Ex Parte Seibel et al

Patent Trial and Appeal Board

Aug 22, 2016

12281251 (P.T.A.B. Aug. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/281,251
133178
BSTZ/UW
7590
FILING DATE
08/29/2008
08/24/2016
1279 Oakmead Parkway
Sunnyvale, CA 94085-4040
FIRST NAMED INVENTOR
Eric Seibel
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.
43647.02US2 9969
EXAMINER
SAUNDERS, MATTHEW P
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
08/24/2016 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):
FIP _Group@BSTZ.com
jessica_raucci@bstz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC SEIBEL, RICHARD JOHNSTON, and
CHARLES DAVID MEL VILLE
Appeal2014-007561
Application 12/281,251
Technology Center 3700
Before EDWARD A. BROWN, AMANDA F. WIEKER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Eric Seibel et al. ("Appellants") appeal under 35 U.S.C. § 134(a) from
the Examiner's final decision rejecting claims 12-22 and 36-39, which are
the pending claims. 1 Appeal Br. 3. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
1 Appellants submit the real parties in interest are the University of
Washington and VerAvanti Inc. Appeal Br. 3.
Appeal2014-007561
Application 12/281,251
THE CLAIMED SUBJECT MATTER
Claim 12, reproduced below, is illustrative of the claimed subject
matter.
12. Apparatus for imaging a site within a patient's body
and rendering therapy to a desired region of the site,
compnsmg:
(a) a multi-cladding optical fiber that includes a core
having a core diameter, an inner cladding having an inner
cladding diameter, and an outer cladding, all extending
generally between a proximal end and a distal end of the multi-
cladding optical fiber;
(b) an imaging light source that produces an imaging
light for use in illuminating the site within the patient's body to
produce an image of the site, the imaging light being directed
into the core of the multi-cladding optical fiber at the proximal
end and being conveyed to the distal end of the multi-cladding
optical fiber, for emission toward the site to be imaged;
( c) a therapy light source that produces therapy light
having a substantially greater optical power than the imaging
light, the therapy light being directed into the inner cladding at
the proximal end and being conveyed to the distal end of the
multi-cladding optical fiber, to render therapy to the desired
region of the site, the inner cladding diameter substantially
greater than the core diameter to convey the therapy light the
having substantially greater optical power than the imaging
light and wherein the inner cladding having the diameter
substantially larger than the core diameter is capable of
transmitting substantially greater optical power of the therapy
light than the core is capable of transmitting without material
damage;
(d) an actuator disposed adjacent to the distal end of the
multi-cladding optical fiber, the actuator being selectively
energized so as to move the distal end of the core and the inner
cladding in a desired path, both while imaging the site using the
imaging light to illuminate and while rendering therapy to the
desired region of the site with the therapy light emitted from the
inner cladding and directed toward the desired region; and
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Appeal2014-007561
Application 12/281,251
( e) at least one sensor for receiving light from the site
that is being imaged, the at least one sensor producing a signal
useful for producing an image of the site in response to the light
received therefrom as a result of the imaging light illuminating
the site.
REJECTIONS
1) Claims 12-15 and 36-38 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Seibel (US 2001/0055462 Al, pub. Dec. 27,
2001) and Bouma (US 2006/0013544 Al, pub. Jan. 19, 2006).
2) Claims 16-19 and 39 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Seibel, Bouma, and Vienne (US 2005/0117860
Al, pub. June 2, 2005).
3) Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Seibel, Bouma, and Mimura (JP 2000-275451 A, pub. Oct. 6,
2000).
4) Claim 21 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Seibel, Bouma, Mimura, and Zhao (US 6,501,875 B2, iss. Dec. 31,
2002).
5) Claim 22 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Seibel, Bouma, and Lang (US 6,477,295 Bl, iss. Nov. 5, 2002).
DISCUSSION
Rejection 1: Claims 12-15 and 36--38---0bviousness-Seibel and Bouma
The Examiner finds that Seibel discloses all the limitations of claim
12 except that Seibel discloses a single optical fiber to transmit both imaging
light and therapy light and not "a multi-cladded optical fiber with the
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Appeal2014-007561
Application 12/281,251
therapy light being transmitted through an inner cladding." Final Act. 2-3.
The Examiner finds that Bouma discloses "an imaging system having [a]
