Ex Parte Seeley et alDownload PDFPatent Trial and Appeal BoardMay 12, 201612735813 (P.T.A.B. May. 12, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 121735,813 11/08/2010 128670 7590 05/16/2016 Nixon & Vanderhye PC/Intuitive Surgical Operations 901 North Glebe Road, 11th Floor Arlington, VA 22203 Ryan Seeley 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 ATTORNEY DOCKET NO. CONFIRMATION NO. JRL-6094-6 7680 EXAMINER LEE, HWAS ART UNIT PAPER NUMBER 2886 NOTIFICATION DATE DELIVERY MODE 05/16/2016 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): ptomail@nixonvan.com pair_nixon@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RYAN SEELEY and MARKE. FROGGATT Appeal2014-007498 Application 12/735,813 Technology Center 2800 Before PETER F. KRATZ, N. WHITNEY WILSON, and AVEL YN M. ROSS, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's July 2, 2013 decision finally rejecting claims 57---63, 73-77, and 83-87 ("Final Act."). We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). We affirm-in-part. 1 Appellants identify the Real Party in Interest as Intuitive Surgical Operations, Inc. (Appeal Br. 1 ). Appeal2014-007498 Application 12/735,813 CLAHvIED SUBJECT ivIATTER Appellants' invention is directed to an apparatus for measuring the wavelength of a tunable laser (Abstract). Appellants explains that an ideal measurement system is directional (the wavelength measurement contains information about the direction of the laser tuning), continuous (measurement is available continuously, both temporally and across the tuning range of the laser), highly accurate, highly precise, provides absolute (as opposed to relative) information, has no or negligible drift, and has low latency (latency refers to the time taken between light exiting the laser and applying appropriate corrective signals to laser actuators) (Spec. i-f 8). Appellants are said to achieve these goals using claimed system, details of which are set forth in representative claim 57 (emphasis added): 57. An apparatus for measuring the wavelength of a tunable laser with high speed, low latency, and high absolute accuracy, compnsmg: an interferometer having at least two outputs, where a phase difference between the at least two outputs is not 0° or 180°· ' a wavelength reference having at least one spectral feature within the tuning range of the laser that does not change in an expected environment of the apparatus; and processing circuitry configured to use the spectral feature of the wavelength reference and the at least two interferometer outputs to concurrently produce an absolute measurement of wavelength as the wavelength of the tunable laser changes. 2 Appeal2014-007498 Application 12/735,813 REJECTIONS2 I. Claims 57 and 73 are rejected under 35 U.S.C. § 112, i-f 2, as being indefinite because of the word "concurrently" renders both claims indefinite. II. Claims 57---63, 73-77, and 83-87 are rejected under 35 U.S.C. § 102(b) as being anticipated by Stolte. 3 DISCUSSION Rejection under§ 112, ~ 2. The Examiner finds that the term "concurrently" is not defined in the claims or the Specification but, based on statements made in a March 13, 2013 Amendment "is taken to mean 'low latency'" (Final Act. 2-3). In particular, the Examiner relies on the following statement made by Appellants in the March 13th Amendment: The instant specification describes how processing circuitry may be configured to generate a low latency; effectively real- time or concurrent, error signal from a set of wavelength of the laser that compares the desired .... (Ans. 7, emphasis in Answer, but not in original Amendment). The Examiner finds the quoted passage "sets forth that 'concurrent' is to be interchangeable with 'low latency' and nothing else in the record indicated 'concurrent' should be interpreted to mean anything else" (Ans. 7). The Examiner finds that "low latency" is indefinite because the Specification does not establish a standard for "low" (Final Act. 3). 2 The Examiner withdrew the rejection of claims 58, 74, 83, 84, and 87 under 35 U.S.C. § 112, i-f 4, which was set forth in the Final Action (Ans. 6). Accordingly, that rejection is not before us. 3 Stolte et al., U.S. Patent Pub. 2002/0149779 Al, published October 17, 2002. 3 Appeal2014-007498 Application 12/735,813 First, we disagree with the Examiner that Appellants' statement in the March 13th Amendment suggests that "concurrent" and "low latency" are used interchangeably. The sentence in question uses the term "or" between "low latency" and "concurrent," which actually suggests that the terms are not interchangeable. Second, the Examiner has not persuasively pointed to any disclosure in the Specification which would suggest that "concurrently" should be construed as "low latency" (see, e.g., Ans. 7). In fact, the Examiner finds that there was no "express usage of "concurrent" in the Specification (id. ).4 "[W]e look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation." In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). In this instance, the Specification does not provide a definition for "concurrently," or suggest that the term should not be given its ordinary meaning. There appears to be no dispute that the ordinary meaning of "concurrently" is "simultaneously" or "at the same time." Thus, we conclude that Appellants have shown error in the rejection under § 112, i-f 2. Anticipation Rejection. Appellants do not offer separate arguments for independent claims 57 and 73. Accordingly, our discussion will focus on claim 57. We address any separately argued dependent claims below. The principal limitation at issue from claim 57 is "processing circuitry configured to use the spectral feature of the wavelength reference and the at 4 Notwithstanding this finding, the Examiner has not rejected the claims as the failing to meet the written description requirement of 35 U.S.C. § 112, i-f 1. 4 Appeal2014-007498 Application 12/735,813 least two interferometer outputs to concurrently produce an absolute measurement of wavelength as the wavelength of the tunable laser changes" (claim 57, emphasis added). 