Ex Parte Fairneny

Patent Trial and Appeal Board

Oct 31, 2016

13113778 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/113,778 05/23/2011
109610 7590 11/02/2016
Bookoff McAndrews, PLLC
2401 Pennsylvania Avenue, NW, Suite 450
Washington, DC 20037
FIRST NAMED INVENTOR
TyFairneny
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
09423.0118-00000 1260
EXAMINER
LAM,HUNGQ
ART UNIT PAPER NUMBER
2883
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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 TY F AIRNENY1
Appeal2015-001310
Application 13/113,778
Technology Center 2800
Before JAMES C. HOUSEL, WESLEY B. DERRICK, and
JULIA HEANEY, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejection under 35 U.S.C. § 103 of claims 1-3, 8-11, 13, 14, 16-19, and 21
over Griffin2 in view of Cecchetti3 and claims 4-7, 15, and 20 over Griffin in
view of Cecchetti and Vayser. 4' 5 We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 The real party in interest is Boston Scientific Scimed, Inc. Appeal Br. 2.
2 US 5,562,657, issued October 8, 1996.
3 Cecchetti et al, US 5,509,917, issued April 23, 1996.
4 Vayser et al., US 2009/0136177 Al, published May 28, 2009.
5 The ground of rejection includes Cecchetti. Ans. 3.
Appeal2015-001310
Application 13/113,778
CLAIMED SUBJECT MATTER
The subject matter on appeal is related to an apparatus including an
optical fiber disposed within a tube that includes a diffractive portion
wherein the distal surface of the optical fiber is configured to emit a beam of
energy at an angle relative to the longitudinal axis of the optical fiber such
that the beam of energy emitted from the optical fiber passes through the
diffractive portion of the tube. Spec. Abstract.
Independent claims 1 and 18 are directed to an apparatus and
assembly, respectively. Independent claim 14 is directed to a method of
using the apparatus.
Independent claim 1 is representative.
1. An apparatus comprising:
an optical fiber having a distal end with a distal surface
configured to emit a beam of energy at an angle relative to a
longitudinal axis of the optical fiber; and
a tube including a channel and a diffractive portion, the
distal end of the optical fiber being disposed in the channel of
the tube such that the beam of energy emitted from the optical
fiber passes directly into the tube and through the diffractive
portion,
wherein the beam of energy emitted from the diffractive
portion has a greater beam angle than the beam of energy
directed to the diffractive portion.
Appeal Br. (Claims Appendix) 18.
Claim 21, depending from claim 1, recites that "the distal surface of
the optical fiber is configured to emit a beam at a zero beam angle."
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Application 13/113,778
DISCUSSION 6
Upon consideration of the evidence on this record and each of
Appellant's contentions, we find that a preponderance of the evidence
supports the Examiner's determination that one of ordinary skill in the art,
armed with the knowledge provided in the applied prior art, would have
been led to the subject matter recited in the claims.
To prevail in an appeal to this Board, Appellant must adequately
explain or identify reversible error in the Examiner's rejection. See
37 C.F.R. § 41.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356,
1365-66 (Fed. Cir. 2011) (explaining that even ifthe Examiner had failed to
make a prima facie case, it has long been the Board's practice to require an
Appellant to identify the alleged error in the examiner's rejection); In re
Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010) ("[T]he burden of showing
that the error is harmful normally falls upon the party attacking the agency's
determination." (quoting Shinseki v. Sanders, 556 U.S. 396, 409 (2009))).
The Examiner relies primarily on Griffin for its disclosure of side fire
laser catheter elements that include a fiber optic element 12 disposed in a
sleeve 14 and the optical fiber and sleeve are disposed within a tube/cap 30
where the tip of the fiber optic element 12 has a surface (reflective face 18)
configured to emit a beam of energy at an angle from longitudinal and cap
30 can include a diffractive portion (lens 44). Final Act. 3-4 (citing Griffin
Figs. 1-6). The Examiner maintains that the inclusion of sleeve 14 in
6 We refer to the Final Office Action mailed October 17, 2013, the Appeal
Brief filed March 25, 2014, the Examiner's Answer mailed August 18, 2014,
and the Reply Brief filed October 17, 2014.
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Application 13/113,778
Griffin provides no basis to distinguish the claims because the claims are
open to including the sleeve as part of the recited tube. Ans. 2-3.
The Examiner relies on Cecchetti for its disclosure that the diffractive
portion of such side firing laser catheters can be lenses that provide beam
angles greater than the beam angle directed to the lens. Final Act. 4-5
(citing Cecchetti Fig. 6A-B). 7
The Examiner de facto concludes it would have been obvious to one
of ordinary skill in the art at the time of the invention to modify Griffin's
side firing laser catheter to provide whatever lens was required to provide
the desired beam angle, thereby optimizing the apparatus' performance.
Final Act. 5.
All claims
Appellant argues that none of the cited references teaches or suggests
the specific arrangement of the optical fiber, tube, and diffractive portion,
and the beam angle recited in claims 1, 14, and 18. Citing Griffin's Figures,
Appellant points out that lens 44 of Griffin is a convex lens so that emitted
laser energy has a "converging spot cross-section." Appeal Br. 12.
