Ex Parte Chin et al

Patent Trial and Appeal Board

Sep 27, 2016

12209170 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/209,170 09/1112008
109610 7590 09/29/2016
Bookoff McAndrews, PLLC
2401 Pennsylvania Avenue, NW, Suite 450
Washington, DC 20037
FIRST NAMED INVENTOR
Yem Chin
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.
11219.0058-01000 3958
EXAMINER
KASZTEJNA, MATTHEW JOHN
ART UNIT PAPER NUMBER
3779
NOTIFICATION DATE DELIVERY MODE
09/29/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
usptomail@bookoffmcandrews.com
Kross@bookoffmcandrews.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YEM CHIN and LOUIS J. BARBATO
Appeal2014-009566
Application 12/209,170
Technology Center 3700
Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Yem Chin and Louis J. Barbato (Appellants) appeal under 35 U.S.C.
§ 134 from the Examiner's decision rejecting claims 1, 4--11, and 13-22. 1
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 The Office Action Summary (PTOL-326) of the Final Action states that
claims "l and 4--22" are rejected. The Appeal Brief also states that "[t]he
rejections of claims 1 and 4--22 are being appealed." Appeal Br. 4.
However, we do not find a rejection of claim 12 in the Final Action.
Appeal2014-009566
Application 12/209,170
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A medical device for illuminating a body cavity of a patient,
compnsmg:
an elongate member having a proximal end that remains
outside the body cavity and a distal end that is insertable into the
body cavity;
a substrate having a first electrode formed thereon;
one or more LEDs that illuminate the body cavity, each of
the one or more LEDs radially surrounding a length of an outer
surface of the elongate member and extending distally of the
substrate and first electrode; and
a heat conductive polymer that is thermally coupled to the
one or more LEDs to dissipate heat from the one or more LEDs.
REJECTIONS
I. Claims 1, 7-11, 13, 16, 19, and 20 stand rejected under
35 U.S.C. § 102(b) as anticipated by Henzler (US
2002/0143239 Al, pub. Oct. 3, 2002).2
II. Claims 4---6, 14, 15, and 17 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Henzler and Shih (US
2004/0196222 Al, pub. Oct. 7, 2004).
III. Claim 18 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Henzler, Shih, and Clark (US 6,613,002 Bl,
iss. Sept. 2, 2003).
2 The Examiner's inclusion of claims 2 and 3 in the statement of this
rejection on page 2 of the Final Action, as well as in the detailed explanation
of the rejection on page 3 of the Final Action, is presumed to be inadvertent
error, as these claims were canceled in the Amendment filed December 19,
2013, and, thus, are not involved in this appeal.
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Application 12/209,170
IV. Claims 1, 21, and 22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over McKenna (US 6,261,226 B 1, iss. July 17,
2001) and Raychaudhuri (US 6,579,629 Bl, iss. June 17, 2003).
DISCUSSION
Re} ection I-Anticipation
Independent claim 1 recites, in relevant part, a medical device
including "one or more LEDs that illuminate the body cavity, each of the
one or more LEDs ... extending distally of the substrate and first electrode."
Appeal Br. 25 (Claims App.). Independent claims 10 and 16 similarly
recite, in relevant part, "each of the one or more LEDs extends distally of an
electrode on the elongate member." Id. at 26, 28 (Claims App.). The
Examiner finds that Henzler discloses "one or more LEDs 15 that illuminate
the body cavity, each of the one or more LEDs ... extending distally of the
substrate and first electrode." Final Act. 2 (citing Henzler, Figs. 1-3, paras.
37-39). The Examiner clarifies in the Answer that Henzler's "bubble 15
clearly extends distally from the substrate and the first electrode." Ans. 6
(citing Henzler, Figs. 1-3).
Appellants argue that Henzler fails to disclose one or more LEDs
extending distally of the electrode, as called for in claims 1, 10, and 16,
because bubble 15 is not an LED. See Appeal Br. 20-22. In particular,
Appellants assert that "Henzler itself recognizes that bubble 15 is not an
LED." Id. at 20 (citing Henzler, para. 38). According to Appellants,
"[b Jubb le 15 is a discrete structure through which light emitted by an LED
travels." Id. For the reasons that follow, Appellants' argument is persuasive
of error in the anticipation rejection.
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Application 12/209,170
Paragraph 38 of Henzler discloses:
The light ring is comprised of a carrier 10 of glass, upon which a
plurality of light diodes, which are formed of cathodes and
anodes 25. The cathodes and anodes 25 of these light diodes are
covered over with a transparent adhesive, a so-called bubble. As
bubble material one could employ epoxy resin, urethane acrylate
or silicone. These materials can be laced with a fluorescent
material, whereby the blue light emitted by the LED is converted
to a white light.
