Ex Parte WANG et al

Patent Trials and Appeals Board

Apr 8, 2019

12165461 - (D) (P.T.A.B. Apr. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/165,461 06/30/2008
53048 7590
BWT PROPERTY, INC.
19 SHEA WAY
SUITE 301
NEWARK, DE 19713
04/09/2019
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.
BW-15 1943
EXAMINER
EISEMAN, LYNSEY C
ART UNIT PAPER NUMBER
3792
MAIL DATE DELIVERY MODE
04/09/2019 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, BRIAN PRYOR, and QUN LI 1
Appeal2018-005140
Application 12/165,461
Technology Center 3700
Before KEN B. BARRETT, MICHAEL L. HOELTER, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's Final rejection of claims 1, 2, and 4--7. App. Br. 2; Reply Br. 2.
Claim 3 was canceled. App. Br. 2; Reply Br. 2. We have jurisdiction under
35 U.S.C. § 6(b). For the reasons explained below, we do not find error in
1 "Sean Xiaolu Wang, Brian Pryor, Qun Li, the inventors, and BWT
Property, Inc., the assignee are the real parties in interest." App. Br. 2. We,
thus, proceed on the basis that, for purposes of this appeal, BWT Property,
Inc. is the "Appellant."
Appeal2018-005140
Application 12/165,461
the Examiner's rejections of these claims under 35 U.S.C. §I03(a).
Accordingly, we AFFIRM the rejection of claims 1, 2, and 4--7.
CLAIMED SUBJECT MATTER
The disclosed subject matter "relates to a laser apparatus, and more
specifically to a medical laser apparatus with enhanced disinfection
function." Spec. ,r 2. 2 Method claim 1 is the sole independent claim, is
representative of the claims on appeal, and is reproduced below.
1. A method for providing photo treatment to a subject
biological tissue, the method comprising the steps of:
providing a laser unit to produce a laser beam having a
wavelength falling within an absorption band of the subject
biological tissue and in the meantime matching with an
absorption band of oxygen molecules in the air;
causing the laser beam to interact with the oxygen
molecules naturally in the air or in an oxygen enriched
environment to produce singlet oxygen and using said singlet
oxygen to kill bacteria on or near the subject biological tissue;
and
causing the laser beam to interact with the biological tissue
for photo treatment;
wherein the laser unit has a spectral linewidth which is
comparable to the bandwidth of said absorption band of oxygen
molecules.
2 In Appellant's Briefs, whenever Appellant refers to the specification, it is
via a paragraph number. See Briefs generally. However, Appellant's
original Specification lacks paragraph numbering. We, instead, understand
Appellant to be referring to the paragraph numbers found in Patent
Application Publication No. US 2009/0012587 Al, published January 8,
2009. The Examiner, likewise, when referencing Appellant's Specification,
also references paragraph numbers that match those of the published
application. See, e.g., Final Act. 8. Thus, for purposes of consistency, we
likewise refer to the paragraph numbers found in Appellant's published
application.
2
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Application 12/165,461
REFERENCES
Wong US 4,730,112
Furumoto US 4,829,262
D.C. et al. US 2003/0130709 Al
Pilcher et al. US 2004/0116913 Al
Altshuler et al. US 2004/0193235 Al
(hereinafter "Altshuler '235")
Altshuler et al. US 2006/0206103 Al
(hereinafter "Altshuler '103")
Vaynberg et al. US 2007/0265605 Al
THE REJECTIONS ON APPEAL
Mar. 8, 1988
May 9, 1989
July 10, 2003
June 1 7, 2004
Sept. 30, 2004
Sept. 14, 2006
Nov. 15, 2007
Claims 1, 2, and 4--7 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 1, 2, and 4--7 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
Claims 1, 2, 4, and 5 are rejected under 35 U.S.C. §I03(a) as
unpatentable over Altshuler '235 in view of Wong, Furumoto, D.C., or
Altshuler '103.
Claim 6 is rejected under 35 U.S.C. §I03(a) as unpatentable over
Altshuler '235 in view of Wong, Furumoto, D.C., or Altshuler '103, and
further in view of Pilcher.
Claim 7 is rejected under 35 U.S.C. §I03(a) as unpatentable over
Altshuler '235 in view of Wong, Furumoto, D.C., or Altshuler '103, and
further in view of Vaynberg.
