inter partes administrative patent judges. … 26, 2002 press release ("february 2002 waterlase...

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

BIOLASE TECHNOLOGY, INC. Appellant, Requester1

v.

Patent of CAO GROUP, INC. Respondent, Cross-Appellant, Patent Owner

Appeal2014-007366 Inter Partes Reexamination Control 95/002,271

Patent No. US 7,485,116 B22

Technology Center 3900

Before JAMES T. MOORE, STEVEN D.A. McCARTHY and DANIEL S. SONG, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

The Requester states that the real party in interest is now called Biolase, Inc. (See "Third Party Requester's Brief on Appeal," dated Mar. 1 7, 2 0 14 at 1). 2 Issued February 3, 2009 to Densen Cao (the "'116 patent"). The '116 patent issued from Appl. 10/947,055, filed September 22, 2004.

Case: 16-1664 Document: 1-3 Page: 7 Filed: 03/09/2016 (13 of 97)

Appeal2014-007366 Reexamination Control 95/002,271 Patent US 7,485,116 B2

1 STATEMENT OF THE CASE

2 The '116 patent as issued included claims 1-21. Claims 3, 6---9, 13

3 and 16---19 were not reexamined. ("Right of Appeal Notice," mailed

4 December 10, 2013 ("RAN") at 4). Reexamined claims 1, 2, 4, 5, 10---12,

5 14, 15, 20 and 21 were not amended during the reexamination proceeding.

6 (See "Third Party Requester's Brief on Appeal," dated Mar. 17, 2014 ("App.

7 Br. Req'r") at 26---28). New claims 22-57 were added during the

8 proceeding. (See id. at 28--43). Of these, claims 32 and 35 subsequently

9 were cancelled. (See id. at 1; see also RAN 4).

10 The Appellant/Requester appeals from the Examiner's decision

11 refusing to adopt proposed rejections of claims 11, 12, 14, 15, 20, 21, 23, 26,

12 27, 29, 33, 34, 37, 39, 41, 43,46---51, 53, 55 and 57. (App. Br. Req'r 1). A

13 hearing was held on November 19, 2014, addressing only the issues in this

14 appeal. (See "Record of Oral Hearing," mailed February 4, 2015, at 4, 1. 4-

15 5, 1. 4). We have jurisdiction over the appeal under 35 U.S.C. § 134(c)

16 (2002) and 35 U.S.C. § 315(b) (2002).

17 The Cross-Appellant/Patent Owner appeals from the Examiner's

18 decision rejecting claims 1, 2, 4, 5, 10, 22, 24, 25, 28, 30, 31, 36, 38, 40, 42,

19 44, 45, 52, 54 and 56. ("Patent Owner's Brief on Appeal under 37 C.P.R.

20 § 41.67," dated Mar. 24, 2014 ("App. Br. PO") at 4). The claims at issue in

21 the cross-appeal do not overlap the claims at issue in the appeal. The Patent

22 Owner did not request a hearing in the cross-appeal. (See "Record of Oral

23 Hearing," mailed February 4, 2015, at 4, 1. 4-5, 1. 4). We have jurisdiction

24 over the cross-appeal under 35 U.S.C. § 134(b) and 35 U.S.C. § 315(a)

25 (2002).

2



1 The Requester states that the '116 patent is at issue in CAO Group v.

2 Biolase Technology, Case No. 2: 12-CV-00388, in the U.S. District Court for

3 the District of Utah. (See "Third Party Requester's Brief on Appeal" dated

4 March 17,2014 at 1).

5

6 THE '116 PATENT

7 The '116 patent teaches a semiconductor laser system having surgical

8 and therapeutic applications in medicine and dentistry. (See '116 patent, col.

9 1, 11. 51-56). Most components of the system, including a laser module 131,

10 are contained within an enclosure or box 101. (See '116 patent, col. 1, 1. 66

11 -col. 2, 1. 1; see also id., col. 2, 11. 62---63 and fig. 1 c). The '116 patent

12 teaches that the enclosure 1 01 "provides protection for the laser system,

13 permits ventilation of interior components as needed, accommodates

14 portability, and accommodates convenient physical positioning." (' 116

15 patent, col. 2, 11. 1--4). The laser system of the '116 patent, as depicted in

16 Figures la and lc, also includes an optical fiber 131a (303 in Figs. 3a and

17 3b ).

18 A handpiece 107 ( 601 in Fig. 6a) "serves to control the fiber which

19 delivers a laser beam to a therapeutic or surgical surface [of a patient]" (' 116

20 patent, col. 5, 11. 22-23). A fiber cartridge 102 (see '116 patent, col. 2, 11.

21 11-12 and fig. la), also referred to as a fiber storage and dispensing unit 201

22 (see' 116 patent, col. 3, 11. 12-14; and figs. 2a and 2b), "is a modular unit

23 [for storing] a certain length of fiber used for application and [dispensing]

24 the fiber to desired length when it is used" (' 116 patent, col. 3, 11. 17-19).