7 We find Cecchetti's disclosure to be more comprehensive, however, as it
teaches "using highly refractive optical materials ... as the cap, and shaping
a portion thereof into a lens in the main exit direction ... [where] [ t ]he glass
cap can be fused with the fiber at the point of the main beam exit thus
effectively reducing Fresnel losses" (col. 1, 11. 56-63) and that lenses can be
formed to provide converging beams (Figs. 4 and 5), collimated beams (Fig.
3, col. 3, 11. 30-39), and diverging beams (Fig. 6). We further find
Cecchetti' s device has the same manner of operation as to reflection
occurring at the interface of the obliquely cut tip and air due to the refractive
index differences between the fiber optic core and that of air. Cecchetti col.
2, 11. 43-51; col. 3, 11. 1-3.
4
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Application 13/113,778
Appellant further points to the angled reflective face 56 that is separated
from the reflective face 18 by gap 54 and contends that light may pass
through air space 54 and reflect off the angled face 56. Appeal Br. 12-13.
Appellant still further points to sleeve 14 (Fig. 2) and sleeve 120 (Fig. 5) and
explains that laser energy emitted from optical fiber 12/112 (Fig. 2 I Fig. 5)
passes through the sleeve when it reflects off the optical fiber's reflective
face 18/122 (Fig. 2 I Fig. 5). Appeal Br. 13-14. Appellant maintains that
the sleeve is not a portion of the fiber or the tube. Reply Br. 2-3. Appellant
argues it is, accordingly, "clear that Griffin teaches that laser energy emitted
from an optical fiber does not pass directly into a tube and through a
diffractive portion that is configured to increase a beam angle of the beam of
energy" and that the configuration in Griffin "is structurally different from
the claimed configuration" because in Griffin the "laser energy emitted from
the optical fiber 12 travels at least through the sleeve 14 an [sic] gap 54 prior
to exiting cap 30." Appeal Br. 13-14.
Appellant further contends that neither Cecchetti nor Vayser remedy
the alleged deficiencies of Griffin because there is an air gap between the
optical fiber and the lens in Cecchetti (citing col. 4, 11. 1-6 and 18-22, and
Figs. 6A, 6B) and the illumination fiber and end cap in Vayser (citing
Fig. 1). Appeal Br. 14-15.
On this record, we are not persuaded the Examiner erred reversibly.
As explained by the Examiner, the claims do not preclude the Examiner's
interpretation in which Griffin's disclosed sleeve is considered a
portion/section of the cap/tube (Ans. 2), and Appellant fails to direct our
attention to any portion of the Specification contrary to the Examiner's
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Application 13/113,778
position (see generally Appeal Br.; Reply Br.). 8 Further, as also explained
by the Examiner, the claims do not require that all of the beam be reflected
at the configured distal end of the fiber and Griffin's disclosed device
includes an angled, polished surface-reflective face 18-that functions in
the same manner as Appellant's angled surface at the end of the optical
fiber:
Reflection of the light necessarily occurs at the interface
between the end of the glass fiber and the air gap according to
physical principles ... [and] Griffin teaches that the majority of
the laser beam emitted from the fiber passed directly into the
tube/cap 30 at the sleeve portion 14 of the cap 30, where the
sleeve portion 14 is considered as part of the tube as explained
above.
Ans. 2-3; see also Griffin col. 1, 11. 18-25; Spec. ,-i,-i 25-26, Fig. 3. We also
find Appellant's further arguments that "Griffin clearly requires distinct and
separate fiber (12), sleeve (14), and cap (30) components" (Reply Br. 2,
citing Griffin col. 3, 11. 11-17) unpersuasive of any harmful error where
Griffin explicitly teaches that the fiber, sleeve, and cap are fused together to
form "a single, unitary element to the laser beam." (see, e.g., Griffin col. 4,
11. 15-19' 38--49).9
8 We further note that the Specification sets forth that "[t]he optical fiber 30
may include, for example, a core, one or more cladding layers about the
core, a buffer layer about the cladding, a jacket, etc." Spec. ,-i 23. In the
event of further prosecution, both Appellant and Examiner should consider
whether Griffin's disclosure of a manufacturing process for his device in
which an optical fiber 12 and sleeve 14 fused together prior to cutting and
polishing (see, e.g., col. 3, 40-64; Figs. 3A, 3B) does not constitute
disclosure of an optical fiber according to the Specification.
