Ex Parte Shanks et al

Board of Patent Appeals and Interferences

Jul 26, 2011

10612504 (B.P.A.I. Jul. 26, 2011)

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.
10/612,504 07/01/2003 Steven C. Shanks 206-038 3500
33354 7590 07/27/2011
ETHERTON LAW GROUP, LLC
2010 E. University Drive, Suite 25
Tempe, AZ 85281
EXAMINER
JOHNSON III, HENRY M
ART UNIT PAPER NUMBER
3769
MAIL DATE DELIVERY MODE
07/27/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte STEVEN C. SHANKS and KEVIN B. TUCEK
________________

Appeal 2009-010707
Application 10/612,504
Technology Center 3700
________________

Before LINDA E. HORNER, STEVEN D.A. McCARTHY and
STEFAN STAICOVICI, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

The Appellants’ claims being twice-rejected, the Appellants appeal 1
under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-10, 2
13-30 and 32. The Examiner rejects claims 1, 2, 8-10, 13-15 and 22 under 3
35 U.S.C. § 102(b) as being anticipated by Lai (US 6,074,411, issued Jun. 4
13, 2000); claims 1-10, 13, 14, 17, 18, 21 and 23-27 under the judicially 5
created doctrine of obviousness-type double patenting as being unpatentable 6
over claims 1-11 and 13 of Shanks (US 6,746,473, issued Jun. 8, 2004); and 7
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claims 1-10, 13-30 and 32 under 35 U.S.C. § 103(a) as being unpatentable 1
over Gerdes (US 6,267, 779, issued Jul. 31, 2001) and Zavislan (US 2
5,653,706, issued Aug. 5, 1997). The Examiner has withdrawn claims 35-39 3
from consideration. Claims 11, 12, 31, 33 and 34 are cancelled. We have 4
jurisdiction under 35 U.S.C. § 6(b). 5
We sustain the rejection of claims 1-10, 13-15, 17-20, 22-28, 30 and 6
32 as being unpatentable over Gerdes and Zavislan. We also sustain the 7
rejection of claims 1-10, 13, 14, 17, 18, 21 and 23-27 as being unpatentable 8
over claims 1-11 and 13 of Shanks. We do not sustain the remaining 9
grounds of rejection. 10
Claim 1 is illustrative of the claims on appeal: 11
1. A multi-probe device comprising: 12
a) two or more laser energy sources, 13
each generating one or more laser beams; 14
b) two or more handheld probes from 15
which the laser beams emit, wherein: 16
i. each of the handheld probes 17
houses one or more laser energy 18
sources therewithin; 19
ii. each of the handheld probes 20
emits one or more laser beams, and 21
each of the handheld probes is not 22
connected to a support structure while 23
being freely moved by a user’s hand 24
relative to the surface of the skin of a 25
patient; and 26
c) an optical arrangement attached to 27
each handheld probe for receiving one or 28
more laser beams and for transforming each 29
of the laser beams into a desired spot shape. 30
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Multiple briefs and answers appear in the file. This appeal has been 1
decided on the basis of the Appeal Brief dated August 2, 2006 (“App. Br.”); 2
the Supplemental Appeal Brief dated March 5, 2007 (Supp. App. Br.”); the 3
Answer mailed March 17, 2009 (“Ans.”); and the Reply Brief dated April 4
17, 2009. Since there is no issue in this appeal as to adequacy of the original 5
disclosure, all references to “Spec.” will be to the Specification as amended 6
on or after December 20, 2004. 7
8
Rejection of Claims 1-10, 13, 14, 17, 18, 21 and 23-27 for Obviousness-Type 9
Double Patenting 10
The Appellants’ sole argument regarding the rejection claims 1-10, 11
13, 14, 17, 18, 21 and 23-27 for obviousness-type double patenting is that 12
“none of these claims has yet been allowed, and therefore no actual double-13
patenting can be determined.” (App. Br. 35; see also Supp. App. Br. 15 14
(including the heading “Claims 1-10, 13-14, 17, 18, 21 and 23-27 Cannot be 15
Actually Rejected for Double-Patenting Because Claims Are Not Yet 16
Otherwise Allowable.”)) Since Shanks issued prior to the filing of the 17
Notice of Appeal in the present proceeding, the rejection is procedurally 18
proper. We sustain the rejection of claims 1-10, 13, 14, 17, 18, 21 and 23-27 19
for obviousness-type double patenting as being unpatentable over claims 1-20
11 and 13 of Shanks. We note that the Appellants represent that they intend 21
to file a terminal disclaimer if necessary to procure a patent. (Id.) 22
23
Rejection of Claims 1, 2, 8-10, 13-15 and 22 under § 102(b) 24
Claim 1 recites a device including “an optical arrangement attached to 25
each handheld probe . . . for transforming each of the laser beams into a 26
desired spot shape.” Lai discloses a device including handheld probes or 27
