Ex Parte Wheatley et alDownload PDFPatent Trial and Appeal BoardMay 22, 201814137568 (P.T.A.B. May. 22, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/137,568 12/20/2013 26356 7590 05/24/2018 ALCON IP LEGAL 6201 SOUTH FREEWAY FORT WORTH, TX 76134 FIRST NAMED INVENTOR Barry L. Wheatley 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. PAT905161-US-NP 4241 EXAMINER BRUTUS, JOEL F ART UNIT PAPER NUMBER 3737 NOTIFICATION DATE DELIVERY MODE 05/24/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): patent. docketing@alcon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BARRY L. WHEATLEY and KAMBIZ PAR TO Appeal2017-004334 Application 14/137 ,568 1 Technology Center 3700 Before DEMETRA J. MILLS, JOHN G. NEW, and ELIZABETH A. LA VIER, Administrative Patent Judges. LA VIER, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellants seek review of the Examiner's rejections of claims 1-9 and 14--27. We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we REVERSE. BACKGROUND The Specification describes an optical coherence tomography (OCT) imaging probe, having "an elastomeric optical element configured to selectively deform to change a direction of a focused imaging light." Spec. i-f 7; see also id. i-f 1. 1 Appellants state the real party in interest is Novartis AG. Appeal Br. 2. Appeal2017-004334 Application 14/137,568 Claim 1 is illustrative: 1. An imaging probe, comprising a housing, having a proximal region configured to be coupled to an optical cable; a cannula, extending from a distal region of the housing; an optical guide, positioned partially in the housing and partially in the cannula, configured to receive an imaging light from the optical cable in the proximal region of the housing, and to guide the imaging light towards a distal end of the cannula; an optical focusing element, configured to receive the imaging light from the optical guide, and to emit a focused imaging light; a transparent elastomeric optical element, configured to receive the focused imaging light from the optical focusing element, and to be deformable to redirect the focused imaging light passing through the elastomeric optical element; and an actuator system, configured to deform the elastomeric optical element to redirect the focused imaging light. Appeal Br. 13 (Claims Appendix). 2 Appeal2017-004334 Application 14/137,568 REJECTIONS MAINTAINED ON APPEAL 1. Claims 1--4, 8, 9, 15-17, and 19-27 stand rejected under 35 U.S.C. § 103 as unpatentable over Y adlowsky, 2 Michel, 3 and Boppart. 4 Ans. 3. 2. Claims 5 and 6 stand rejected under 35 U.S.C. § 103 as unpatentable over Y adlowsky, Michel, Boppart, and Ravi. 5 Ans. 11. 3. Claim 7 stands rejected under 35 U.S.C. § 103 as unpatentable over Yadlowsky, Michel, Boppart, and Weinschenk. 6 Ans. 12. 4. Claim 14 stands rejected under 35 U.S.C. § 103 as unpatentable over Yadlowsky, Michel, Boppart, and Prescott. 7 Ans. 12-13. 5. Claim 18 stands rejected under 35 U.S.C. § 103 as unpatentable over Yadlowsky, Michel, Boppart, and Hendriks. 8 Ans. 13. DISCUSSION For the "transparent elastomeric optical element" recited in claim 1, the Examiner relies on Michel, as teaching a deformable membrane made from an elastomeric polymer, and Boppart, as teaching a transparent 2 Yadlowsky et al., US 2012/0190921 Al, published July 26, 2012. 3 Michel, US 4,638,800, issued Jan. 27, 1987. 4 Boppart et al., US 6,485,413 Bl, issued Nov. 26, 2002. 5 Ravi, US 2011/0144228 Al, published June 16, 2011. 6 Weinschenk, III et al., US 6,599,317 Bl, issued July 29, 2003. 7 Prescott, US 5,093,719, issued Mar. 3, 1992. 8 Hendriks et al., US 2010/0282954 Al, published Nov. 11, 2010. 3 Appeal2017-004334 Application 14/137,568 window. See Final Action 3--4. As the Examiner acknowledges (see id.), Michel's membrane is a mirror: The membrane may be made of an aluminized polyester sheet such as mylar, or of polished titanium, and acts to reflect close to 100% of the 10.6 micrometer wavelength light generated by the C02 laser. The light is focused by the concave membrane mirror at a point whose distance from the mirror's surface is inversely proportional to the displacement of the membrane. Michel 14:46--49. Meanwhile, Boppart's transparent window is simply that: The distal end of the enclosure 50 consists of an optional transparent window 54 that permits the optical beam to be transmitted with little attenuation while protecting the optics and mechanics from fluids and contaminants. Such an enclosure allows easy cleaning and sterilization. Boppart 11:28-32. The Examiner offers the following rationale for combining the references: Therefore, it is obvious to one skilled in the art at the time the invention was filed and would have been motivated to combine Y adlowsky et al, Michel and Boppart et al by using an elastomeric optical element to receive the focused imaging light and to be deformable to redirect the focused imaging light by an actuator system; in order to change the focal point of the laser beam [see column 15 lines 13-15, Michel] and to bring the laser beam to a focus at a target surface on the surgical site [see abstract, Michel] and using an elastomeric deformable membrane such as Silicone rubber, because it can be molded cheaply into almost any cross-section and then treated with vapor-deposited aluminum for high reflectance [see column 16 lines 5-16, Michel] and using a transparent window; because the transparent window permits the optical beam to be transmitted with little attenuation while protecting the optics and mechanics from fluids and contaminants [see column 11 lines 28-37, Boppart et al]. 4 Appeal2017-004334 Application 14/137,568 Final Action 4--5. We agree with Appellants (see Appeal Br. 9) that this analysis is not persuasive; it largely recites the features of Michel and Boppart without explaining how the combination would meet the claim limitations for which these references are cited. As explained above, Michel's deformable mirror reflects light and does not redirect focused imaging light passing through it, whereas Boppart teaches a simple window that permits light to pass through it but does not redirect it and is not deformable. The Examiner has not explained adequately how a combined structure would be "deformable to redirect the focused imaging light passing through the elastomeric optical element," as required by claim 1. As such, the Examiner has not established a prima facie case of obviousness of claim 1. Therefore, we reverse the rejection of claim 1, and those of claims 2-9 and 14--27, which depend directly or indirectly on claim 1. CONCLUSION The rejections of claims 1-9 and 14--27 are reversed. REVERSED 5 Copy with citationCopy as parenthetical citation