Ex Parte Wolter

Patent Trial and Appeal Board

Aug 7, 2017

13393337 (P.T.A.B. Aug. 7, 2017)

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.
13/393,337 03/28/2012 Michael Wolter 28361 1767
23389 7590 08/09/2017
SCULLY SCOTT MURPHY & PRESSER, PC
400 GARDEN CITY PLAZA
SUITE 300
GARDEN CITY, NY 11530
EXAMINER
SMITH, RUTH S
ART UNIT PAPER NUMBER
3737
NOTIFICATION DATE DELIVERY MODE
08/09/2017 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):
Docket@SSMP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL WOLTER
Appeal 2016-001300
Application 13/393,3371
Technology Center 3700
Before ULRIKE W. JENKS, TIMOTHY G. MAJORS, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
NEWMAN, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a medical
luminaire for photodynamic diagnosis. The Examiner entered final
rejections that the claims are indefinite, obvious, lack adequate written
description, and that one dependent claim fails to further limit the subject
matter.
We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-
PART.
1 Appellant identifies the Real Party in Interest as OLYMPUS WINTER &
IBE GMBH. Br. 3.
Appeal 2016-001300
Application 13/393,337
STATEMENT OF THE CASE
Background
Photodynamic Diagnosis (PDD) is primarily used for recognition
of tumours which for example fluoresce after administration of
certain substances. For this purpose, luminaires are required
which emit shortwave excitation light onto the area to be
observed, by which the fluorescent areas are stimulated to
fluoresce tin the long-wave range. Observation is usually
accomplished by means of a long-pass filter to suppress the
short-wave excitation light. . . .
. . . The broad-band lamp [of the prior art] is an arrangement
consisting of several light emitting diodes, which together
generate white light and one of which, which generates blue
light, serves as the semiconductor lamp for generating the
excitation light. Thus the semiconductor lamp serves both to
generate the excitation light and to generate the corresponding
spectral range of the broad-band light.
However, this also results in disadvantages, primarily because
the semiconductor lamp in this type of design must be relatively
broad-band. It therefore generates a very intense blue,
outshining all other frequencies, wherein only a narrow
frequency range, usable for excitation, actually excites the
fluorescence. The intensive blue must be filtered out with a
highly effective long-pass filter in order not to outshine the entire
image, including the fluorescent effects, during observation.
[In another prior art lamp,] both the light of the broad-band lamp
and the excitation light are transported together into a light guide
fibre bundle. A laser diode is used as the semiconductor
lamp. . . .
A drawback in these designs on the other hand is that both the
long-wave light and the short excitation light travel through the
same glass fibres, thus through the same glass. This causes
disadvantages, since the glass types are not optimally adapted to
the wavelengths.
Spec. 1—2.
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Application 13/393,337
The Specification discloses “a simple and cost-effective solution to
this illumination problem” comprising a luminaire in which “the excitation
light is transported in a separate partial bundle. This can therefore be
optimized for the wavelength of the excitation light, for example may
consist of quartz glass, while the remainder of the partial bundle is optimized
for white light in the usual way.” Id. at 2.
The Claims
Claims 1—3 and 5—8 are pending and on appeal. Br. 6. Sole
independent claim 1 is illustrative and reads as follows:
1. A medical luminaire for photodynamic diagnosis, the
medical luminaire comprising:
a broad-band lamp for generating broad-band background
light;
a semiconductor lamp for generating short-wave
excitation light, wherein the semiconductor lamp comprises a
laser diode, the light from which is fed alternatively or
additionally into a light path of the broad-band lamp, and
a light fiber bundle for transporting the background light,
wherein the laser diode is configured to emit light into the light
path of the broad-band background light before entering the light
fiber bundle, wherein the excitation light is transported in a
partial bundle of light fibers, wherein the light fiber bundle is
configured to transport the background light separately from the
excitation light transported in the partial bundle of light fibers,
wherein the partial bundle of light fibers is covered by the light
fiber bundle.
Br. (Claims App.) 13 (emphases added).
