Ex Parte Weir et al

Patent Trial and Appeal Board

Sep 26, 2013

11716806 (P.T.A.B. Sep. 26, 2013)

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.
11/716,806 03/12/2007 Michael P. Weir END5764USNP-00139 7131
7590 09/26/2013
Christopher W. Elswick
Thompson Hine, LLP
10 W. Second Street
2000 Courthouse Plaza NE
Dayton, OH 45402-1758
EXAMINER
LIPITZ, JEFFREY BRIAN
ART UNIT PAPER NUMBER
3769
MAIL DATE DELIVERY MODE
09/26/2013 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 MICHAEL P. WEIR, ROBERT J. DUNKI-JACOBS,
NEERAJ P. TEOTIA, PAUL G. RITCHIE, JERE J. BROPHY,
MICHAEL S. CROPPER, THOMAS W. HUITEMA, GARY L. LONG,
and ROBERT M. TRUSTY
__________

Appeal 2011-013045
Application 11/716,806
Technology Center 3700
__________

Before DEMETRA J. MILLS, LORA M. GREEN, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION ON APPEAL
This appeal1 under 35 U.S.C. § 134 involves claims 1-5, 9-14, and 17-25.
The Examiner entered rejections under 35 U.S.C. § 103(a). We have
jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

1 Appellants identify the real party in interest as Ethicon Endo-Surgery, Inc.
(App. Br. 1.)
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STATEMENT OF THE CASE
Appellants’ invention relates to
A medical device [that] includes a radiation source
assembly having at least two radiation sources, where one or
more of the radiation sources is adapted to generate an imaging
beam for use in visualization of a scene and one or more of the
radiation sources is adapted to generate a therapeutic beam for
treatment of a medical condition

(Specification, abstract). “A user input device allows for selection of a
treatment region within the field of view” (id. at ¶ [0008]).
Claims 1 and 12 are representative, and read as follows (emphasis
added):
1. A medical device comprising:
a radiation source assembly having at least two radiation
sources, where one or more of the radiation sources is adapted
to generate an imaging beam for use in visualization of a scene
and one or more of the radiation sources is adapted to generate
a therapeutic beam for treatment of a medical condition;
an optical fiber for directing radiation energy from the
radiation source assembly toward a distal end of the medical
device in the form of a beam;
a reflector that receives the beam from the optical fiber,
the reflector configured to direct the beam onto a field-of-view;
a receiving system including a detector arranged and
configured to receive radiation from the field-of-view to
generate a viewable image;
a controller that generates a video image based on
electrical signals generated by the detector that correspond to
the radiation received by the detector from the field-of-view;
a geometry input device operatively connected to the
controller for user specification of a treatment region; and
a display device for displaying the video image of the
field-of-view to a user;
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wherein the imaging beam and the therapeutic beam from
the at least two radiation sources are directed to follow a
common path to the reflector; and
wherein the displayed video image is manipulated by the
controller to display the geometry of a user-specified treatment
region within the field-of-view for treatment by the therapeutic
beam.

12. A method of providing medical treatment, the method
comprising:
outputting an imaging beam using a first radiation
source;
outputting a therapeutic beam using a second radiation
source;
directing the imaging beam onto a field-of-view for
generating a viewable image thereof using a reflector;
detecting radiation received from the field-of-view;
displaying a video image of the field-of-view based on
the detected radiation;
having a user specify a treatment region on the displayed
video image and within the field-of-view for treatment by the
therapeutic beam;
manipulating the displayed video image to display the
geometry of the user-specified treatment region within the field-
of-view; and
directing the therapeutic beam onto at least a portion of
the field-of view based on the user-specified treatment region in
the field-of-view.

