Ex Parte Tomioka et al

Board of Patent Appeals and Interferences

Sep 29, 2010

09893677 (B.P.A.I. Sep. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
______________

Ex parte MAKOTO TOMIOKA and HIROSHI TSUYUKI
______________

Appeal 2009-003655
Application 09/893,677
Technology Center 2600
______________

Before KENNETH W. HAIRSTON, JOHN C. MARTIN, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304 as recited in 37 C.F.R. § 41.52, begins
to run from the “MAIL DATE” (paper delivery mode) or the
“NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-
90A cover letter attached to this decision.
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Appellants have filed a Request for Rehearing on June 1, 2010
(“Request”) under 37 C.F.R. § 41.52 of the “New Decision on Appeal” dated
March 24, 2010 (“Decision”). Specifically, Appellants request rehearing of
the panel’s:
(1) affirmance of the Examiner’s rejection of claims 1 and 6-18 under
35 U.S.C. § 103(a) for obviousness over Igarashi ‘2322 in view of
Takahashi3 (Decision 5, 11);
(2) affirmance of the Examiner’s rejection of dependent claims 2-5
under § 103(a) for obviousness over Igarashi ‘232 and Takahashi and
Igarashi ‘6344 (id. at 5, 12); and
(3) entry of a new ground of rejection of claim 1 under 35 U.S.C.
§ 103(a) for obviousness over Takahashi considered with or without Igarashi
‘232 (id. at 12-20).

A. Discussion of Appellants’ arguments regarding the affirmed
rejections
In rejecting claims 1 and 6-18 for obviousness over Igarashi ‘232 in
view of Takahashi, the Examiner relies on Figures 1 and 2 of Takahashi.
(Final Action 4.) Our decision affirming the rejection is based on
Takahashi’s Figure 2 rather than Figure 1. (Decision 9.) Regarding our

2 Igarashi U.S. Patent 5,902,232, issued May 11, 1999.
3 Takahashi et al. U.S. Patent 5,588,948, issued Dec. 31, 1996.
4 Igarashi U.S. Patent 5,954,634, issued Sep. 21, 1999.
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reliance on Figure 2, Appellants argue that in affirming the Examiner’s
rejection,
the BPAI completely ignores Appellants[’] . . . argument with
regard to the disclosure of Fig. 2 of Takahashi, namely, that even
if the last lens included in bracket 6 (relay lens section) is located
inside operating/holding section 3, Takahashi still fails to disclose
or fairly suggest the feature of claim 1 regarding the relayed
image is formed between the relay optical system and the imaging
optical system in the camera head. (Reply Brief 8 [sic: Br.5 8]).
It is submitted that this is exactly what was argued during
the Oral Hearing, specifically, from page 2, line 10 through
page 3, line 25 of the transcript of the Oral Hearing[.]
(Request 3.)
Appellants’ reliance on the Brief and the oral hearing is misplaced.
The argument presented in the Brief regarding the location of the relayed
image is specifically directed to Figure 1 of Takahashi:
[T]he image formed by the relay lens 6 is not inside the
operation/holding section 3. As noted above, in Fig. 1 of
Takahashi, the relay lens 6 is in the insertion section 2 and the
image of an object is formed in the last lens of the relay lens.
Further, while Lens 9a (or 9b) forms an image of the image on the
CCD 11a (or 11b), these lenses correspond to the imaging optical
system in claim 1, and are not a part of the relay optical system.
Accordingly, it is submitted that Takahashi fails to disclose
or fairly suggest the feature of claim 1 regarding the relayed
image is formed between the relay optical system and the imaging
optical system in the camera head.

5 Appeal Brief filed March 27, 2007.
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(Br. 8.) The identical argument appears at page 4 of the Reply Brief.
Figure 2 of Takahashi is not mentioned in the Brief or the Reply Brief. The
Examiner cannot be faulted for failing to consider an argument that was not
made in the Brief or the Reply Brief.
Appellants’ reliance on the discussion of Takahashi’s Figure 2 during
the oral hearing is misplaced because “[a]ny arguments or authorities not
included in the brief or a reply brief filed pursuant to § 41.41 will be refused
consideration by the Board, unless good cause is shown,” 37 C.F.R.
§ 41.37(c)(1)(vii) (2009), and such good cause has not been alleged, let
alone demonstrated. See also MPEP § 1205.02 (8th ed., rev. 7, July 2008)
(“[A]rguments not presented in the brief or reply brief and made for the first
time at the oral hearing are not normally entitled to consideration.” (citing In
re Chiddix, 209 USPQ 78 (Comm’r Pat. 1980))); Rosenblum v. Hiroshima,
220 USPQ 383, 384 (Comm’r Pat. 1983) (“The purpose of oral argument at
final hearing is to emphasize and clarify written argument in the brief.”).
For the foregoing reasons, the Request is denied to the extent that
Appellants seek a change in our decision affirming the Examiner’s § 103(a)
rejection of claims 1 and 6-18 for obviousness over Igarashi ‘232 in view of
Takahashi.
We note that the Request does not separately argue the § 103(a)
rejection of claims 2-5, which is based on Igarashi ‘232 in view of
Takahashi and Igarashi ‘634.

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B. Discussion of Appellants’ arguments regarding the new ground of
rejection
At pages 16-19 of the Decision, we provided two alternative rationales
in support of the conclusion that it would have been obvious to implement
the rotatable connection between insertion section 2a and insertion section
2b in Takahashi’s Figure 14 embodiment as a detachable connection.

1. The first rationale -- obviousness based on Takahashi alone
The first rationale given by the panel for making the connection
between Takahashi’s insertion sections 2a and 2b detachable as well as
rotatable is that
such detachability would have been recognized as advantageous in
that it would permit replacement of either inserting section 2a or
the combination of inserting section 2b and operating/holding
section 3 in the event of failure of one of those components. See
Perfect Web Tech., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329
(Fed. Cir. 2009) (“[W]hile an analysis of obviousness always
depends on evidence that supports the required Graham [v. John
Deere Co., 383 U.S. 1 (1966)] factual findings, it also may include
recourse to logic, judgment, and common sense available to the
person of ordinary skill that do not necessarily require explication
in any reference or expert opinion.”).
(Decision 17.) In addition to relying on “common sense” as the motivation
for modifying Takahashi in this manner, we found that such a modification
would have been within the level of ordinary skill, noting the absence from
Appellants’ Application of any construction details concerning how to
implement the detachable and rotatable connection between front-end
insertion section 100 (Fig. 3) and camera head 500. See Decision 17 (“As
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evidenced by the absence of any construction details in their Application,
Appellants considered construction of a detachable and rotatable connection
between the insertion sections to be within the level of ordinary skill in the
art.”).
Appellants argue that “the BPAI comments regarding ‘common sense
available to the person of ordinary skill that do not necessarily require
explication in any reference or expert opinion’ appears to be unsupported
speculation and just a disguise for relying on the disclosure of the present
specification, which constitutes impressible [sic: impermissible] hindsight.”
(Request 7.) We remain of the view that a person having ordinary skill in
the art, without the benefit of a specific teaching reference or Appellants’
application, would have considered it advantageous to make Takahashi’s
rotatably connected components 2a and 2b detachable from each in order to
permit replacement of a damaged component. Furthermore, we believe this
conclusion is sound even though, as pointed out in the Request and
acknowledged in the Decision, Takahashi’s disclosure of detachability is
limited to the embodiments depicted in Figures 19(a) and 19(b), which are
not relied on by the panel.6

6 As noted at pages 16-17 of the Decision, each of the embodiments
depicted in Takahashi’s Figures 19(a) and 19(b) has a single inserting
section 46 that is detachably connected to an operating/holding section 47
(col. 3, ll. 60-67; col. 11, ll. 35-37). More particularly, as explained at page
6 of the Request, cover member 47a is detachably connected to holding
section body 47b (col. 10, l. 66–col. 11, l. 2).
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Regarding our finding that the Application fails to provide details of
how to construct the detachable and rotatable connection, Appellants argue
that
[h]ere again, the BPAI’s position seems to lacking, since the
present specification indicates in paragraph [0051] that “the third
relay lens 2-3 is formed substantially as a telecentric optical
system to provide a parallelized light beam at a connection
portion of the front-end insertion section and the camera
head.”
That is, forming the third relay lens 2-3 substantially as a
telecentric optical system to provide a parallelized light beam at a
connection portion of the front-end insertion section and the
camera head would certainly qualify as evidence of construction
details. Additionally, it is submitted that the present specification
is replete with other construction details.
(Request 7.) We agree that the optical characteristics described and depicted
in Appellants’ Application can be characterized as construction details.
However, the Application fails to disclose the details of the mechanical
connection that permits the front-end insertion section 100 and the camera
head 500 to be rotatable and detachable with respect to each other. The
absence of such construction details supports our finding that such details
were within the level of ordinary skill in the art.

2. The second rationale -- obviousness based on Takahashi in
view of Igarashi ‘232
The panel, relying on Takahashi’s explanation of how to use the
Figure 14 embodiment, Igarashi ‘232’s sterilizing cover 8 (Figure 4,
reproduced at page 19 of the Decision), and Igarashi ‘232’s disclosure of
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detaching and discarding insert section 1 after it has been contaminated,
concluded that it would have been obvious to form the rotatable connection
between insertion section 2a and insertion section 2b of Takahashi’s
Figure 14 embodiment as a detachable connection in order to allow
replacement of inserting section 2a after use and contamination. Decision at
17-19. Appellants argue that
neither Takahashi (‘948) nor Igarashi (‘232) teach[es] or
suggest[s] detaching a[] front-end insertion section from a camera
head within a relay optical system. That is, the non-flexible
endoscope shown in Fig. 4 of Igarashi (‘232) does not even
include a relay lens system, (col. 8, lines 52-55), and in the
stereoscopic rigid-type endoscopes shown in Figs. 19(a) and 19(b)
of Takahashi (‘948) the relay optical systems 44a and 44b are
included in the inserting section 46 and only the cover member
47a and the holding section body 47b of the operating/holding
section 47 are detachable from one another.
(Request 6.) While these observations regarding Figure 4 of Igarashi ‘232
and Figures 19(a) and 19(b) of Takahashi are correct, they are not responsive
to the panel’s second rationale, which relies on Figure 14 of Takahashi in
combination with Igarashi ‘232.
For the foregoing reasons, the Request is also denied to the extent that
Appellants seek a change in our decision to enter a new ground of rejection
of claim 1 under 35 U.S.C. § 103(a) for obviousness over Takahashi in view
of Igarashi ‘232.

DECISION
The Request for Rehearing has been considered and is denied.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(v) (2000).

DENIED

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