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Application 13/393,337
The Issues
The following rejections are before us to review:
Claims 1—3 and 5—8 are rejected under 35 U.S.C. § 112(a) or (pre-
AIA), 35 U.S.C. § 112, first paragraph, as lacking adequate written
description. Ans. 2.
Claims 1—3 and 5—7 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite. Id.2
Claim 8 is rejected under 35 U.S.C. § 112, fourth paragraph, for
failing to further limit the subject matter of the claim from which it depends.
Claims 1, 2, and 5—7 are rejected under 35 U.S.C. § 103(a) as obvious
over Hayashi3 in view of Frangioni.4 Id. at 3.
Claims 1, 2, 5, 6, and 8 are rejected under 35 U.S.C. § 103(a) as
obvious over Hayashi in view of Frangioni. Id. at 5.
Claims 1, 2, 5, 6, and 8 are rejected under 35 U.S.C. § 103(a) as
obvious over Frangioni in view of Hayashi. Id. at 6.
Claim 3 is rejected under 35 U.S.C. § 103(a) as obvious over Hayashi
in view of Frangioni and Wach5 or Zhao6 or Ince.7 Id. at 7.
2 Although the Answer states the rejection also applies to claim 8, we
believe this to be an error given the express withdrawal of the rejection of
claim 8 under 35 U.S.C. § 112, second paragraph, noted on page 2 of the
Answer.
3 U.S. Patent Publication No. 2001/0049473 Al, published Dec. 6,
2001 (“Hayashi”).
4 U.S. Patent Publication No. 2007/0203413 Al, published Aug. 30,
2007 (“Frangioni”).
5 U.S. Patent No. 7,903,338 Bl, issued Mar. 8, 2011 (“Wach”).
6 U.S. Patent No. 7,102,746 B2, issued Sep. 5, 2006 (“Zhao”).
7 U.S. Patent Publication No. 2006/0184037 Al, published Aug. 17, 2006
(“Ince”).
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Application 13/393,337
Claim 3 is rejected under 35 U.S.C. § 103(a) as obvious over Frangioni
in view of Hayashi and Wach or Zhao or Ince. Id.
WRITTEN DESCRIPTION
The Examiner finds that claims 1—3 and 5—8 fail to comply with the
written description requirement. Ans. 2. The Examiner finds the
Specification “fails to disclose that the partial bundle of light fibers is
covered by the light fiber bundle. The term is considered to be broader in
scope than the disclosed structure.” Id. The Examiner notes that the
Specification does not define “covered by” or explain the meaning of the
term, such as by identifying a structure including a partial bundle that is
“covered by” a light guide fiber bundle. Id. at 8.
Appellant argues8 that Figures 2 and 3 and page 4 of the Specification
describe the limitation “wherein the partial bundle of light fibers is covered
by the light fiber bundle.” Id. Figures 2 and 3 are reproduced below:
W 12
11
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Fio 2» 3 &«**
8 We note that Appellant’s argument appears to respond to the rejection
under 35 U.S.C. § 112, second paragraph. Br. 8. However, the arguments
made pertain to the rejection under 35 U.S.C. § 112, first paragraph, and we
construe them as responsive to that argument.
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Application 13/393,337
Figure 2 is a cross section of a fiber light guide. Spec. 2. Figure 3 is a
cross section of the luminaire shown in Figure 1. Id. at 3. Appellant argues
these figures illustrate “how the partial bundle (13 of FIG. 2) is covered by
light guide fiber bundle (12 of FIG. 2).” Br. 8. Appellant also argues the
following Specification language supports the claimed language: “In the
light guide fibre [sic] bundle 12 a separate partial bundle 13 is shown, which
is arranged centrally in the exemplified embodiment.” Spec. 4.
We agree with Appellant that the Examiner has not shown that the
Specification fails to adequately describe the claimed device. The Court of
Appeals for the Federal Circuit has adopted the standard that
the written description requirement can be met by “showing]
that an invention is complete by disclosure of sufficiently
detailed, relevant identifying characteristics . . . i.e., complete or
partial structure, other physical and/or chemical properties,
functional characteristics when coupled with a known or
disclosed correlation between function and structure, or some
combination of such characteristics.”
Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 964 (Fed. Cir. 2002)
(alterations in original, emphasis and citation omitted).
