Ex Parte Hennings et al

Patent Trial and Appeal Board

May 2, 2013

10699212 (P.T.A.B. May. 2, 2013)

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.
10/699,212 10/30/2003 David R. Hennings C7162.0004 2780
91477 7590 05/03/2013
Dickstein Shapiro LLP
1633 Broadway
New York, NY 10019
EXAMINER
SHAY, DAVID M
ART UNIT PAPER NUMBER
3769
MAIL DATE DELIVERY MODE
05/03/2013 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 DAVID R. HENNINGS, MITCHELL P. GOLDMAN,
ROBERT A. WEISS, ERIC B. TAYLOR, and DON JOHNSON
____________

Appeal 2010-009821
Application 10/699,212
Technology Center 3700
____________

Before PHILLIP J. KAUFFMAN, BARRY L. GROSSMAN, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-009821
Application 10/699,212

2

STATEMENT OF THE CASE
David R. Hennings, Mitchell P. Goldman, Robert A. Weiss, Eric B.
Taylor, and Don Johnson (“Appellants”) appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1-17, 19-23, 25-35, and 37-46.1
We have jurisdiction under 35 U.S.C. § 6(b).
The Claimed Subject Matter
Claims 1, 14, 25, and 35 are independent. Claims 1 and 14 are
illustrative of the claimed subject matter and are reproduced below.
1. An endovenous method of treating a varicose veins
comprising the step of using a laser having a wavelength
between about 1.2 and about 1.8 um to heat and shrink collagen
in a varicosed vein and to destroy the functionality of the
varicose vein.
14. A system for endovenous treatment of varicose
veins comprising the following:
a laser having a wavelength between about 1.2 and about
1.8 um; and
a fiber optic laser delivery device having a proximal end
and a distal end, for delivery of laser energy from the distal end
of the fiber optic laser delivery device to the inside wall of a
varicose vein wherein the functionality of the varicose vein is
destroyed and collagen in the varicosed vessel wall can be
heated and shrunk.

1 Appellants identify claim 36 amongst the claims pending in the application
and on appeal. See App. Br. 2. The Examiner mistakenly includes claim 36
in the heading of the rejection, but correctly notes that claim 36 was
cancelled in the Status of Claims. See Ans. 2, 3. The record before us
reveals that claim 36 was indeed cancelled. See Amendment (dated Nov. 17,
2006) at 2 (“Please cancel claim 36.”), 6 (identifying claim 36 as
“Cancelled”); see also App. Br. 37 (identifying claim 36 as “Cancelled”).
Accordingly, claim 36 is not included in the claims on appeal.
Appeal 2010-009821
Application 10/699,212

3
References
The Examiner relies upon the following prior art references:
Dew US 4,854,320 Aug. 8, 1989
Sinofsky US 5,196,004 Mar. 23, 1993
Roth US 5,207,672 May 4, 1993
Goldman US 6,258,084 B1 July 10, 2001
Conn WO 92/17243 Oct. 15, 1992
Makower WO 93/15664 Aug. 19, 1993

Rejections
The Examiner makes the following rejections:
I. Claims 1, 2, 6, 7, 25-35, 37, 38, 40, 41, and 44-46 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Goldman,
Sinofsky, and Dew;
II. Claims 3-5, 42, and 43 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Goldman, Sinofsky, Dew, and Roth;
III. Claims 8 and 39 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Goldman, Sinofsky, Dew, and Conn;
IV. Claims 9-13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Goldman, Sinofsky, Dew, and Makower;
V. Claims 14-17 and 20-23 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Makower, Roth, and Dew; and
VI. Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Makower, Dew, Roth, and Conn.

SUMMARY OF DECISION
We AFFIRM.

Appeal 2010-009821
Application 10/699,212

4
OPINION
Rejection I – Obviousness over Goldman, Sinofsky, and Dew
The Examiner concluded that the combination of Goldman, Sinofsky,
and Dew renders obvious the subject matter of claims 1, 2, 6, 7, 25-35, 37,
38, 40, 41, and 44-46. Ans. 3-4. The Examiner found that Goldman
discloses the elements of the claims with the exception of the claimed
wavelength. Id. at 4. The Examiner, however, found that Sinofsky discloses
the “notorious nature of the high absorption of infrared wavelengths in the
art,” and that Dew teaches “the desirability of using 1.32 micron radiation to
treat tissue.” Id. The Examiner determined that it would have been obvious
to one of ordinary skill in the art to use the 1.32 um wavelength disclosed by
Dew in the method taught by Goldman “since Goldman . . . teach[es] no
particular wavelength, and since the wavelength of Dew can destroy
(denature) the proteins, but allow near normal tissue to take its place . . . and
since this wavelength is highly absorbed by tissue and water, as taught by
Sinofsky.” Id. The Examiner also found that it would have been obvious to
“employ the venous treatment method of Goldman . . . in the method of Dew
. . . since Dew . . . teach[es] the repair of vascular tissue as one of the
advantageous uses of their wavelength.” Id.
Appellants assert several arguments in response to this rejection.
First, Appellants contend that Goldman is not enabling because it is almost
entirely directed to RF2 (radio frequency) heating of varicose veins and only
contains a single mention of lasers amongst several possible alternatives to

