Ex Parte Hanley et alDownload PDFPatent Trial and Appeal BoardJan 26, 201812467730 (P.T.A.B. Jan. 26, 2018) Copy Citation United States Patent and Trademark Office 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. 12/467,730 05/18/2009 Brian Hanley 11219.0090-00000 8590 109610 7590 01/30/2018 Bookoff McAndrews, PLLC 2020 K Street, NW Suite 400 Washington, DC 20006 EXAMINER JENNESS, NATHAN JAY ART UNIT PAPER NUMBER 3769 NOTIFICATION DATE DELIVERY MODE 01/30/2018 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): u sptomail @ borne ip .com Kross @ bomcip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRIAN HANLEY, JESSICA HIXON, CHRISTOPHER L. OSKIN and EDWARD SINOFSKY Appeal 2016-001004 Application 12/467,730 Technology Center 3700 Before STEVEN D.A. McCARTHY, LYNNE H. BROWNE and JEFFREY A. STEPHENS, Administrative Patent Judges. McCARTHY, Administrative Patent Judge. DECISION ON APPEAL 1 2 3 4 5 6 7 8 9 10 11 Appeal 2016-001004 Application 12/467,730 STATEMENT OF THE CASE The Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision finally rejecting claims 1, 2, 5, 6, 9,2 30, 31, 33, 34, 36, 37, 41 and 42 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Johnson (US 5,437,660, issued Aug. 1, 1995), Cho (US 5,476,461, issued Dec. 19, 1995) and Chou (US 5,354,294, issued Oct. 11, 1994); claim 8 under § 103(a) as being unpatentable over Johnson, Cho, Chou and Hmelar (US 5,772,657, issued June 30, 1998); claims 21, 24, 29, 38 and 40 under § 103(a) as being unpatentable over Johnson, Cho, Chou and Bass (US 3,858,577, issued Jan. 7, 1975); and claim 39 under § 103(a) as being unpatentable over Johnson, Cho, Chou, Bass3 and Griffin (US 2006/0282068 1 The Appellants identify the real party in interest as Boston Scientific Scimed, Inc. 2 Although the Examiner did not list claim 9 among those claims identified on page 5 of the Final Office Action, mailed December 12, 2014, as being rejected over the combined teachings of Johnson, Cho and Chou, the Examiner did provide a rationale for rejecting claim 9 on page 9 of the Final Action. Therefore, we will address the rejection of claim 9 in this opinion. 3 On pages 16 and 17 of the Final Office Action, mailed December 12, 2014, the Examiner erroneously identified the rejection of claim 39 as being over the teachings of Johnson, Cho, Chou and Griffin. On page 20 of the “Appeal Brief under 37 C.F.R. § 41.37,” dated May 12, 2015, the Appellants pointed out that the rejection had to be over the teachings of Johnson, Cho, Chou, Bass and Griffin, because parent claim 21 had been rejected over the teachings of Johnson, Cho, Chou and Bass. The Examiner agreed, correcting the rejection on page 7 of the Answer. 2 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 Appeal 2016-001004 Application 12/467,730 Al, publ. Dec. 14, 2006).4 (Final Office Action, mailed Dec. 12, 2014 (“Final Act.”), at 5, 11, 12 & 16). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE CLAIMED SUBJECT MATTER The appealed claims are directed to side-firing optical fiber apparatuses for use in endoscopic laser-based surgical procedures. (See Spec., paras. 1020 & 1023). Figure 3A depicts a side-firing optical fiber apparatus including an optical fiber having a distal end portion 116 secured in a capillary 136. A reflector 140 enclosed in the capillary 136 has an angled proximal surface 142 with a multilayer dielectric coating 141 for laterally redirecting light emitted from the distal end portion 116 of the optical fiber through a side of the capillary. (See Spec., paras. 1034—37 & 1039). The capillary 136, 236 may be optically transmissive, or, in an alternative embodiment, opaque with a transmissive side window 246 (see Fig. 4A), to permit the reflected light to exit the capillary through the side. (See Spec., para. 1035 & 1045). An additional multilayer dielectric coating 185 (see Fig. 3B) between the distal end of the reflector 140,180 and the facing, proximal inner surface of the capillary 136, 176 prevents any light that has leaked through the multilayer dielectric coating 141,181 from heating and damaging the capillary. (See Spec., para. 1041). 4 On page 4 of the Final Office Action, mailed December 12, 2014, the Examiner rejected claim 39 under pre-AIA 35 U.S.C. § 112, second paragraph, as being indefinite. The Appellants amended claim 39 to overcome that rejection. (See Advisory Action, mailed March 25, 2015). 