Ex Parte Crowder

Patent Trial and Appeal Board

Feb 19, 2014

11259978 (P.T.A.B. Feb. 19, 2014)

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.
11/259,978 10/27/2005 Austin Crowder 08148-0019 7016
26359 7590 02/20/2014
Maynard Cooper & Gale, PC
1901 Sixth Avenue North
2400 Regions/Harbert Plaza
BIRMINGHAM, AL 35203-2618
EXAMINER
LEE, JONG SUK
ART UNIT PAPER NUMBER
2885
MAIL DATE DELIVERY MODE
02/20/2014 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
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Ex parte AUSTIN CROWDER
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Appeal 2011-011651
Application 11/259,978
Technology Center 2800
____________

Before EDWARD C. KIMLIN, MICHAEL P. COLAIANNI, and
GEORGE C. BEST, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 18-25, 34-42, 44-
52, 54, 55, 57, and 58. We have jurisdiction under 35 U.S.C. § 6(b). Claim
18 is illustrative:
18. A surgical headlight for illuminating a surgical field,
comprising:
a surgical headpiece selectively supported by the head of
a user;
at least two light sources supported by and attached to the
headpiece and selectively actuated to emit light;
Appeal 2011-011651
Application 11/259,978
2
at least one heat sink in the thermal communication with
at least one of the two light sources to receive thermal energy
from the at least one of the two light sources and dissipate at
least a portion of the thermal energy received;
a combiner including a scrambler in optical
communication with the at least two light sources to receive at
least a portion of the light emitted from each of the light
sources and output substantially-uniform combined light with
substantially-uniform intensity and color distribution; and
a lens receiving the substantially-inform combined light
and projecting the substantially-uniform combined light into the
surgical field.
The Examiner relies upon the following references in the rejection of
the appealed claims:
Wallace U.S. 3,285,242 Nov. 15, 1966
Kazakevich U.S. 2003/0042493 A1 Mar. 6, 2003
Davis et al. (Davis) WO 02/099332 A1 Dec. 12, 2002
Appellant's claimed invention is directed to a surgical headlight for
illuminating a surgical field. The headlight comprises, inter alia, a
scrambler that is in optical communication with at least two light sources
which provides an output of substantially uniform combined light with a
substantially uniform intensity and color distribution.
Appealed claims 18, 35, 40, and 58 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Davis. The appealed claims also stand
rejected under 35 U.S.C. § 103(a) as follows:
(a) claims 19-24, 36-38, 41, 42, 45-50, and 54-56 over Davis,
(b) claims 25, 34, 44, 52, 53, and 57 over Davis in view of
Kazakevich, and
(c) claims 39 and 51 over Davis in view of Wallace.
Appeal 2011-011651
Application 11/259,978
3
We have thoroughly reviewed the respective positions advanced by
the Appellant and the Examiner. In so doing, we agree with Appellant that
the Examiner's rejections are not supported by the applied prior art.
Accordingly, we will not sustain the Examiner's rejections.
The principal issue on appeal is whether Davis fairly describes the
claimed scrambler with the meaning of § 102. The Examiner acknowledges
that Davis does not disclose a scrambler, per se, but it is the Examiner's
position that the claimed "scrambler" is sufficiently broad to encompass
Davis's optical cable (56), color filter (30), and holographic filter (28). The
Examiner explains that Appellant has not provided any structural features
for the claimed scrambler, and that Davis's optical cable, color filter, and
holographic filter perform the same function as the claimed scrambler, viz.,
outputting substantially uniform combined light.
The Examiner's position, on its face, has merit. However, the
evidentiary affidavit of Dr. James J. Sluss, Jr., proffered by Appellant
effectively rebuts the Examiner's position. Dr. Sluss, who holds degrees in
physics and electrical engineering, is, at the very least, one of ordinary skill
in the art, if not an expert. In the words of Dr. Sluss, "[o]ptical filters,
optical diffusers, and optical scramblers are well known within the art and
perform three different and separate functions," (Affidavit, ¶ 4). According
to the affiant, "[t]here are distinct differences between a filter, diffuser, and a
scrambler, and more specifically, the use of the term 'scrambler' in claims
18, 41 and 48 distinguishes the element structurally from a holographic filter
and/or a diffuser, as taught in Davis and Kazakevich" (id.). The Affidavit
further describes the functional differences between the claimed scrambler
and the optical units disclosed by Davis.
Appeal 2011-011651
Application 11/259,978
4
Consequently, although the optical cable, color filter, and holographic
filter of Davis may also provide a more uniform light than that received, the
best evidence of record supports Appellant's argument that Davis does not
describe the claimed scrambler within the meaning of § 102.
The Examiner's additional citations of Kazakevich and Wallace do not
remedy the deficiency of Davis set forth above. Also, we note that the
Examiner has not rejected the independent claims on appeal under § 103 and
provided the rationale for why it would have been obvious for one of
ordinary skill in the art to replace the color filter and holographic filter of
Davis with a scrambler which, apparently, is an optical element known in
the art.
In conclusion, based on the foregoing, we are constrained to reverse
the Examiner's rejections.
The decision of the Examiner is reversed.
REVERSED

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