Ex Parte Boyden et al

Patent Trial and Appeal Board

Jul 25, 2014

11526192 (P.T.A.B. Jul. 25, 2014)

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.
11/526,192 09/22/2006 Edward S. Boyden 0606-004-001B-000000 9610
44765 7590 07/25/2014
THE INVENTION SCIENCE FUND
CLARENCE T. TEGREENE
11235 SE 6TH STREET
SUITE 200
BELLEVUE, WA 98004
EXAMINER
SZPIRA, JULIE ANN
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
07/25/2014 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 EDWARD S. BOYDEN, RODERICK A. HYDE,
MURIEL Y. ISHIKAWA, ERIC C. LEUTHARDT,
NATHAN P. MYHRVOLD, DENNIS J. RIVET, MICHAEL A. SMITH,
THOMAS A. WEAVER, and LOWELL L. WOOD, JR.
__________

Appeal 2012-001823
Application 11/526,192
Technology Center 3700
__________

Before DONALD E. ADAMS, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL
This is a decision on appeal1 under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1, 2, 4, 5, 9-13, 17-22, 26-29, 33, and 35-41.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 The Real Party in Interest is Searete LLC (App. Br. 3).
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STATEMENT OF THE CASE
The Specification discloses sectioning tools that “may mitigate . . .
infections by sterilizing some or all of the portions of the tools contacting the
patient and their surroundings, either intermittently or continuously, before,
during, and/or after surgery” (Spec. 7:2-5).
Claim 1 is representative and reads as follows:
1. An apparatus, comprising:
a first member including a sectioning structure;
a radiation emitter optically directed to the sectioning structure;
a conversion structure positioned at the sectioning structure and
configured to convert radiation from the radiation emitter to sterilizing
radiation; and
a switch configured to modulate the radiation emitter by reducing a
radiation level in response to proximity to a material.

The claims stand rejected 35 U.S.C. § 103(a) as follows:
I. Claims 1, 2, 4, 5, 10, 17-20, 35-39, and 41 over the combination
of Auth,2 Malak,3 and Altshuler4 (Ans. 5-7);
II. Claims 9 and 40 over the combination of Auth, Malak, and
Altshuler, as further combined with Goldberger5 (Ans. 7-8); and
III. Claims 11-13, 21, 22, 26-29, and 33 over the combination of
Auth, Malak, and Altshuler, as further combined with
Lemelson6 (Ans. 8-9).7

2 Auth et al., US 4,273,127, patented June 16, 1981.
3 Malak, US 2005/0203495 A1, published Sept. 15, 2005.
4 Altshuler et al., US 2007/0213698 A1, published Sept. 13, 2007.
5 Goldberger et al., US 5,772,597, patented June 30, 1998.
6 Lemelson, US 5,464,013, patented Nov. 7, 1995.
7 Both the Examiner’s Answer (Ans. 8) and the Appeal Brief (App. Br. 8,
22) indicate that claims 30-32 also stand rejected, but these references to
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I.
Issue
The Examiner has rejected claims 1, 2, 4, 5, 10, 17-20, 35-39, and 41
under 35 U.S.C. § 103(a) as obvious over the combination of Auth, Malak,
and Altshuler (Rejection I) (Ans. 5-7). We focus our initial analysis on
independent claim 1.
The issue presented is: Has the Examiner established by a
preponderance of the evidence that the combination of Auth, Malak, and
Altshuler would have made obvious an apparatus comprising “a switch
configured to modulate the radiation emitter by reducing a radiation level in
response to proximity to a material” as required by claim 1?
Findings of Fact
FF1. The Specification discloses “an apparatus for sectioning a
material [that] includes a first member including a sectioning structure and
an ultraviolet emitter (e.g., a laser) optically coupled to the sectioning
structure” (Spec. 3:21-23).
FF2. The Specification discloses that the apparatus also comprises “a
switch configured to modulate the ultraviolet emitter in response to a signal
condition . . . [wherein the] switch may be configured for manual activation,
or it may modulate the ultraviolet emitter when the sectioning structure is in
contact with a material” (id. at 4:13-18).
FF3. The Specification discloses that the apparatus may comprise “a
proximity sensor (e.g., a capacitive sensor, an optical sensor, and/or a

