Ex Parte Barbato et al

Board of Patent Appeals and Interferences

May 21, 2012

10195603 (B.P.A.I. May. 21, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/195,603 07/15/2002 Louis J. Barbato 11219.0076-00000 4247
22852 7590 05/21/2012
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
WEATHERBY, ELLSWORTH
ART UNIT PAPER NUMBER
3768
MAIL DATE DELIVERY MODE
05/21/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LOUIS J. BARBATO, ROBERT J. CROWLEY, and YEM CHIN
____________

Appeal 2010-000465
Application 10/195,603
Technology Center 3700
____________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
EDWARD A. BROWN, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Louis Barbato et al. (Appellants) appeal from the Examiner’s decision
to reject under 35 U.S.C. § 102(e) claims 1-6, 8-10, 12, 13 and 17-25 as
anticipated by Seibel (US 2001/0055462 A1, published Dec. 27, 2001)1,2 and
under 35 U.S.C. § 103(a) claims 7 and 11 as unpatentable over Seibel and
Nishioka (US 4,674,844, issued Jun. 23, 1987) and claim 14 as unpatentable
over Seibel and Khoury (US 5,217,454, issued Jun. 8, 1993). Claims 15, 16
and 26-28 have been withdrawn by the Examiner. We have jurisdiction over
this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellants’ invention relates to a device and a method for imaging a
target region inside a human body including a light source 122, a photo-
sensor 124, and a scanning assembly. Spec. paras. [0002], [0007], and
[0033] and fig. 3.
Claims 1 and 17 are illustrative of the claimed invention and read as
follows:
1. An imaging device insertible into a human body
comprising:

1 The rejection of dependent claim 6 was introduced by the Examiner as a
New Ground(s) of Rejection in the Examiner’s Answer (see Ans. 2-3) in
response to Appellants’ argument that the Examiner failed to provide
grounds for the rejection of dependent claim 6 in the Final Rejection mailed
Feb. 12, 2007 (see App. Br. 8). According to the Examiner, “[t]he omission
of claim 6 in the heading of the rejection is a mere oversight.” Ans. 3.
Appellants do not refute the Examiner’s position in the Reply Brief filed
Jun. 30, 2009.
2 It appears that the Examiner inadvertently included dependent claim 14 in
the heading of the rejection. See Ans. 4 and 6.
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a sheath;
a light source mounted on a first platform and disposed
within the sheath for illuminating at least a portion of a target
region;
a photo-sensor mounted on a second platform and
disposed within the sheath for sensing light energy received
from at least a portion of the target region; and
a movable assembly adapted to move the first platform in
at least two dimensions relative to the target region.

17. A method for imaging a target region inside a human
body comprising:
positioning a sheath relative to the target region inside the
human body;
illuminating at least a portion of a target region with a light
source disposed within the sheath;
sensing energy received from at least a portion of the target
region with a photo-sensor disposed within the sheath; and
moving the photo-sensor in at least two dimensions relative
to the target region with a movable assembly.

SUMMARY OF DECISION
We REVERSE.

OPINION
Claims 1-6, 8-10, 12 and 13
Independent claim 1 recites an imaging device that requires “a light
source mounted on a first platform” wherein “a movable assembly [is]
adapted to move the first platform in at least two dimensions relative to the
target region.” App. Br., Claims Appendix.
Appellants argue that the actuator of Seibel “does not move, but
creates mechanical energy to drive the optical fiber when electrical energy is
applied.” App. Br. 4. Hence, according to Appellants, although the actuator
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of Seibel moves the optical fiber, since the actuator itself does not move, the
actuator does not constitute a “two-dimensionally moving platform on which
a light source is mounted, as recited in claim 1.” Id.
In response, pointing to Figure 5D of Seibel, the Examiner found that
Seibel teaches an imaging device 200 that includes an optical fiber 210 (i.e.,
light source) mounted on a first platform (i.e., the distal face of the two axis
tube actuator 206). Ans. 7. In addition, the Examiner takes the position that
because Seibel specifically teaches that “[t]he rotation of the linear scan can
be generated from the two axis piezoceramic tube actuator” (see Seibel, para
[0090]), “the motion of distal face (indicated by the arrows in figure 5D) of
two axis piezoceramic tube actuator causes the 2D motion of the optical
fiber.” Id. In other words, according to the Examiner, “the [cantilevered]
optical fiber moves in two dimensions because the distal face of the tube
actuator moves in two directions.” Id.
First, we begin our analysis by interpreting the term “two-axis
piezoceramic tube actuator.” It is well settled that what a reference teaches
or suggests must be examined in the context of the knowledge, skill, and
reasoning ability of a skilled artisan. What a reference teaches a person of
ordinary skill is not limited to what a reference specifically “talks about” or
what is specifically “mentioned” or “written” in the reference. Syntex
(U.S.A.) LLC v. Apotex, Inc. 407 F.3d 1371, 1380 (Fed. Cir. 2005). “[A]
person of ordinary skill is also a person of ordinary creativity, not an
automaton.” KSR v. Teleflex, 550 U.S. 398, 421 (2007). In the embodiment
shown in Figure 3B, Seibel teaches a tube piezoelectric tube actuator 95 that
causes cantilevered optical fiber 94 to move in a single direction indicated
by arrow 98. Seibel, para. [0077]. Similarly, in the embodiment shown in
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Figure 3D, Seibel teaches a piezoelectric tube actuator 122 that causes
cantilevered optical fiber 122 to move in a single direction 130. Seibel
further teaches that “two axis actuators are not required for 2D scanning.”
Seibel, para. [0081]. Hence, although we appreciate that Seibel describes
piezoceramic tube actuator 206 as a “two-axis piezoceramic tube actuator
206” (see Seibel, para. [0089]), we do not agree with the Examiner that the
modifier “two-axis” refers to the motion of the actuator, but rather to the
ability of the actuator to move the optical fiber in two dimensions, i.e.,
along two orthogonal axes.
Second, we note that in regard to Figure 5D Seibel describes “a
variable radius or spiral scan mode of an optical fiber scanning system 200”
that includes a plurality of light detectors 204 arranged “around a single
piezoceramic tube actuator 206.” Seibel, para. [0089]. Seibel further
teaches that “[t]he whirling motion of the cantilevered optical fiber is
controllably driven larger or smaller in diameter by increasing or decreasing
the voltage applied to the four individual quadrants of piezoceramic tube
actuator 206.” Seibel, para. [0090]. Hence, Seibel specifically teaches that
the piezoceramic elements of actuator 206 produce the driving force that
moves the cantilevered optical fiber. See also, Seibel, para. [0089].
However, having the piezoceramic elements of actuator 206 drive the
cantilevered optical fiber does not mean that the piezoceramic elements
move the distal surface of actuator 206, as the Examiner proposes.
Likewise, it does not mean that the piezoceramic elements move the
cantilevered optical fiber directly without moving the distal surface of the
actuator 206. As such, we find that both situations are equally probable.
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Consequently, we find that the Examiner has not provided sufficient
evidence to support the specific finding that the two dimensional movement
of the cantilevered optical fiber of Seibel is the result of moving the distal
surface of actuator 206 in two dimensions. As such, the Examiner has not
made the initial factual findings required to demonstrate a prima facie case
of anticipation of independent claim 1. Therefore, the rejection of
independent claim 1 and its respective dependent claims 2-6, 8-10, 12 and
13 under 35 U.S.C. § 102(e) as anticipated by Seibel cannot be sustained.

Claims 7, 11 and 14
The addition of Nishioka and Khoury does not remedy the
deficiencies of Seibel as described above. As such, the rejections under 35
U.S.C. § 103(a) of claims 7 and 11 as unpatentable over Seibel and
Nishioka; and of claim 14 as unpatentable over Seibel and Khoury likewise
cannot be sustained.

Claims 17-25
Independent claim 17 recites a method for imaging a target region
inside a human body that requires the method step of “moving the photo-
sensor in at least two dimensions relative to the target region with a movable
assembly.” App. Br., Claims Appendix.
The Examiner found that Seibel teaches a plurality of light detectors
204 (i.e., photo sensors). Ans. 4. See also Seibel, fig. 5D. In addition, the
Examiner takes the position that:
Alternate embodiments are disclosed, including
one wherein the illumination and detection take
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place on the same platform, which also has a
movable assembly (figure 6c). Therefore, the
photo sensors are also capable of movement in at
least two dimensions relative to the target region
with the aid of the moveable assembly.
Ans. 4.
As such, based on our understanding, the Examiner appears to reach a
finding of anticipation by combining separate, distinct embodiments of
Seibel. In particular, the light detectors 204 (i.e., photo sensors) relied on by
the Examiner refer to a different disclosed embodiment, namely, the optical
fiber scanning system 200 described in paragraph [0089] and shown in
Figure 5D of Seibel.
In the context of anticipation, a prior art reference anticipates the
claimed invention under 35 U.S.C. §102(e) only if every element of a
claimed invention is identically shown in that single reference, arranged as
they are in the claims. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). In
this case, the light detectors 204 (i.e., photo sensors) of the optical fiber
scanning system 200 of Figure 5D of Seibel are not included in the
concentric optical fiber assembly 280 of Figure 6C of Seibel, because the
concentric optical fiber assembly 280 of Figure 6C of Seibel does not
require light detectors 204 (i.e., photo sensors) “to produce signals indicative
of the light received from a [region of interest] ROI.” See Seibel, para.
[0089]. Rather, in the concentric optical fiber assembly 280 of Figure 6C of
Seibel, the light received from a ROI is reflected back into an optical fiber
assembly 289 and conveyed to instrumentation disposed outside the patient’s
body. See Seibel, para. [0103]. As such, since the Examiner appears to
have relied on multiple distinct embodiments in Seibel, the elements of the
claimed invention are not identically shown in the reference, arranged as
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they are in the claims. Accordingly, we shall reverse the rejection of
independent claim 17 and its respective dependent claims 18-25 under 35
U.S.C. § 102(e) as anticipated by Seibel.

DECISION
The decision of the Examiner to reject claims 1-14 and 17-25 under
§§ 102 and 103 is reversed.

REVERSED

MP