The claims stand rejected as follows:2
I. Claims 1-5, 10, 12, 14, 18, 20, 22, and 24 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Wiklof3 and
Gouge.4

2 The 35 U.S.C. § 112 rejections of claims 22 and 24 have been withdrawn
(Ans. 4).
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II. Claim 9 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Wiklof, Gouge, and Ito.5
III. Claims 11, 19, and 25 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Wiklof, Gouge, and
Boppart.6
IV. Claims 13 and 21 under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Wiklof, Gouge, and Cense.7
V. Claim 17 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Wiklof, Gouge, and Wang ’211.8
VI. Claim 23 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Wiklof, Gouge, Ito and Wang ’328.9

OPINION
REJECTION I.—WIKLOF AND GOUGE
Issue
The Examiner rejected claims 1-5, 10, 12, 14, 18, 20, 22, and 24 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Wiklof
and Gouge. The Examiner finds that
Wiklof does NOT explicitly teach manipulating the
image with a user input device; although Wiklof does expressly

3 Wiklof et al., Patent Publication 2005/0020926 A1, published Jan. 27,
2005.
4 Gouge et al., 6,067,371, issued May 23, 2000.
5 Ito et al., 5,379,769, issued Jan. 10, 1995.
6 Boppart et al., 6,485,413 B1, issued Nov. 26, 2002.
7 Cense et al., 6,976,984 B2, issued Dec. 20, 2005.
8 Wang et al., 6,537,211 B1 (“Wang ’211”), issued Mar. 25, 2003.
9 Wang et al., 2004/0122328 A1 (“Wang ’328”), published Jun. 24, 2004.
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teach that “The therapeutic beams may be selectively enabled
by a physician or by a remote expert, or alternatively may be
automatically enabled based on image properties. They may be
enabled for all of the field of view, for a portion of the field of
view, or for specific, small spots within the field of view
(Paragraph [0013]). Wiklof however is silent with respect to
how “a portion of the field of view” would be selected.

(Ans. 6.) However, “Wiklof is modified by Gouge to include a means for a
user to manipulate the image, and in particular to select a region of interest
within the image displayed on a display. The region may be selected by
using a mouse or trackball or user input (52) to outline the region of
interest.” (Id. at 13.)
The Examiner concludes that
It would have been obvious to provide a user input capable of
selecting regions of interest with the invention of Wiklof
because it would allow the user or the physician or the skilled
artisan to choose the region based on known anatomical
structures and features, a feat that would be far more difficult
for a computer to perform

(id. at 14). The Examiner also concludes that “[i]t would have been obvious
for the user to select the region of interest prior to treatment, because it
allows the user to diagnose and assess structural problems, as well as
monitor treatment intermittingly” (id.).
Appellants contend that
[N]one of the expressed rationales pertain to a display of the
geometry of the user-specified treatment region, and only that
region, as opposed to global or localized manipulations of an
image for inspection. Image enhancement for the identification
of anatomical features visible in the FOV is not equivalent to
the display of an otherwise abstract “user-specified treatment
region within the [FOV] for treatment by the therapeutic beam”
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prior to any operation of that beam. The Examiner argues that
“these image alterations will inherently create geometrical
shapes that highlight the treatment area,” but does not link any
disclosure or rationale to the control and operation of a
treatment beam. An operator will not unerringly manipulate
and/or inspect only the desired treatment area, but a substantial
operative margin. Consequently, there is no evidence to support
an “inherent” disclosure of image manipulation “to display the
geometry of a user-specified treatment region within the field-
of-view for treatment by the therapeutic beam.”
(App. Br. 11-12; emphasis added.)
The issue presented is:
Does the evidence of record support the Examiner’s finding that the
combined prior art renders obvious the device of Appellants’ claims?
Findings of Fact
The following findings of fact (“FF”) are supported by a
preponderance of the evidence of record.
FF1. Wiklof “relates to scanned beam imaging systems, and
particularly to scanned beam endoscopes, laparoscopes, and other imaging
devices that gather an image from a relatively inaccessible location” (Wiklof
1, ¶ [0009]).
FF2. Wiklof discloses that
[A] plurality of colored light sources . . . combine to form
substantially white light. The white light is sent to a distal
tip via one or more optical fibers, formed into a beam, and
the beam is scanned across a field-of-view (FOV). At least
a portion of the light reflected, scattered, refracted, or
otherwise perturbed by the FOV is gathered and converted
into electrical signals. By combining information about
beam position and the amount of light gathered, a digital
image may be formed. According to an alternative
embodiment, information about beam position may be
determined from the image itself.
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(Wiklof 2, ¶ [0011].)
FF3. Wiklof discloses that
[L]ight sources having therapeutic properties may be used
for treatment. For example, high-powered infrared light may
be used to cauterize, ultraviolet light may be used to enable
phototropic drugs, etc. . . . Therapeutic beams may be
selectively enabled by the physician or by a remote expert,
or alternatively may be automatically enabled based upon
image properties. They may be enabled for all of the field of
view, for a portion of the field-of-view, or for specific, small
spots within the field-of-view.
(Wiklof 2, ¶ [0013].)
FF4. Wiklof discloses that “[l]ight may be emitted in ultraviolet or
infrared wavelengths to produce a hyperspectral image” (id. at abstract).
FF5. Gouge discloses a “method and system for mapping
temperature from image data” (Gouge, abstract).
FF6. Gouge discloses as follows:
Prior to initiation of thermal treatment, a treating physician
preferably selects a region of interest within the image
displayed on display 26, although the entire display may be
identified as the region of interest. . . . System 14 evaluates the
image data within the region of interest during the monitoring
period for temperature mapping. . . . Once the region of interest
is defined, processor 34 segregates the region of interest into
predefined groups of pixels for temperature mapping.
(Id. at col. 9, ll. 9-22.)
Principles of Law
“[A] patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007).
However, a prima facie conclusion of obviousness may be supported by a
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showing that a combination of familiar elements according to known
methods yields no more than predictable results. Id. at 401; citing United
States v. Adams, 383 U.S. 39, 50-52 (1966). Furthermore, the Supreme
Court has emphasized that “the [obviousness] analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at 418. “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.
Analysis
Independent Claim 1
We adopt the Examiner’s fact finding and rationale as our own. The
evidence on this record supports the Examiner’s finding that the
combination of references teaches all elements of the claims (FF1-FF6).
Specifically, Wiklof discloses that “[therapeutic beams] may be enabled for
all of the field of view, for a portion of the field-of-view, or for specific,
small spots within the field-of-view” (FF3). Gouge provides a means for
manipulating a digital image to select regions of interest (FF5), suggesting
that a person of ordinary skill in the art would have modified Wiklof to
include such a feature in order to, for example, selectively enable the portion
of the field-of-view where therapy is desired with a reasonable expectation
of success (Ans. 14).
We therefore find that the Examiner has presented a sound rationale
as to why a person of ordinary skill in the art would have modified Wiklof’s
device with the teachings of Gouge to arrive at the claimed device, and has
provided sufficient evidence to support a prima facie case of obviousness.
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Dependent claim 4
Claim 4 recites as follows:
4. The medical device of claim 1 wherein the controller
modulates sensitivity of the receiving system with delivery of
the therapeutic beam to inhibit overload.

The Examiner finds that
Wiklof teaches altering optic power of the radiation to
indirectly alter sensitivity of the detector (Paragraph [0076]). In
particular, Wiklof teaches reducing power of light beam (110c)
to fall under the “detection ceiling” of the detector in order to
for detector to process a meaningful signal. This control over
optic power will inherently inhibit overload, since overload
requires the signal to be above the upper limit or ceiling of the
dynamic range of the detector. In addition, Wiklof teaches
providing the threshold limits for the detectors. In particular,
Wikloff teaches providing detectors that have upper and lower
thresholds that are variable and vary in accordance with the
illumination power (paragraph [0084-0085]).

(Ans. 7.)
Appellants contend that “[a]ltering the optic power of emitted
radiation will not even indirectly alter the sensitivity of a receiving system,
since a receiving system with a static sensitivity will still have the same
upper limit of dynamic range” (App. Br. 14). We agree. Inhibiting overload
is not equivalent to reducing the sensitivity of a detector. This is a point of
difference between Wiklof’s device and the device of claim 4. The rejection
did not provide evidence there would have been a reason to modulate
sensitivity of the receiving system with delivery of the therapeutic beam to
inhibit overload. Because the rejection did not resolve this difference, it
must be reversed. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(“[R]ejections on obviousness grounds cannot be sustained by mere
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conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness”).