While Appellant has disclosed more than one embodiment, including
one in which “the light generated by the laser diode 19 is transported in the
partial bundle 13 separately from the light of the lamp 16” (Spec. 4.), we
understand, as Appellant urges us to, that the claimed embodiment is as
disclosed in Figure 2 in which the “partial bundle of light fibers” (those
transmitting the excitation light) is physically surrounded by the “light fiber
bundle” (those transmitting the broadband light). Br. 8. Thus, because the
Specification discloses structures that correspond to this claim term and
describes that the “partial bundle of light fibers” is “located centrally,” we
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Application 13/393,337
find that a person of ordinary skill in the art would have recognized
Appellant’s possession of a composition of the claimed breadth, based on
the knowledge in the art at the time of filing, from the Specification’s
written description. We therefore reverse the rejection under 35 U.S.C.
§112, first paragraph, for lack of adequate written description.
INDEFINITENESS
The Examiner has rejected claims 1—3 and 5—7 as indefinite. The
Examiner finds:
Claim 1 is vague and indefinite in that it is unclear as to how a
partial bundle of light fibers differs from a light fiber bundle.
Both appear to be a bundle of light fibers. Therefore it is unclear
as to what part of the bundle the term “partial” is defining. Claim
1 is vague and indefinite in that it is unclear as to what is meant
by “the partial bundle of light fibers is covered by the light fiber
bundle.” Claim 7 is vague and indefinite in that it appears that
the excitation light is transported through the lens to a distal end
of the “partial” bundle of light fibers rather than being
transported to the distal end of the light fiber bundle.
Ans. 2—3.
Appellant does not respond to this rejection (see Br. 7—8 and footnote
7, above), and has accordingly waived arguments in response. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2015). We select claim 1 as representative of the group,
with claims 2 and 5-7 standing or falling with claim 1. Id.
We apply the approach for assessing indefmiteness approved by the
Federal Circuit in Packard, i.e., “[a] claim is indefinite when it contains
words or phrases whose meaning is unclear.” In re Packard, 751 F.3d 1307,
1310, 1314 (Fed. Cir. 2014). Under this approach, “claims are required to
be cast in clear—as opposed to ambiguous, vague, indefinite—terms.” Id. at
1313.
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We agree with the Examiner that, as discussed above, “covered by the
light fiber bundle” is neither defined nor explained in the Specification,
despite that doing so may also have elucidated how Appellant intended for
the “partial bundle of light fibers” to be clearly distinguished from “a light
fiber bundle,” particularly in those embodiments in which the same types of
fibers are used to transmit excitation and broadband light. See Spec. 4. A
person of skill in the art would be unable to parse the application of these
terms within the scope of the Specification. As such, the claim suffers from
general vagueness and ambiguity.
As also discussed above, we find that one having ordinary skill in the
art could discern from Figures 2 and 3 that fibers carrying the excitation
light (a partial bundle of light fibers) could be wholly surrounded by fibers
carrying the broadband light, together comprising a “light fiber bundle,”
which would be “configured to transport the background light separately
from the excitation light transported in the partial bundle of light fibers.”
However, because Figures 2 and 3 are examples and Appellant does not
limit the scope of the invention to this encapsulated configuration, the limits
of the appealed claims remain vague and indefinite. Stated differently,
neither the language of claim 1 nor anything in Appellant’s Specification
delineates how a person of ordinary skill would determine whether a
particular fiber is part of the “partial bundle of light fibers” and whether that
partial bundle is “covered by” the light fiber bundle. For these reasons, we
agree with the Examiner that these limitations, under the broadest reasonable
interpretation when read in light of the Specification, are vague and unclear,
and a person having ordinary skill in the art would not be able to discern the
metes and bounds of the claimed invention in light of this claim language.
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Accordingly, we affirm the rejection of claims 1—3 and 5—7 under
35U.S.C. § 112, second paragraph, as indefinite for failing to particularly
point out and distinctly claim Appellant’s invention.