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laser diode modules 20. (Lai, col. 2, ll. 8-11.) The laser diode modules 20 1
have “focusing optics,” not otherwise described. (Lai, col. 2, ll. 32-34.) The 2
Examiner finds that “any optical element will result in some transformation 3
of the beam as that is the reason for using such an element. The resultant 4
beam will have some shape, although no specific shape is claimed.” (Ans. 5
3.) The Appellants deny that Lai describes an optical arrangement attached 6
to each handheld probe or laser diode module 20 for transforming each of 7
the laser beams into a desired spot shape. In particular, the Appellants deny 8
that “focusing optics” necessarily has the capacity to transform the shape of 9
a laser beam. (App. Br. 17-18.) 10
Functional language may not patentably distinguish a claimed 11
structure from a prior art structure if the prior art structure is capable of 12
performing the recited function. See In re Schreiber, 128 F.3d 1473, 1478-13
79 (Fed. Cir. 1997). Here, however, the Examiner has not provided a sound 14
basis for belief that the “focusing optics” disclosed by Lai necessarily has 15
the capacity to transform a laser beam into a specific, albeit unspecified, 16
shape. Although the “focusing optics” may transform the beam, it will not 17
necessarily transform the shape of the beam. Although the beam must have 18
some shape, the “focusing optics” need not be capable of transforming that 19
shape. We do not sustain the rejection of claim 1, or of its dependent claims 20
2, 8-10, 13-15 and 22, under § 102(b) as being anticipated by Lai. 21
22
Rejection of Claims 1-10, 13-30 and 32 under § 103(a) 23
ISSUES 24
The Appellants separately argue this ground of rejection as applied to 25
claims 1-10 and 13-22 (see Supp. App. Br. 16-21); claims 23-29 (see Supp. 26
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App. Br. 25-29); and as applied to claims 30 and 32 (see Supp. App. Br. 31-1
35). Nevertheless, the Appellants respond to the rejection of each set of 2
claims with essentially the same arguments. Independent claims 1, 23 and 3
30 are representative. In addition, the Appellants present separate arguments 4
in support of the patentability of claims 2, 16, 17, 19 and 21 (see Supp. App. 5
Br. 21-24) as well as claim 29 (see Supp. App. Br. 29-30). 6
Only issues and findings of fact contested by the Appellants have 7
been considered. See Ex Parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 8
2010). The Examiner’s findings and conclusions, and the Appellants’ 9
contentions, raise six issues regarding the rejection under § 103(a): 10
First, is Zavislan analogous art? (See Supp. App. Br. 16-18, 25-27 11
and 31-32.) 12
Second, does Zavislan teach away from a device including two or 13
more handheld probes emitting two or more laser beams simultaneously to 14
impinge two different parts of a patient’s body? (See Supp. App. Br. 18-19, 15
21-22, 27-28 and 33-34.) 16
Third, do the evidence and technical reasoning underlying the 17
rejection adequately support the conclusion that a device including two or 18
more handheld probes, wherein each of the handheld probes emits one or 19
more laser beams and each of the handheld probes is not connected to a 20
support structure while being freely moved by a user’s hand relative to the 21
surface of the skin of a patient, would have been obvious from the combined 22
teachings of Gerdes and Zavislan? (See Supp. App. Br. 20-21; see also id. 23
28-29 and 34-35.) 24
Fourth, do the evidence and technical reasoning underlying the 25
rejection adequately support the conclusion that a device including a laser 26
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energy source generating a laser beam having a wavelength in the ultraviolet 1
range would have been obvious from the combined teachings of Gerdes and 2
Zavislan? (See Supp. App. Br. 22-24 and 29.) 3
Fifth, do the evidence and technical reasoning underlying the rejection 4
adequately support the conclusion that a device including an optical 5
arrangement attached to each handheld probe for transforming each of the 6
laser beams into a spot shape which is substantially linear or which is 7
substantially in the shape of a plus sign would have been obvious from the 8
combined teachings of Gerdes and Zavislan? (See Supp. App. Br. 24.) 9
Sixth, do the evidence and technical reasoning underlying the rejection 10
adequately support the conclusion that a device including an optical 11
arrangement attached to each handheld probe for transforming first and 12
