MacKay Memorial Hospital

Patent Trials and Appeals Board

Sep 1, 2020

2020000718 (P.T.A.B. Sep. 1, 2020)

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.
15/321,848 12/23/2016 Chia-Yuan LIU AJ6072CN_P2779-US 1089
108266 7590 09/01/2020
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EXAMINER
KASZTEJNA, MATTHEW JOHN
ART UNIT PAPER NUMBER
3799
NOTIFICATION DATE DELIVERY MODE
09/01/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ahuang@pypat.com
bonnielee@pypat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHIA-YUAN LIU and CHING-CHUNG LIN
Appeal 2020-000718
Application 15/321,848
Technology Center 3700
Before JOHN C. KERINS, JEREMY M. PLENZLER, and
CARL M. DEFRANCO, Administrative Patent Judges.
DEFRANCO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 7, and 8. We have jurisdiction
under 35 U.S.C. § 6(b). We AFFIRM.
CLAIMED SUBJECT MATTER
The sole independent claim on appeal, claim 1, is directed to an
“auxiliary system for assisting the insertion of an ultrathin endoscope into a
subject.” Claim 1 is reproduced below.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as
MacKay Memorial Hospital. Appeal Br. 3.
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1. An ultrathin endoscope auxiliary system for assisting the
insertion of an ultrathin endoscopic into a subject, comprising:
an overtube, configured to allow the ultrathin endoscope
to be inserted therein, wherein the overtube comprises:
a transparent cap, disposed at the front end of the
overtube;
a side opening, disposed on the overtube and
approximating to the front end of the overtube;
a deflecting member, disposed within the overtube
and configured to adjust the orientation of the ultrathin
endoscopic; and
a positioning member, disposed outside the
overtube and approximating to the side opening,
configured to position the front end of the overtube in
place in the subject;
wherein the deflecting member is capable of
deflecting the ultrathin endoscope and thereby allows the
ultrathin endoscope to be extended outside the overtube
through the side opening; and
a mouth piece, comprising:
a passage configured to allow the overtube
to pass there through; and
a strip configured to secure the overtube
preventing it from moving.
Claims App. 15 (emphasis added).
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EVIDENCE OF RECORD
Name Reference Date
Sandstrom US 4,167,946 Sept. 18, 1979
Utsugi US 4,452,236 Jun. 5, 1984
Kimura US 5,695,448 Dec. 9, 1997
Matsui US 6,352,503 B1 Mar. 5, 2002
Scopton US 2007/0293719 A1 Dec. 20, 2007
Komi US 2012/0238815 A1 Sept. 20, 2012
EXAMINER’S REJECTIONS
Claims Rejected 35 U.S.C. § Basis
1–3, 7 103 Matsui, Sandstrom
4 103 Matsui, Sandstrom, Utsugi
8 103 Matsui, Sandstrom, Scopton
1–3, 7 103 Komi, Kimura, Sandstrom
ANALYSIS
A. Claims 1–3 and 7
The Examiner rejected claim 1, along with dependent claims 2, 3, and
7, as unpatentable over the combined teachings of Matsui and Sandstrom.
Final Act. 3–5. Specifically, the Examiner found that Matsui discloses all
the limitations of the claims with the exception of the final limitation—the
“mouthpiece.” Id. at 3–4 (citing Matsui, Figs. 1, 3, 48–55). For that missing
limitation, the Examiner found that Sandstrom teaches a mouthpiece 2
comprising (1) a passageway 3, 5 for insertion of an endoscopic instrument,
and (2) a strip 1 for fixedly securing the instrument “in a desired position
during a medical procedure.” Id. (citing Sandstrom, 3:5–35, Figs. 1, 2).
According to the Examiner, a skilled artisan would have been led to use a
mouthpiece with Matsui’s endoscopic overtube “to protect [the] teeth of a
patient, as well as enable a user to selectively fix the endoscope at a desired
location during use of the device as taught by Sandstrom.” Id.
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Appellant, in turn, argues that claims 1–3 and 7 are allowable because,
as claimed, the endoscopic auxiliary system solves “the looping problem, a
common issue often associated with the use of a conventional ultrathin
endoscope.” Appeal Br. 9. According to Appellant, the claimed endoscopic
auxiliary system solves this problem by providing:
“two supporting positions” as leverage points for easily
adjusting the length and axial orientation of the overtube and
the ultrathin endoscope. The two supporting positions are
respectively provided by the positioning member and the mouth
piece, in which the configuration of the strip of the mouth piece
ensures the overtube being secured within the passage of the
mouth piece, so as to prevent the overtube from moving during
operation. Such the mouth piece works with the positioning
member in a cooperative manner to prevent the overtube from
looping in the gastrointestinal tract (e.g., stomach) of the
subject during cholangioscopy.