DEPENDENT CLAIM STRUCTURE
The Examiner has rejected claim 8 under pre-AIA 35U.S.C. § 112,
fourth paragraph, as being of improper dependent form for failing to further
limit the subject matter of the claim upon which it depends. Ans. 3. The
Examiner finds that claim 8 “is directed to [an] intended use of the device
and fails to set forth an additional structural limitation for performing the
function as set forth.” Id.
Appellant argues first that claim 8 was amended in response to the
Examiner’s Final Action, that the amendment should have been entered, and
because the scope of claim 8 remains the same, claim 8 “should be fully
considered as amended.” Br. 8.
Whether the Examiner should have entered an amendment in response
to a Final Action is a matter petitionable to the Director, rather than
appealable to the Board. 37 C.F.R. § 1.181. Failure to timely file a petition
waives any arguments on the petitionable matter. Id. Furthermore, in the
Appeal Brief, Appellant responded to the substance of the rejection.
Accordingly, we consider claim 8 in its non-amended form, as shown below:
8. The medical luminaire according to claim 1, wherein the
excitation light is transported in the partial bundle of light fibers
at the same time as the background light is transported in the light
fiber bundle.
Br. (Claims Appendix) 14.
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Appellant next argues:
Even without amendment Claim 8 . . . sufficiently recites the
claimed luminaire and the meaning of it should have been
understood.
. . . Claim 8 limits the transportation of the excitation light
and background light to be at the same time, whereas Claim 1
merely recites that the two types of light are transported
separately.
Br. 8.
A patent applicant is free to recite features of an apparatus either
structurally or functionally. See In re Swinehart, 439 F.2d 210, 212 (CCPA
1971) (“[TJhere is nothing intrinsically wrong with [defining something by
what it does rather than what it is] in drafting patent claims.”). We agree
with the Appellant that claim 8, as recited in permissible functional
language, does not require the addition of structure for performing the
function to be in proper dependent claim format. Accordingly, we reverse
the rejection of claim 8 under 35U.S.C. § 112, fourth paragraph, for
improper claim format.
OBVIOUSNESS
A. Hayashi in view of Frangioni (Claims 1, 2, 5, 6, and 7)
The Examiner has rejected claims 1, 2, 5, 6, and 7 under 35 U.S.C.
§ 103(a) as obvious over Hayashi in view of Frangioni. Ans. 3. The
Examiner finds:
Hayashi discloses a medical luminaire for photodynamic
diagnosis comprising a broadband lamp 118 for generating
broadband background light, a lamp 111 for generating
excitation light, the light from which is fed alternatively into a
light path of the broadband lamp and a light fiber bundle 106 for
transporting the background light wherein the excitation light
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configured to emit light into the light path of the background
light before entering the light fiber bundle. The excitation light
is transported in a partial bundle.
Id. The Examiner further finds that “fiber bundle 106 is considered a partial
bundle in view of additional fiber bundle 104” and that “the partial bundle of
light fibers disclosed by Hayashi is considered to be ‘covered by’ the light
fiber bundle in that the Examiner interprets the term ‘covered by’ to be
synonymous with ‘included with.’” Id. The Examiner concludes the skilled
artisan would have found it obvious to use multiple fibers in a bundle in an
imaging bundle to transport light. Id.
The Examiner finds that Hayashi does not disclose use of a laser diode
to provide the excitation light. Id. at 3^4. The Examiner finds Frangioni
discloses “the use of a laser diode as the excitation light source.” Id. at 4.
The Examiner concludes that the skilled artisan at the time of the
invention would have found it obvious “to have modified Hayashi such that
the excitation light source comprises a laser diode [because this]
modification merely involves the substitution of one known type of light
source for another.” Id.
Appellant argues the five rejections under 35 U.S.C. § 103(a)
collectively and focuses on the Examiner’s combination of Hayashi and
Frangioni. See Br. 9-11. Appellant argues that each rejection is based on
“misinterpretation of the claims, mainly that the term the partial bundle of
light fibers being ‘covered by’ the light fiber bundle means the same thing as
the partial bundle of light fibers being ‘included with’ the light fiber
bundle.” Br. 9. Appellant argues, consistent with Appellant’s statements
discussed above:
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Application 13/393,337
Based on the specification and figures, a person of ordinary skill
in the art would clearly understand that the term “covered by” is
best illustrated in FIG. 2. As can be seen in FIG. 2, not only is
the partial bundle of light fibers included with the light guide
fiber bundle as part of the light fiber (reference number 4 of FIG.
