Ex Parte 7,485,116 et al

Patent Trial and Appeal Board

Jun 30, 2015

95002271 (P.T.A.B. Jun. 30, 2015)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 95/002,271 09/14/2012 7,485,116 C1160.10004US02 7296 91479 7590 07/01/2015 CAO Group, Inc. Attn: Legal Department 4628 W Skyhawk Dr West Jordan, UT 84084-4501 EXAMINER JASTRZAB, JEFFREY R ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 07/01/2015 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 ________________ BIOLASE TECHNOLOGY, INC. Appellant, Requester1 v. Patent of CAO GROUP, INC. Respondent, Cross-Appellant, Patent Owner ________________ Appeal 2014-007366 Inter Partes Reexamination Control 95/002,271 Patent No. US 7,485,116 B22 Technology Center 3900 ________________ Before JAMES T. MOORE, STEVEN D.A. McCARTHY and DANIEL S. SONG, Administrative Patent Judges. McCARTHY, Administrative Patent Judge. DECISION ON APPEAL 1 The Requester states that the real party in interest is now called Biolase, Inc. (See “Third Party Requester’s Brief on Appeal,” dated Mar. 17, 2014 at 1). 2 Issued February 3, 2009 to Densen Cao (the “’116 patent”). The ’116 patent issued from Appl. 10/947,055, filed September 22, 2004. Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 2 STATEMENT OF THE CASE 1 The ’116 patent as issued included claims 1-21. Claims 3, 6-9, 13 2 and 16-19 were not reexamined. (“Right of Appeal Notice,” mailed 3 December 10, 2013 (“RAN”) at 4). Reexamined claims 1, 2, 4, 5, 10-12, 4 14, 15, 20 and 21 were not amended during the reexamination proceeding. 5 (See “Third Party Requester’s Brief on Appeal,” dated Mar. 17, 2014 (“App. 6 Br. Req’r”) at 26-28). New claims 22-57 were added during the 7 proceeding. (See id. at 28-43). Of these, claims 32 and 35 subsequently 8 were cancelled. (See id. at 1; see also RAN 4). 9 The Appellant/Requester appeals from the Examiner’s decision 10 refusing to adopt proposed rejections of claims 11, 12, 14, 15, 20, 21, 23, 26, 11 27, 29, 33, 34, 37, 39, 41, 43, 46-51, 53, 55 and 57. (App. Br. Req’r 1). A 12 hearing was held on November 19, 2014, addressing only the issues in this 13 appeal. (See “Record of Oral Hearing,” mailed February 4, 2015, at 4, l. 4 - 14 5, l. 4). We have jurisdiction over the appeal under 35 U.S.C. § 134(c) 15 (2002) and 35 U.S.C. § 315(b) (2002). 16 The Cross-Appellant/Patent Owner appeals from the Examiner’s 17 decision rejecting claims 1, 2, 4, 5, 10, 22, 24, 25, 28, 30, 31, 36, 38, 40, 42, 18 44, 45, 52, 54 and 56. (“Patent Owner’s Brief on Appeal under 37 C.F.R. 19 § 41.67,” dated Mar. 24, 2014 (“App. Br. PO”) at 4). The claims at issue in 20 the cross-appeal do not overlap the claims at issue in the appeal. The Patent 21 Owner did not request a hearing in the cross-appeal. (See “Record of Oral 22 Hearing,” mailed February 4, 2015, at 4, l. 4 - 5, l. 4). We have jurisdiction 23 over the cross-appeal under 35 U.S.C. § 134(b) and 35 U.S.C. § 315(a) 24 (2002). 25 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 3 The Requester states that the ’116 patent is at issue in CAO Group v. 1 Biolase Technology, Case No. 2:12-CV-00388, in the U.S. District Court for 2 the District of Utah. (See “Third Party Requester’s Brief on Appeal” dated 3 March 17, 2014 at 1). 4 5 THE ’116 PATENT 6 The ’116 patent teaches a semiconductor laser system having surgical 7 and therapeutic applications in medicine and dentistry. (See ’116 patent, col. 8 1, ll. 51-56). Most components of the system, including a laser module 131, 9 are contained within an enclosure or box 101. (See ’116 patent, col. 1, l. 66 10 - col. 2, l. 1; see also id., col. 2, ll. 62-63 and fig. 1c). The ’116 patent 11 teaches that the enclosure 101 “provides protection for the laser system, 12 permits ventilation of interior components as needed, accommodates 13 portability, and accommodates convenient physical positioning.” (’116 14 patent, col. 2, ll. 1-4). The laser system of the ’116 patent, as depicted in 15 Figures 1a and 1c, also includes an optical fiber 131a (303 in Figs. 3a and 16 3b). 17 A handpiece 107 (601 in Fig. 6a) “serves to control the fiber which 18 delivers a laser beam to a therapeutic or surgical surface [of a patient]” (’116 19 patent, col. 5, ll. 22-23). A fiber cartridge 102 (see ’116 patent, col. 2, ll. 20 11-12 and fig. 1a), also referred to as a fiber storage and dispensing unit 201 21 (see ’116 patent, col. 3, ll. 12-14; and figs. 2a and 2b), “is a modular unit 22 [for storing] a certain length of fiber used for application and [dispensing] 23 the fiber to desired length when it is used” (’116 patent, col. 3, ll. 17-19). 24 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 4 We will address the cross-appeal first. For the sake of brevity, 1 findings of fact will be stated within the discussion of each issue. All 2 findings of fact have been found by a preponderance of the evidence. 3 4 CROSS-APPEAL OF THE PATENT OWNER: 5 CLAIMS 1, 2, 4, 5, 10, 22, 24, 25, 28, 30, 6 31, 36, 38, 40, 42, 44, 45, 52, 54 AND 56 7 Claim 1 is the sole independent claim subject to the Patent Owner’s 8 Cross-Appeal: 9 1. A laser system useful in medicine or 10 dentistry comprising: 11 a housing, 12 a laser module within said housing, said 13 laser module being capable of producing laser light 14 which is usable for therapeutic purposes in 15 medicine or dentistry, 16 a fiber module, said fiber module having an 17 outer casing attachable to and removable from said 18 housing and configured to store amounts of extra 19 fiber, 20 said fiber module including fiber therein, 21 said fiber having a proximal end and a distal end, 22 and 23 said fiber proximal end being in light 24 communication with said laser module so that said 25 fiber can receive laser light from said laser module 26 and transport said laser light to said fiber distal 27 end. 28 The remaining claims in the cross-appeal depend, directly or indirectly, from 29 independent claim 1. 30 We AFFIRM the Examiner’s decision to adopt each of the following31 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 5 rejections: 3 1 Ground 1: claims 1, 2, 4 and 10 under 35 U.S.C. 2 § 102(b) (2002) as being anticipated by Potteiger I (US 3 6,263,143 B1, issued July 17, 2001) (RAN 4); 4 3 The Examiner’s findings and conclusions appear in the RAN. The Examiner’s Answer mailed April 30, 2014, incorporates the RAN by reference. The RAN refers to statements in the “Request for Inter Partes Reexamination of U.S. Patent No. 7,485,116 under 35 U.S.C. §§ 311-314 and 37 C.F.R. 1.902 et seq.,” dated September 14, 2012 (“Request”); “Third Party Requester’s Comments after Patent Owner’s Response under 37 C.F.R. § 1.947 and M.P.E.P § 2666.05,” dated July 19, 2013 (“July 2013 Req’r Comm.”); and “Third Party Requester’s Comments after Patent Owner’s Response under 37 C.F.R. § 1.947 and M.P.E.P § 2666.05,” dated February 15, 2013 (“February 2013 Req’r Comm.”). The numbering of the grounds of rejection is taken from the RAN. For purposes of the appeal, the Requester relies on the Requester’s Appeal Brief and a “Rebuttal Brief in Opposition to Patent Owner’s Respondent Brief on Appeal,” dated May 30, 2014 (“Reb. Br. Req’r”). The Patent Owner relies on a “Patent Owner’s Respondent’s Brief under 37 C.F.R. § 41.68,” dated April 16, 2014 (“Resp. Br. PO”). For purposes of the cross-appeal, the Patent Owner relies on the Patent Owner’s Appeal Brief and the “Patent Owner’s Rebuttal Brief under 37 C.F.R. § 41.71,” dated May 30, 2014. (“Reb. Br. PO”). The Requester relies on a “Respondent Brief in Opposition to Patent Owner’s Brief on Appeal,” dated April 18, 2014 (“Resp. Br. Req’r”). The Patent Owner has submitted testimony in the form of a “Declaration of Expert, Dr. Densen Cao, Ph.D., under Section 1.132,” executed on or about June 18, 2013 (“Cao Decl.”); a “Declaration of Expert, John J. Graeber, DMD, under Section 1.132,” executed on or about June 17, 2013 (“Graeber Declaration” or “Graeber Decl.”); and a “Declaration of Expert, Michael K. Koceja, DDS, under Section 1.132,” executed on or about June 17, 2013 (“Koceja Declaration” or “Koceja Decl.”). Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 6 Grounds 2 and 11: claims 1, 2, 4, 5, 10 and 42 under 35 1 U.S.C. § 103(a) (2002) as being unpatentable over Potteiger I 2 and Lawhon (US 5,407,071, issued Apr. 18, 1995) (RAN 12 3 and 36); 4 Grounds 3 and 5: claims 1, 2, 4, 10, 22, 30, 38, 40, 44, 5 45 and 564 under § 103(a) as being unpatentable over Potteiger 6 I and BIOLASE Tech., Inc., “LASERSMILE The Soft-Tissue & 7 Whitening Laser” (2002) (“LaserSmile”) (RAN 16 and 21); 8 Ground 6: claim 24 under § 103(a) as being unpatentable 9 over Potteiger I and Baer (US 5,127,068, issued June 30, 1992) 10 (RAN 29); 11 Ground 7: claim 25 under § 103(a) as being unpatentable 12 over Potteiger I, Baer and Uejima (US 6,061,371, issued May 9, 13 2000) (RAN 31); 14 Ground 8: claim 28 under § 103(a) as being unpatentable 15 over Potteiger I and Synrad, Inc., “SYNRAD DC-36 DC Power 16 Supply” (Jan. 23, 2003) (“Synrad”) (RAN 32); 17 Ground 10: claim 36 under 103(a) as being unpatentable 18 over Potteiger I, LaserSmile and BIOLASE Tech., Inc., 19 February 26, 2002 Press Release (“February 2002 Waterlase 20 Press Release”) (RAN 33); 21 4 The Patent Owner and the Requester agree that the Examiner intended to reject claim 56 over Potteiger I and LaserSmile rather than over Potteiger I and Patterson (US 5,682,450, issued Oct. 28, 1997). (See App. Br. PO 6 n.1; Resp. Br. Req’r 1). Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 7 Ground 12: claim 31 under § 103(a) as being 1 unpatentable over Potteiger I, LaserSmile and BIOLASE Tech., 2 Inc., “WATERLASE YSGG” (Aug. 2, 2003) (“August 2003 3 Waterlase Internet Capture”) (RAN 36); and 4 Ground 15: claim 52 under § 103(a) as being 5 unpatentable over Potteiger I, Baer, Uejima and Soltz (US 6 5,272,716, issued Dec. 21, 1993) (RAN 37). 7 We REVERSE the Examiner’s decision to adopt the following rejections: 8 Ground 5: claim 38 under § 103(a) as being unpatentable 9 over Potteiger I and LaserSmile (RAN 21); and 10 Ground 16: claim 54 under § 103(a) as being 11 unpatentable over Potteiger I and Patterson (US 5,682,450, 12 issued Oct. 28, 1997) (RAN 39). 13 Each of these grounds of rejection relies on Potteiger I either as an 14 anticipatory reference under § 102(b) or as a primary reference under 15 § 103(a). We find that Potteiger I describes “shipping casings, packages and 16 storage compartments configured to retain a laser module assembly.” 17 (Potteiger I, col. 1, ll. 19-22). Figure 1 of Potteiger I depicts a prior art laser 18 module 10 in combination with a support assembly including a baseplate 20. 19 (Potteiger I, col. 2, ll. 53-55 and col. 3, ll. 5-14). The Examiner relies on 20 the embodiment of Figure 1 of Potteiger I as the basis for rejecting the 21 claims subject to the Patent Owner’s cross-appeal. (See, e.g., RAN 5 (“As to 22 Claim 1, the baseplate 20 [which appears only in Figure 1] is considered a 23 housing in the broadest sense as it houses the laser module [10]”)). 24 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 8 Issues 1 The Patent Owner argues that Potteiger I fails to anticipate claim 1 2 because the embodiment of Figure 1 of Potteiger I is not a “laser system 3 useful in medicine or dentistry;” because the embodiment does not include 4 “a laser module within said housing, said laser module being capable of 5 producing laser light;” and because the embodiment does not include “a 6 fiber module, said fiber module having an outer casing attachable to and 7 removable from said housing and configured to store amounts of extra 8 fiber.” (See App. Br. PO 11-16; Reb. Br. PO 3-7). 9 The Patent Owner argues that the subject matter of claim 1 would not 10 have been obvious from the combined teachings of Potteiger I and Lawhon 11 because the combination proposed by the Examiner would not have been 12 suitable for carrying out the purposes of the embodiment of Figure 1 of 13 Potteiger I (see App. Br. PO 17-19; Reb. Br. PO 7-8); and because the 14 combined teachings would not have provided one of ordinary skill in the art 15 reason to modify the embodiment of Figure 1 to include “a laser module 16 within said housing, said laser module being capable of producing laser light 17 which is usable for therapeutic purposes in medicine of dentistry” as recited 18 in claim 1 (see App. Br. PO 19; Reb. Br. PO 8). 19 The Patent Owner argues that the subject matter of claim 1 would not 20 have been obvious from the combined teachings of Potteiger I and 21 LaserSmile because the combination proposed by the Examiner would not 22 have been suitable for carrying out the purposes of the embodiment of 23 Figure 1 of Potteiger I (see App. Br. PO 20-21; Reb. Br. PO 8); and because 24 the combined teachings would not have provided one of ordinary skill in the 25 art reason to modify the embodiment of Figure 1 to include “a fiber module, 26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 9 said fiber module having an outer casing attachable to and removable from 1 said housing and configured to store amounts of extra fiber” (see App. Br. 2 PO 21; Reb. Br. PO 8). 3 The Patent Owner argues the subject matter of claim 38 would not 4 have been obvious from the combined teachings of Potteiger I and 5 LaserSmile because the combined teachings would not have provided one of 6 ordinary skill in the art reason to modify the embodiment of Figure 1 to 7 include a “laser system as recited in claim 1 wherein said housing includes: 8 an electronic display panel configured to electronically display operation 9 information of said laser module, said operation information including . . . 10 laser module protection function status” (see App. Br. PO 23-24; Reb. Br. 11 PO 10). 12 The Patent Owner argues the subject matter of claim 52 would not 13 have been obvious from the combined teachings of Potteiger I and 14 LaserSmile because the combined teachings would not have provided one of 15 ordinary skill in the art reason to modify the embodiment of Figure 1 to 16 include a laser system including individual semiconductor laser chips which 17 are “separate and distinct semiconductor laser chips that are each separated 18 from one another by at least some open space.” (See App. Br. PO 26-27; 19 Reb. Br. PO 13). 20 The Patent Owner argues the subject matter of claim 54 would not 21 have been obvious from the combined teachings of Potteiger I and 22 LaserSmile because the combined teachings would not have provided one of 23 ordinary skill in the art reason to modify the embodiment of Figure 1 to 24 break the fiber recited in parent claim 1 into first and second fibers, each 25 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 10 having an attached first or second connector, as recited in claim 54. (See 1 App. Br. PO 28-29; Reb. Br. PO 13-15). 2 3 Principles of Law 4 A party taking a position adverse to the patentability of a claim in a 5 reexamination proceeding bears the burden of proving a factual 6 underpinning for a rejection of the claim by a preponderance of the 7 evidence. See Rambus Inc. v. Rea, 731 F.3d 1248, 1255 (Fed Cir. 2013); 8 Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988). Claims 9 undergoing reexamination are given their broadest reasonable interpretation 10 consistent with the written description of the patent under review. See In re 11 Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984). 12 13 Discussion 14 Anticipation by Potteiger I-“a laser system useful in medicine or dentistry” 15 The Patent Owner argues that the embodiment of Figure 1 in 16 Potteiger I is not a “laser system useful in medicine or dentistry” as recited 17 in the preamble of claim 1. (See App. Br. PO 11-13; Reb. Br. PO 3-5). The 18 Examiner pragmatically interprets the preamble as limiting claim 1 to a laser 19 system “inherently capable of the recited intended use” (RAN 10), that is, to 20 a system capable of use in the field of medicine or dentistry. The distinction 21 which the Examiner draws is a fine one. As a practical matter, the 22 Examiner’s interpretation of the preamble does not narrow the scope of 23 claim 1. 24 At least where, as here, the body of the claim fully defines the claimed 25 subject matter such that the preamble reads on any apparatus which first 26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 11 satisfies the limitation of the body of the claim, the preamble does not 1 further limit the claim. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 2 F.3d 1298, 1305 (Fed. Cir. 1999).5 The body of claim 1 recites a laser 3 module “capable of producing laser light which is usable for therapeutic 4 purposes in medicine or dentistry.” The body of the claim also recites a 5 fiber having a proximal end “in light communication with said laser module 6 so that said fiber can receive laser light from said laser module and transport 7 said laser light to said fiber distal end.” These recitations flesh out the 8 meaning of the phrase “useful in medicine or dentistry”-a laser system is 9 inherently useful in medicine or dentistry if it includes a laser module that 10 produces laser light usable for therapeutic purposes; and a fiber that receives 11 laser light from the laser module and transports the laser light to a distal end 12 of the fiber. (See RAN 10). 13 The Patent Owner argues that the preamble of claim 1 can only be 14 satisfied if the combination of the laser module, the fiber and the housing, as 15 a whole, is useful in a therapeutic medical or dental process. (See generally 16 App. Br. PO 12-13; Reb. Br. PO 3-5). This is true so long as one keeps in 17 mind the respective roles to be played by the laser module, the fiber and the 18 housing as discussed in the written description of the ’116 patent. 19 5 “If, however, the body of the claim fully and intrinsically sets forth the complete invention, including all of its limitations, and the preamble offers no distinct definition of any of the claimed invention’s limitations, but rather merely states, for example, the purpose or intended use of the invention, then the preamble is of no significance to claim construction because it cannot be said to constitute or explain a claim limitation.” Pitney Bowes at 1305. Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 12 The written description of the ’116 patent teaches that the laser 1 module 131 generates a laser beam. (See, e.g., ’116 patent, col. 4, ll. 47-50). 2 The written description teaches that the optical fiber 131a delivers the laser 3 beam to a therapeutic or surgical surface of a patient (see ’116 patent, col. 5, 4 ll. 22-23; see also id., col. 4, ll. 52-54). This is consistent with the 5 conclusion that the laser system is inherently useful in medicine or dentistry 6 if it includes a laser module that produces laser light usable for therapeutic 7 purposes; and a fiber that receives laser light from the laser module and 8 transports the laser light to a distal end of the fiber. On the other hand, 9 column 2, lines 1-4, of the ’116 patent merely teaches that the housing or 10 enclosure 101 “provides protection for the laser system, permits ventilation 11 of interior components as needed, accommodates portability, and 12 accommodates convenient physical positioning.” 13 We find that the laser module 10 depicted in Figure 1 of Potteiger I 14 includes a solid state laser 12, an optical connector 18 and an optical fiber 16 15 extending from the laser 12 at a proximal end to the optical connector 18 at a 16 distal end. (Potteiger I, col. 2, l. 63 - col. 3, l. 2). The laser module 10 17 depicted in Figure 1 of Potteiger I is a Laser 2000 Module manufactured by 18 Lucent Technologies of Murray Hill, New Jersey. (See Potteiger I, col. 2, ll. 19 54-55; see also id., col. 1, ll. 37-40). The Examiner correctly finds that a 20 Laser 2000 Module is capable of producing light usable for therapeutic 21 purposes in medicine or dentistry. (See RAN 7 and 10-11). 22 The Patent Owner does not appear to challenge that finding in the 23 cross-appeal. (See, e.g., App. Br. PO 12 (arguing that the Examiner erred in 24 finding that the laser system described by Potteiger I as a whole, as opposed 25 to the laser module 10 alone, is “useful in medicine or dentistry”); id. at 15-26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 13 16 (arguing that the embodiment of Figure 1 fails to include a “laser module 1 within said housing . . . capable of producing laser light” rather than arguing 2 that the embodiment fails to include a laser module “capable of producing 3 laser light which is usable for therapeutic purposes in medicine or 4 dentistry”)). We adopt the finding. 5 Consequently, we find that the solid state laser 12 depicted in Figure 1 6 of Potteiger I is capable of producing laser light which is capable of use for 7 therapeutic purposes in medicine or dentistry. We also find that Potteiger I 8 describes the optical fiber 16 as “receiv[ing] the laser light generated by the 9 solid state laser 12 and propagates that light to its free end.” (Potteiger I, 10 col. 2, ll. 64-65). This teaching implies that the optical fiber 16 receives 11 laser light from the laser module and transports the laser light to a distal end 12 of the fiber. Since the laser module depicted in Figure 1 of Potteiger I 13 satisfies these two limitations from the body of claim 1, it inherently satisfies 14 the preamble of the claim. 15 We find that the support assembly includes a baseplate 20, a spool 22 16 and a connector holder 24. (Potteiger I, col. 3, ll. 13-14). A top surface of 17 the baseplate 20 defines a laser receptacle 30 for receiving the solid state 18 laser 12. (See Potteiger I, col. 3, ll. 15-18 and Fig. 1). The connector holder 19 24 is attached to the top surface of the baseplate 20 so as to receive the 20 optical connector 18. (Potteiger I, col. 3, ll. 18-23). The baseplate 20, the 21 spool 22, the connector holder 24 and the laser receptacle 30 provide a 22 degree of protection to the components of the laser module 10 while 23 permitting air to reach the components. Furthermore, we find that Potteiger 24 I teaches that the “support assembly retains the laser module 10 in a set 25 position while the laser module 10 is tested and shipped by the 26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 14 manufacturer.” (Potteiger I, col. 3, ll. 10-13). In this manner, the support 1 assembly accommodates portability and convenient physical positioning of 2 the laser module 10. 3 Contrary to the argument advanced by the Patent Owner (see App. Br. 4 PO 13), the phrase “useful in medicine or dentistry” does not imply that the 5 laser system must be an “operational final product” capable of carrying out a 6 therapeutic medical or dental procedure without the provision of an external 7 power source. As the Examiner correctly explains, “[i]f the intent were to 8 claim a fully operational system[, the Patent Owner] had every opportunity 9 to [amend the claim to recite] a power source and laser emission control 10 during the original prosecution.” (RAN 10; see also RAN 5; Resp. Br. 11 Req’r 7-8 and 9). 12 Nevertheless, the Examiner correctly finds that connecting the laser 13 module 10 of Figure 1 of Potteiger I to a suitable power source would yield 14 an operational final product. (See RAN 5; see also Resp. Br. Req’r 7-8). 15 For example, Potteiger I states that the support assembly depicted in Figure 16 1 is fully described in Potteiger II (US 6,272,276 B1, issued Aug. 7, 2001) 17 (see Potteiger I, col. 3, ll. 5-10). Potteiger II describes a test procedure in 18 which a suitable power source, including an actuator 74, lifts the solid state 19 laser 12 out of the laser receptacle 30 into contact with an energized test 20 head 76 and energizes the solid state laser to generate light for transmission 21 through the optical fiber 16. (See Potteiger II, col. 4, ll. 48-58 and 63-67; 22 id., Fig. 4). This description supports the Examiner’s finding that the laser 23 system of Figure 1 of Potteiger I can be made operable through connection 24 to a suitable power source. 25 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 15 The Examiner’s finding that the laser system of Figure 1 of Potteiger I 1 is capable of use in medicine or dentistry is correct notwithstanding the 2 testimony of the Graeber and Koceja Declarations. The Graeber and Koceja 3 Declarations collectively establish that a dental practitioner might have 4 difficulty using a laser module fixed in a support assembly as depicted in 5 Figure 1 of Potteiger I to carry out a therapeutic procedure in a typical 6 dentist’s office. (See Graeber Decl., paras. 14-17; Koceja Decl., paras. 14-7 17). 8 Nevertheless, the preamble of claim 1 recites only that the laser 9 system is “useful in medicine or dentistry.” Difficulty does not negate 10 usefulness. Claim 1 does not limit the conditions under which the laser 11 system must be useful for this purpose. Furthermore, neither paragraph 14 12 of the Graeber Declaration nor paragraph 14 of the Koceja Declaration 13 establishes that a laser system can have no use in medicine or dentistry 14 unless it is similar to a dental laser system with which at least one of the 15 declarants is familiar. 16 We agree with the Requester and the Examiner that the laser system 17 depicted in Figure 1 of Potteiger I is capable of therapeutic use if connected 18 to a suitable power supply and a suitable laser application tool. This is true 19 notwithstanding the testimony of the Graeber and Koceja Declarations, 20 which we do not find persuasive. Therefore, the Requester and the 21 Examiner have shown that Figure 1 depicts a “laser system useful in 22 medicine or dentistry” as recited in claim 1. 23 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 16 Anticipation by Potteiger I-“a laser module within said housing, said laser 1 module being capable of producing laser light” 2 The Patent Owner argues that the laser system of Figure 1 of Potteiger 3 I does not include “a laser module within said housing, said laser module 4 being capable of producing laser light,” as recited in claim 1. (See App. Br. 5 PO 15-16; Reb. Br. PO 6-7). Figure 1 depicts a laser system including a 6 solid state laser 12 received in receptacle 30 which holds the laser in a fixed 7 position. The receptacle 30 is a part of the housing (that is, the portion of 8 the support assembly excluding the spool 22) within which the laser module 9 10 is retained. (Potteiger I, col. 2, l. 63 - col. 3, l. 2; col. 3, ll. 13-18; and 10 Fig. 1). In addition, the solid state laser 12 is capable of producing light 11 which is capable of being used for therapeutic purposes in medicine or 12 dentistry. (See RAN 10; see also Potteiger I, col. 1, ll. 37-40; col. 2, ll. 54-13 55; and col 2, ll. 64-65). Therefore, the Examiner correctly finds that the 14 solid state laser 12 satisfies the quoted limitation. (See RAN 12). 15 Citing In re Geerdes, 491 F.2d 1260, 1262-63 (CCPA 1974), the 16 Patent Owner argues that the limitation, “a laser module within said housing, 17 said laser module being capable of producing laser light,” can only be 18 satisfied if the laser module is capable of producing laser light while the 19 laser module is within the housing. (See App. Br. PO 15). The Patent 20 Owner asserts that the laser system of Figure 1 of Potteiger I does not satisfy 21 this limitation. (See id. at 15-16). The Examiner correctly concludes that 22 “there is nothing in [claim 1] that requires that the laser be capable of 23 producing laser light ‘while positioned in the housing’ as argued.” (RAN 24 12). 25 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 17 The recitation of “a laser module within said housing” defines the 1 laser module in terms of its interaction with the housing. The separate 2 recitation regarding “said module being capable of producing laser light” 3 defines the laser in terms of its own functional characteristics. The claim 4 does not include any language (such as the conjunction “while”) indicating 5 that the latter recitation is intended to further limit the relationship between 6 the laser module and the housing (that is, to limit the relationship so as to 7 require the laser module to be capable of producing laser light while in the 8 housing). The repetition of “laser module,” at least in this context, indicates 9 that the two limitations are not to be conflated. The Patent Owner does not 10 identify any passage of the written disclosure of the ’116 patent inconsistent 11 with this interpretation of the claim. 12 Geerdes does not support the Patent Owner’s proposed interpretation. 13 Geerdes involved a claim for a foam polymer extrusion process performed 14 on a mixture of two materials, “both said materials being essentially non-15 volatile at a temperature at which said polymeric material is fluid.” Geerdes 16 at 1261-62. The claim further recited that the two materials were initially 17 milled together to form a composite, “said composite consisting essentially 18 of said two materials.” Prior art cited by the examiner described solid 19 extrusion processes. The Patent and Trademark Office argued before a 20 predecessor of our reviewing court that “the claims on appeal permit the 21 presence of a blowing agent,” which would have converted the solid 22 extrusion processes to foam extrusion processes. In rejecting this argument, 23 the court observed that “every limitation in a claim must be given effect 24 rather than considering one in isolation from the others.” Geerdes at 1262-25 63. The court held that the claim as a whole excluded the presence of a 26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 18 blowing agent because a system with an added blowing agent would not 1 have met the express recitations limiting the composite essentially to the two 2 materials, each essentially non-volatile at the extrusion temperature. Id. 3 The Examiner’s interpretation of claim 1 in this proceeding gives 4 effect both to the limitation regarding “a laser module within said housing” 5 and the limitation regarding “said laser module being capable of producing 6 laser light.” The laser module 12 of the laser system depicted in Figure 1 of 7 Potteriger 1 satisfies both limitations. Geerdes is inapposite. The Examiner 8 correctly finds that Figure 1 of Potteiger I depicts a laser system including “a 9 laser module within said housing, said laser module being capable of 10 producing laser light.” 11 12 Anticipation by Potteiger I-“a fiber module, said fiber module having an 13 outer casing attachable to and removable from said housing and configured 14 to store amounts of extra fiber” 15 The Patent Owner argues that the laser system of Figure 1 of Potteiger 16 I does not include “a fiber module, said fiber module having an outer casing 17 attachable to and removable from said housing and configured to store 18 amounts of extra fiber,” as recited in claim 1. (See App. Br. PO 13-15; Reb. 19 Br. PO 6). We find that Figure 1 depicts a laser system including a spool 22 20 having an outer casing including a cylindrical wall 38 terminating at one end 21 with a segmented flange 39. The outer casing is attachable to, and 22 removable from, the baseplate 20 by means of locking tabs 42. (See 23 Potteiger I, col. 3, ll. 33-43 and Fig. 1; see also id., col. 1, ll. 45-46). The 24 spool 22 is “configured to store amounts of extra fiber” in the sense that the 25 spool includes the cylindrical wall 38, about which extra fiber may be 26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 19 wound. (See Potteiger I, col. 3, ll. 26-27). Therefore, the Examiner 1 correctly finds that the spool 22 satisfies the quoted limitation. (See RAN 9-2 10). 3 Potteiger I teaches that, when the wound spool 22 is attached to the 4 top surface of the baseplate 20 by engaging the locking tabs 42 with slots 44 5 in the baseplate, the optical fiber 16 is retained between the segmented 6 flange 39 and the top surface of the baseplate 20. (See Potteiger I, col. 3, ll. 7 27-30 and Fig. 1). On the other hand, Potteiger I criticizes the embodiment 8 of Figure 1 because the spool 22 lacks a flange at the end of the cylindrical 9 wall 38 opposite the segmented flange 39. Whenever a user detaches or 10 removes the spool 22 from the baseplate 20, the optical fiber 16 wound on 11 the cylindrical wall 38 must be held in place by the dexterous application of 12 the user’s fingers to prevent the optical fiber from falling off the cylindrical 13 wall 38. (Potteiger I, col. 3, ll. 45-51). 14 The Patent Owner argues that the ’116 patent “makes no distinction 15 between a fiber module that is attached to and removed from a housing. It is 16 the same fiber module, and claim 1 requires that it be able to store extra 17 amounts of fiber both when attached to and removed from the housing.” 