Id. (emphasis added). In contrast, Matsui and Sandstrom “only provide
‘one-supporting point’ for leverage when it comes to position adjustment,”
according to Appellant. Id.
As for Matsui, Appellant contends it teaches only a balloon
positioning member 20 at the distal end of the endoscopic system, but is
“silent with respect to the mouth piece of the claimed invention.” Id. at 9–
10 (citing Matsui, 5:4–16, Fig. 1). As for Sandstrom, Appellant contends it
teaches only a mouthpiece positioning member 2 for securely fixing a
medical instrument in the mouth of a patient, but “nowhere has Sandstrom
taught or suggested other securing members . . . for securing the medical
instrument within the cavity of the subject.” Id. at 10 (citing Sandstrom,
3:5–35). Because neither reference teaches a positioning member at both the
mouth and distal ends of the endoscopic system, Appellant surmises that
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“none of the cited references is directed to providing a solution” to the
looping problem in endoscopic surgery, and, thus, they differ from the
claimed endoscopic system “where two-supporting structures are employed
as two leverage points to address the looping problem.” Id. at 10–11.
We do not find Appellant’s arguments persuasive. At the outset, we
reject Appellant’s attempt to construe the claims as encompassing the
purpose of the positioning member and mouthpiece, i.e., “prevent the
overtube from looping in the gastrointestinal tract (e.g., stomach of the
subject,” permit “controlling the length of the overtube . . . in the
gastrointestinal tract” and “adjusting the axial orientation of the overtube.”
See Appeal Br. 9. Although the Specification may very well describe the
purpose achieved by the claimed invention, the claims clearly are not so
limiting and it would be improper for us to read such limitations from the
Specification into the claims.
As claimed, the positioning member is simply “configured to position
the front end of overtube in a place in the subject” and the mouthpiece is
simply “configured to secure the overtube preventing it from moving.”
Claims App. 15 (emphasis added). Nowhere does Appellant dispute that the
asserted combination of Matsui and Sandstrom discloses each of those
limitations. See Appeal Br. 10. Indeed, as the Examiner confirms, Matsui
teaches providing an endoscopic overtube with a positioning member (i.e.,
balloon 20) at the distal end of the overtube for holding it in place within a
human subject (see Matsui, 7:4–40, Figs. 1), while Sandstrom teaches
providing a tubular mouthpiece 2 through which an endoscopic instrument 4
is inserted and tied in a fixed position to prevent the instrument from moving
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within a passage 3, 5 of the mouthpiece (see Sandstrom, 3:5–32, 3:65–4:14,
Fig. 1).
Rather than dispute the combined teachings of Matsui and Sandstrom,
Appellant attacks the references separately. Appeal Br. 10–11.
Nonobviousness, however, cannot be shown by arguing references
individually, as Appellant does, when the rejection is based on the
combination of their teachings. Here, the Examiner clearly combines
Sandstrom’s teaching of providing a mouthpiece and strap for securing an
endoscopic instrument where it enters the mouth of a patient with Matsui’s
teaching of an endoscopic overtube having a positioning member at its distal
end. See Final Act. 3–4; see also Exr. Ans. 4–7. Because Appellant never
addresses the asserted combination of Matsui and Sandstrom nor the
Examiner’s reasoning for why a skilled artisan would have undertaken to
combine their teachings, we are not persuaded by Appellant’s attacks on the
references individually. Thus, we sustain the Examiner’s rejection of
claim 1. Given that Appellant does not argue dependent claims 2, 3, and 7
separately from claim 1 (see Appeal Br. 9–11), we also sustain the
Examiner’s rejection of those claims (see Final Action 4–5).
B. Claims 4 and 8
Appellant argues that dependent claim 4 is allowable over the
Examiner’s asserted combination of Matsui, Sandstrom and Utsugi because
“none of the references has provided a clue on how to solve the looping
problem” and “Utsugi is silent on the securing members for securing the
endoscope within the cavity of the subject. Appeal Br. 12–13. As discussed
above, the claims do not recite limitations directed to preventing a looping
problem in an endoscopic system. Moreover, with respect Utsugi’s lack of
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teaching securing members for the endoscopic overtube, the Examiner relies
on Matsui and Sandstrom, not Utsugi, for that teaching. Thus, we are not
persuaded by Appellant’s argument in that regard. As such, we sustain the
Examiner’s rejection of claim 4.
As for dependent claim 8, the Examiner rejected it as unpatentable
over the combined teachings of Matsui, Sandstrom, and Scopton. In
response, Appellant essentially repeats its previous arguments, while
submitting that “Scopton fails to remedy the insufficiency of Matsui and
Sandstrom” with respect to “the securing members for securing the
endoscope within the cavity of the subject.” Appeal Br. 13. But, as
discussed above, the Examiner relied on Matsui and Sandstrom, not
Scopton, for teaching the claimed “positioning member” and “mouth piece”
for securing the endoscopic overtube within a subject. The Examiner relied
on Scopton solely for teaching the “two balloons” configuration recited in
dependent claim 8. See Final Act. 8. Because we are not persuaded by
Appellant’s attempt to refute the Examiner’s rejection of claim 8 by
repeating arguments applicable to claim 1, we sustain the Examiner’s
rejection of claim 8.
C. The Examiner’s Alternative Rejection of Claims 1–3 and 7
The Examiner additionally rejected claims 1–3 and 7 as unpatentable
over Komi, Kimura, and Sandstrom. Final Act. 5–7; Exr. Ans. 7–8. We
need not address this rejection, as it appears to be merely cumulative of the
Matsui/Sandstrom-based rejection of the same claims.
CONCLUSION
The Examiner’s Matsui/Sandstrom-based rejections are AFFIRMED.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–3, 7 103 Matsui, Sandstrom 1–3, 7
4 103 Matsui, Sandstrom,
Utsugi
4
8 103 Matsui, Sandstrom,
Scopton
8
1–3, 7 103 Komi, Kimura,
Sandstrom

Overall
Outcome
1–4, 7, 8

TIME PERIOD FOR RESPONSE
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