Andre Ehrhardt et al.

Patent Trials and Appeals Board

Dec 12, 2019

13074939 - (D) (P.T.A.B. Dec. 12, 2019)

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 12/12/2019
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
12/12/2019 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 APPEAL
STATEMENT OF THE CASE
Introduction
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–13 and 15–29. Appeal Br. 1. Claim
14 is canceled. Id. at 25. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION under
37 C.F.R. § 41.50(b).

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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Summary of the disclosure
Appellant’s claimed subject matter relates to the mixing of light
sources using a coupling device to generate illuminating light with improved
color rendering for medical or boroscopic applications. See Abstract.
Exemplary claims (key limitations emphasized)
1. An apparatus to provide white illuminating light for medical
and boroscopic applications, the apparatus comprising:
a first light source emitting white-light;
a second light source emitting monochromatic light;
a third light source emitting a third light;
a coupling device mixing the white-light, the monochromatic
light and the third light into a common beam path in order to
generate illuminating light with improved color rendering; and
a light conductor cable receiving the mixed white-light,
monochromatic light and third light in the common beam path,
and conducting it to an endoscope or exoscope or microscope.
11. A method to provide white illuminating light for medical
and boroscopic applications, the method comprising the
following steps:
generating light by means of a first light source emitting white-
light;
generating monochromatic light by means of a second light
source emitting monochromatic light;
generating light by means of a third light source emitting a third
light; and
mixing the white-light, the monochromatic light and the third
light so that their respective light beams all overlap in a
common beam path by means of a coupling device in order to
generate illuminating light with improved color rendering.
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27. The apparatus of Claim 1, wherein the coupling device has
three surfaces for receiving light from each of the first light
source, second light source, and third light source, and a fourth
surface for emitting the mixed light in the common beam path.
28. The apparatus of Claim 27, wherein the coupling device
comprises a prism.
29. The apparatus of Claim 27, wherein the coupling device
comprises three prisms.
The Examiner’s rejections and cited references
The Examiner rejects claims 28 and 29 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Final Act. 6–7.
The Examiner rejects claims 1–13 and 15–29 under 35 U.S.C. § 112,
second paragraph, as being indefinite. Final Act. 7–10.
The Examiner rejects claims 1–13 and 15–26 under 35 U.S.C.
§ 103(a) as being unpatentable over Scott et al. (US 2009/0270678 A1;
published Oct. 29, 2009) (“Scott”) and Appellant Admitted Prior Art
(“AAPA”). Final Act. 12–21.
The Examiner rejects claims 27–29 under 35 U.S.C. § 103(a) as being
unpatentable over Scott, AAPA, and Furusawa et al. (US 6,456,769 B1;
issued Sept. 24, 2002) (“Furusawa”). Final Act. 21–22.
35 U.S.C. § 112, FIRST PARAGRAPH
Claim 28
In rejecting claim 28 as failing to comply with the written description
requirement, the Examiner finds that the recitation of “wherein the coupling
device comprises a prism” is not supported by sufficient written description
in the Specification. Final Act. 6–7. In particular, the Examiner finds the
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“Specification does not describe a prism at all, and more importantly it does
not describe a prism’s function as an optical coupler.” Ans. 19. The
Examiner further finds that the Specification discloses the use of reflecting
surfaces, but that a prism—which refracts or disperses light—“is not a
mirror.” Id. at 20.
Appellant contends the Examiner erred because the Specification
illustrates “coupling device 25 having three prism, each with faces in
parallel planes and other faces parallelograms.” Appeal Br. 16; see also
Reply Br. 6 (citing Spec. Fig. 1, ¶ 70). Appellant’s argument accords with
the Specification’s Figure 1, which is reproduced below.