3
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ANALYSIS
The rejection of claims 1, 2, and 4-7
as failing to comply with the written description requirement
The Examiner addresses claim 1 separate from claim 7. See Final
Act. 11-17. Appellant separately responds to both claims. See App. Br. 5-
7; Reply Br. 3--4. We, likewise, separately address claims 1 and 7.
Claim 1
According to the Examiner, claim 1 "claims 'a wavelength falling
within ... and in the meantime matching ... ' but fails to positively claim what
this wavelength actually is." Final Act. 11 ( omissions in original); see also
Ans. 11. The Examiner acknowledges that Appellant "has possession of
three wavelengths (634 nm, 764 nm or 1060 nm), but is clear (from
applicant's arguments) that the wavelengths claimed are actually much
broader than the three wavelengths disclosed, i.e. the claims are not limited
to the 3 disclosed wavelengths." Final Act. 11; see also Ans. 11. The
Examiner thus concludes that "one of ordinary skill would not be reasonably
apprised that applicant had possession of the claimed invention." Final Act.
12; see also Ans. 11 ("it is emphasized that just because something is well-
known does not mean that applicant specifically had possession of it at the
time of the invention").
Appellant disagrees, referencing several paragraphs in Appellant's
Specification, as well as other citations for support, stating, "[i]t is not
necessary for the specification of the present invention to list all these
possible wavelength selections. But one of ordinary skill in the art will
readily appreciate that the possible laser wavelength selection is not limited
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to the three examples as disclosed in the present invention." App. Br. 5---6;
see also Reply Br. 3.
To help ascertain what an applicant has possession of, we have been
instructed that "[ o ]riginal claims are part of the original specification and in
many cases will satisfy the written description requirement." 3 Mentor
Graphics Corp. v. Eve-USA Inc., 851 F.3d 1275, 1297 (Fed. Cir. 2017)
(referencing Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349
(Fed. Cir. 2010)). In the present matter, originally filed claim 1 recites
nearly identical claim language. 4 Our reviewing court provided instruction
that, "[l]ike Crown Packaging [Tech. v. Ball Metal Beverage, 635 F.3d
1373, 1381 (Fed. Cir. 2011)], the 'original claims clearly show that the
applicants recognized and were claiming [the disputed limitation] ....
These claims show, as Ariad recognized many original claims do, that the
applicants had in mind the invention as claimed.'" Mentor Graphics, 851
F.3d at 1297 (alteration and omission in original). Accordingly, and in view
of the language of original claim 1, we agree with Appellant that "the laser
wavelengths as claimed in Claim 1 are disclosed in the specification of the
present invention" and "hence are not beyond its scope." App. Br. 6. We do
not sustain this written description rejection of this limitation of claim 1.
3 The Examiner also addresses MPEP § 2163.03 which addresses "[a]n
original claim," but in view of the following discussion, we are not
persuaded by the Examiner's assertions on this point. See Ans. 13-14.
4 Regarding the claim language objected to by the Examiner, original claim
1 recites 'a wavelength falling within ... and in the meantime matches ... "
whereas present claim 1 recites "a wavelength falling within ... and in the
meantime matching . ... " Emphasis added.
5
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The Examiner also addresses another limitation recited in claim 1,
namely, the last "wherein" clause, which recites a laser having a "spectral
linewidth which is comparable to" the absorption band of oxygen molecules.
See also Final Act. 12; Ans. 15. Here, the Examiner states that this
limitation is "only functionally described; there's never even a single
example of what linewidth is contemplated." Final Act. 12; see also Ans.
15. Appellant states that one skilled in the art would "readily appreciate" the
narrowing of the laser's linewidth "to a value comparable to the absorption
bandwidth of the oxygen molecules" so as to cause "the laser beam to
interact with the oxygen molecules ... to produce singlet oxygen" as also
recited. 5 App. Br. 6-7. Appellant states that one skilled in the art would
know that "oxygen molecules in the air [] have a plurality of absorption
bands" and, further, that the values of such bands would have been known.
App. Br. 5-7 (citations omitted). As such, Appellant requests the
withdrawal of this rejection. App. Br. 7.
There is merit to Appellant's contentions. Because Appellant has
shown that "[i]t is well known in the art that the oxygen molecules in the air
have very narrow absorption bandwidths" it follows that "one of ordinary
skill in the art will readily appreciate that the spectral linewidth of the laser"
would be narrowed accordingly so as "to be comparable" thereto. 6 App. Br.
