Kenneth P. Grace

Patent Trials and Appeals Board

May 18, 2020

2018008421 (P.T.A.B. May. 18, 2020)

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.
13/804,923 03/14/2013 Kenneth P. Grace 2013P02504US 4886
24737 7590 05/18/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
WU, TONG E
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
05/18/2020 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KENNETH P. GRACE
____________________

Appeal 2018-008421
Application 13/804,923
Technology Center 3700
____________________

Before JENNIFER D. BAHR, BENJAMIN D. M. WOOD, and
ARTHUR M. PESLAK, Administrative Patent Judges.

WOOD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from a Final Action entered
January 1, 2017 rejecting claims 7, 8, 11, 12, 19, and 20. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party in interest as The Spectranetics Corp.
Appeal Br. 2.
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Application 13/804,923

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THE CLAIMED SUBJECT MATTER
The claims are directed to a multiplexed laser catheter. Claim 7,
reproduced below, is illustrative of the claimed subject matter:
7. A system, comprising:
a laser catheter;
a rotating wedge prism configured to receive
a laser beam along an optical path and rotate to
a selected position to redirect, by optical
refraction, the laser beam from the optical path
onto one or more sets of optical fibers of the
laser catheter, wherein a distal end of the laser
catheter irradiates an endovascular structure;
at least one of a detector and proximity
sensor configured to sense:
at a first time, a first position of the
rotating wedge prism, wherein at the first
position, the redirected laser beam irradiates
a first, but not a second, set of optical fibers;
and
at a second position, the redirected laser
beam irradiates the second, but not the first,
set of optical fibers.
REFERENCES
Kittrell US 4,913,142 Apr. 03, 1990
Cormack US 2002/0159685 A1 Oct. 31, 2002
REJECTIONS
Claims 7, 8, 11, 12, 19, and 20 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Kittrell and Cormack.
Claims 7 and 19 are rejected on the ground of obvious-type double
patenting over claim 12 of co-pending Application No. 13/826,053 in view
of Kittrell and Cormack.
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ANALYSIS
Claims 7, 8, 11, 12, 19, and 20—Rejected as
Unpatentable over Kittrell and Cormack.
Appellant argues the patentability of the claims subject to this
rejection as a group, and treats claim 7 as representative of the group.
Appeal Br. 4–10. We likewise select claim 7 as representative of the
grouped claims, and decide the appeal of the rejection of these claims on the
basis of claim 7 alone. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Kittrell discloses the invention substantially
as claimed, including a laser catheter and the claimed proximity sensor.
Final Act. 3.2 The Examiner further finds that although Kittrell discloses a
rotating optical member configured to receive a laser beam along an optical
path and rotate to a selected position to redirect the laser beam onto one or
more selected optical fibers, Kittrell “does not disclose the same rotating
optical members recited.” Id. The Examiner therefore relies on Cormack
for this teaching. According to the Examiner, “Cormack teaches redirecting
a light beam using rotating optical members including at least wedge prisms
129.” Id. at 3–4 (citing Cormack, Fig. 1); see Cormack ¶ 24. 3 The
Examiner determines that “it would have been obvious to one with ordinary

