Ex Parte Pryor et al

Patent Trial and Appeal Board

Mar 20, 2017

12133789 (P.T.A.B. Mar. 20, 2017)

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.
12/133,789 06/05/2008 BRIAN PRYOR BW-14 1338
53048 7590 03/21/2017
BWT PROPERTY, INC.
19 SHEA WAY
SUITE 301
NEWARK, DE 19713
EXAMINER
JACKSON, GARY
ART UNIT PAPER NUMBER
3769
MAIL DATE DELIVERY MODE
03/21/2017 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 BRIAN PRYOR and SEAN XIAOLU WANG
____________________

Appeal 2015-003056
Application 12/133,789
Technology Center 3700
____________________

Before BRANDON J. WARNER, MICHAEL L. WOODS, and
LEE L. STEPINA, Administrative Patent Judges.

STEPINA, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1–12. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

Appeal 2015-003056
Application 12/133,789

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CLAIMED SUBJECT MATTER
The claims are directed to a laser apparatus with integrated or
combined footswitch control. Spec. 1. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A laser apparatus that can be placed on the ground of an
operation site, the laser apparatus comprising:
a housing;
a laser module contained in the housing for producing a
laser beam;
a footswitch module contained in the housing, the
footswitch module being physically integrated or combined with
the laser module for controlling a status of the laser module; and
an optical waveguide for delivering the laser beam.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sklar
Abe
Cao
Horvath
US 5,098,426
US 6,537,269 B1
US 2006/0064080 A1
US 2006/0219049 A1
Mar. 24, 1992
Mar. 25, 2003
Mar. 23, 2006
Oct. 5, 2006

REJECTIONS
(I) Claims 1–4 and 7–10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Horvath and Abe.1
(II) Claims 5 and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Horvath, Abe, and Cao.

1 Although the heading for this rejection lists only claims 1–4 and 8–10, the
discussion below the heading makes clear that the rejection also addresses
claim 7. See Final Act. 4–6.
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Application 12/133,789

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(III) Claims 6 and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Horvath, Abe, and Sklar.

OPINION
Rejection (I)
Appellants argue for the patentability of claims 1–4 and 7–10 as a
group. See Appeal Br. 4–8. In accordance with 37 C.F.R. § 41.37(c)(1)(iv),
we select claim 1 as the representative claim.
The Examiner finds that Horvath discloses most of the features recited
in claim 1, but does not disclose an optical wave guide, and the Examiner
relies on Abe for teaching this feature. Final Act. 4–5. With respect to the
physical integration or combination of the footswitch and laser module as
required by claim 1, the Examiner finds that Horvath discloses this feature
and, if not, determines that it would have been obvious to provide this
feature as “merely a matter of obvious engineering choice.” Final Act. 4–5
(citing Horvath ¶ 37; In re Larson, 340 F.2d 965, 968 (CCPA 1965).
Appellants argue that neither Horvath nor Abe discloses or suggests a
laser module and footswitch in the same housing. See Appeal Br. 4–7.
Appellants further argue:
By integrating the footswitch module and the laser module
into the same housing, the present invention avoids the problem
of confusion and mishandling when multiple laser units and
footswitches exist in the same office. None of Horvath and Abe
recognizes this problem since the footswitch module and the
laser module of Horvath and Abe are still physically separated
from each other. The fact that the problem solved by the present
invention was never before even recognized by the prior art cited
by the Examiner or known to the Applicants speaks to the non-
obviousness of the present invention.
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Application 12/133,789