2 Chambers 21st Century Dictionary (2001), available at
http://www.credoreference.com/entry/chambdict/rf (last visited Apr. 25,
2013) (indicating that “RF” is an abbreviation for “radio frequency”).
Appeal 2010-009821
Application 10/699,212

5
the use of RF energy. App. Br. 12. In particular, Appellants assert that
Goldman does not teach “what lasers, with what wavelengths, for what
chromophores might be tried in an effort to treat varicose veins” or the
duration of treatment. Id. at 16. In support of their argument, Appellants
submitted a declaration from Dr. Goldman3 (“Goldman Declaration”), dated
December 23, 2009, in which he states that he had no experience or
knowledge of the use of lasers, e.g., which laser wavelengths might be
useful or power levels might be safe and effective, to treat varicose veins
prior to filing the application that issued as the Goldman reference. See id.
at 14 (quoting Goldman Decl. ¶ 5). Appellants also note that “[s]ome of the
factors to consider in the experimentation required to determine the type of
laser, the laser wavelength, the power levels and dose duration for a given
use are outlined in Sinofsky.” Id. at 16. Thus, Appellants contend that since
Goldman is non-enabling, “the attempt to combine Sinofsky and [Dew] with
Goldman is an exercise in futility.” Id. at 17.
Second, Appellants assert that even if Goldman were enabling, the
rejection is erroneous because Sinofsky and Dew “are completely unrelated
to Goldman and to each other and cannot be properly combined.” Id. at 17.
Appellants contend that Sinofsky discloses a preferred laser treatment for
arterial plaque with laser energy in the 1900-2100 nm range (which is equal
to 1.9-2.1 um)4 and tissue removal with laser energy in the 1400-2200 nm

3 Mitchel P. Goldman is a named inventor of the Goldman reference, relied
upon by the Examiner, as well as a named inventor of the invention
described in the claims before us, although it appears his name is incorrectly
spelled with two “l”s (Mitchell) in the present application. See Goldman
Declaration at 1.
4 1 um equals 1000 nm.
Appeal 2010-009821
Application 10/699,212

6
range (i.e., 1.4-2.2 um). Id. at 18. Appellants assert that Sinofsky discloses
several characteristics for using a laser that must be taken into account, but
are not recognized by Goldman. Id. Appellants contend that Dew discloses
the use of an Nd:YAG laser tuned from its “normal” wavelength of 1.064
um to its “secondary wavelength” of 1.320 um for wound healing and tissue
repair by solubilizing collagen. Id. Appellants further note that Dew’s
1.320 um wavelength is outside the lower limit of Sinofsky’s disclosed
wavelengths (i.e., it is less than 1.40 um), and thus the “wavelength choices
in Sinofsky and [Dew] are antithetical to each other, as are their respective
targets,” and thus cannot be combined. Id.
Third, Appellants contend that the Examiner picked and chose
references simply because they disclosed various aspects of the claims,
including the claimed wavelength, without providing a reason with rational
underpinning for their combination. Id. at 19. Thus, Appellants assert that
the Examiner failed to make a prima facie case of obviousness by relying
upon “such disparate references.” Id.
We address each of Appellants’ arguments.5 Appellants’ first
argument—that Goldman does not enable the use of lasers for the treatment
of varicose veins—misses the mark. It is textbook patent law that “[u]nder
§ 103 . . . a reference need not be enabled; it qualifies as a prior art,
regardless, for whatever is disclosed therein.” Amgen, Inc. v. Hoechst
Marion Roussel, Inc., 314 F.3d 1313, 1357 (Fed. Cir. 2003) (citing Symbol

5 Appellants argue the claims subject to Rejection I as a group. See App. Br.
12-20. We select claim 1 as representative. Accordingly, claims 2, 6, 7,
25-35, 37, 38, 40, 41, and 44-46 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011); see also In re Lovin, 652 F.3d 1349, 1351 (Fed.
Cir. 2011).
Appeal 2010-009821
Application 10/699,212