Independent Claims 12 and 20
Regarding claim 12, Appellants contend that
“Selective enablement. . . for a portion of the field of view. . .”
does not suggest the specification of a treatment region on a
displayed video image, particularly in light of the Examiner’s
acknowledgement that Wiklof does not disclose/recite a user
input. More specifically, with regard to the Examiner’s stated
finding, the automatic identification of a treatment region based
upon image properties (even if displayed) is fundamentally the
opposite of a user specification of a treatment region on a
displayed video image, and would not require specification
“within the field of view,” so as to meet the limitations of the
claim.

(App. Br. 15.)
We are not persuaded. As discussed above with regard to claim 1, the
Examiner relies on Gouge for the disclosure of a user input to modify the
device of Wiklof and has presented a sound rationale as to why a person of
ordinary skill in the art would have modified Wiklof’s device with the
teachings of Gouge to arrive at the claimed device.
Appellants’ arguments regarding claim 20 are the same or similar as
those present with regard to claim 12. Thus, for the same reasons discussed
above, Appellants’ arguments do not persuade us that the Examiner has
erred in concluding that claim 20 is obvious of the combination of Wiklof
and Gouge.
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Conclusion of Law
The evidence of record supports the Examiner’s finding that the
combined prior art renders obvious the device of claims 1, 12, and 20.
Claims 2, 3, 5, 10, and 22 fall with claim 1. Claims 14, 18, and 24 fall with
claim 12.
The evidence of record does not support the Examiner’s finding that
the combined prior art renders the device of claim 4 obvious.

REJECTION II.—WIKLOF, GOUGE, AND ITO
Issue
The Examiner rejected claim 9 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Wiklof, Gouge, and Ito. Claim 9
requires that the device of claim 1 to have “a motion sensing system
including a motion sensor and an element operable to modify the
relationship of the displayed video image to the generated electrical signals
to compensate for movement of the field of view with respect to a stationary
reference frame” (emphasis added).
The Examiner finds that “Wiklof discloses that multiple light sources
and multiple beams at different wavelengths can be used as discussed above
in claim 1, but, Wiklof is silent as to the radiation source assembly being
configured to output an aiming beam to highlight an area of the field of
view” (Ans. 10).
The Examiner finds that
Ito teaches providing a motion detector circuit (1) that detects
amplitude and velocity of a moving internal organ relative to
the frame of reference (Column 10, Lines 25-62). Ito also
discusses using this motion information to observe the target
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object, and understand the moving direction of the moving
portion (Column 11, Lines 23-44). Examiner interprets the
addition of colors to represent motion as functionally equivalent
to modifying the relationship of the displayed image to
compensate for the movement within the field of view. It
would have been obvious to include the control and motion
sensing systems of Ito with the invention of Wiklof because
surgeons perform surgeries on living beings, which inherently
have moving tissues, blood, and sometimes whole body parts
which need to be taken into account when processing an image.
In addition, a moving object in an image will generally blur the
image if not properly accounted for, and therefore it would be
obvious to manipulate the image accordingly to obtain a clear
image.

(Ans. 9.)
Appellants contend that Ito “discloses a Doppler ultrasound device in
which movement within the field of view, rather than of the field of view
itself, is detected . . .” (App. Br. 17). Appellants further contend that “[t]he
mere measurement or display of a motion does not ‘compensate’ for such
motion under any reasonable construction of the term” and that “no
measurement or modification is made with respect to a stationary reference
frame” (id. at 17-18).
The issue presented is: Does the evidence of record support the
Examiner’s findings that the combine prior art teaches or suggests all
elements of claim 9?
Additional Findings of Fact
FF7. The Specification discloses as follows:
In some embodiments, motion sensing is incorporated
within the system. For example, element 150 may include a
number of sensors attached or connected to the scanner
assembly 2. The sensors may sense location, orientation or
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both. The sensors may be, for example, accelerometers,
magnetometers, rate gyros, electromagnetic position sensors,
etc. Element 152 represents the location and orientation
signals generated by the sensors and element 154 represents
a mathematic operation capable of converting the signals
152 into a stationary reference frame. Element 156
represents output of element 154 which is used to modify the
relationship of a displayed image to the scanned data 49 to
compensate for sensed movement.