Henzler, para. 38 (boldface omitted). Although we agree with the Examiner
that Figure 3 of Henzler shows bubble 15 extending distally of carrier 10
(i.e., substrate) and cathode and anode pair 25 (i.e., electrodes) (see Ans. 6),
we agree with Appellants that "[ o ]ne skilled in the art would not consider
... transparent bubble [15] to be an LED (a diode that emits light), nor ...
consider a material that converts the wavelength of light emitted by an LED
as the LED itself' (Appeal Br. 20). Rather, each of Henzler's light diodes,
formed of cathode and anode pair 25, represents an LED that is covered by
transparent adhesive bubble 15 through which light emitted by the LED
passes. Even reading the last sentence of Henzler's paragraph 38 in the light
most favorable to the Examiner's position, such that bubble 15 forms part of
the LED, Henzler's cathode and anode pair 25 also must be recognized as a
necessary component of the LED. Henzler's cathode and anode pair 25
cannot extend distally of itself. As such, the Examiner's finding that
Henzler discloses each LED extending distally of the electrode lacks
adequate evidentiary support.
Moreover, we find persuasive Appellants' argument that Henzler fails
to disclose that each of the one or more LEDs radially surrounds a length of
an outer surface of the elongate member, as recited in claim 1. See Appeal
Br. 21. In addressing this limitation, the Examiner relies on Figures 1-3 and
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Appeal2014-009566
Application 12/209,170
paragraphs 37-39 of Henzler. Final Act. 2. Henzler discloses, with
reference to Figure 3, that light ring 10 comprises a plurality of light diodes
(i.e., LEDs) formed of cathodes and anodes 25, and that each light diode is
covered with a transparent bubble. Henzler, para. 38. Figure 3 of Henzler
shows individual light diodes positioned at discrete points around light ring
carrier 10. We agree with Appellants that, "[t]o the extent [that] LEDs
radially surround the device of Henzler, multiple LEDs and no individual
LED radially surrounds an elongate member." Appeal Br. 21 (emphasis
added). As such, the Examiner's finding that each of Henzler's LEDs
radially surrounds the outer surface of the medical device is not supported
by a preponderance of the evidence.
Additionally, independent claim 10 recites "wherein the elongate
member defines one or more lumens extending through each of the one or
more LEDs." Appeal Br. 26 (Claims App.). Claim 9, which depends from
independent claim 1, recites a similar limitation. Id. The Examiner finds
that Figures 1-3 of Henzler disclose such a limitation (Final Act. 3) and
clarifies in the Answer that "Henzler discloses a lumen which extends
through each of the plurality of LEDs in an identical fashion to the instant
invention[,] as the lumen 'extends through' the plurality of LEDs" (Ans. 6
(citation omitted)). According to the Examiner, "[t]he ring structure of
Henzler, comprising of the electrode, substrate and adhesive bubble, as a
whole, may be interpreted as a plurality of LEDs." Id.
The Examiner's reliance on Figures 1-3 of Henzler is unavailing with
respect to showing one or more lumens extending through each of the LEDs
on carrier ring 10. In this regard, we agree with Appellants that "the only
lumen shown in these figures ... extends through the light ring upon which
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Application 12/209,170
there are a 'plurality of light diodes,"' and "[n]one of the alleged LEDs of
Henzler['s] (bubble 15) has a lumen extending through it." Appeal Br. 22.
As such, the Examiner's finding that Henzler teaches one or more lumens
extending through each of the LEDs lacks adequate evidentiary support.
For the above reasons, the Examiner fails to establish by a
preponderance of the evidence that Henzler anticipates the subject matter of
independent claims 1, 10, and 16. Accordingly, we do not sustain the
rejection of independent claims 1, 10, and 16, or of dependent claims 7-9,
11, 13, 19, and 20 under 35 U.S.C. § 102(b) as anticipated by Henzler.
Rejections II and III- Obviousness
Dependent claims 4---6, 14, 15, 17, and 18 incorporate the subject
matter of independent claims 1, 10, and 16 discussed above with regard to
Rejection I. See Appeal Br. 25, 27, 28 (Claims App.).
In rejecting these claims, the Examiner relies on the same purported
findings from Henzler and does not articulate any additional findings or
reasoning, or rely on any teachings of Shih or Clark, that would remedy the
aforementioned deficiencies in the Examiner's findings with respect to
Henzler. See Final Act. 4---6. Accordingly, we do not sustain the Examiner's
rejections of claims 4---6, 14, 15, 17, and 18 under 35 U.S.C. § 103(a).