7
Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991); Reading
& Bates Constr. Co. v. Baker Energy, 748 F.2d 645, 652 (Fed. Cir. 1984)).
Even though Appellants are correct that Goldman discloses lasers in only
one instance (see Goldman, col. 7, l. 57), Goldman qualifies as prior art for
what is disclosed therein—that lasers can be used in the methods disclosed
therein, one use of such methods being the treatment of varicose veins. See
Ans. 3-4. The Goldman Declaration attesting to the Goldman inventors’
lack of specificity with respect to enabling the use of lasers in the treatment
of varicose veins, see Goldman Decl. (dated Dec. 23, 2008), does not negate
the reference’s explicit disclosure that “although the invention will be
described as using RF energy from the electrode, it is to be understood that
other forms of energy such as . . . lasers can be used.” Goldman, col. 7,
ll. 53-59. As the Examiner found, the difference between Goldman’s
disclosure and claim 1 resides solely in the claim’s specific recitation of a
laser with a wavelength between about 1.2 and about 1.8 um.6 See Ans. 4.
The Examiner, however, relied upon Dew as disclosing a wavelength within
the claimed range. Id. Accordingly, Appellants’ arguments that Goldman
does not enable the use of lasers as called for by claim 1 are inapposite
because a prior art reference in the context of a § 103 rejection is not
required to enable that which it discloses.7

6 Appellants’ arguments regarding experimentation required to determine the
type of laser, power level, and dose duration for a given use of a laser are not
commensurate in scope with claim 1 because the claim does not call for
specific values for those variables.
7 Appellants’ arguments regarding overcoming a presumption that Goldman
is enabled or operable (see, e.g., Reply Br. 5-6), while appropriate in the
context of an anticipation rejection under § 102, do not negate the
reference’s disclosure to one of ordinary skill in the art in the context of the
Appeal 2010-009821
Application 10/699,212

8
With respect to Appellants’ second argument—that Sinofsky and Dew
are completely unrelated to each other and to Goldman, and thus cannot be
properly combined—we reiterate that “[a] reference qualifies as prior art for
an obviousness determination under § 103 only when it is analogous to the
claimed invention.” In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011)
(citing Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321
(Fed. Cir. 2011); In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). “Two
separate tests define the scope of analogous art: (1) whether the art is from
the same field of endeavor, regardless of the problem addressed and, (2) if
the reference is not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved.” Id. (quoting In re Bigio, 381 F.3d at 1325). The
“field of endeavor” test “requires the PTO to determine the appropriate field
of endeavor by reference to explanations of the invention’s subject matter in
the patent application, including the embodiments, function, and structure of
the claimed invention.” In re Bigio, 381 F.3d at 1325. If the structure and
function of the prior art would have been considered by a person of ordinary
skill in the art because of similarity to the structure and function of the
claimed invention as disclosed in the application, the prior art is properly
considered within the same field of endeavor. See id. at 1325-26.
Here, we agree with the Examiner that Sinofsky, Dew, and Goldman
constitute analogous art because they are each from the same field of
endeavor—laser surgery—as the claimed invention. See Ans. 18. Goldman,
discussed above, discloses applying energy, such as that produced by a laser,
to shrink a hollow anatomical structure, such as a fallopian tube or a vein,

§ 103 rejection before us.
Appeal 2010-009821
Application 10/699,212

9
for use, inter alia, in the treatment of varicose veins. See, e.g., Goldman,
col. 1, ll. 9-13; see also id. at col. 2, ll. 54-56. Sinofsky discloses the use of
laser energy, in the range of 1.4 to 2.2 um, to remove biological material,
e.g., atherosclerotic plaque, and repair biological material. See, e.g.,
Sinofsky, col. 2, ll. 49-52, 59-63. Dew discloses the use of optical energy,
such as lasers, for closing wounds. See, e.g., Dew, col. 1, ll. 9-14; see also
id. at col. 4, ll. 26-31. Accordingly, we disagree with Appellants that
Goldman, Sinofsky, and Dew cannot be properly combined.
We are similarly not persuaded by Appellants’ third argument in
response to this rejection—that the Examiner did not provide a rational
reason for combining the references’ disclosures. The Examiner determined
that it would have been obvious to one of ordinary skill in the art at the time
of invention to employ the wavelengths of Dew and Sinofsky in the method
of Goldman since Dew teaches that a wavelength of 1.32 um can denature
proteins and allow near normal tissue to take their place,8 and Sinofsky
teaches that a wavelength in this range is highly absorbed by tissue and
water.9 Ans. 4. Thus, the Examiner provided a reason with rational

8 Claim 1 calls for using a laser to “heat and shrink collagen in a varicosed
vein,” and the Examiner correctly recognized that Dew discloses the use of
laser energy of wavelength 1.32 um to denature (which can destroy or
shrink) collagen. See Ans. 4; see also Dew, col. 5, ll. 32-36 (“Collagen, a
major source of protein in the body, is denatured by application of such
energy in such a way as to go into solution and form a ‘biological glue’ to
seal a lesion, anastomize a severed vessel, or reconstruct damaged tissue.”).
9 The Examiner correctly recognized that Sinofsky discloses that a laser of a
wavelength within the claimed range is highly absorbed by water and tissue.
See Sinofsky, col. 4, ll. 62-65 (“The absorption of laser energy produced by
lasers in this latter group by water is moderately high and, consequently, the
absorption by biological tissues of such energy will also be relatively
Appeal 2010-009821
Application 10/699,212

