Ex Parte LI

Patent Trial and Appeal Board

May 30, 2017

13327625 (P.T.A.B. May. 30, 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.
13/327,625 12/15/2011 Jamie Li 09423.0128-00000 1083
06/01/2017109610 7590
Bookoff McAndrews, PLLC
2401 Pennsylvania Avenue, NW, Suite 450
Washington, DC 20037
EXAMINER
SHAPIRO, VICTOR
ART UNIT PAPER NUMBER
3769
NOTIFICATION DATE DELIVERY MODE
06/01/2017 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):
usptomail @bookoffmcandrews.com
Kross @ bookoffmcandrews.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMIE LI
Appeal 2015-006171
Application 13/327,625
Technology Center 3700
Before LINDA E. HORNER, STEVEN D.A. McCARTHY and
JEFFREY A. STEPHENS, Administrative Patent Judges.
McCARTHY, Administrative Patent Judge.
DECISION ON APPEAL
1 STATEMENT OF THE CASE
2 The Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
3 decision finally rejecting claims 1, 2, 4—6, 14, 15, 21 and 22 under pre-AIA
4 35 U.S.C. § 103(a) as being unpatentable over Swanson (US 5,321,501,
5 issued June 14, 1994);2 claims 7, 9, 10 and 16—20 under § 103(a) as being
1 The Appellant identifies the real party in interest as Boston Scientific
Scimed, Inc.
2 Although the Examiner does not include claim 22 in the Examiner’s
list of claims rejected over the teachings of Swanson (see Final Off. Act. 3;
Ans. 3), the Examiner does provide findings and reasoning in both the Final
Office Action and the Answer, indicating that the Examiner intended to
reject claim 22 (see Final Off. Act. 9 & 10; Ans. 10 & 11). The Appellant
had fair notice of the rejection and an opportunity to respond in this appeal.
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unpatentable over Swanson and Rosinko (US 6,551,302 Bl, issued Apr. 22,
2003); and claims 11—13 under § 103(a) as being unpatentable over Swanson
and Sanders (US 2008/0108869 Al, publ. May 8, 2008). Claims 3 and 8 are
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The claims on appeal relate to laser assemblies for use in laser-based
surgical procedures, in which the assemblies transmit laser energy to target
treatment areas of a patient’s body. (See Spec., para. 3). The Appellant’s
Specification teaches that conventional techniques for controlling the
intensity of the transmitted energy beam and the size of the treatment area
illuminated by the beam were time consuming and cumbersome. (See Spec.,
paras. 3 & 4). The Appellant addresses the problem by transmitting the
energy beam though a compound lens system consisting of a pair of aligned,
converging lenses; and increasing or decreasing the distance between the
lenses to adjust the intensity or the spot size. (See Spec., paras. 32 & 34).
The Appellant refers to these lenses in the Specification as “focusing lenses”
(see Spec., para. 32), recognizing that the proposed solution involves
adjusting the degree of focus of the energy beam. By adjusting both the
distance between the lenses and the output of the laser source, it is possible
to independently control both the spot size and the intensity. (See Spec.,
para. 34).
Claims 1, 16 and 21 are independent. Claim 1 is illustrative:
1. An apparatus comprising:
an optical fiber including a distal end and configured to
emit a beam of energy;
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a first lens coupled to the distal end of the optical fiber;
and
a sheath including a channel and a second lens positioned
on a distal region of the sheath,
wherein the optical fiber is disposed within the channel of
the sheath to permit relative movement between the first lens and
the second lens and thereby adjust a beam of energy that exits the
sheath, and
wherein the first lens and the second lens are arranged so
that the beam of energy passes through the first lens and the
second lens before exiting the distal region of the sheath.
ISSUES
The Appellant argues the patentability of claims 1, 2, 4—6, 14, 15, 21
and 22 as a group for purposes of the rejection over the teachings of
Swanson. {See generally Br. 10-16). Claim 1 is representative.
Furthermore, the Appellant argues the rejection of claims 7, 9, 10 and 16—20
over the teachings of Swanson and Rosinko; and the rejection of claims 11—
13 over the teachings of Swanson and Sanders, solely on the basis that
neither Rosinko nor Sanders remedies perceived deficiencies of the
teachings of Swanson as applied to claim 1. (Br. 16-19). Finding no such
deficiency, we need not separately address the teachings of Rosinko and
Sanders.
The sole issue in this appeal is:
Would the subject matter of representative claim 1 have been obvious
from the teachings of Swanson, particularly with respect to embodiments
depicted in Figures 4A, 5 and 6 of Swanson?
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1 FINDINGS OF FACT
The record supports the following findings of fact (“FF”) by a
preponderance of the evidence.