multi-cladded optical fiber." Id. at 3. The Examiner concludes that because
the optical fibers disclosed in Bouma and Seibel "were art recognized
equivalents," "[one] of ordinary skill in the art would have found it obvious
to substitute the multi-cladding optical fiber from Bouma for the optical
fiber from Seibel." Id. at 3--4.
Appellants contend that "merely replacing the single mode optical
fiber of Seibel with the optical fiber of Bouma would not provide the
invention claimed." Appeal Br. 8. Appellants argue that Bouma is directed
to "transmitting light through the core and collecting scattered light" with
the inner cladding and does not describe or suggest that the inner "cladding
of an optical fiber can be used to transmit therapeutic light energy." Id. at 7.
Appellants argue that neither Seibel nor Bouma discloses directing the
imaging light "into the core of the multi-cladding optical fiber" and the
therapy light "into the inner cladding." Id. at 8. Appellants also argue that
neither Seibel nor Bouma discloses "the inner cladding has a substantially
greater diameter than the core diameter in order to convey the therapeutic
light having the substantially greater optical power than the imaging light."
Id. at 7. For the following reasons, we do not sustain the rejection.
Claim 12 recites a structure wherein the imaging light is directed into
the core of the multi-cladding optical fiber, the therapy light is directed to
the inner cladding, and the inner cladding has a substantially greater
diameter than the core in order to convey the therapy light which has a
substantially greater optical power than the imaging light.
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Application 12/281,251
As noted above, the Examiner finds that Seibel discloses using a
single fiber core to transmit both an imaging light and a therapy light. Ans.
3. The Examiner also finds that Bouma discloses a multi-cladding optical
fiber where imaging light can be directed through the core or the inner
cladding. Final Act. 3. Bouma also discloses an embodiment where the
diameter of inner cladding 70 is substantially greater than the diameter of
core 62, but as noted by Appellants, Bouma does not disclose transmitting
both an imaging light and therapy light. See Bouma, Fig. 4A. The
Examiner does not identify any teaching or suggestion in Bouma or Seibel,
or provide any other evidence, of why the therapy light produced by a
therapy light source should be directed to the inner cladding as opposed to
the core, and the imaging light produced by an imaging light source should
be directed to the core as opposed to an inner cladding, of a multi-cladding
optical fiber. Nor does the Examiner identify any teaching or suggestion
that the inner cladding should be of a substantially greater diameter than the
core in order to "convey the therapy light ... having substantially greater
optical power than the imaging light." Claim 12 recites that "the inner
cladding having the diameter substantially larger than the core diameter is
capable of transmitting substantially greater optical power of the therapy
light than the core is capable of transmitting without material damage."
Appeal Br. 10, Claims App. (emphasis added). Even if Bouma's multi-
cladding optical fiber can be considered equivalent to Seibel' s single optical
fiber, the record is lacking in facts to support the Examiner's reasoning that
it would have been obvious to one of ordinary skill in the art to direct the
therapy light from a therapy light source to the inner cladding, and for the
inner cladding to have a substantially greater diameter than the core and
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Appeal2014-007561
Application 12/281,251
being capable of transmitting the therapy light without material damage.
Because the rejection is not supported by facts, the conclusion of
obviousness cannot stand. See In re Warner, 379 F.2d 1011, 1017 (CCPA
1967) (holding that "[t]he legal conclusion of obviousness must be
supported by facts. Where the legal conclusion is not supported by facts it
cannot stand"). We do not sustain the rejection of claim 12, or the rejection
of claims 13-15 and 36-38, which are dependent on claim 12.
Rejections 2-5
The Examiner rejects claims 16-22 and 39, which are all dependent
on claim 12, based on various combinations of Seibel and Bouma with
Vienne, Mimura, Zhao, and Lang. Final Act. 4--8. The Examiner does not
rely on Vienne, Mimura, Zhao or Lang to cure the deficiencies in the
combination of Seibel and Bouma noted above in connection with claim 12.
Consequently, we do not sustain the rejections of claims 16-22 and 39 for
the same reasons as stated above.
DECISION
The Examiner's decision rejecting claims 12-22 and 36-39 is
reversed.
REVERSED
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