The Specification’s Figure 1 provides “a schematic depiction of an
endoscopy system.” Spec. ¶ 59. This depiction includes coupling device 25,
which is illustrated as comprising three triangular pieces and which includes
wavelength-dependent or polarization-dependent reflecting surfaces (i.e.,
semi-reflective surfaces). Id. ¶ 70. Coupling device 25 couples light from
first laser 22, second laser 23, and light-emitting diode 21 into beam path 27.
Id.
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The Specification’s depiction of coupling device 25 comprising three
triangular pieces using semi-reflective surfaces, as further disclosed, to
combine three sources of light into a single light-beam evinces that the
disclosed triangular pieces are optical prisms. See also, e.g., Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir. 1991) (“drawings alone may
provide a ‘written description’ of an invention”). Therefore, the
Specification provides sufficient detail such that an artisan of ordinary skill
would reasonably conclude the inventors had possession of a “coupling
device compris[ing] a prism,” as recited in claim 28, at the time of filing.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 112, first
paragraph, rejection of claim 28.
Claim 29
In rejecting claim 29 as failing to comply with the written description
requirement, the Examiner finds the limitation “‘wherein the coupling
device comprises three prisms’ . . . is not a feature supported by the written
description.” Final Act. 7 (emphasis omitted); see also Ans. 20 (“[c]oupling
device 25 does not inherently or implicitly require a prism or multiple
prisms”).
Appellant contends the Examiner erred for similar reasons to those
discussed above. See Appeal Br. 16; Reply Br. 6. As discussed, the
Specification provides sufficient evidence that each of the three triangles
depicted as part of coupling device 25 represents a prism. See Spec. Fig. 1,
¶ 70. Therefore, the Specification provides sufficient detail such that an
artisan of ordinary skill would reasonably conclude the inventors had
possession of a “coupling device compris[ing] three prisms,” as recited in
claim 29, at the time of filing.
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Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 112, first
paragraph, rejection of claim 29.
35 U.S.C. § 112, SECOND PARAGRAPH
Claims 1–10, 13, and 15–26
In rejecting claim 1 as indefinite, the Examiner finds that the
limitation of “‘a coupling device’ for ‘mixing the white-light, the
monochromatic light and the third light into a common beam path’ . . . is a
generic term modified by functional language but not modified by
structure.” Final Act. 8 (emphasis omitted). Thus, the Examiner construes
the coupling device recitation as a means-plus-function recitation invoking
35 U.S.C. § 112, sixth paragraph. See id. at 8–9. The Examiner finds “the
written description fails to disclose the corresponding . . . structure for the
claimed invention” and therefore the coupling device limitation renders
claim 1 indefinite. Id. at 9.
Appellant contends the claimed coupling device is not a means-plus-
function limitation because “devices can take their names from the functions
they perform.” Appeal Br. 17 (citing MPEP § 2181). But coupling device is
not like terms that identify their structures by function (e.g., filters, brakes,
clamp, screwdriver, and locks) or terms such as “circuit” that can connote
structure when combined with a functional description. Even when claimed
as “mixing the white-light, the monochromatic light and the third light into a
common beam path,” the claimed coupling device fails to add sufficient
structure to avoid 35 U.S.C. § 112, sixth paragraph. Compare with
