Ex parte SHEN et al.

Board of Patent Appeals and Interferences

Oct 16, 1998

08312780 (B.P.A.I. Oct. 16, 1998)

Application for patent filed September 27, 1994. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HONG Y. SHEN, RUI R. ZENG,
YU P. ZHOU, GUI F. YU, CHENG H. HUANG,
ZHENG D. ZENG, WEN X. LIN and RUI F. WU
____________
Appeal No. 97-3136
Application No. 08/312,7801
____________
ON BRIEF
____________
Before ABRAMS, NASE, and CRAWFORD, Administrative Patent
Judges.
NASE, Administrative Patent Judge.
Appeal No. 97-3136
Application No. 08/312,780
Claim 1 was amended subsequent to the final rejection.2
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 4 and 6 through 14, which are
all of the claims pending in this application.2
We REVERSE.
Appeal No. 97-3136 Page 3
Application No. 08/312,780
BACKGROUND
The appellants' invention relates to a laser medical
device. An understanding of the invention can be derived from
a reading of exemplary claim 1, which appears in the appendix
to the appellants' brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Ammann 4,165,469 Aug. 21, 1979
Berger et al. (Berger) 5,181,214 Jan. 19, 1993
Buys et al. (Buys) 5,336,217 Aug. 9, 1994
Claims 1 through 4 and 6 through 14 stand rejected under
35 U.S.C. § 103 as being unpatentable over Berger in view of
Ammann and Buys.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejection, we make reference to the final rejection (Paper No.
8, mailed April 4, 1996) and the examiner's answer (Paper No.
16, mailed February 28, 1997) for the examiner's complete
Appeal No. 97-3136 Page 4
Application No. 08/312,780
reasoning in support of the rejection, and to the appellants'
brief (Paper No. 15, filed November 22, 1996) and reply brief
(Paper No. 18, filed April 28, 1997) for the appellants'
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. Upon evaluation of all the evidence before us, it
is our conclusion that the evidence adduced by the examiner is
insufficient to establish a prima facie case of obviousness
with respect to the claims under appeal. Accordingly, we will
not sustain the examiner's rejection of claims 1 through 4 and
6 through 14 under 35 U.S.C. § 103. Our reasoning for this
determination follows.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
Appeal No. 97-3136 Page 5
Application No. 08/312,780
USPQ2d 1955, 1956 (Fed. Cir. 1993). The conclusion that the
claimed subject matter is prima facie obvious must be
supported by evidence, as shown by some objective teaching in
the prior art or by knowledge generally available to one of
ordinary skill in the art that would have led that individual
to combine the relevant teachings of the references to arrive
at the claimed invention. See In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections based
on § 103 must rest on a factual basis with these facts being
interpreted without hindsight reconstruction of the invention
from the prior art. The examiner may not, because of doubt
that the invention is patentable, resort to speculation,
unfounded assumption or hindsight reconstruction to supply
deficiencies in the factual basis for the rejection. See In
re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968).
With this as background, we analyze the claimed subject
matter and the prior art applied by the examiner in the
rejection of the claims on appeal.
Appeal No. 97-3136 Page 6
Application No. 08/312,780
See independent claims 1, 12, 13 and 14.3
The claims on appeal recite a laser medical device3
comprising, inter alia, (1) a Nd:YAlO laser crystal, (2) a3
pumping system for illuminating the laser crystal with pumping
light and achieving population inversion of Nd ion in the3+
laser crystal, and (3) a resonant cavity for resonating light
emitted from the Nd ion to produce a beam of output laser3+
light having a predetermined wavelength at the preset output
power value. The claims on appeal further recite that the
pumping system includes (1) a pumping light source for
irradiating the pumping light on the laser crystal, (2)
presetting means for setting in advance a value of output
power of laser light adaptable to different medical treatment
requirements, and (3) a power supply for providing the pumping
light source with a suitable input power based on the output
power value set by the presetting means.
Appeal No. 97-3136 Page 7
Application No. 08/312,780
Berger discloses a temperature stable solid-state laser
package. As shown in Figure 1, the laser package includes (1)
a laser crystal (i.e., solid-state laser active material 25,