18 (Reb. Br. PO 6; see also App. Br. PO 13-14). As further support for this 19 argument, the Patent Owner points out that the laser system depicted in 20 Figures 1A, 2A and 2B of the ’116 patent has a fiber module 102 (201) with 21 a fully enclosed casing capable of retaining amounts of extra fiber without 22 human assistance both when attached to, and removed from, the housing 23 101. (See App. Br. PO 14). 24 The Examiner correctly concludes that claim 1 is not limited to a laser 25 system in which the casing of the fiber module retains amounts of extra fiber 26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 20 without human intervention when removed from the housing. (RAN 9; see 1 also Resp. Br. Req’r 9-10). It is sufficient that the fiber module be 2 configured to store amounts of extra fiber with the assistance of either the 3 housing (when attached) or a user’s hand (when removed). The Patent 4 Owner has not identified any formal definition or clear disclaimer in the 5 ’116 patent demanding a narrower interpretation. 6 In particular, the fact that the ’116 patent discloses a fiber module 102 7 (201) which retains fiber without human assistance both when attached and 8 removed from the housing 101 does not imply that claim 1 is limited to a 9 laser system including such a fiber module. Phillips v. AWH Corp., 415 10 F.3d 1303, 1323 (Fed. Cir. 2005)(en banc)(warning against importing 11 specific embodiments from the Specification into the claims). Although the 12 ’116 patent teaches that the fiber storage and dispensing unit 102 “may be a 13 modular unit that is removable and replaceable, and disposable” (’116 14 patent, col. 3, ll. 24-26), the fiber storage and dispensing unit may be 15 removed, replaced or disposed of even if the user removing, replacing or 16 disposing of the unit must hold the fiber in place while doing so. 17 Claim 1 is not limited to a laser system including a fiber module able 18 to store extra amounts of fiber without human assistance when removed 19 from the housing. The Examiner correctly finds that the spool 22 depicted 20 in Figure 1 of Potteiger 1 satisfies the limitation “a fiber module, said fiber 21 module having an outer casing attachable to and removable from said 22 housing and configured to store amounts of extra fiber.” The Examiner 23 correctly finds that Potteiger I anticipates independent claim 1 as well as 24 dependent claims 2, 4 and 10. 25 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 21 Obviousness over Potteiger I and Lawhon 1 Lawhon describes a package 10 assembled from identical first and 2 second parts 12, 14 affixed to each other along a plane 26. (See Lawhon, 3 col. 4, ll. 4-11 and 23-25). Facing annular grooves 30 define an annular 4 fiber-receiving cavity 31 for receiving optical fiber 16 wound into the 5 package 10. The fiber-receiving cavities 31 are surrounded by annular lips 6 18 which form a V-shaped groove 54. (See Lawhon, col. 4, ll. 11-14 and 7 29-37; col. 5, ll. 51-55; and Figs. 1 and 2; see also id., col. 6, ll. 35-43). 8 Ordinarily, the fiber-receiving cavities 31 are closed, permitting a user to 9 transport the package 10 and the fiber 16 without holding the fiber in place 10 in the package. 11 Lawhon teaches forming the package parts 12, 14 from a flexible 12 material to permit a user to separate the lips 18 with a small amount of 13 pressure to provide access to the fiber-receiving cavities 31. In this manner, 14 a user may wind optical fiber 16 into the annular fiber-receiving cavities 31. 15 (See Lawhon, col. 5, ll. 59-68). Once the optical fiber 16 is wound into the 16 fiber receiving cavities 31 and the lips 18 are relaxed, the fiber will remain 17 in the fiber-receiving cavities due to the perpendicular arrangement of the 18 outer walls 60 of the annular grooves 30 (see Lawhon, col. 6, ll. 1-2 and 7-19 17) without human intervention such as the use of the user’s fingers to hold 20 the fiber in place. 21 The Examiner correctly finds that one of ordinary skill in the art 22 would have had reason to replace the spool 22 described by Potteiger I with 23 a package similar to the package 10 described by Lawhon. (See RAN 14). 24 Potteiger I criticizes the spool 22 as depicted in Figure 1 because the fiber 25 might slip off the end of the cylindrical wall 38 opposite the segmented 26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 22 flange 39 while the spool is being attached to the baseplate 20 unless the 1 fiber is held in place by the dexterous application of a user’s fingers. 2 (Potteiger I, col. 3, ll. 45-51). 3 The Examiner agrees with the Requester that Lawhon’s package 10 4 does not suffer from this deficiency. The Examiner correctly finds that one 5 of ordinary skill in the art would have recognized that the substitution of 6 Lawhon’s package 10 for the spool 22 in the support assembly depicted in 7 Figure 1 of Potteiger I would have addressed the criticism of Potteiger I 8 regarding the likelihood of the fiber falling off the spool during attachment 9 to the baseplate 20. (See RAN 14; see also Resp. Br. Req’r 11; Request 43). 10 11 Obviousness over Potteiger I and Lawhon-Teaching Away 12 The Patent Owner argues that Potteiger I teaches away from making 13 the proposed substitution. More specifically, the Patent Owner argues that 14 one of ordinary skill in the art would have been discouraged from making 15 the proposed substitution because the substitution would have precluded the 16 use of the modified support assembly to test and ship the laser module 10. 17 The Patent Owner asserts that the substitution would have allowed the fiber 18 to easily unwind from the substituted package so as to extend beyond the 19 perimeter of the baseplate 20. The fiber extending beyond the perimeter of 20 the baseplate, it is asserted, might have been damaged during testing or 21 shipping. (See App. Br. PO 18). 22 The only factual support which the Patent Owner provides for this 23 argument is Lawhon’s teaching that the fiber 16 “may be easily repositioned 24 by unwinding fiber 16 from package 10 by simply pulling on either end of 25 the fiber 16 by hand.” (App. Br. PO 18 (citing Lawhon, col. 2, l. 58 - col. 3, 26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 23 l. 2 and col. 7, ll. 33-44)). Given Lawhon’s teaching that the geometry of 1 the outer wall 60 of the fiber-receiving cavities 31 acts to prevent the fiber 2 16 wrapped into the package 10 from resiliently expanding outside the 3 bounds of the package (see Lawhon, col. 6, ll. 1-2 and 7-17), the Patent 4 Owner’s assertion that fiber would have been more likely to unwind from 5 Lawhon’s package 10 than from the spool 22 of Potteiger I is not persuasive. 6 The Patent Owner also argues that one of ordinary skill would have 7 been discouraged from making the proposed substitution because a user 8 could not have removed the fiber completely from the substituted package. 9 This, it is asserted, would have prevented a user from recycling the entire 10 support assembly to the manufacturer. (See App. Br. PO 18). 11 Factually, the argument is not persuasive. Lawhon teaches that: 12 “[o]nly the amount of fiber 16 that is actually necessary need be unwound 13 from package 10. Assuming that some portion of fiber 16 remains in fiber-14 receiving cavity 31, package 10 may be repositioned along the extended 15 fiber 16 by simply rolling it along the fiber in the direction desired.” 16 (Lawhon, col. 7, ll. 27-33 (italics added for emphasis)). We find that the 17 italicized clause would have implied that the user might unwind all of the 18 fiber 16 from the fiber-receiving cavity 31, thereby removing the fiber 19 completely from the package 10. Lawhon expressly teaches neither 20 removing the fiber completely from the package nor recycling the package 21 with a baseplate used to deliver the fiber. 22 Nevertheless, the absence of these teachings would not have deterred 23 one of ordinary skill in the art both to provide Potteiger I with a fiber 24 package which did not require a hand to hold the fiber in place; and to allow 25 the baseplate and package to be recycled once the fiber was spent. 26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 24 Obviousness over Potteiger I and Lawhon-a laser module “capable of 1 producing laser light” 2 The Patent Owner also argues that the laser system depicted in Figure 3 1 of Potteiger I fails to include “a laser module within said housing, said 4 laser module being capable of producing laser light” as recited in claim 1; 5 and that Lawhon fails to remedy this deficiency. (See App. Br. PO 19). As 6 discussed above, the laser system of Figure 1 of Potteiger I satisfies this 7 limitation. (See also Resp. Br. Req’r 12). The proposed substitution 8 adopted by the Examiner would not have altered the laser module. The 9 Examiner correctly concludes that independent claim 1, along with 10 dependent claims 2, 4, 5, 10 and 42, are unpatentable under § 103(a) over 11 the combined teachings of Potteiger I and Lawhon. 12 13 Obviousness over Potteiger I and LaserSmile 14 LaserSmile describes a soft-tissue and whitening laser system. The 15 system as depicted on the fourth page and the last page of LaserSmile 16 includes a housing; a fiber; a spool on a side of the housing for receiving the 17 fiber; a control panel on the front of the housing; and a handpiece coupled to 18 a distal end of the fiber. The last page of the reference provides 19 specifications for a “LASERSMILE™ Soft-Tissue Diode Laser” and a 20 “LASERSMILE™ Whitening Handpiece,” the latter including a “Fiber Cable 21 Length,” indicating that the laser system includes a semiconductor laser 22 diode, a fiber and a handpiece. 23 The Examiner finds that one of ordinary skill in the art would have 24 had reason to substitute a removably attachable spool such as the spool 22 25 described by Potteiger I for the spool on the side of the laser system depicted 26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 25 in LaserSmile. (See RAN 18). See In re Bush, 296 F.2d 491, 496 (CCPA 1 1961).6 This mere substitution would have required only minor modification 2 of the housing of the laser system depicted in LaserSmile (such as the 3 addition of slots or depressions for engaging the locking tabs 42 of the spool 4 22). (See RAN 20 (“[T]he mere substitution of the Potteiger spool would 5 not [have] amount[ed] to a complex mechanical reconfiguration and would 6 have been well within the skill of those in the art at the time of the 7 invention.”)). The teachings of Potteiger I would have provided one of 8 ordinary skill sufficient guidance to implement the necessary modifications. 9 The Patent Owner has not identified any unpredictable results which the 10 substitution might have yielded. 11 12 Obviousness over Potteiger I and LaserSmile-Teaching Away 13 The Patent Owner argues that LaserSmile teaches away from making 14 the proposed substitution. More specifically, the Patent Owner argues that 15 the “intended purpose of the LaserSmile fiber holder is to make fiber easily 16 available when needed . . . and to retain the fiber close to the device when 17 not needed.” (App. Br. PO 20). Potteiger II describes guide elements 54, 59 18 positioned on the baseplate 20. (See Potteiger II, col. 3, l. 66 - col. 4, l. 4, 19 col. 4, ll. 22-26 and Figs. 1 and 2). The guide elements 54 “prevent the 20 optical fiber 16 from unwinding from the spool 22, to any point beyond the 21 6 “[W]here a rejection is predicated on two references each containing pertinent disclosure which has been pointed out to the [Patent Owner], we deem it to be of no significance, but merely a matter of exposition, that the rejection is stated to be on A in view of B instead of on B in view of A, or to term one reference primary and the other secondary.” Bush at 496. Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 26 bounds of the baseplate 20.” (Potteiger II, col. 4, ll. 19-22; see also App. 1 Br. PO 20-21 (citing Potteiger II, col. 4, ll. 2-4)). The guide elements 59 2 also “help prevent the optical fiber 16 from protruding beyond the bounds of 3 the baseplate 20.” (Potteiger II, col. 4, ll. 22-26). The Patent Owner 4 interprets Potteiger II as teaching that the spool 22 depicted in Figure 1 of 5 Potteiger I cannot retain fiber wound onto the spool. (See App. Br. PO 20-6 21). 7 One of ordinary skill in the art, according to the Patent Owner, would 8 have been discouraged from substituting a spool similar to the spool 22 for 9 the spool depicted in LaserSmile because the substituted spool likely would 10 not retain the fiber absent guide elements similar to those bearing reference 11 numerals 54 and 59 in Figure 2 of Potteiger II. (See App. Br. PO 21). Such 12 guide elements could have made it more difficult to unwind the fiber for use 13 during a therapeutic procedure. (See id.) 14 The Examiner correctly finds that a spool similar to the spool 22 15 described in Potteiger I, if substituted for the spool depicted in LaserSmile, 16 would have retained fiber when attached to the housing of the LaserSmile 17 system in the same manner as the spool actually depicted in LaserSmile. 18 (See RAN 20). The spool depicted in LaserSmile and the spool 22 of 19 Potteiger I are similar in configuration, each including a flange imposed over 20 a section for receiving the fiber. Taking into account the natural “spring 21 action” of fiber wound on a spool (see Lawhon, col. 6, ll. 7-17), one of 22 ordinary skill in the art would have had a reasonable expectation that the two 23 spools would succeed in retaining fiber in similar manners. 24 The teaching of Potteiger II to use guide elements 54 to prevent the 25 optical fiber 16 from unwinding from the spool 22 so as to extend beyond 26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 27 the perimeter of the baseplate 20 does not persuade us that fiber wound onto 1 a spool similar to the spool 22 likely would unwind if not held in place by 2 guide elements. Therefore, one of ordinary skill in the art would not have 3 been discouraged from substituting a removably attachable spool such as 4 that described in Potteiger I for the spool depicted in LaserSmile based on a 5 risk that the substituted spool would not have retained fiber. 6 7 Obviousness over Potteiger I and LaserSmile-“a fiber module, said fiber 8 module having an outer casing attachable to and removable from said 9 housing and configured to store amounts of extra fiber” 10 The Patent Owner argues that the proposed combination would not 11 have included “a fiber module, said fiber module having an outer casing 12 attachable to and removable from said housing and configured to store 13 amounts of extra fiber,” as recited in claim 1. (See App. Br. PO 21). As 14 discussed earlier, the Examiner correctly concludes that claim 1 is not 15 limited to a laser system in which the casing of the fiber module retains 16 amounts of extra fiber without human intervention when removed from the 17 housing. (RAN 9; see also Resp. Br. Req’r 9-10). It is sufficient that the 18 fiber module be configured to store amounts of extra fiber when attached to 19 the housing. Once the proposed substitution is implemented, the substituted 20 spool would retain fiber when attached to the housing of the laser system. 21 We sustain the Examiner’s decision rejecting claims 1, 2, 4, 10, 30, 40, 44, 22 45 and 56 under §103(a) as being unpatentable over Potteiger I and 23 LaserSmile. 24 We also sustain the following rejections under § 103(a) which the 25 Patent Owner did not argue separately: the rejection of claim 24 over 26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 28 Potteiger I and Baer; the rejection of claim 25 over Potteiger I, Baer and 1 Uejima; the rejection of claim 28 over Potteiger I and Synrad; the rejection 2 of claim 31 over Potteiger I, LaserSmile and August 2003 Waterlase Internet 3 Capture; and the rejection of claim 36 over Potteiger I, LaserSmile and 4 February 2002 Waterlase Press Release. (See App. Br. PO 22). 5 6 The Rejection of Claim 22 under § 103(a) as being unpatentable over 7 Potteiger I and LaserSmile 8 The Patent Owner’s Appeal Brief includes a subsection that refers 9 specifically to the rejection of claim 22. More specifically, the Patent 10 Owner argues that “the rejection of claim 22 must be based on the 11 combination of Potteiger I and LaserSmile where the spool 22 from 12 Potteiger I is added to LaserSmile.” (App. Br. PO 22). Having said this, the 13 Patent Owner repeats the same arguments directed against the proposed 14 substitution of a removable spool for the spool depicted in LaserSmile. (See 15 id.) The Patent Owner does not provide any explanation suggesting that 16 claim 22 might be patentable even if the Examiner’s rejection of claim 1 17 over Potteiger I and LaserSmile is sustained. We sustain the rejection of 18 claim 22 under § 103(a) as being unpatentable over Potteiger I and 19 LaserSmile. 