7 ( citing, inter alia, Wong, Fig. 1 ). We thus are not persuaded that
5 Claim 1 expressly states that singlet oxygen is used "to kill bacteria on or
near the subject biological tissue."
6 Since the "wavelength and bandwidth of the absorption band of the oxygen
molecules in the air are well known to one of ordinary skill in the art, it is
not necessary for the present invention to provide all the possible values for
the laser wavelengths and spectral linewidths." App. Br. 7.
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Appellant failed to be in possession of this claim limitation. We do not
sustain this written description rejection of this limitation of claim 1.
Claim 7
Claim 7 depends directly from claim 1 and includes the additional
limitation, "further comprising a step of supplying a flow of oxygen and
causing the laser beam to interact with the oxygen molecules in the flow of
oxygen to produce singlet oxygen." The Examiner addresses this additional
limitation stating, "the specification only states that the flow of oxygen is
proximate to the laser beam, not that the two interact." Final Act. 12; see
also Ans. 16. In other words, "[p ]roximate does not necessarily mean that
the laser beam and flow of oxygen interact[]" (Final Act. 12) or "that they
touch or directly interact, as is required by the claims" (Ans. 17).
Appellant references paragraphs 12-14 of Appellant's Specification
for support. App. Br. 7. Paragraph 14 is of particular interest in that this
paragraph discloses not only the supply of a flow of oxygen, but the flow of
oxygen "proximate to a high intensity point of the laser beam ... or the focal
point 208 shown in FIG. 2." See also App. Br. 7; Reply Br. 4. In view of
such disclosure "Applicant respectfully requests withdrawal of this Section
112 (a) rejection of claim 7." App. Br. 8; Reply Br. 4.
We agree with Appellant. Paragraph 13 of the Specification provides
that the laser wavelength is selected "to excite singlet oxygen 210 in the
vicinity of the focal point 208 from oxygen molecules in the ambient air
proximate to the focal point 208." The description thus contemplates
interaction between the laser beam and oxygen molecules in the ambient air.
Paragraph 14' s description of the purpose for supplying a flow of oxygen
"proximate to a high intensity point of the laser beam, such as ... the focal
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point 208 ... to further improve[] the efficiency for singlet oxygen
generation" similarly implies such interaction. One skilled in the art would
understand claim 7 in view of Appellant's Specification to mean that oxygen
is supplied so proximately to the laser beam (and particularly its focal point)
as to cause "the laser beam to interact with the oxygen molecules" supplied,
as recited. Accordingly, we are not persuaded Appellant failed to be in
possession of this additional limitation recited in claim 7.
In summation, we do not sustain the Examiner's rejection of claims 1,
2, and 4--7 "as failing to comply with the written description requirement."
Final Act. 11.
The rejection of claims 1, 2, and 4-7
as being indefinite
The Examiner focuses on claim 1 and again addresses the laser's
wavelength stating, "the scope of the wavelengths claimed is unclear." Final
Act. 13; see also Ans. 17. The Examiner acknowledges the three examples
provided by Appellant, "but it is unclear if the claims include additional
wavelengths or not." Final Act. 13; see also Ans. 17. The Examiner
concludes stating "the exact scope of the wavelengths being claimed is
completely unclear" (Final Act. 13) thus "making the metes and bounds of
the claim indefinite" (Ans. 18).
Appellant disagrees referring to the limitation ''providing a laser unit
... having a wavelength falling within an absorption band of . .. tissue and
... matching with an absorption band of oxygen molecules." App. Br. 8;
Reply Br. 4. In other words, "there are two requirements for the laser
wavelength" and "only those laser wavelengths meeting both of the two
requirements" are encompassed. App. Br. 8. Appellant thus contends, "the
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laser wavelength is distinctly claimed in Claim 1 of the present invention,"
and "respectfully requests withdrawal" of this rejection. App. Br. 8; Reply
Br. 5.
Claim 1 clearly recites only those laser wavelengths that meet the
above criteria. We agree with the Examiner that Appellant provides three
examples, but we disagree with the Examiner that Appellant "provides no
guidance as to what [any] additional wavelengths are" to be. Final Act. 13;
see also Ans. 17-18. Instead, any additional wavelengths are to be those
that also meet the above two criteria. Accordingly, we are not persuaded
Appellant failed to particularly point out and distinctly claim this limitation.
The Examiner also addresses the last "wherein" clause of claim 1
directed to a laser having a spectral linewidth. See Final Act. 13. The
Examiner states that the scope of the linewidth being claimed "is unclear"
and that "[t]here is no guidance given in the specification, as to the range
encompassed by the claimed limitation; there isn't even a single example of
a spectral linewidth." Final Act. 13-14.