3 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 Appeal 2016-001004 Application 12/467,730 Claims 1,21 and 30 are independent. Claim 1 recites: 1. An apparatus comprising: a member having a distal end portion configured to be inserted into a patient’s body, the distal end portion of the member including a proximally-facing surface; a reflector disposed within the member, the reflector including: a proximal end portion having a flat surface angled relative to a longitudinal axis of the distal end portion of the member, the angled surface configured to redirect laser energy transmitted from a distal end portion of an optical fiber to a lateral direction offset from the longitudinal axis, and a distal end portion; the angled surface being coated with a multilayer dielectric coating disposed on the angled surface; and a reflective material disposed on the distal end portion of the reflector adjacent the proximally-facing surface of the member for reflecting laser energy transmitted through the reflector. ISSUES The Appellants argue claims 1,21 and 30 separately. The Appellants argue the patentability of each dependent claim based on ultimate dependency from claims 1,21 and 30. (See “Appeal Brief under 37 C.F.R. § 41.37,” dated May 12, 2015 (“Appeal Brief’ or “App. Br.”), at 17; “Reply Brief under 37 C.F.R. § 41.41,” dated Oct. 19, 2015 (“Reply Brief’ or “Reply Br.”), at 4 & 5). This appeal turns on two issues: First, would the subject matter of claims 1 and 30 have been obvious from the combined teachings of Johnson, Cho and Chou? 4 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 Appeal 2016-001004 Application 12/467,730 Second, would the subject matter of claim 21 have been obvious from the combined teachings of Johnson, Cho, Chou and Bass? FINDINGS OF FACT The record supports the following findings of fact (“FF”) by a preponderance of the evidence. Johnson 1. Johnson describes a lateral-lasing, fiber-optic device for removing unwanted tissue from a body lumen, cavity or organ by ablating and coagulating the tissue. (See Johnson, col. 5,11. 13—18). As depicted in Figures 1 and 6, the device includes an optical fiber 12, 62 extending through a lumen of an endoscope 13. A coupler 11 connects one end of the optical fiber 12, 62 to a laser source 10. A metal tip 15, 75 receives the opposite end of the optical fiber 12, 62. (See Johnson, col. 6,11. 32—38; & Figs. 1 & 6). 2. One such metal tip 75, depicted in Fig. 6, takes the form of a member having a through passageway 77 and a cavity 76 extending laterally from one side of the passageway. One end of the passageway 77 receives the distal end 83 of the optical fiber 12 opposite the laser source 10. The other end of the passageway 77 receives a cylindrical inset 79. (See Johnson, col. 7,1. 67 — col. 8,1. 7). As depicted in Figure 6, a transparent canopy or operculum 91 covers the open end of the cavity 76 to protect the distal end of the optical fiber 62 from the accumulation of tissue debris. (See Johnson, col. 8,11. 20-23). 5 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 Appeal 2016-001004 Application 12/467,730 3. As depicted in Fig. 6, the inset 79 has a proximal end portion and a distal end portion. The proximal end portion has a flat reflective face 81 (82 in Fig. 6) angled relative to a longitudinal axis of the passageway 77. The reflective face 81, 82 is positioned relative to the distal end 83 of the optical fiber 23 so as to redirect laser energy emitted from the distal end 83 of the optical fiber 12 toward a lateral direction angularly offset from the longitudinal axis of the passageway 77. (Johnson, col. 8,11. 7—12 (italics added for emphasis)). 4. Johnson describes the passageway 77 as including an abutment 85 for limiting the proximal movement of the cylindrical inset 79 through the passageway. In this manner, the abutment 85 maintains the correct positioning of the reflective face 81 of the inset 79 relative to between the distal end 83 of the optical fiber 12. (See Johnson, col. 7,1. 67 — col. 8,1. 3 & col. 8,11. 13—15). Johnson also describes the cylindrical inset 79 as having an annular flange or locking ring 87 that engages an annular groove 89 in the interior surface of the passageway 77. This engagement helps hold the inset 79 in place in the passageway 77. (See Johnson, col. 8,11. 15—19). 5. The Appellants correctly suggest that one method for assembling the metal tip 75 is to press the inset 79 through the distal end of the passageway 77 until the proximal end of the inset abuts against the abutment 85 and the locking ring 87 engages the annular groove 89. (See App. Br. 13 (“Johnson teaches that [the] distal end of passageway 77 receives cylindrical inset 79”)). This method of assembly is consistent with the teachings of Johnson. 