20 21 The Rejection of Claim 38 under § 103(a) as being unpatentable over 22 Potteiger I and LaserSmile 23 The Patent Owner separately argues the rejection of claim 38 under 24 § 103(a) as being unpatentable over Potteiger I and LaserSmile. Claim 38 25 recites the laser system of claim 1, in which the housing includes “an 26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 29 electronic display panel configured to enable electronic adjustments of . . . 1 continuous wave operation selection [and] pulse operation selection.” Soltz 2 teaches that it was known as of the filing date of the ’116 patent to provide 3 both a laser output and an aiming beam (that is, a low power guide laser) to 4 assist an operator in aiming the laser output. (Soltz, col. 6, ll. 3-12). 5 LaserSmile states “[y]ou can quicky adjust treatment power and aiming 6 beam intensity with large, tactile buttons.” The Requester argues that this 7 statement would have suggested providing continuous wave and pulse 8 selection because “aiming beam intensity is a continuous wave operation.” 9 (See Resp. BR. Req’r 17-19; “Third Party Requester’s Comments after 10 Patent Owner’s Response under 37 C.F.R. § 1.947 and M.P.E.P. § 2666.05,” 11 dated February 15, 2013, at 44). The Examiner, on the other hand, 12 reproduces photographs appearing in advertisements for second-hand sales 13 of BIOLASE LASERSMILE dental laser whitening systems, one dated 14 August 26, 2013 and the other undated. The Examiner finds that these 15 photographs show controls for continuous wave and pulse status indication 16 and selection. (See RAN 26-29). 17 The Patent Owner argues that the Requester is interpreting the terms 18 “continuous wave selection” and “pulse selection” unreasonably broadly. 19 More specifically, the Patent Owner quotes a declaration by the named 20 inventor of the ’116 patent: “Aiming beam intensity refers to the power of 21 the aiming beam. Continuous wave operation refers to the mode in which a 22 laser module may operate. These are two entirely different things.” (App. 23 Br. PO 25-26, quoting Cao Decl., para. 35). The Requester responds by 24 pointing out potential bias of the named inventor and by arguing that the 25 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 30 named inventor does not cite any supporting evidence for the testimony. 1 (Resp. Br. Req’r 17-18). 2 The testimony of the named inventor as to how one of ordinary skill 3 in the art would have understood the term “continuous wave selection” is 4 supported by the teachings of Soltz. Soltz describes a therapeutic laser 5 system having both a laser output and an aiming beam. (Soltz, col. 6, ll. 3-6 12). Soltz uses the words “continuous wave” and “pulse” to identify modes 7 of operation of the laser output and not to refer to the aiming beam. (See, 8 e.g., Soltz, col. 4, ll. 22-32). We find that Soltz’s use of these terms 9 supports the testimony the named inventor declaring that “[c]ontinuous wave 10 operation refers to the mode in which a laser beam may operate.” 11 The Patent Owner correctly points out that the Examiner has not 12 shown the two advertisements cited in the RAN are prior art; that they depict 13 the same model of laser system depicted in LaserSmile; and that the 14 photographs in the advertisements fairly and accurately represent the 15 appearance of the laser system depicted in LaserSmile. (See App. Br. PO 16 25). Lacking such a showing, the photographs in the advertisements do not 17 prove that LaserSmile teaches continuous wave selection or pulse selection. 18 Because the Examiner and the Requester have not shown that the combined 19 teachings of Potteiger I and LaserSmile suggested a laser system satisfying 20 all limitations recited in claim 38, we do not sustain the rejection of claim 38 21 under § 103(a) as being unpatentable over Potteiger I and LaserSmile. 22 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 31 The Rejection of Claim 52 under § 103(a) as being unpatentable over 1 Potteiger I, Baer, Uejima and Soltz 2 Claim 52 recites the laser system of claim 1 in which the “laser 3 module includes a plurality of individual semiconductor laser chips each 4 capable of producing individual laser light having a wavelength that 5 provides a medical or dental therapeutic effect.” The claim also recites that 6 the “plurality of individual semiconductor laser chips are separate and 7 distinct semiconductor laser chips that are each separated from one another 8 by at least some open space.” The Patent Owner argues that a laser system 9 including individual semiconductor laser chips separated from one another 10 by at least some “open space” would not have been obvious from the 11 combined teachings of Potteiger I, Baer, Uejima and Soltz. (See App. Br. 12 PO 26-27). 13 We find that Potteiger I does not describe the solid state laser 12 other 14 than to identify a Laser 2000 Module manufactured by Lucent Technologies 15 as a preferred laser module 10. (See Potteiger I, col. 2, ll. 54-55; see also 16 id., col. 1, ll. 37-40). The Examiner does not find that a Laser 2000 Module 17 necessarily includes individual semiconductor laser chips. Baer describes 18 the use of a collimating lens 26 to couple light generated by a laser diode 19 array 10 to a bundle 24 of optical fibers 18, 20, 22. (Baer, col. 3, ll. 3-10 20 and Fig. 1). Baer describes the laser diode array 10 as including ten one-21 Watt laser diode emitters contained on a one-centimeter diode bar. Figure 1 22 of Baer depicts the laser diode array 10 as including separate and distinct 23 laser diodes 12, 14, 16 apparently separated by a solid material. 24 Soltz describes hand held laser devices 10 for use in such fields as 25 medicine. (See Soltz, col. 1, ll. 33-44). Each of the hand held laser devices 26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 32 10 depicted in Figures 1 and 6 of Soltz includes a semiconductor laser 1 device 14 and a guide laser device 16. (Soltz, col. 3, ll. 18-23 and col. 5, ll. 2 52-55; see also Resp. Br. Re’q 20). Soltz identifies the frequency of the 3 guide laser device 16 only as being within the visible range. Soltz, col. 6, ll. 4 62-66). Soltz instead teaches that the “current supplied to the guide laser 16 5 device is minimal such that the power output by the guide laser device 16 is 6 minimal.” (Soltz, col. 5, l. 66 - col. 6, l. 2). Figure 7 of Soltz depicts a hand 7 held laser device including a first semiconductor laser 14 and a second 8 semiconductor laser 72. The device lights the second semiconductor laser 9 72 if a photodetector 36 detects a decrease in the output of the first 10 semiconductor laser 14 below a minimum level. (Soltz, col. 3, ll. 12-14 and 11 col. 7, ll. 41-61; see also July 2013 Req’r Comm. 41). 12 The Examiner concludes that “any separation between the laser chips, 13 would create ‘open space’ between adjacent chips” in accordance with the 14 use of the term “open space” in claim 52. (RAN 38; see also Resp. Br. 15 Req’r 20-21). This interpretation gives effect to the adjective “open” in the 16 sense that the adjective excludes the possibility that any space between two 17 chips is filled by a similar chip. The Patent Owner argues that the words 18 “open space” includes only individual semiconductor laser chips “separated 19 by some distance that is ‘open’ and not filled with any solid material” (App. 20 Br. PO 27; see also Reb. Br. PO 13). As support for this interpretation, the 21 Patent Owner cites Figure 3b of the ’116 patent. Figure 3b depicts an 22 embodiment in which individual semiconductor laser chips or modules 23 350a-g are attached to a laser module casing using either holes 355a-d in 24 the casings of the chips shown in Figure 3d or heat conductive adhesives. 25 (’116 patent, col. 4, ll. 27-30). 26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 33 The words “open space” do not appear in the written description of 1 the ’116 patent at all. Neither does the ’116 patent explain what function the 2 open spaces might perform in the claimed laser system. Although Figure 3b 3 of the ’116 patent depicts an arrangement of individual semiconductor laser 4 chips within a laser module, neither the drawing figure itself nor the 5 accompanying text explain in what sense the individual chips may be 6 separated by “open space.” There is no evidence in the ’116 patent or in the 7 briefs that the Patent Owner intended to use the words “open space” in a 8 technical sense different from the usage of the words by a lay person. 9 Therefore, in the absence of a formal definition or a clear disclaimer, both 10 the Examiner’s interpretation and the Patent Owner’s interpretation are 11 reasonable. In the present context, the Examiner’s interpretation is broader. 12 Baer describes the laser diode array 10 capable of use in the laser 13 module 10 described in Potteiger I. It would have been obvious to merely 14 substitute Baer’s laser diode array 10 for the solid state laser 12 of Potteiger 15 I. The combined teachings of Baer and Potteiger I would have sufficed to 16 enable one of ordinary skill to implement the substitution. Furthermore, the 17 teachings of Baer and Potteiger I do not indicate that the results of the 18 substitution would have been so unpredictable as to deny one of ordinary 19 skill in the art a reasonable expectation that the substitution would have been 20 a success. Baer’s laser diode array 10, once substituted for the solid state 21 laser 12 of Potteiger I, would have met the limitation by which the “plurality 22 of individual semiconductor laser chips are separate and distinct 23 semiconductor laser chips that [were] each separated from one another by at 24 least some open space.” 25 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 34 This conclusion is bolstered by the teachings of Soltz. The 1 embodiment of Figure 7 would have suggested including two separate and 2 distinct semiconductor laser chips in a hand held laser device, one serving as 3 a backup in the event that the other failed to generate a minimum level of 4 laser energy. The embodiment of Figure 6 would have suggested that two 5 semiconductor laser chips might be each separated from one another by at 6 least some open space, even if one of the two spaced laser devices depicted 7 in Figure 6 emitted light in the visible spectrum. Considering the teachings 8 of Potteiger I, Baer, Uejima and Soltz together, we affirm the Examiner’s 9 decision rejecting claim 52 under § 103(a) as being unpatentable over 10 Potteiger I, Baer, Uejima and Soltz. 11 12 The Rejection of Claim 54 under § 103(a) as being unpatentable over 13 Potteiger I and Patterson 14 Claim 54 recites the laser system of claim 1 wherein: 15 said fiber included in said fiber module is a 16 first fiber that includes said fiber proximal end and 17 said fiber distal end, 18 said first fiber further has a first connector 19 attached to said fiber proximal end of said first 20 fiber; 21 said laser system further includes a second 22 fiber positioned within said housing, 23 said second fiber has a second proximal end 24 in light communication with said laser module, 25 said second fiber further has a second distal 26 end having a second connector attached thereto, 27 and 28 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 35 said first connector is configured to receive 1 said laser light from said second connector so that 2 said second proximal end of said second fiber can 3 receive said laser light from said laser module and 4 transport said laser light through said second 5 connector and through said first connector to said 6 fiber distal end of said first fiber. 7 We find that Patterson describes a fiber optic connector 10 for 8 connecting ends of two segments of optical fiber. The fiber optic connector 9 10 includes a first plug assembly 14 and a second plug assembly 16 received 10 in a receptacle 12. (Patterson, col. 4, ll. 54-64 and Fig. 1). Patterson also 11 describes a connector storage/fiber management tray 118 for mounting fiber 12 optic connectors. (Patterson, col. 10, ll. 9-14 and Fig. 6). Patterson teaches 13 that the connector storage/fiber management tray 118 “may be provided with 14 one or more spools for storing excess fiber slack.” (Patterson, col. 10, ll. 15 31-32). 16 As the Patent Owner correctly points out (see App. Br. PO 29), the 17 optical fiber connectors 10 depicted in Figure 6 are not connected to optical 18 fibers. Patterson does not appear to teach connecting the excess fiber slack 19 wound on the one or more spools in the connector storage/fiber management 20 tray 118 to any of the optical fiber connectors 10 while the connectors are 21 resident in the tray. (See generally Patterson, col. 10, ll. 9-38). The 22 teachings of Patterson are consistent with the use of the connector 23 storage/fiber management tray 118 to separately store optical fiber 24 connectors 10 and unbroken excess fiber prior to the incorporation of the 25 connectors and fiber into laser modules. 26 The Examiner adopts the Requester’s argument that it would have 27 been obvious to have broken the optical fiber 16 depicted in Figure 1 of 28 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 36 Potteiger I into two pieces and to have connected the two pieces using first 1 and second optical connectors. (See RAN 39, citing July 2013 Req’r Comm. 2 42-44). The Examiner reasons that: 3 Those in the art, given [the combined teachings of 4 Potteiger I and Patterson] would have recognized 5 that the Potteiger [I] storage could have been easily 6 adapted to store multiple fibers as clearly taught by 7 Patterson and such fibers would have used their 8 own connectors. Such a duplication of parts 9 clearly would have been within the level of those 10 having ordinary skill in the art at the time of the 11 invention as a [routine] engineering modification. 12 (RAN 39). The Requester argues that: 13 However, a person of ordinary skill in the art 14 would [have] recognize[d] that breaking the single, 15 long fiber optic cable into the first fiber and the 16 second fiber that are connected via the connector 17 10 of Patterson would [have] be[en] advantageous 18 because if one of the first or second fibers became 19 damaged, the particular fiber portion that was 20 damaged could be replaced, thus eliminating the 21 expense of replacing an entirety of the single, long 22 fiber optic cable. 23 (Resp. Br. Req’r 22). 24 Neither the Examiner nor the Requester has shown by a 25 preponderance of the evidence that fiber damage during use was a 26 recognized problem in the pertinent art; or that breaking a new optical fiber 27 into two pieces and connecting the two pieces using optical connectors was a 28 known solution to this problem. On the contrary, the Patent Owner has 29 identified several reasons why one of ordinary skill in the art might not have 30 adopted this expedient. 31 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 37 Breaking the fiber and inserting connectors would have increased the 1 cost of the laser module as a whole. Setting aside the overall cost of the 2 system, the fiber itself is expensive. Were the fiber damaged during use, it 3 would have been more efficient simply to cut out and replace the damaged 4 portion on the fly than to replace a predetermined length of the fiber at a 5 predetermined connection. Finally, surface area of the baseplate 20 is 6 limited. Were one to have attempted to store a fiber of significant length, 7 broken and reconnected in the middle, on the spool 22 and the baseplate 20 8 of Potteiger I, there would have been a risk that either winding the optical 9 connectors onto the spool or capturing the optical connectors in carriers on 10 the surface of the baseplate would have caused the fiber to kink in a manner 11 which would have rendered the fiber less suited for transmitting laser light. 12 (See App. Br. PO 28 -29). 13 One of ordinary skill in the art would not have had reason to break the 14 fiber in an end portion which might have hung off the spool when the fiber 15 was wound. A break in such an end portion would have allowed a user only 16 to replace a very short portion of the fiber at one end or essentially the entire 17 fiber at the other end in the event of damage. Although the Patent Owner is 18 under no obligation to prove that one of ordinary skill in the art would have 19 lacked reason to modify the laser system of Potteiger I in the manner 20 proposed by the Requester, the Patent Owner’s arguments emphasize the 21 lack of evidence suggesting that such a reason existed. See In re Ahlert, 424 22 F.2d 1088, 1091 (CCPA 1970) (“Allegations concerning specific 23 ‘knowledge’ of the prior art, which might be peculiar to a particular art 24 should also be supported and the [patent owner] similarly given the 25 opportunity to make a challenge.”). 26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 38 The “duplication of parts” which would have entailed breaking a new 1 optical fiber into two pieces and connecting the two pieces using optical 2 connectors would not have been an obvious “routin[e] engineering 3 modification” as the Examiner implies. (See RAN 39). The Examiner finds 4 that the presence of the connector connecting the two segments of the 5 broken fiber would have required some adaptation (albeit easy adaptation) of 6 the support assembly to accommodate. (See id.) In this sense, the broken, 7 connected fiber proposed by the Examiner would have functioned differently 8 than the unbroken fiber depicted in Figure 1 of Potteiger I. The structural 9 and functional differences between the broken and unbroken fibers implies 10 that the “duplication” resulting from the breaking of the fiber would not 11 have been merely a routine engineering modification. See In re Gal, 980 12 F.2d 717 (Fed. Cir. 1992). We reverse the Examiner’s decision adopting the 13 rejection of claims 54 under § 103(a) as being unpatentable over Potteiger I 14 and Patterson. 15 16 APPEAL OF THE REQUESTER: CLAIMS 11, 12, 14, 15, 20, 21, 23, 26, 17 27, 29, 33, 34, 37, 39, 41, 43, 46-51, 53, 55 & 57 18 Claim 11 is the sole independent claim subject to the Requester’s 19 appeal: 20 11. A therapeutic laser system useful in 21 medicine or dentistry comprising: 22 a casing; 23 a laser module capable of producing laser 24 light which is usable for therapeutic purposes in 25 medicine or dentistry, 26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 39 a fiber storage module, further comprising a 1 module housing attachable and detachable from 2 the casing and having a volume sufficient to store 3 significant amounts of extra fiber, 4 fiber, mostly stored in the fiber module but 5 at least some fiber being located in said casing, and 6 a distal end of said fiber projecting from 7 within said casing to the exterior of said casing, 8 said fiber having a proximal end, and 9 said fiber proximal end being in light 10 communication with said laser module so that said 11 fiber can receive laser light from said laser module 12 and transport said laser light to said fiber distal 13 end, 14 further comprising a handpiece adapted to 15 receive said fiber distal end and being adapted for 16 gripping by a human hand. 17 Of the remaining claims at issue in the appeal, claims 48 and 49 depend 18 from claim 2 which, in turn, depends from independent claim 1; and claims 19 12, 14, 15, 20, 21, 23, 26, 27, 29, 33, 34, 37, 39, 41, 43, 46, 47, 50, 51, 53, 20 55 and 57 depend, directly or indirectly, from independent claim 11. (See 21 generally App. Br. Req’r 26-43 (Claims App’x)). 22 We AFFIRM the Examiner’s decision not to adopt the following 23 proposed rejections: 24 claim 39 under § 103(a) as being unpatentable over 25 Potteiger I and LaserSmile (see RAN 17, 41 and 43; see also 26 ACP 17-18; April 2013 Office Action 10; Determination 8); 27 and 28 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 40 claim 55 under § 103(a) as being unpatentable over 1 Potteiger I and Patterson (see RAN 17, 47 and 48; see also ACP 2 32 and 33). 3 We REVERSE the Examiner’s decision not to adopt the following proposed 4 rejections: 5 claims 11, 12, 14 and 20 under § 102(b) as being 6 anticipated by Potteiger I (see RAN 5-6 and 41; see also 7 “Order Granting/Denying Request for Inter Partes 8 Reexamination” mailed November 19, 2012 (“Determination”) 9 at 7); 10 claims 11, 12, 14, 15, 20 and 43 under § 103(a) as being 11 unpatentable over Potteiger I and Lawhon (see RAN 16, 41 and 12 45; see also “Action Closing Prosecution,” mailed August 28, 13 2013 (“ACP”), at 28-29; “Office Action in Inter Partes 14 Reexamination” mailed April 23, 2013 (“April 2013 Office 15 Action”) at 13; Determination 7); 16 claims 11, 12, 14, 20, 21, 23, 33, 41, 46 and 47 under 17 § 103(a) as being unpatentable over Potteiger I and LaserSmile 18 (see RAN 17, 41 and 43; see also ACP 17-18; April 2013 19 Office Action 10; Determination 8); 20 claim 26 under § 103(a) as being unpatentable over 21 Potteiger I and Baer (see RAN 17 and 44; see also ACP 22; 22 April 2013 Office Action 10); 23 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 41 claim 277 under § 103(a) as being unpatentable over 1 Potteiger I, Baer and Uejima (see RAN 17 and 44; see also 2 ACP 24; April 2013 Office Action 11); 3 claim 29 under § 103(a) as being unpatentable over 4 Potteiger I and Synrad (see RAN 17 and 44; see also ACP 25-5 26; April 2013 Office Action 12); 6 claim 34 under § 103(a) as being unpatentable over 7 Potteiger I, LaserSmile and August 2003 WATERLASE 8 Internet Capture (see RAN 17 and 45; see also ACP 29; April 9 2013 Office Action 14); 10 claim 37 under 103(a) as being unpatentable over 11 Potteiger I, LaserSmile and February 2002 WATERLASE 12 Press Release (see RAN 17 and 45; see also ACP 27; April 13 2013 Office Action 13); 14 claims 48-51 under §103(a) as being unpatentable over 15 Potteiger I, LaserSmile and ILX Lightwave, “LFS-498 Fiber 16 Spool” (bearing the date Sept. 25, 2001) (“LFS-498 Manual”) 17 (see RAN 17 and 46; see also ACP 31); 18 7 The Examiner determined that the Requester was reasonably likely to prevail against claims 25 and “76” on page 11 of the April 2013 Office Action based on the combined teachings of Potteiger I, Baer and Uejima. The Examiner rejected claim 27 over Potteiger I, Baer and Uejima in the next paragraph. The entry of the rejection implies that the determination regarding claim “76” was a typographical error and that the Examiner intended to determine that the Requester was reasonably likely to prevail against claim 27. Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 42 claim 53 under § 103(a) as being unpatentable over 1 Potteiger I, Baer, Uejima and Soltz (see RAN 17 and 47; see 2 also ACP 32); and 3 claim 57 under § 103(a) as being unpatentable over 4 Potteiger I and Patterson (see RAN 17 and 48; see also ACP 32 5 and 33). 6 Pursuant to 37 C.F.R. § 41.77(b), we enter these proposed grounds of 7 rejection as new grounds of rejection against 11, 12, 14, 15, 20, 21, 23, 26, 8 27, 29, 33, 34, 37, 41, 43, 46-51, 53 and 57. 9 10 Issues 11 The Requester argues that its proposed rejection of claims 11, 12, 14 12 and 20 under § 102(b) as being anticipated by Potteiger I is appealable (See 13 App. Br. Req’r 4-12; Resp. Br. PO 5-8; Reb. Br. Req’r 2); and that Figure 2 14 of Potteiger I depicts a therapeutic laser system in which “a distal end of said 15 fiber project[s] from within said casing to the exterior of said casing.” 16 The Patent Owner argues that Potteiger I fails to anticipate claim 1 17 because the embodiment of Figure 2 of Potteiger I is not a “therapeutic laser 18 system useful in medicine or dentistry;” because the embodiment does not 19 include “a fiber storage module, further comprising a module housing 20 attachable and detachable from the casing and having a volume sufficient to 21 store significant amounts of extra fiber;” and because the embodiment 22 depicted in Figure 2 of Potteiger I lacks “a handpiece . . . adapted for 23 gripping by a human hand.” (See Resp. Br. PO 9-12). 24 The Patent Owner argues that the subject matter of claim 11 would 25 not have been obvious from the combined teachings of Potteiger I and 26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 43 Lawhon because the combination proposed by the Requester would not have 1 been suitable for carrying out the purposes of the embodiment of Figure 2 of 2 Potteiger I. (See Resp. Br. PO 12-13). 3 The Examiner concludes that a laser system in which “a distal end of 4 said fiber project[s] from within said casing to the exterior of said casing,” 5 as recited in claim 11, would not have been obvious from the combined 6 teachings of Potteiger I and LaserSmile. (See RAN 6). 7 The Patent Owner argues that a laser system “further comprising a 8 fiber tip, said fiber tip being attachable to said handpiece and optically 9 coupled to said fiber distal end, said fiber tip serving to determine angular 10 orientation of laser light emitted by said fiber distal end with respect to said 11 handpiece,” as recited in claim 21, would not have been obvious from the 12 combined teachings of Potteiger I and LaserSmile. (See Resp. Br. PO 14). 13 The Patent Owner argues that a laser system in which the casing 14 includes “an electronic display panel configured to electronically display 15 operation information of said laser module, said operation information 16 including . . . laser module protection function status,” as recited in claim 39, 17 would not have been obvious from the combined teachings of Potteiger and 18 LaserSmile. (See Resp. Br. PO 15). 19 The Examiner concludes that the LFS-498 Manual was not a “printed 20 publication” as of the critical date of claims 48-51. (See RAN 46). The 21 Patent Owner argues that a laser system including a fiber module configured 22 to store said fiber in place on [a] fiber holder in said spooled state 23 independently of outside assistance while said fiber module outer casing is 24 removed from said housing,” as recited in claim 48, would not have been 25 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 44 obvious from the combined teachings of Potteiger I, LaserSmile and LFS-1 498 Manual. (See Resp. Br. PO 17-18). 2 The Patent Owner argues the subject matter of claim 53 would not 3 have been obvious from the combined teachings of Potteiger I, Baer, Uejima 4 and Soltz because the combined teachings would not have provided one of 5 ordinary skill in the art reason to modify the embodiment of Figure 2 to 6 include a laser system including individual semiconductor laser chips which 7 are “separate and distinct semiconductor laser chips that are each separated 8 from one another by at least some open space.” (See Resp. Br. PO 15-16). 9 The Patent Owner argues the subject matter of claim 55 would not 10 have been obvious from the combined teachings of Potteiger I and Patterson 11 because the combined teachings would not have provided one of ordinary 12 skill in the art reason to modify the embodiment of Figure 1 to break the 13 fiber recited in parent claim 1 into first and second fibers, each having an 14 attached first or second connector, as recited in claim 54. (See Resp. Br. PO 15 16-17). 16 17 Discussion 18 Anticipation by Potteiger I-Appealability 19 The Requester appeals under § 134(c) and § 315(b). 37 C.F.R. 20 § 41.61(a)(2), which implements § 134(c) and § 315(b), states that, “[u]pon 21 issuance of a Right of Appeal Notice . . . , the requester may appeal to the 22 Board with respect to any final decision favorable to the patentability, 23 including any final determination not to make a proposed rejection, of any 24 original, proposed amended, or new claim of the patent.” The Requester 25 proposed in the Request to reject claims 11, 12, 14 and 20 under § 102(b) as 26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 45 being anticipated by a combination of a laser module 10 and a package 1 housing 60 depicted in Figure 2 of Potteiger I. (Request 32-37; see also id. 2 at 25-26 and App’x A at the third page through the fifth page; cf. Potteiger I, 3 col. 3, ll. 54-57 and Fig. 2). The Examiner determined that there existed a 4 reasonable likelihood that the Requester would prevail against at least one of 5 the claims subject to this proposed ground of rejection. (See Determination 6 5-7). 7 The Patent Owner argues that the Requester failed to preserve the 8 proposed rejection of claims 11, 12, 14 and 20 as anticipated under § 102(b) 9 for appeal. More specifically, the Patent Owner argues that the rejection 10 initially adopted and subsequently withdrawn by the Examiner, which forms 11 the basis of the adverse decision the Requester seeks to appeal, is not the 12 same rejection proposed on pages 27-31 of the Request. The Patent Owner 13 asserts that the rejection which the Examiner initially adopted and 14 subsequently withdrew was an anticipation rejection under § 102(b) over the 15 embodiment of Figure 2 of Potteiger I; and that the rejection proposed on 16 pages 27-31 of the Request was a rejection under § 103(a) combining 17 teachings related to the separate embodiments of Figures 1 and 2 of 18 Potteiger I. (See Resp. Br. PO 5-8). 19 The argument is not persuasive. The anticipation rejection which the 20 Examiner determined to raise a reasonable likelihood of prevailing against 21 claims 11, 12, 14 and 20 adopted the “[R]equester’s showing” on pages 27-22 31 of the Request. (Determination 5). Despite the Patent Owner’s argument 23 to the contrary (see Resp. Br. PO 6-7), the most that the Requester admitted 24 in its “Petition under 37 C.F.R. §1.181 for Reconsideration of the 25 Examiner’s Refusal to Consider Rejections Detailed in Third Party 26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 46 Requester’s Original Request for Inter Partes Reexamination,” dated 1 January 8, 2014 (“Petition for Reconsideration”), was that both the 2 Requester and the Examiner might have mislabeled the statutory basis for 3 the rejection proposed by the Requester and initially adopted by the 4 Examiner. (See, e.g., id. at 2, n.1). Under the facts of this proceeding, the 5 Requester is entitled to appeal the Examiner’s final decision not to adopt that 6 proposed rejection. 7 Despite the admission in the Petition for Reconsideration, the 8 Examiner correctly characterized the proposed rejection as one for 9 anticipation under § 102(b). As the Requester points out, the rejection as set 10 forth on pages 27-31 of the Request relied solely on structure depicted in 11 Figure 2 of Potteiger I. (See App. Br. Req’r 4-5 and 6; Reb. Br. Req’r 2). 12 The description of the embodiment of Figure 2 in Potteiger was not self-13 contained. Elements common to the embodiments of Figures 1 and 2 were 14 described only once, in relation to the embodiment of Figure 1. (See App. 15 Br. Req’r 6 and 9 n.5). The Requester’s citation to passages of Potteiger I 16 describing these common features did not imply that the Requester proposed 17 modifying the embodiment of Figure 2 so as to invoke obviousness under 18 § 103(a) rather than anticipation under § 102(b). 19 20 Anticipation by Potteiger I-The Examiner’s Withdrawal of the Rejection 21 During the reexamination proceeding, the Patent Owner argued that 22 Potteiger I failed to disclose “a laser module within said housing” as recited 23 in claim 1. (See “Amendment A and Response to Non-Final Action” dated 24 January 18, 2013, at 14-16). The Requester responded by arguing that this 25 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 47 limitation was satisfied in the embodiment of Figure 1. (“Third Party 1 Requester’s Comments after Patent Owner’s Response under 37 C.F.R. 2 § 1.947 and M.P.E.P. § 2666.05,” dated February 15, 2013, at 8). In doing 3 so, the Requester proposed a new ground of rejection different from the 4 anticipation rejection proposed in the Request. 5 The Examiner adopted this proposed rejection both with respect to 6 claim 1 and claim 11, even though the claim language that prompted the 7 Requester to propose the rejection did not appear in claim 11. The Examiner 8 also determined that that there existed a reasonable likelihood that the 9 Requester would prevail against at least one of claims 1, 2, 4, 10-12, 14 and 10 20 based on the proposed new rejection invoking the embodiment depicted 11 in Figure 1 of Potteiger I. (See April 2013 Office Action 5). 12 Claim 11, from which claims 12, 14 and 20 depend, recites a 13 therapeutic laser system in which “a distal end of [a] fiber project[s] from 14 within said casing to the exterior of the casing.” The Examiner found that 15 “the fiber in Potteiger [I] terminates in the optical connector, which is 16 located within the bounds of the baseplate/casing[;] thus it would not be fair 17 to state that the fiber is ‘projecting from within said casing to the exterior of 18 said casing.’” (RAN 6). On the basis of this finding, the Examiner 19 withdrew the new ground of rejection of claims 11, 12, 14 and 20 under 20 § 102(b) based on Figure 1 of Potteiger I. (See RAN 5-6). The Examiner 21 made no other findings to support withdrawal of the rejection. 22 The Examiner’s finding the “the fiber in Potteiger [I] terminates in the 23 optical connector, which is located within the bounds of the baseplate 24 /casing,” is correct with respect to the embodiment of Figure 1 of Potteiger I. 25 (See Potteiger I, col. 3, ll. 18-23). The finding is not correct with respect to 26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 48 the embodiment of Figure 2 of Potteiger I. As noted earlier, we find that 1 Figure 2 of Potteiger I depicts a combination of a laser module 10 and a 2 package housing 60. (See Potteiger I, col. 3, ll. 54-57 and Fig. 2). The laser 3 module 10 includes a solid state laser 12, an optical connector 18 and an 4 optical fiber 16 extending from the laser 12 at a proximal end to the optical 5 connector 18 at a distal end. (See Potteiger I, col. 5, ll. 6-8; see also id., col. 6 2, l. 63 - col. 3, l. 2). 7 The package housing 60 includes a first segment 62 and a second 8 segment 64 joined to the first segment by an integral hinge 66. (See 9 Potteiger I, col. 3, ll. 54-60). The first segment 62 of the package housing 10 60 of Potteiger I included a hub 68 surrounded by a groove 70 for receiving 11 a spool 22. (Potteiger I, col. 3, l. 65 - col. 4, l. 6). The first segment 62 also 12 included a closure protrusion 78 encompassing the hub 68 and the groove 13 70. The second segment 64 include a mating closure groove 79 for 14 receiving the closure protrusion 78 to releasably lock the second segment 64 15 in place over the first segment 62 so as to secure the spool 22 between the 16 two segments. (Potteiger I, col. 4, ll. 46-56; see also id., col. 5, ll. 40-44). 17 The package housing 60 as depicted in Figure 2 of Potteiger I includes feed-18 through ports 80 embodied as gaps through the closure protrusion 78 of the 19 first segment 62. (Potteiger I, col. 4, ll. 57-61). When the laser module 10 20 is positioned in the package housing 60, the two ends of the optical fiber 16 21 project from within the package housing, through the feed-through ports 80, 22 to the exterior of the package housing. (Potteiger I, col. 5, ll. 6-17). In fact, 23 as the Requester points out (see Reb. Br. Req’r 4), the Patent Owner does 24 not appear to dispute the Requester’s assertion that the embodiment depicted 25 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 49 in Figure 2 of Potteiger I includes “a distal end of [a] fiber projecting from 1 within said casing to the exterior of the casing.” 2 3 Anticipation by Potteiger I-Additional Arguments by the Patent Owner 4 The sole finding which prompted the Examiner to withdraw the 5 anticipation rejection of claims 11, 12, 14 and 20 is not correct, at least with 6 respect to the embodiment shown in Figure 2 of Potteiger. That said, the 7 Patent Owner advances additional arguments in support of the Examiner’s 8 decision not to adopt the anticipation rejection. Cf. Rexnord Indus. LLC v. 9 Kappos, 705 F.3d 1347, 1355-56 (Fed. Cir. 2013)(“On judicial review, the 10 correctness of the decision appealed from can be defended by the appellee 11 on any ground that is supported by the record, whether or not the appellant 12 raised the argument.”). Independent claim 11 is representative for purposes 13 of the anticipation rejection. 14 The Patent Owner argues that the embodiment of Figure 2 is not a 15 “therapeutic laser system useful in medicine or dentistry” as recited in the 16 preamble of claim 11. (See Resp. Br. PO 9). We interpret the phrase “laser 17 system useful in medicine or dentistry” as recited in the preamble of claim 18 11 in the same manner that we interpreted the phrase as recited in the 19 preamble of claim 1. Although Potteiger I does not expressly identify the 20 laser module 10 depicted in Figure 2, we find that the Laser 2000 Module 21 manufactured by Lucent Technologies of Murray Hill, New Jersey is the 22 only laser module named in Potteiger I. (Potteiger I, col. 2, ll. 54-55; see 23 also id., col. 1, ll. 37-40). One may draw a reasonable inference that the 24 laser module 10 depicted in the combination of Figure 2 is a Laser 2000 25 Module. In other words, Figure 2 of Potteiger I and the accompanying text 26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 50 would have put one of ordinary skill in the art in possession of the package 1 housing 60 with a Laser 2000 Module therein. Extrapolating the Examiner’s 2 findings with respect to the anticipation of claim 1, the laser system depicted 3 in Figure 2 of Potteiger I satisfies the preamble of claim 11 because it 4 includes a solid state laser 12 and an optical fiber 16 satisfying the 5 limitations recited in the body of claim 11 which define the use recited in the 6 preamble. (See RAN 10). 7 The Patent Owner’s arguments in support of its contention that the 8 embodiment of Figure 2 of Potteiger I is not a “laser system useful in 9 medicine or dentistry” are not persuasive here for the same reasons that the 10 arguments were not persuasive as applied to claim 1. Likewise, the Graeber 11 and Koceja Declarations fail to persuade us that the embodiment of Figure 2 12 is not a therapeutic laser system capable of use in medicine or dentistry. 13 The Patent Owner also argues that the embodiment of Figure 2 lacks 14 “a fiber storage module, further comprising a module housing attachable and 15 detachable from the casing and having a volume sufficient to store 16 significant amounts of extra fiber,” as recited in claim 11. (See Resp. Br. 17 PO 10). Figure 2 of Potteiger I depicts a laser system including a spool 22 18 having an outer casing including a cylindrical wall 38 and a segmented 19 flange 39. The outer casing is attachable to, and removable from, the 20 baseplate 20 by means of locking tabs 42. (See id. (“Patent Owner 21 acknowledges that spool 22 is removable from package housing 60.”); see 22 also Potteiger I, col. 3, ll. 26-30; col. 3, l. 65 - col. 4, l. 14; and Fig. 2). The 23 spool 22 is configured to store amounts of fiber that are “extra” in the sense 24 that the spool includes the cylindrical wall 38, about which the extra fiber 25 may be wound. (See Potteiger I, col. 3, ll. 26-30). Claim 11, like claim 1, is 26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 51 not limited to a laser system including a fiber module able to store extra 1 amounts of fiber without human assistance when removed from the housing. 2 This argument as applied to claim 11 is not persuasive for the same reasons 3 that the argument was not persuasive as applied to claim 1. 4 Finally, the Patent Owner argues that the embodiment depicted in 5 Figure 2 of Potteiger I lacks “a handpiece . . . adapted for gripping by a 6 human hand” as recited in claim 11. (See Resp. Br. PO 11). The Requester 7 argues that the optical connector 18 depicted in Figure 2 is such a handpiece. 8 (See Reb. Br. Req’r 8-9; see also Request 36; April 2013 Office Action 5). 9 The Patent Owner concedes that the optical connector 18 is susceptible of 10 being gripped. (See Resp. Br. PO 12 (“Optical connector 18 is a good 11 example of something that is capable of being gripped, but is not designed 12 or constructed for gripping by a human hand.”)). 13 Nevertheless, citing the passage at column 5, lines 23-36 of the ’116 14 patent, along with In re Giannelli, 739 F.3d 1375 (Fed. Cir. 2014), the 15 Patent Owner argues that “the term ‘adapted for’ in claim 11 should be 16 construed to mean ‘designed or constructed’ to accomplish the recited 17 function (gripping by a human hand) and not merely capable of the recited 18 function.” (Resp. Br. PO 11). 19 In Giannelli, our reviewing court recognized that the words “adapted 20 to” may denote “capable of” as well as “made to” or “designed to.” See id. 21 at 1379. In this instance, “capable of” is a broader reasonable interpretation 22 than “designed to” or “constructed to.” The passage of the ’116 patent cited 23 by the Patent Owner as evidence that the recitation “handpiece . . .adapted 24 for gripping by a human hand” is limited to a handpiece “designed to” or 25 “constructed to” be gripped describes a particular handpiece 107 (601) as 26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 52 being “ergonomically designed to ensure a firm grip, user comfort, and 1 maximum manual dexterity and maneuverability during use[.]” (Resp. Br. 2 PO 11, citing ’116 patent, col. 5, ll. 23-36). The passage neither formally 3 defines the words “adapted to” nor expresses a clear intent to limit the scope 4 of the rights defined by the claims. See In re ICON Health & Fitness, Inc., 5 496 F.3d 1374, 1379 (Fed. Cir. 2007). 6 Claim 33 depends from claim 11 and further defines the recited 7 handpiece as “adapted for being ergonomically and firmly gripped by an 8 adult human hand.” Were we to import the passage cited by the Patent 9 Owner into our interpretation of claim 11, claim 33 would be superfluous. 10 In order to give meaning and effect to claim 33 (which the Requester 11 proposes rejecting over the combined teachings of Potteiger I and 12 LaserSmile rather than over the description of Figure 2 in Potteiger I alone), 13 we must interpret the phrase “adapted for gripping by a human hand” recited 14 in claim 11 more broadly as encompassing handpieces susceptible of being 15 gripped. See Phillips v. AWH Corp., 415 F.3d 1303, 1314-15 (Fed. Cir. 16 2005)(en banc). This consideration is more persuasive as to the scope of the 17 phrase “adapted for gripping by a human hand” than the passage cited by the 18 Patent Owner describing one particular handpiece suitable for use in the 19 claimed laser system. 20 The Patent Owner does not dispute that the optical connector 18 21 depicted in Figure 2 of Potteiger I is susceptible of being gripped. 22 Therefore, the optical connector 18 satisfies the limitation “adapted for 23 gripping by a human hand.” The Requester has shown that claims 11, 12, 14 24 and 20 should be rejected under § 102(b) as being anticipated by Potteiger I 25 for the reasons given on pages 32-37 of the Request and the third page 26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 53 through the sixth page of Appendix A to the Request. Pursuant to 37 C.F.R. 1 § 41.77, we enter new grounds of rejection against claims 11, 12, 14 and 20 2 under § 103(a) as being anticipated by Potteiger I. 3 4 Obviousness over Potteiger I and Lawhon 5 One of ordinary skill in the art would have had reason to replace the 6 spool 22 depicted in Figure 2 of Potteiger I with a package similar to the 7 package 10 described by Lawhon. (See RAN 14). Potteiger I criticizes the 8 spool 22 as depicted in Figure 1 because the fiber might slip off the end of 9 the cylindrical wall 38 opposite the segmented flange 39 while the spool is 10 being attached to the baseplate 20 unless the fiber is held in place by the 11 dexterous application of a user’s fingers. (Potteiger I, col. 3, ll. 45-51). The 12 same criticism applies to the spool 22 depicted in Figure 2 of Potteiger I. 13 Potteiger I does not teach providing the spool 22 depicted in Figure 2 with 14 any structural barrier to prevent the fiber from slipping off the free end of 15 the spool. Instead, the first segment 62 of the package housing 60 of Figure 16 2 includes finger depressions 76 providing room for the user’s fingers to 17 continue to hold the fiber 16 on the spool 22 as the spool is positioned on the 18 hub 68. (See Potteiger I, col. 4, ll. 37-45). 19 Lawhon’s package 10 does not suffer from this deficiency. The 20 substitution of Lawhon’s package 10 for the spool 22 in the support 21 assembly depicted in Figure 1 of Potteiger I would have addressed the 22 criticism of Potteiger I regarding the likelihood of the fiber falling off the 23 spool when not attached to the first segment 62 of the package housing 60. 24 The Patent Owner argues that Potteiger I teaches away from making 25 the proposed substitution. More specifically, the Patent Owner argues that 26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 54 one of ordinary skill in the art would have been discouraged from making 1 the proposed substitution because the substitution would have allowed the 2 fiber to easily unwind from the substituted package so as to extend beyond 3 the perimeter of the package housing 60, thereby increasing the likelihood 4 that the fiber would be damaged during testing or shipping. (See Resp. Br. 5 PO 12-13). The Patent Owner also argues that one of ordinary skill would 6 have been discouraged from making the proposed substitution because a 7 user could not have removed the fiber completely from the substituted 8 package. This, it is asserted, would have prevented a user from recycling the 9 entire support assembly to the manufacturer. (See App. Br. PO 13). These 10 argument are not persuasive as to the patentability of claim 11 for the same 11 reasons that they were not persuasive as to the patentability of claim 1. 12 13 Obviousness over Potteiger I and LaserSmile 14 The Examiner initially determined that there existed a reasonable 15 likelihood that the Requester would prevail against at least one of claims 11, 16 12, 14, 15, 20 and 21 under § 103(a) based on the combined teachings of 17 Potteiger I and LaserSmile. (See Determination 8). The Examiner withdrew 18 the ground of rejection in the RAN. (See RAN 17). The Requester appeals 19 the Examiner’s decision not to adopt the proposed rejection of claims 11, 12, 20 14, 20, 21, 23, 33, 39, 41, 46 and 47 as being unpatentable over Potteiger I 21 and LaserSmile (Notice of Appeal, dated January 9, 2014, at 2; see also 22 App. Br. Req’r 3), but does not suggest any persuasive reason in the Appeal 23 Brief or the Reply Brief why the Examiner might have erred in withdrawing 24 the rejection. In doing so, the Requester has waived its opportunity to 25 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 55 present its own arguments opposing the Examiner’s withdrawal of this 1 ground of rejection. See 37 C.F.R. § 41.57 (c)(1)(vii). 2 Nevertheless, the public retains an interest in this proceeding in 3 having the Patent and Trademark Office determine the patentability of the 4 appealed claims over the prior art cited by the Requester. We have the 5 discretion to enter a new ground of rejection, pursuant to 37 C.F.R. 6 § 41.77(b), based on the Requester’s arguments and the Examiner’s 7 reasoning in support of the rejection of claim 1 under §103(a) over Potteiger 8 I and LaserSmile. We exercise this discretion so as to treat claim 11 and the 9 other claims subject to the appeal in a manner consistent with our treatment 10 of claim 1 and the other claims subject to the cross-appeal. To the extent 11 that the Patent Owner may have relied on the silence of the Requester’s 12 briefs in not addressing this ground of rejection, the procedures set forth in 13 37 C.F.R. § 41.77 will adequately protect the Patent Owner’s rights to notice 14 and to respond. 15 As we found earlier, LaserSmile describes a soft-tissue and whitening 16 laser system. The system as depicted on the fourth page and the last page of 17 LaserSmile includes a housing; a fiber; a spool on a side of the housing for 18 receiving the fiber; a control panel on the front of the housing; and a 19 handpiece coupled to a distal end of the fiber. The last page of the reference 20 provides specifications for a “LASERSMILE™ Soft-Tissue Diode Laser” and a 21 “LASERSMILE™ Whitening Handpiece,” the latter including a “Fiber Cable 22 Length,” indicating that the laser system includes a semiconductor laser 23 diode, a fiber and a whitening handpiece. 