Rejection IV- Obviousness
In this additional rejection of independent claim 1, the Examiner finds
that McKenna discloses a medical device comprising, in relevant part, "one
or more illumination means and imaging means positioned along the
elongate member to enable 360-degree viewing within a body cavity." Final
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Application 12/209,170
Act. 6 (citing McKenna, Figs. 1--4, col. 12, 1. 57---col. 13, 1. 65). The
Examiner acknowledges that McKenna does not disclose "a substrate having
a first electrode formed thereon; one or more LEDs that illuminate the body
cavity, each of the one or more LEDs radially surrounding a length of an
outer surface of the elongate member and extending distally of the substrate
and first electrode." Id. However, the Examiner finds that Raychaudhuri
discloses "an OLED device 100 ... comprising a substrate 101, an anode
102, ... and a cathode 109." Id. at 6-7. The Examiner also finds that
Raychaudhuri discloses that the OLED "may take the form of [a] rigid plate,
flexible sheet, or curved surfaces." Id. at 7 (emphasis omitted) (citing
Raychaudhuri, col. 4, 11. 10-12). The Examiner determines that the design
flexibility of the OLED "would make it desirable and advantageous to one
skilled in the art to substitute the OLED of Raychaudhuri ... as illumination
means in the endoscope of McKenna ... in order to take advantage of high
light intensity and thin appearance, as is extremely well known in the art of
OLEDs." Id.
Appellants argue that the Examiner's rejection is in error because the
proposed modification of McKenna's device to include Raychaudhuri's
OLED "would not include the claim 1 requirements of (1) each LED
radially surrounding a length of an outer surface of the elongate member, or
(2) each LED extending distally of the substrate and first electrode." Appeal
Br. 17. In particular, Appellants assert that "each discrete OLED would not
'surround' an outer surface of the Mc Kenna endoscope, [as] the disclosed
illumination means is not positioned to do so." Id. Namely, "McKenna['s]
illumination means is for illuminating a field of view that is 'substantially
radially outwardly from the distal end of the shaft."' Id. (quoting McKenna,
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Appeal2014-009566
Application 12/209,170
col. 13, 11. 3--4). Appellants also assert that, "for the Raychaudhuri OLED to
illuminate radially outward of the McKenna endoscope, either the anode side
or the cathode side must face radially outward from opening 100." Id. at 18;
see Raychaudhuri, col. 3, 11. 63---64 (disclosing that "electroluminescence can
be viewed from either the anode side or the cathode side"). According to
Appellants, "[i]n that configuration, the OLED is at the same axial position
as, and not extending distally of, the alleged electrode (either cathode 109 or
anode 102) and substrate ofRaychaudhuri." Appeal Br. 18 (emphasis
added).
The Examiner responds that, "[a]s broadly as claimed, the one or
more illuminating means of McKenna ... 'surround a length of an outer
surface of the elongate member', whether interpreted as a single light source
or as the plurality of light sources which 'completely encircle' the elongate
shaft." Ans. 3. According to the Examiner, although Raychaudhuri's OLED
emits light from the top or bottom, "this is clearly a matter of simply rotating
the OLED 90 degrees, to a 'landscape orientation,"' such that "the OLED
would then undoubtedly extend distal[ly] from the substrate and the first
electrode (anode)." Id.
It is not clear from the Examiner's response exactly what the proposed
modification is, much less how a modification of McKenna's medical device
to include Raychaudhuri's OLED would result in a medical device having
each LED radially surrounding a length of the elongate member outer
surface and extending distally of the substrate and electrode. In particular,
the Examiner has not sufficiently explained how "rotating the OLED [of
Raychaudhuri] 90 degrees, to a 'landscape orientation"' (Ans. 3) would
result in an arrangement in which each OLED both extends distally of the
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Application 12/209,170
substrate and electrode and also radially surrounds the outer surface of
endoscope 5.
For the above reasons, the Examiner's rejection lacks the requisite
findings and reasoning to establish by a preponderance of the evidence that
the medical device resulting from the proposed combination of McKenna
and Raychaudhuri would include each of the LEDs radially surrounding a
length of the elongate member outer surface and "extending distally of the
substrate and first electrode," as called for in independent claim 1.
According! y, we do not sustain the rejection of claim 1, or of claims 21 and
22 depending therefrom, under 35 U.S.C. § 103(a) as unpatentable over
McKenna and Raychaudhuri.
DECISION
The Examiner's decision rejecting claims 1, 4--11, and 13-22 is
reversed.
REVERSED
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