Appellant explains, "[ c ]laim 1 requires the linewidth of the laser to be
comparable to the bandwidth of the absorption band (with which the laser
wavelength matches) of the oxygen molecules in the air." App. Br. 9.
Appellant explains that because "the bandwidth of an absorption band[] of
the oxygen molecules in the air is a physical parameter having a definite
value, which is well known in the prior art [ citation omitted], one of ordinary
skill in the art will readily appreciate what is the required laser linewidth."
App. Br. 9.
Appellant's logic is noted, however, the limitation in question
includes the term "comparable" and the Examiner finds that this term "is a
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relative term and therefore indefinite, as it is unclear how close the
bandwidths must be in order to be considered 'comparable."' Final Act. 14.
On the subject of relative terms, we have been instructed that a claim
is indefinite under 35 U.S.C. § 112 when the intrinsic record of the patent
"fail[ s] to inform, with reasonable certainty, those skilled in the art about the
scope of the invention." Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct.
2120, 2124 (2014). If a claim employs a term of degree, the intrinsic record
must provide those skilled in the art with "objective boundaries" with which
to assess the term's scope. Interval Licensing LLC v. AOL, Inc., 766 F.3d
1364, 1371 (Fed. Cir. 2014). Our reviewing court has rejected the
proposition that claims involving terms of degree are inherently indefinite.
See id. at 1370. Thus, "a patentee need not define his invention with
mathematical precision in order to comply with the definiteness
requirement." Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1384
(Fed. Cir. 2005).
Regarding Appellant's usage of the term "comparable," Appellant's
Specification states:
The spectral linewidth of the laser is narrowed down to a value
comparable to the absorption bandwidth of the oxygen
molecule so that the laser energy can be efficiently absorbed by
the oxygen molecule to pump the same to the excited state to
produce singlet oxygen.
Spec. ,r 12. Hence, Appellant's usage of "comparable" is directed to laser
linewidths whose energy "can be efficiently absorbed" so as to "pump" the
oxygen molecule to an "excited state to produce singlet oxygen," which is
used for anti-bacterial purposes (see Spec. ,r 4). In view of the above, we are
not persuaded that the record "fail[ s] to inform, with reasonable certainty,
those skilled in the art about the scope of the invention" or that the record
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lacks "objective boundaries" by which to assess the term's scope.
Accordingly, we disagree with the Examiner that Appellant failed to
particularly point out and distinctly claim this limitation.
In summation, we do not sustain the Examiner's rejection of claims 1,
2, and 4--7 "as being indefinite." Final Act. 13.
The rejection of claims 1, 2, 4, and 5 as unpatentable over
Altshuler '235 in view of Wong, Furumoto, D.C., or Altshuler '103
Appellant argues claims 1, 2, and 5 together (see App. Br. 9-14;
Reply Br. 8) and also presents a separate argument for dependent claim 4
(see App. Br. 14; Reply Br. 7-8). We select claims 1 and 4 for review, with
the remaining claims standing or falling with claim 1. See 3 7 C.F .R.
§ 4I.37(c)(l)(iv).
Claim 1
The Examiner primarily relies on the teachings of Altshuler '235 for
disclosing the limitations of claim 1, but states "Altshuler ['235] fails to
explicitly disclose the claimed spectral linewidth/bandwidth." Final Act. 17.
The Examiner relies on Wong, Furumoto, D.C., or Altshuler '103 for such
teachings, and provides a reason for their combination. See Final Act. 1 7;
see also Ans. 22. The Examiner also states that this lacking limitation "is
also considered routine optimization." Final Act. 1 7; see also Ans. 23.
Appellant contends that claim 1 is directed to a laser that interacts
"with the oxygen molecules naturally in the air or in an oxygen enriched
environment." App. Br. 9; Reply Br. 6. In contrast, Altshuler '235,
according to Appellant, is directed to producing singlet oxygen "from
oxygen molecules in the tissue." App. Br. 9; Reply Br. 6 (emphasis added).
The Examiner disagrees with this distinction because the Examiner states
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that Altshuler '235 "interact[s] with the oxygen molecules naturally
occurring in the air (inherent)." Final Act. 16; see also Ans. 18. The
Examiner explains that unless Altshuler '235's "laser treatment is occurring
in a vacuum, i.e., no air, ... it will inherently interact with oxygen naturally
occurring in the air." Final Act. 15; see also Ans. 18.
