Schaaf, Hansgeorg

Patent Trials and Appeals Board

Apr 23, 2020

12674636 - (D) (P.T.A.B. Apr. 23, 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.
12/674,636 05/13/2011 Hansgeorg Schaaf 696.056 8039
23598 7590 04/23/2020
BOYLE FREDRICKSON S.C.
840 North Plankinton Avenue
MILWAUKEE, WI 53203
EXAMINER
BOLER, RYNAE E
ART UNIT PAPER NUMBER
3795
NOTIFICATION DATE DELIVERY MODE
04/23/2020 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):
docketing@boylefred.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HANSGEORG SCHAAF
____________

Appeal 2019-004904
Application 12/674,636
Technology Center 3700
____________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
LISA M. GUIJT, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Non-Final Office Action (dated Feb. 23, 2018, hereinafter
“Non-Final Act.”) rejecting claims 1–5, 7, 9, 10, 16–25, 27, and 28.2 We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Polydiagnost Entwicklungs-, Produktions-, Vertriebs-,
und Service Gesellschaft mbH is identified as the real party in interest in
Appellant’s Appeal Brief (filed Jan. 4, 2019, hereinafter “Appeal Br.”).
Appeal Br. 3.
2 Claims 6 and 11–15 are withdrawn. Non-Final Act. 2; Appeal Br. 5.
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Application 12/674,636

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SUMMARY OF DECISION
We AFFIRM-IN-PART.

INVENTION
Appellant’s invention is directed to a modular endoscope. Spec. 1.
Claims 1 and 27 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A modular rigid endoscope comprising
an optics cannula manufactured from a rigid
material with optics comprising a bundle of image and
light fibers guided through an interior thereof for image
transmission,
wherein a distal end of said optics is
provided with a lens system and seal by means of a
diamond glass disk,
wherein the optics is detachably connected
with the optics cannula by means of a coupling;
a plurality of disposable, sterilized cannulas or
working shafts which are designed with different
diameters greater than 0.5 mm and/or connections
depending on a diagnostic or therapeutic application;
and
an adjustment means is provided for positioning
lens-side end portions of said optics with respect to a
cannula/working shaft orifice, wherein said adjustment
means is, on the one hand, connected with at least one of
said cannulas or working shafts and, on the other hand,
with said optics, said adjustment means comprising
a guiding pipe enclosing a protective pipe of
said optics along which a sliding piece connected
with the optics cannula is guided in a displaceable
manner to position the optics and lens system
within the optics cannula,
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said optics having an outer diameter of
about 0.5mm, and comprising light conductors and
image conductors.

REJECTIONS

I. The Examiner rejects claim 2 under 35 U.S.C. § 112, second
paragraph, as being indefinite.
II. The Examiner rejects claims 1–3, 9, 10, 17, 18, and 22–25
under 35 U.S.C. § 103(a) as being unpatentable over Schaaf,3
Forster,4 Yokota,5 and Riek.6
III. The Examiner rejects claims 4, 5, 7, and 28 under 35 U.S.C.
§ 103(a) as being unpatentable over Schaaf, Forster, Yokota,
Riek, and Motoki.7
IV. The Examiner rejects claims 16 and 21 under 35 U.S.C.
§ 103(a) as being unpatentable over Schaaf, Forster, Yokota,
Riek, and Dowlatshahi.8
V. The Examiner rejects claim 19 under 35 U.S.C. § 103(a) as
being unpatentable over Schaaf, Forster, Yokota, Riek, and
Cox.9

3 Schaaf, US 7,857,757 B2, issued Dec. 28, 2010.
4 Forster et al., US 2005/0192479 A1, published Sept. 1, 2005.
5 Yokota, US 4,977,450, issued Dec. 11, 1990.
6 Riek et al., US 6,007,481, issued Dec. 28, 1999.
7 Motoki et al., US, 6,006,002, issued Dec. 21, 1999.
8 Dowlatshahi, US 5,222,953, issued June 29, 1993.
9 Cox et al., US 5,297,310, issued Mar. 29, 1994.
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VI. The Examiner rejects claim 20 under 35 U.S.C. § 103(a) as
being unpatentable over Schaaf, Forster, Yokota, Riek, and
Knapp.10
VII. The Examiner rejects claim 27 under 35 U.S.C. § 103(a) as
being unpatentable over Schaaf, Mitsumori,11 Forster, Yokota,
and Riek.

ANALYSIS
Rejection I
Appellant has not addressed the indefiniteness rejection of claim 2.
See Appeal Br. 5, 13; Non-Final Act. 2–3. Accordingly, Appellant has
waived any argument of error, and we summarily sustain the rejection of this
claim. See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008)
(explaining that summary affirmance without consideration of the
substantive merits is appropriate where an appellant fails to contest a ground
of rejection).

Rejections II and VII
Each of independent claims 1 and 27 recites a “rigid endoscope”
including, inter alia, “an optics cannula manufactured from a rigid material,”
a “seal by means of a diamond glass disk,” and “a plurality of disposable,
sterilized cannulas.” Appeal Br. 24, 26 (Claims App.).
The Examiner finds

10 Knapp, US 7,654,989 B2, issued Feb. 2, 2010.
11 Mitsumori, US 2006/0252992 A1, published Nov. 9, 2006.
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Schaaf discloses a modular rigid endoscope (portion 33 of the
endoscope is rigid) comprising at least one . . . optics cannula
(1/33) manufactured from a rigid material (portion 33 of optics
cannula . . . with optics (3) comprising a bundle of image and
light fibers . . . wherein a distal end of said optics is provided
with a lens system [22] . . . and seal [4] . . . [and] a plurality of
disposable, sterilized cannulas . . . which are designed with
different diameters greater than 0.5mm.

Non-Final Act. 3–4 (citing Schaaf, col. 4, ll. 33–35, 59–61, col. 5, ll. 10–12,
col. 7, ll. 35–42, Fig. 3), 11–12.
It is well established that in rejecting claims under 35 U.S.C. § 103(a),
the examiner bears the initial burden of establishing a prima facie case of
obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). It is
incumbent upon the examiner to establish a factual basis to support the legal
conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir.
1988). The initial burden of proof to produce the factual basis for the
rejection of an application under sections 102 and 103 is on the Patent
Office. See In re Warner, 379 F.2d 1011, 1016 (CCPA 1967). Here, the
Examiner has failed to provide a factual basis for the limitations noted
above.
In particular, we agree with Appellant that the Examiner’s reliance on
Schaaf’s probe attachment portion 33 to disclose a “rigid endoscope
comprising an optics cannula manufactured from a rigid material” is
erroneous. Reply Br. 2.12 Specifically, Schaaf’s “catheter probe 1,” which
the Examiner equates to the claimed “optics cannula,” “is bendable and can
be deformed,” and, thus, Schaaf fails to disclose “an optics cannula

12 Appellant’s Reply Brief, filed June 5, 2019.
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manufactured from a rigid material.” See Schaaf, col. 4, l. 52, col. 6, l. 30.
Accordingly, as Schaaf’s catheter probe 1 is not manufactured from a rigid
material, but rather a flexible material, we appreciate Appellant’s position
that Schaaf’s endoscope “does not . . . [constitute] a rigid endoscope just
because one of the components[, i.e., probe attachment portion 33,] is rigid.”
Reply Br. 3.
We further agree with Appellant that the Examiner’s finding of
Schaaf’s transparent cover 4 as the claimed “seal” is inadequate as each of
independent claims 1 and 27 requires a specific seal means, namely, a “seal
by means of a diamond glass disk.” Id. Although Schaaf discloses using
transparent cover 4 to “seal” distal end of optical lumen 5 to prevent
contamination of optical strand 3, Schaaf does not disclose the specific seal
means called for by each of independent claims 1 and 27, namely, “a
diamond glass disk.” See Schaaf, col. 5, ll. 15–18.
Finally, Appellant is correct that Schaaf’s disclosure of a disposable,
sterile cannula having a plurality of lumens with different diameters is not a
disclosure of “a plurality of disposable, sterilized cannulas . . . with different
diameters,” as called for by each of independent claims 1 and 27. Reply Br.
4 (citing Schaaf, col. 4, ll. 33–35).
In conclusion, as the Examiner does not rely on the disclosures of
Forster, Yokota, Riek, and Mitsumori to cure the deficiencies of Schaaf
discussed supra, the Examiner has not made the initial factual findings
required to demonstrate a prima facie case of obviousness of independent
claims 1 and 27. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (the
examiner has the initial duty of supplying the requisite factual basis and may
not, because of doubts that the invention is patentable, resort to speculation,
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unfounded assumptions, or hindsight reconstruction to supply deficiencies in
the factual basis). Therefore, we do not sustain the rejections under 35
U.S.C. § 103(a) of claims 1–3, 9, 10, 17, 18, and 22–25 as unpatentable over
Schaaf, Forster, Yokota, and Riek and of claim 27 unpatentable over Schaaf,
Mitsumori, Forster, Yokota, and Riek.

Rejections III–VI
The Examiner’s use of the Motoki, Dowlatshahi, Cox, and Knapp
disclosures does not remedy the deficiencies of Schaaf discussed supra. See
Non-Final Act. 8–11. Therefore, for the same reasons discussed above, we
also do not sustain Rejections III–VI.

CONCLUSION

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
2 112, 2nd
para.
Indefinite 2
1–3, 9, 10,
17, 18,
22–25
103(a) Schaaf, Forster,
Yokota, Riek
1–3, 9, 10,
17, 18,
22–25
4, 5, 7, 28 103(a) Schaaf, Forster,
Yokota, Riek,
Motoki
4, 5, 7, 28
16, 21 103(a) Schaaf, Forster,
Yokota, Riek,
Dowlatshahi
16, 21
19 103(a) Schaaf, Forster,
Yokota, Riek,
Cox
19
20 103(a) Schaaf, Forster,
Yokota, Riek,
Knapp
20
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27 103(a) Schaaf,
Mitsumori,
Forster, Yokota,
Riek
27
Overall
Outcome
2 1, 3–5, 7,
9, 10,
16–25, 27,
28

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)(iv).

AFFIRMED-IN-PART