1. Swanson describes several probe modules for use in optical
coherence domain reflectometers (“OCDR”). By way of background only,
one type of OCDR setup includes a “broadband light source such as a
superluminescent diode (SLD). . . coupled to a fiber-optic Michelson
interferometer.” Swanson et al., High-Speed Optical Coherence Domain
Reflectometry, 17 Optics Letters 151, 151 (Optical Soc’y Am. 1992).3
One arm of the interferometer leads to the sample of interest, and
the other leads to a reference mirror. Fiber-optic and integrated-
optic samples can be directly attached to the sample arm fiber.
For bulk-optical or biological samples, a probe module is used to
direct the beam onto the sample and to collect the reflected
signal. . . . The reflected light beams are detected at [a]
photodetector. They coherently interfere only when the sample
and the reference path lengths are equal to within the source
coherence length. Heterodyne detection is performed by taking
advantage of the direct Doppler frequency shift that results from
the uniform high-speed scan of the reference path lengths.
Recording the interference signal magnitude as a function of the
reference mirror position profiles the reflectance of the sample.
(Id.)
2. Swanson describes an OCDR setup including a light source 12,
such as an SLD, communicating through optical couplers 14, 22 with two
arms 26, 20 of an interferometer. (See Swanson, col. 5,11. 42—56; col. 5,1.
65 — col. 6,1. 2; & Fig. 1 A). One arm, arm 26, leads to a scanning/sample
assembly 28. The other arm, arm 30, leads to a reference assembly 32. (See
3 This article is quoted here solely for the purpose of better explaining
the disclosure of the cited primary reference, Swanson.
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Swanson, col. 5,1. 66 — col. 6,1. 2; & Fig. 1 A). The arms 26, 20 ideally are
of equal length. (See Swanson, col. 7,11. 29—37). Light reflected back from
the arms 26, 30 is combined in the optical coupler 22, “resulting in
interference fringes for length-matched reflections (i.e. reflections for which
the difference in reflection path length is less than the source coherence
length).” (Swanson, col. 8,11. 15—20; see also id. Fig. 1A). A photodetector
converts the combined, reflected light to an electrical signal. (See Swanson,
col. 8,11. 36—39; & Fig. 1A). Electronic circuitry processes the electrical
signal to provide information regarding the sample to the user. (See
generally Swanson, col. 8,1. 39 —col. 9,1. 31).
3. The scanning/sample assembly 28 for an OCDR setup used for
imaging or measuring a biological sample may include a probe module.
(See Swanson, col. 2,1. 66 — col. 3,1. 3). Swanson teaches that:
For some embodiments, the probe module includes a means for
controlling the focus of the module in the sample so that this
depth focus is maintained substantially at a point in the sample
from which imaging information is being obtained as this point
is periodically changed during a longitudinal scan of the sample.
Such focal plane may be accomplished by moving a focusing
lens of the probe module in the direction of the radiation passing
therethrough to control focus depth.
(Swanson, col. 4,11. 9-17; see also id., col. 6,11. 2—15; col. 12,11. 36—55; &
Fig. 3A).
4. Figure 4B of Swanson depicts a scanning/sample assembly 28
including a probe module including a housing 105 pivotally supporting a
sheath 101 surrounding a distal end of an optical fiber 26. The housing 105
and the sheath 101 position the distal end of the fiber 2d so as to illuminate a
sample 84 by means of light transmitted from the distal end of the fiber,
through a pair of lenses, to the sample. Figure 4B of Swanson depicts the
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distal-more of the two lenses, lens 109, mounted for movement relative to
the other lens along the direction between the distal end of the fiber 26 and
the sample 84. Swanson teaches that the lens 109 is movable “to
synchronize the focusing in sample 84 with a longitudinal scan being
performed in one of the manners mentioned previously in conjunction with
FIGS. 1A—IB.” (Swanson, col. 13,11. 30-35; see also id., col. 13,11. 18—30).
5. Figure 5 of Swanson depicts a probe module mounted at the
end of an endoscope for imaging a tubular, biological structure such as a
blood vessel. (See Swanson, col. 13,11. 39-42). The probe module includes
an inner sheath 122 and an outer sheath 124. As depicted in Figure 5, the
outer sheath 124 defines a channel for receiving, and rotatably mounting, the
inner sheath 122. A distal end of an optical fiber 26 designed to emit a beam
of energy is embedded in the inner sheath 122. (See Swanson, col. 13,11.
43—45). The inner sheath 122 couples a lens 126 to the distal end of the
fiber 26. (See Swanson, col. 13,11. 45—48).
