Ex Parte DhadwalDownload PDFPatent Trial and Appeal BoardMar 30, 201612246097 (P.T.A.B. Mar. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/246,097 10/06/2008 66547 7590 03/30/2016 THE FARRELL LAW FIRM, P.C. 290 Broadhollow Road Suite 210E Melville, NY 11747 FIRST NAMED INVENTOR Harbans S. Dhadwal 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. 788-113 (R8009) 5445 EXAMINER LUAN,SCOTT ART UNIT PAPER NUMBER 3769 MAILDATE DELIVERY MODE 03/30/2016 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 HARBANS S. DHADW AL Appeal2013-011044 Application 12/246,097 Technology Center 3700 Before STEFAN STAICOVICI, GEORGE R. HOSKINS, and RICHARD H. MARSCHALL, Administrative Patent Judges. MARSCHALL, Administrative Patent Judge. DECISION ON APPEAL Harbans S. Dhadwal (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner's final decision rejecting claims 1, 2, 5, 6, and 19. We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. THE CLAIMED SUBJECT MATTER Appellant's claimed subject matter relates to a device using low powered laser diodes for use in cosmetic procedures and dermatology conditions. Spec. 1 :9--12. Claim 1, reproduced below, is the only independent claim and is representative of the claimed subject matter. Appeal2013-011044 Application 12/246,097 1. A portable device comprising: a coherent imaging fiber; an optical switch; a plurality of multimode optical fibers; and an imaging microlens assembly, wherein the coherent imaging fiber transports an image of a targeted hair follicle for viewing by a user of the portable device, and wherein the coherent imaging fiber delivers laser energy to the targeted hair follicle. Appeal Br. 8 (Claims App.). THE EVIDENCE The Examiner relied upon the following prior art references in rejecting the claims on appeal: Boutoussov Anderson US 2007/0016176 Al US 2003/0045916 Al THE REJECTIONS Appellant seeks review of the following rejections: Jan. 18,2007 Mar. 6, 2003 1. Claims 1, 2, and 5 under 35 U.S.C. § 102(b) as anticipated by Boutoussov. 2. Claim 19 under 35 U.S.C. § 103(a) as unpatentable over Boutoussov. 3. Claim 6 under 35 U.S.C. § 103(a) as unpatentable over Boutoussov and Anderson. 2 Appeal2013-011044 Application 12/246,097 ANALYSIS Claim 1 requires a coherent imaging fiber that both "transports an image of a targeted hair follicle for viewing by a user of the portable device" and "delivers laser energy to the targeted hair follicle." Appeal Br. 8 (Claims App.). The Examiner relied on paragraph 57 of Boutoussov in finding that Boutoussov discloses a coherent imaging fiber that both transports an image and delivers laser energy as required by claim 1. Final Act. 4. The key portion of paragraph 57 ofBoutoussov provides: According to another embodiment of the present invention, electromagnetic radiation (e.g., one or more of blue light, white light, infrared light, a laser beam, reflected/ scattered light, fluorescent light, and the like, in any combination) may be transmitted in one or both directions through one or more of the fibers described herein (e.g., feedback, illumination, excitation, treatment), in any combination. Boutoussov i-f 57. The Examiner found that the "laser beam" in that passage of Boutoussov corresponds to the claimed delivery of laser energy to the targeted hair follicle, and the "feedback" fiber in that passage of Boutoussov corresponds to the claimed delivery of an image of a targeted hair follicle. Ans. 5---6. According to the Examiner, Boutoussov's reference to "any combination" of these fibers supports the finding that one such combination "comprises a structure in which electromagnetic radiation (e.g., laser beam and reflected/scattered light used for treatment and feedback, respectively) is transmitted through one fiber in both directions." Id. at 6. Appellant argues that Boutoussov merely discloses separate and distinct fibers for visualization and treatment, rather than a single fiber with the dual functionality required by claim 1. Appeal Br. 4. Appellant relies on Figures 10 and 11 ofBoutoussov, which disclose a treatment optical fiber 3 Appeal2013-011044 Application 12/246,097 400 distinct from feedback waveguides 410. Id. at 5; see also Boutoussov i-fi-1 46-48, Figs. 10 and 11. According to Appellant, "[ n ]owhere, either in paragraph 0057 or elsewhere, does Boutoussov disclose use of a single coherent imaging fiber to transport an image of a targeted hair follicle for viewing by a user of the portable device, then to deliver laser energy to the targeted hair follicle." Id. at 6. We agree with Appellant. Our review of Boutoussov indicates that paragraph 57 is the only potential disclosure of the same fiber both transporting an image for viewing by a user, and delivering laser energy. Outside of paragraph 57, Boutoussov is clearly limited to different fibers performing those different functions. When viewed in that context, we disagree with the Examiner's reading of paragraph 57 as disclosing the claimed subject matter to a person of ordinary skill in the art. The first sentence of paragraph 57 discloses the use of a "laser beam" as "one or more" of the options for transmitted electromagnetic radiation, and a "feedback" fiber as "one or more" of the fibers that can transmit the laser radiation. Boutoussov i157. Nevertheless, the sentence does not expressly describe a single coherent imaging fiber that both delivers laser treatment energy and transports an image through that same fiber. The passage perhaps suggests using one of the feedback fibers 410 to transmit radiation using a laser beam, but does not disclose the same fiber transporting an image while maintaining the capability to transmit radiation. Id. Transmitting laser treatment radiation through one of the feedback fibers 410 still leaves several other feedback fibers 410 for other uses. See Boutoussov Figs. 10 and 11 (showing multiple feedback fibers 410 capable 4 Appeal2013-011044 Application 12/246,097 of visual feedback). Further, none of Boutoussov's figures or text describe how a dual function fiber would be accommodated within Boutoussov's overall device. Given the lack of any express disclosure 1 of the claimed coherent optical fiber in Boutoussov, we do not sustain the rejection of claim 1 as anticipated by Boutoussov. The rejections of dependent claims 2, 5, 6, and 19 all rely upon the same flawed finding with respect to the Boutoussov disclosure discussed above. Accordingly, we do not sustain the rejections of claims 2, 5, 6, and 19. DECISION We reverse the decision of the Examiner to reject claims 1, 2, 5, 6, and 19. REVERSED 1 The Examiner did not rely on inherency, or construe the wherein clauses in claim 1 to merely require the capability to meet the "transport" and "deliver" requirements therein. See Final Act. 4; Ans. 5---6. Accordingly, in order to affirm the anticipation rejection, Boutoussov must expressly disclose a coherent imaging fiber that performs the two requirements. 5 Copy with citationCopy as parenthetical citation