Ex Parte Matsubara et al

Patent Trial and Appeal Board

Dec 23, 2016

13834171 (P.T.A.B. Dec. 23, 2016)

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.
13/834,171 03/15/2013 Kazuo MATSUBARA 20130392A 9157
513 7590 12/28/2016
WENDEROTH, LIND & PONACK, L.L.P.
1030 15th Street, N.W.,
Suite 400 East
Washington, DC 20005-1503
EXAMINER
LUKJAN, SEBASTIAN X
ART UNIT PAPER NUMBER
3769
NOTIFICATION DATE DELIVERY MODE
12/28/2016 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):
ddalecki@wenderoth.com
eoa@ wenderoth. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAZUO MATSUBARA, TERUMI MATSUBARA, NAOKI
HONMA, HIROKI SUMA, and YOSHIYUKI TASHIRO
Appeal 2015-004166
Application 13/834,171
Technology Center 3700
Before MICHELLE R. OSINSKI, LISA M. GUIJT, and
PAUL J. KORNICZKY, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134 of the Examiner’s
decision2 rejecting claims 1—9. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify the real party of interest as Atom Medical Corporation.
Appeal Br. 2.
2 Appeal is taken from the Final Office Action dated January 30, 2014
(“Final Act.”).
Appeal 2015-004166
Application 13/834,171
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is the sole independent claim on appeal
and is representative of the claimed subject matter on appeal.
1. A light-beam therapeutic apparatus comprising:
an apparatus body portion including a light source, a light
guide rod configured to guide light from the light source, a
connecting socket facing an end portion of the light guide rod, a
cooling fan configured to cool the light source, an electronic
component configured to perform control required for a therapy,
and a control display panel configured to display contents of the
therapy set by operating the electronic component;
a therapeutic portion including a light guide portion
having a plurality of bundled optical fibers, the optical fibers
being spread out adjacently to one another into a flat-panel shape
so as to define a pad portion, wherein an end portion of the light
guide portion of the therapeutic portion is formed into a light­
receiving plug that is insertable into the connecting socket of the
apparatus body portion; and
a translucent thermal insulation member disposed between
the light guide rod and the light-receiving plug,
wherein the light-receiving plug is configured to be kept
in a coupled state by an attracting action of a permanent magnet
provided on a side of the connecting socket.
REJECTIONS
I. Claims 1—3 and 7—9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pipe (US 2009/0030490 Al; pub. Jan. 29, 2009), Snackers
(US 6,004,045; iss. Dec. 21, 1999), Whitehurst (US 2002/0138120 Al; pub.
Sept. 26, 2002); and Woodward (US 6,719,447 Bl; iss. Apr. 13, 2004).
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Appeal 2015-004166
Application 13/834,171
II. Claims 4—6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pipe, Snackers, Whitehurst, Woodward, and Zhu (US
6,554,495 Bl; iss. Apr. 29, 2003).3
ANALYSIS
Rejection I
Regarding independent claim 1, the Examiner finds, inter alia, that
housing 12 of Pipe’s device discloses the claimed apparatus body portion
and that Pipe’s flexible light emitting panel assembly 18 discloses the
claimed therapeutic portion. Final Act. 6—7 (citing Pipe, Figs. 1, 2). The
Examiner further finds that Pipe’s “elongated flexible light transmitting
assembly or light pipe 16” (Pipe 127) “encompasses both the light guide rod
and the light guide portion,” as claimed, determining that “one part of
element 16 is the light guide rod and the other portion of the element is the
light guide portion” (Final Act. 3). The Examiner’s annotated Figure 2 of
Pipe, which illustrates the Examiner’s findings, is reproduced below. Id. at
4.
3 Although the Examiner omitted Whitehurst and Woodward from the
statement of the rejection of claims 4—6, claims 4—6 depend from claim 1
and claim 1 is rejected over Pipe, Snackers, Whitehurst, and Woodward.
Therefore, the rejection of claims 4—6 must also necessary include
Whitehurst and Woodward, and we consider the omission of Whitehurst and
Woodward to be a typographical error.
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Appeal 2015-004166
Application 13/834,171
Figure 2 of Pipe is a perspective view of an infant phototherapy device, and
the Examiner has labelled a portion of Pipe’s element 16 as a “Light Guide
Portion” and a portion of Pipe’s element 16 as a “Light Guide Rod.”
Appellants argue, inter alia, that “[c]laim 1 defines an apparatus body
portion and a therapeutic portion as discrete structural elements,” and
requires that “[t]he apparatus body portion includes the light guide rod, and
[that] the therapeutic body portion includes the light guide portion.” Appeal
Br. 5. Appellants submit that Pipe’s light pipe 16 “is not included [in] the
apparatus body portion,” which the Examiner determined as Pipe’s housing
12, and instead, that Pipe discloses light pipe 16 “removably connected to
the housing assembly.” Id. at 4—5 (citing Pipe ^fl[ 26—27).
In response, the Examiner determines that claim 1 does not “specify
how the claimed ‘light guide rod’ is positioned relative to the claimed
‘apparatus body portion,”’ and therefore, Appellants are arguing limitations
that are not claimed. Ans. 9.
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Appeal 2015-004166
Application 13/834,171
We agree with Appellants that the Examiner’s finding that a portion
of Pipe’s assembly 16 adjacent Pipe’s housing 12 meets the claim limitation
of an apparatus body portion including a light guide rod is unreasonable.
Rather, a preponderance of the evidence supports the Appellants’ position
that Pipe fails to disclose that Pipe’s housing 12 includes a light guide rod.
We agree with Appellants that one of ordinary skill in the art would
understand the entirety of Pipe’s assembly 16 as corresponding to the
claimed light guide portion of the therapeutic portion, and therefore, not
included in housing 12.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 1 and claims 2, 3, and 7—9 depending therefrom.
Rejection II
Claims 4—6 depend from independent claim 1, and the Examiner’s
findings with respect to Snackers, Whitehurst, Woodward, and Zhu do not
cure the deficiency in the Examiner’s finding with respect to Pipe and as
applied to claim 1. Accordingly, for the reasons stated supra, we do not
sustain the Examiner’s rejection of claims 4—6.
DECISION
The Examiner’s rejections of claims 1—9 are reversed.
REVERSED
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