5 The Examiner has taken the position that the phrase "configured to" means that the claimed apparatus is interpreted as reciting a general purpose computer and that the recitation that the circuitry is configured to perform a specific task in a particular way is not material to patentability because it does not structurally limit the claimed apparatus (Final Act. 8-9). We disagree, because the "configured to" language requires that the prior art structure be capable of performing the function without further programming. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (discussing Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008)). Accordingly, in order to properly reject the claims as anticipated by Stolte, the Examiner must show that Stolte discloses the recitation "configured to use ... to concurrently produce an absolute measurement of wavelength ... " "A prior art reference anticipates a patent claim under 35 U.S.C. § 102(b) if it discloses every claim limitation." In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012) (citing Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1336-37 (Fed. Cir. 2010)). In this instance, Appellants argue that Stolte fails to disclose "processing circuitry configured to use the spectral feature of the wavelength reference and the at least two interferometer outputs to concurrently produce an absolute measurement of wavelength as the wavelength of the tunable laser changes" (Appeal Br. 11 ). 5 Independent claim 73 includes a step which recites "concurrently produc[ing] an absolute measurement of wavelength." 5 Appeal2014-007498 Application 12/735,813 The Examiner finds that Stolte teaches this limitation in several ways. First, the Examiner finds that because Stolte states that "[b ]ecause this online calibration reflects the instantaneous measurement conditions," Stolte teaches "concurrently produc[ ing] an absolute measurement of wavelength" (Final Act. 7, citing Stolte, i-f 14). The Examiner also finds that Stolte teaches producing that measurement "as the wavelength of the tunable laser changes" because the wavelength of Stolte's laser "is constantly changing due to environmental conditions and is not limited to only the time when the laser is swept in full range during calibration" (id.). In response, Appellants argue that Stolte' s disclosure of "instantaneous measurement conditions" in Paragraph 14 is actually performed after the laser has been swept through all of its wavelengths and is not, therefore, "concurrently produc[ing] an absolute measurement of wavelength as the wavelength of the tunable laser changes" (Appeal Br. 12, citing Stolte, i-f 29). This argument is not persuasive because, as found by the Examiner (e.g. Ans. 9-10), the wavelength of Stolte's laser is constantly changing, and the claims are not limited to wavelength changes resulting from laser sweeps. "[T]he PTO must give claims their broadest reasonable construction consistent with the specification . . . Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation." In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). "[A]s applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee." Id. To the extent possible, claim terms are given their ordinary and customary meaning, as they would be understood by one 6 Appeal2014-007498 Application 12/735,813 of ordinary skill in the art in question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en bane). As explained by the Examiner (Ans. 9) and not specifically challenged by Appellants (see, Reply Br. 5-8), the claims recite that the absolute measurement of wavelength is produced as the wavelength of the tunable laser changes, not as the laser sweeps. Nor do Appellants challenge the Examiner's finding that the wavelength of Stolte' s laser is constantly changing, and the production of an absolute measurement of wavelength will, therefore, occur concurrently. 6 This unchallenged finding and unchallenged claim construction supports the Examiner's anticipation rejection. Appellants' arguments regarding the Examiner's findings about whether Stolte teaches the claim limitation even if "changes" is limited to a sweeping of the laser (see, Reply Br. 5-8) are not pertinent in view of our finding that the claim covers all wavelength changes. Appellants offer separate arguments in favor of the patentability of claims 58, 74, and 83-87 (Appeal Br. 18-20, Reply Br. 11-12). We reverse the rejections of these claims. The Examiner's rejections of these claims is based on findings that Stolte teaches the claimed structure and would, therefore, be expected to have the same properties as set forth in these 6 Appellants argue that Stolte' s correction of the drifting wavelength of the laser due to environment conditions occurs during post-laser sweep after data from the device under test and the absolute reference has been recorded, and therefore, is not done concurrently. This argument is unavailing because it fails to address the Examiner's finding that Stolte's wavelength is constantly changing and, therefore, the measurement of absolute wavelength will take place concurrently with changes in the wavelength of the tunable laser. 7 Appeal2014-007498 Application 12/735,813 dependent claims (see, e.g. Final Act. 5 ("With respect to claims 58, 72, and 74, Stolte shows the same identical structure/steps as claimed and therefore, the examiner submits that Stolte's wavemeter to have the same merits as claimed."). However, the Examiner has not provided adequately detailed findings to show that Stolte' s structure is "the same/identical structure" as is described in Appellants' Specification (e.g. i-f 84) to conclude that Stolte's device/method would necessarily have the properties/steps set forth in dependent claims 58, 74, and 83-87. Accordingly, we reverse the rejections of these claims. CONCLUSION We REVERSE the rejection of claims 57 and 73 under 35 U.S.C. § 112, i-f 2, as being indefinite. We AFFIRM the rejection of claims 57, 59---63, 73, and 75-77 under 35 U.S.C. § 102(b) as being anticipated by Stolte. We REVERSE the rejection of claims 58, 74, and 83-87. 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)(l )(iv). AFFIRMED-IN-PART 8 Copy with citationCopy as parenthetical citation