Ex Parte Measamer

Patent Trial and Appeal Board

Feb 20, 2013

11742110 (P.T.A.B. Feb. 20, 2013)

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.
11/742,110 04/30/2007 John P. Measamer END-5618USNP 4276
21884 7590 02/21/2013
WELSH FLAXMAN & GITLER LLC
2000 DUKE STREET, SUITE 100
ALEXANDRIA, VA 22314
EXAMINER
SCHAPER, MICHAEL T
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
02/21/2013 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 JOHN P. MEASAMER
____________

Appeal 2010-012234
Application 11/742,110
Technology Center 3700
____________

Before JAMES P. CALVE, LYNNE H. BROWNE, and,
NEIL T. POWELL, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the rejections of claims
1, 5, 7, 8, 10, 11, 14, 16, 17, 19, and 20 under 35 U.S.C. § 103(a) as being
unpatentable over Ouchi (US 6,375,650 B1; iss. Apr. 23, 2002). App. Br. 3.
Claims 6, 9, 15, and 18 are withdrawn and claims 2-4, 12, and 13 are
cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2010-012234
Application 11/742,110

2
CLAIMED SUBJECT MATTER
Claims 1 and 11 are independent. Claim 1 is reproduced below:
1. An endoscopic instrument for performing
surgical procedures, said instrument comprising:
an elongate member having a distal end for
insertion into a patient's body and a proximal end
opposite the distal end, the member having a distal
portion adjacent the distal end and a central portion
adjacent the distal portion;
wherein the distal portion has a first
mechanical stiffness being a stiffness in tension of
between about 5 lbf/in and about 20 lbf/in and a
stiffness in bending of between about 0.02 lbf/in
and about 0.40 lbf/in, and the central portion has a
second mechanical stiffness being a stiffness in
tension of between about 5 lbf/in and about 20
lbf/in and a stiffness in bending of between about
0.02lbf/in and about 0.40 lbf/in; and
wherein the first mechanical stiffness is
greater than the second mechanical stiffness.

ANALYSIS
The Examiner found that Ouchi discloses a surgical endoscopic
instrument with an elongate member 1a, 1b having a distal end 1a and a
proximal end 1b wherein the distal portion has a first mechanical stiffness in
tension and bending, the central portion has a second mechanical stiffness in
tension and bending, and the first mechanical stiffness is inherently greater
than the second mechanical stiffness because of the greater coil thickness of
the distal end relative to the proximal end. Ans. 4. The Examiner found that
although Ouchi does not disclose the claimed stiffness ranges, it would have
been obvious for the first mechanical stiffness to have a stiffness in tension
of between 5-20 lbf/in and a stiffness in bending of about between 0.02-0.4
Appeal 2010-012234
Application 11/742,110

3
lbf/in and for the second mechanical stiffness to have a stiffness in tension of
between about 5-20 lbf/in and a stiffness in bending of about between 0.2-
0.4 lbf/in as a matter of discovering optimum or workable ranges involving
only routine skill in the art because the general conditions of the claim are
disclosed in the prior art. Ans. 6. The Examiner determined that the relative
stiffness of elements 1a and 1b are established through inherency so a skilled
artisan would have configured the distal and central portions 1a, 1b with the
claimed stiffness ranges without undue experimentation because Appellant
has not disclosed that the claimed ranges are for any specific purpose other
than being optimal values. Ans. 7.
Appellant argues that the Examiner relies on unsupported inherency
arguments and just because coils of distal end 1a are thicker than the coils of
proximal end 1b in Ouchi is not indicative of increased stiffness because a
number of factors determine the stiffness of a coiled spring besides spring
thickness. App. Br. 8-9. Appellant also argues that claims 1 and 11 recite
specific stiffness ranges in tension and bending. App. Br. 10-11. Appellant
argues that the claimed ranges are recited in combination with the first
mechanical stiffness being greater than the second mechanical stiffness such
that the claimed ranges require a specific relationship between the distal and
central portions. App. Br. 10.
The Examiner has not established that the prior art recognizes that the
relative mechanical stiffness in bending and tension of the distal and central
portions of an endoscope are result effective variables such that a skilled
artisan would have been motivated to experiment and optimize the tension
and bending stiffness of the distal and central portions of the endoscope to
achieve the claimed stiffness ranges as matter of routine experimentation.
Appeal 2010-012234
Application 11/742,110

4
Ouchi discloses an endoscope with a flexible sheath 1 with a firm portion 1a
at the distal end and a non-firm portion 1b adjacent to the rear end of the
firm portion 1a. Col. 2, l. 66 to col. 3, l. 6. The Examiner has not identified,
nor do we discern where Ouchi describes how the mechanical stiffness in
bending and tension of the distal and central portions are determined such
that these values constitute result effective variables to be optimized through
routine experimentation, nor has the Examiner shown that the prior art
discloses any particular ranges or values for such stiffnesses such that it
would have been obvious to arrive at the claimed stiffness ranges of claims 1
and 11 through routine experimentation. See In re Antonie, 559 F.2d 618,
620 (CCPA 1977) (discovery of an optimum value of a variable is normally
obvious except when the parameter optimized is not recognized to be a
result-effective variable or the results of optimizing the variable are
unexpectedly good). As such, we cannot sustain the rejection of claims 1, 5,
7, 8, 10, 11, 14, 16, 17, 19, and 20.
DECISION
We REVERSE the rejections of claims 1, 5, 7, 8, 10, 11, 14, 16, 17,
19, and 20.

REVERSED

Klh