Massachusetts Inst. of Tech. & Elecs. For Imaging, Inc. v. Abacus Software,
462 F.3d 1344, 1356 (Fed. Cir. 2006) (the term “aesthetic correction
circuitry” was not a means-plus-function limitation). Moreover, although
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Appellant argues “a claim limitation that does not use the term[s] ‘means’ or
‘step’ triggers the rebuttable presumption that 112[, sixth paragraph] does
not apply” (Appeal Br. 18 (citing MPEP § 2181)), “[g]eneric terms such as
. . . ‘device,’ and other nonce words that reflect nothing more than verbal
constructs may be . . . tantamount to using the word ‘means’ because they
‘typically do not connote sufficiently definite structure’” (Williamson v.
Citrix Online, LLC, 792 F.3d 1339, 1350 (Fed. Cir. 2015) (citing Abacus,
462 F.3d at 1354)).
Appellant further argues “there is sufficient structure to avoid 112,”
sixth paragraph, because the Specification “discloses use of prisms and
openings for mixing light.” Appeal Br. 18 (citing Spec. ¶¶ 70, 110; Figs. 1,
11). Appellant’s reliance on the Specification in this manner contravenes the
balance struck by enactment of 35 U.S.C. § 112, sixth paragraph,
in allowing patentees to express a claim limitation by reciting a
function to be performed rather than by reciting structure for
performing that function, while placing specific constraints on
how such a limitation is to be construed, namely, by restricting
the scope of coverage to only the structure, materials, or acts
described in the specification as corresponding to the claimed
function and equivalents thereof.
Williamson, 792 F.3d at 1347 (citing Northrop Grumman Corp. v. Intel
Corp., 325 F.3d 1346, 1350 (Fed. Cir. 2003)) (emphases added). Disclosure
of structure in the Specification does nothing to avoid invoking 35 U.S.C.
§ 112, sixth paragraph, when such structure is not also recited in the
corresponding claim recitation. Rather, such disclosure merely describes and
constrains how the limitation is to be construed.
Although we agree with the Examiner that the coupling device
recitation of claim 1 invokes 35 U.S.C. § 112, sixth paragraph (Final Act. 8),
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we disagree with the Examiner that “the written description fails to disclose
the corresponding . . . structure for the claimed function” (id. at 9; see also
Ans. 21). As Appellant points out, the Specification “discloses use of prisms
and openings for mixing light.” Appeal Br. 18 (citing Spec. ¶¶ 70, 110; Figs.
1, 11).
In response, the Examiner finds that “the Specification does not
disclose prisms.” Ans. 21. For the reasons discussed above with respect to
the Examiner’s 35 U.S.C. § 112, first paragraph, rejection of claims 28 and
29, we do not agree with this finding. Even if the Specification did fail to
disclose prisms, the Examiner’s response would be insufficient. Appellant
submits that the Specification discloses both prisms and openings. See
Appeal Br. 18. These disclosures provide alternative structural support for
the “coupling device” recitation. Compare Spec. Fig. 1 (combining light
sources 22 and 23 with prisms) with id. Fig. 11 (combining light sources 22
and 23 with openings). The Examiner does not address whether the
Specification discloses the use of openings as a coupling device. Thus, even
if the Examiner’s findings were correct (i.e., even if the Specification fails to
disclose prisms), they would at most show that the claimed coupling device
should be construed to mean openings for mixing light and equivalents
thereof.2 Therefore, we do not agree with the Examiner that the claimed
“coupling device” limitation renders claim 1 indefinite.

