Ex Parte Bierbaum et al

Patent Trial and Appeal Board

Apr 15, 2016

12700367 (P.T.A.B. Apr. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121700,367 02/04/2010
5514 7590 04/15/2016
FITZPATRICK CELLA HARPER & SCINTO
1290 A venue of the Americas
NEW YORK, NY 10104-3800
FIRST NAMED INVENTOR
Thomas Bierbaum
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
01873.400003. 7723
EXAMINER
VAN ROY, TOD THOMAS
ART UNIT PAPER NUMBER
2828
MAILDATE DELIVERY MODE
04/15/2016 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS BIERBAUM, SIEGFRIED GOISSER,
HERMANN LANDGRAF, MATTHIAS REIN,
RALF SUTTER, THOMAS JERGER, and
JOACHIM PEUCKERT
Appeal2014-002668
Application 12/700,367
Technology Center 2800
Before KEN B. BARRETT, DANIEL N. FISHMAN, and
MONICA S. ULLAGADDI, Administrative Patent Judges.
FISHMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
17, 19, 20, and 22-26, all remaining claims of the application. 1 We heard
oral argument on March 24, 2016. We have jurisdiction over the remaining
claims under 35 U.S.C. § 6(b).
1 In this Opinion, we refer to Appellants' Appeal Brief ("App. Br.," filed
July 23, 2013), Appellants' Reply Brief ("Reply Br.," filed November 19,
2013), the Final Office Action ("Final Act.," mailed February 25, 2013), the
Examiner's Answer ("Ans.," mailed on September 19, 2013), and the
original English language Specification ("Spec." filed April 21, 2010).
Appeal2014-002668
Application 12/700,367
We REVERSE.
THE INVENTION
Appellants' invention relates to a control device for a laser handpiece
used, for example, in dental treatments. Spec. 1:5-8. The control device
comprises an upper housing portion and a lower housing portion that form
an annular gap between the two portions. Spec. Abstract. The handpiece
includes an optical waveguide that can be wound around the annular gap.
Id.
Claim 17, reproduced below, is illustrative:
17. A control device for a laser handpiece, comprising:
an optical waveguide;
a housing including a peripherally extending annular gap that
divides the housing into at least a lower housing portion and an upper
housing portion,
wherein the lower housing portion is connected to the upper
housing portion,
wherein the optical waveguide is disposed in the annular gap
between at least part of the lower housing portion and at least part of
the upper housing portion and emerges from an interior of the
housing,
wherein the waveguide can be wound up in the annular gap, and
wherein the optical waveguide leaves the interior of the housing
and is guided to a base of the annular gap without buckling.
THE REJECTIONS
Claims 17 and 23-26 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Boutoussov (US 2008/0181261 Al; July 31, 2008). Final
Act. 2--4.
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Appeal2014-002668
Application 12/700,367
Claims 19 and 22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Boutoussov and Loeb (US 6,331, 178 B 1; December 18,
2001). Final Act. 5.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Boutoussov, Loeb, and Cairns (US 2008/0296426 Al;
December 4, 2008). Final Act. 5-6.
ANALYSIS
The Anticipation Rejection
In rejecting claim 17, the Examiner finds Boutoussov teaches the
recited upper and lower portions of the housing as portions 177 A and 177B
of spool 177 in Figures 21, 24, and 25. Final Act. 3; see also Ans. 2-3. The
Examiner finds the recited annular gap is formed between these two portions
of Boutoussov's spool 177. Id. The Examiner then finds Boutoussov
teaches "wherein the optical waveguide leaves the interior of the housing
and is guided to a base of the annular gap" because Figure 25B shows a
rubber guide that prevents "tangling or buckling." Id.
Appellants contend Boutoussov fails to teach the recited housing, but
further contend, even accepting the Examiner's finding of the recited
housing as Boutoussov's spool 177, Boutoussov fails to disclose that the
optical waveguide exits an interior of the housing and "is guided to a base of
the annular gap," as recited. Br. 4. The Examiner further finds "[t]he area
from which the fiber emerges from the interior of the housing
[(Boutoussov's spool 177)] can be called a base." Ans. 4. Still further the
Examiner finds "[t]he fiber then leaves the interior of the housing through
the base region and is guided to the laser handpiece (fig. 22)." Ans. 4.
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Appeal2014-002668
Application 12/700,367
We agree with Appellants that the Examiner erred.
During examination, claims are given their broadest reasonable
interpretation consistent with the specification, and the language should be
read in light of the specification as it would be interpreted by one of ordinary
skill in the art. In re Amer. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004). The presumption that a term is given its ordinary and
customary meaning may be rebutted by Appellants by clearly setting forth a
different definition of the term in the specification. In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997).
Although we find no use of the term "base of annular gap" in
Appellants' Specification, we find the Examiner's interpretation of the
recited "base" as reading on Boutoussov's teachings, and in particular,
reading the recited "base" on "the area from which the fiber emerges from
the interior of the housing" (Ans. 4) is unreasonable. We find the ordinary
meaning of "base" to be "the bottom or lowest part of something: the part on
which something rests or is supported." Base. (n.d.). Retrieved March 30,
2016, from http://www.merriam-webster.com/dictionary/base. We find
nothing in Boutoussov that indicates that Boutoussov's optical waveguide
17 6, exiting the interior of housing 1 77, is "guided to" any base in a manner
that is consistent with either the Examiner's interpretation or the ordinary
meaning of this term, let alone "guided to a base of the annular gap," as
recited. This is because, whatever the Examiner has identified as the base,
the Examiner's further finding that the fiber of Boutoussov "leaves the
interior of the housing through the base region and is guided to the laser
handpiece" (Ans. 4) is inconsistent with the language of the claim. By
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Appeal2014-002668
Application 12/700,367
contrast, claim 1 7 clearly recites the waveguide is guided to "a base of the
annular gap," not guided to the handpiece as the Examiner indicates.
In view of the above discussion, we do not sustain the Examiner's
rejection of claim 17 as anticipated by Boutoussov. Claims 23-26 depend
from claim 17 (directly or indirectly) and, thus, we do not sustain the
rejection of these claims for the same reason as claim 17.
The Obviousness Rejections
Claims 19, 20, and 22 depend from claim 17 (directly or indirectly)
and the additional references do not cure the above-identified deficiency of
Boutoussov. Thus, for the same reason as claim 17, we do not sustain the
rejection of claims 19, 20, and 22.
DECISION
For the above reasons, the Examiner's decision rejecting claims 17,
19, 20, and 22-26 is reversed.
REVERSED
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