3



1 We will address the cross-appeal first. For the sake of brevity,

2 findings of fact will be stated within the discussion of each issue. All

3 findings of fact have been found by a preponderance of the evidence.

4

5 CROSS-APPEAL OF THE PATENT OWNER: 6 CLAIMS 1, 2, 4, 5, 10, 22, 24, 25, 28, 30, 7 31, 36, 38, 40, 42, 44, 45, 52, 54 AND 56

8 Claim 1 is the sole independent claim subject to the Patent Owner's

9 Cross-Appeal:

1 0 1. A laser system useful m medicine or 11 dentistry comprising:

12 a housing,

13 a laser module within said housing, said 14 laser module being capable of producing laser light 15 which is usable for therapeutic purposes in 16 medicine or dentistry,

17 a fiber module, said fiber module having an 18 outer casing attachable to and removable from said 19 housing and configured to store amounts of extra 20 fiber,

21 said fiber module including fiber therein, 22 said fiber having a proximal end and a distal end, 23 and

24 said fiber proximal end being in light 25 communication with said laser module so that said 26 fiber can receive laser light from said laser module 27 and transport said laser light to said fiber distal 28 end.

29 The remaining claims in the cross-appeal depend, directly or indirectly, from

3 0 independent claim 1.

31 We AFFIRM the Examiner's decision to adopt each of the following

4


1

2

3

4


. . 3 reJ ectwns:

Ground 1: claims 1, 2, 4 and 10 under 35 U.S.C.

§ 1 02(b) (2002) as being anticipated by Potteiger I (US

6,263,143 B1, issued July 17, 2001) (RAN 4);

3 The Examiner's findings and conclusions appear in the RAN. The Examiner's Answer mailed April30, 2014, incorporates the RAN by reference. The RAN refers to statements in the "Request for Inter Partes Reexamination of U.S. Patent No. 7,485,116 under 35 U.S. C. §§ 311-314 and 37 C.P.R. 1.902 et seq.," dated September 14, 2012 ("Request"); "Third Party Requester's Comments after Patent Owner's Response under 37 C.P.R. § 1.947 and M.P.E.P § 2666.05," dated July 19, 2013 ("July 2013 Req'r Comm."); and "Third Party Requester's Comments after Patent Owner's Response under 37 C.P.R. § 1.947 and M.P.E.P § 2666.05," dated February 15, 2013 ("February 2013 Req'r Comm."). The numbering of the grounds of rejection is taken from the RAN.

For purposes of the appeal, the Requester relies on the Requester's Appeal Brief and a "Rebuttal Brief in Opposition to Patent Owner's Respondent Brief on Appeal," dated May 30, 2014 ("Reb. Br. Req'r"). The Patent Owner relies on a "Patent Owner's Respondent's Brief under 37 C.P.R. § 41.68," dated April16, 2014 ("Resp. Br. PO").

For purposes of the cross-appeal, the Patent Owner relies on the Patent Owner's Appeal Brief and the "Patent Owner's Rebuttal Brief under 37 C.P.R. § 41.71," dated May 30, 2014. ("Reb. Br. PO"). The Requester relies on a "Respondent Brief in Opposition to Patent Owner's Brief on Appeal," dated April 18, 2014 ("Resp. Br. Req'r").

The Patent Owner has submitted testimony in the form of a "Declaration of Expert, Dr. Densen Cao, Ph.D., under Section 1.132," executed on or about June 18, 2013 ("Cao Decl."); a "Declaration of Expert, John J. Graeber, DMD, under Section 1.132," executed on or about June 17, 2013 ("Graeber Declaration" or "Graeber Decl."); and a "Declaration of Expert, Michael K. Koceja, DDS, under Section 1.132," executed on or about June 17, 2013 ("Koceja Declaration" or "Koceja Decl.").

5


1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21


Grounds 2 and 11: claims 1, 2, 4, 5, 10 and 42 under 35

U.S.C. § 103(a) (2002) as being unpatentable over Potteiger I

and Lawhon (US 5,407,071, issued Apr. 18, 1995) (RAN 12

and 36);

Grounds 3 and 5: claims 1, 2, 4, 10, 22, 30, 38, 40, 44,

45 and 564 under§ 103(a) as being unpatentable over Potteiger

I and BIOLASE Tech., Inc., "LASERSMILE The Soft-Tissue &

Whitening Laser" (2002) ("LaserS mile") (RAN 16 and 21 );

Ground 6: claim 24 under§ 103(a) as being unpatentable

over Potteiger I and Baer (US 5,127,068, issued June 30, 1992)

(RAN 29);


over Potteiger I, Baer and Uejima (US 6,061,371, issued May 9,

2000) (RAN 31 );


over Potteiger I and Synrad, Inc., "SYNRAD DC-36 DC Power

Supply" (Jan. 23, 2003) ("Synrad") (RAN 32);

Ground 10: claim 36 under 103(a) as being unpatentable

over Potteiger I, LaserSmile and BIOLASE Tech., Inc.,

February 26, 2002 Press Release ("February 2002 Waterlase

Press Release") (RAN 33);

4 The Patent Owner and the Requester agree that the Examiner intended to reject claim 56 over Potteiger I and LaserSmile rather than over Potteiger I and Patterson (US 5,682,450, issued Oct. 28, 1997). (See App. Br. PO 6 n.1; Resp. Br. Req'r 1 ).

