Ex parte DEUTSCH, et al.

Board of Patent Appeals and Interferences

Apr 28, 1998

07771173 (B.P.A.I. Apr. 28, 1998)

Application for patent filed October 3, 1991.1
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ALLAN S. DEUTSCH and BRETT I. COHEN
____________
Appeal No. 95-2111
Application 07/771,1731
____________
ON BRIEF
____________
Before STAAB, McQUADE and CRAWFORD, Administrative Patent
Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-2111
Application 07/771,173
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This is a decision on an appeal from the examiner’s
final rejection of claims 1-12, which are all the claims
pending in the application.
Appellants’ invention is an endodontic laser. Claim
1 is exemplary of the subject matter of appeal and reads as
follows:
1. An endodontic laser apparatus for removing
tissue from a root canal comprising laser light generating
means for providing a coherent beam of intense light into an
optical fiber, said fiber adapted to conduct the laser light
by internal reflection to a distal end terminating in a tip
portion adapted to divert the laser light from the optical
fiber in an annular pattern not extending a substantial axial
distance from the tip of the fiber.
THE PRIOR ART
The following prior art references were relied on by
the examiner in support of the rejections under 35 U.S.C.
§ 102(b) and 35 U.S.C. § 103:
Symonds 1,794,557 Mar.
3, 1931
Davies 4,672,961 Jun. 16,
1987
Sinofsky 4,852,567 Aug. 1,
1989
Vassiliadis et al. (Vassiliadis) 4,940,411 Jul. 10,
1990
Appeal No. 95-2111
Application 07/771,173
The rejection of claims 5 and 11 under 35 U.S.C. § 102(b)2
as anticipated by Davies made in the Final Rejection (Paper
No. 4) was not repeated in the examiner’s answer and thus, we
assume the rejection as to these claims has been withdrawn by
the examiner. Ex parte Emm, 118 USPQ 180, 181 (Bd.App. 1957).
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THE REJECTIONS
Claims 1-12 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which applicants regard as the invention.
Claims 1-12 stand rejected under 35 U.S.C. § 112,
first paragraph, as relying on a specification which fails to
adequately teach how to make and use the invention i.e.,
failing to provide an enabling disclosure.
Claims 1 and 11 stand rejected under 35 U.S.C. §
102(b) as being anticipated by Sinofsky.
Claims 1 and 8 stand rejected under 35 U.S.C. §
102(b) as being anticipated by Vassiliadis.
Claims 1-3 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Davies.2
Claims 4-7 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Davies in view of Symonds.
Appeal No. 95-2111
Application 07/771,173
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Claim 10 stands rejected under 35 U.S.C. § 103 as
being unpatentable over Vassiliadis.
The examiner’s answer contains the following new
rejections:
Claim 9 stands rejected under 35 U.S.C. § 103 as
being unpatentable over Vassiliadis.
Claim 12 stands rejected under 35 U.S.C. § 103 as
being unpatentable over Davies.
Rather than reiterate the examiner’s full statement
of the above-noted rejections and the conflicting viewpoints
advanced by the appellants and the examiner regarding those
rejections, we make reference to the Examiner's Answer (Paper
No. 13) and the Supplemental Answer (Paper No. 17) for the
examiner’s complete reasoning in support of the rejections and
the Appellants’ Brief (Paper No. 11) and Reply (Paper No. 16)
for the appellants’ arguments thereagainst.
OPINION
At the outset, we note that the appellants have
argued that the examiner erred in designating the rejection as
final. We do not have jurisdiction to decide this issue.
Rather, as the examiner has pointed out in the answer, an
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Application 07/771,173
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applicant must petition the Commissioner to obtain review of
an examiner’s designation of a rejection as final.
We have carefully reviewed the appellants’ invention
as described in the specification, the appealed claims, the
prior art applied by the examiner, and the respective
positions advanced by the appellants and the examiner. As a
consequence of this review, we make the determinations that
follow.
We turn first to the examiner’s rejection of claims
1-12 under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as
the invention. The examiner states:
The following rejections are based on
Appellants contention that the radiation
exiting the Davies device “is not an
annular pattern” as asserted in the
response received September 21, 1992 in the
first full paragraph on page 6.
All the claims are indefinite because it
is unclear exactly what is to be
encompassed by the term “annular”.
[Examiner’s Answer, page 4].
Appeal No. 95-2111
Application 07/771,173
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The examiner also states that it is not clear
exactly what is encompassed by the term “not extending a
substantial axial distance from the tip of the fiber.”
The definiteness of the language in the claims must
be analyzed, not in a vacuum, but always in light of the
teachings of the prior art and of the particular application
disclosure as it would be interpreted by one possessing the
ordinary level of skill in the pertinent art. In re Johnson,
558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA 1977). Given the
discussions in appellants’ specification at page 4, lines 6-8,
page 6, lines 22-25, page 7, lines 4-6, and page 8, lines 3-5,
we believe a person of ordinary skill in the art would have
interpreted and readily understood the phrase “in an annular
pattern not extending a substantial axial distance from the
tip of the fiber” to mean that the laser energy emerges from
the fiber optic “in a pattern transverse to the axis of the
fiber with virtually no laser radiation leaving apically from
the tip portion of the fiber.” In view of the foregoing, we
will not sustain the examiner’s rejection under 35 U.S.C. §
112, second paragraph, of claims 1-9 and 11-12.
Appeal No. 95-2111
Application 07/771,173
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In regard to claim 10, the examiner contends that
the term “its” in line 2 is indefinite as the antecedent
thereof is unclear and “the full length” in line 6 lacks
positive antecedent basis. Appellants do not dispute the
examiner’s position. Rather, appellants contend on page 8 of
the amended brief that an amendment to the claims was filed
and should have been entered and that had the amendment been
entered it would have overcome this rejection. Since
appellants have not pointed out how the examiner erred in this
rejection, and have in effect acquiesced therein, we are
constrained to affirm the rejection under 35 U.S.C. § 112,
second paragraph, of claim 10.
We turn now to the rejection of claims 1-12 under 35
U.S.C. § 112, first paragraph. In explaining this rejection
the examiner states:
Applicant’s disclosure has not taught one
of ordinary skill to form an “annular
pattern” and has not disclosed how to
prevent the intense coherent beam of light
from burning away the root canal in an
annular pattern [Examiner’s Answer at page
5].
Appeal No. 95-2111
Application 07/771,173
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It is thus apparent that the examiner’s concerns are directed
to the enablement rather than the description requirement of
the first paragraph of 35 U.S.C. § 112.
Appellant’s disclosure states on page 7 that the
optical fiber end 12 has a silvered end surface so that
virtually no laser radiation leaves the tip portion apically.
In addition, appellant’s disclosure discusses on pages 6-8
various ways to form an “annular pattern” such as by forming
conical indentations on the tip portion, forming the tip
portion with a bulbous region having a convex rounded external
surface, doping the tip portion, and forming etch markings on
the tip portion. In our view, these discussions are
sufficient to teach the artisan how to prevent the laser beam
from burning away the root of the tooth canal, and how to form
an “annular pattern.”
The examiner also contends that the specification is
nonenabling because the specific energy density and
application time of the laser beam is not disclosed. In our
view, the Vassiliadis reference cited by the examiner against
the claims demonstrates (see, for example, column 5, lines 7-
16) that those of ordinary skill in the art at the time of the
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invention would have known how to choose the energy density
and application time to achieve the desired outcome. As such,
we will not sustain the examiner’s rejection of claims 1-12
under 35 U.S.C. § 112, first paragraph.
We turn next to the examiner’s rejection of claim 1
under 35 U.S.C. § 102(b) as anticipated by Sinofsky. Sinofsky
discloses a laser apparatus which includes a pump laser 12 for
generating a beam of light of a certain wavelength, and an
optical fiber 16 for carrying said light (col. 4, lines 40-42;
Figure 1). The fiber conducts light to a distal end
terminating in a tip portion 62. In one embodiment depicted
in Fig. 4, the tip portion 62 is tapered in such a way so as
to cause the light to be gradually directed outwardly (col. 6,
lines 9-10; 25-30). The light is directed through a mirror 58
to crystal 52 where light of another wavelength is generated,
which light of another wavelength is subsequently used to
vaporize tissue.
Appellants in effect argue that because the
radiation from optical fiber 16 is not used directly to remove
tissue, Sinofsky does not anticipate the claimed subject
matter. This argument is not persuasive. Claim 1 is set out
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Application 07/771,173
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in “comprising” format and thus does not preclude the presence
of additional elements such as Sinofsky’s second crystal 52.
In addition, claim 1 does not recite that the laser light
exiting the optical fiber is used directly to cut tissue.
Thus, appellants’ argument is not commensurate in scope with
the actual scope of claim 1. In view of the foregoing, we
will sustain the examiner’s rejection of claim 1 as
anticipated by Sinofsky.
Appellants have not presented arguments directed to
the separate patentability of claim 11, thus claim 11 will
stand or fall with claim 1. In re Nielson, 816 F.2d 1567,
1570, 2 USPQ2d 1525, 1526 (Fed. Cir. 1987). We will therefore
sustain this rejection as it relates to claim 11 as well.
We turn next to the examiner’s rejection of claims 1
and 8 as anticipated by Vassiliadis. We find that Vassiliadis
discloses a dental laser assembly comprising a laser light
generating means 12 that provides a beam of light into an
optical fiber 22 which conducts the light to a distal end
terminating in a tip portion 212 which in one embodiment
depicted in Figure 10 is tapered. The examiner states:
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Application 07/771,173
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a tip for performing root canals and
apicoectomies...which is illustrated as
tapered and thus inherently produces an
annular output [examiner’s answer at page
6]
In our opinion, the examiner has no reasonable basis
for finding that the optical tip in Vassiliades inherently
produces an “annular pattern.” In contrast to Sinofsky, where
the gradually tapered tip 62 is expressly disclosed at col. 6,
lines 25-41 as being shaped in a manner which results in light
being gradually directed outwardly, no such express disclosure
is found in Vassiliadis regarding the direction of light
output. The examiner has provided no convincing technical
explanation, and none is apparent to us, as to why the
relatively bluntly tapered laser tip 212 of Vassiliadis would
inherently divert laser light in an “annular pattern” as
called for by claim 1. In this regard, and in contrast to the
examiner, we do not view Sinofsky as establishing that a
tapered tip will necessarily produce an “annular pattern.”
Accordingly, the examiner’s position regarding the inherent
characteristics of Vassiliadis is not well founded. It
follows that we cannot sustain the examiner’s anticipation
rejection of claims 1 and 8 based thereon.
Appeal No. 95-2111
Application 07/771,173
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We will now address the rejection of claims 1-3
under 35 U.S.C. § 102(b) as anticipated by Davies. We find
Davies discloses laser apparatus comprising a laser light
generating means 21 which directs a beam of light into optical
fibers 19 (Figure 1). The optical fibers conduct laser light
to a distal end 46 terminating in a tip portion which is
adapted to divert laser light from the optical fiber in an
“annular pattern” (Figure 3). In view of the foregoing, we
find that Davies discloses each and every element of claim 1.
Appellants argue that Davies does not disclose an
apparatus that is capable of cutting precisely to the end of a
finite channel. We do not find this argument persuasive
because it is not commensurate with the actual scope of claim
1 which does not recite that the apparatus is capable of
cutting precisely to the end of a finite channel. Thus, we
will sustain the examiner’s rejection of claim 1 under 35
U.S.C. § 102(b) as anticipated by Davies.
As appellants have not argued the separate
patentability of claims 2-3, these claims will stand or fall
with claim 1 and thus we will sustain the rejection as these
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Application 07/771,173
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claims as well. See Nielson, 816 F.2d at 1570, 2 USPQ2d at
1526.
We turn now to the examiner’s rejection of claims 4-
7 under 35 U.S.C. § 103 as being unpatentable over Davies in
view of Symonds. We find that Symonds discloses a quartz rod
for use with ultra-violet lamps in which the lateral portions
are formed to distribute rays evenly through the sides (Page
1, lines 13-15). In two embodiments depicted in Figures 4 and
11, the lamp has a convex bulbous termination.
It is the examiner’s opinion that:
It would have been obvious to the artisan
or ordinary skill to configure the end of
the Davies radiator as taught by Symonds,
since these are equivalents... [Examiner’s
Answer at page 7].
Appellants argue that there is no suggestion to
combine the teachings of Symonds and Davies. We find
ourselves in agreement with appellants that there is no
suggestion to combine the teachings of Davies and Symonds.
The lateral portions of the lamp disclosed in Symonds are
formed to distribute rays evenly through the sides (Page 1,
lines 13-15). The device in Davies is configured to focus the
laser energy on a focal point 37 (Col. 2, lines 66-67). As
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Application 07/771,173
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Davies does not desire to distribute rays evenly, there would
be no reason for a person of ordinary skill in the art to
modify the Davies structure so as to obtain this result. In
view of the foregoing, we will not sustain the rejection under
35 U.S.C. § 103 of claims 4-7 as unpatentable over Davies in
view of Symonds.
We will now address the rejection of claims 9 and 10
under 35 U.S.C. § 103 as unpatentable over Vassiliadis.
Claim 9 (by its dependence on claim 1) and claim 10
recite that the laser light is diverted from the optical fiber
in an annular pattern. We have found above, that the optical
tip of Vassiliades does not inherently produce an “annular
pattern.” We also discern no suggestion in Vassiliades of
forming an “annular pattern.” As such, we will not sustain
this rejection.
Finally, we address the examiner’s rejection of
claim 12 under 35 U.S.C. § 103 as unpatentable over Davies.
It is the examiner’s opinion that:
Davies teaches a method such as claimed
except for the recitation of the step of
inserting the fiber into the full length of
the channel to its optical tip. It would
have been obvious to the artisan of
Appeal No. 95-2111
Application 07/771,173
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ordinary skill to, when treating lesions in
a fully occluded artery, to insert the
device the full length of the channel,
thereby allowing treatment of the largest
portion of the occlusion possible and
subsequent treatment of the full occlusion
with a larger diameter catheter, thus
producing a method such as claimed.
[Examiner’s Answer at pages 8-9].
The appellants argue in the Reply that there is nothing to
suggest the step of “withdrawing the optical fiber from the
channel while the laser is energized.” We agree with the
appellants and thus we will not sustain this rejection.
In summary,
(1) The examiner’s 35 U.S.C. § 112, second
paragraph, rejection of claims 1-9 and 11-12 is not sustained.
(2) The examiner’s 35 U.S.C. § 112, second
paragraph, rejection of claim 10 is sustained.
(3) The examiner’s 35 U.S.C. § 112, first paragraph
rejection of claims 1-12 is not sustained.
(4) The examiner’s 35 U.S.C. § 102(b) rejection of
claims 1 and 11 as anticipated by Sinofsky is sustained.
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Application 07/771,173
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(5) The examiner’s 35 U.S.C. § 102(b) rejection of
claims 1 and 8 as anticipated by Vassiliadis is not sustained.
(6) The examiner’s 35 U.S.C. § 102(b) rejection of
claims 1-3 as anticipated by Davies is sustained.
(7) The examiner’s 35 U.S.C. § 103 rejection of
claims 4-7 over Davies in view of Symonds is not sustained.
(8) The examiner’s 35 U.S.C. § 103 rejection of
claims 9 and 10 over Vassiliades is not sustained.
(9) The examiner’s 35 U.S.C. § 103 rejection of
claim 12 over Davies is not sustained.
No time period for taking subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
)
Appeal No. 95-2111
Application 07/771,173
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JOHN P. McQUADE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
c/o Gottlieb, Rackman
& Reisman
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