second laser beams into different first and second spot shapes would have 13
been obvious from the combined teachings of Gerdes and Zavislan? (See 14
Supp. App. Br. 25.) 15
16
FINDINGS OF FACT 17
The record supports the following findings of fact (“FF”) by a 18
preponderance of the evidence. 19
1. Zavislan is analogous art. 20
2. Zavislan is within the Appellants’ field of endeavor. More 21
specifically, Zavislan describes a hand held instrument similar in structure 22
and function to the devices recited in claims 1, 23 and 30. (See infra FF 3-23
6.) 24
3. Zavislan describes a hand held instrument including a 25
handpiece 10. The handpiece 10 containing means which projects and scans 26
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a laser beam 12 over an area 14 below the surface of the skin requiring 1
treatment. (Zavislan, col. 1, ll. 12-18 and col. 3, ll. 38-42.) 2
4. Zavislan’s handpiece 10 includes an optical arrangement 3
including a lens 68; a fold mirror 70; a polarization-sensitive scan mirror 54 4
and a front lens 42. The lens 68 and the front lens 42 focus the laser beam 5
12 onto the area 14. (Zavislan, col. 6, ll. 34-45.) 6
5. One handpiece 10 described by Zavislan uses a laser 20 7
external to the handpiece 10 as a laser energy source. This handpiece 10 8
uses an optical fiber cable 22 to deliver the energy from the external laser 20 9
to the handpiece 10. (Zavislan, col. 4, ll. 8-10.) Another handpiece 100 10
includes an internal laser diode 102 as a laser energy source. The handpiece 11
is otherwise identical to the handpiece 10 as far as its beam projection 12
system is concerned. (Zavislan, col. 7, ll. 53-58.) These teachings imply 13
that internal and external laser sources were known to be interchangeable. 14
(See Ans. 5.) 15
6. Zavislan’s instrument is similar in structure to each of the 16
devices recited in claims 1, 23 and 30 in that includes at least one handpiece 17
or probe housing a laser source and an optics arrangement. Zavislan’s 18
instrument is similar in function to each of the device recited in claims 1, 23 19
and 30 in that each illuminates an area of the skin with a laser beam for 20
therapeutic purposes. 21
7. Zavislan’s instrument includes only one handpiece. The 22
handpiece is designed to induce photothermolysis of tissue. (See Zavislan, 23
col. 3, ll. 42-44.) The devices recited in claims 1, 23 and 30 include at least 24
two probes. The Specification indicates that the probes provide multiple 25
types of low level laser therapy treatments. (Spec. 2, para. 0007.) 26
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8. Zavislan also addresses to a problem with which the Appellants 1
were involved. Broadly speaking, one problem with which the Appellants 2
were involved was the delivery of a laser beam to an area of a patient’s skin 3
for therapeutic purposes. (See generally Spec., para. 0006.) Zavislan 4
describes an instrument including a handpiece or probe for delivering a 5
focused laser beam. (Zavislan, col. 1, ll. 12-18.) 6
9. Gerdes describes a device for biostimulation of biological 7
tissues. The device includes a plurality of laser treatment wands 125, 130. 8
(Gerdes, col. 7, ll. 32-39 and col. 8, ll. 23-25.) Each of the laser treatment 9
wands emits one or more laser beams. (Gerdes, col. 8, ll. 49-52.) 10
10. Figure 7 of Gerdes depicts a user’s hands holding the laser 11
treatment wands 125, 130 above a biological tissue to be treated. (Gerdes, 12
col. 12, ll. 64-66.) Figure 7 does not depict either of the laser treatment 13
wands 125, 130 as being connected to a support structure. The absence of a 14
connection of either laser treatment wand 125, 130 to a support structure is 15
consistent with Gerdes’ statement at column 13, lines 22-26, that the 16
invention described in Gerdes “also contemplates” automatic positioning 17
device capable of serving a support structure, but that no such structure is 18
depicted in Figure 7. 19
11. Figure 7 of Gerdes does not indicate any obstruction which 20
might prevent the user’s hands from freely moving the laser treatment wands 21
125, 130, either in tandem or relative to each other, over the surface of the 22
skin of the patient. Such movement as depicted in Figure 7 could occur 23
while the laser treatment wands 125, 130 were not connected to a support 24
structure. 25
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12. Since Gerdes’ laser treatment wands 125, 130 are freely 1
movable relative to each other and to the surface of the skin of the patient, 2
