Ex Parte Wang

Patent Trial and Appeal Board

Apr 4, 2016

12720744 (P.T.A.B. Apr. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121720,744 03/10/2010
53048 7590
BWT PROPERTY, INC
19 SHEA WAY
SUITE 301
NEWARK, DE 19713
04/05/2016
FIRST NAMED INVENTOR
Sean Xiaolu Wang
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.
9724
EXAMINER
JACKSON, GARY
ART UNIT PAPER NUMBER
3769
MAILDATE DELIVERY MODE
04/05/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte SEAN XIAOLU WANG
Appeal2014-003722
Application 12/720,7441
Technology Center 3700
Before PHILIP J. HOFFMANN, KENNETH G. SCHOPPER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
1-14. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
BACKGROUND
According to Appellant, "[the] invention generally relates to a light
surgery apparatus, and more specifically to an LED based light surgery
apparatus." Spec. 1, 11. 9-10.
1 According to Appellant, the real parties in interest are Sean Xiaolu Wang
and BWT Property, Inc. App. Br. 2.
Appeal2014-003722
Application 12/720,744
CLAHvIS
Claims 1-14 are on appeal. Claim 1 is illustrative of the appealed
claims and recites:
1. A surgical apparatus for ablation, incision, and/or
coagulation of biological tissue, the surgical apparatus
compnsmg:
at least one high intensity surface-mounted or chip-on-
board (COB) packaged light emitting diode (LED) light source
for producing a light beam with high power density; and
an optical system for delivering said light beam to be
absorbed by the biological tissue;
wherein the power density of said light beam is above a
predetermined threshold level to increase a temperature of the
biological tissue so as to cause a transformation for at least one
constituent of the biological tissue for ablation, incision, and/or
coagulation of the biological tissue.
Appeal Br. 8-9.
REJECTIONS
1. The Examiner rejects claims 1---6, 8-11, 13, and 14 under 35
U.S.C. §§ 102(a), (e) as anticipated by Bendett.2
2. The Examiner rejects claims 1---6, 8-11, 13, and 14 under 35
U.S.C. § 103(a) as unpatentable over Bendett in view of
Essenpreis. 3
3. The Examiner rejects claim 7 under 35 U.S.C. § 103(a) as
unpatentable over Bendett in view ofKnopp.4
2 Bendett et al., US 2008/0077200 Al, pub. Mar. 27, 2008.
3 Essenpreis, US 6,659,966 B2, iss. Dec. 9, 2003.
4 Knopp et al., US 2002/0198516 Al, pub. Dec. 26, 2002.
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Appeal2014-003722
Application 12/720,744
4. The Examiner rejects claim 7 under 35 U.S.C. § 103(a) as
unpatentable over Bendett in view of Essenpreis and Knopp.
5. The Examiner rejects claim 12 under 35 U.S.C. § 103(a) as
unpatentable over Bendett in view of Davenport. 5
6. The Examiner rejects claim 12 under 35 U.S.C. § 103(a) as
unpatentable over Bendett in view of Essenpreis and Davenport.
DISCUSSION
Appellant presents arguments with respect to all appealed claims as a
single group. See Br. 6-8. We select claim 1 as representative of the
appealed claims. Further, because we sustain the rejection of claim 1 as
obvious over Bendett in view of Essenpreis, we do not reach the rejection of
claim 1 as anticipated by Bendett.
With respect to claim 1, the Examiner finds, inter alia, that Bendett discloses
a surgical apparatus for ablating tissue including a high intensity laser diode
for producing a light beam with high power density; an optical system for
delivering the light beam to be absorbed by biological tissue; and wherein
the power density of the light beam is above a predetermined threshold to
heat the tissue and cause a transformation of the tissue for ablation. Final
Action 6-8 (citing Bendett iii! 2, 12, 13, 72, 91, 110, 112). The Examiner
also finds that "Essenpreis teaches that LED's may be used as an effective
substitute for a laser light source such as a collimated laser diode ... [and]
Essenpreis teaches that the LED is mounted onto the surface of the device."
Id. at 8 (citing Essenpreis col. 3, 11. 60-67; col. 4, 11. 30-33). The Examiner
5 Davenport et al., US 6,554,824 B2, iss. Apr. 29, 2003.
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Appeal2014-003722
Application 12/720,744
concludes that substituting an LED for a laser diode would be a matter of
design choice. Id. at 8-9.
We agree with and adopt the Examiner's findings and conclusions
regarding the scope and content of the prior art with respect to claim 1. As
discussed below, we are not persuaded of error by Appellant's arguments.
With respect to the obviousness rejection of claim 1, Appellant first
argues that the combination of references does not teach a high intensity
surface-mounted or chip-on-board (COB) packaged LED as claimed. Br. 7.
Specifically, Appellant asserts that the Specification defines a surface-
mounted or COB packaged LED as "a type of LED in which the LED chips
are directly surface mounted on a thermal conductive substrate for improved
heat dissipation." Id. at 7-8. However, we agree with the Examiner that
under the broadest reasonable interpretation of the claim consistent with the
Specification, the use of a surface-mounted LED would have been obvious
over the proposed combination of Bendett and Essenpreis. See Ans. 16-18.
In particular, we find that Essenpreis at least suggests a light source 16,
which may be an LED that is mounted on a surface of the device and is
capable of raising the temperature of blood to cause coagulation as required
by the claim. See Essenpreis Fig. 1; col. 3, 11. 40---47, 61-67; col. 4, 11. 30---
33. Because Essenpreis teaches that the LED is capable of causing
coagulation, we find that the substrate on which it is mounted is sufficiently
thermally conductive such that it reasonably may be interpreted as a surface-
mounted LED as described in the Specification.
Based on the foregoing, we determine that the Examiner has
established a prima facie showing of obviousness without error.
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Appeal2014-003722
Application 12/720,744
Accordingly, we sustain the rejection of claim 1. Claims 2-14 fall with
claim 1.
CONCLUSION
For the reasons set forth above, we affirm the obviousness rejections
of claims 1-14 based on the combination of Bendett and Essenpreis.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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