2 The Examiner also determines that “[t]he phrase ‘wherein a distal end of
the laser catheter irradiates an endovascular structure’ is . . . an intended use
and does not impact structural limitations on the system.” Final Act. 3.
Appellant does not challenge this determination.
3 Cormack teaches a “beam deflector 129” that is comprised of first wedge
prism 122, second wedge prism 130, and associated motors and other
components to rotate the wedge prisms. Cormack ¶ 24, Fig. 1. We
understand the Examiner’s usage of “wedge prisms 129” to refer to beam
deflector 129.
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skill in the art at the time the invention was made to modify Kittrell as taught
by Cormack to include the same rotating optical member(s) as recited, in
order to accurately redirect the laser beam to an appropriate optic fiber.” Id.
at 4.
Appellant makes several arguments in support of the patentability of
claim 7. Appellant first argues that “the Examiner has not pointed to any
evidence, made any findings or articulated any reason based upon such
findings on how to alter the arrangement of Kittrell to accommodate the
rotating optical members in Cormack.” Appeal Br. 6. Appellant further
argues that one of ordinary skill in the art would not have been able to
simply substitute Cormack’s wedge prisms for Kittrell’s lens 41 or mirror
98. Id. at 8. According to Appellant, “the lens of Kittrell cannot be replaced
with the beam translator or beam deflector of Cormack because inserting the
rotating lens of Cormack into the position of Kittrell’s lens 41 would not
converge light onto the rotating mirror and would not, therefore, direct light
to the fibers of Kittrell.” Id. at 8. Appellant further states that
“[a]lternatively, if the rotating refracting lens of Cormack is placed into the
position of Kittrell’s mirror 98, the light passing through the lens would
impinge onto the shaft and would also not be directed to the fibers of
Kittrell.” Id.
In the Answer, the Examiner disputes that it has not explained how
Kittrell would be altered to accommodate Cormack’s beam deflector. The
Examiner contends that “Figure 1 of Cormack alone already shows how to
arrange a laser, . . . wedge prisms, and optical fibers to accomplish the
switching of optical fibers.” Ans. 12–13. The Examiner also denies that the
proposed combination “bodily incorporate[s] an individual optical member
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of Cormack for specifically only the lens or specifically only the mirror of
Kittrell, in a piecewise, direct substitution,” as Appellant’s arguments imply.
Ans. 7–8. Instead, the “Examiner maintains that the proposed modification
to include a wedge prism . . . of Cormack would also include the necessary
angles, arrangements, and additional components of Cormack as necessary
to effectively utilize the idea of redirecting light with a wedge prism,” such
that the wedge prisms and fibers would be arranged as depicted in Cormack
Figure 1. Id. at 10, 12–13 (emphasis omitted).
We find Appellant’s arguments unpersuasive of Examiner error.
Regarding Appellant’s first argument, the Examiner finds that Cormack
Figure 1 illustrates how one of ordinary skill in the art would have arranged
the wedge prisms and optical fibers to accomplish Kittrell’s switching
operation. Appellant does not respond to this finding in its Reply Brief,
much less show that it is incorrect. Second, we agree with the Examiner that
Appellant mischaracterizes the proposed combination; the Examiner is not
proposing replacing only Kittrell’s lens, or, alternatively, only Kittrell’s
mirror, with Cormack’s beam deflector. Instead, both Kittrell’s mirror and
lens would be replaced by Cormack’s beam deflector, the beam deflector
and Kittrell’s optical fibers arranged as depicted in Cormack’s Figure 1.
Ans. 12–13.
Appellant raises two new arguments in its Reply Brief. First,
Appellant argues that “[t]he Examiner’s proffered rationale for combining
Kittrell and Cormack is improper” because “Kittrell does not disclose or
suggest that its device is non-operational or cannot accurately direct a laser
beam.” Reply Br. 2. Second, Appellant argues that the Examiner has not
shown why one of ordinary skill in the art would reasonably expect that the
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proposed combination of Kittrell and Cormack would provide “an
operational optical fiber selector that can accurately redirect the laser beam
to an appropriate optic fiber,” as the Examiner contends. Id. at 3.
In accordance with our rules, we do not consider arguments first
raised in a reply brief unless good cause is shown. See 37 C.F.R. §
41.41(b)(2). Appellant has not explained why it could not have raised these
arguments in the Appeal Brief. Were we to consider these arguments,
however, we would not find them persuasive. As to the first, the Examiner’s
reason to combine the references does not presume, nor does it require, a
prior art product with deficiencies in some regard. See In re Ethicon, Inc.,
844 F.3d 1344, 1351 (Fed. Cir. 2017) (“The normal desire of artisans to
improve upon what is already generally known can provide the motivation to
optimize variables”). As to the second argument, the Examiner relies on
Cormack’s Figure 1 as depicting how the combined structure would operate.
Ans. 12–13. Appellant does not explain why Kittrell’s device would not
successfully operate if arranged in this manner.
Because we are not persuaded that the Examiner erred in rejecting
claims 7, 8, 11, 12, 19, 20 as unpatentable over Kittrell and Cormack, we
sustain the rejection.
Claims 7 and 19—Double Patenting
Appellants have not responded to the Examiner’s provisional rejection
of claims 7 and 19 on the ground of non-statutory double patenting over
claim 12 of co-pending Application No. 13/826,053 in view of Kittrell and
Cormack. Therefore, Appellant has waived any argument of error, and we
summarily sustain this rejection. See In re Berger, 279 F.3d 975, 984, 985
(Fed. Cir. 2002) (holding that the Board did not err in sustaining a rejection
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under 35 U.S.C. § 112, second paragraph, when the applicant failed to
contest the rejection on appeal).
DECISION
For the above reasons, the Examiner’s rejection of claims 7, 8, 11, 12,
19, and 20 is affirmed.
More specifically:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
7, 8, 11, 12,
19, 20
103 Kittrell, Cormack 7, 8, 11, 12,
19, 20

7, 19 Double Patenting 7, 19
Overall
Outcome
7, 8, 11, 12,
19, 20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED