Ex parte ZAVISLAN et al.

Board of Patent Appeals and Interferences

May 27, 1998

08094296 (B.P.A.I. May. 27, 1998)

Application for patent filed July 21, 1993.1
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(2) is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JAMES M. ZAVISLAN and JAY M. EASTMAN
__________
Appeal No. 96-1963
Application 08/094,296 1
__________
HEARD: May 5, 1998
__________
Before CALVERT, PATE and NASE, Administrative Patent Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 to 5,
10, 13 to 16, 18, 21, 28 and 30 to 35. Of the other claims in
the application, claims 6 to 9, 11, 12, 17 and 19, 20, 26 and 27
are indicated as allowed and claims 22 to 25 and 29 stand with-
Appeal No. 96-1963
Application 08/094,296
A rejection of claims 6 to 9, 11, 12, 26 and 27 under 35 USC § 112,2
made in the final rejection, was, according to the advisory action mailed
January 27, 1995 (Paper No. 7), overcome by the amendment filed January 12,
1995.
We note that in line 3 of claim 1, the expression “which is3
sufficiently small to be hand held” is so positioned as to appear to modify
“area” rather than “housing”. The claim should be amended so that this
expression is positioned as it is in claim 30, i.e., following “housing”, and
we will interpret claim 1 as if it had been so amended.
2
drawn from consideration as being directed to a nonelected
invention. 37 CFR 1.142(b).2
The subject at issue is defined by claim 1 as follows3
(numbers in brackets added for convenience):
1. A system for thermolysis of dermatological tissue
in an area under the surface thereof with visualization
of said area which is sufficiently small to be hand
held, which comprises [i] a housing, [ii] a window in
said housing providing a port for illumination
emanating from within said housing and disposed and
[sic: in] proximity to the tissue surface above said
area, [iii] means for projecting a laser beam from said
housing through said window, [iv] means in said
projecting means for focusing said beam at selected
locations in said area at spots sufficiently small in
cross-section and of power and duration of said beam to
cause localized thermolysis of the tissue at each of
said spots, [v] said projecting means also including
means in said housing for deflecting said beam to
locate each of said spots at each of said selected
locations one at a time and stop said beam, and [vi]
means in said housing for visualizing said area while
said beam is deflected thereby verifying that each of
said spots is at each of said selected locations.
The references applied in the final rejection are:
Sutton 4,617,926 Oct. 21, 1986
Taboada et al. (Taboada) 5,112,328 May 12, 1992
Appeal No. 96-1963
Application 08/094,296
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Buys et al. (Buys) 5,336,217 Aug. 09, 1994
(Filed Jun. 05, 1992)
Keeler Ophthalmic, Inc. Brochure of Ophthalmoscopes, pp 1-11, (no
date). (Keeler)
Metalaser Technologies, Inc. “CVL Network News” Bulletin, Spring
1992, pp 1-8. (Metalaser)
The claims on appeal stand finally rejected under 35
USC § 103 as unpatentable over the following combinations of
references:
(1) Claims 1, 3, 4, 10, 13 to 16, 18, 28, 30 and 32 to 35,
Buys in view of Taboada and Keeler;
(2) Claims 2 and 31, Buys in view of Taboada, Keeler and
Sutton;
(3) Claim 5, Buys in view of Taboada, Keeler and Metalaser.
We will first consider the rejection of claim 1, particu-
larly in relation to parts [iv] and [v] thereof. Each of these
parts calls for a means plus function, and therefore must be
interpreted as covering “the corresponding structure . . . .
described in the specification and equivalents thereof.” 35 USC
§ 112, sixth paragraph; In re Donaldson Co., Inc., 16 F.3d 1189,
1193, 29 USPQ 2d 1845, 1850 (Fed. Cir. 1994).
Part [iv] of claim 1 recites a “means in said projecting
means for focusing said [laser] beam at selected locations in
said area . . . . ”. In appellants’ specification, the means for
Appeal No. 96-1963
Application 08/094,296
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focusing the laser is described thus (page 11, lines 11 to 17):
The laser energy is delivered by the optical fiber
cable 22 to a fiber ferrule or coupler 66 from which
the incoming beam projects and is focused by a lens 68.
Lens 68 nominally collimates the beam. A focus
mechanism 69, which may be either manual or electro-
mechanical, sets the depth below the surface that the
laser light is focused. The focus mechanism 69 moves
lens 68 in the z direction relative to ferrule 66.
The examiner does not identify any structure in the primary
reference (Buys) which would be the equivalent of the movable-
lens focusing mechanism described by appellants, nor do we find
any such structure therein. In fact, as appellants assert in the
paragraph bridging pages 7 and 8 of their brief, the Buys
apparatus is fixed focus; as Buys states in column 12, lines 3 to
8, the two-lens doublet 12, 13 which constitutes the imaging lens
system 10 is “axially immobilized and integral with frame 3 via
mounting 14". Thus, Buys does not disclose a means for focusing
as recited in claim 1.
Part [v] of claim 1 recites a “means in said housing for
deflecting said beam to locate each of said spots . . . .” In
appellants’ device, the structure which performs this function is
the two-mirror deflection system (specification, pages 10 to 11),
together with the shutter 72, which has a position so that the
Appeal No. 96-1963
Application 08/094,296
5
laser beam can be used “as a spotter or tracking beam to locate
the sites to be treated” (page 13, lines 11 to 13). Buys does
not disclose any such equivalent structure. While the Buys
device contains a deflection system and a shutter, the Buys
deflection system does not deflect the laser beam per se, but
rather deflects the end 9 of the optical fiber from which the
laser beam emerges (column 14, lines 28 to 61). Also, Buys’
shutter is not constructed to allow deflection of the beam to
locate each of the spots, but rather only opens after the end 9
of the fiber is in position for the next “shot” (column 18, lines
6 to 11). In other words, appellants’ disclosed structure
deflects the laser beam across the area of the tissue to the next
spot to be “shot”, while the Buys apparatus, instead of
deflecting the beam, deflects the end of the fiber optic cable to
a position where by opening the shutter, it can then deliver the
next “shot”. The apparatus disclosed by Buys therefore does not
perform the same function as appellants’ claimed deflecting
means, and is not equivalent to the structure disclosed by
appellants for performing the recited function of the deflecting
Appeal No. 96-1963
Application 08/094,296
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means.
Claim 30, the other independent claim on appeal, recites
similar means which likewise find no response in Buys.
The secondary references, Taboada, Keeler, Sutton and
Metalaser, were cited by the examiner as evidence of the
obviousness of various claimed limitations other than those
which we find above to be lacking in Buys. We find no disclosure
in any of these references which would supply the above-noted
deficiencies of Buys.
Accordingly, we will not sustain the rejection of indepen-
dent claims 1 and 30 or, it follows, of dependent claims 2 to 5,
10, 13 to 16, 18, 21, 28 and 31 to 35.
The examiner’s decision to reject claims 1 to 5, 10, 13 to
16, 18, 21, 28 and 30 to 35 is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Appeal No. 96-1963
Application 08/094,296
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WILLIAM F. PATE, III ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 96-1963
Application 08/094,296
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Martin LuKacher, Esq.
Harris, Beach & Wilcox
Granite Building
130 East Main Street
Rochester, NY 14604