Ex parte Esterowitz et al.

Board of Patent Appeals and Interferences

Jul 19, 2001

08511341 (B.P.A.I. Jul. 19, 2001)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte LEON ESTEROWITZ and CHARLES L. MARQUARDT
____________
Appeal No. 2000-0948
Application No. 08/511,341
____________
ON BRIEF
____________
Before ABRAMS, STAAB, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 and 3 to 24, which are all of the claims
pending in this application.
We REVERSE.
BACKGROUND
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Application No. 08/511,341
The appellants' invention relates to a dual wavelength
surgical laser system for performing laser surgery on living
tissue with a minimum amount of collateral tissue damage. A
copy of the claims under appeal is set forth in the appendix
to the appellants' brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Feld et al. 5,312,396 May 17,
1994
(Feld)
Broadly turnable infrared parametric oscillator using AgGaSe ;2
Eckardt et al.; American Institute of Physics; Sept. 15, 1986;
pp. 608-610
(Eckardt)
Tissue ablation by a free-electron laser turned to the amide
II band; Edwards et al.; Nature; Sept. 29, 1994; pp. 416-419
(Edwards)
Claims 1 and 3 to 24 stand rejected under 35 U.S.C. §
103 as being unpatentable over Feld in combination with
Eckardt and Edwards.
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Application No. 08/511,341
The rejection of claims 1 and 3 to 24 under 35 U.S.C. 1
§ 112, first paragraph, made in the final rejection was
withdrawn by the examiner (answer, p. 3).
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejection, we make reference to the final rejection (Paper No.
6, mailed February 26, 1997) and the answer (Paper No. 15,
mailed August 14, 1998) for the examiner's complete reasoning
in support of the rejection, and to the brief (Paper No. 14,
filed March 25, 1998) for the appellants' arguments
thereagainst.1
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. Upon evaluation of all the evidence before us, it
is our conclusion that the evidence adduced by the examiner is
insufficient to establish a prima facie case of obviousness
with respect to the claims under appeal. Accordingly, we will
Appeal No. 2000-0948 Page 4
Application No. 08/511,341
not sustain the examiner's rejection of claims 1 and 3 to 24
under
35 U.S.C. § 103. Our reasoning for this determination
follows.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that would
have led one of ordinary skill in the art to combine the
relevant teachings of the references to arrive at the claimed
invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972).
Claim 1, the sole independent claim on appeal, reads as
follows:
A dual wavelength surgical laser system for
performing laser surgery on living tissue with a minimum
amount of collateral tissue damage, said laser system
comprising:
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Application No. 08/511,341
a pump laser for emitting pump laser pulses of light
at a preselected pump wavelength of about 2 microns;
means coupled to said pump laser being responsive to
each pump pulse from said pump laser for producing a
first wavelength pulse of light at about 3 microns in a
water absorption band of the tissue and a second
wavelength pulse of light at about 6 microns in a protein
absorption band of the tissue;
first optical means coupled to said producing means
for only passing therethrough each first wavelength pulse
from said producing means;
means coupled to said first optical means for
delaying each first wavelength pulse from said first
optical means by a predetermined period of time;
second optical means coupled to said producing means
for only passing therethrough each second wavelength
pulse from said producing means; and
means coupled to said second optical means and to
said delaying means for combining each second wavelength
pulse with the following delayed first wavelength pulse
to form a stream of consecutive second and delayed first
pulse pairs for application to the tissue.
The examiner found (answer, p. 3) that (1) Feld teaches
"the desirability of applying pulse sequences of different
wavelength to provide tissue ablation using less energy over
all;"
(2) Edwards teaches "the desirability of using 3 micron light
to remove tissue and the desirability of using 6 micron light
to remove tissue;" and (3) Eckardt teaches "the generation for
6 micron light with Ho:YLF or Nd:Yag pumps." After the scope
Appeal No. 2000-0948 Page 6
Application No. 08/511,341
and content of the prior art are determined, the differences
between the prior art and the claims at issue are to be
ascertained. Graham v. John Deere Co., 383 U.S. 1, 17-18, 148
USPQ 459, 467 (1966). However, in the rejection before us,
the examiner did not ascertain the differences between the
prior art and claim 1 ion appeal. The examiner did determine
(answer, pp. 3-4) that it would have been obvious to the
artisan of ordinary skill to use 3 micron and 6 micron light
in the method of Feld since both of these work well for
removing various types of tissue, as taught by Edwards, and to
employ an OPO using AgGaSe since this can produce 6 micron2
pulses of reasonable power while remaining below the damage
threshold of the material as taught by Eckardt, thus producing
a device as claimed.
Obviousness is tested by "what the combined teachings of
the references would have suggested to those of ordinary skill
in the art." In re Keller, 642 F.2d 413, 425, 208 USPQ 871,
881 (CCPA 1981). But it "cannot be established by combining
the teachings of the prior art to produce the claimed
invention, absent some teaching or suggestion supporting the
Appeal No. 2000-0948 Page 7
Application No. 08/511,341
combination." ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732
F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). And
"teachings of references can be combined only if there is some
suggestion or incentive to do so." Id. Here, the prior art
contains none. In fact, the advantages of utilizing both a
first wavelength pulse of light at about 3 microns in a water
absorption band of the tissue and a second wavelength pulse of
light at about 6 microns in a protein absorption band of the
tissue as set forth in claim 1 are not appreciated by the
prior art applied by the examiner for the reasons set forth by
the appellants (brief, pp. 5-13).
Instead, it appears to us that the examiner relied on
hindsight in reaching his obviousness determination. However,
our reviewing court has said, "To imbue one of ordinary skill
in the art with knowledge of the invention in suit, when no
prior art reference or references of record convey or suggest
that knowledge, is to fall victim to the insidious effect of a
hindsight syndrome wherein that which only the inventor taught
is used against its teacher." W. L. Gore & Assoc. v. Garlock,
Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir.
Appeal No. 2000-0948 Page 8
Application No. 08/511,341
1983), cert. denied, 469 U.S. 851 (1984). It is essential
that "the decisionmaker forget what he or she has been taught
. . . about the claimed invention and cast the mind back to
the time the invention was made . . . to occupy the mind of
one skilled in the art who is presented only with the
references, and who is normally guided by the then-accepted
wisdom in the art." Id. Since the subject of claim 1, as a
whole, is not taught or suggested by the applied prior art, we
will not sustain the
35 U.S.C. § 103 rejection of independent claim 1, and of
dependent claims 3 to 24.
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Application No. 08/511,341
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 and 3 to 24 under 35 U.S.C. § 103 is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
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Application No. 08/511,341
ASSOCIATE COUNSEL PATENTS
NAVAL RESEARCH LABORATORY
WASHINGTON, DC 20375-5325
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Application No. 08/511,341
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