6. The inner sheath 122 of the probe module of Figure 5 extends
beyond the end of the outer sheath 124. The inner sheath 122 mounts, at its
distal end, an angled mirror surface 128 aligned with the distal end of the
fiber 26. (See Swanson, col. 13,11. 45—48). When the probe module is
inserted into a blood vessel, rotation of the inner sheath 122 within the outer
sheath 124 enables the angled mirror surface 128 to scan a light beam
emitted by the distal end of the optical fiber 26 azimuthally across the inner
surface of the surrounding vessel. (See Swanson, col. 13,11. 48—54).
7. Swanson teaches that an OCDR setup having a probe module as
depicted in Figure 5 may use the relative movement of components within
the reference assembly 32 to scan the depth dimension of a blood vessel into
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which the probe module has been inserted. (See Swanson, col. 13,11. 54—
59). Swanson does not describe structure in the probe module of Figure 5
for maintaining focus as the probe module scans the depth dimension of the
vessel.
8. Figure 6 of Swanson likewise depicts a probe module mounted
at the end of an endoscope. The probe module includes a fiber optic bundle
144. (See Swanson, col. 14,11. 3—5). The probe module as depicted in
Figure 6 also includes a sheath 124 defining a channel. The distal end of the
bundle 144 is embedded in a sheath 124', and a pair of lenses 146,148 are
mounted in the channel of the sheath 124 in alignment with the distal end of
the bundle 144. A light beam 150 emitted at the distal end of the fiber optic
bundle 144 passes through the lenses 146,148 en route to a sample 84. (See
Swanson, col. 14,11. 7—9).
9. The probe module also includes a lens 90, a mirror 92 and a
focusing lens 94. (See Swanson, col. 13,1. 66 — col. 14,1. 2). As depicted in
Figure 6, the lens 90, the mirror 92, and the focusing lens 94 are mounted
proximally of the bundle 144. (See Swanson, col. 14,11. 3—5). Swanson
teaches that, if means such as relative movement of components within the
reference assembly 32 is used to scan the depth dimension of a sample 84,
the focusing lens 94 may be moved in a direction parallel to the length of the
bundle 144 to maintain the focal point of the beam 150 at the depth scanned
by the movement of the reference assembly. (See Swanson, col. 13,1. 66 —
col. 14,1. 5; see also id., col. 12,11. 36—55).
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ANALYSIS
The Examiner correctly finds that the embodiment depicted in Figure
5 of Swanson satisfies each limitation of representative claim 1 except for
a second lens positioned on a distal region of the sheath, wherein
the optical fiber is disposed within the channel of the sheath to
permit relative movement between the first lens and the second
lens and thereby adjust a beam of energy that exits the sheath.
(See Ans. 4; Final Off. Act. 3; see also FF 5). In particular, the embodiment
of Figure 5 includes a first lens 126 coupled to the distal end of an optical
fiber 26. The first lens 126 is positioned within an outer sheath 124.
The embodiment depicted in Figure 6 of Swanson includes a fiber
optic bundle 144 embedded, at a distal end, in an outer sheath 124. The
Examiner correctly finds that the embodiment also includes a compound
lens system, in the form of lenses 146,148, arranged so that a beam of
energy transmitted from the distal end of a fiber of the bundle 144 passes
through the first lens and the second lens before exiting the distal region of
the sheath. (See Ans. 16; Final Off. Act. 15; see also FF 8). Swanson does
not explain why the embodiment of Figure 6 was designed with a compound
lens system, rather than a single lens, positioned distally of the end of the
optical fiber bundle 144. Nevertheless, even setting aside well-known
advantages of compound lens systems over single lenses, one of ordinary
skill in the art possessed sufficient skill to merely substitute a compound
lens system 146,148 as depicted in Figure 6 for the single lens 126 depicted
in Figure 5. See KSR Inti Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007)
(“The Court recognized that when a patent claims a structure already known
in the prior art that is altered by the mere substitution of one element for
another known in the field, the combination must do more than yield a
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predictable result.”). It would have been obvious to modify the embodiment
of Figure 5 of Swanson to include “a second lens positioned on a distal
region of the sheath,. . . wherein the first lens and the second lens are
arranged so that the beam of energy passes through the first lens and the
second lens before exiting the distal region of the sheath.”
The Appellant correctly points out that neither Figure 5 nor Figure 6
depicts a compound lens system positioned distally of the optical fiber; or an
optical fiber bundle in which one lens is moveable relative to another. (See
Br. 14). (As observed in FF 9, the embodiment of Figure 6 does include a
moveable focusing lens 94 positioned proximally of the distal end of the
fiber bundle 144.) Nevertheless, the Examiner correctly concludes that,
because the embodiments of Figures 4A, 5 and 6:
are disclosed as being interchangeable and intended for the same
use, it would have been obvious ... to use in the apparatus of
[Figure 5 of] Swanson the longitudinal movable lens, as taught
by Swanson, in order to adjust a beam of energy that exits the
sheath via synchronizing the focusing with a longitudinal scan,
as motivated by Swanson [column 13, lines 30-35].