6. Johnson teaches that the cylindrical inset 79 of the metal tip 75 depicted in Figure 6 may be a mirror or prism, “in which case the amount of 6 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 Appeal 2016-001004 Application 12/467,730 light reflected is relatively higher and the amount of light absorbed by the tip is relatively lower, resulting in reduced incidental heating of the metal tip.” (Johnson, col. 10,11. 54—59; cf. id., col. 6,11. 57—60 (acknowledging that unreflected light can result in heating of the metal tip)). 7. Alternatively, Johnson teaches that the cylindrical inset 79 may be fabricated from an optically transparent material such as fused silica, diamond or sapphire. In such a case, the reflective surface 81 may receive a multilayer dielectric coating such as a coating consisting of alternating layers of magnesium fluoride and cerium oxide. (See Johnson, col. 10,11. 59-65). Johnson does not describe such dielectric coatings as reflecting substantially all laser energy incident on the coatings. Cho 8. Cho describes an endoscopic light delivery system 10 including a laser source 26 coupled to fiber optics 12. (See Cho, col. 2,11. 57—59; & Fig. 1). The system 10 includes a light delivery tip 16, 116 optically coupled to an end 13 of the fiber optics 12. (See Cho, col. 3,11. 1^4; col. 4,11. 16—21; & Figs. 2A & 2B). 9. The light delivery tip 16, 116 has an opening 28 on one side. The light delivery tip 16, 116 also has a mirror 24 for redirecting light conducted into the tip by the fiber optics 12 laterally through the opening 28. (See Cho, col. 3,1. 67 — col. 4,1. 1; & Figs. 2A & 2B). Cho teaches fabricating the mirror 24 from a solid block of gold, silver or steel so that the mirror reflects light well and does not bum. (See Cho, col. 3,11. 41—45). 10. Figure 2B of Cho depicts a light delivery tip 116 having a tip member 126 with a relatively low profile head 126a. (See Cho, col. 4,11. 7 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 Appeal 2016-001004 Application 12/467,730 16—19). A low profile head may be advantageous when performing endoscopic surgery, where the head must be passed through a vessel to reach the surgery site. (Cf. Cho, col. 3,11. 9-11 & Fig. 1 (describing the use of the endoscopic light delivery system 10 to perform prostate surgery)). 11. According to Cho, “[t]ip member 26 is crimped about mirror 24 to hold mirror 24 in place.” (Cho, col. 3,11. 63 & 64). 12. The tip member 126 of Fig. 2B includes the head 126a. The head 126a as depicted in Figure 2 A covers the distal end of the mirror. As the Examiner correctly finds, the head 126a thereby defines a proximal surface that abuts the distal end of the mirror 24. (See Final Act. 7). 13. The tip member 126 of the light delivery tip 116 depicted in Figure 2B of Cho is bonded over the annular surface of the fiber optics 12. (See Cho, col. 3,11. 64—66). The end 13 of the fiber optic 12 abuts against a face 24a of the mirror 24. (See Cho, col. 3,11. 62 & 63). The end 13 of the fiber optic 12 and the face 24a of the mirror 24 are polished at complementary angles so that light transmitted through the fiber optic reflects laterally through the opening 28 of the tip member 126. (See Cho, col. 3,11. 38—41). Chou 14. Chou describes a laser beam angle delivery fiber optic device including an optical fiber 12 with an angled delivery tip 16. (See Chou, col. 5.11. 47, 48, 51 & 52). One such delivery tip, depicted in Figure 7, includes a ball tip having a bias-cut fiber surface 54 for redirecting laser light laterally of a longitudinal axis of the fiber. (See Chou, col. 7,11. 3—6; see also id., col. 4.11. 50-56). 8 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 Appeal 2016-001004 Application 12/467,730 15. Figure 7 of Chou depicts enclosing the ball tip of the optical fiber 12 in an end cap portion 58, thereby entrapping air or another fluid between the inside surface 60 of the end cap portion and the bias-cut fiber surface 54 of the optical fiber. (See Chou, col. 7,11. 8 & 9). Chou teaches providing the end cap portion 58 with a reflective inside surface 60. (See Chou, col. 7,11. 9-11). Thus, while most of the laser beam will be reflected off the bias cut end surface of the fiber itself, any stray beam impinging upon the inside surface of the end cap will also be reflected out the side window 62 of the device with the rest of the reflected beam. (Chou, col. 7,11. 11-16). Bass 16. Bass describes an endoscope having a sheath 31 containing a glass fiber 30 coupled to a laser 33. (See Bass, col. 2,11. 49-54 & Fig. 1). Bass’ apparatus is “end-firing” in the sense that the laser energy is transmitted through the fiber 30 from the laser 33 to a distal end of the fiber; and then discharged axially from the distal end of the fiber toward a treatment area internal to a patient. 