Ex Parte Tearney et al

Patent Trial and Appeal BoardMar 21, 2016

12845575 (P.T.A.B. Mar. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/845,575 07/28/2010 120944 7590 03/23/2016 Andrews Kurth LLP Attention: Intellectual Property - Patent Docket 450 Lexington A venue New York, NY 10017 FIRST NAMED INVENTOR Guillermo J. Tearney 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. 036064US.03-32865-215382 1243 EXAMINER SANTOS RODRIGUEZ, JOSEPH M ART UNIT PAPER NUMBER 3737 NOTIFICATION DATE DELIVERY MODE 03/23/2016 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): ptony@ andrewskurth. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GUILLERMO J. TEARNEY and BRETT EUGENE BOUMA Appeal2014-000191 Application 12/845,575 Technology Center 3700 Before LYNNE H. BROWNE, JILL D. HILL, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Guillermo J. Teamey and Brett Eugene Bouma ("Appellants") 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision to reject claims 31- 37. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. CLAIMED SUBJECT MATTER Sole independent claim 31, reproduced below, is representative of the subject matter on appeal. 1 According to Appellants, the real party in interest is General Hospital Corporation. Appeal Br. 2. Appeal2014-000191 Application 12/845,575 31. An apparatus, comprising at least one structural first arrangement configured to receive at least one first electromagnetic radiation from a first portion of the at least one structure; and at least one structural second arrangement configured to control a focal distance of at least one second electromagnetic radiation which is at least one of transmitted to or received from a second portion of the at least one structure as a function of the at least one first electromagnetic radiation. THE REJECTIONS I. Claims 31-37 stand rejected under 35 U.S.C. Â§ 112, second paragraph, as being indefinite. 2 II. Claims 31-33, 36, and 37 stand rejected under 35 U.S.C. Â§ 102(b) as anticipated by Ozawa (US 6,069,698; iss. May 30, 2000). III. Claims 34 and 35 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Ozawa and Smith (US 5,925,058; iss. July 20, 1999). ANALYSIS Rejection I The Examiner found that the claim language "at least one structural first arrangement configured to receive at least one first electromagnetic radiation from a first portion of the at least one structure" renders claim 31 indefinite because it is unclear whether the first portion of the structure emits the first electromagnetic radiation, and if it does, the Examiner found that claim 31 fails to set forth means for generating electromagnetic radiation 2 The Examiner withdrew a second rejection of claim 31 under 35 U.S.C. Â§ 112, second paragraph, as being indefinite. See Adv. Act. 2. 2 Appeal2014-000191 Application 12/845,575 from the first portion. Final Act. 2. Appellants argue that claim 31 recites that the first electromagnetic radiation is received by the structural first arrangement from the first portion of the at least one structure and that there is no requirement to set forth means for generating the electromagnetic radiation. Appeal Br. 11-12; see also Reply Br. 3. We agree with Appellants, and therefore, we do not sustain the rejection of claim 31 under 35 U.S.C. Â§ 112, second paragraph. The Examiner also found that claim 3 7 is indefinite because it is unclear whether the first and second portions are part of the apparatus or the structure that the apparatus is analyzing. Final Act. 2. Appellants argue that claim 37 is definite because it depends from claim 31, and claim 31 explicitly recites that the first and second portions are part of the structure. Appeal Br. 12; see also Reply Br. 4. We agree with Appellants. Although "the at least one structure" lacks antecedent basis in claim 31, we find that a person of ordinary skill in the art viewing the claims in light of the Specification would understand that the first and second portions recited in claim 37 are the first and second portions of a structure being analyzed by the apparatus recited in claim 31. Accordingly, we do not sustain the rejection of claim 37 under 35 U.S.C. Â§ 112, second paragraph. 3 3 Should there be further prosecution of claim 37, the Examiner may wish to consider whether claim 37 satisfies the requirements of 35 U.S.C. Â§ 112, fourth paragraph, which requires a claim in dependent form to specify a further limitation of the subject matter claimed. The subject matter claimed in claim 31 is the apparatus which analyzes the structure, and claim 37, which depends from 31, does not further limit the claimed apparatus, but rather the structure the apparatus is analyzing. 3 Appeal2014-000191 Application 12/845,575 Rejection II Regarding independent claim 31, the Examiner found, inter alia, that Ozawa's light path modifying mechanism 14 corresponds to the claimed "at least one structural second arrangement configured to control a focal distance of at least one second electromagnetic radiation ... as a function of the at least one first electromagnetic radiation." Final Act. 3 (citing Ozawa, col. 4, 11. 4--15). Appellants argue that Ozawa' s light path modifying mechanism 14 only controls an optical path length of the electromagnetic radiation, which is different than the focal distance of the electromagnetic radiation. Appeal Br. 15-17; see also Reply Br. 5---6. Ozawa discloses that light path modifying mechanism 14 modifies the length of a light beam and then directs the modified beam to a photo diode, which converts the beam into a signal used to create an image. See Ozawa, col. 4, 11. 4--15, 60---64, col. 5, 11. 20-30. Ozawa further discloses that at the tip of the apparatus, fiber 10 receives lens 56 to converge rays emanating from the front end of fiber 10 onto a specified position, and that micro prism 57 reflects rays guided by fiber 10 and converged by lens 56, such that the rays pass through sheath 4 7 and converge into a radiating beam outside the tip, whereby the beam has a certain flux diameter at "a focusing point having a specified distance." Ozawa, col. 7, 11. 12-31. Ozawa further discloses that fiber 10 is fixed in tip body 49 and micro prism 57 is fixed to lens 56. Id. at col. 7, 11. 12-14, 19-22. Although the claim term "focal distance" does not appear in Appellants' Specification, other than in the claims as originally filed, Appellants' Specification describes changing the distance between either the fiber and the lens or the lens and the prism to change the "location of focus," such that "the light beam at distance d 1 has a different focal point 4 Appeal2014-000191 Application 12/845,575 than the light beam at distance d2." Spec., p. 18, 1. 10-p. 19, 1. 19. Thus, we are persuaded by Appellants' argument that the Examiner has failed to establish by a preponderance of evidence that Ozawa's light path modifying mechanism 14 is configured as a structural second arrangement to control a focal distance of at least one second electromagnetic radiation, as claimed; rather, the focal distance appears to be determined in Ozawa by fiber 10, micro prism 57, and lens 56. Accordingly, we do not sustain the rejection of independent claim 31, and claims 32, 33, 36, and 37 depending therefrom, as anticipated by Ozawa. Rejection III Claims 34 and 35 depend from independent claim 31. The Examiner's reliance on Smith does not cure the deficiency in the Examiner's finding with respect to Ozawa as applied to claim 31, discussed supra. See Final Act. 4. Accordingly, we do not sustain the rejection of claims 34 and 35 as unpatentable over Ozawa and Smith. DECISION We REVERSE the Examiner's rejection of claims 31-37. REVERSED 5