(Specification 7, ¶ [0036] (emphasis added); see also, Figure 5.)
FF8. Ito “relates to an ultrasonic diagnostic apparatus for obtaining a
B-mode image of a diagnostic portion of an inspected object by utilizing
ultrasonic waves” (Ito, col. 1, ll. 9-12).
FF9. Ito discloses that
the Doppler frequency shift detector circuit 12 is supplied with
the Doppler frequency shift signal output from the motion
detector circuit 11 shown in FIG. 1 and detects whether the
signal of the moving portion (e.g., bloodstream) within the
inspected object represents the shift which approaches or goes
away from the ultrasonic wave beam transmitting direction

(id. at col. 11, ll. 5-11).
Principles of Law
When determining whether a claim is obvious, an examiner must
make “a searching comparison of the claimed invention - including all its
limitations - with the teachings of the prior art.” In re Ochiai, 71 F.3d 1565,
1572 (Fed. Cir. 1995) (emphasis added). “All words in a claim must be
considered in judging the patentability of that claim against the prior art.” In
re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (emphasis added); see MPEP
§ 2143.03.
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Analysis
We find that Appellants have the better position. The Examiner does
not adequately explain how the sensing of movement within a field of view,
as taught by Ito (see, e.g., FF9), reads on compensating for movement of the
field of view with respect to a stationary reference frame, as required by
claim 9.
Conclusion of Law
The evidence of record does not support the Examiner’s finding that
the combined prior art renders the device of claim 9 obvious.

REJECTION III.—WIKLOF, GOUGE, AND BOPPART
Issue
The Examiner rejected claims 11, 19, and 25 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Wiklof, Gouge, and Boppart.
Claim 11 is representative, and provides as follows:
11. The medical device of claim 1, wherein the radiation source
assembly is configured to output an aiming beam, and the
reflector is configured to highlight the user-specified treatment
region within the field-of-view with the aiming beam.

The Examiner finds that “Wiklof discloses that multiple light sources
and multiple beams at different wavelengths can be used as discussed above
in claim 1, but, Wiklof is silent as to the radiation source assembly being
configured to output an aiming beam to highlight an area of the field of
view” (Ans. 10). For the missing element, the Examiner relies on Boppart
and finds as follows:
Boppart discloses an invention to provide a forward directing
imaging system that is useful for diagnostic and therapeutic
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intervention during medical procedures which has applications
to hand-held probes and endoscopes in particular (col. 2, lines
29-35). Boppart discloses an aiming beam that is coincident
with the image beam (col. 21, lines 36-38). I t would have been
obvious to one skilled in the art at the time of the invention to
apply an aiming beam to the device of Wiklof in view of
Boppart because Boppart states that in this design as well as
others, the use of the coincident visible aiming beam permits
the user to visualize the location of the infrared or invisible
imaging beam and allows precise placement and alignment of
the imaging beam on the sample or specimen (col. 21, lines 41-
45).

(Ans. 10.)
Appellants contend that Boppart
[D]iscloses an aiming beam that is coincident with an imaging
beam, and hence an aiming beam that would be coincident with
the entire FOV, rather than any user-specified treatment region
within the FOV. The cited portions clearly teach that the
aiming beam permits the operator visually confirm the FOV of
an infrared imaging beam, rather than a therapeutic beam.

