Ex Parte Backman et al

Patent Trial and Appeal Board

Aug 4, 2017

11261452 (P.T.A.B. Aug. 4, 2017)

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.
11/261,452 10/27/2005 Vadim Backman 147854 6738
25944 7590
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
EXAMINER
REMALY, MARK DONALD
ART UNIT PAPER NUMBER
3786
NOTIFICATION DATE DELIVERY MODE
08/08/2017 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):
OfficeAction25944@oliff.com
j armstrong @ oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VADIM BACKMAN, HEMANT ROY, RAMESH WALI,
YOUNG KIM, YANG LIU, GUILLERMO AMEER, JIAN YANG,
ANTONIO WEBB, and JOSEPHINE ALLEN1
Appeal 2016-003781
Application 11/261,452
Technology Center 3700
Before TAWEN CHANG, JOHN E. SCHNEIDER, and RYAN H. FLAX,
Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims directed to a method of examining a sample. Claim 50 is on appeal
as rejected under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellants identify the Real Parties in Interest as National Institutes of
Health (NIH), U.S. Dept, of Health and Human Services (DHHS), U.S.
Government NIH Division of Extramural Inventions and Technology
Resources (DEITR). Br. 1.
Appeal 2016-003781
Application 11/261,452
STATEMENT OF THE CASE
Claim 50 is the only claim on appeal and it is reproduced below:
50. A method of examining a sample, comprising:
delivering a linearly polarized beam as illumination light
to the sample using a delivery fiber positioned at a center of a
probe;
simultaneously collecting scattered light scattered from
the sample using first collection fibers and second collection
fibers positioned around the delivery fiber, the first collection
fibers collecting a co-polarized component of the scattered light,
and the second collection fibers collecting a cross-polarized
component of the scattered light, one of the first collection fibers
and one of the second collection fibers being positioned
symmetrically with respect to the delivery fiber; and
simultaneously measuring, as a function of wavelength of
the scattered light scattered from the sample, intensity of the
scattered light at a plurality of scattering angles 0 at each of a
plurality of azimuthal angles cp in co-polarized and cross-
polarized states, using the first and second collection fibers,
respectively.
Br. (Claims App’x A-l).
The following rejection is on appeal:
Claim 50 stands rejected under 35 U.S.C. § 103(a) over Fulghum2 and
Stamnes.3 Final Act. 3.
2 U.S. Pat. App. Pub. No. US 2003/0232445 A1 (pub. Dec. 18, 2003)
(“Fulghum”).
3 U.S. Pat. App. Pub. No. US 2004/0092824 A1 (pub. May 13, 2004)
(“Stamnes”).
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Appeal 2016-003781
Application 11/261,452
DISCUSSION
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “[W]hen the
question is whether a patent claiming the combination of elements of prior
art is obvious,” the answer depends on “whether the improvement is more
than the predictable use of prior art elements according to their established
functions.” Mat417.
The Examiner found that Fulghum taught examining samples by
illuminating using a central illumination fiber (402) with polarized light and
simultaneously detecting scattered light using a concentric ring of co­
polarized and cross-polarized light collection fibers (406 and 406,
respectively) surrounding the central illumination fiber, as illustrated in
Fulghum’s Fig. 5B. Final Action 3. Combining Stamnes with Fulghum, the
Examiner found that the prior art combination taught that, in using such a
system, scattered light is simultaneously detected at a plurality of angles (0)
and azimuths (cp). Id. The Examiner further found that, as illustrated by
Fulghum’s Figure 5B, the reference’s co-polarized light detecting fibers and
central illumination fiber are configured so as to be symmetrical with respect
to one another and the cross-polarized light detecting fibers and the central
illumination fiber are, likewise, configured to be symmetrical with respect to
one another, i.e., mirrored respective of a line drawn through the fiber 402.
Ans. 3. We adopt the Examiner’s findings of fact, reasoning on scope and
content of the claims and prior art, and conclusions set out in the Final
Action and Examiner’s Answer.
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Appeal 2016-003781
Application 11/261,452
We find the Examiner has established a prima facie case that claim 50
would have been obvious over Fulghum and Stamnes. Appellants have not
produced evidence showing, or persuasively argued, that the Examiner’s
determinations are incorrect. Only those arguments made by Appellants in
the Briefs have been considered in this Decision. Arguments not presented
in the Briefs are waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2015). We
address Appellants’ arguments below.
Claim 50 recites, “one of the first collection fibers and one of the
second collection fibers being positioned symmetrically with respect to the
delivery fiber,” and Appellants argue this means there must be symmetry
between a first fiber and a second fiber about the delivery fiber in position
and distance from the delivery fiber. Br. 5. Appellants argue Fulghum’s
Figures 5A and 5B do not teach such a relationship. Id. 5—7.
Responding to this argument, the Examiner stated that,
The claim language does not require that both collection fibers
and the delivery fiber all be symmetrical relative to each other.
The reception fibers 408 [and 406 and 407] in Figures 5A and
5B of Fulgh[u]m are considered to be positioned symmetrically
relative to the illumination fiber 402. For instance, if a line was
drawn horizontally through fiber 402, a mirrored, i.e.
symmetrical, arrangement of fibers 408 [and 406, 407] on either
side of the line exists.
Ans. 3.
The USPTO, for more than 100 years, has applied in proceedings
before it the standard of broadest reasonable claim interpretation in light of
the specification. Cuozzo Speed Tech., LLC v. Lee, 136 S. Ct. 2131, 2145
(2016); see also In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). “[A]
claim must be read in view of the specification of which it is a part,” but
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Appeal 2016-003781
Application 11/261,452
“limitations from the specification are not to be read into the claims.”
Renishawpic v. Marposs Societaper Azioni, 158 F.3d 1243, 1249 (Fed. Cir.
1998); Sjolundv. Musland, 847 F.2d 1573, 1582 (Fed. Cir. 1988).
Under the broadest reasonable interpretation of claim 50, the
Examiner is correct. The claim does not require the first and second
collecting fibers to be symmetrical to the delivery fiber AND each other, but
only that each of the first and second collecting fibers are symmetrical
respective to the delivery fiber. In view of this claim interpretation, we
reproduce Fulghum’s Figure 5A, annotated, below:
Fulghum’s Figure 5B, above, shows a front-view of a cross-section of
a probe that provides a light scattering spectroscopy system to measure the
angular distribution and polarization of backscattered light, the probe having
a centrally positioned, single illumination optical fiber (402), which is used
to deliver broadband illumination to tissue, and, concentrically surrounding
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