10
underpinning as to why one of ordinary skill in the art would have been
prompted to employ the wavelengths disclosed in Dew and Sinofsky in the
method of Goldman, and Appellants have not persuasively argued why the
Examiner’s stated rationale is deficient.
Rejection II – Obviousness over Goldman, Sinofsky, Dew, and Roth
The Examiner determined that the combination of Goldman, Sinofsky,
Dew, and Roth renders obvious the subject matter of claims 3-5, 42, and 43.
Ans. 4-5. The Examiner found that Roth teaches “employing [the] pull back
rate as claimed,” and “that the desired rate is dependent on the laser energy.”
Id. at 4-5. The Examiner determined that it would have been obvious to one
of ordinary skill in the art at the time of invention “to employ a pull back as
claimed, since [they] are known in the art and provide no unexpected result.”
Id. at 5. The Examiner also found that it would have been obvious to
“initiate pulling prior to energy application, since the problem of tissue
adhesion is notorious in the art.” Id. The Examiner also took Official
Notice that the problem of tissue adhesion is notorious in the art. Id.
Appellants raise four arguments directed to this rejection. First,
Appellants contend that Roth discloses a pullback device in an entirely
different context than the claims. App. Br. 20. Second, Appellants assert
that Roth does not “cure the deficiencies in the attempted combination of
Goldman, Sinofsky and Dew.” Id. Third, Appellants contend that the
Examiner failed to provide a reason or rational underpinning for combining
Roth with Goldman, Sinofsky, and Drew. Id. Fourth, Appellants assert that
each reference is directed to “different fields of use.” Id.

high.”).
Appeal 2010-009821
Application 10/699,212

11
We do not find Appellants’ arguments persuasive.10 Claim 3 depends
from claim 1 and further calls for, inter alia, using “a pullback device to
retract the fiber optic laser delivery device through the varicose vein at a rate
of between about 0.1 mm/sec and about 10.0 mm/sec while simultaneously
delivering laser energy therefrom.” Roth discloses the use of a pullback
device as part of a laser delivery device at the claimed rate. See Ans. 5
(citing Roth, col. 15, ll. 24-50 (disclosing pullback rates between 0.01
mm/sec and 50 mm/sec)). Roth is directed to an instrument and method of
performing laser surgery to “transluminally open[] any constricted regions of
a passageway through a portion of a living body, and in particular, the
prostatic urethra of an enlarged prostate.” See, e.g., Roth, col. 1, ll. 11-16.
Thus, Roth’s “context” and “field of use” is also laser surgery.
Additionally, the Examiner did not rely upon Roth as disclosing the
elements of claim 1 taught by Goldman, Sinofsky, and Dew. And as we did
not find any of Appellants’ alleged “deficiencies in the attempted
combination of Goldman, Sinofsky and Dew” persuasive, Roth need not
disclose more.
Further, we disagree with Appellants that the Examiner failed to
provide a reason with rational underpinning for the proposed combination.
The Examiner took Official Notice, which Appellants have not contested,
that the problem of tissue adhesion in the art is notorious, and determined
that it would have been obvious to one of ordinary skill in the art to employ

10 Appellants argue the claims subject to Rejection II as a group. See App.
Br. 20. We select claim 3 as representative. Accordingly, claims 4, 5, 42,
and 43 stand or fall with claim 3. See 37 C.F.R. § 41.37(c)(1)(vii); see also
In re Lovin, 652 F.3d at 1351.

Appeal 2010-009821
Application 10/699,212

12
a pullback device at the rate claimed to address the known problem of tissue
adhesion. Ans. 5. Accordingly, Appellants have not persuaded us that the
Examiner failed to provide a reason with rational underpinning for the
proposed combination.
Rejection III – Obviousness over Goldman, Sinofsky, Dew, and Conn
The Examiner determined that the combination of Goldman, Sinofsky,
Dew, and Conn renders obvious the subject matter of claims 8 and 39. Id.
The Examiner found that Conn discloses a diffusing tip as claimed. Id. The
Examiner determined that it would have been obvious to one of ordinary
skill in the art at the time of invention to “employ a tip as taught by Conn . . .
since this would provide a uniform distribution of light and would prevent
over or under treatment of tissue [sic] different areas of tissue . . . around the
circumference of the vessel.” Id.
Appellants acknowledge that Conn discloses a diffusing tip, but raise
four arguments in response to this rejection. First, Appellants assert that
they do not purport to have invented a diffusing tip for a laser. App. Br. 21.
Second, Appellants contend that Conn does not cure the deficiencies of the
attempted combination of Goldman with Sinofsky and Drew. Id. Third,
Appellants assert that the Examiner has not provided reasoning or rational
underpinning for combining Conn with the other references. Id. Fourth,
Appellants contend that it was “only an attempt to reconstruct applicants’
invention which inspires reliance on Conn.” Id.
We do not find Appellants’ arguments persuasive.11 Claim 8, which
depends indirectly from claim 1, calls for the energy to be delivered