1), the partial bundle is “covered by” the light guide fiber bundle.
Therefore, the claim term “covered by”, when correctly
interpreted based on the present specification, is clearly different
than “included with”.
Br. 9. Appellant argues none of the cited references “disclose a partial
bundle of light fibers being covered by the light fiber bundle, wherein the
light fiber bundle is configured to transport the background light separately
from the excitation light transported in the partial bundle of light fibers.” Id.
Appellant further argues that, in all rejections, the Examiner has “equate[d]
the light guide (106 or 201) of Hayashi as both the claimed partial bundle of
light fibers and the claimed light fiber bundle” which Appellant argues does
not meet the claim limitation “wherein the light fiber bundle is configured to
transport the background light separately from the excitation light
transported in the partial bundle of light fibers.” Id. at 9-10. Appellant also
argues neither light guide of Hayashi “is covered by the other guide.” Id. at
10.
Appellant argues that because
the input of Frangioni transmits a combination of both the
excitation light and the background light in the same fiber, with
both lights being mixed throughout the entire light guide . . .
Frangioni does not disclose a light fiber bundle being configured
to transport background light separately from excitation light
transported in the partial bundle of light fibers, as recited in the
present claims.
Id.
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The issue in this rejection is whether a preponderance of the evidence
supports the Examiner’s conclusion that Hayashi’s first embodiment cited by
the Examiner and Frangioni teach the subject matter of claim 1.
Findings of Fact
FF1. Hayashi discloses a first embodiment of the claimed endoscope:
Figure 6 is “a schematic view showing an endoscope system, in which a
fluorescence detecting apparatus according to a first embodiment of the
present invention is employed.” Hayashi 173.
FF2. Hayashi discloses:
The endoscope 100 is provided with an endoscope tube 101,
which is to be inserted into the living body. A light guide 106
and image fibers 104 extend in the endoscope tube 101 up to a
leading end of the endoscope tube 101. An illuminating lens 102
is located at a leading end of the light guide 106, i.e. at the leading
end of the endoscope tube 101. An objective lens 103 is located
at a leading end of the image fibers 104, i.e. at the leading end of
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the endoscope tube 101. A tail end portion of the light guide 106
passes through a connecting section 107 for connecting the
illuminating device 110 and a manipulating section 105 and
extends into the illuminating device 110.
Id. 1179.
FF3. Hayashi discloses:
When the ordinary image is to be obtained, the switching mirror
115 of the illuminating device 110 is driven by the driver 116 in
accordance with the signal fed from the timing controller 158 and
is moved to the position indicated by the broken line in FIG. 6,
such that the switching mirror 115 may not obstruct the travelling
path of the white light L2. The white light L2 having been
produced by the xenon lamp 118 passes through a lens 117 and
travels to the switching mirror 115. The white light L2 is caused
by a lens 114 to enter the light guide 106, guided through the
light guide 106 to the leading end of the endoscope 100, and then
irradiated through the illuminating lens 102 to the region of
interest 10 in the living body containing the diseased part 11.
Id. 1184.
FF4. Hayashi discloses:
The switching mirror 115 of the illuminating device 110 is driven
by the driver 116 in accordance with the signal fed from the
timing controller 158 and is moved to the position indicated by
the solid line in FIG. 6, such that the switching mirror 115 may
block the travelling path of the white light L2 and may reflect the
excitation light LI. The excitation light LI having been produced
by the mercury vapor lamp 11 passes through the optical filter
112 and a lens 113 and travels to the switching mirror 115. The
excitation light LI is then reflected by the switching mirror 115
and caused by the lens 114 to enter the light guide 106. The
excitation light LI is guided through the light guide 106 to the
leading end of the endoscope 100, and then irradiated through
the illuminating lens 102 to the region of interest 10 in the living
body containing the diseased part 11.
Id. 1187.
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Principles of Law
“The protocol of giving claims their broadest reasonable interpretation
during examination does not include giving claims a legally incorrect
interpretation. This protocol is solely an examination expedient, not a rule
of claim construction.” In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir.