claims 30-32 appear to be errors because the Claims Appendix to the Appeal
Brief indicates that these claims have been canceled (App. Br. 30).
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receiver responsive to a carrier signal in the material) that determines
proximity of the sectioning structure to a material, in which case the switch
may . . . modulate the ultraviolet emitter in response to the proximity sensor”
(id. at 4:18-22).
FF4. The Specification discloses that the switch
[M]ay be configured to modulate the ultraviolet emitter in
response to a temperature sensor, to a reflectivity sensor that is
configured to detect reflectivity in the vicinity of the sectioning
structure, to a biological sensor that is configured to detect a
presence of microorganisms in the vicinity of the sectioning
structure, and/or to a force sensor.

(Id. at 4:22-26.)
FF5. The Examiner finds that Auth discloses an apparatus comprising
“a first member including a sectioning structure” and “a radiation emitter . . .
optically directed to the sectional structure” (Ans. 5 (citing Auth, col. 3, ll.
9-10 and 17-25; col. 8, ll. 5-8)).
FF6. The Examiner finds that the Auth apparatus further comprises “a
switch (18) configured to modulate the radiation emitter in response to a
signal condition[ ]” (id. (citing Auth, col. 3, ll. 15-20)).
FF7. Auth discloses “an optical instrument for forming an incision in
vascularized tissues and photocoagulating tissue adjacent the incision”
(Auth, col. 1, ll. 19-22).
FF8. Auth discloses that “[l]aser radiation is coupled to an optical
instrument having a relatively narrow working edge from which the
radiation is emitted in a relatively narrow zone of intense radiation leakage”
(id., abstract).
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FF9. Auth discloses that the “working edge is placed in contact with
vascularized tissues, and the laser radiation emanating from the working
edge in combination with the contact between the working edge and the
tissues forms an incision, and the laser radiation photocoagulates tissue
adjacent the incision” (id.).
FF10. Auth discloses that “power supplied to the laser . . . may be
controlled to adjust the intensity of the laser radiation . . . to ensure rapid
cutting and coagulation without causing undue necrosis. For this purpose, a
power adjustment system includes a pressure-sensitive power control 18 on
the handle 16” (id. at col. 6, ll. 61-67).
FF11. Auth discloses that “power control systems may also be
devised which automatically set the intensity of the laser radiation to an
optimum value. One such system . . . includes a sensor 52 for measuring the
laser radiation internally reflected from the working edge 14 toward the
waveguide 20” (id. at col. 7, ll. 8-13).
FF12. Auth discloses that the “optical sensor is preferably placed at
the top portion of the light guide 12” (id. at col. 7, ll. 13-15).
FF13. Auth discloses that an “excessive amount of internally
reflected light indicates that laser radiation is of an intensity greater than can
be absorbed by blood emanating from the incised tissues” (id. at col. 7, ll.
15-18).
FF14. The Examiner finds that Auth does not “disclose a conversion
structure positioned at the sectioning structure,” (Ans. 5), and the Examiner
relies on Malak as disclosing this feature (id. at 5-6).
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FF15. The Examiner also finds that Auth fails to teach that the
“switch modulates the radiation emitter by reducing a radiation level in
response to proximity to a material and a sensor to detect that proximity” (id.
at 5).
FF16. The Examiner finds that Altshuler discloses a “radiation level
(light) . . . [that is] adjusted in response to the proximity to human tissue . . .
[such that] the power delivery to the source varies based on the proximity of
the device to a material” (id. at 6 (citing Altshuler ¶¶ 0020 and 0026)).
FF17. The Examiner also finds that Altshuler “teaches a feedback
system that can increase or decrease the radiation (light energy) emitted by
the system depending on the condition of the material (skin) of which it
contacts” (id. at 12 citing Altshuler ¶ 0149)).
FF18. The Examiner finds that Altshuler discloses that, “[d]epending
on the condition of the skin that the device contacts, the device will alter its
radiation output . . . [and therefore] radiation is reduced when the device is
in proximity to a material” (id.).
FF19. Altshuler discloses an “apparatus for utilizing electromagnetic
radiation, especially radiation with wavelengths between 300 nm and 100
µm, to treat various dermatology, cosmetic, health, and immune conditions”
(Altshuler 1, ¶ 0003).
FF20. Altshuler discloses that the device includes a plurality of
sections that each has a “light source disposed to irradiate the tissue, and at
least one tissue proximity sensor disposed to indicate when the section is in
close proximity to the tissue” (id. at 2, ¶ 0017).
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FF21. Altshuler discloses that a “feedback mechanism can provide
information to be used by the photocosmetic device 910 to control the
operation of the device” (id. at 13, ¶ 0149).
FF22. Altshuler discloses that “if the feedback mechanism detects a
large amount of acne-causing bacteria, the control system might increase the
power . . . to increase the intensity of the light emitted during treatment of
that area to provide more effective treatment” (id.).
FF23. Altshuler discloses that, “[s]imilarly, if the feedback
mechanism detects little or no acne-causing bacteria, the control system
might decrease power . . . to reduce the intensity of light emitted during
treatment of that area to conserve energy and allow for a longer treatment
time” (id.).
FF24. The Examiner concludes that it would have been obvious to
one having ordinary skill in art
[T]o include a proximity sensor that will modulate the amount
of radiation applied to the tissue in response to the proximity of
the device to the tissue to ensure that the correct amount of
radiation is applied at the appropriate time to the tissue . . . to
prevent inadvertent application of radiation.