6



1 Ground 12: claim 31 under § 103 (a) as being

2 unpatentable over Potteiger I, LaserSmile and BIOLASE Tech.,

3 Inc., "WATERLASE YSGG" (Aug. 2, 2003) ("August 2003

4 Waterlase Internet Capture") (RAN 36); and

5 Ground 15: claim 52 under§ 103(a) as being

6 unpatentable over Potteiger I, Baer, Uejima and Soltz (US

7 5,272,716, issued Dec. 21, 1993) (RAN 37).

8 We REVERSE the Examiner's decision to adopt the following rejections:

9 Ground 5: claim 38 under§ 103(a) as being unpatentable

10 over Potteiger I and LaserS mile (RAN 21 ); and

11 Ground 16: claim 54 under§ 103(a) as being

12 unpatentable over Potteiger I and Patterson (US 5,682,450,

13 issued Oct. 28, 1997) (RAN 39).

14 Each of these grounds of rejection relies on Potteiger I either as an

15 anticipatory reference under § 1 02(b) or as a primary reference under

16 § 103(a). We find that Potteiger I describes "shipping casings, packages and

17 storage compartments configured to retain a laser module assembly."

18 (Potteiger I, col. 1, 11. 19-22). Figure 1 of Potteiger I depicts a prior art laser

19 module 10 in combination with a support assembly including a baseplate 20.

20 (Potteiger I, col. 2, 11. 53-55 and col. 3, 11. 5-14). The Examiner relies on

21 the embodiment of Figure 1 of Potteiger I as the basis for rejecting the

22 claims subject to the Patent Owner's cross-appeal. (See, e.g., RAN 5 ("As to

23 Claim 1, the baseplate 20 [which appears only in Figure 1] is considered a

24 housing in the broadest sense as it houses the laser module [10]")).

7



1 Issues

2 The Patent Owner argues that Potteiger I fails to anticipate claim 1

3 because the embodiment of Figure 1 of Potteiger I is not a "laser system

4 useful in medicine or dentistry;" because the embodiment does not include

5 "a laser module within said housing, said laser module being capable of

6 producing laser light;" and because the embodiment does not include "a

7 fiber module, said fiber module having an outer casing attachable to and

8 removable from said housing and configured to store amounts of extra

9 fiber." (See App. Br. PO 11-16; Reb. Br. PO 3-7).

10 The Patent Owner argues that the subject matter of claim 1 would not

11 have been obvious from the combined teachings of Potteiger I and Lawhon

12 because the combination proposed by the Examiner would not have been

13 suitable for carrying out the purposes of the embodiment of Figure 1 of

14 Potteiger I (see App. Br. PO 17-19; Reb. Br. PO 7-8); and because the

15 combined teachings would not have provided one of ordinary skill in the art

16 reason to modify the embodiment of Figure 1 to include "a laser module

17 within said housing, said laser module being capable of producing laser light

18 which is usable for therapeutic purposes in medicine of dentistry" as recited

19 in claim 1 (see App. Br. PO 19; Reb. Br. PO 8).

20 The Patent Owner argues that the subject matter of claim 1 would not

21 have been obvious from the combined teachings of Potteiger I and

22 LaserSmile because the combination proposed by the Examiner would not

23 have been suitable for carrying out the purposes of the embodiment of

24 Figure 1 of Potteiger I (see App. Br. PO 20---21; Reb. Br. PO 8); and because

25 the combined teachings would not have provided one of ordinary skill in the

26 art reason to modify the embodiment of Figure 1 to include "a fiber module,

8



1 said fiber module having an outer casing attachable to and removable from

2 said housing and configured to store amounts of extra fiber" (see App. Br.

3 PO 21; Reb. Br. PO 8).

4 The Patent Owner argues the subject matter of claim 38 would not


6 LaserSmile because the combined teachings would not have provided one of

7 ordinary skill in the art reason to modify the embodiment of Figure 1 to

8 include a "laser system as recited in claim 1 wherein said housing includes:

9 an electronic display panel configured to electronically display operation

10 information of said laser module, said operation information including ...

11 laser module protection function status" (see App. Br. PO 23-24; Reb. Br.

12 PO 10).





17 include a laser system including individual semiconductor laser chips which

18 are "separate and distinct semiconductor laser chips that are each separated

19 from one another by at least some open space." (See App. Br. PO 26---27;

20 Reb. Br. PO 13).





25 break the fiber recited in parent claim 1 into first and second fibers, each

9



1 having an attached first or second connector, as recited in claim 54. (See

2 App. Br. PO 28-29; Reb. Br. PO 13-15).

3

4 Principles of Law

5 A party taking a position adverse to the patentability of a claim in a

6 reexamination proceeding bears the burden of proving a factual

7 underpinning for a rejection of the claim by a preponderance of the

8 evidence. See Rambus Inc. v. Rea, 731 F.3d 1248, 1255 (Fed Cir. 2013);

9 Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988). Claims

10 undergoing reexamination are given their broadest reasonable interpretation

11 consistent with the written description of the patent under review. See In re

12 Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984).

13

14 Discussion

15 Anticipation by Potteiger I-"a laser system useful in medicine or dentistry"

16 The Patent Owner argues that the embodiment of Figure 1 in

17 Potteiger I is not a "laser system useful in medicine or dentistry" as recited

18 in the preamble of claim 1. (See App. Br. PO 11-13; Reb. Br. PO 3-5). The

19 Examiner pragmatically interprets the preamble as limiting claim 1 to a laser

20 system "inherently capable of the recited intended use" (RAN 10), that is, to

21 a system capable ofuse in the field of medicine or dentistry. The distinction

22 which the Examiner draws is a fine one. As a practical matter, the

23 Examiner's interpretation of the preamble does not narrow the scope of

24 claim 1.

25 At least where, as here, the body of the claim fully defines the claimed

26 subject matter such that the preamble reads on any apparatus which first

10



1 satisfies the limitation of the body of the claim, the preamble does not

2 further limit the claim. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182

3 F.3d 1298, 1305 (Fed. Cir. 1999).5 The body of claim 1 recites a laser

4 module "capable of producing laser light which is usable for therapeutic

5 purposes in medicine or dentistry." The body of the claim also recites a

6 fiber having a proximal end "in light communication with said laser module

7 so that said fiber can receive laser light from said laser module and transport

8 said laser light to said fiber distal end." These recitations flesh out the

9 meaning of the phrase "useful in medicine or dentistry"-a laser system is

10 inherently useful in medicine or dentistry if it includes a laser module that

11 produces laser light usable for therapeutic purposes; and a fiber that receives

12 laser light from the laser module and transports the laser light to a distal end

13 of the fiber. (See RAN 1 0).

14 The Patent Owner argues that the preamble of claim 1 can only be

15 satisfied if the combination of the laser module, the fiber and the housing, as

16 a whole, is useful in a therapeutic medical or dental process. (See generally

17 App. Br. PO 12-13; Reb. Br. PO 3-5). This is true so long as one keeps in

18 mind the respective roles to be played by the laser module, the fiber and the

19 housing as discussed in the written description of the '116 patent.

5 "If, however, the body of the claim fully and intrinsically sets forth the complete invention, including all of its limitations, and the preamble offers no distinct definition of any of the claimed invention's limitations, but rather merely states, for example, the purpose or intended use of the invention, then the preamble is of no significance to claim construction because it cannot be said to constitute or explain a claim limitation." Pitney Bowes at 1305.

11



1 The written description of the ' 116 patent teaches that the laser

2 module 131 generates a laser beam. (See, e.g., '116 patent, col. 4, 11. 47-50).

3 The written description teaches that the optical fiber 131 a delivers the laser

4 beam to a therapeutic or surgical surface of a patient (see '116 patent, col. 5,

5 11. 22-23; see also id., col. 4, 11. 52-54). This is consistent with the

6 conclusion that the laser system is inherently useful in medicine or dentistry

7 if it includes a laser module that produces laser light usable for therapeutic

8 purposes; and a fiber that receives laser light from the laser module and

9 transports the laser light to a distal end of the fiber. On the other hand,

10 column 2, lines 1--4, of the '116 patent merely teaches that the housing or

11 enclosure 1 OJ "provides protection for the laser system, permits ventilation

12 of interior components as needed, accommodates portability, and

13 accommodates convenient physical positioning."

14 We find that the laser module 10 depicted in Figure 1 of Potteiger I

15 includes a solid state laser 12, an optical connector 18 and an optical fiber 16

16 extending from the laser 12 at a proximal end to the optical connector 18 at a

17 distal end. (Potteiger I, col. 2, 1. 63- col. 3, 1. 2). The laser module 10

18 depicted in Figure 1 of Potteiger I is a Laser 2000 Module manufactured by

19 Lucent Technologies of Murray Hill, New Jersey. (See Potteiger I, col. 2, 11.

20 54-55; see also id., col. 1, 11. 37--40). The Examiner correctly finds that a

21 Laser 2000 Module is capable of producing light usable for therapeutic

22 purposes in medicine or dentistry. (See RAN 7 and 10---11).

23 The Patent Owner does not appear to challenge that finding in the

24 cross-appeal. (See, e.g., App. Br. PO 12 (arguing that the Examiner erred in

25 finding that the laser system described by Potteiger I as a whole, as opposed

26 to the laser module 10 alone, is "useful in medicine or dentistry"); id. at 15-

12



1 16 (arguing that the embodiment of Figure 1 fails to include a "laser module

2 within said housing ... capable of producing laser light" rather than arguing

3 that the embodiment fails to include a laser module "capable of producing

4 laser light which is usable for therapeutic purposes in medicine or

5 dentistry")). We adopt the finding.

