Ex parte Stewart

Board of Patent Appeals and Interferences

May 30, 2000

08180767 (B.P.A.I. May. 30, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte BOB W. STEWART
____________
Appeal No. 1997-0030
Application No. 08/180,767
____________
ON BRIEF
____________
Before STAAB, McQUADE, and CRAWFORD, Administrative Patent
Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1, 2, 4-17 and 19-32, all the claims
pending in the application.
Appeal No. 1997-0030
Application No. 08/180,767
2
Appellant’s invention pertains to “an apparatus . . . for
providing two or more predetermined wavelengths of laser
radiation for coaxial transmission and simultaneous use, and,
more particularly, to a metal vapor laser system for providing
a single output laser light beam having a predetermined
mixture of wavelengths for simultaneous medical use”
(specification, page 1). Independent claim 1, a copy of which
is found in an appendix to appellant’s brief, is
representative of the appealed subject matter.
The references of record relied upon by the examiner as
evidence of obvious are:
Schachar et al. (Schachar) 4,520,816 June 4,
1985
Kung et al. (Kung) 5,180,378 Jan. 19,
1993
Piper WO87/06775 Nov. 5, 1987
B.G. Bricks et al. (Bricks), "An Investigation of a Discharge-
Heated Barium Laser," J. Appl. Phys., vol. 49, no. 1, 38-
40(January 1978).
Appeal No. 1997-0030
Application No. 08/180,767
Our understanding of this French language publication is1
derived from a translation prepared in the Patent and
Trademark Office. A copy of the translation is attached to
this decision.
3
Ph. Cahuzac (Cahuzac), "Emissions Laser Infrarouges Dans Les
Vapeurs De Thulium ET D'ytterbium," vol. 27A, no. 8, 473-474,
(September 9, 1968).1
The following rejections under 35 U.S.C. § 103 are before
us for review:
a) claims 1, 5, 7, 24 and 29, unpatentable over Piper in
view of Kung;
b) claims 2, 4, 13, 15, 25 and 30-32, unpatentable over
Piper in view of Kung, and further in view of Bricks;
Appeal No. 1997-0030
Application No. 08/180,767
Although the cover sheet of the final rejection2
indicated that claim 28 was finally rejected, neither the
final rejection nor the answer includes claim 28 in the
statement of any of the rejections. Upon review of the
record, it reasonably appears that the examiner intended to
reject claim 28 on the same evidentiary basis as claim 26,
from which it depends. Accordingly, we have included claim 28
in this rejection. In light of our decision in this appeal,
appellant is not prejudiced by our addition of claim 28 to
this rejection.
The rejection of claim 16 as being unpatentable over3
Piper in view of Kung and further in view of Cahuzac is a new
ground of rejection of this claim made for the first time in
the examiner’s answer.
4
c) claims 6, 11, 12, 14, 19, 21-23, 26-28 , unpatentable2
over Piper in view of Kung, and further in view of Bricks and
Schachar;
d) claims 8-10, 16 and 30-32, unpatentable over Piper in3
view of Kung, and further in view of Cahuzac;
e) claim 17, unpatentable over Piper in view of Kung, and
further in view of Bricks and Cahuzac; and
Appeal No. 1997-0030
Application No. 08/180,767
On pages 5-6 of the answer, the evidentiary basis for4
this rejection is stated to be “Piper in combination with
Bricks et al and Schachar et al as applied to claim 19 above,
and further in view of Cahuzac.” Since Kung was part of the
evidentiary basis for the rejection of independent claim 19,
and since claim 20 depends from claim 19, we consider that the
examiner inadvertently failed to include Kung in the statement
of the rejection of claim 20 on pages 5-6 of the answer.
5
f) claim 20, unpatentable over Piper in view of Kung , and4
further in view of Bricks, Schachar and Cahuzac.
The rejections are explained in the examiner’s answer
(Paper No. 22) and the supplemental examiner’s answer (Paper
No. 27).
The opposing viewpoints of appellant are set forth in the
brief (Paper No. 21), the reply brief (Paper No. 23), and the
“Response to New Grounds of Rejection” (Paper No. 24).
Representative claim 1 is directed to a multiple
wavelength laser system comprising an active laser gain medium
comprising metal vapor, means for exciting the medium to
produce laser radiation at a plurality of wavelengths, means
for coaxially transmitting laser radiation at a plurality of
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Application No. 08/180,767
6
wavelengths for simultaneous use in a medical procedure, and
“means for controlling populations of multiple lasing energy
level transitions to thereby control relative intensities
among the coaxially transmitted wavelengths, thereby to
providing a means for controlling total intensities of such
transmitted wavelengths.” Each of claims 13, 19 and 29, the
other independent claims on appeal, contains similar
limitations.
The examiner considers that Piper discloses a device as
set forth in claim 1 except for the means for controlling the
relative intensities of the transmitted wavelengths. The
examiner further considers that Kung discloses controlling the
intensity of each of a plurality of coaxially transmitted
laser beams and the ratio thereof. Based on the above, it is
the examiner’s foundation position that it would have been
obvious to one of ordinary skill in the art to include in
Piper a means for controlling the individual intensities of
the metal vapor laser thereof “since this enables the
treatments to be carried out under the most desirable
irradiating conditions, as taught by Kung” (answer, page 3).
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Implicit in the above is the examiner’s determination that the
thus modified device of Piper would correspond to the subject
matter of claim 1 is all respects.
Piper, the examiner’s primary reference, is directed to a
dye laser “intended for the production of a pulsed light
output at a particular wave length” (page 1, lines 3-5). One
particular application of the dye laser of Piper is in the
treatment of tumors previously labeled with suitable dyes
(page 1, lines 22-29). In this situation, the wavelength
“must be chosen within narrow limits established by the need
to obtain adequate penetration of the tissue and by the fact
that the wavelength must lie within the absorption band of the
dye used to label the tumor” (page 2, lines 6-9). To this
end, Piper teaches a means for controlling the output of a
laser by preferentially stimulating the emission of a
particular wavelength (page 4, lines 27-33). In particular,
