Andre Ehrhardt et al.

Patent Trials and Appeals Board

Apr 10, 2020

13074939 - (R) (P.T.A.B. Apr. 10, 2020)

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.
13/074,939 03/29/2011 Andre Ehrhardt 02581 - P1362A 1727
154825 7590 04/10/2020
KS - Whitmyer IP Group LLC
600 Summer Street
3rd Floor
Stamford, CT 06901
EXAMINER
ITSKOVICH, MIKHAIL
ART UNIT PAPER NUMBER
2483
NOTIFICATION DATE DELIVERY MODE
04/10/2020 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):
patent@karlstorz.com
uspto@whipgroup.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte ANDRE EHRHARDT, JOHANNES FALLERT,
KLAUS-MARTIN IRION, and PETER SCHWARZ
________________

Appeal 2018-004342
Application 13/074,939
Technology Center 2400
________________

BEFORE JEAN R. HOMERE, JASON V. MORGAN, and
MICHAEL M. BARRY, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
In response to our Decision (Dec. 12, 2019) reversing the Examiner’s
rejection of claims 1–13 and 15–29, but entering a new ground of rejection
of claims 1, 11, and 13, Appellant1 files a Response to Office Action (Jan.
15, 2020) (“Resp.”) including new dependent claims 30 and 31 and arguing
the Board’s new ground of rejection was erroneous. Appellant’s Response
does not include an appropriate amendment (i.e., an amendment of newly
rejected claims 1, 11, or 13); nor does Appellant’s Response include new

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party-in-interest as Karl Storz
GmbH & Co. KG. Appeal Br. 2.
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evidence (i.e., an affidavit or declaration under one of 37 C.F.R. §§ 1.130–
32). Thus, the Examiner appropriately treats Appellant’s Response “as a
request for rehearing under 37 CFR 41.50(b)(2).” Misc. Comm. to Applicant
(Mar. 18, 2020); see also MPEP 1214.01(I).
We have considered Appellant’s Request for Rehearing, but we find
Appellant’s arguments unpersuasive. Therefore, Appellant’s Request for
Rehearing is DENIED.
DISCUSSION
Appellant argues “the Decision has not shown the claimed coupling
device mixing three different light sources.” Resp. 9. In particular, Appellant
argues “Vandorpe at most recombines a single light source and never
discloses combining three different light sources, as claimed.” Id.
Appellant’s argument is unpersuasive because, as we noted in the
Decision, “mixing in an additional light source would have been obvious [in
light of Scott’s teachings] to the extent it represents the duplication of parts,
which ‘has no patentable significance unless a new and unexpected result is
produced.’ Ans. 12 (citing In re Harza, 274 F.2d 669, 671) (CCPA 1960)).”
Dec. 11. That is, we relied on Scott, not Vandorpe, to teach or suggest
mixing three different light sources. We merely relied on Vandorpe to show
that mechanisms for mixing light sources “were well-known in the art at the
time the application was filed.” Id.
Furthermore, we are unpersuaded by Appellant’s argument that we
erred because the light sources in Vandorpe can be traced back to a single
incoming light source A. See Resp. 9 (citing Vandorpe col. 1, ll. 39–43, Fig.
2). As Appellant acknowledges, after a light source in Vandorpe is split into
three spectral bands B, C, D, the split light is reflected by digital multi-
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mirror devices 4, 5 and 6 before being recombined by color prisms 8, 9, and
10. Id. But the light from the digital multi-mirror devices 4, 5, and 6 each
represent a different light source, even if the light can be further traced back
to a shared light source. As Scott teaches or suggests the mixing of light
from multiple light sources that do not necessarily trace back to a shared
light source, the shared source of light to the digital multi-mirror devices of
Vandorpe does not show error in our new ground of rejection.
Appellant further argues that the claimed invention “is directed to
providing white illuminating light for medical and boroscopic applications,”
but that “Vandorpe is directed to a different purpose (OLP projectors) and is
not concerned with this.” Resp. 9. Appellant unpersuasively relies on the
preamble recitations—i.e., “An apparatus to provide white illuminating light
for medical and boroscopic applications” (emphasis added)—to show error
in our citation to Vandorpe. Moreover, the Examiner correctly finds that
Scott alone teaches or suggests conducting mixed light to an endoscope (i.e.,
using mixed light in a medical or boroscopic application). See Final Act. 14
(citing Scott ¶ 91, Figs. 5C–E, 5G).
Appellant argues “the Decision has not shown motivation to modify
the cited references and arrive at Applicant’s invention.” Resp. 10. In
particular, Appellant argues Scott does not teach or suggest mixing white
light with light from multiple laser modules because Scott merely “teaches a
laser module and a white light can use different illumination paths.” Id.
(emphasis added).
Appellant’s argument is unpersuasive because, as we found, Scott
“explicitly teaches that two excitation light sources ‘can be coupled into the
one or more endoscope illumination channels.’ Scott ¶ 183 (emphasis
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added); see also id. ¶ 179 (distinguishing laser module excitation light from
white light).” Dec. 13. That is Scott teaches or suggests an embodiment
where multiple excitation light sources are coupled into a single (i.e., one)
endoscope illumination channel rather than being transmitted on multiple
illumination channels or paths. We further determined that, given this
teaching or suggestion, “it would have been obvious to an artisan of ordinary
skill to rely on a ‘classical’ mechanism for combining multiple light
sources.” Id. (citing Vandorpe col. 1, l. 30). Therefore, we articulated a
reason having a rational underpinning to support the legal conclusion why it
would have been obvious to combine Scott and Vandorpe in the manner of
claim 1. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418, (2007). While
we are cognizant of the need to avoid relying on hindsight reasoning,
Appellant’s arguments fail to show that the new ground of rejection relies on
such reasoning. See Resp. 11.
Appellant further argues that newly submitted “claim 30 further
defines the arrangement of Applicant’s coupling device.” Id. Newly
submitted claim 30, however, is not before us and has not even been entered
by the Examiner. Moreover, because it depends from claim 1, the recitations
of newly submitted claim 30 would not show error in our findings and
conclusions with respect to independent claim 1.
For these reasons, Appellant does not show that we erred in newly
rejecting claim 1. Appellant also does not argue newly rejected claims 11
and 13 separately. See id. at 9.
Accordingly, Appellant’s Request for Rehearing is DENIED.

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Application 13/074,939

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SUMMARY
Outcome of Decision on Request for Rehearing:
Claims Rejected 35 U.S.C. § References Denied Granted
1, 11, 13 103(a) Scott, AAPA,
Vandorpe
1, 11, 13

Final Outcome of Appeal after Rehearing:
Claims
Rejected 35 U.S.C. §
References/
Basis Affirmed Reversed
New
Ground
28, 29 112 ¶ 1 Written
Description
28, 29
1–13,
15–29
112 ¶ 2 Definiteness 1–13,
15–29

1–13,
15–26
103(a) Scott, AAPA 1–13,
15–26

27–29 103(a) Scott, AAPA,
Furusawa
27–29
1, 11, 13 103(a) Scott, AAPA,
Vandorpe
1, 11, 13
Overall Outcome 1–13,
15–29
1, 11, 13
DENIED