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Appeal Br. 7. Further, without providing any objective evidence, Appellants
assert the recited arrangement satisfies a long-felt need. Id.
In response, the Examiner states “Appellant[s] ignore[] that the claim
recites that the footswitch module and laser source are ‘physically
integrated or combined.’ In other words, the prior art of record would
also render claim 1 unpatentable by teaching or suggesting that the
footswitch module and laser source are combined.” Ans. 13–14.
In reply, Appellants state, “none of the citations of the Examiner teach
or suggest a laser device having a housing in which a laser module and a
foot switch are contained in the housing or being formed therein.” Reply Br.
4. Appellants argue that “the present invention avoids the problem of
confusion and mishandling when multiple laser units and footswitches exist
in the same office” and neither Horvath nor Abe recognizes “this problem
since the footswitch module and the laser module of Horvath and Abe are
still physically separated from each other.” Id.
We agree with the Examiner that the prior art suggests that the
footswitch module and laser source may be combined. See Ans. 13–14.
Specifically, Horvath states, “Although footswitch 10 is illustrated in this
embodiment as establishing a wireless communication pathway between the
footswitch 10 and surgical laser 42, footswitch 10 may also physically
couple to the control circuits associated with initializing and firing laser
surgical 42.” Horvath ¶ 37 (italics added). Horvath explains the problem
addressed by its footswitch as follows:
As these footswitches become more complex, the need to
establish secure reliable communications between the footswitch
and the surgical console has resulted in a number of wired
pathways that connect the footswitch and surgical console. As
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the footswitches are moved about the operating room, these
tethers, wires and cables can become tangled with other
equipment. Accidentally disconnecting these cables can result in
improper control inputs that have the potential to injure a patient.
Therefore a need exists for a reliable footswitch operable to
communicate with the surgical system while avoiding the
potential hazardous or restrictive environment created by
entangled cables.
Horvath ¶ 6. Thus, Horvath seeks to eliminate the problem caused by cables
connected between a footswitch and a surgical system, but Horvath also
indicates that footswitch 10 may also be physically coupled to the control
circuits associated with firing the laser. As Horvath intends to reduce the
cabling between its footswitch and laser control circuits, we understand the
physical coupling between the footswitch and laser control circuits discussed
by Horvath to be via some method other than by cables. In other words, we
understand Horvath implicitly to suggest physically combining the
footswitch and the laser control circuits.
Appellants’ assertion of long-felt need is without merit inasmuch as
Appellants provide no objective evidence of such a long-felt need and
instead merely argue that Horvath and Abe fail to recognize the same
problem solved by the recited arrangement. There is no requirement that the
references solve the same problem as the claimed invention. Moreover, one
problem discussed in Appellants’ Specification is recognized explicitly by
Horvath. See Spec. 1 (stating, “it naturally follows that the electrical wire
that is used to connect the medical laser with its foot pedal may cause a
safety issue as the medical personnel may trip over the wire.”); see also
Horvath ¶ 6.
As discussed by Horvath (¶ 6), there was a need in the art to reduce
the problem of excessive cabling. In an explicitly disclosed embodiment,
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Application 12/133,789

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Horvath solved the problem by using a wireless connection between its
footswitch and the laser control circuits. See, e.g., Horvath ¶¶ 7–8. The
connection between the footswitch and laser control circuits could be made
in only a finite number of ways, e.g., via wire (cable), wirelessly, or by
combining the footswitch and laser control circuits. We find no reason to
believe a person of ordinary skill in the art would have had any difficulty in
physically combining the footswitch of Horvath with the laser control
circuits, or that doing so would yield anything other a predictable result.
Furthermore, Appellants do not assert that the result of combining the
footswitch and laser control circuits would have been unpredictable or that
doing so would have been beyond the level of ordinary skill in the art. We
have considered all of Appellants’ arguments, but we find the Examiner to
have the better position. Thus, we affirm the Examiner’s rejection of claims
1–4 and 7–10 as unpatentable over Horvath and Abe.
Rejections (II) and (III)
Appellants rely on the arguments discussed above for the patentability
of claims 5, 6, 11, and 12. See Appeal Br. 8–9. Accordingly, for the same
reasons discussed above regarding Rejection (I), we likewise affirm
Rejections (II) and (III).

DECISION
The Examiner’s decision to reject claims 1–12 is affirmed.
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