Ex Parte Bierbaum et al

Patent Trial and Appeal BoardApr 15, 2016

12700367 (P.T.A.B. Apr. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121700,367 02/04/2010 5514 7590 04/15/2016 FITZPATRICK CELLA HARPER & SCINTO 1290 A venue of the Americas NEW YORK, NY 10104-3800 FIRST NAMED INVENTOR Thomas Bierbaum 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 01873.400003. 7723 EXAMINER VAN ROY, TOD THOMAS ART UNIT PAPER NUMBER 2828 MAILDATE DELIVERY MODE 04/15/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS BIERBAUM, SIEGFRIED GOISSER, HERMANN LANDGRAF, MATTHIAS REIN, RALF SUTTER, THOMAS JERGER, and JOACHIM PEUCKERT Appeal2014-002668 Application 12/700,367 Technology Center 2800 Before KEN B. BARRETT, DANIEL N. FISHMAN, and MONICA S. ULLAGADDI, Administrative Patent Judges. FISHMAN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from a rejection of claims 17, 19, 20, and 22-26, all remaining claims of the application. 1 We heard oral argument on March 24, 2016. We have jurisdiction over the remaining claims under 35 U.S.C. Â§ 6(b). 1 In this Opinion, we refer to Appellants' Appeal Brief ("App. Br.," filed July 23, 2013), Appellants' Reply Brief ("Reply Br.," filed November 19, 2013), the Final Office Action ("Final Act.," mailed February 25, 2013), the Examiner's Answer ("Ans.," mailed on September 19, 2013), and the original English language Specification ("Spec." filed April 21, 2010). Appeal2014-002668 Application 12/700,367 We REVERSE. THE INVENTION Appellants' invention relates to a control device for a laser handpiece used, for example, in dental treatments. Spec. 1:5-8. The control device comprises an upper housing portion and a lower housing portion that form an annular gap between the two portions. Spec. Abstract. The handpiece includes an optical waveguide that can be wound around the annular gap. Id. Claim 17, reproduced below, is illustrative: 17. A control device for a laser handpiece, comprising: an optical waveguide; a housing including a peripherally extending annular gap that divides the housing into at least a lower housing portion and an upper housing portion, wherein the lower housing portion is connected to the upper housing portion, wherein the optical waveguide is disposed in the annular gap between at least part of the lower housing portion and at least part of the upper housing portion and emerges from an interior of the housing, wherein the waveguide can be wound up in the annular gap, and wherein the optical waveguide leaves the interior of the housing and is guided to a base of the annular gap without buckling. THE REJECTIONS Claims 17 and 23-26 stand rejected under 35 U.S.C. Â§ 102(b) as anticipated by Boutoussov (US 2008/0181261 Al; July 31, 2008). Final Act. 2--4. 2 Appeal2014-002668 Application 12/700,367 Claims 19 and 22 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Boutoussov and Loeb (US 6,331, 178 B 1; December 18, 2001). Final Act. 5. Claim 20 stands rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Boutoussov, Loeb, and Cairns (US 2008/0296426 Al; December 4, 2008). Final Act. 5-6. ANALYSIS The Anticipation Rejection In rejecting claim 17, the Examiner finds Boutoussov teaches the recited upper and lower portions of the housing as portions 177 A and 177B of spool 177 in Figures 21, 24, and 25. Final Act. 3; see also Ans. 2-3. The Examiner finds the recited annular gap is formed between these two portions of Boutoussov's spool 177. Id. The Examiner then finds Boutoussov teaches "wherein the optical waveguide leaves the interior of the housing and is guided to a base of the annular gap" because Figure 25B shows a rubber guide that prevents "tangling or buckling." Id. Appellants contend Boutoussov fails to teach the recited housing, but further contend, even accepting the Examiner's finding of the recited housing as Boutoussov's spool 177, Boutoussov fails to disclose that the optical waveguide exits an interior of the housing and "is guided to a base of the annular gap," as recited. Br. 4. The Examiner further finds "[t]he area from which the fiber emerges from the interior of the housing [(Boutoussov's spool 177)] can be called a base." Ans. 4. Still further the Examiner finds "[t]he fiber then leaves the interior of the housing through the base region and is guided to the laser handpiece (fig. 22)." Ans. 4. 3 Appeal2014-002668 Application 12/700,367 We agree with Appellants that the Examiner erred. During examination, claims are given their broadest reasonable interpretation consistent with the specification, and the language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Amer. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The presumption that a term is given its ordinary and customary meaning may be rebutted by Appellants by clearly setting forth a different definition of the term in the specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Although we find no use of the term "base of annular gap" in Appellants' Specification, we find the Examiner's interpretation of the recited "base" as reading on Boutoussov's teachings, and in particular, reading the recited "base" on "the area from which the fiber emerges from the interior of the housing" (Ans. 4) is unreasonable. We find the ordinary meaning of "base" to be "the bottom or lowest part of something: the part on which something rests or is supported." Base. (n.d.). Retrieved March 30, 2016, from http://www.merriam-webster.com/dictionary/base. We find nothing in Boutoussov that indicates that Boutoussov's optical waveguide 17 6, exiting the interior of housing 1 77, is "guided to" any base in a manner that is consistent with either the Examiner's interpretation or the ordinary meaning of this term, let alone "guided to a base of the annular gap," as recited. This is because, whatever the Examiner has identified as the base, the Examiner's further finding that the fiber of Boutoussov "leaves the interior of the housing through the base region and is guided to the laser handpiece" (Ans. 4) is inconsistent with the language of the claim. By 4 Appeal2014-002668 Application 12/700,367 contrast, claim 1 7 clearly recites the waveguide is guided to "a base of the annular gap," not guided to the handpiece as the Examiner indicates. In view of the above discussion, we do not sustain the Examiner's rejection of claim 17 as anticipated by Boutoussov. Claims 23-26 depend from claim 17 (directly or indirectly) and, thus, we do not sustain the rejection of these claims for the same reason as claim 17. The Obviousness Rejections Claims 19, 20, and 22 depend from claim 17 (directly or indirectly) and the additional references do not cure the above-identified deficiency of Boutoussov. Thus, for the same reason as claim 17, we do not sustain the rejection of claims 19, 20, and 22. DECISION For the above reasons, the Examiner's decision rejecting claims 17, 19, 20, and 22-26 is reversed. REVERSED 5