(Final Off. Act. 4).
The embodiment depicted in Figure 5 of Swanson is designed for two-
dimensional scanning of the inner surface of a tubular structure such as a
blood vessel. The embodiment includes an optical fiber 26 having a distal
end embedded in an inner sheath 122. The inner sheath 122 is journaled in a
channel in an outer sheath 124 to permit the inner sheath to rotate within the
outer sheath. (See FF 5). The inner sheath 122 mounts an angled mirror
surface 128 near its distal end. Rotation of the inner sheath 122 within the
outer sheath 124 would enable the angled mirror surface 128 to scan a beam
emitted by the distal end of the optical fiber 26 azimuthally across the inner
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surface of the surrounding vessel. (See FF 6). At the same time, relative
movement of components within the reference assembly 32 would enable
the beam to scan the depth dimension (that is, radial dimension) of a blood
vessel into which the probe module has been inserted. (See FF 7).
Swanson teaches, particularly in connection with the embodiment
depicted in Figure 4B (see Final Off. Act. 4, citing Swanson, col. 13,11. 30—
35; see also FF 3, 4 and 9), that it is desirable to adjust the focus of the
energy beam as a sample is scanned in a longitudinal (in the case of Figure
5, radial) dimension. One of ordinary skill in the art, having substituted a
compound lens assembly for the single lens 126 depicted in Figure 5 in view
of the teachings of Figure 6, would have had reason to provide for relative
movement between two of the lenses of the compound lens assembly. As
the Examiner correctly finds (See Final Off. Act. 4), such provision would
have allowed the probe module to maintain the focus of the energy beam
during a longitudinal (radial) scan. Therefore, it would have been obvious to
modify the embodiment of Figure 5 of Swanson such that “the optical fiber
is disposed within the channel of the sheath to permit relative movement
between the first lens and the second lens and thereby adjust a beam of
energy that exits the sheath.”
The Appellant argues that one of ordinary skill in the art would not
have had reason to modify the embodiment of Figure 5 in view of teachings
relating to the embodiment of Figure 4B. The Appellant argues that this is
because the embodiment of Figure 5 is designed to image or measure the
inner surface of a tubular structure, such as a blood vessel, whereas the
embodiment of Figure 4B is designed to image or measure structure in an
eye. ((See Br. 15). The argument is not persuasive because the proposed
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substitution is based on Swanson’s teaching to provide means to maintain
the focus of the energy beam during a longitudinal scan. This teaching is not
based on the particular sample to be imaged or measured (for example, an
eye as opposed to a blood vessel).
The Appellant also argues that “[mjodifying FIG. 5 in a manner to
achieve relative movement between the lens 126 and mirror 128 would
destroy the assembly in FIG. 5 because the fixed positions of the lens 126
and the mirror 128 allows the multidimensional scanning of the vessel wall
120, per Swanson.” (Br. 15). This argument is not persuasive. Although
the Appellant’s argument that the fixed position of the mirror 128 with
respect to the inner sheath 122 has merit, the Appellant has not explained
why the fixed position of the lens 126 is critical to the operation of the
embodiment of Figure 5. Swanson merely says that the “[ijnner sheath 122
has a lens 126 formed therein at the distal end of the fiber 26” (Swanson,
col. 13,11. 45—48). Swanson does not describe the function of the lens 126
or suggest that its fixed position relative to the inner sheath 122 or the fiber
26 is critical for any reason. As such, the teachings of Swanson do not
suggest that the proposed modification would have rendered the embodiment
depicted in Figure 5 inoperative for its intended purpose.
CONCLUSIONS
The Appellant has not identified a persuasive error in the Examiner’s
findings and conclusions regarding representative claim 1. We sustain the
rejection of claims 1, 2, 4—6, 14, 15, 21 and 22 under § 103(a) as being
unpatentable over Swanson. Because the Appellant argues the rejection of
claims 7, 9, 10 and 16—20 under § 103(a) as being unpatentable over the
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teachings of Swanson and Rosinko; and the rejection of claims 11—13 under
§ 103(a) as being unpatentable over the teachings of Swanson and Sanders,
solely on the basis that neither Rosinko nor Sanders remedies perceived
deficiencies of the teachings of Swanson as applied to claim 1, we sustain
those rejections as well.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1, 2, 4—7 and
9-22.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a).
AFFIRMED
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