Ex Parte Nielsen et al

Board of Patent Appeals and Interferences

May 24, 2012

10547589 (B.P.A.I. May. 24, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TIM NIELSEN and SASCHA KRUGER
____________________

Appeal 2010-002799
Application 10/547,589
Technology Center 3600
____________________

Before: JENNIFER D. BAHR, LINDA E. HORNER, and
STEVEN D.A. MCCARTHY, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-002799
Application 10/547,589
2
STATEMENT OF THE CASE
Tim Nielsen and Sascha Kruger (Appellants) appeal under 35 U.S.C.
§ 134 from the Examiner’s decision rejecting claims 6-11 and 18-23. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter NEW GROUNDS OF
REJECTION.
The Claimed Subject Matter
Claim 6, reproduced below, is illustrative of the claimed subject
matter:
6. A device for selective amplification of signal photons in a
time window, comprising:
an activatable amplification medium into which the
signal photons to be amplified are irradiated; and
a quenching device for irradiating a quench pulse that
deactivates the amplification medium.
Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Fitz
Sucha
US 4,825,442
US 6,445,491 B2
Apr. 25, 1989
Sep. 3, 2002
Guillermo J. Tearney et al., In Vivo Endoscopic Optical Biopsy with Optical
Coherence Tomography, 276 Science 2037-39 (1997).
Rejections
The Examiner rejected claims 6, 7, 18-21, and 231 under 35 U.S.C.
§ 102(b) as anticipated by Fitz.

