
flexible endoscopic instrument 2 having a shank (bending portion 5/flexible
tube portion 6), but does not disclose that the shank comprises the claimed
features. Final Act. 8. These missing features of Yamaya correspond to the
features of the shank recited in claim 9. Id.
We agree with Appellants that the Examiner's reliance on Takahashi
and Adachi fails to cure the deficiencies of Y amaya for the same reasons as
for claims 1 and 9. Appeal Br. 11. Accordingly, we do not sustain the
rejection of claim 10, or of claim 16 depending therefrom, for the same
reasons as for claim 10.
Rejection 6-Claim 17 over Yamaya, Takahashi, Adachi, and Smith
Rejection 7-Claims 18-20 over Yamaya, Takahashi, Adachi,
Smith, and Miyoshi
The Examiner's reliance on Smith and/or Miyoshi in rejecting
dependent claims 17-20 does not cure the deficiencies in the rejection of
parent claim 10. Final Act. 9-10. Accordingly, we do not sustain the
rejections of claims 17-20 for the same reasons as for claim 10.
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Appeal 2016-005534
Application 14/013,366
New Ground of Rejection
Pursuant to 37 C.F.R. § 4I.50(b), we enter a new ground of rejection
against claims 1-20 under 35 U.S.C. § 112, second paragraph, for the
following reasons.
Each of claims 1, 9, and 10 recites the limitation, "wherein, for the
longitudinal adjustment of the at least one tensioning means, provision is
made for at least one threaded drive, which can be driven by at least one
torsion shaft extending inside the first shank portion." Appeal Br. 12-14
(Claims App. (emphasis added)). As noted above, claim 1 does not recite
any limitation defining the location of the at least one threaded drive relative
to either the first shank portion or the second shank portion. Nor do claims 9
and 10 recite any such limitation. It is unclear whether the phrase "provision
is made" means that the at least one threaded drive is an element of the
shank, or whether the phrase means that the shank is capable of being used
with the at least one threaded drive "for the longitudinal adjustment of the at
least one tensioning means." In other words, does the phrase "provision is
made" merely indicate an intended use or capability of the shank?
Similarly, it is unclear whether the phrase "can be driven" means that
the at least one torsion shaft is an element of the shank "extending inside the
first shank portion," or whether the phrase means the at least one torsion
shaft can be used, or is capable of being used, with the shank to drive the at
least one threaded drive "for the longitudinal adjustment of the at least one
tensioning means." That is, does the phrase "can be driven" merely indicate
an intended use or capability of the shaft?
For these reasons, we determine that claims 1, 9, and 10, and claims
2-8 and 11-20 depending therefrom, fail to comply with the requirements of
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Appeal 2016-005534
Application 14/013,366
35 U.S.C. § 112, second paragraph. Therefore, we enter a new ground of
rejection of these claims under 35 U.S.C. § 112, second paragraph, as being
indefinite.
DECISION
We reverse the rejections of claims 1-20.
We enter a new ground of rejection of claims 1-20 under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). 37 C.F.R. § 41.50 (b) provides that "[a] new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review." 37 C.F.R. § 41.50 (b) also provides:
When the Board enters such a non-final decision, the
appellant, within two months from the date of the decision, must
exercise one of the following two options with respect to the new
ground of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
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Appeal 2016-005534
Application 14/013,366
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in MPEP § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
REVERSED
37 C.F.R. § 4I.50(b)
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