(Ans. 6.)
Analysis
Appellants argue that the Examiner “did not identify a teaching in
Auth or Malak of ‘reducing a radiation level in response to proximity to a
material’” (App. Br. 18). Appellants argue that the cited portion of Altshuler
“teaches that the radiation level is increased in response to proximity to a
material, not decreased” (id.). Appellants argue that Auth, Malak, and
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Altshuler all disclose “system[s] for affecting living tissue in situ” and
“modification of any of these three devices to include ‘switch configured to
modulate the radiation emitter by reducing a radiation level in response to
proximity to a material’. . . would render each of these references unfit for
its primary purpose of acting within or upon the body” (id. at 18-19).
The Examiner responds that Altshuler discloses “a feedback system
that can increase or decrease the radiation (light energy) emitted by the
system depending on the condition of the material (skin) of which it
contacts” (Ans. 12). The Examiner further responds that “[d]epending on
the condition of the skin that the [Altshuler] device contacts, the device will
alter its radiation output” (id.).
We agree with the Examiner that the cited references would have
made obvious claim 1 apparatus comprising “a switch configured to
modulate the radiation emitter by reducing a radiation level in response to
proximity to a material.” During prosecution before the Office, claims are
given their broadest reasonable interpretation consistent with the
Specification as it would be interpreted by one of ordinary skill in the art. In
re Am. Acad. Of Sci. Tech Ctr, 367 F.3d 1359, 1364 (Fed. Cir. 2004). It is
during prosecution that applicants have “the opportunity to amend the claims
to obtain more precise claim coverage” (id. at 1364).
The Specification does not define the term “proximity to a material,”
but provides non-limiting examples of proximity sensors such as a
capacitive sensor, an optical sensor, and/or a receiver responsive to a carrier
signal in the material (FF 3). The Specification also describes temperature
sensors, reflectivity sensors to detect reflectivity in the vicinity of the
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sectioning structure, and biological sensors to detect microorganisms in the
vicinity of the sectioning structure (FF 4). Thus, in view of that disclosure,
one of skill in the art would interpret the claim term “a switch configured to
modulate the radiation emitter by reducing a radiation level in response to
proximity to a material” to include a switch configured to reduce the
radiation level in response to proximity to a particular type of material.
Auth discloses sensors to measure reflected light to determine proximity to a
skin having low levels of bleeding such that the light intensity will be
reduced (FFs 11-13). Altshuler discloses sensors to measure proximity of
the device to tissues having high levels of bacteria and tissues having low
levels of bacteria, such that light intensity will be reduced in the instance of
low levels of bacteria (FFs 22 and 23). Because both Auth and Altshuler
disclose reducing radiation in response to sensors detecting proximity to a
particular type of material, we agree with the Examiner that the cited
references would have made obvious the apparatus of claim 1 with “a switch
configured to modulate the radiation emitter by reducing a radiation level in
response to proximity to a material.”
Thus, we affirm the rejection of claim 1 as being obvious in view of
Auth, Malak, and Altshuler. Claims 2, 10, 18-20, 35, and 37 have not been
argued separately and therefore fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii).
Appellants argue the rejection of claim 4 (App. Br. 19). Claim 4
depends from claim 1 and further requires that “the switch is configured to
modulate the radiation emitter in response to the sectioning structure coming
into contact with a material.” Appellants argue that although Altshuler
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discloses “contact with tissue, it does so in the context of turning on an
instrument, not reducing its radiation level as recited in claim 1 and
incorporated by reference into claim 4” (App. Br. 19).
That argument is not persuasive because, as discussed above, we
agree with the Examiner that the cited references would have made obvious
the reduction of radiation levels upon proximity to, or contact with,
particular types of tissue or material. Thus, we affirm the rejection of claim
4.
Appellants also argue the rejection of claim 5 (App. Br. 19). Claim 5
depends from claim 1 and further requires “a proximity sensor that
determines proximity of the sectioning structure to the material, wherein the
switch is configured to modulate the radiation emitter in response to the
proximity sensor.” Appellants argue that although Altshuler refers “to a
sensor that is activated by proximity to tissue, it does so in the context of
turning on an instrument, not reducing its radiation level as recited in claim
1 and incorporated by reference into claim 5” (App. Br. 19).
That argument is not persuasive because, as discussed above, we
agree with the Examiner that the cited references would have made obvious
sensors that determine proximity of the Auth sectioning device to particular
materials such that radiation levels will be reduced. Thus, we affirm the
rejection of claim 5.
Appellants also argue the rejection of claim 17 (App. Br. 20). Claim
17 depends from claim 1 and further requires that “modulating the radiation
emitter includes deactivating the radiation emitter.” Appellants argue that,
while Auth discloses that the emitter may be “turned off from time to time,
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the Examiner did not support a prima facie case showing that the cited
references teach deactivating the radiation emitter in response to proximity
to a material, as recited in claim 1 and incorporated by reference into claim
17” (App. Br. 20).
We agree with Appellants that the Examiner has not adequately
explained how the cited references would have made obvious an apparatus
comprising “a switch configured to modulate the radiation emitter by
reducing a radiation level in response to proximity to a material” such that
“modulating the radiation emitter includes deactivating the radiation
emitter.” The device of Auth is designed to form an incision in skin and
coagulate blood associated with the incision. The Examiner has not
explained why one of skill would have modified the Auth device to be
deactivated upon contact with a material. Thus, we reverse the rejection of
claim 17.
Appellants also argue the rejection of independent claim 36 (App. Br.
20). Independent claim 36, like claim 1, is directed to an apparatus
comprising, among other things, a first member including a section structure
and a radiation emitter. Claim 36 also requires that apparatus comprises “a
switch configured to modulate the radiation emitter by reducing a radiation
level in response to a signal condition indicative of proximity to a material.”8
Appellants argue that none of the cited references “teach or suggest reducing
a radiation level in response to proximity of a material” (App. Br. 20).