There is merit to the Examiner's finding because Altshuler '235's
device is directed to "a phototherapeutic toothbrush" for use in an "oral
cavity" and Appellant does not explain how a user's oral cavity lacks
"oxygen molecules [ which occur] naturally in the air" as recited. Altshuler
'235 Abstract; see also Altshuler '235's "light emitting tooth brush (LETB)
10," ,r,r 2, 9, 63, 64, 106, and figures. In other words, Appellant does not
explain how "Altshuler ['235] fails to teach or suggest that the
[toothbrush's] laser beam interacts with the oxygen molecules naturally in
the air" (within the oral cavity) "to produce singlet oxygen." App. Br. 9-10.
Appellant contends that the Examiner's allegation that "Altshuler
['235] will inherently interact with oxygen molecules in the air ... is simply
not true." Reply Br. 9. Appellant addresses Altshuler '235's discussion of
activating "singlet oxygen, and other radicals within tissue" (Altshuler '235
,r 105) stating, "the laser wavelengths as specified in Altshuler ['235] (580 ±
20 nm, 630 ± 20 nm, 760 ± 20 nm, 1060 ± 20 nm, see paragraphs [0121] and
[0125] of Altshuler) do not necessarily match with the absorption band of
oxygen molecules in the air." App. Br. 10; see also Reply Br. 5 (Altshuler
'235's wavelengths "are not the same" as Appellant's disclosed
wavelengths), 9. According to Appellant, "[t]his is because the absorption
bandwidth of oxygen molecules in the tissue is much broader than the
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absorption bandwidth of oxygen molecules in the air." App. Br. 10; see also
Reply Br. 7, 9.
Even if true, Altshuler '235 nevertheless expressly discloses the
wavelengths of 630 ± 20 nm, 760 ± 20 nm, 1060 ± 20 nm (within which
"[ m ]olecular oxygen can be photoactivated"), which clearly overlap
Appellant's disclosed wavelengths of "about 7 64 nm or 1060 nm" and also
"about 634 nm." Altshuler '235 ,r,r 121-127, 141-143, 146, 150, 154; Spec.
,r,r 12, 13. The Examiner states, "[t]he exact same wavelengths are explicitly
taught as being used for the exact same purpose, and applicant's position is
that they don't match an absorption band of oxygen molecules in the art ...
is seemingly contradictory." Ans. 20.
We have been instructed that a prior art reference disclosing a range
of concentrations expressly discloses a particular concentration within that
range. See Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362, 1368 (Fed.
Cir. 2012). We have also been instructed that the Examiner satisfies the
initial burden by relying on a range disclosed in the prior art where the
claimed invention falls within that disclosed range. See Galderma Labs. v
L.P. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013).
Here, Appellant proffers graphs illustrating the narrower absorption
bandwidth of oxygen in the air (see App. Br. 12) in contrast to the broader
absorption bandwidth of oxygen in tissue (see App. Br. 13). See App. Br.
10. However, these graphs show overlapping absorption bandwidths, not
that there is one oxygen absorption bandwidth for air that is separate and
distinct from an oxygen absorption bandwidth for tissue. Thus, as
understood, these overlapping ranges were known. We are, consequently,
not persuaded by Appellant's arguments.
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Further, the Examiner notes, "Applicant's arguments seems to rest
solely on the fact that Altshuler ['235] has listed the wavelength and
included a ± value to indicate a specific bandwidth for the wavelength listed.
This is literally no different than applicant using the term 'about."' Ans. 21.
In other words, Appellant does not explain how Altshuler '235's recitation
of 630 ± 20 nm fails to match Appellant's "about 634 nm." The same can be
said regarding a comparison of Altshuler '23 5 's disclosure of 7 60 ± 20 nm
and 1060 ± 20 nm to Appellant's "about 764 nm" and "1060 nm." See
supra. Accordingly, Appellant's contention regarding the matching of the
respective wavelengths (see App. Br. 10, 11; Reply Br. 5, 9) is not
persuasive.
Addressing Wong, Appellant contends that Wong's lasers "will
possess narrow emission lines[], none of which is disclosed by Altshuler
['235]." App. Br. 11; Reply Br. 6. However, as noted above, the Examiner
did not rely on Wong for teaching a laser's emission lines. Instead, the
Examiner relied on Wong for explicitly disclosing a relationship between the
laser's linewidth and an absorption bandwidth of oxygen, i.e., "[t]he spectral
linewidth of individual emission lines [ of the laser] is of the same order of
magnitude as that for the absorption lines of the 7 60 nm 0--0 band of the
oxygen." Final Act. 17 (referencing Wong 5:25-29); see also Ans. 22.