2009).
Analysis
We begin with claim interpretation because before a claim is properly
interpreted, its scope cannot be compared with the prior art. The dispute
centers on the term “covered by” in independent claim 1.
The Specification does not define “covered by.” Accordingly, we
apply the broadest reasonable construction in light of the Specification. See
Phillips v. AWHCorp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc)
(“The Patent and Trademark Office (‘PTO’) determines the scope of claims
in patent applications not solely on the basis of the claim language, but upon
giving claims their broadest reasonable construction ‘in light of the
specification as it would be interpreted by one of ordinary skill in the art.’”
(quoting In re Am. Acad, of Science Tech Center, 367 F.3d 1359, 1364 (Fed.
Cir. 2004))).
An ordinary meaning of “cover” is: “[t]o place something upon or
over, so as to protect or conceal.”9 This general definition is consistent with
the example embodiments discussed above in Figures 2 and 3 of the
Specification, as discussed above. The Examiner interprets “covered by” as
9 American Heritage® Dictionary of the English Language (2007), retrieved
from https://www.ahdictionary.com/word/search.html?q=cover (last
accessed August 2, 2017).
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“included with.” Ans. 3. We do not find this interpretation reasonable.
Consistent with the general definition above, we agree with Appellant that
the ordinary meaning of “covered by” is “best illustrated in” Figure 2,
namely, that the a partial bundle of light fibers, which transmits the
excitation light, is concealed by the light fiber bundle, which surrounds it as
shown in Figure 2. We apply this narrow interpretation of “covered by” in
the obviousness analysis.
Although the “covered by” limitation is vague and unclear, for the
reasons set forth above, we agree with Appellant that the Examiner has not
identified any portion of Hayashi’s first embodiment that discloses a partial
bundle of light fibers being “covered by” the light fiber bundle, wherein the
light fiber bundle is configured to transport the background light separately
from the excitation light transported in the partial bundle of light fibers.10
Br. 9. See FFl^l.
10 Although we have determined supra that this claim limitation is indefinite,
we nonetheless use our discretion in this case to address the prior art
contentions raised by Appellant based on Appellant’s asserted interpretation.
See, e.g., Supplementary Examination Guidelines for Determining
Compliance With 35 U.S.C. § 112 and for Treatment of Related Issues in
Patent Applications, 76 Fed. Reg. 7162, 7169 (Feb. 9, 2011) (advising
examiners to interpret the claim and apply art with an explanation of how an
indefinite term is interpreted under the principles of compact prosecution).
In other words, although the metes and bounds of this claim language are
unclear, Appellant has provided a narrow interpretation that falls within the
claim language. Under this narrow interpretation, we conclude the claim is
not obvious in view of the prior art. As such, unlike in the case of In re
Steele, 305 F.2d 859 (CCPA 1962), a determination of nonobviousness in
this case does not require speculation as to the scope of the claims. Id. at
862-63 (holding that the Board erred in affirming a rejection of indefinite
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The Examiner provides no teachings in Frangioni to disclose a partial
bundle of light fibers being “covered by” the light fiber bundle for the
purposes of this rejection. We therefore reverse this obviousness rejection.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Hayashi’s first embodiment and Frangioni teach a partial bundle of light
fibers being “covered by” the light fiber bundle as required by claim 1.
B. Hayashi in view of Frangioni (Claims 1, 2, 5, 6, and 8)
The Examiner has rejected claims 1, 2, 5, 6, and 8 under 35 U.S.C.
§ 103(a) as obvious over Hayashi in view of Frangioni. Ans. 5. The
Examiner finds:
Hayashi discloses a medical luminaire for photodynamic
diagnosis comprising a broadband lamp 211 for generating
broadband background light, a semiconductor laser 214 for
generating excitation light, the light from which is fed into a light
path of the broadband lamp and a light fiber bundle 201 for
transporting the background light. The semiconductor laser is
configured to emit light into the light path of the broadband light
before entering the light fiber bundle via partial bundle 201 b
through which the excitation light is transported.