8 The full text of independent claim 36 can be found in the Claims Appendix
to the Appeal Brief (App. Br. 30-31).
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That argument is not persuasive because, as discussed above, we have
concluded that the cited references would have made obvious a switch
configured to reduce a radiation level in response to a signal condition
indicative of proximity to a material. That is, as discussed above, Auth
discloses that radiation may be reduced in response to detection of the
condition of not enough blood to absorb the radiation. Thus, we affirm the
rejection of claim 36.
Appellants also argue the rejection of independent claim 38 (App. Br.
20-21). Like claim 1, claim 38 is directed to an apparatus comprising,
among other things, a first member including a sectioning structure and a
radiation emitter. Claim 38 also requires that apparatus comprises “a sensor
configured to detect an environmental condition . . . and a switch configured
to modulate the radiation emitter in response to the environmental
condition.”9 Appellants argue that the “Examiner failed to allege any
teaching in any of the cited references of a sensor configured to detect an
environmental condition, let alone modulating radiation in response to this
environmental condition” (id. at 20-21).
That argument is not persuasive. The Specification does not define
the term “environmental condition” but, as discussed above, discloses
proximity sensors (e.g. a capacitive sensor, an optical sensor, and/or a
receiver responsive to a carrier signal in the material) and discloses
temperature sensor, a reflectivity sensor to detect reflectivity in the vicinity
of the sectioning structure, and a biological sensor configured to detect a