17. A replaceable protective cap covers the distal end of the fiber 30. The replaceable protective cap includes a transparent window 41 of glass, quartz, sapphire or the like, positioned at the distal end of the fiber 30 in the axial path through which laser energy is discharged. The replaceable protective cap also includes a sleeve 40 that encompasses the transparent window 41 and the distal end of the fiber 30. (See Bass, col. 2,1. 58 — col. 3, 1. 4 & Fig. 1). The transparent window 41 protects the distal end of the fiber 9 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 Appeal 2016-001004 Application 12/467,730 from damage due to the presence of organic or inorganic debris. (See Bass, col. 3,11. 36-51 & Fig. 3). ANALYSIS First Issue The Examiner correctly finds that the lateral-lasing, fiber-optic device described by Johnson, including the metal tip 75 depicted in Fig. 6 of Johnson, satisfies each and every limitation of claim 1, except that the distal end portion of the member includes a proximally-facing surface; and that the device includes a reflective material disposed on the distal end portion of the reflector adjacent the proximally-facing surface of the member for reflecting laser energy transmitted through the reflector. (See Final Act. 6 & 7; see also FF 1—3 & 7). Fikewise, the Examiner correctly finds that the lateral lasing, fiber-optic device described by Johnson satisfies each and every limitation of claim 30, except that the distal end portion of the member includes a proximally-facing surface; and that the device includes a second multilayer dielectric coating disposed on the distal end portion of the reflector adjacent the proximally-facing surface of the member for reflecting laser energy transmitted through the reflector. (See Final Act. 9 & 10). Despite these differences, the subject matter of claims 1 and 30 would have been obvious from the combined teachings of Johnson, Cho and Chou. The metal tip 75 depicted in Fig. 6 of Johnson corresponds to the member recited in claims 1 and 30. A cylindrical inset 79 corresponds to the recited reflector. (See Final Act. 5). One method for assembling Johnson’s metal tip 75 is to press the inset 79 through a distal end of a passageway 77 through the metal tip until a proximal end of the inset abuts against an 10 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 Appeal 2016-001004 Application 12/467,730 abutment 85 in the passageway and a locking ring 87 projecting laterally from the distal end of the inset engages an annular groove 89 in the passageway. (See FF 5; see also App. Br. 13). The metal tip 75 as depicted in Figure 6 of Johnson has a relatively high profile, since the tip must accommodate both the axial passageway 77 and the laterally-extending cavity 76. (See FF 2). On the other hand, Figure 2A of Cho depicts a light delivery tip 116 having a relatively low profile. (See FF 10). Cho teaches crimping a tip member 126 about a mirror 24 to hold the mirror in place relative to the distal end of the fiber optics 12. (See FF 11). The Examiner finds that “the skilled artisan would [have] recognize [d] the use of the reflector in either a removable form, as taught by Johnson, or a fixed form, as taught by Cho.” (Examiner’s Answer, mailed August 18, 2015 (“Answer” or “Ans.”), at 3). One of ordinary skill in the art seeking to lower the profile of the tip, in accordance with the teachings of Cho (see FF 10), would have had reason to substitute a reflector positioned in a low-profile tip member, similar to the tip member 126 described by Cho, for the inset 79 and metal tip 75 described by Johnson. The Appellants point out that the proposed modification would have prevented the assembly of the metal tip 75 by the method taught by Johnson, namely, by pressing the inset 79 through a distal end of a passageway 77 through the metal tip. (See App. Br. 13; see also App. Br. 16). This assertion is true. Nevertheless, the assertion does not imply that Johnson teaches away from the proposed substitution underlying the rejection of claims 1 and 30. The proposed substitution contemplates crimping the tip member over the reflector rather than inserting the reflector into a 11 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 Appeal 2016-001004 Application 12/467,730 passageway in the member. As such, the argument is not responsive to the rejection entered by the Examiner. In addition, the Appellants argue that substituting a reflector crimped in a tip member, similar to the tip member 126 described by Cho, for the inset 79 and metal tip 75 described by Johnson, would have created more difficulties for one of ordinary skill in the art than it would have solved. (See App. Br. 14 & 15). Johnson teaches fabricating the cylindrical