Id. The Examiner further finds that “the partial bundle of light fibers
disclosed by Hayashi is considered to be ‘covered by’ the light fiber bundle
in that the Examiner interprets the term ‘covered by’ to be synonymous with
‘included with.’” Id.
claims under 35 U.S.C. § 103(a), because the rejection was based on
speculative assumptions as to the meaning of the claims).
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The Examiner finds that Hayashi does not disclose use of a laser diode
to provide the excitation light. Id. at 3^4. The Examiner finds Frangioni
discloses “the use of a laser diode as the excitation light source.” Id. at 4.
The Examiner concludes that the skilled artisan at the time of the
invention would have found it obvious “to have modified Hayashi such that
the excitation light source comprises a laser diode [because this]
modification merely involves the substitution of one known type of light
source for another.” Id.
Appellant’s arguments in response are summarized above (see A).
The issue in this rejection is whether a preponderance of the evidence
supports the Examiner’s conclusion that Hayashi’s second embodiment cited
by the Examiner and Frangioni teach the subject matter of claim 1.
Findings of Fact
FF5. Hayashi discloses a second embodiment of the claimed endoscope:
F i Q . $ 2
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Figure 12 is “a schematic view showing an endoscope system, in which a
fluorescence detecting apparatus according to a second embodiment of the
present invention is employed.” Id. 179.
FF6. Hayashi discloses:
The light guide 201 comprises a white light guide 201a, which is
constituted of a compound glass fiber, and an excitation light
guide 201b, which is constituted of a quartz glass fiber. The
white light guide 201a and the excitation light guide 201b are
bundled together in a cable-like form to constitute the light guide
201. The white light guide 201a and the excitation light guide
201b are connected to the illuminating unit 210. A tail end of the
CCD cable 202 is connected to the fluorescence image
processing unit 220 and the ordinary image processing unit 230.
Id. 1202.
Analysis
Applying the claim construction discussed above, we agree with
Appellant that the Examiner has not identified any portion of Hayashi’s
second embodiment that discloses a partial bundle of light fibers being
“covered by” the light fiber bundle, wherein the light fiber bundle is
configured to transport the background light separately from the excitation
light transported in the partial bundle of light fibers. Br. 9. See FF5—6.
Buszard, 504 F.3d at 1367.
The Examiner provides no teachings in Frangioni to disclose a partial
bundle of light fibers being “covered by” the light fiber bundle for the
purposes of this rejection. We therefore reverse this obviousness rejection.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Hayashi’s second embodiment and Frangioni teach a partial bundle of
light fibers being “covered by” the light fiber bundle as required by claim 1.
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C. Frangioni in view ofHayashi (Claims 1, 2, 5, 6, and 8)
The Examiner has rejected claims 1, 2, 5, 6, and 8 under 35 U.S.C.
§ 103(a) as obvious over Frangioni in view ofHayashi. Ans. 6. The
Examiner finds:
Frangioni discloses a medical luminaire for photodynamic
diagnosis comprising a lamp 102 for generating background
light, a semiconductor laser diode 104 for generating excitation
light [0021], the light from which is fed into a light path of the
lamp (figure 5) and a light fiber bundle 534 for transporting the
light. The excitation light is emitted into the path of the
background light before entering the fiber bundle.
Id. The Examiner finds that Frangioni does not disclose a broadband light
source or the use of a partial bundle for the excitation light. Id. The
Examiner finds Hayashi discloses “the use of a broadband light source as the
light source to be used with the excitation light for imaging and the use of
separate bundles to deliver light having different wavelengths.” Id.
The Examiner further finds:
The semiconductor laser is configured to emit light into the light
path of the broadband light before entering the light fiber bundle
via partial bundle 201 b through which the excitation light is
transported. The partial bundle of light fibers disclosed by
Hayashi is considered to be “covered by” the light fiber bundle
in that the Examiner interprets the term “covered by” to be
synonymous with “included with.”
Id.
The Examiner concludes that the skilled artisan at the time of the
invention would have found it obvious
to have modified Frangioni such that the lamp used comprises a
broadband light source [because this] modification merely
involves the substitution of one known type of light source for
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another in a medical diagnostic device. Furthermore, it would
have been obvious to one skilled in the art to have further
modified Frangioni such that separate fiber guides are used to
direct the broadband light and excitation light in view of the
teachings of Hayashi.
