Ex Parte Wang

Patent Trial and Appeal BoardApr 4, 2016

12720744 (P.T.A.B. Apr. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121720,744 03/10/2010 53048 7590 BWT PROPERTY, INC 19 SHEA WAY SUITE 301 NEWARK, DE 19713 04/05/2016 FIRST NAMED INVENTOR Sean Xiaolu Wang 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. 9724 EXAMINER JACKSON, GARY ART UNIT PAPER NUMBER 3769 MAILDATE DELIVERY MODE 04/05/2016 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 SEAN XIAOLU WANG Appeal2014-003722 Application 12/720,7441 Technology Center 3700 Before PHILIP J. HOFFMANN, KENNETH G. SCHOPPER, and TARA L. HUTCHINGS, Administrative Patent Judges. SCHOPPER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134 from the rejection of claims 1-14. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. BACKGROUND According to Appellant, "[the] invention generally relates to a light surgery apparatus, and more specifically to an LED based light surgery apparatus." Spec. 1, 11. 9-10. 1 According to Appellant, the real parties in interest are Sean Xiaolu Wang and BWT Property, Inc. App. Br. 2. Appeal2014-003722 Application 12/720,744 CLAHvIS Claims 1-14 are on appeal. Claim 1 is illustrative of the appealed claims and recites: 1. A surgical apparatus for ablation, incision, and/or coagulation of biological tissue, the surgical apparatus compnsmg: at least one high intensity surface-mounted or chip-on- board (COB) packaged light emitting diode (LED) light source for producing a light beam with high power density; and an optical system for delivering said light beam to be absorbed by the biological tissue; wherein the power density of said light beam is above a predetermined threshold level to increase a temperature of the biological tissue so as to cause a transformation for at least one constituent of the biological tissue for ablation, incision, and/or coagulation of the biological tissue. Appeal Br. 8-9. REJECTIONS 1. The Examiner rejects claims 1---6, 8-11, 13, and 14 under 35 U.S.C. Â§Â§ 102(a), (e) as anticipated by Bendett.2 2. The Examiner rejects claims 1---6, 8-11, 13, and 14 under 35 U.S.C. Â§ 103(a) as unpatentable over Bendett in view of Essenpreis. 3 3. The Examiner rejects claim 7 under 35 U.S.C. Â§ 103(a) as unpatentable over Bendett in view ofKnopp.4 2 Bendett et al., US 2008/0077200 Al, pub. Mar. 27, 2008. 3 Essenpreis, US 6,659,966 B2, iss. Dec. 9, 2003. 4 Knopp et al., US 2002/0198516 Al, pub. Dec. 26, 2002. 2 Appeal2014-003722 Application 12/720,744 4. The Examiner rejects claim 7 under 35 U.S.C. Â§ 103(a) as unpatentable over Bendett in view of Essenpreis and Knopp. 5. The Examiner rejects claim 12 under 35 U.S.C. Â§ 103(a) as unpatentable over Bendett in view of Davenport. 5 6. The Examiner rejects claim 12 under 35 U.S.C. Â§ 103(a) as unpatentable over Bendett in view of Essenpreis and Davenport. DISCUSSION Appellant presents arguments with respect to all appealed claims as a single group. See Br. 6-8. We select claim 1 as representative of the appealed claims. Further, because we sustain the rejection of claim 1 as obvious over Bendett in view of Essenpreis, we do not reach the rejection of claim 1 as anticipated by Bendett. With respect to claim 1, the Examiner finds, inter alia, that Bendett discloses a surgical apparatus for ablating tissue including a high intensity laser diode for producing a light beam with high power density; an optical system for delivering the light beam to be absorbed by biological tissue; and wherein the power density of the light beam is above a predetermined threshold to heat the tissue and cause a transformation of the tissue for ablation. Final Action 6-8 (citing Bendett iii! 2, 12, 13, 72, 91, 110, 112). The Examiner also finds that "Essenpreis teaches that LED's may be used as an effective substitute for a laser light source such as a collimated laser diode ... [and] Essenpreis teaches that the LED is mounted onto the surface of the device." Id. at 8 (citing Essenpreis col. 3, 11. 60-67; col. 4, 11. 30-33). The Examiner 5 Davenport et al., US 6,554,824 B2, iss. Apr. 29, 2003. 3 Appeal2014-003722 Application 12/720,744 concludes that substituting an LED for a laser diode would be a matter of design choice. Id. at 8-9. We agree with and adopt the Examiner's findings and conclusions regarding the scope and content of the prior art with respect to claim 1. As discussed below, we are not persuaded of error by Appellant's arguments. With respect to the obviousness rejection of claim 1, Appellant first argues that the combination of references does not teach a high intensity surface-mounted or chip-on-board (COB) packaged LED as claimed. Br. 7. Specifically, Appellant asserts that the Specification defines a surface- mounted or COB packaged LED as "a type of LED in which the LED chips are directly surface mounted on a thermal conductive substrate for improved heat dissipation." Id. at 7-8. However, we agree with the Examiner that under the broadest reasonable interpretation of the claim consistent with the Specification, the use of a surface-mounted LED would have been obvious over the proposed combination of Bendett and Essenpreis. See Ans. 16-18. In particular, we find that Essenpreis at least suggests a light source 16, which may be an LED that is mounted on a surface of the device and is capable of raising the temperature of blood to cause coagulation as required by the claim. See Essenpreis Fig. 1; col. 3, 11. 40---47, 61-67; col. 4, 11. 30--- 33. Because Essenpreis teaches that the LED is capable of causing coagulation, we find that the substrate on which it is mounted is sufficiently thermally conductive such that it reasonably may be interpreted as a surface- mounted LED as described in the Specification. Based on the foregoing, we determine that the Examiner has established a prima facie showing of obviousness without error. 4 Appeal2014-003722 Application 12/720,744 Accordingly, we sustain the rejection of claim 1. Claims 2-14 fall with claim 1. CONCLUSION For the reasons set forth above, we affirm the obviousness rejections of claims 1-14 based on the combination of Bendett and Essenpreis. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 5