1 Although the Examiner did not include claims 18-21 and 23 in the
statement of the rejection, the Examiner addressed these claims in the
explanation of the rejection. Fin. Rej. 4-5; Ans. 3-4.
Appeal 2010-002799
Application 10/547,589
3
The Examiner rejected claims 8, 9, 11 and 22 under 35 U.S.C.
§ 103(a) as unpatentable over Sucha and Fitz.
The Examiner rejected claim 10 under 35 U.S.C. § 103(a) as
unpatentable over Sucha, Fitz, and Tearney.
OPINION
Anticipation By Fitz
The first issue presented in this appeal is whether Fitz’s laser cavity 4
contains an “activatable amplification medium” as called for in claim 6, or a
“selectively activated amplification medium” as called for in claim 18.
Appellants correctly point out that the cavity 4, which the Examiner’s
rejection states corresponds to the claimed “activatable amplification
medium” (Ans. 3), itself is not an “activatable amplification medium” (claim
6) or a “selectively activated amplification medium” (claim 18). Br. 7, 9.
However, the Examiner clarifies that it is the material inside Fitz’s laser
cavity 4 that corresponds to the claimed “activatable amplification medium”
or “selectively activated amplification medium.” Ans. 8.
We agree with the Examiner’s finding. Fitz discloses that active
atoms (laser media) within the laser cavity 4 of the optically controlled laser
(OCL) are pumped into excited states by an applied DC current and emit
photons (laser radiation). Fitz, col. 1, l. 58 – col. 2, l. 2; col. 2, ll. 46-49; col.
3, ll. 32-34. When no light is coupled into the interaction region 12 of cavity
4 via optical waveguide 10, the OCL behaves as a standard laser diode,
emitting photons in the lasing direction parallel to the cavity axis. Col. 1, ll.
62-63; col. 2, ll. 44-49; col. 3, ll. 34-36. On the other hand, when light is
coupled into the interaction region 12 via optical waveguide 10, the light
interacts with the laser media in the interaction region, thereby stimulating
the excited active atoms in the interaction region to emit in directions other
Appeal 2010-002799
Application 10/547,589
4
than in the lasing direction parallel to the cavity axis. Col. 1, ll. 67 – col. 2,
l. 2; col. 3, ll. 36-42. Fitz discloses that the perturbation caused by the off
axis stimulation “takes the form of a localized attenuation or a variation in
the gain and index of refraction within the interaction region of the laser
cavity.” Col. 3, ll. 42-46 (emphasis added). Clearly, the emission process
effects a gain or amplification. Thus, the Examiner correctly found that the
laser media in Fitz’s laser cavity 4 is “activatable amplification medium” or
“selectively activated amplification medium.” See Ans. 8.
Appellants also argue that the Examiner erred in finding that Fitz’s
optical waveguide 10 irradiates a “quench pulse” that “deactivates” the laser
media of the laser cavity 4. Br. 7-8. These arguments are unconvincing for
the reasons articulated by the Examiner in the paragraph beginning on page
9 and ending on page 11 of the Answer. See also Fitz, col. 3, ll. 66-68
(referring to the shift from stimulated to spontaneous emission during the
perturbation as a significant decrease or “quench” in the output intensity of
the laser).
We do, however, find persuasive Appellants’ argument that Fitz’s
laser does not amplify the laser radiation identified by the Examiner as the
signal photons to be amplified. See Br. 7; Ans. 3 (citing Fitz, col. 2, l. 47 for
the signal photons to be amplified). Rather, the laser radiation alluded to by
the Examiner is the laser radiation generated by Fitz’s laser as a result of the
amplification process. The Examiner has not pointed to, and we do not find,
any signal photons, aside from the light coupled by optical wave guide 10 as
the quench signal, irradiated into or received by the laser media in Fitz’s
laser cavity 4, or structure for configuring the laser media to receive such
signal photons for amplification. Accordingly, the Examiner has not set
forth a sound basis to support a finding that Fitz anticipates the subject
Appeal 2010-002799
Application 10/547,589
5
matter of independent claims 6 and 18 and their dependent claims. We
reverse the anticipation rejection.
The Obviousness Rejections
In rejecting claims 8, 9, 11, and 22 as unpatentable over Sucha and
Fitz, the Examiner found that Sucha discloses a system in which pulses of
signal light are directed through an object and then directed along with
pulses of pump light to an optical parametric amplifier (OPA) where the
signal is amplified. Ans. 5. The Examiner proposed to replace the OPA of
Sucha with the laser device of figure 1 of Fitz (without mirrors in order to
preserve the optical amplification function of Sucha and without the
frequency converter because Fitz teaches using a quenching pulse close to
the lasing frequency), and to direct the pump pulse through input A of Fitz’s
laser device and the signal light through input B of Fitz’s laser device, for
the advantage of faster coincidence as taught by Fitz, thereby leading to
better resolution as taught by Sucha. Ans. 5-6.
Appellants do not allege any error in the Examiner’s findings and
reasoning in combining Sucha and Fitz as proposed. Appellants’ only
argument in contesting the rejection is that Sucha does not cure the
deficiencies of Fitz asserted by Appellants in contesting the anticipation
rejection. Br. 11. Appellants’ argument does not appear to take into account
the fact that the Examiner’s obviousness rejection proposes directing the
signal photons of Sucha’s system into the laser media of Fitz for
amplification.
As set forth above in our discussion of the anticipation rejection, the
only asserted aspect of claims 6 and 18 in which we found Fitz deficient is
the irradiation of signal photons into the activatable amplification medium
(the laser media in Fitz’s laser cavity 4) for amplification, or the
Appeal 2010-002799
Application 10/547,589
6
configuration of the selectively activated amplification medium to receive
such signal photons. The Examiner’s proposed combination of Sucha,
which discloses a system wherein signal photons are directed to the
amplifier, and Fitz, which discloses the activatable or selectively activated
amplification medium, seemingly makes up for that deficiency.
We sustain the rejection of claims 8, 9, 11, and 22 as unpatentable
over Sucha and Fitz.
In contesting the rejection of claim 10 as unpatentable over Sucha,
Fitz, and Tearney, Appellants’ only argument is that Sucha and Tearney do
not cure the deficiencies of Fitz asserted against the rejection of claim 6.
This argument is not convincing for the reasons discussed above. We
sustain the rejection of claim 10.
NEW GROUNDS OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter the
following new grounds of rejection:
Claims 6, 18, and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sucha and Fitz.
Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Sucha, Fitz, and Tearney.
The determination that the subject matter of dependent claims 8-10
and 22 would have been obvious necessarily is also a determination that the
subject matter of claim 6 (from which claims 8-10 depend) and of claims 18
and 19 (from which claim 22 depends) would have been obvious. See
Ormco Corp. v. Align Tech., 498 F.3d 1307, 1319 (Fed. Cir. 2007) (when a
dependent claim is “found to have been obvious, the broader claims . . . must
also have been obvious”). We thus enter new grounds of rejection of claims
6, 18, and 19 under 35 U.S.C. § 103(a) as unpatentable over Sucha and Fitz,
Appeal 2010-002799
Application 10/547,589
7
and of claim 6 under 35 U.S.C. § 103(a) as unpatentable over Sucha, Fitz,
and Tearney.
DECISION
The Examiner’s decision rejecting claims 6-11 and 18-23 is affirmed
as to claims 8-11 and 22 and reversed as to claims 6, 7, 18-21, and 23. We
enter new grounds of rejection of claims 6, 18, and 19.
FINALITY OF DECISION
Regarding the affirmed rejection(s), 37 CFR § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the proceeding will be
remanded to the examiner. . . .

(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same record. . . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
Appeal 2010-002799
Application 10/547,589
8
review under 35 U.S.C. § 141 or 145 with respect to the affirmed rejections,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejections, including any timely request for
rehearing thereof.
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)(1)(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

hh