11 Appellants argue the claims subject to Rejection III as a group. See App.
Br. 21. We select claim 8 as representative. Accordingly, claim 39 stands
Appeal 2010-009821
Application 10/699,212

13
“through the fiber optic laser delivery device . . . evenly . . . by using a
diffuse radiating-tip mounted to the distal end of the fiber optic laser
delivery device.” First, the Examiner did not assert that Appellants invented
a diffusing tip for a laser. Second, the Examiner did not rely upon Conn to
cure any alleged deficiencies with respect to Goldman, Sinofsky, and Dew.
And as we did not find any of Appellants’ alleged deficiencies in the
attempted combination of Goldman, Sinofsky and Dew persuasive, Dew
need not disclose more. Finally, the Examiner provided a reason with
rational underpinning for the proposed combination—since a diffusing tip
provides a uniform distribution of light to prevent over or under treatment of
different areas of tissue (Ans. 5)—and the Examiner’s analysis does not
appear to be any more of an attempt to reconstruct Appellants’ invention
than any other inquiry into whether one of ordinary skill in the art would
have found a claimed invention obvious. See, e.g., Graham v. John Deere
Co. of Kansas City, 383 U.S. 1, 16 (1966) (identifying “the scope and
content of the prior art” and the “differences between the prior art and the
claims at issue” as two of the inquiries under § 103).
Rejection IV – Obviousness over Goldman, Sinofsky, Dew, and Makower
The Examiner determined that the combination of Goldman, Sinofsky,
Dew, and Makower renders obvious the subject matter of claims 9-13.
Ans. 5. The Examiner found that Makower discloses “controlling the
heating of tissue using infrared sensing.” Id. The Examiner determined that
it would have been obvious to one of ordinary skill in the art at the time of

or falls with claim 8. See 37 C.F.R. § 41.37(c)(1)(vii); see also In re Lovin,
652 F.3d at 1351.
Appeal 2010-009821
Application 10/699,212

14
invention “to employ the temperature sensor of Makower . . . in the method
of Goldman . . . since these are equivalents, as taught by Makower.” Id.
Appellants acknowledge that Makower discloses the use of infrared
sensing to control heating, but raise three arguments in response to this
rejection. First, Appellants contend that Makower does not cure any of the
deficiencies of the attempted combination of Goldman with Sinofsky and
Dew. App. Br. 21. Second, Appellants assert that “it is only an attempt re
[sic] reconstruct applicants’ invention which prompts citation of Makower.”
Id. Third, Appellants contend that “[t]here is nothing in the remaining
references to suggest that use of a temperature sensor is needed or
desirable.” Id.
We do not find Appellants’ arguments persuasive.12 Claim 9, which
depends indirectly from claim 1, calls for the use of a “non-contact thermal
sensor . . . to maintain a desired temperature.” We do not find Appellants’
first and second arguments directed to Makower, which repeat the same
arguments noted with respect to Rejections II and III pertaining to Roth and
Conn, respectively, persuasive for the reasons we previously explained in
addressing Rejections II and III. Further, Appellants’ argument that “[t]here
is nothing in the remaining references to suggest that use of a temperature
sensor is needed or desirable” is unclear as to which references Appellants
refer. See App. Br. 21 (emphasis added). The Examiner provided a reason
with rational underpinning as to why one of ordinary skill in the art at the
time of invention would have found it obvious to employ a temperature

12 Appellants argue the claims subject to Rejection IV as a group. See App.
Br. 21. We select claim 9 as representative. Accordingly, claims 10-13
stand or fall with claim 9. See 37 C.F.R. § 41.37(c)(1)(vii); see also In re
Lovin, 652 F.3d at 1351.
Appeal 2010-009821
Application 10/699,212

15
sensor. See Ans. 5. While the identification of a teaching, suggestion, or
motivation to combine need not be restricted to the references relied upon
for a proposed combination in an obviousness inquiry, see KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (“the analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ”), the Examiner aptly noted
that Goldman “specifically teach[es] providing temperature sensors at the
site.” Ans. 21 (citing Goldman, Abstract); see also Ans. 4 (finding that
Goldman discloses providing temperature sensors at the site) (citing
Goldman, Abstract). Accordingly, we do not find Appellants’ arguments
persuasive.
Rejection V – Obviousness over Makower, Roth, and Dew
The Examiner determined that the combination of Makower, Roth,
and Dew renders obvious the subject matter of claims 14-17 and 20-23.
Ans. 5-6. The Examiner found that Makower teaches most of the elements
claimed, except for the particular laser wavelength and the pull back
mechanism. Id. The Examiner found that Dew teaches the claimed
wavelength for treating tissue and that Roth teaches a pullback mechanism
employing the claimed rate. Id. at 6. The Examiner determined that it
would have been obvious to one of ordinary skill in the art at the time of
invention
to employ the wavelength of [Dew] in the device of [Makower],
since [Makower] teach[es] the use of an Nd:YAG laser, which
necessarily produces this radiation, as taught by [Dew] and to
employ the pull back mechanism of [Roth] since this enables
uniform treatment along the surface, as taught by [Roth], thus
producing a device such as claimed.
Appeal 2010-009821
Application 10/699,212