Gerdes’ laser treatment wands 125, 130 are susceptible of being positioned 3
and oriented so that simultaneously emitted laser beams impinge different 4
parts of a patient’s body. (See Ans. 7.) 5
13. The Appellants concede that the ultraviolet range is in the range 6
from about 4 nm to about 380 nm. (Supp. App. Br. 22.) 7
14. Gerdes describes a device including laser energy sources which 8
transmit both an infrared laser beam component and a low power visible 9
aiming laser beam component through the laser treatment wands. The low 10
power visible aiming laser beam component has a preferred wavelength in 11
the range of between about 400 nm and about 700 nm. (Gerdes, col. 5, ll. 12
12-34; see also id., col. 9, ll. 35-39.) The usefulness of the aiming 13
component appears to be dependent on its visibility to the user. (See Gerdes, 14
col. 5, ll. 31-33 (“The wavelength of approximately 635-640 nm is preferred 15
because of its high visibility and minimized effect on the human eye.”) and 16
col. 8, ll. 60-64.) 17
15. Gerdes describes each laser treatment wand 125, 130 as 18
incorporating “a collimator lens 145 operative to focus the treatment laser 19
beam emitted from the fiber optical cables 135, 140 into the desired beam 20
shape and to project the beam outwardly. In one embodiment . . ., the wands 21
each also include an adjustable collimator holder 150 that can be adjusted to 22
vary the shape and focus of the emitted beam.” (Gerdes, col. 8, ll. 27-34.) 23
16. We adopt and incorporate by reference the Examiner’s findings 24
starting at page 4, line 14 of the Answer (“Gerdes discloses . . .”) and ending 25
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at page 5, line 16 of the Answer (“. . . focusing the beam (Col. 2, lines 62-1
67.”).) 2
17. We adopt and incorporate by reference the Examiner’s findings 3
on page 8 of the Answer starting at line 1 (“Regarding the shape of the 4
treatment spot, . . .”) and ending at line 7 (“. . . pattern’ (Col. 9, lines 45-5
53.”).) 6
7
ANALYSIS 8
First Issue 9
Zavislan is analogous art. (FF 1.) Our reviewing court has enunciated 10
a two-fold test for determining whether art is non-analogous: “First, we 11
decide if the reference is within the field of the inventor’s endeavor. If it is 12
not, we proceed to determine whether the reference is reasonably pertinent 13
to the particular problem with which the inventor was involved.” In re 14
Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986). 15
One determines whether a prior art reference is within the same field 16
of endeavor as the subject matter of a claim by comparing the structure and 17
function of the subject matter recited in the claim to that of the subject 18
matter disclosed in the reference. In re Bigio, 381 F.3d 1320, 1326 (Fed. 19
Cir. 2004). Zavislan is within the Appellants’ field of endeavor because it 20
describes an instrument which is structurally and functionally similar to the 21
devices recited in claims 1, 23 and 30. (FF 2-6 and 16; see also Ans. 6-7.) 22
Although the Appellants have identified differences between the instrument 23
described by Zavislan and the devices recited in claims 1, 23 and 30 (see, 24
e.g., Supp. App. Br. 17-18; see also FF 7), the structural and functional 25
similarity between Zavislan’s instrument and the devices recited in claim 1, 26
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23 and 30 implies that one of ordinary skill in the art would have looked to 1
Zavislan for guidance in designing a device of the type recited in claims 1, 2
23 and 30 notwithstanding those differences. 3
Alternatively, Zavislan addresses a problem with which the 4
Appellants were involved, namely, the delivery of a laser beam to an area of 5
a patient’s skin for therapeutic purposes. (FF 8.) Both for this reason and 6
because Zavislan is within the Appellants’ field of endeavor, Zavislan is 7
analogous art. 8
9
Second and Third Issues 10
Gerdes describes a device for biostimulation of biological tissues. 11
The device includes two or more handheld laser treatment wands or probes. 12
Each of the handheld probes emits one or more laser beams. (FF 9 and 16.) 13
The Examiner concludes that it would have been obvious to modify Gerdes 14
device “to mount the laser source within the probe as taught by Zavislan.” 15
(Ans. 5.) The Examiner concludes that this modification of Gerdes’ device 16
would have been obvious to eliminate the need for an optical fiber to 17
connect the probe to the laser energy source by means made available by 18
advances in laser technology reducing the size of available laser energy 19