2 We emphasize, however, that the Specification discloses the use of prisms
in a coupling device. Therefore, the claimed coupling device also
encompasses the use of prisms to combine multiple light sources into a
common beam path and equivalents thereof.
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Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 112,
second paragraph, rejection of claim 1, and claims 2–10, 13, and 15–26,
which the Examiner rejects for similarly unpersuasive reasons. Final Act. 9.
Claims 11 and 12
In rejecting claim 11 under 35 U.S.C. § 112, second paragraph, the
Examiner concludes that the “coupling device” recitation of claim 11 is
indefinite for similar reasons to those given with respect to claim 1. See
Final Act. 8–9. For the reasons discussed above with respect to the
Examiner’s 35 U.S.C. § 112, second paragraph, rejection of claim 1, we do
not agree with this basis for rejecting claim 11.
The Examiner further finds that the recitation mixing the white-light,
the monochromatic light and the third light so that their respective light
beams all overlap in a common beam path is indefinite because “[t]he term
‘light beams all overlap’ is not a term of art and is not defined by the claim,
the specification does not provide a standard for ascertaining the requisite
degree, and one of ordinary skill in the art would not be reasonably apprised
of the scope of the invention” (Final Act. 9; see also Ans. 22). We agree
with Appellant, however, that this recitation is not indefinite. See Appeal Br.
20; Reply Br. 2–3.
In particular, the recitation “light beams all overlap” has an ordinary
and plain meaning. The meaning of “overlap” is “to occupy the same area in
part.” The Merriam-Webster.com Dictionary, s.v. “overlap (vb.),” accessed
November 26, 2019, https://www.merriam-webster.com/dictionary/overlap.
Because all three of the recited light beams overlap, all of the light beams
must occupy the same area in part. Moreover, because they all overlap “in a
common beam path,” it is not enough for the light beams to intersect each
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other and then immediately diverge. Rather at least part of the area where
they overlap must continue in a common beam path. Because the “light
beams all overlap” recitation has an ordinary and plain meaning, it is neither
vague nor unclear; a person having ordinary skill in the art would be able to
discern the metes and bounds of the claimed invention with respect to the
“light beams all overlap” recitation. See Ex Parte McAward, No. 2015-
006416, 2017 WL 3669566, at *8 (PTAB 2017) (precedential). Therefore,
the Examiner fails to identify any recitations that render claim 11 indefinite.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 112,
second paragraph, rejection of claim 11, and claim 12, which depends
therefrom.
35 U.S.C. § 103(A)
In rejecting claim 1 as obvious, the Examiner relies on Scott’s use of
a small injection mirror placed in front of a white lamp unit, along with a
turning mirror placed between a laser module and injection mirror, to teach
or suggest “a coupling device mixing the white-light, the monochromatic
light and the third light into a common beam path.” See Final Act. 13–14
(citing, e.g., Scott ¶ 179, Fig. 5C). In particular, the Examiner relies on an
embodiment in Scott that includes a second laser module (i.e., a second light
source) that injects light into a set of set of fibers in a fiber optic cable to
teach or suggest mixing three light sources. See Ans. 11–12 (citing, e.g.,
Scott Fig. 5G).
Appellant contends the Examiner erred because “Scott simply
discloses mixing two light sources—a white light 512A and a laser 517.”
Appeal Br. 6 (citing Scott ¶ 179). Appellant argues that even in teaching
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“use of a third light source (laser 509), Scott teaches use of two different
optical paths.” Id. at 7; see also Reply Br. 2–4.
Appellant’s arguments accord with Scott’s teaching that the mixed
light from white light source 512A and laser module 517 is projected “into
one set of fibers in fiber optic cable 514A” while “second laser module 509
provides a beam that is injected on a second set of fibers within fiber optic
cable 514A.” Scott ¶ 198 (cited by Reply Br. 7–8) (italic emphases added).
That is, Scott’s fiber optic cable is a bundle of individual fibers. See, e.g.,
Scott ¶ 57.
The Examiner concludes that it would have been “obvious to simply
add/duplicate additional light sources using either mirrors or light cables as
taught in the prior art[;] each additional light source serves the same purpose
– it adds additional light energy.” Ans. 12. The Examiner, however, provides
insufficient evidence or analysis showing that it would have been obvious to
an artisan of ordinary skill, based on the cited teachings of Scott, to use
mirrors to add additional light sources into the mix of light from the white
light source and laser module. Moreover, merely adding light cables (or
fibers) would only create additional beam paths rather than mixing
additional light sources into a common beam path.
For these reasons, the Examiner’s findings do not show that it would
have been obvious to an artisan of ordinary skill to modify Scott to mix three
light sources into a common beam path in the manner recited in claim 1. The
Examiner does not show that the additional prior art references, including
Appellant Admitted Prior Art, cure the noted deficiency of Scott.