6 Consequently, we find that the solid state laser 12 depicted in Figure 1

7 of Potteiger I is capable of producing laser light which is capable of use for

8 therapeutic purposes in medicine or dentistry. We also find that Potteiger I

9 describes the optical fiber 16 as "receiv[ing] the laser light generated by the

10 solid state laser 12 and propagates that light to its free end." (Potteiger I,

11 col. 2, 11. 64----65). This teaching implies that the optical fiber 16 receives

12 laser light from the laser module and transports the laser light to a distal end

13 of the fiber. Since the laser module depicted in Figure 1 of Potteiger I

14 satisfies these two limitations from the body of claim 1, it inherently satisfies

15 the preamble of the claim.

16 We find that the support assembly includes a baseplate 20, a spool 22

17 and a connector holder 24. (Potteiger I, col. 3, 11. 13-14). A top surface of

18 the baseplate 20 defines a laser receptacle 30 for receiving the solid state

19 laser 12. (See Potteiger I, col. 3, 11. 15-18 and Fig. 1). The connector holder

20 24 is attached to the top surface of the baseplate 20 so as to receive the

21 optical connector 18. (Potteiger I, col. 3, 11. 18-23). The baseplate 20, the

22 spool22, the connector holder 24 and the laser receptacle 30 provide a

23 degree of protection to the components of the laser module 10 while

24 permitting air to reach the components. Furthermore, we find that Potteiger

25 I teaches that the "support assembly retains the laser module 10 in a set

26 position while the laser module 10 is tested and shipped by the

13



1 manufacturer." (Potteiger I, col. 3, ll. 10---13). In this manner, the support

2 assembly accommodates portability and convenient physical positioning of

3 the laser module 1 0.

4 Contrary to the argument advanced by the Patent Owner (see App. Br.

5 PO 13), the phrase "useful in medicine or dentistry" does not imply that the

6 laser system must be an "operational final product" capable of carrying out a

7 therapeutic medical or dental procedure without the provision of an external

8 power source. As the Examiner correctly explains, "[i]fthe intent were to

9 claim a fully operational system[, the Patent Owner] had every opportunity

10 to [amend the claim to recite] a power source and laser emission control

11 during the original prosecution." (RAN 10; see also RAN 5; Resp. Br.

12 Req'r 7-8 and 9).

13 Nevertheless, the Examiner correctly finds that connecting the laser

14 module 10 of Figure 1 of Potteiger I to a suitable power source would yield

15 an operational final product. (See RAN 5; see also Resp. Br. Req'r 7-8).

16 For example, Potteiger I states that the support assembly depicted in Figure

17 1 is fully described in Potteiger II (US 6,272,276 B1, issued Aug. 7, 2001)

18 (see Potteiger I, col. 3, ll. 5-1 0). Potteiger II describes a test procedure in

19 which a suitable power source, including an actuator 7 4, lifts the solid state

20 laser 12 out of the laser receptacle 30 into contact with an energized test

21 head 76 and energizes the solid state laser to generate light for transmission

22 through the optical fiber 16. (See Potteiger II, col. 4, ll. 48-58 and 63---67;

23 id., Fig. 4). This description supports the Examiner's finding that the laser

24 system of Figure 1 of Potteiger I can be made operable through connection

25 to a suitable power source.

14



1 The Examiner's finding that the laser system of Figure 1 of Potteiger I

2 is capable of use in medicine or dentistry is correct notwithstanding the

3 testimony of the Graeber and Koceja Declarations. The Graeber and Koceja

4 Declarations collectively establish that a dental practitioner might have

5 difficulty using a laser module fixed in a support assembly as depicted in

6 Figure 1 of Potteiger I to carry out a therapeutic procedure in a typical

7 dentist's office. (See Graeber Decl., paras. 14--17; Koceja Decl., paras. 14--

8 17).

9 Nevertheless, the preamble of claim 1 recites only that the laser

10 system is "useful in medicine or dentistry." Difficulty does not negate

11 usefulness. Claim 1 does not limit the conditions under which the laser

12 system must be useful for this purpose. Furthermore, neither paragraph 14

13 of the Graeber Declaration nor paragraph 14 of the Koceja Declaration

14 establishes that a laser system can have no use in medicine or dentistry

15 unless it is similar to a dental laser system with which at least one of the

16 declarants is familiar.

17 We agree with the Requester and the Examiner that the laser system

18 depicted in Figure 1 of Potteiger I is capable of therapeutic use if connected

19 to a suitable power supply and a suitable laser application tool. This is true

20 notwithstanding the testimony of the Graeber and Koceja Declarations,

21 which we do not find persuasive. Therefore, the Requester and the

22 Examiner have shown that Figure 1 depicts a "laser system useful in

23 medicine or dentistry" as recited in claim 1.