9 We further note that the Specification sets forth a conventional side fire
laser assembly 100 including capillary 150 fused to optical fiber 130 and
acknowledges it to be within the prior art (Spec. ,-i 4, Fig. 1 ), where including
6
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As to Appellant's nascent argument that lens 44 of Gritlin is convex
and so results in emitted laser energy having a "converging spot cross-
section" (Appeal Br. 12), it is without persuasive merit because it fails to
address the basis of the rejection in which Cecchetti was relied on for
teaching lenses which provided collimated or diverging beams. In re Keller,
642 F.2d 413, 426 (CCPA 1981) (It is axiomatic that "one cannot show non-
obviousness by attacking references individually where ... the rejections are
based on combinations of references."). 10
As to Appellant's contention that Cecchetti's disclosure fails to teach
any device where the configuration is such that "the beam of energy emitted
from the optical fiber passes directly into the tube and through the diffractive
portion" (claim 1 ), we find it wholly unfounded. See, e.g., Cecchetti col. 1,
11. 56-63 (expressly teaching "using highly refractive optical materials ... as
the cap, and shaping a portion thereof into a lens in the main exit direction
... [where] [t]he glass cap can be fused with the fiber at the point of the
main beam exit thus effectively reducing Fresnel losses.").
a diffractive surface 58 appears to be the primary difference (compare Fig. 1
to Fig. 3). In the event of further prosecution, both Appellant and Examiner
should consider whether including or omitting a sleeve, as in Griffin, is of
import where direct beam output at a fusing of the optical fiber and capillary
is expressly acknowledged as being within the prior art.
10 We further note that Griffin teaches "[i]t will be understood that any
desirable lens configuration may be formed on the flat to provide the desired
output beam" (Griffin col. 6, 11. 24-26) and Appellant directs us to no
evidence that lens configurations meeting the claim limitations could not be
formed on Griffin's flat (see generally Appeal Br.; Reply Br.).
7
Appeal2015-001310
Application 13/113,778
Claim 21
In the Appeal Brief, Appellant argues that the Examiner erred in
finding Cecchetti' s Figures 3A and 3B disclosed the limitation of claim 21
that the "distal surface of the optical fiber is configured to emit a beam at a
zero beam angle" because "Cecchetti describes an angle alpha of 40 degrees,
'[t]he fiber tip 43 was exposed and cut with a prismatic angle of alpha=40
degrees to obtain the total side deflection of the radiation 45." Appeal Br.
16 (quoting Cecchetti col. 3, 11. 18-20).
On this record, we do not find Appellant's argument persuasive of
reversible error where, as explained by the Examiner, the alpha angle of 40
degrees refers not to the beam angle, but rather to the angle of the fiber end
surface. Ans. 4.
In the Reply Brief, Appellant further argues that "the cap lens 51 of
Cecchetti is a converging lens that does not output at a non-zero angle" and
for this reason "Cecchetti fails to recite the features of claim 21." Reply Br.
3 (citing Figs. 3A, 3B).
We find this argument to be waived because it could have been raised
in the Appeal Brief and a showing of good cause explaining why the
argument could not have been presented in the Appeal Brief has not been
made. 37 C.F.R. § 41.4l(b)(2).
Furthermore, on this record, we discern no harmful error where
Appellant fails to direct us to any meaningful structural difference between
the polished oblique end of Appellant's fiber (Spec. ,-i,-i 25-26, Fig. 3) and
that of the acknowledged prior art (Spec. Fig. 1) or that cited by the
8
Appeal2015-001310
Application 13/113,778
Examiner in the rejection as discussed above. 11 Jn re Kubin, 561F.3d1351,
1357 (Fed. Cir. 2009) ("Even if no prior art of record explicitly discusses the
[limitation], [applicants'] application itself instructs that [the limitation] is
not an additional requirement imposed by the claims on the [claimed
invention], but rather a property necessarily present in [the claimed
invention].").
Claims 4-7, 15, and 20
As to the claims rejected over Griffin, Cecchetti, and Vayser,
Appellant only argues separately that the rejection did not include Cecchetti
and is therefore deficient as Cecchetti was relied on in the rejection of the
independent claims from which these claims depend. Appeal Br. 17.
The Examiner maintains that omission of Cecchetti in the rejection
statement headline of claims 4-7, 15, and 20 (Final Act. 6) was an
inadvertent typographical error (Ans. 3). We determine this to be harmless
error, particularly where the Examiner, in indicating that it was an
inadvertent omission, has explained that the rejection is grounded on the
further combination of Vayser with the prior combination of Griffin and
Cecchetti. Critically, Appellant has had a full opportunity to respond to the
rejection grounded on Griffin in view of Cecchetti and Vayser, either by
petition as being an improper new ground, or by addressing the merits of the
11 To the extent Appellant relies on the distal surface of the optical fiber
being configured to emit a beam at a zero beam angle prior to the beam
reaching the diffractive portion as distinguishing the claimed apparatus, we
suggest that the question of whether the claim is enabled under 35 U.S.C.
§ 112, first paragraph, be considered in the event of further prosecution.
9
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Application 13/113,778
rejection, which Appellant has done in arguing against the rejection of all the
claims, discussed above.
For these reasons, on this record, we are not persuaded that the
Examiner erred in concluding that one of ordinary skill in the art at the time
of the invention, armed with the knowledge of the cited prior art, would have
been led to the claimed subject matter.
Accordingly, we sustain the Examiner's obviousness rejections.
CONCLUSION
We affirm the Examiner's obviousness rejections of claims 1-11 and
13-21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l )(iv).
AFFIR1\1ED
10