inset from a transmissive material such as fused silica, diamond or sapphire, with a multilayer dielectric coating formed on the angled reflective surface 81. (See FF 7). Such a reflector likely would transmit a portion of the laser light incident on the angled reflective surface. The incidence of this unreflected light on a portion of the metal tip distal to the reflector would contribute to incidental heating of the tip. (See FF 6 & 7). The Appellants correctly assert that Johnson appears to address this problem by positioning the reflector in the passageway 77, so that the unreflected light does not impinge on any portion of the tip distal to the reflector. (See App. Br. 14). If one substituted a reflector positioned in a low-profile tip member, similar to the tip member 126 described by Cho, for the inset 79 and metal tip 75 described by Johnson, in order to lower the profile of the tip member, the resulting tip member would have a portion abutting against the distal portion of the reflector. (See FF 12). That portion would be subject to heating by light left unreflected by the angled reflecting surface of the reflector. Nevertheless, one familiar with the teachings of Johnson and Cho might have chosen to substitute a reflector positioned in a low-profile tip member, similar to the tip member 126 described by Cho, for the inset 79 and metal tip 75 described by Johnson, despite the risk of heating of the 12 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Appeal 2016-001004 Application 12/467,730 metal tip. Cf. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“[A] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.”). This is particularly true because Chou would have suggested at least a partial solution to the problem. Chou describes a device including an optical fiber 12 having a distal end with a bias-cut fiber surface 54 partially enclosed in an end cap portion 58. (See FF 14). Chou teaches that most of the laser energy emitted by the optical fiber 12 will be redirected laterally through a side window 62 by the air/silicon interface at the bias-cut fiber surface 54; but that the portion of the laser energy not reflected at the bias-cut fiber surface will be reflected back by a secondary reflective surface 60. (See FF 15). The Examiner correctly concludes that it would have been obvious: to dispose a reflective multilayer dielectric material on the distal end portion of the reflector or an inner portion of the member including a planar surface, as taught by Chou, in order to provide heat insulation by reducing optical absorption and improve efficiency by reflecting stray beams; thereby, predictably preventing damage to tissue due to the aggregation of heat in the member. (Final Act. 8 & 9). The Appellants argue that “Chou does not teach or suggest disposing a reflective material on a distal end portion of a reflector.” (App. Br. 14 & 16 (underlining of reference names omitted)). On the other hand, Cho does teach positioning a secondary reflective surface behind an angled reflective surface to reflect back light the angled reflective surface failed to reflect. As discussed earlier, if one substituted a reflector positioned in a low-profile tip member, similar to the tip member 126 described by Cho, for 13 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 Appeal 2016-001004 Application 12/467,730 the inset 79 and metal tip 75 described by Johnson, in order to lower the profile of the tip member, the resulting tip member would have a portion abutting against the distal portion of the reflector. (See FF 12). That portion would be subject to heating by light left unreflected by the angled reflecting surface of the reflector. The teachings of Chou would have suggested addressing this problem by disposing a reflective material on the distal end portion of the reflector adjacent the portion of the tip member abutting the reflector in order to reflect away from the tip member the light left unreflected at the angled reflecting surface of the reflector. Given this suggested solution, it is reasonable to conclude that one familiar with the teachings of Johnson, Cho and Chou would have modified Johnson’s apparatus to lower the profile of the tip member in accordance with the teachings of Cho to include a member having a distal end portion including a proximally-facing surface; and to include reflective material disposed on the distal end portion of the reflector adjacent to the proximally- facing surface of the member for reflecting laser energy transmitted through the reflector. The modification was within the level of ordinary skill in the art, as reflected in the references, and would have resulted in an apparatus satisfying each and every limitation of claim 1 and claim 30. We sustain the rejection of claims 1, 2, 5, 6, 9, 30, 31, 33, 34, 36, 37, 41 and 42 under § 103(a) as being unpatentable over Johnson, Cho and Chou. In addition, we sustain the rejection of claim 8 under § 103(a) as being unpatentable over Johnson, Cho, Chou and Hmelar. 