9 The full text of independent claim 38 can be found in the Claims Appendix
to the Appeal Brief (App. Br. 31).
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presence of microorganisms. Auth’s reflectivity sensor that detects the
presence or absence of blood at the site of the incision could reasonably be
interpreted as a sensor configured to detect an environmental condition.
Thus, we affirm the rejection of claim 38. Claims 39 and 41 have not been
argued separately and therefore fall with claim 38 (App. Br. 20; 37 C.F.R.
§ 41.37(c)(1)(vii)).
Conclusion of Law
A preponderance of the evidence supports the Examiner’s conclusion
that the combination of Auth, Malak, and Altshuler would have made
obvious the claim 1 apparatus comprising “a switch configured to modulate
the radiation emitter by reducing a radiation level in response to proximity to
a material.” Thus, we affirm the obviousness rejection over Auth, Malak,
and Altshuler as to claims 1, 2, 4, 5, 10, 18-20, 35-39, and 41 but reverse as
to claim 17.
II.
The Examiner has rejected claims 9 and 40 under 35 U.S.C. § 103(a)
as obvious over the combination of Auth, Malak, Altshuler, and Goldberger
(Rejection II) (Ans. 7-8).
Claim 9 depends from claim 1 and further requires that “the switch is
configured to modulate the radiation emitter in response to a temperature
sensor.” Appellants argue that Goldberger does not cure the deficiency of
the Auth, Malak, and Altshuler combination in rendering obvious the
apparatus of claim 1. That argument is not persuasive because, as discussed
above, we have concluded that the preponderance of the evidence supports
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the Examiner’s conclusion that claim 1 would have been obvious in view of
the combination of Auth, Malak, and Altshuler. Thus, we affirm the
rejection of claim 9 as being obvious in view of Auth, Malak, Altshuler, and
Goldberger.
Claim 40 depends from claim 1, indirectly, and further requires that
“the material is living tissue” and that “the sensor includes a temperature
sensor.” Appellants do not argue the limitations of claim 40, but mistakenly
argue that claim 40 depends from claim 38 and is therefore not obvious over
the cited references for the reasons discussed above with regard to claim 38.
See, e.g., Ans. 12-13 (discussing the dependency of claims 39-41, and the
similarity of claim 38 to claim 1). We thus affirm the rejection of claim 40
as obvious over the combination of the cited references because Appellants
have not presented any arguments directed to the limitations of claim 40.10
III.
The Examiner has rejected claims 11-13, 21, 22, 26-29, and 33 under
35 U.S.C. § 103(a) as obvious over the combination of Auth, Malak,
Altshuler, and Lemelson (Rejection III) (Ans. 8-9).
The Examiner relies on Auth, Malak, and Altshuler, as discussed
above, but finds that these references fail to disclose a biological sensor, a
motion sensor, or a force sensor (Ans. 8-9). The Examiner finds that