15



1 Anticipation by Potteiger I-"a laser module within said housing, said laser 2 module being capable of producing laser light"

3 The Patent Owner argues that the laser system of Figure 1 of Potteiger

4 I does not include "a laser module within said housing, said laser module

5 being capable of producing laser light," as recited in claim 1. (See App. Br.

6 PO 15-16; Reb. Br. PO 6---7). Figure 1 depicts a laser system including a

7 solid state laser 12 received in receptacle 30 which holds the laser in a fixed

8 position. The receptacle 3 0 is a part of the housing (that is, the portion of

9 the support assembly excluding the spool22) within which the laser module

10 10 is retained. (Potteiger I, col. 2, 1. 63- col. 3, 1. 2; col. 3, 11. 13-18; and

11 Fig. 1 ). In addition, the solid state laser 12 is capable of producing light

12 which is capable of being used for therapeutic purposes in medicine or

13 dentistry. (See RAN 10; see also Potteiger I, col. 1, 11. 37--40; col. 2, 11. 54--

14 55; and col2, 11. 64--65). Therefore, the Examiner correctly finds that the

15 solid state laser 12 satisfies the quoted limitation. (See RAN 12).

16 Citing In re Geerdes, 491 F.2d 1260, 1262-63 (CCPA 1974), the

17 Patent Owner argues that the limitation, "a laser module within said housing,

18 said laser module being capable of producing laser light," can only be

19 satisfied if the laser module is capable of producing laser light while the

20 laser module is within the housing. (See App. Br. PO 15). The Patent

21 Owner asserts that the laser system of Figure 1 of Potteiger I does not satisfy

22 this limitation. (See id. at 15-16). The Examiner correctly concludes that

23 "there is nothing in [claim 1] that requires that the laser be capable of

24 producing laser light 'while positioned in the housing' as argued." (RAN

25 12).

16



1 The recitation of "a laser module within said housing" defines the

2 laser module in terms of its interaction with the housing. The separate

3 recitation regarding "said module being capable of producing laser light"

4 defines the laser in terms of its own functional characteristics. The claim

5 does not include any language (such as the conjunction "while") indicating

6 that the latter recitation is intended to further limit the relationship between

7 the laser module and the housing (that is, to limit the relationship so as to

8 require the laser module to be capable of producing laser light while in the

9 housing). The repetition of "laser module," at least in this context, indicates

1 0 that the two limitations are not to be conflated. The Patent Owner does not

11 identify any passage of the written disclosure of the ' 116 patent inconsistent

12 with this interpretation of the claim.

13 Geerdes does not support the Patent Owner's proposed interpretation.

14 Geerdes involved a claim for a foam polymer extrusion process performed

15 on a mixture of two materials, "both said materials being essentially non-

16 volatile at a temperature at which said polymeric material is fluid." Geerdes

17 at 1261---62. The claim further recited that the two materials were initially

18 milled together to form a composite, "said composite consisting essentially

19 of said two materials." Prior art cited by the examiner described solid

20 extrusion processes. The Patent and Trademark Office argued before a

21 predecessor of our reviewing court that "the claims on appeal permit the

22 presence of a blowing agent," which would have converted the solid

23 extrusion processes to foam extrusion processes. In rejecting this argument,

24 the court observed that "every limitation in a claim must be given effect

25 rather than considering one in isolation from the others." Geerdes at 1262-

26 63. The court held that the claim as a whole excluded the presence of a

17



1 blowing agent because a system with an added blowing agent would not

2 have met the express recitations limiting the composite essentially to the two

3 materials, each essentially non-volatile at the extrusion temperature. !d.

4 The Examiner's interpretation of claim 1 in this proceeding gives

5 effect both to the limitation regarding "a laser module within said housing"

6 and the limitation regarding "said laser module being capable of producing

7 laser light." The laser module 12 of the laser system depicted in Figure 1 of

8 Potteriger 1 satisfies both limitations. Geerdes is inapposite. The Examiner

9 correctly finds that Figure 1 of Potteiger I depicts a laser system including "a

10 laser module within said housing, said laser module being capable of

11 producing laser light."

12

13 Anticipation by Potteiger I-"a fiber module, said fiber module having an 14 outer casing attachable to and removable from said housing and configured 15 to store amounts of extra fiber"

16 The Patent Owner argues that the laser system of Figure 1 of Potteiger

17 I does not include "a fiber module, said fiber module having an outer casing

18 attachable to and removable from said housing and configured to store

19 amounts of extra fiber," as recited in claim 1. (See App. Br. PO 13-15; Reb.

20 Br. PO 6). We find that Figure 1 depicts a laser system including a spool 22

21 having an outer casing including a cylindrical wall 3 8 terminating at one end

22 with a segmented flange 39. The outer casing is attachable to, and

23 removable from, the baseplate 20 by means of locking tabs 42. (See

24 Potteiger I, col. 3, 11. 33--43 and Fig. 1; see also id., col. 1, ll. 45--46). The

25 spool22 is "configured to store amounts of extra fiber" in the sense that the

26 spool includes the cylindrical wall 38, about which extra fiber may be

18



1 wound. (See Potteiger I, col. 3, ll. 26---27). Therefore, the Examiner

2 correctly finds that the spool22 satisfies the quoted limitation. (See RAN 9-

3 10).