16
Id.
Appellants assert several arguments in response to this rejection.
First, Appellants contend that Makower, Roth, and Dew have nothing to do
with the treatment of varicose veins. App. Br. 22. Second, Appellants assert
that the notion that one of ordinary skill in the art “interested in treating BPH
as disclosed in Makower and Roth which explicitly or implicitly disclose the
standard wavelength of 1,064 nm [1.064 um] would have any interest in the
secondary laser wavelength of Dew . . . which is used for an entirely
different purpose is simply untenable.” Id. Third, Appellants contend that
Makower and Roth “cannot be combined” because Makower has a locking
means to prevent movement of the laser disclosed therein and Roth discloses
pulling the laser through the tissue. Id.
We do not find Appellants’ arguments persuasive.13 Claim 14 is
directed to a system for endovenous treatment of varicose veins comprising
(1) “a laser having a wavelength between about 1.2 and about 1.8 um”; and
(2) “a fiber optic laser delivery device having a proximal end and a distal
end, for delivery of laser energy from the distal end of the fiber optic laser
delivery device to the inside wall of a varicose vein.”14 The Examiner
considered claim 14 as an apparatus claim, and Appellants have not
persuasively explained why such treatment is erroneous. Thus, we agree
with the Examiner that one of ordinary skill in the art would find the claimed

13 Appellants argue the claims subject to Rejection V as a group. See App.
Br. 22. We select claim 14 as representative. Accordingly, claims 15-17
and 20-23 stand or fall with claim 14. See 37 C.F.R. § 41.37(c)(1)(vii); see
also In re Lovin, 652 F.3d at 1351.
14 The claim further recites “wherein the functionality of the varicose vein is
destroyed and collagen in the varicosed vessel wall can be heated and
shrunk.”
Appeal 2010-009821
Application 10/699,212

17
system obvious in light of the disclosure of the claimed structure. See
Ans. 21. The Examiner further explained that one of ordinary skill in the art
would have found it obvious to use the wavelength of Roth (1.064 um) as
well as the wavelength of Dew (1.32 um), which falls within the claimed
range, to seal the holes described in Makower. Id. at 21-22. The Examiner
also explained that Makower and Roth are not incompatible because
Makower’s locking mechanism “only locks the cannula,” but the “fiber can
be completely removed and reinserted while the cannula is locked in place.”
Id. at 22 (citing Makower at 20, ¶ 1). We discern no error in the Examiner’s
interpretation of Makower’s locking mechanism and Appellants have not
attempted to rebut this finding. Accordingly, we do not find Appellants’
arguments persuasive.
Rejection VI – Obviousness over Makower, Dew, Roth, and Conn
The Examiner determined that the combination of Makower, Dew,
Roth, and Conn renders obvious the subject matter of claim 19. Ans. 6. The
Examiner found that Dew teaches a “diffusing tip on an introducer for a
fiber.” Id. The Examiner determined that it would have been obvious to one
of ordinary skill in the art to “include the diffuser of [Conn] in the device of
[Makower] since this reduces problems due to breakage, as taught by
[Conn].” Id. The Examiner also found that at least one embodiment
disclosed in Makower involves photodynamic therapy and since Conn
discloses that the diffuser taught therein can be used in photodynamic
therapy, the teachings were properly combined. Id. at 22 (citing Makower at
20; Conn at 1).
Appellants assert that this rejection is erroneous because Makower,
Dew, and Roth do not suggest any interest in a diffusing tip, that it would be
Appeal 2010-009821
Application 10/699,212