sources. (Id.) The Examiner’s conclusion has a reasonable factual basis. 20
(See, e.g., FF 5 and 16.) 21
Gerdes does not appear to expressly state that each of the laser 22
treatment wands or probes is not connected to a support structure while 23
being freely moved by a user’s hand relative to the surface of the skin of a 24
patient as recited in claim 1. (See, e.g., Reply Br. 13.) Nevertheless, 25
Gerdes’ laser treatment wands are susceptible of being freely moved by a 26
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user’s hand relative to the surface of the skin of a patient while not 1
connected to a support structure. (FF 10, 11 and 16.) Nothing in claims 1, 2
23 or 30 appears to require that the probes emit laser beams while moving. 3
Gerdes does not appear to expressly state that the laser beams are 4
emitted simultaneously and impinge two different parts of a patient’s body 5
as recited in claim 2. (See, e.g., Supp. App. Br. 21-22.) Nevertheless, claim 6
2 does not positively recite the parts of the patient’s body as elements of the 7
claimed device. Gerdes’ laser treatment wands are susceptible of being 8
positioned so that simultaneously emitted laser beams impinge different 9
parts of a patient’s body. (FF 12.) 10
Since the Appellants claim devices rather than methods; since Gerdes’ 11
laser treatment wands were susceptible of being positioned so that 12
simultaneously emitted laser beams impinge different parts of a patient’s 13
body before Gerdes’ device undergoes the proposed modification in view of 14
Zavislan; and since the modification of Gerdes’ device proposed by the 15
Examiner would not have affected the susceptibility of the wands to be 16
positioned in this manner, the Examiner’s proposed combination satisfies the 17
functional limitations. See, e.g., In re Schreiber, 128 F.3d 1473, 1478-79 18
(Fed. Cir. 1997)(upholding the Board’s affirmance of a rejection under 19
section 102(b) on the basis of a finding that a device disclosed in a prior art 20
reference was capable of performing a function which the appellant alleged 21
to distinguish the Appellants’ apparatus from the device). 22
Zavislan does not teach away from the use of a plurality of laser 23
treatment wands or probes as described by Gerdes. Zavislan does not appear 24
to mention, much less criticize or disparage, the use of a plurality of laser 25
treatment wands. One may assume for purposes of this appeal only that the 26
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Appellants are correct in asserting that one of ordinary skill in the art would 1
have expected the simultaneous use of a plurality of laser treatment wands to 2
give rise to a significant risk of harm to a patient undergoing 3
photothermolysis treatment. (See Supp. App. Br. 19; Reply Br. 12.) Even 4
then, Zavislan would not have discouraged one of ordinary skill in the art 5
familiar with the teachings of Gerdes from the use of a plurality of laser 6
treatment wands in a low level laser energy treatment calculated not to 7
produce significant localized heating of the tissue undergoing treatment. 8
Even assuming for purposes of this appeal only that the Examiner’s 9
proposed modification might have been inoperative for the photothermolysis 10
treatment described by Zavislan (see id.), the Examiner proposes modifying 11
Gerdes’ device and not Zavislan’s instrument. (See Ans. 5 and 7.) The 12
Appellants do not appear to argue that the proposed modification would 13
have rendered Gerdes’ device inoperable for its intended purpose. 14
We sustain the rejection of claims 1-10, 13-15, 18, 20, 22-28, 30 and 15
32 under § 103(a) as being unpatentable over Gerdes and Zavislan. Having 16
done so, we turn to the Appellants’ arguments regarding the patentability of 17
claims 16, 17, 19, 21 and 29. 18
19
Fourth Issue 20
Claims 16 and 29 recite devices in which at least one laser energy 21
source generates a laser beam having a wavelength in the ultraviolet range. 22
Gerdes describes a device including laser energy sources which transmit 23
both an infrared laser beam component and a low power visible aiming laser 24
beam component through the laser treatment wands. The low power visible 25
aiming laser beam component has a preferred wavelength in the range of 26
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between about 400 nm and about 700 nm. (FF 14.) As the Examiner points 1
out, the range of wavelengths between about 400 nm and about 700 nm 2
either comes very close to or touches the ultraviolet range. (See Ans. 7; see 3