24 The Examiner found in connection with the rejection of claim 1 that 25 one of ordinary skill in the art would have had reason to substitute a 26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 56 removably attachable spool similar the spool 22 described by Potteiger I for 1 the spool on the side of the laser system depicted in LaserSmile. (See RAN 2 18). A similar finding applies here. This mere substitution would have 3 required only minor modification of the housing of the laser system depicted 4 in LaserSmile (such as the addition of slots or depressions for engaging 5 locking tabs 42 of the spool 22). (See RAN 20 (“[T]he mere substitution of 6 the Potteiger spool would not [have] amount[ed] to a complex mechanical 7 reconfiguration and would have been well within the skill of those in the art 8 at the time of the invention.”)). The teachings of Potteiger I would have 9 provided one of ordinary skill sufficient guidance to implement the 10 necessary modifications. The Patent Owner has not identified any 11 unpredictable results which the substitution might have yielded. 12 The Examiner withdrew the rejection of claim 11 over the teachings 13 of Potteiger I and LaserSmile in the RAN. (See RAN 17; see also RAN 5-14 6). Claim 11, from which claims 12, 14 and 20 depend, recites a therapeutic 15 laser system in which “a distal end of [a] fiber project[s] from within said 16 casing to the exterior of the casing.” In finding that Potteiger I alone did not 17 anticipate claim 11, the Examiner found that “the fiber in Potteiger 18 terminates in the optical connector, which is located within the bounds of the 19 baseplate/casing[;] thus it would not be fair to state that the fiber is 20 ‘projecting from within said casing to the exterior of said casing.’” (RAN 21 6). The Examiner reiterated this finding when withdrawing the rejection 22 over Potteiger I and LaserSmile. (See RAN 17). In addition, the Examiner 23 adopted the Patent Owner’s argument that “LaserSmile contains no 24 disclosure of any fiber located within the device to which the Potteiger [I] 25 spool would be attached. Instead, the only fiber disclosed in LaserSmile . . . 26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 57 is clearly located completely outside the LaserSmile System.” 1 (“Amendment C and Response to Action Closing Prosecution,” dated Sept. 2 27, 2013, at 22; see also RAN 17). 3 The Examiner’s finding, and the Patent Owner’s argument, are not 4 persuasive. The last page of LaserSmile describes the laser medium used in 5 the LaserSmile system as including a semiconductor laser diode. No such 6 laser diode is visible on the exterior of the housing or casing of the 7 LaserSmile system in the photographs appearing on the fourth and last pages 8 of LaserSmile. Nevertheless, a reasonable inference may be drawn that the 9 semiconductor laser diode is inside the housing. An optical fiber appears to 10 project from within the casing to the exterior of the casing through a strain 11 relief on the front panel of the casing, below the grey control panel. 12 Although the photocopy of LaserSmile attached to the Request is not 13 altogether clear, a reasonable inference may be drawn that the optical fiber 14 wraps around the spool on the side of the casing and extends to the 15 handpiece, which receives the fiber distal end. 16 We enter new grounds of rejection against claims 11, 12, 14, 20, 23, 17 33, 41, 46 and 47 under § 103(a) as being unpatentable over Potteiger I and 18 LaserSmile. Because the Patent Owner argues the patentability of claims 26, 19 27, 29, 34, 37 and 57 solely based on the patentability of claim 11 (see Resp. 20 Br. PO 13), we enter new grounds of rejection pursuant to 37 C.F.R. 21 § 41.77(b) against claim 26 under § 103(a) as being unpatentable over 22 Potteiger I and Baer; against claim 27 under § 103(a) as being unpatentable 23 over Potteiger I, Baer and Uejima; against claim 29 under § 103(a) as being 24 unpatentable over Potteiger I and Synrad; against claim 34 under § 103(a) as 25 being unpatentable over Potteiger I, LaserSmile and August 2003 26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 58 WATERLASE Internet Capture; against claim 37 under 103(a) as being 1 unpatentable over Potteiger I, LaserSmile and February 2002 WATERLASE 2 Press Release; and against claim 57 under § 103(a) as being unpatentable 3 over Potteiger I and Patterson. 4 5 The Proposed Rejection of Claim 21 under § 103(a) as being unpatentable 6 over Potteiger I and LaserSmile 7 The Patent Owner separately argues the rejection of claim 21 under 8 § 103(a) as being unpatentable over Potteiger I and LaserSmile. Claim 21 9 recites the laser system of claim 11 “further comprising a fiber tip, said fiber 10 tip being attachable to said handpiece and optically coupled to said fiber 11 distal end, said fiber tip serving to determine angular orientation of laser 12 light emitted by said fiber distal end with respect to said handpiece.” The 13 Requester argues that a flared, distal end of a whitening handpiece depicted 14 on the second page of LaserSmile includes a “fiber tip” satisfying the 15 additional limitations of claim 21. (See Reb. Br. Req’r 10). 16 The Requester defines a “tip” as “a small piece or part serving as an 17 end.” (MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY (Merriam-Webster, 18 Inc., 11th edition 2003)(“tip,” entry 4, def. 2)(“a small piece or part serving 19 as an end, cap or point”); see also Reb. Br. Req’r 10; July 2013 Req’r 20 Comm. 25). The Patent Owner argues that the flared, distal end of the 21 whitening handpiece depicted in LaserSmile is not a “fiber tip” because it is 22 not small relative to the remainder of the handpiece. (See Resp. Br. PO 14). 23 Alternatively, the Patent Owner seeks to define a “tip” as “a pointed end of 24 something.” (See Resp. Br. PO 14; see also MERRIAM-WEBSTER’S 25 COLLEGIATE DICTIONARY (“tip,” entry 4, def. 1)(“a usu[ally] pointed end of 26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 59 something”)). The Patent Owner argues that the flared, distal end of the 1 whitening handpiece is not pointed. 2 The Patent Owner’s argument that “fiber tip” recited in claim 21 must 3 be pointed is not persuasive. The written description of the ’116 patent does 4 not define the term “fiber tip.” Neither does the Patent Owner allege that the 5 noun “tip” has a technical meaning different from the meaning that an 6 ordinary layman would have attributed to the noun. The Patent Owner 7 argues the interpretation of the term “fiber tip” solely on the basis of the 8 definitions in the general-purpose dictionary cited by the Requester. 9 The noun “small” does not appear in claim 21; and is not used to 10 describe a fiber tip in the written description of the ’116 patent. The ’116 11 patent does not suggest that the size of the fiber tip plays any role in the 12 claimed subject matter which might illuminate how small such a fiber tip 13 might have to be to satisfy the limitation of claim 21. Nothing in the ’116 14 patent indicates that the term “fiber tip” is limited to a structure which is 15 small relative to the remainder of the handpiece. As a consequence, nothing 16 in the ’116 patent suggests how small a fiber tip must be compared to the 17 handpiece as a whole. We find that the flared, distal end of the whitening 18 handpiece depicted on the second page of LaserSmile is small relative to the 19 handpiece as a whole in the sense that it is no longer than the remaining 20 portion of the handle. 21 Furthermore, both of the cited dictionary definitions identify 22 pointedness as an optional feature of a “tip.” The first definition states that a 23 “tip” is “a usu[ally] pointed end of something;” and the second definition 24 identifies a “tip” as “a small piece or part serving as an end, cap or point.” 25 (MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY (italics added for 26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 60 emphasis)). Although tip 606 appearing in Figure 6a and the tips 753a-e 1 appearing in Figure 6b appear to be pointed, the ’116 patent does not include 2 any statement describing the tips as such. Therefore, the absence of a point 3 at the distal end of the whitening handpiece does not preclude the flared, 4 distal end of the handpiece from being a “fiber tip.” 5 The flared, distal portion of the whitening handpiece depicted on the 6 second page of LaserSmile is a “fiber tip” as recited in claim 21. We enter 7 new grounds of rejection pursuant to 37 C.F.R. § 41.77(b) against claim 21 8 under § 103(a) as being unpatentable over Potteiger I and LaserSmile. 9 10 The Proposed Rejection of Claim 39 under § 103(a) as being unpatentable 11 over Potteiger I and LaserSmile 12 The Patent Owner separately argues the rejection of claim 39 under 13 § 103(a) as being unpatentable over Potteiger I and LaserSmile. Claim 39 14 recites the laser system of claim 11 in which the casing includes “an 15 electronic display panel configured to enable electronic adjustments of . . . 16 continuous wave operation selection [and] pulse operation selection.” The 17 Requester’s arguments regarding similar language in claim 38, as well as the 18 Examiner’s reasoning connected with that claim, are not persuasive for the 19 reasons discussed earlier. The Requester has not made any additional 20 arguments unique to claim 39. On this basis, we sustain the Examiner’s 21 decision not to reject claim 39 under § 103(a) as being unpatentable over 22 Potteiger I and LaserSmile. 23 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 61 The Rejection of Claims 48-51 under § 103(a) as being unpatentable over 1 Potteiger I, LaserSmile and LFS-498 Manual-The LFS-498 Manual as a 2 Printed Publication 3 Claims 48 and 49 depend from claim 2, which depends from claim 1. 4 Claims 50 and 51 depend from claim 12, which depends from claim 11. 5 Claim 48 is representative of claims 48-51 for purposes of this proposed 6 ground of rejection. Most pertinently, claim 48 recites a laser system in 7 which “said fiber module is configured to store said fiber in place on [a] 8 fiber holder in said spooled state independently of outside assistance while 9 said fiber module outer casing is removed from said housing.” The 10 Examiner withdrew the rejection of claims 48-51 in the RAN on the basis 11 that the LFS-498 Manual was not a printed publication as of the effective 12 filing date of the ’116 patent. (See RAN 46). 13 “Because there are many ways in which a 14 reference may be disseminated to the interested 15 public, ‘public accessibility’ has been called the 16 touchstone in determining whether a reference 17 constitutes a ‘printed publication’ bar under 35 18 U.S.C. § 102(b).” In re Hall, 781 F.2d 897, 898-19 99 (Fed. Cir. 1986) (emphasis added). “A given 20 reference is ‘publicly accessible’ upon a 21 satisfactory showing that such a document has 22 been disseminated or otherwise made available to 23 the extent that persons interested and ordinarily 24 skilled in the subject matter or art exercising 25 reasonable diligence, can locate it.” Bruckelmyer 26 v. Ground Heaters, Inc., 445 F.3d 1374, 1378 27 (Fed. Cir. 2006). “The decision whether a 28 particular reference is a printed publication ‘must 29 be approached on a case-by-case basis.’” In re 30 Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989). 31 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 62 SRI Int’l, Inc. v. Internet Security Sys., Inc., 511 F.3d 1186, 1194-95 (Fed. 1 Cir. 2008). Although the ultimate question whether a document is a printed 2 publication is one of law, the party advocating the printed publication bar 3 must establish a factual underpinning by a preponderance of the evidence. 4 See Cooper Cameron Corp. v. Kvaerner Oilfield Prods., Inc., 291 F.3d 5 1317, 1321 (Fed. Cir. 2002); Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 6 (Fed. Cir. 1988)(explaining that the standard of proof in a reexamination 7 proceeding is by a preponderance of the evidence). 8 The Requester has shown by a preponderance of the evidence that the 9 LFS-498 Manual was made publically accessible through a technical library 10 on an Internet site maintained by ILX Lightwave. The Requester’s showing 11 depends on the disclosure of the LFS-498 Manual itself, along with three 12 Internet captures attached as exhibits to the Requester’s Appeal Brief. 13 The LFS-498 Manual itself bears the date “25 September, 2001.” The 14 LFS-498 Manual includes instructions for installing an LFS-498 Fiber Spool 15 on an LDM-4980 series mount using hold-down clips. 16 Exhibit C to the Requester’s Appeal Brief is a page from the 17 “Products” section of an ILX Lightwave Internet site, dated December 17, 18 2001. The page bears the title, “Optical Test and Measurement 19 Instruments.” The page includes a link, under the heading “Accessories,” 20 bearing the title, “LFS-498 Fiber Management Spool.” Other headings 21 include “Laser Diode Controller,” “Laser Diode Current Sources,” “Laser 22 Diode Mounts,” “Fiber Optic Test Systems” and “Fiber Optic Instruments.” 23 Exhibit D to the Requester’s Appeal Brief is another page from the 24 “Products” section of the ILX Lightwave Internet site. The page is dated 25 February 19, 2002 and includes a caption, “Last modified on Monday, 03-26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 63 Dec-2001 13:27:26 PST.” The page bears the title “LFS-498 Fiber 1 Management Spool Overview” and includes a photograph of the spool. The 2 words “Ordering Information LFS-498 Laser Fiber Spool” appear near the 3 bottom of the page. 4 Exhibit E to the Requester’s Appeal Brief is a page from the 5 “Support” section of the ILX Lightwave Internet site, dated October 21, 6 2001. The following statement appears near the top of the page: 7 Product and Application Documentation 8 Comprehensive manuals that document the 9 product[s’] operation, hardware and software 10 (where applicable) are available for each ILX 11 product. 12 The documents submitted by the Requester demonstrate that, in or 13 around the end of 2001, ILX Lightwave was engaged in the business of 14 selling and servicing optical test and measurement instruments, including 15 instruments employing laser diodes and optical fibers. The documents also 16 demonstrate that, in or around the end of 2001, ILX Lightwave maintained 17 an Internet site. One of ordinary skill in the art seeking information 18 concerning the management of optical fibers could have consulted the ILX 19 Lightwave Internet site. 20 The documents also demonstrate that, as of December 2001, ILX 21 Lightwave advertised the LFS-498 Fiber Management System through the 22 Internet site. One of ordinary skill in the art consulting the Internet site 23 maintained by ILX Lightwave seeking information regarding the 24 management of optical fibers would have been able to find the LFS-498 25 Fiber Management System (also identified as the LFS-498 Laser Fiber 26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 64 Spool); and could have identified the LFS-498 Laser Fiber Spool as an 1 example of a fiber management system. (See App. Br. Req’r 23-24). 2 The LFS-498 Manual is a manual providing instructions for installing 3 the LFS-498 Fiber Spool. The LFS-498 Manual bears the date “25 4 September, 2001,” indicating that it was in existence as of that date. The 5 documents submitted by the Requester stated that “[c]omprehensive manuals 6 that document the product[s’] operation, hardware and software (where 7 applicable) are available for each ILX product.” Having identified the LFS-8 498 Fiber Spool as an example of a fiber management system, one of 9 ordinary skill in the art seeking information regarding the management of 10 optical fibers could have contacted ILX Lightwave and obtain a copy of 11 literature regarding the LFS-498 Laser Fiber Management System (including 12 the LFS-498 Manual), either through the online technical library maintained 13 by ILX Lightwave or by other means. In this manner, one of ordinary skill 14 in the art seeking information concerning the management of optical fibers 15 would have been able to locate the LFS-498 Manual through the exercise of 16 reasonable diligence. In other words, the documents show that the LFS-498 17 Manual was publically accessible in or around the end of 2001. (See App. 18 Br. Req’r 24). 19 The Examiner finds that “none of the evidence submitted establishes 20 proof of sale, and while there is evidence to support the notion that the 21 manual was ‘available for each ILX product,’ there is no conclusive 22 evidence to establish that the manuals accompanied the . . . purportedly sold 23 products.” (RAN 46). Based on this finding, the Examiner concludes that 24 the “Patent Owner’s arguments are persuasive that the evidence fails to 25 establish that the LFS-[498] [M]anual was publically disseminated, i.e. 26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 65 published on the date in question.” (Id.) There are decisions holding that 1 one may establish that an insert included with a product offered for sale to 2 the public was a printed publication by showing that significant numbers of 3 the product were distributed to the public before the critical date of the 4 patent at issue. See, e.g., Stored Value Solutions, Inc. v. Card Activation 5 Techs., Inc., 796 F. Supp. 2d 520 (D. Del. 2011), aff’d 499 Fed. Appx. 5 6 (Fed. Cir. 2012); Tampax Inc. v. Personal Prods. Corp., 38 F. Supp. 663 7 (E.D.N.Y. 1941), aff’d, 123 F.2d 722 (2d Cir.), cert. denied, 316 U.S. 665 8 (1942). This scenario is not the only manner in which a document may be 9 proven to be a printed publication, however. In the present case, public 10 accessibility is established by showing that one of ordinary skill seeking 11 information concerning the management of optical fibers could have 12 identified the LFS-498 Laser Fiber Management System and obtained 13 documents regarding the system from ILX Lightwave exercising only 14 reasonable diligence. 15 16 The Rejection of Claims 48-51 under § 103(a) as being unpatentable over 17 Potteiger I, LaserSmile and LFS-498 Manual-“said fiber module is 18 configured to store said fiber in place on said fiber holder in said spooled 19 state independently of outside assistance while said fiber module outer 20 casing is removed from said housing” 21 The proposed rejection of representative claim 48 is explained on 22 pages 32-38 of the July 2013 Requester Comments. Figure 4 of the LFS-23 498 Manual depicts the LFS-498 Laser Fiber Management System as 24 comprising a disk having an approximately square, central aperture and a slit 25 extending from the central aperture to the edge of the disk. The LFS-498 26 Laser Fiber Management System also includes hold-down clips for securing 27 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 66 the LFS-498 spool on a laser diode mount (see July 2013 Req’r Comm. 33) 1 and fiber retaining clips for receiving fiber (see July 2013 Req’r Comm. 34). 2 The diode mount depicted in Figures 1 and 2 of the LFS-498 Manual 3 includes a socket designed to receive a laser diode module and a fiber 4 channel extending outwardly from the socket. Figure 2 shows that, when the 5 disk of the LFS-498 Laser Fiber Management System is secured onto the 6 laser diode mount, the central aperture of the disk aligns with the socket and 7 the slit aligns with the fiber channel. This arrangement permits a fiber 8 coupled to the laser module to extend over an exposed, top surface of the 9 disk. 10 Figure 2 of the LFS-498 Manual depicts the fiber retaining clips 11 coupled in an annular pattern about the top surface of the disk. The fiber 12 retaining clips appear to include flexible prongs. The flexible prongs may be 13 separated to receive the fiber and then allowed to relax to capture the fiber in 14 the fiber retaining clips. (See Resp. Br. PO 17). Figure 3 indicates that, 15 when the LFS-498 Laser Fiber Management system is removed from the 16 laser diode mount, the fiber retaining clips remain coupled to the disk in a 17 manner which would permit a fiber captured by the fiber retaining clips to 18 remain wound on the LFS-498 Laser Fiber Management system 19 independently of outside assistance. (See July 2013 Req’r Comm. 34-35). 20 The Requester argues that the LFS-498 Manual “provides details on fiber 21 retaining clips that could be implemented on the spool 22 of Potteiger [I], 22 such that the spool 22 of Potteiger [I] could be enhanced with a ‘physical 23 barrier that prohibits the wound optical fiber 16 from falling off’ the spool 24 22.” (July 2013 Req’r Comm. 35, quoting Potteiger I, col. 3, ll. 47-48). 25 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 67 The Patent Owner argues that the combined teachings of Potteiger I, 1 LaserSmile and the LFS-498 Manual would not have suggested a laser 2 system in which “said fiber module is configured to store said fiber in place 3 on said fiber holder in said spooled state independently of outside assistance 4 while said fiber module outer casing is removed from said housing.” More 5 specifically, the Patent Owner argues that: 6 In order to retain fiber on the spool 22 of Potteiger 7 [I] using the clips disclosed in LFS-498, the fiber 8 retaining clips would either need to be placed 1) on 9 the segmented flange 39 of the spool 22 facing the 10 outer casing of the LaserSmile System (such that 11 the open end of the retaining clips would face 12 toward the exterior casing of LaserSmile) or 2) in 13 adjacent positions on the cylindrical wall 38 of the 14 spool 22 (such that the open end of the retaining 15 clips would face radially outward from the 16 cylindrical wall 38 of the spool 22). 17 (Resp. Br. PO 17-18). The Requester correctly points out in its Rebuttal 18 Brief that: 19 The segmented flange 39 and the LFS-498 prongs 20 perform the same function, retaining fiber. Thus, 21 one of ordinary skill in the art would [have] 22 consider[ed] it obvious to omit the segmented 23 flange 39 of Potteiger [I] or to form it so that it 24 [did] not get in the way of access to the LFS-498 25 prongs when LFS-498 prongs [were] used. 26 (Reb. Br. Req’r 16). In view of this argument, representative claim 48 27 should have been rejected under § 103(a). We enter new grounds of 28 rejection pursuant to 37 C.F.R. § 41.77(b) against claims 48-51 under 29 § 103(a) as being unpatentable over Potteiger I, LaserSmile and LFS-498 30 Manual. 31 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 68 The Rejection of Claim 53 under § 103(a) as being unpatentable over 1 Potteiger I, Baer, Uejima and Soltz 2 Claim 53 recites the laser system of claim 1 in which the “laser 3 module includes a plurality of individual semiconductor laser chips each 4 capable of producing individual laser light having a wavelength that 5 provides a medical or dental therapeutic effect.” The claim also recites that 6 the “plurality of individual semiconductor laser chips are separate and 7 distinct semiconductor laser chips that are each separated from one another 8 by at least some open space.” Here, as was the case with claim 52, the 9 Patent Owner argues that a laser system including individual semiconductor 10 laser chips separated from one another by at least some “open space” would 11 not have been obvious from the combined teachings of Potteiger I, Baer, 12 Uejima and Soltz. (See Resp. Br. PO 15-16). 13 In interpreting the corresponding language in claim 52, the Examiner 14 concluded that “any separation between the laser chips, would create ‘open 15 space’ between adjacent chips” in accordance with the use of the term “open 16 space” in claim 52. (RAN 38; see also Reb. Br. Req’r 13-15). The Patent 17 Owner argues that the words “open space” includes only individual 18 semiconductor laser chips “separated by some distance that is ‘open’ and not 19 filled with any solid material” (App. Br. PO 27; see also Reb. Br. PO 13). 20 For the reasons discussed in connection with claim 52, both the Examiner’s 21 interpretation and the Patent Owner’s interpretation are reasonable. In the 22 present context, the Examiner’s interpretation is broader. 23 As further discussed in connection with claim 52, Baer describes a 24 laser diode array 10 capable of use in the laser module 10 described in 25 Potteiger I. It would have been obvious to merely substitute Baer’s laser 26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 69 diode array 10 for the solid state laser 12 of Potteiger I. On this basis, we 1 reverse the Examiner’s decision not to adopt the proposed rejection of claim 2 53 under § 103(a) as being unpatentable over Potteiger I, Baer, Uejima and 3 Soltz. 4 5 The Rejection of Claims 55 under § 103(a) as being unpatentable over 6 Potteiger I and Patterson 7 Claim 55 recites the laser system of claim 11 wherein: 8 said fiber stored in said fiber module is a 9 first fiber that includes said fiber distal end, 10 said first fiber further has a first proximal 11 end and a first connector attached to said fiber 12 proximal end of said first fiber; 13 said fiber located in said casing is a second 14 fiber that includes said fiber proximal end, said 15 second fiber further has a second distal end and a 16 second connector attached to said second distal 17 end of said second fiber, and 18 said first connector is configured to receive 19 said laser light from said second connector so that 20 said fiber proximal end of said second fiber can 21 can receive said laser light from said laser module 22 and transport said laser light through said second 23 connector and through said first connector to said 24 fiber distal end of said first fiber. 25 In rejecting claim 54, the Examiner adopted the Requester’s argument 26 that it would have been obvious to have broken the optical fiber 16 depicted 27 in Figure 1 of Potteiger I into two pieces and to have connected the two 28 pieces using first and second optical connectors. (See RAN 39, citing July 29 2013 Req’r Comm. 42-44). That reasoning is not persuasive here just as it 30 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 70 was not persuasive as applied to claim 54. For reasons similar to those given 1 in connection with the rejection of claim 54, we affirm the Examiner’s 2 decision not to reject claim 55 under § 103(a) as being unpatentable over 3 Potteiger I and Patterson. 4 5 DECISION 6 In the Patent Owner’s Cross-Appeal, we AFFIRM the Examiner’s 7 decision to adopt each of the following rejections: 8 claims 1, 2, 4 and 10 under § 102(b) as being anticipated 9 by Potteiger I; 10 claims 1, 2, 4, 5, 10 and 42 under § 103(a) as being 11 unpatentable over Potteiger I and Lawhon; 12 claims 1, 2, 4, 10, 22, 30, 40, 44, 45 and 56 under 13 § 103(a) as being unpatentable over Potteiger I and LaserSmile; 14 claim 24 under § 103(a) as being unpatentable over 15 Potteiger I and Baer; 16 claim 25 under § 103(a) as being unpatentable over 17 Potteiger I, Baer and Uejima; 18 claim 28 under § 103(a) as being unpatentable over 19 Potteiger I and Synrad; 20 claim 31 under § 103(a) as being unpatentable over 21 Potteiger I, LaserSmile and August 2003 Waterlase Internet 22 Capture; 23 claim 36 under 103(a) as being unpatentable over 24 Potteiger I, LaserSmile and February 2002 Waterlase Press 25 Release; and 26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 71 claim 52 under § 103(a) as being unpatentable over 1 Potteiger I, Baer, Uejima and Soltz. 2 We REVERSE the Examiner’s decision to adopt the following rejections: 3 claim 38 under § 103(a) as being unpatentable over 4 Potteiger I and LaserSmile; and 5 claim 54 under § 103(a) as being unpatentable over 6 Potteiger I and Patterson. 7 In the Requester’s Appeal, we AFFIRM the Examiner’s decision not 8 to adopt the following proposed rejections: 9 claim 39 under § 103(a) as being unpatentable over 10 Potteiger I and LaserSmile; and 11 claim 55 under § 103(a) as being unpatentable over 12 Potteiger I and Patterson. 13 As a consequence, we AFFIRM the Examiner’s decision to reject 14 claims 1, 2, 4, 5, 10, 22, 24, 25, 28, 30, 31, 36, 40, 42, 44, 45, 52 and 56. 15 Claims 38, 39, 54 and 55 are not subject to an affirmed ground of rejection 16 or to a new ground of rejection to be entered below. 17 18 NEW GROUNDS OF REJECTION 19 In the Requester’s Appeal, we REVERSE the Examiner’s decision not 20 to adopt the remaining proposed rejections listed in the Requester’s Notice 21 of Appeal. Pursuant to our authority under 37 C.F.R. § 41.77(b), we enter 22 the following new grounds of rejection: 23 claims 11, 12, 14 and 20 under § 102(b) as being 24 anticipated by Potteiger I; 25 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 72 claims 11, 12, 14, 15, 20 and 43 under § 103(a) as being 1 unpatentable over Potteiger I and Lawhon; 2 claims 11, 12, 14, 20, 21, 23, 33, 41, 46 and 47 under 3 § 103(a) as being unpatentable over Potteiger I and LaserSmile; 4 claim 26 under § 103(a) as being unpatentable over 5 Potteiger I and Baer; 6 claim 27 under § 103(a) as being unpatentable over 7 Potteiger I, Baer and Uejima; 8 claim 29 under § 103(a) as being unpatentable over 9 Potteiger I and Synrad; 10 claim 34 under § 103(a) as being unpatentable over 11 Potteiger I, LaserSmile and August 2003 WATERLASE 12 Internet Capture; 13 claim 37 under 103(a) as being unpatentable over 14 Potteiger I, LaserSmile and February 2002 WATERLASE 15 Press Release; 16 claims 48-51 under §103(a) as being unpatentable over 17 Potteiger I, LaserSmile and LFS-498 Manual; 18 claim 53 under § 103(a) as being unpatentable over 19 Potteiger I, Baer, Uejima and Soltz; and 20 claim 57 under § 103(a) as being unpatentable over 21 Potteiger I and Patterson. 22 This decision contains new grounds of rejection pursuant to 37 C.F.R. 23 § 41.77(b), which provides that "[a]ny decision which includes a new 24 ground of rejection pursuant to this paragraph shall not be considered final 25 for judicial review." Correspondingly, no portion of the decision is final for 26 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 73 purposes of judicial review. The Patent Owner or the Requester may request 1 rehearing under 37 C.F.R. § 41.79, if appropriate; however, the Board may 2 elect to defer issuing any decision on such request for rehearing until such 3 time that a final decision on appeal has been issued by the Board. 4 For further guidance on new grounds of rejection, see 37 C.F.R. 5 § 41.77(b)-(g). The decision may become final after it has returned to the 6 Board. 37 C.F.R. § 41.77(f). 7 37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN 8 ONE MONTH FROM THE DATE OF THE DECISION, must exercise one 9 of the following two options with respect to the new grounds of rejection to 10 avoid termination of the appeal as to the rejected claims: 11 (1) Reopen prosecution. The owner may file 12 a response requesting reopening of prosecution 13 before the examiner. Such a response must be 14 either an amendment of the claims so rejected or 15 new evidence relating to the claims so rejected, or 16 both. 17 (2) Request rehearing. The owner may 18 request that the proceeding be reheard under 19 § 41.79 by the Board upon the same record. 20 Any request to reopen prosecution before the examiner under 37 21 C.F.R. § 41.77(b)(1) shall be limited in scope to the "claims so rejected." 22 Accordingly, a request to reopen prosecution is limited to issues raised by 23 the new ground(s) of rejection entered by the Board. A request to reopen 24 prosecution that includes issues other than those raised by the new ground(s) 25 is unlikely to be granted. Furthermore, should the Patent Owner seek to 26 substitute claims, there is a presumption that only one substitute claim would 27 be needed to replace a cancelled claim. 28 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 74 The Requester may file comments in reply to a Patent Owner 1 response. 37 C.F.R. § 41.77(c). The Requester’s comments under 37 C.F.R. 2 § 41.77(c) shall be limited in scope to the issues raised by the Board's 3 opinion reflecting its decision to reject the claims and the patent owner's 4 response under paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed 5 rejection is not permitted as a matter of right. A newly proposed rejection 6 may be appropriate if it is presented to address an amendment and/or new 7 evidence properly submitted by the patent owner, and is presented with a 8 brief explanation as to why the newly proposed rejection is now necessary 9 and why it could not have been presented earlier. 10 Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for 11 all Patent Owner responses and Requester comments, is required. 12 The Examiner, after the Board's entry of a patent owner response and 13 requester comments, will issue a determination under 37 C.F.R. § 41.77(d) 14 as to whether the Board's rejection is maintained or has been overcome. The 15 proceeding will then be returned to the Board together with any comments 16 and reply submitted by the owner and/or requester under 37 C.F.R. 17 § 41.77(e) for reconsideration and issuance of a new decision by the Board 18 as provided by 37 C.F.R. § 41.77(f). 19 20 AFFIRMED-IN-PART; § 41.77(b) 21 Appeal 2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2 75 Patent Owner: CAO GROUP, INC. ATTN: LEGAL DEPARTMENT 4628 W. SKYHAWK DRIVE WEST JORDAN, UT 84084-4501 Third Party Requester: JONES DAY ATTENTION: DAVID COCHRAN NORTH POINT, 901 LAKESIDE AVENUE CLEVELAND, OH 44114