Ex Parte Hoeg et al - Page 5

                 Appeal 2007-2314                                                                                        
                 Application 10/657,110                                                                                  

                 object representative of the endoscope shaft and a software object                                      
                 representative of the video image acquired by the endoscope (id. at col. 7,                             
                 ll. 36-44).  The various software objects of the anatomical 3-D computer                                
                 models and of the endoscope 3-D computer models are merged “into a                                      
                 single composition image combining both live video images derived from                                  
                 endoscope 90 with computer generated images derived from the computer                                   
                 graphics system” (id. at col. 8, ll. 36-45).                                                            
                        Dohi describes an endoscope having a prism “and an actuator to drive                             
                 the prism on a given command signal, whereby a different endoscope image                                
                 is obtained through the movement of the prism” (Dohi, ¶ 0009).  Dohi                                    
                 describes an actuator including motors 7 and 8, the motor driving amount                                
                 being detected by rotary encoders 9 and 10 (id. at ¶ 0023).  A prism                                    
                 position-detecting part detects prism movement “based on the driving                                    
                 amounts of the motors 7 and 8 detected by the rotary encoders 9 and 10” (id.                            
                 at ¶ 0024).  We agree with the Examiner that it would have been obvious to                              
                 use Dohi’s variable-direction-of-view endoscope in the system described in                              
                 Chen in order to provide “various endoscope images in good quality without                              
                 the movement or bending of an endoscope” (Answer 7), and that the                                       
                 combined references suggest the method of claim 9.                                                      
                        Appellants argue that “there is no suggestion in the prior art to make                           
                 the combination necessary to arrive at [the] invention recited in claim 9”                              
                 (Br. 5).  In particular, Appellants argue that the Examiner’s rationale “is                             
                 simply a reason why an internal view changing mechanism is desirable” and                               
                 “does not provide any suggestion to combine such a mechanism with a                                     
                 tracking system such as Chen’s” (id. at 6).                                                             


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