Hence, Appellant's argument that Wong addresses "only specially designed
diode lasers [with] narrow emission lines" (App. Br. 11; Reply Br. 6) is not
persuasive of Examiner error.
Appellant further argues, "[ n ]owhere in Wong discloses singlet
oxygen generation." App. Br. 14. However, the Examiner did not rely on
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Wong for singlet oxygen generation but instead, the Examiner relied on
Altshuler '235 for this. See Final Act. 15, 16; Ans. 22.
It is further noted that Appellant addresses Wong, Furumoto, D.C.,
and Altshuler' 103 stating that they "do not contain any suggestion that they
be combined with Altshuler to produce singlet oxygen from oxygen
molecules naturally in the air." App. Br. 14. However, Appellant does not
dispute the reasons these references were actually relied upon by the
Examiner ( none of which pertain to the production of singlet oxygen from
air-borne oxygen). See Final Act. 17. Appellant's Reply Brief expands this
argument stating that there is "no motivation ... to utilize the alleged narrow
linewidth laser" of these additional references. Reply Br. 7. However, the
Examiner relied on these additional references because it would have been
obvious "to choose/adjust the bandwidth of the laser to match/target ... the
oxygen absorption band taught by Altshuler ['235]." Final Act. 17; see also
Ans. 22. Appellant does not explain how this rationale by the Examiner is
. .
improper or m error.
Accordingly, and based on the record presented, we sustain the
Examiner's rejection of claims 1, 2, and 5 as being obvious over Altshuler
'235 in view of Wong, Furumoto, D.C., or Altshuler' 103.
Claim 4
Claim 4, which depends from claim 1, recites the additional
limitation, "wherein the laser unit is stabilized to avoid wavelength drift. "7
The Examiner provides alternate rationales regarding this limitation. First,
7 The Examiner points out that "the claim[] require[ s] the laser unit to be
stabilized, not a wavelength of the laser." Ans. 24.
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the above references disclose "a bandwidth narrowed to 1 nm or less, this is
considered a laser unit stabilized to avoid wavelength drift." Final Act. 17.
Additionally, the Examiner states, "[i]n a different interpretation, the laser
diode ( 18) is stabilized by being placed within the device ( 10)." Final Act.
17.
Appellant states, "[a] laser can have a narrow linewidth yet still
suffers from wavelength drift caused by change in external conditions."
App. Br. 14; Reply Br. 7. Appellant additionally states, "there is no
evidence in Altshuler ['235] showing that the wavelength of the laser diode
18 is stabilized by being placed within the device 10." App. Br. 14; Reply
Br. 7. Even should Altshuler '235 be silent as to the reason laser 18 is
placed within device 10 (see e.g., Altshuler '235 Fig. 2), Appellant does not
dispute that device 10 assists in protecting embedded laser 18 therein from a
"change in external conditions," and thus it is not clear how such protection
would not also protect against "wavelength drift caused by [a] change in
external conditions." See supra.
Accordingly, and based on the record presented, we sustain the
Examiner's rejection of claim 4 as being obvious over Altshuler '235 in
view of Wong, Furumoto, D.C., or Altshuler' 103.
The rejection of (a) claim 6 as unpatentable over Altshuler '235 in view of
Wong, Furumoto, D.C., or Altshuler '103, and further in view of Pilcher;
and, (b) claim 7 as unpatentable over Altshuler '235 in view of Wong,
Furumoto, D. C., or Altshuler '103, and further in view of Vaynberg
Appellant does not argue claims 6 or 7 separate from the above
arguments presented with respect to claim 1. Instead, Appellant asserts that
"Pilcher does not cure" and "Vaynberg does not cure" the deficiency of the
other recited references. App. Br. 15; Reply Br. 8-9. We are not persuaded
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by such arguments. We sustain the Examiner's rejection of claims 6 and 7
for the reasons stated.
DECISION
The Examiner's written description rejection of claims 1, 2, and 4--7 is
reversed.
The Examiner's indefinite rejection of claims 1, 2, and 4--7 is
reversed.
The Examiner's art rejections of claims 1, 2, and 4--7 are affirmed.
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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
17