4 Potteiger I teaches that, when the wound spool22 is attached to the

5 top surface of the baseplate 20 by engaging the locking tabs 42 with slots 44

6 in the baseplate, the optical fiber 16 is retained between the segmented

7 flange 39 and the top surface of the baseplate 20. (See Potteiger I, col. 3, ll.

8 27-30 and Fig. 1 ). On the other hand, Potteiger I criticizes the embodiment

9 of Figure 1 because the spool 22 lacks a flange at the end of the cylindrical

10 wall38 opposite the segmented flange 39. Whenever a user detaches or

11 removes the spool22 from the baseplate 20, the optical fiber 16 wound on

12 the cylindrical wall38 must be held in place by the dexterous application of

13 the user's fingers to prevent the optical fiber from falling off the cylindrical

14 wall38. (Potteiger I, col. 3, ll. 45-51).

15 The Patent Owner argues that the '116 patent "makes no distinction

16 between a fiber module that is attached to and removed from a housing. It is

17 the same fiber module, and claim 1 requires that it be able to store extra

18 amounts of fiber both when attached to and removed from the housing."

19 (Reb. Br. PO 6; see also App. Br. PO 13-14). As further support for this

20 argument, the Patent Owner points out that the laser system depicted in

21 Figures 1A, 2A and 2B of the '116 patent has a fiber module 102 (201) with

22 a fully enclosed casing capable of retaining amounts of extra fiber without

23 human assistance both when attached to, and removed from, the housing

24 101. (See App. Br. PO 14).

25 The Examiner correctly concludes that claim 1 is not limited to a laser

26 system in which the casing of the fiber module retains amounts of extra fiber

19



1 without human intervention when removed from the housing. (RAN 9; see

2 also Resp. Br. Req'r 9-10). It is sufficient that the fiber module be

3 configured to store amounts of extra fiber with the assistance of either the

4 housing (when attached) or a user's hand (when removed). The Patent

5 Owner has not identified any formal definition or clear disclaimer in the

6 ' 116 patent demanding a narrower interpretation.

7 In particular, the fact that the '116 patent discloses a fiber module 102

8 (201) which retains fiber without human assistance both when attached and

9 removed from the housing 1 OJ does not imply that claim 1 is limited to a

10 laser system including such a fiber module. Phillips v. AWH Corp., 415

11 F.3d 1303, 1323 (Fed. Cir. 2005)(en banc)(waming against importing

12 specific embodiments from the Specification into the claims). Although the

13 '116 patent teaches that the fiber storage and dispensing unit 102 "may be a

14 modular unit that is removable and replaceable, and disposable" (' 116

15 patent, col. 3, 11. 24--26), the fiber storage and dispensing unit may be

16 removed, replaced or disposed of even if the user removing, replacing or

17 disposing of the unit must hold the fiber in place while doing so.

18 Claim 1 is not limited to a laser system including a fiber module able

19 to store extra amounts of fiber without human assistance when removed

20 from the housing. The Examiner correctly finds that the spool22 depicted

21 in Figure 1 of Potteiger 1 satisfies the limitation "a fiber module, said fiber

22 module having an outer casing attachable to and removable from said

23 housing and configured to store amounts of extra fiber." The Examiner

24 correctly finds that Potteiger I anticipates independent claim 1 as well as

25 dependent claims 2, 4 and 10.

20



1 Obviousness over Potteiger I and Lawhon

2 Lawhon describes a package 10 assembled from identical first and

3 second parts 12, 14 affixed to each other along a plane 26. (See Lawhon,

4 col. 4, ll. 4--11 and 23-25). Facing annular grooves 30 define an annular

5 fiber-receiving cavity 31 for receiving optical fiber 16 wound into the

6 package 10. The fiber-receiving cavities 31 are surrounded by annular lips

7 18 which form a V-shaped groove 54. (See Lawhon, col. 4, ll. 11-14 and

8 29-37; col. 5, ll. 51-55; and Figs. 1 and 2; see also id., col. 6, ll. 35--43).

9 Ordinarily, the fiber-receiving cavities 31 are closed, permitting a user to

10 transport the package 10 and the fiber 16 without holding the fiber in place

11 in the package.

12 Lawhon teaches forming the package parts 12, 14 from a flexible

13 material to permit a user to separate the lips 18 with a small amount of

14 pressure to provide access to the fiber-receiving cavities 31. In this manner,

15 a user may wind optical fiber 16 into the annular fiber-receiving cavities 31.

16 (See Lawhon, col. 5, ll. 59---68). Once the optical fiber 16 is wound into the

17 fiber receiving cavities 31 and the lips 18 are relaxed, the fiber will remain

18 in the fiber-receiving cavities due to the perpendicular arrangement of the

19 outer walls 60 of the annular grooves 3 0 (see Lawhon, col. 6, ll. 1-2 and 7-

20 17) without human intervention such as the use of the user's fingers to hold

21 the fiber in place.