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Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 103(a)
rejection of claim 1, and the Examiner’s 35 U.S.C. § 103(a) rejections of
claims 2–13 and 15–29, which contain similar recitations.
NEW GROUND OF REJECTION
Although we agree with Appellant that the Examiner’s findings, based
on the cited teachings of Scott, are insufficient to show that Scott teaches or
suggests the disputed recitations of claim 1, we agree with the Examiner that
mixing in an additional light source would have been obvious 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)). The Examiner merely erred in
relying solely on the cited, limited teachings of Scott, which do not show
how more than two light sources can be mixed (potential ambient light
notwithstanding). That is, the Examiner failed to cite to a mechanism for
mixing more than two light sources.
Nonetheless, mechanisms for such mixing were well-known in the art
at the time the application was filed. For example, prism assemblies known
as Philips prisms were known in the art as mechanisms for combining three
sources of light. See, e.g., Vandorpe et al. (US 7,396,132 B2; issued July 8,
2008) (“Vandorpe”), col. 1, ll. 27–32, Fig. 2. Although the prism
arrangement illustrated in the Specification’s Figure 1 differs from the prism
arrangement illustrated in Vandorpe Fig. 2 (i.e., the depicted Philips prism),
Vandorpe nonetheless similarly relies on the use of prisms having semi-
reflective surfaces to accept light sources received from multiple faces and
combine them into a common beam path output from another face.
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Therefore, Vandorpe’s disclosed prism arrangement is equivalent to the
“coupling device” of claim 1.
We are, of course, cognizant that simply finding prior art disclosures
of claimed elements is insufficient to show obviousness. As Judge Learned
Hand long ago explained:
[a]ll machines are made up of the same elements; rods, pawls,
pitmans, journals, toggles, gears, cams, and the like, all acting
their parts as they always do and always must. All compositions
are made of the same substances, retaining their fixed chemical
properties. But the elements are capable of an infinity of
permutations, and the selection of that group which proves
serviceable to a given need may require a high degree of
originality. It is that act of selection which is the invention.
B.G. Corp. v. Walter Kidde & Co., 79 F.2d 20, 21–22 (2d Cir. 1935) (cited
in Ex parte Fursund, No. 2017-009637, 2018 WL 1378167, at *3 (PTAB
Mar. 14, 2018)). Scott, however, explicitly teaches that two excitation light
sources “can be coupled into the one or more endoscope illumination
channels.” Scott ¶ 183 (emphasis added); see also id. ¶ 179 (distinguishing
laser module excitation light from white light). With this suggestion to mix
white light with light from multiple laser modules (i.e., multiple excitation
light sources) rather than from a single laser module (as illustrated in the
figures of Scott), it would have been obvious to an artisan of ordinary skill to
rely on a “classical” mechanism for combining multiple light sources. See
Vandorpe col. 1, l. 30.
Appellant’s arguments do not show any other errors in the Examiner’s
obviousness rejection of claim 1. Therefore, we newly reject claim 1 under
35 U.S.C. § 103(a) as being obvious over Scott, Vandorpe, and AAPA. We
similarly newly reject independent claims 11 and 13, which have similar
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recitations and which the Examiner rejected for similar reasons. See Final
Act. 17.
As a board of appeal, we are primarily a tribunal of review. Although
we decline to reject every claim under our discretionary authority under
37 C.F.R. § 41.50(b), we emphasize that our decision does not mean that the
remaining claims, i.e., claims 2–10, 12, and 15–29 are patentable. That is,
we have not considered the patentability of the remaining claims beyond our
discussion of issues raised on appeal. We leave it to the discretion of the
Examiner to reconsider the patentability of the remaining claims in light of
the teachings and suggestions of Vandorpe.
CONCLUSION
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
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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
37 C.F.R. § 41.50(b) also provides that the Appellant, 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 prosecution
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. . . .

Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
REVERSED; 37 C.F.R. § 41.50(B)

Notice of References Cited

Application/Control No.
13/074,939
Applicant(s)/Patent Under
Reexamination

Examiner

Art Unit

Page 1 of 1

U.S. PATENT DOCUMENTS

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1 A US- 7,396,132 B2 July 8, 2008 Vandorpe et al. 1 1
B US-
C US-
D US-
E US-
F US-
G US-
H US-
I US-
J US-
K US-
L US-
M US-
FOREIGN PATENT DOCUMENTS

* Document Number Country Code-Number-Kind Code Date MM-YYYY

Country

Name

Classification
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NON-PATENT DOCUMENTS
* Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages)

U

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*A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).)
Dates in MM-YYYY format are publication dates. Classifications may be US or foreign.

U.S. Patent and Trademark Office
PTO-892 (Rev. 01-2001) Notice of References Cited Part of Paper No.
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