Piper provides a single laser discharge tube containing
different active media (e.g., copper and gold) such that the
output of the tube contains frequencies characteristic of each
media. In one example, illustrated in Figure 2, Piper
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achieves a two stage amplification of the gold laser output as
follows:
The wavelength selective properties of mirror 1
allow transmission of the copper laser output at 511
and 578nm to mirror 2 whilst directing the gold
laser output through the spatial filter 3 and thence
into the transversely pumped dye cell amplifiers 4
and 5. Approximately one third of the copper laser
output is directed by mirror 6 and focussing lens 7
into the dye cell 4. In this way the weak gold
laser radiation at 628nm emitted by the discharge
tube passes through two stages of amplification and
results in a beam of substantial output power which
is frequency locked to the 628nm line. [Page 6,
lines 4-14.]
Thus, Piper teaches seeding a dye laser with a wavelength
produced by a first metal (e.g., gold) while pumping the dye
laser with a wavelength produced by a second metal (e.g.,
copper) to produce an amplified single wavelength output at a
wavelength corresponding to the seed wavelength of the first
metal. Accordingly, it is clear that Piper teaches using only
a single wavelength of a metal vapor laser at the output of
the laser treatment system.
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Application No. 08/180,767
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Kung’s surgery laser system is similar to appellant’s in
that the objective is to provide a single output laser light
beam having a predetermined mixture of wavelengths, wherein
the relative proportions of the wavelengths may be varied to
achieve a desired result, e.g., cutting and coagulating
(column 1, line 62 through column 2, line 3). The Kung system
includes a solid state Nd:YAG laser 10 in combination with a
Raman laser cell to generate a laser light beam having the
desired wavelengths (column 2, line 52 through column 3, line
17). An output coupling device, such as partially reflective
mirrors M , M and M or a piezo-electrically controlled1 2 3
interference filter, not shown, is employed to vary the
relative proportions of the light of each wavelength (column
4, lines 44-56; column 6, line 44-64).
Given Piper’s objective of producing a pulsed light
output at a particular wavelength (page 1, lines 3-5) in order
to closely match the absorption band of the dye used to label
the tumor to be treated (page 2, lines 5-11), it is apparent
that one of ordinary skill in the art would not provide means
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Application No. 08/180,767
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for controlling relative intensities of plural wavelengths of
the end output laser beam of Piper. In this regard, since the
output of Piper is of a particular wavelength, there would be
no plural wavelengths to control. Moreover, modifying Piper’s
system to provide an output having plural wavelengths would
run counter to Piper’s expressly stated objective of providing
an output of a particular wavelength that is closely matched
to the absorption band of the marker dye used to label the
tumor.
As to providing means for controlling the relative
intensities of the plural wavelengths at a location internally
of Piper’s system (e.g., at a location between the laser
discharge tube containing different active media and mirror
1), we appreciate that between the laser discharge tube and
the mirror 1 Piper’s light beam comprises plural wavelengths.
Nevertheless, we view such a modification of Piper to be based
on impermissible hindsight rather than on anything fairly
taught by Piper and/or Kung. In the first place, there is no
suggestion in Piper or Kung that Piper’s system might be
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Application No. 08/180,767
11
inadequate for its intended purpose, or that Piper’s system
would benefit from having an output coupling of the type
disclosed in Kung provided at this location. Further, the way
in which Kung’s output coupling device (e.g., selectively
reflective mirror M or piezo-electrically controlled3
interference filter) functions to vary the light of each
wavelength depends to a large extent on the nature of the
Raman laser cell to which it is coupled. In short, it is not
apparent to us where in the combined teachings of Piper and
Kung one of ordinary skill in the art would have found a
teaching of “controlling populations of multiple lasing energy
level transitions” to thereby control relative intensities, as
called for in the last paragraph of claim 1.
Where prior art references require a selective
combination to render obvious a claimed invention, there must
be some reason for the combination other than hindsight
gleaned from the invention disclosure, Interconnect Planning
Corp. v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed.
Cir. 1985). In the fact situation before us, we are unable to
Appeal No. 1997-0030
Application No. 08/180,767
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agree with the examiner that one of ordinary skill in the art
would have been motivated by the combined teachings of Piper
and Kung to incorporate a output coupling device into the
laser system of Piper in a manner which would have resulted in
a “means for controlling populations . . .” as called for in
the last paragraph of claim 1.
In light of the above, the examiner’s rejection of claims
1, 5, 7, 24 and 29 as being unpatentable over Piper in view of
Kung cannot be sustained. As to the remainder of the
examiner’s rejections, we have considered the Bricks, Schachar
and Cahuzac references additionally relied upon by the
examiner in these rejections but find nothing therein which
makes up for the deficiencies of Piper and Kung discussed
above. Accordingly, these rejections also cannot be
sustained.
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Application No. 08/180,767
13
The decision of the examiner is reversed.
REVERSED
LAWRENCE J. STAAB )
Administrative Patent Judge)
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge) AND
) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge)
Appeal No. 1997-0030
Application No. 08/180,767
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RONALD J. SNYDER
DINSMORE & SHOHL
1900 CHEMED CENTER
255 E. FIFTH STREET
CINCINNATI, OH 45202-3172