also FF 13 (the Appellants argue that the upper bound of the ultraviolet 4
range is 380 nm rather than 400 nm).) 5
“[A] prima facie case of obviousness exists when the claimed range 6
and the prior art range do not overlap but are close enough that one skilled in 7
the art would have expected them to have the same properties.” In re 8
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). The Appellants do not 9
address the holding of Peterson or clearly explain why the closeness of the 10
two ranges does not give rise to a prima facie case of obviousness. 11
Nevertheless, the closeness of the ranges here does not imply that one of 12
ordinary skill in the art would expect them to have the same properties. As 13
the Appellants point out (see Supp. App. Br. 23), the visible laser beam 14
component transmitted by Gerdes’ laser treatment wands is an aiming 15
component. The usefulness of the aiming component appears to be 16
dependent on its visibility to the user. (FF 14.) For purposes of Gerdes’ 17
device, visible and ultraviolet light would not have the same properties, that 18
is, visibility. Without an explanation as to why one of ordinary skill in the 19
art might have had reason to substitute ultraviolet laser light for Gerdes’ low 20
power visible aiming laser beam component, the Examiner has not 21
articulated reasoning with some rational underpinning sufficient to support 22
the conclusion of obviousness. 23
We do not sustain the rejections of claims 16 and 29 under § 103(a) as 24
being unpatentable over Gerdes and Zavislan. 25
26
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Fifth Issue 1
With regard to claims 17 and 19, the Examiner correctly finds that 2
Gerdes discloses optical arrangements capable of transforming each of the 3
laser beams into a desired spot shape. (See Ans. 4; see also FF 15.) The 4
Examiner appears to conclude that linear and plus-sign beam shapes are 5
mere obvious design choices. (See Ans. 4 and 8.) 6
The Appellants do not appear to argue that linear or plus sign beam 7
spot shapes were unknown to the art. Neither do the Appellants appear to 8
argue that one of ordinary skill in the art lacked the skill to transform a laser 9
spot shape to a linear or plus-sign shape. Neither the Specification nor the 10
Appellants’ briefs explain how the therapeutic effects of low level laser 11
beams with linear or plus-sign beam shapes might differ from the therapeutic 12
effects of laser beams having spot shapes which appear to be taught by 13
Gerdes, such as circular, elliptical, square or rectangular beam shapes. (FF 14
17.) Alternatively, the simple substitution of an optical arrangement capable 15
of transforming the beam shape to a liner or plus-sign shape rather than a 16
circular shape would have been obvious since the Appellants point to no 17
evidence or reason suggesting that the therapeutic effects of different beam 18
shapes might not have been predictable. See KSR Int’l Co. v. Teleflex, Inc., 19
550 U.S. 398, 416 (2007)(citing United States v. Adams, 383 U.S. 39, 50-51 20
(1966).) Since the Appellants present no evidence or argument to explain 21
how the therapeutic effects of laser beams having linear or plus-sign beam 22
shapes might differ from other beam shapes taught by Gerdes, the linear and 23
plus-sign beam shapes are obvious design choices. See In re Kuhle, 526 24
F.2d 553, 555 (CCPA 1975). We sustain the rejection of claims 17 and 19 25
under § 103(a) as being unpatentable over Gerdes and Zavislan. 26
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Sixth Issue 1
Claim 21 recites a device including a first laser beam having a first 2
spot shape and a second laser beam having a second spot shape. The first 3
spot shape is different from the second spot shape. The Appellants argue 4
that Gerdes does not teach emitting laser beams having different spot shapes 5
and that Zavislan fails to remedy the deficiency. (Supp. App. Br. 25.) The 6
Examiner fails to articulate any persuasive reasoning to explain why the 7
subject matter of claim 21 might have been obvious. 8
We do not sustain the rejection of claim 21 under § 103(a) as being 9
unpatentable over Gerdes and Zavislan. 10
11
DECISION 12
We AFFIRM the Examiner’s decision rejecting claims 1-10, 13-15, 13
17-20, 22-28, 30 and 32. 14
We REVERSE the Examiner’s decision rejecting claims 16, 21 and 15
29. 16
No time period for taking any subsequent action in connection with 17
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v). 18
19
AFFIRMED-IN-PART 20
21
22
JRG 23
24
25