Appellant’s arguments in response are summarized above (see A).
The issue in this rejection is whether a preponderance of the evidence
supports the Examiner’s conclusion that Frangioni and Hayashi teach the
subject matter of claim 1.
Findings of Fact
FF7. Frangioni discloses an embodiment of the claimed medical imaging
system:
Id.
SCOPE
Fig. 5
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Figure 5 “shows optical hardware that may be used with an imaging
system.” Frangioni 111.
FF8. Frangioni discloses:
FIG. 5 shows optical hardware that may be used with an imaging
system. In certain embodiments, such as a conventional
endoscope or lapar[o]scope, two channels may be provided
within the scope for fiber optics that carry a light source and an
image respectively. Optical hardware may be used to
conveniently connect these light guides to light sources and
image capturing hardware used in the systems described above.
The hardware may include a light mixer 502 with an excitation
light coupler 504, a visible light coupler 506, a dichroic mirror
508, and a mixed light output coupler 510 with a focusing lens
512. . . . The light mixer 502 and the image separator 520 may
be connected to an input 534 and an output 536 of an endoscope
538 or other image source such as a lapar[o]scope.
Id. 192.
FF9. Frangioni discloses:
The light mixer 502 combines a visible light source, . . . The
dichroic mirror 508 may be selected to transmit light from the
excitation light source and reflect light from the visible light
source, so that a combined light source is passed through the
focusing lens 512 into the input 534 of the endoscope 538.
Id. 194.
Analysis
Applying the claim construction discussed above, we agree with
Appellant that the Examiner has not identified any portion of Frangioni or
Hayashi that discloses a partial bundle of light fibers being “covered by” the
light fiber bundle, wherein the light fiber bundle is configured to transport
the background light separately from the excitation light transported in the
partial bundle of light fibers. Br. 9. See FF7—9. We therefore reverse this
obviousness rejection.
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D. Hayashi, Frangioni, Wach, Zhao, orlnce (Claim 3)
This rejection relies upon the underlying obviousness rejection over
Hayashi and Frangioni. Having reversed the Hayashi and Frangioni
rejection for the reasons given above, we necessarily reverse the obviousness
rejection further including Wach, Zhao, or Ince, as the Examiner does not
rely upon Wach, Zhao, or Ince to address the “covered by” limitation of the
claim.
E. Frangioni, Hayashi, Wach, Zhao, or Ince (Claim 3)
This rejection relies upon the underlying obviousness rejection over
Frangioni and Hayashi. Having reversed the Hayashi and Frangioni
rejection for the reasons given above, we necessarily reverse the obviousness
rejection further including Wach, Zhao, or Ince, as the Examiner does not
rely upon Wach, Zhao, or Ince to address the “covered by” limitation of the
claim.
SUMMARY
We reverse the rejection of claims 1—3 and 5—8 under 35 U.S.C.
§ 112(a) or (pre-AIA), 35 U.S.C. § 112, first paragraph, for lack of written
description.
We affirm the rejection of claims 1—3 and 5—7 under 35 U.S.C. § 112,
second paragraph, as indefinite.
We reverse the rejection of claim 8 under 35 U.S.C. § 112, fourth
paragraph, for improper dependent form.
We reverse the rejection of claims 1, 2, and 5—7 under 35 U.S.C.
§ 103(a) as obvious over Hayashi in view of Frangioni.
We reverse the rejection of claims 1, 2, 5, 6, and 8 under 35 U.S.C.
§ 103(a) as obvious over Hayashi in view of Frangioni.
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We reverse the rejection of claims 1, 2, 5, 6, and 8 under 35 U.S.C.
§ 103(a) as obvious over Frangioni in view of Hayashi.
We reverse the rejection of claims 3 under 35 U.S.C. § 103(a) as
obvious over Hayashi in view of Frangioni and Wach or Zhao or Ince.
We reverse the rejection of claims 3 under 35 U.S.C. § 103(a) as
obvious over Frangioni in view of Hayashi and Wach or Zhao or Ince.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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