18
useful in any of their devices, or that one skilled in the art would have any
inclination to use a diffusing tip in those devices. App. Br. 23.
We do not find Appellants’ arguments persuasive. Claim 19, which
depends indirectly from claim 14, calls for “a diffusing tip at the distal end
of the introducer catheter for providing an even distribution of energy
radiating during treatment.” As we explained above, the motivation or
suggestion to combine need not be derived from each reference sought to be
combined. See KSR, 550 U.S. at 418. The Examiner provided a reason with
a rational underpinning as to why it would have been obvious to one of
ordinary skill in the art to combine the teachings of the references in the
manner claimed. See Ans. 6, 22. Given that Makower and Conn are
directed, at least in part, to photodynamic therapy, and that Conn discloses
that controlling the diffusion of laser energy from the end of the optical fiber
is desirable in photodynamic therapy, this reason has a rationale
underpinning. See, e.g., Makower at 20; Conn at 1, ll. 4-7; Ans. 22.
Accordingly, we do not find Appellants’ arguments persuasive.
Teaching Away/Secondary Considerations
Appellants assert that the prior art teaches away from the use of lasers
with wavelengths above 1.064 um. App. Br. 25. Rather than base their
teaching away arguments on the prior art cited by the Examiner, Appellants
base their argument on declarations submitted by Hennings, Geriak, and
Goldman, and at least four articles, three of which were attached to the
Geriak Declaration (dated Nov. 22, 2005) as Exhibit A (written by Dr. Min),
and Exhibits B and C (written by Dr. Proebstle), and one of which was
attached to the Declaration of David R. Hennings (dated Dec. 22, 2008)
(“Second Hennings Declaration”) as Exhibit 1 (written by Drs. Fan and Rox-
Appeal 2010-009821
Application 10/699,212

19
Anderson). Id. at 23-27. Appellants also submitted product literature,
attached as Exhibits A-E to the Declaration of David R. Hennings (dated
June 30, 2005), from five laser devices for treating varicose veins having
wavelengths in the range of 810-980 nm. Id. at 23-24. Additionally,
Appellants refer to an article by Luis Navarro, U.S. Patent No. 6,398,777,
and U.S. Published Application No. 2005/001523. Id. at 26-27.
Appellants contend that the uniform view expressed in the scientific
literature at the time of invention was that “there was no consideration of
using anything other than blood as a chromophore for laser energy in the
810-980 nm wavelength range, and that a wavelength as high as 1064 nm
was undesirable.” Id. at 27. Appellants assert that the present invention was
a “substantial and significant departure” from the prior art because the
invention targeted water as a chromophore with laser energy in the range of
1200-1800 nm. Id. Appellants also contend that it was error for the
Examiner to refuse to consider their evidence of nonobviousness. Id. at
27-32.
As noted above, Appellants do not argue that any of the references
relied upon by the Examiner discourage a person of ordinary skill in the art
from following the path taken by Appellants. Thus, we consider Appellants’
arguments and evidence more akin to secondary considerations of
nonobviousness, e.g., skepticism of experts or, on a broad sense, proceeding
contrary to accepted wisdom/state of the art.
The March 13, 2009, Final Office Action, reflects that the Examiner
fully considered the declarations and articles submitted by Appellants. Final
Office Action (mailed Mar. 13, 2009) at 2-14. In fact, the Examiner spent
thirteen pages explaining his rationale for why the declarations and articles
Appeal 2010-009821
Application 10/699,212

20
did not overcome the prima facie case of obviousness based on the
combined teachings of the references cited in the various rejections. See id.
The Examiner’s Answer, however, does not repeat the rationale provided in
the Final Office Action. See Ans. 18-19. Rather, the Examiner states that
“[t]here is no assertion whatsoever in any Affidavit of record that the articles
or product literature are in any way representative of the prior art with
respect to varicose vein treatment.” Id. at 18. It is not entirely clear to us
why the Examiner takes this position when the Second Hennings
Declaration attests that “[t]he articles from the scientific literature attached
as Exhibits A, B and C to the aforesaid Geriak Declaration are fully
representative of the prior art with respect to varicose vein treatment and are
from highly respected scientific journals.” Second Hennings Decl. ¶ 6; see
also Goldman Decl. ¶ 8 (referring to Exhibits A, B, and C of the Geriak
Declaration as “representative of the belief held by the prior art prior to the
invention claimed in this application”). Thus, we disagree with the
Examiner that there was no assertion that the articles are representative of
the prior art with respect to varicose vein treatment.
Accepting that Exhibits A-C are representative of the prior art with
respect to varicose vein treatment, however, does not resolve the issue
before us. The Examiner found and we agreed (as discussed supra) that the
field of endeavor is more appropriately considered laser surgery, rather than
simply the treatment of varicose veins. Thus, while Exhibits A-C are
representative of the field of art for varicose vein treatment, they are not
fully representative of the laser surgery field. The laser surgery field
includes the Sinofsky, Dew, Roth, Conn, and Makower references upon
which the Examiner relied.
Appeal 2010-009821
Application 10/699,212

