Ex Parte Henneberg

Patent Trial and Appeal Board

Feb 27, 2017

13255675 (P.T.A.B. Feb. 27, 2017)

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.
13/255,675 11/04/2011 Morten Henneberg 011765-0398784 8492
909 7590
Pillsbury Winthrop Shaw Pittman, LLP
PO Box 10500
McLean, VA 22102
EXAMINER
SMITH, RUTH S
ART UNIT PAPER NUMBER
3737
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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):
docket_ip@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MORTEN HENNEBERG
Appeal 2015-004334
Application 13/255,675
Technology Center 3700
Before LINDA E. HORNER, LISA M. GUIJT, and PAUL J. KORNICZKY,
Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Morten Henneberg (Appellant)1 seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision, as set forth in the Final Office Action,
dated August 18, 2014 (“Final Act.”), rejecting claims 1-3, 5-9, 11, 12, 14,
and 16-18. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant identifies RSP Systems A/S as the real party in interest. Appeal
Br. 1.
Appeal 2015-004334
Application 13/255,675
CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter relates to “an optical probe for
measuring light signals in vivo.'” Spec. 1,1. 3. Claims 1 and 14 are
independent. Claim 1 is representative of the subject matter on appeal and is
reproduced below.
1. An optical probe for measuring light signals
comprising:
- an optical fiber for guiding incoming light and having a
first end for receiving incoming light and a second end for
emitting said incoming light,
- a dichroic mirror positioned to receive incoming light
from the second end of the optical fiber and having optical
characteristics to reflect a majority portion of the incoming light
towards a sample location and to pass a minority portion of the
incoming light through the dichroic mirror or else positioned to
receive incoming light from the second end of the optical fiber
and having optical characteristics to pass a majority portion of
the received light through the dichroic mirror towards a sample
location and to reflect a minority portion of the received light,
- a lens positioned and arranged to receive said majority
portion of the receiving the incoming light from the dichroic
mirror and to focus said incoming light towards a sample location
and to collect altered light from said sample location,
- a light guide configured to guide said altered light to a
measuring location,
- a detector configured and arranged to log light and
positioned and arranged to receive said minor portion of the
incoming light from the dichroic mirror and constructed and
arranged to measure intensity fluctuations in said incoming light.
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Application 13/255,675
EVIDENCE
The Examiner relies upon the following evidence in the Final Action:
Yoshida
Justus
Glushko
Lambert
Nikoonahad
Sarfaty
US 5,882,301
US 6,140,651
US 6,291,132 B1
US 2004/0019283 A1
US 2007/0091325 A1
US 2010/0179436 A1
REJECTIONS
Mar. 16, 1999
Oct. 31,2000
Sept. 18, 2001
Jan. 29, 2004
Apr. 26, 2007
July 15,2010
The Final Action includes the following grounds of rejection:
1. Claims 1-3, 5-9, 11, 12, 14, 17, and 18 under 35 U.S.C. § 103(a)
as unpatentable over Lambert and one of Justus, Glushko, and
Nikoonahad.
2. Claim 16 under 35 U.S.C. § 103(a) as unpatentable over Lambert,
one of Justus, Glushko, and Nikoonahad, and one of Sarfaty and
Yoshida.
ANALYSIS
The Examiner finds that Lambert discloses an optical probe
substantially as called for in claims 1 and 14, except that Lambert discloses
using a fiber optic splitter instead of a dichroic mirror for causing a portion
of the incoming light to be transmitted to a detector. Final Act. 2 (citing
Lambert, Figs. 6, 10D, para. 152). The Examiner finds that each of Justus,
Glushko, and Nikoonahad discloses “the equivalence of a fiber optic splitter
and a dichroic mirror for transmitting a portion of light while reflecting a
portion of light.” Id. at 2-3 (citing Justus, col. 7,11. 14-39; Glushko, col. 16,
11. 34^10; Nikoonahad, para. 20); see also Ans. 5 (Examiner finding that “a
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Application 13/255,675
dichroic mirror and its properties and uses are well known in the art”). The
Examiner determines that it would have been obvious to one having ordinary
skill in the art to have modified Lambert to use a dichroic mirror to transmit
a portion of the light to the sample and transmit a portion of the light to a
light logging device because “[s]uch a modification merely involves the
substitution of known optical elements for directing light along a desired
path for other such elements.” Final Act. 3; see also id. at 4 and Ans. 5
(Examiner finding that a dichroic mirror in Lambert “would perform the
same function as the splitter in that both would transmit a portion of the light
while reflecting a portion of the light”).
Appellant contends the Examiner erred in finding that Justus,
Glushko, and Nikoonahad disclose the equivalence of a fiber optic light
splitter and a dichroic mirror for transmitting a portion of incoming light
while reflecting a portion of incoming light. Appeal Br. 11. Appellant
further contends that “there is absolutely no suggestion, motivation or any
objective reason to modify Lambert to incorporate a dichroic mirror as a
beam splitter for the monochromatic light of Lambert.” Appeal Br. 14
(Appellant arguing that “[i]f one of ordinary skill in the art wished to
substitute the fiber optic splitter of Lambert with a mirror, a conventional
beam splitter lacking dichroic properties would have been used instead, as