10 To the extent we consider Appellants’ argument that claim 40 is not
obvious over the cited references for the reasons asserted for claim 38, that
argument is also not persuasive because, as discussed above, we have
concluded that preponderance of the evidence supports the Examiner’s
conclusion that the apparatus of claim 38 would have been obvious over the
combination of Auth, Malak, and Altshuler.
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“Lemelson teaches a biological sensor” (id. at 8) and also teaches a force
sensor and a motion sensor (id. at 9). The Examiner concludes that it would
have been obvious to one of ordinary skill in the art to combine Lemelson’s
biological sensor with the device of Auth and Malak in order “to detect a
presence of microorganisms in the vicinity of the sectioning structure, since
Auth teaches an objective of preventing sepsis” (id. at 8-9). The Examiner
concludes that it would have been obvious to one of ordinary skill in the art
to combine Lemelson’s motion sensor or force sensor with the device of
Auth and Malak “since the device is used for surgery and the [force or
motion] sensor would have prevented injury” (id. at 9-10).
With regard to claim 11, which depends from claim 1 and further
requires a biological sensor, Appellants argue that Lemelson does not cure
the deficiency of the Auth, Malak, and Altshuler combination in rendering
obvious the claim 1 apparatus with a “switch configured to modulate the
radiation emitter by reducing a radiation level in response to proximity to a
material” (App. Br. 24).
That argument is not persuasive because, as discussed above, we have
concluded that the preponderance of the evidence supports the Examiner’s
conclusion that claim 1 would have been obvious in view of the combination
of Auth, Malak, and Altshuler. Thus, we affirm the rejection of claim 11 as
being obvious in view of Auth, Malak, Altshuler, and Lemelson.
With regard to claims 12 and 13, which depend from claim 1 and
further require a force sensor and a motion sensor, respectively, Appellants
argue that “the Examiner did not adequately support her contention that
Lemelson teaches a force or a motion sensor” (App. Br. 24). Appellants
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argue that the “cited passage [of Lemelson] makes reference to a feedback
signal controlled gear-motor 36, but does not describe how the feedback
signal is generated or any particular sensor type” (id.).
We agree with Appellants that the Examiner has not adequately
explained how the cited references would have made obvious the apparatus
of claim 12 having a force sensor or the apparatus of claim 13 having a
motion sensor, because the cited portion of Lemelson (i.e., column 4, lines
61-67) does not discuss either a motion sensor or a force sensor. Thus, we
reverse the rejection of claims 12 and 13 as being obvious in view of Auth,
Malak, Altshuler, and Lemelson.
Appellants also argue the rejection of independent claim 21, which is
directed to a “control system for a sectioning tool.” Claim 21 recites that the
system comprises
a sensor that senses a condition in the vicinity of the
sectioning tool indicative of proximity to a material, and
a sensor logic that generates a signal in response to the
sensor, wherein the generated signal is configured to reduce
sterilizing radiation produced at a sectioning surface of the
sectioning tool.

Appellants argue that, “[a]s discussed . . . [for] claims 1 and 36, the
Examiner did not establish a prima facie case that Auth, Malak, and
Altshuler together make obvious a signal to reduce radiation in response to
proximity of a material” (App. Br. 24-26). Appellants argue that “[t]his
deficiency is not remedied by Lemelson” (id.).
That argument is not persuasive because, as discussed above, we have
concluded that Auth, Malak, and Altshuler would have made obvious a
switch configured to reduce a radiation level in response to sensor sensing a
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condition in the vicinity of the sectioning tool, i.e., not enough blood to
absorb the radiation. Thus, we affirm the rejection of claim 21 as being
obvious in view Auth, Malak, Altshuler, and Lemelson. Claims 22, 26, and
27 have not been argued separately and therefore fall with claim 21.
37 C.F.R. § 41.37(c)(1)(vii).
Appellants also argue the rejection of claims 28 and 29 (App. Br. 26).
Claims 28 and 29 depend from independent claim 21 and further require,
respectively, that “the sensor comprises a force sensor” and that “the sensor
comprises a motion sensor.” Appellants argue that the “Examiner did not
adequately support her contention that Lemelson teaches a force or a motion
sensor” (App. Br. 26).
As discussed, we agree with Appellants that the Examiner has not
adequately explained how the cited references would have made obvious the
modification of Auth’s device to comprise a force sensor or a motion sensor,
and thus we reverse the rejection of claims 28 and 29.
Appellants also argue the rejection of claim 33. Claim 33 depends
from claim 21 indirectly, and further requires that “the generated signal is
configured to terminate the sterilizing radiation.” Appellants argue that,
“[w]hile the emitter of Auth may indeed be turned off from time to time, the
Examiner did not support a prima facie case showing that the cited
references teach deactivating the radiation emitter in response to proximity
to a material” (App. Br. 26).
We agree with Appellants that the Examiner has not adequately
explained how the cited references would have made obvious the claim 33
control system for a sectioning tool. As discussed above with regard to
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claim 17, the Auth device uses radiation to form an incision in skin and to
coagulate blood associated with the incision such that the reflectivity sensor
modulates the amount of radiation depending on the amount of blood. The
Examiner has not explained why one of skill would have modified the Auth
device to be deactivated upon a signal from reflectivity sensor because a
deactivated device would not serve the purpose of forming an incision.
Thus, we reverse the rejection of claim 33.
SUMMARY
We affirm the rejection claims 1, 2, 4, 5, 9-11, 18-22, 26, 27, and 35-
41 under 35 U.S.C. § 103(a). We reverse the rejection of claims 12, 13, 17,
28, 29, and 33 under 35 U.S.C. § 103(a).
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).

AFFIRMED-IN-PART

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