(App. Br. 19.)
The issue presented is: Does the evidence of record support the
Examiner’s findings that the combine prior art teaches or suggests all
elements of claim 11?
Additional Findings of Fact
FF10. Boppart discloses that “the use of a coincident visible aiming
beam permits the user to visualize the location of the infrared or invisible
imaging beam. This feature allows precise placement and alignment of the
imaging beam on the sample or specimen.” (Boppart, col. 21, ll. 41-45.)
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Analysis
We find that the Examiner has set forth a prima facie case of
obviousness that has not been adequately rebutted by Appellants. Contrary
to Appellants’ argument, we see no patentable difference between an aiming
beam that is coincident with an imaging beam and an aiming beam that
would be coincident with the entire field of view. We conclude that this is a
distinction without a difference (cf., Specification 5, ¶ [0030]). Rather, we
find that the Examiner has expressed a proper reason for the combination of
the cited references, namely, the combination of familiar elements in a
manner that yields no more than predictable results. KSR, 550 U.S. at 401.
Conclusion of Law
The evidence of record supports the Examiner’s finding that the
combined prior art renders the device of claim 11 obvious. Claims 19 and
25 fall with claim 11.

REJECTION IV.—WIKLOF, GOUGE, AND CENSE
Issue
The Examiner rejected claims 13 and 21 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Wiklof, Gouge, and Cense.
Claims 13 and 21 provide as follows:
13. The method of claim 12 comprising outputting the
therapeutic beam only when the reflector addresses the user-
specified treatment region in the field-of-view.

21. The medical device of claim 20 further comprising a
controller that controls operation of the radiation source
assembly such that a therapeutic beam is provided only within
the user-specified treatment region.

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The Examiner finds that “Wiklof does not expressly disclose that the
controller . . . controls the operation of the radiation source such that a
therapeutic beam is provided only within the target region” (Ans. 10). For
the missing element, the Examiner relies on Cense and finds as follows:
Cense discloses a device that treats skin by radiation. A control
unit (37) comprises an image sensor (31) by means of which,
on the basis of the image recorded, the positions of the hair
roots are determined (target region) and the control unit
manipulates actuators (reflectors) where the laser beam (13) is
positioned in a series of target positions that correspond to the
positions of the hair roots (target region) (col. 5, lines 26-47). It
would have been obvious to one skilled in the art at the time of
the invention to have the therapeutic beam controlled to be
provided only within the target region in the device of Wiklof,
in view of Cense in order to apply the radiation to the area
needed to be treated so that the healthy tissue would remain
undamaged.

(Ans. 10-11.)
Appellants contend that the combination of references “does not
disclose control of a therapeutic beam or other device so that the beam is
outputted only within a user-specified treatment region, but rather control of
a therapeutic beam in a device in which there is no user-specified treatment
region” (App. Br. 20). Appellants particularly contend that, regarding the
combination of Wiklof, Gouge, and Cense, “no user-specified treatment
region is specified by user input (claim 20) on a displayed video image
(claim 12) or otherwise, and no controller or beam-location tracker acts to
limit the generation/output of a therapeutic beam based on such a criterion”
(id.).
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The issue presented is: Does the evidence of record support the
Examiner’s findings that the combine prior art teaches or suggests all
elements of claim 13 and 21?
Additional Findings of Fact
FF11. Cense discloses as follows:
The device 1 further comprises a control unit 37 to which the
image sensor 31 supplies an electrical signal uS which
corresponds to the image recorded by the image sensor 31. The
control unit 37 comprises a sensor by means of which, on the
basis 35 of the image recorded, the positions of the hair roots 39
of the hairs 41 present on said part of the skin 7 are determined
on said part of the skin 7. The control unit 37 controls the two
actuators 23 and 25 by means of, respectively, an electrical
signal uM1 and an electrical signal uM2, in such a 40 manner that
the laser beam 13 is successively positioned in a series of target
positions that correspond to the positions of the hair roots 39
thus determined. In each target position 16, the laser beam 9 is
activated, during a predetermined period of time and with a
predetermined intensity, by the control 45 unit 37 by means of
an electrical signal uL so that the hair roots 39 present are
successively heated and die.

(Cense col. 5, ll. 31-47.)
Analysis
We adopt the Examiner’s fact finding and rationale as our own. The
evidence on this record supports the Examiner’s finding that the
combination of references teaches all elements of the claims (FF1-FF6 and
FF11). Specifically, Wiklof discloses that “[therapeutic beams] may be
enabled for all of the field of view, for a portion of the field-of-view, or for
specific, small spots within the field-of-view” (FF3). Gouge provides a
means for manipulating a digital image to select regions of interest (FF5),
suggesting that Wiklof could have been modified to include such a feature
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with a reasonable expectation of success. Cense is further evidence that the
selective placement of a therapeutic beam was known. We thus find that the
Examiner has expressed a proper reason for the combination of the cited
references, namely, the combination of familiar elements in a manner that
yields no more than predictable results. KSR 550 U.S. at 401.
Conclusion of Law
The evidence of record supports the Examiner’s finding that the
combined prior art renders the device of claims 13 and 21 obvious.

REJECTION V.—WIKLOF, GOUGE, AND WANG ’211
The Examiner rejected claim 17 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Wiklof, Gouge, and Wang ’211.
Appellants have not traversed the merits of this rejection. We
therefore summarily affirm it. See MANUAL OF PATENT EXAMINING
PROCEDURE § 1205.02 (“If a ground of rejection stated by the examiner is
not addressed in the appellant’s brief, that ground of rejection will be
summarily sustained by the Board.”).

REJECTION VI.—WIKLOF, GOUGE, ITO, AND WANG ‘328
Issue
The Examiner rejected claim 23 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Wiklof, Gouge, Ito, and Wang ’328.
Claim 23 provides as follows:
23. The medical device of claim 1 further comprising an
element operable to detect relative movement through image
tracking and to convey signals indicating magnitude and
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direction of movement to the controller for control of the
therapeutic beam.

The Examiner finds that
It would have been obvious to one skilled in the art at the time
of the invention to apply the motion sensor of Wang 328 to the
device of Wiklof because Wang 328 states this is to control the
motion of the scanner and to control the distal end of the
endoscope (para 44, lines 18-19)

(Ans. 12). The Examiner also finds that “[i]t would also have been obvious
in order to control the stabilization of the device for a clearer image” (id.).
Appellants contend that “Wang discloses a scanning position sensor
for an element analogous to an oscillating mirror, but no portion of Wang
suggests any motion sensing using image tracking, or that such tracking
bears any relationship to control of a therapeutic beam” (App. Br. 22).
The issue presented is: Does the evidence of record support the
Examiner’s findings that the combine prior art teaches or suggests all
elements of claim 23?
Additional Findings of Fact
FF12. The Specification discloses as follows:
In some embodiments, the system may include tracking
(e.g., using instrument motion sensors and tissue motion
sensors) so that the targetable treatment region or point can
move with moving tissue and/or a moving endoscope. In
some embodiments, image recognition may be used for
target tracking for example by looking for a distinctive
feature in the image to act as a reference. In some
embodiments, multiple, different control points or regions
may be selected within the FOV, for example, to allow for
treatment of multiple tissue areas as the reflector 27 moves.

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(Specification 24, ¶ [0091].)
Analysis
Like Appellants, we are unable to find any disclosure in Wang ’328
related to an element operable for control of a therapeutic beam as required
by claim 23. Rather, Wang ’328 merely provides a general disclosure
related to imaging and non-imaging functionality through an endoscope,
none of which appear to be specifically relevant to the control of a
therapeutic beam. (See, e.g., Wang ‘328 at ¶ [0044].) We are thus not
persuaded by the Examiner’s rationale that the combination of references
teaches or suggests all elements of claim 23 and do not sustain this rejection.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that the combined prior art renders claim 23 obvious.

SUMMARY
We affirm the rejection of claims 1-3, 5, 10, 12, 14, 18, 20, 22, and 24
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Wiklof and Gouge. We reverse this rejection with regard to claim 4.
We reverse the rejection of claim 9 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Wiklof, Gouge, and Ito.
We affirm the rejection of claims 11, 19, and 25 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Wiklof, Gouge, and
Boppart.
We affirm the rejection of claims 13 and 21 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Wiklof, Gouge, and Cense.
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22
We affirm the rejection of claim 17 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Wiklof, Gouge, and Wang ‘211.
We reverse the rejection of claim 23 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Wiklof, Gouge, Ito and Wang
‘328.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

cdc