the light which reaches the splitter is only of one wavelength”).
We agree with Appellant that neither Justus, nor Glushko, nor
Nikoonahad discloses that it was known in the art to use a dichroic mirror to
split incoming light into two portions. Justus relates to an “optically
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stimulated, fast neutron sensor and dosimeter.” Justus, Title. Justus teaches
using a dichroic mirror to pass the incoming light (807 nm light output from
a diode laser array) to stimulate thermoluminescence from a ZnS:Cu, Nd
glass fiber sensor that had been previously exposed to ionizing radiation.
Justus, col. 7,11. 19-25. The dichroic mirror also is selected to reflect the
emitted light (blue-green light from the stimulated thermoluminescent
emission) into a photomultiplier tube. Id. at col. 7,11. 19-21, 25-30. Justus
teaches that “[a] fiber optic splitter may be used in place of a dichroic mirror
to separate the simulation [sic, stimulation] light from the signal light.” Id.
at col. 7,11. 30-32. Thus, Justus discloses using either a dichroic mirror or a
fiber optic splitter to transmit the incoming light and to reflect the emitted
light.
Glushko relates to “a reading apparatus for [a] 3D fluorescent memory
device.” Glushko, col. 16,11. 31-32. “A dichroic beam splitter 12 and
optical system 13 are placed between the source of radiation 11 [(e.g., a laser
diode)] and aperture 14.” Id. at col. 16,11. 34-36. Glushko teaches that the
dichroic beam splitter “is transparent for the reading radiation and is
reflective for the fluorescent radiation.” Id. at col. 16,11. 36-38. The
reading radiation of illumination source 11 is passed through dichroic beam
splitter 12 and is focused by optical lens 13 onto small aperture 14, through
lens 15, and onto cell 3 of information layer 2 of multilayer fluorescent disc
20. Id. at col. 17,11. 55-63, Fig. 18. “The reading radiation is converted
into fluorescence radiation according to the amount of fluorescent material
in the cell 3.” Id. at col. 17,11. 63-65. The fluorescence is collected by lens
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Application 13/255,675
15 into aperture 14, and lens 13 projects fluorescence light from aperture 14
on dichroic beam splitter 12, which reflects the light onto receiver 16. Id. at
col. 17,1. 66-col. 18,11. 6, Fig. 18. Glushko teaches that “[t]he dichroic
beam splitter 12 can be a dichroic mirror, an optical wedge, a hologram, a
fibers coupler/splitter or the like.” Id. at col. 16,11. 38—40. Thus, similar to
Justus, in Glushko the incoming light (reading radiation) is passed through
the dichroic beam splitter, and the emitted light (fluorescent radiation) is
reflected.
Nikoonahad relates to a metrology system. Nikoonahad, Abstract. In
the definition section of this reference, Nikoonahad defines a “[b]eam
delivery system” as “an ensemble of optical components comprising,
optionally, dichroic mirrors, filters, beam splitters, optical fiber, fiber
couplers, fiber splitters, diffraction-gratings for delivering radiation energy
from one or more radiation sources, monochromatic or not, to illumination
optics for a channel.” Id. at para. 20. This paragraph discloses only a listing
of various beam delivery systems and makes no mention of using a dichroic
mirror to split an incoming beam, or the interchangeability of a fiber optic
splitter and a dichroic mirror to split an incoming light beam.
Lambert diverts only a very small portion (1%) of incoming light to a
photodetector; however, the incoming light is monochromatic and Lambert
discloses using a fiber optic splitter to split this incoming light. Lambert,
Fig. 10D, paras. 151-53. As noted above, Justus and Glushko teach using a
dichroic mirror or beam splitter to transmit incoming light of one
wavelength and reflect emitted light of a different wavelength. The prior art
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does not demonstrate adequately that it was recognized in the art that
dichroic mirrors would be suitable for splitting an incoming monochromatic
beam, such as in Lambert.2 Thus, the Examiner has failed to set forth
adequate reasoning based on rational underpinnings to explain why one
having ordinary skill in the art would have been led to modify Lambert in
the manner claimed to include a dichroic mirror in place of its fiber optic
splitter. For this reason, we do not sustain the rejection of independent
claims 1 and 14 and dependent claims 2, 3, 5-9, 11, 12, 17, and 18 under
35 U.S.C. § 103(a) as unpatentable over Lambert and one of Justus,
Glushko, and Nikoonahad.
The second ground of rejection of dependent claim 16 suffers from
the same deficiency in the articulated reason to modify Lambert with the
teachings of one or Justus, Glushko, and Nikoonahad. Final Act. 4 (relying
on one of Sarfaty and Yoshida to discuss the specific type of photodetector
called for in claim 16). For the same reasons discussed above, we do not
sustain the rejection of claim 16 under 35 U.S.C. § 103(a) as unpatentable
over Lambert, one of Justus, Glushko, and Nikoonahad, and one of Sarfaty
and Yoshida.
2 In particular, we could find no teaching in the prior art cited that
demonstrates whether dichroic mirrors were known in the art to be imperfect
such that a dichroic mirror does not transmit 100%, or reflect 100% as the
case may be, of the incoming light at a particular wavelength.
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DECISION
The decision of the Examiner to reject claims 1-3, 5-9, 11, 12, 14,
and 16-18 is REVERSED.
REVERSED
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