21
After fully reviewing and considering Exhibits A-C and Appellants’
arguments directed thereto, we find that they do not persuade us of the
nonobviousness of the claimed invention in light of the overwhelming
evidence of obviousness when considering the teachings of the references
relied upon by the Examiner in the laser surgery field. Of the three exhibits
submitted with the Geriak Declaration, Appellants’ focus on Exhibit A (the
article by Dr. Min).15 Dr. Min reports that in a study using 1064 nm laser
energy, a success rate of 96.8% was reported, but “significant complications
were noted, including paresthesias (36.5%) and skin burns (4.8%)” and
patients “underwent spinal or general anesthesia rather than strictly local
tumescent anesthesia.” Geriak Decl., Ex. A at 995. Treatment with 810 nm
diode laser energy, however, was reported to have “no heat related
complications despite high temperatures attained at the laser fiber tip.” Id.
Three potential reasons were proposed to explain the differences in the
results of the two studies: (1) improved delivery and use of sufficient
amounts of tumescent fluid; (2) that higher wavelengths, such as 1064 nm,
are absorbed less by blood and more by water; and (3) faster rates of
withdrawal and shallower depth of penetration of the 810 nm laser energy.
Id.
While we acknowledge that Exhibit A indicates that some
complications occurred with the use of a laser with a longer wavelength,
Exhibit A also reports a 98.6% success rate. See id. The claims at issue are
directed to methods and a system for treating varicose veins. Neither the

15 Appellants have not asserted and our independent review did not reveal
any statements in Exhibits B or C that reflect complications or negative
results of using laser energy of longer wavelength. Thus, we focus on
Exhibit A.
Appeal 2010-009821
Application 10/699,212

22
explicit claim language nor the claims when read in light of the Specification
require the exclusion of a certain percentage of complications to constitute
“treating varicose veins.” Thus, we are not persuaded that a 98.6% success
rate, as reported in Exhibit A, does not constitute successfully treating
varicose veins. For the same reasons, we do not find that Dr. Min’s article
constitutes sufficient evidence that experts were skeptical as to whether
lasers of longer wavelengths could be used to successfully treat varicose
veins.
Further, Dr. Min proposed three possible explanations to explain the
difference in results achieved by the shorter 810 nm wavelength, two of
which did not involve the wavelength itself. See Geriak Decl., Ex. A at 995.
Accordingly, while Exhibit A may have raised concerns about using a longer
wavelength, we find that it does not evidence sufficient skepticism of
experts as to whether a longer wavelength could be used to successfully treat
varicose veins. Rather, we find it more likely that one of skill in the art
would have continued to try various wavelengths while altering the other
variables identified by Dr. Min and other variables known in the art, as
taught by, inter alia, Sinofsky, Dew, and Roth, to determine if altering those
parameters reduced the complications noted by Dr. Min.
Appellants also submitted an article by Drs. Fan and Rox-Anderson
(Exhibit 1 to the Second Hennings Declaration) and asserted that the article
concludes that substantial patient benefit results from the use of laser energy
at the claimed wavelength of 1320 nm as compared with wavelengths of
810-1064 nm. See App. Br. 24; Second Hennings Decl., Ex. 1 at 209.
Exhibit 1, however, attributes the benefits of reduced pain and bruising to
Appeal 2010-009821
Application 10/699,212

23
“higher wavelength and lower energy application.”16 App. Br. 24 (quoting
Exhibit 1 at 209). As the Examiner correctly noted when considering this
article, the benefits were attributed to two features, while only one feature—
longer wavelength—is claimed. Final Office Action (mailed Mar. 13, 2009)
at 4. The claims do not recite a specific energy. Thus, the claims are not
commensurate in scope with the features attributed to reducing pain and
bruising as expressed in Exhibit 1.17 See In re Huai-Hung Kao, 639 F.3d
1057, 1068 (Fed. Cir. 2011) (“For objective evidence of secondary
considerations to be accorded substantial weight, its proponent must
establish a nexus between the evidence and the merits of the claimed
invention.”).
We have thoroughly considered Appellants’ additional arguments and
evidence indicating that lasers of a shorter wavelength were successfully
used to treat varicose veins. That evidence, however, does not persuade us
that the use of lasers of a wavelength in the claimed range, in and of itself
(i.e., the wavelength is the only claim element to which Appellants’
arguments and evidence are directed) reflects such a significant departure
from the accepted wisdom/state of the art that a claim directed to such use
would not have been obvious to one of ordinary skill in the art in light of the

16 In the context of Exhibit A, we understand the reference to “lower energy
application” to refer to the power setting of the laser, which was noted to be
5 W when used with the 1320 nm wavelength as compared to 12-15 W when
used with the 810-1064 nm wavelength. Second Hennings Decl., Ex. 1 at
209.
17 While Exhibit A is not prior art (it was published in 2008), we have
addressed it because Appellants appear to put substantial reliance upon the
statement therein noting the benefits of using a laser of longer wavelength
and lower energy.
Appeal 2010-009821
Application 10/699,212

24
teachings of the references relied upon by the Examiner. Accordingly, we
affirm Rejections I-VI.

DECISION
We affirm the Examiner’s decision rejecting claims 1-17, 19-23,
25-35, and 37-46.
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

mls