typically in the form of a cylindrical rod), (2) a pumping
system (i.e., laser diode 31), and (3) a resonant cavity
(i.e., groove 21). Berger does not teach a Nd:YAlO laser3
crystal or the pumping system including a presetting means for
setting in advance a value of output power of laser light and
a power supply for providing a pumping light source with a
suitable input power based on the output power value set by
the presetting means.
Ammann discloses a laser apparatus for producing a
coherent light output at visible portions of the spectrum. As
shown in Figure 1, the laser apparatus 10 includes a lasing
medium such as Nd:YAlO in a cavity defined by laser mirrors3
12 and 13. Medium 11 is continuously pumped by a light source
(not shown) which may consist of krypton-arc lamps. Ammann
does not teach a pumping system having a presetting means for
Appeal No. 97-3136 Page 8
Application No. 08/312,780
setting in advance a value of output power of laser light and
a power supply for providing a pumping light source with a
suitable input power based on the output power value set by
the presetting means.
Buys discloses an apparatus for supplying laser radiation
for the treatment of skin angiomas. As shown in Figure 14,
the apparatus includes a laser source 51 for supplying laser
radiation through flexible element 52 to the hand-piece 1.
Buys does not teach a Nd:YAlO laser crystal or a pumping3
system which includes (1) a pumping light source for
irradiating the pumping light on the laser crystal, (2)
presetting means for setting in advance a value of output
power of laser light adaptable to different medical treatment
requirements, and (3) a power supply for providing the pumping
light source with a suitable input power based on the output
power value set by the presetting means.
Appeal No. 97-3136 Page 9
Application No. 08/312,780
The appellants argue (brief, pp. 17-23) that the claimed
pumping system including the presetting means is not disclosed
or suggested by the applied prior art. We agree.
Specifically, the examiner relied upon the teachings of Buys
(at columns 17 and 18) as suggesting the claimed pumping
system. We do not agree. The automatic control unit
disclosed by Buys is for measuring the power of the laser
radiation emitted in order to control the shutter means 38 and
the scanning means. Buys does not even disclose a pumping
system for illuminating a laser crystal with pumping light.
Thus, Buys automatic control unit does not include and would
not have suggested (1) a pumping light source for irradiating
the pumping light on the laser crystal, (2) a presetting means
for setting in advance a value of output power of laser light
adaptable to different medical treatment requirements, and (3)
a power supply for providing the pumping light source with a
suitable input power based on the output power value set by
the presetting means.
Appeal No. 97-3136 Page 10
Application No. 08/312,780
Additionally, we note that the examiner in the rejection
(final rejection, pp. 2-3) never treated the claimed
limitation that the laser device includes "a Nd:YAlO laser3
crystal." In that regard, Berger does not teach or suggest
the use of a Nd:YAlO laser crystal. Thus, the burden was on3
the examiner to set forth specific reasons why it would have
been obvious to one of ordinary skill in the art at the time
the invention was made to modify Berger's laser package to
utilize a Nd:YAlO laser crystal. This the examiner has not3
done. While the examiner did find that Ammann teaches a laser
device with a Nd:YAlO laser crystal, the examiner never3
determined that it would have been obvious to one of ordinary
skill in the art at the time the invention was made to modify
Berger's laser package to utilize a Nd:YAlO laser crystal as3
the laser material active medium as suggested by the teachings
of Ammann.
For the reasons set forth above, the applied prior art
would not have been suggestive of the claimed invention.
Appeal No. 97-3136 Page 11
Application No. 08/312,780
Accordingly, the decision of the examiner to reject claims 1
through 4 and 6 through 14 under 35 U.S.C. § 103 is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 through 4 and 6 through 14 under 35 U.S.C. § 103 is
reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 97-3136 Page 12
Application No. 08/312,780
BIRCH, STEWART, KOLASCH & BIRCH, LLP
P.O. BOX 747
FALLS CHURCH, VA 22040-0747
APPEAL NO. 97-3136 - JUDGE NASE
APPLICATION NO. 08/312,780
APJ NASE
APJ ABRAMS
APJ CRAWFORD
DECISION: REVERSED
Prepared By: Gloria Henderson
DRAFT TYPED: 13 Oct 98
FINAL TYPED: