Ex parte Goldenberg

Board of Patent Appeals and Interferences

May 20, 1999

07990514 (B.P.A.I. May. 20, 1999)

Application for patent filed December 15, 1992. According to1
appellant, this application is a continuation-in-part of application
07/593,485, filed October 3, 1990, now U.S. Patent 5,188,632, issued February
23, 1993 which is a continuation of application 07/218,907, filed July 14,
1988, now abandoned.
1
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not binding precedent of the Board.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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte TSVI GOLDENBERG
_____________
Appeal No. 96-2043
Application 07/990,514 1
______________
ON BRIEF
_______________
Before ABRAMS, STAAB, and GONZALES, Administrative Patent
Judges.
GONZALES, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
Appeal No. 96-2043
Application 07/990,514
2
rejection of claims 1 through 9, which are all of the claims
pending in this application.
We REVERSE.
BACKGROUND
The appellant's invention relates to a laser angioplasty
system comprising, inter alia, a plurality of fiber-optic
waveguides made of synthetic silica and a pulsed XeCl Excimer
laser wherein the pulse duration is in the range of 100-3000
nsec. Appellant's specification teaches that fiber-optic
waveguides are more easily damaged by high power density than
by high energy density. Appellant's system seeks to reduce
the peak power density at the input ends of the fiber-optic
waveguides while maintaining a high energy level to produce
efficient ablation of tissue by lengthening the pulse duration
(specification, pages 17 and 18). An understanding of the
invention can be derived from a reading of exemplary claim 1
which appears in the appendix to appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Kaufman et al. (Kaufman) 3,327,712 Jun.
27, 1967
Guerder et al. (Guerder) 4,221,825 Sep.
Appeal No. 96-2043
Application 07/990,514
3
09, 1980
Seppala et al. (Seppala) 4,345,212 Aug.
17, 1982
Hussein et al. (Hussein) 4,445,892 May
01, 1984
L'Esperance, Jr. (L'Esperance) 4,664,913 May 19,
1987
Davies 4,672,961 Jun. 16,
1987
The following rejections are before us for review:
(1) Claims 1 and 3 through 7 stand rejected under
35 U.S.C. § 103 as being unpatentable over Hussein in view of
L'Esperance, Guerder, Davies and Seppala.
(2) Claims 2, 8 and 9 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Hussein, L'Esperance,
Guerder, Davies and Seppala, as applied to claim 1, and
further in view of Kaufman.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the examiner's answer (Paper
No. 16, mailed August 22, 1995) for the examiner's complete
reasoning in support of the rejections, and to the appellant's
Appeal No. 96-2043
Application 07/990,514
4
brief (Paper No. 15, filed April 17, 1995) for the appellant's
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant 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 case of obviousness with respect
to claims 1 through 9. Accordingly, we will not sustain the
examiner's rejections of claims 1 through 9 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
Appeal No. 96-2043
Application 07/990,514
5
obviousness is established by presenting evidence that the
reference teachings would appear to be sufficient for one of
ordinary skill in the relevant art having the references
before him to make the proposed combination or other
modification. See In re Lintner, 458 F.2d 1013, 1016, 173
USPQ 560, 562 (CCPA 1972). Furthermore, the conclusion that
the claimed subject matter is prima facie obvious must be
supported by evidence, as shown by some objective teaching in
the prior art or by knowledge generally available to
one of ordinary skill in the art that would have led that
individual 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). Rejections
based on
§ 103 must rest on a factual basis with these facts being
interpreted without hindsight reconstruction of the invention
from the prior art. The examiner may not, because of doubt
that the invention is patentable, resort to speculation,
Appeal No. 96-2043
Application 07/990,514
6
unfounded assumption or hindsight reconstruction to supply
deficiencies in the factual basis for the rejection. See In
re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968). Our reviewing court has
repeatedly cautioned against employing hindsight by using the
appellant's disclosure as a blueprint to reconstruct the
claimed invention from the isolated teachings of the prior
art. See, e.g., Grain Processing Corp. v. American
Maize-Products Co., 840 F.2d 902, 907, 5 USPQ2d 1788, 1792
(Fed. Cir. 1988).
With this as background, we turn to the rejections of the
claims on appeal.
a. Claims 1 and 3-7
Claim 1 calls for an angioplasty system including an
elongated catheter having proximal and distal ends and a
longitudinal lumen open to the distal end for receiving a
guidewire, a plurality of fiber-optic waveguides contained in
Appeal No. 96-2043
Application 07/990,514
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the catheter and extending to the distal end of the catheter
for emitting energy conducted therethrough in a direction
generally forwardly of the distal end of the catheter with
each waveguide having an energy conducting core made of
synthetic silica that is substantially free of metallic
impurities, and a pulsed XeCl Excimer laser having an output
wavelength of about 308 nm, with each pulse having a duration
between 100 nsec and 3000 nsec and being coupled into the
proximal end of the waveguides at a density of at least 50
mJ/mm . 2
The examiner describes Hussein as teaching a catheter
device having a guidewire lumen, a laser and a plurality of
optical fibers. L'Esperance is described as teaching a pulsed
XeCl Excimer laser for ablating tissue without charring.
Guerder is described as teaching substantially pure synthetic
silica to make optical fibers. Davies is described as
teaching a pulsed Excimer laser having a wavelength and
density as called for in claim 1.
Seppala is described as teaching certain advantages for using
Appeal No. 96-2043
Application 07/990,514
8
laser pulses of "about 200 nanoseconds" and a technique for
producing such pulses. It is the examiner's position that it
would have been obvious to a person of ordinary skill in the
art at the time of appellant's invention to employ an XeCl
Excimer laser operating at a wavelength of about 308 nm and
density of at least 50 mJ/mm as suggested by L'Esperance and2
Davies, a fiber-optic waveguide as taught by Guerder, and a
pulse stacking technique as taught by Seppala to produce
pulses of greater than 200 nsec in the angioplasty device
taught by Hussein. See, Answer, pages 2 and 3.
The appellant attacks the rejection on the basis that
none of the applied references teach the combination of
features set forth in the claims (Brief, pages 5-8). In
addition, appellant argues that the examiner's rejections are
based on impermissible hindsight (Brief, pages 9-11).
Our review of Seppala reveals that Seppala teaches a
method and apparatus for the production of a high power laser
beam of short, controllable temporal duration while avoiding
optical damage to any of the optical elements of the laser
system (col. 1, lines 39-46). The method disclosed by Seppala
comprises the
Appeal No. 96-2043
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steps of replicating a laser beam of temporal duration J as an
array of N ($2) such beams; time shifting the N beams relative
to one another and stacking the beams end-to-end so as to form
a continuous composite beam of temporal duration )t=N ;B
passing the continuous composite beam one or more times
through an optical amplification medium; physically separating
the composite beam into N amplified beam replicas; and time
shifting the replica beams so as to bring all beams into
temporal coincidence in a spatially contiguous array for
subsequent use.
One example of the apparatus disclosed by Seppala to
perform the method is shown in Figs. 3 and 4. A short pulse
40 from a laser is injected onto an array of partially
transparent reflectors 19-1, 19-2, . . . , 19-16, and divided
into 16 equal intensity pulses, 21-1, 21-2, . . . , 21-16.
These pulses are then sequenced in time by reflection from
another set of reflectors 23-1, 23-2, . . . , 23-16. For
example, if the pulse length of the injected signal is 20
nsec, then after beam splitting, delay, and "recombination"
(as in FIG. 2), the effective pulse length will be 16 times
Appeal No. 96-2043
Application 07/990,514
10
larger, or 320 nsec. This latter set of mirrors is arranged
so as to optically delay
each of the 16 beams by time intervals )t =rJ(r=0, 1, . . . ,r
15) so that these beams arrive at a common beam expander
(convex
reflector) 25 in serial order, forming a temporally continuous
pulse (see FIG. 2) of time duration )t=16J.320 nsec. The
temporally sequenced pulses are reflected from the convex
reflector 25 and expanded to fill the aperture of an amplifier
27. After passage once through the amplifier, each pulse
encounters a large concave reflector 29 that returns the pulse
through the amplifier for further amplification, and directs
it to a second convex reflector 31. The reflector 31
recollimates and directs each beam to an array 33 of plane
100% reflectors, positioned in such a way that, after
reflection from this array, the beams are parallel to each
other, and all the pulses are temporally coincident. The
final pulse length is again 20 nsec. See col. 3, line 50-col.
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4, line 8.
In short, Seppala teaches forming a composite pulse
having a temporal time duration )t=N .320 nsec as anB
intermediate step in the process of forming a high power laser
beam output. The duration of the output beam, however, is 20
nsec. As appellant points out at page 8 of the brief, Seppala
suggests that the invention may be useful in inertial
confinement fusion.
We have carefully considered the collective teachings of
Hussein, L'Esperance, Guerder, Davies and Seppala. However,
we fail to perceive any suggestion in the collective teachings
of
the references to couple a pulsed XeCl Excimer laser having a
pulse duration between 100 nsec and 3000 nsec to the proximal
end of a fiber optic waveguide in an angioplasty system which
would have motivated one of ordinary skill to make such a
change in the catheter device shown by Hussein, except the
hindsight accorded one who first viewed the appellant’s
disclosure. This, of course, is impermissible. See In re
Appeal No. 96-2043
Application 07/990,514
12
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir.
1992). Accordingly, we will not sustain the rejection of
claim 1 under 35 U.S.C. § 103 as being unpatentable over
Hussein in view of L'Esperance, Guerder, Davies and Seppala.
Claims 3 through 7 are dependent on claim 1 and,
therefore, contain all of the limitations of claim 1.
Accordingly, the examiner’s respective rejections of claims 3
through 7 under 35 U.S.C. § 103 will not be sustained.
b. Claims 2, 8 and 9
Independent claim 8 contains all of the limitations of
claim 1 previously discussed and, in addition, further defines
the
plurality of fiber-optic waveguides as being disposed around
the guidewire lumen in the elongated catheter. Further, each
waveguide is recited as having a glass material cladding
surrounding the core and a diameter no greater than 200
microns.
In the rejection of claim 8, the examiner applies Hussein,
L'Esperance, Guerder, Davies and Seppala, as in the rejection
Appeal No. 96-2043
Application 07/990,514
13
of claims 1 and 3 through 7, and further cites Kaufman as
teaching optical fibers of less than 200 microns in diameter.
Our review of Kaufman reveals that the reference fails to
supply the necessary teaching, suggestion or motivation found
lacking in our discussion of the prior art applied against
claims 1 and 3 through 7. Therefore, we will not sustain the
rejection of claim 8 under 35 U.S.C. § 103 as being
unpatentable over Hussein in view of L'Esperance, Guerder,
Davies, Seppala and Kaufman.
Claims 2 and 9 are dependent on claims 1 and 8,
respectively, and contain all of the limitations of their
respective independent claim. Accordingly, the examiner’s
rejection of claims 2 and 9 under 35 U.S.C. § 103 will not be
sustained.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 through 9 under 35 U.S.C. § 103 is reversed.
Appeal No. 96-2043
Application 07/990,514
14
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
VSH
Appeal No. 96-2043
Application 07/990,514
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