Ex Parte Gingras

Patent Trials and Appeals BoardJun 10, 2019

13916237 - (D) (P.T.A.B. Jun. 10, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/916,237 06/12/2013 Joseph R. Gingras 154825 7590 06/12/2019 KS - Whitmyer IP Group LLC 600 Summer Street 3rd Floor Stamford, CT 06901 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. 02579-POOSOB 8605 EXAMINER WOO, JAE KYUN ART UNIT PAPER NUMBER 3795 NOTIFICATION DATE DELIVERY MODE 06/12/2019 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): uspto@whipgroup.com patent@karlstorz.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSEPH R. GINGRAS Appeal 2017-011065 Application 13/916,237 Technology Center 3700 Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and CYNTHIA L. MURPHY, Administrative Patent Judges. MURPHY, Administrative Patent Judge. DECISION ON APPEAL 1 The Appellant2 appeals from the Examiner's rejection of claims 1-3, 6-9, 12, 13, 57, and 58.3 We REVERSE. 1 The Appellant appeals under 35 U.S.C. Â§ 134; we have jurisdiction over this appeal under 35 U.S.C. Â§ 6(b). A hearing was held on June 4, 2019. 2 "The real party in interest is assignee of the present application, Karl Storz Endovision, Inc." (Appeal Br. 2.) 3 Claims 1-3, 6-27, 32, 33, 35, 57, and 58 are pending in the application; claims 10, 11, 14-27, 32, 33, and 35 are withdrawn from consideration. (See Non-Final Action 1.) Appeal 2017-011065 Application 13/916,237 STATEMENT OF THE CASE According to the Appellant, "[t]he invention relates to devices for photodynamic diagnosis or treatment generally, and specifically to systems and devices incorporating diode lasers for use in PDD, PDT and AF applications." (Spec. ,-J 1.) Sole Independent Claim on Appeal 1. An endoscopy system, comprising: an endoscope having a distal end and a proximal end; at least one laser diode closer to the proximal end than to the distal end, the at least one laser diode configured to emit a first pulse of light at a first wavelength during a first predetermined period of time, and a second pulse of light at a second wavelength during a second predetermined period of time, wherein the first wavelength and the second wavelength are different from one another and at least one of the first wavelength and the second wavelength is suitable for a photodynamic application, and wherein the first predetermined period of time occurs before or after the second predetermined period of time; a light guide disposed within the endoscope, the light guide configured to transmit light from the at least one laser diode to the distal end for illuminating a tissue; and an imager disposed relative to the endoscope and synchronized with the at least one laser diode such that the imager is configured to (i) capture a first image of the tissue during the first predetermined period of time, and (ii) capture a second image of the tissue during the second predetermined period of time. Farr Kazakevich References US 2010/0198009 Al US 2011/0018988 Al 2 Aug. 5, 2010 Jan. 27, 2011 Appeal 2017-011065 Application 13/916,237 Rejection The Examiner rejects claims 1-3, 6-9, 12, 13, 57, and 58 under 35 U.S.C. Â§ 103 as unpatentable over Kazakevich and Farr. (Non-Final Action 2.) ANALYSIS Independent claim 1 sets forth an endoscope system comprising "an endoscope having a distal end and a proximal end," and "at least one laser diode closer to the proximal end than to the distal end." (Appeal Br., Claims App.) The Examiner concludes that such an endoscope system would have been obvious over the combined teachings of Kazakevich and Farr. (See Non-Final Action 2.) We are persuaded by the Appellant's position that the Examiner's conclusion is not sufficiently supported by the record. (See Appeal Br. 8-11; see also Reply Br. 6-8.) The Examiner's rejection relies upon 1) a finding that Kazakevich teaches an LED diode situated near the proximal end of an endoscope; and 2) a finding that Farr teaches that a laser diode is interchangeable with an LED diode in an endoscope system. (See Non-Final Action 2-3.) Based upon these findings, the Examiner determines that it would have been obvious to interchange the proximally-situated LED diode in Kazakevich's endoscope system with a laser diode. (See id. at 3.) The problem with the Examiner's approach is that neither Kazakevich nor Farr teaches that an LED diode, situated near the proximal end of an endoscope, is interchangeable with a laser diode. Insofar as Kazakevich teaches that a diode can be situated near the proximal end of an endoscope, this teaching pertains to an LED diode. (See, e.g., Kazakevich ,-J,-J 23, 38, 39, Figs. 1-3.) Insofar as Farr teaches that a laser diode is interchangeable with 3 Appeal 2017-011065 Application 13/916,237 an LED diode in an endoscope system, this teaching pertains to a diode situated at the distal end of an endoscope. (See, e.g., Farr ,i,i 32, 39, 78, Figs 6a, 6b, 12.) The Examiner does not adequately address this discordance in the prior-art teachings. (See Answer 6-7.) We agree with the Appellant, therefore, that the Examiner's rejection is based upon an unsupported assumption "that LEDs and laser diodes are interchangeable" regardless of whether a diode is situated near the distal or proximal end of the endoscope. (Reply Br. 7.) Thus, on the record before us, we cannot sustain the Examiner's rejection of claims 1-3, 6-9, 12, 13, 57, and 58 under 35 U.S.C. Â§ 103.4 DECISION We REVERSE the Examiner's rejection of 1-3, 6-9, 12, 13, 57, and 58. REVERSED 4 The Examiner's further findings and determinations regarding the dependent claims do not compensate for the above-discussed shortcoming in the rejection of independent claim 1. (See Non-Final Action 3-4.) 4