14 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 Appeal 2016-001004 Application 12/467,730 Second Issue Independent claim 21 recites: 21. An apparatus comprising: a member having an optical fiber and a distal end portion configured to be inserted into a patient’s body, wherein a first multilayer dielectric coating is disposed on a proximally-facing surface of the distal end portion of the member; a reflector having a flat surface angled relative to a longitudinal axis of the distal end portion of the member, the angled surface configured to redirect laser energy transmitted from the optical fiber to a lateral direction offset from the longitudinal axis; the angled surface being coated with a second multilayer dielectric coating disposed on the angled surface; and an outer cap disposed around the distal end portion and including a transmissive portion having transmissive material through which laterally-redirected energy may be transmitted out the apparatus. Bass describes an endoscope having a sheath 31 containing a glass fiber 30 coupled to a laser 33. (See FF 16). A replaceable protective cap covers the distal end of the fiber 30. The replaceable protective cap includes a transparent window 41 of glass, quartz, sapphire or the like, positioned at the distal end of the fiber 3 0 in the axial path through which laser energy is discharged. The replaceable protective cap also includes a sleeve 40 that encompasses the transparent window 41 and the distal end of the fiber 30. (See FF 17). The Examiner correctly concludes that it would have been obvious to further modify the apparatus taught by Johnson, as modified in view of the teachings of Cho and Chou, “to dispose a protective outer cap including a transmissive window, as taught by Bass, in order to protect the distal end portion from damage during use.” (Final Act. 14). The Examiner 15 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 Appeal 2016-001004 Application 12/467,730 further concludes that “the skilled artisan would position the window on the outer cover so as to allow light to exit as a matter of routine optimization.” (Final Act. 15). The reason articulated by the Examiner for proposing to add the replaceable protective cap to Johnson’s apparatus, as modified in view of the teachings of Cho and Chou, is supported by Bass’ teaching that the purpose of the replaceable protective cap is to protect the distal end of the fiber 30. (See FF 17). Nevertheless, the Appellants point out that Bass describes a replaceable protective cap having a transparent window 41 positioned to transmit laser energy from an end-firing, rather than a side-firing, laser apparatus. (See App. Br. 19). Bass discloses an end-firing laser apparatus. (See FF 17). Johnson, on the other hand, discloses a lateral-lasing (that is, a side-firing) device. (See FF 1). Furthermore, the metal tip 75 of Johnson’s device includes a transparent canopy or operculum located on the side of the tip member to both transmit side-fired laser energy and protect the distal end of the fiber 62. (See FF 2). One familiar with the teachings of Johnson, Cho, Chou and Bass would have had both sufficient skill and apparent reason to provide Johnson’s apparatus, as modified in view of the teachings of Cho and Chou, with a replaceable end cap having a transparent window positioned to transmit side-fired laser energy. We sustain the rejection of claims 21, 24, 29, 38 and 40 under § 103(a) as being unpatentable over Johnson, Cho, Chou and Bass. In addition, we sustain the rejection of claim 39 under § 103(a) as being unpatentable over Johnson, Cho, Chou, Bass and Griffin. In particular, we note that the Appellants allege that the teachings of Griffin and Bass, as applied to claim 39, “appear to be in conflict” (see App. Br. 16 1 2 3 4 5 6 7 8 9 10 11 12 13 Appeal 2016-001004 Application 12/467,730 20), but do not explain how those teachings conflict. The Examiner has responded to this argument (see Ans. 7); and the Appellants offers no further explanation or response in the Reply Brief (see Reply Br. 6 & 7). Without such further explanation, the argument is not persuasive. DECISION We AFFIRM the Examiner’s decision rejecting claims 1, 2, 5, 6, 8, 9, 21, 24, 29-31, 33, 34 and 36-A2. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a). AFFIRMED 17 Copy with citationCopy as parenthetical citation