22 The Examiner correctly finds that one of ordinary skill in the art

23 would have had reason to replace the spool22 described by Potteiger I with

24 a package similar to the package 10 described by Lawhon. (See RAN 14 ).

25 Potteiger I criticizes the spool 22 as depicted in Figure 1 because the fiber

26 might slip off the end of the cylindrical wall 38 opposite the segmented

21



1 flange 39 while the spool is being attached to the baseplate 20 unless the

2 fiber is held in place by the dexterous application of a user's fingers.

3 (Potteiger I, col. 3, 11. 45-51 ).

4 The Examiner agrees with the Requester that Lawhon's package 10

5 does not suffer from this deficiency. The Examiner correctly finds that one

6 of ordinary skill in the art would have recognized that the substitution of

7 Lawhon's package 10 for the spool22 in the support assembly depicted in

8 Figure 1 of Potteiger I would have addressed the criticism of Potteiger I

9 regarding the likelihood of the fiber falling off the spool during attachment

10 to the baseplate 20. (See RAN 14; see also Resp. Br. Req'r 11; Request 43).

11

12 Obviousness over Potteiger I and Lawhon-Teaching Away

13 The Patent Owner argues that Potteiger I teaches away from making

14 the proposed substitution. More specifically, the Patent Owner argues that

15 one of ordinary skill in the art would have been discouraged from making

16 the proposed substitution because the substitution would have precluded the

17 use of the modified support assembly to test and ship the laser module 10.

18 The Patent Owner asserts that the substitution would have allowed the fiber

19 to easily unwind from the substituted package so as to extend beyond the

20 perimeter of the baseplate 20. The fiber extending beyond the perimeter of

21 the baseplate, it is asserted, might have been damaged during testing or

22 shipping. (See App. Br. PO 18).

23 The only factual support which the Patent Owner provides for this

24 argument is Lawhon's teaching that the fiber 16 "may be easily repositioned

25 by unwinding fiber 16 from package 10 by simply pulling on either end of

26 the fiber 16 by hand." (App. Br. PO 18 (citing Lawhon, col. 2, 1. 58- col. 3,

22



1 1. 2 and col. 7, ll. 33--44)). Given Lawhon's teaching that the geometry of

2 the outer wall 60 of the fiber-receiving cavities 31 acts to prevent the fiber

3 16 wrapped into the package 10 from resiliently expanding outside the

4 bounds of the package (see Lawhon, col. 6, ll. 1-2 and 7-17), the Patent

5 Owner's assertion that fiber would have been more likely to unwind from

6 Lawhon's package 10 than from the spool22 of Potteiger I is not persuasive.

7 The Patent Owner also argues that one of ordinary skill would have

8 been discouraged from making the proposed substitution because a user

9 could not have removed the fiber completely from the substituted package.

10 This, it is asserted, would have prevented a user from recycling the entire

11 support assembly to the manufacturer. (See App. Br. PO 18).

12 Factually, the argument is not persuasive. Lawhon teaches that:

13 "[o]nly the amount of fiber 16 that is actually necessary need be unwound

14 from package 10. Assuming that some portion of fiber 16 remains infiber-

15 receiving cavity 31, package 10 may be repositioned along the extended

16 fiber 16 by simply rolling it along the fiber in the direction desired."

17 (Lawhon, col. 7, 11. 27-33 (italics added for emphasis)). We find that the

18 italicized clause would have implied that the user might unwind all of the

19 fiber 16 from the fiber-receiving cavity 31, thereby removing the fiber

20 completely from the package 10. Lawhon expressly teaches neither

21 removing the fiber completely from the package nor recycling the package

22 with a baseplate used to deliver the fiber.

23 Nevertheless, the absence of these teachings would not have deterred

24 one of ordinary skill in the art both to provide Potteiger I with a fiber

25 package which did not require a hand to hold the fiber in place; and to allow

26 the baseplate and package to be recycled once the fiber was spent.

23



1 Obviousness over Potteiger I and Lawhon-a laser module "capable of 2 producing laser light"

3 The Patent Owner also argues that the laser system depicted in Figure

4 1 of Potteiger I fails to include "a laser module within said housing, said

5 laser module being capable of producing laser light" as recited in claim 1;

6 and that Lawhon fails to remedy this deficiency. (See App. Br. PO 19). As

7 discussed above, the laser system of Figure 1 of Potteiger I satisfies this

8 limitation. (See also Resp. Br. Req'r 12). The proposed substitution

9 adopted by the Examiner would not have altered the laser module. The

10 Examiner correctly concludes that independent claim 1, along with

11 dependent claims 2, 4, 5, 10 and 42, are unpatentable under§ 103(a) over

12 the combined teachings of Potteiger I and Lawhon.

13

14 Obviousness over Potteiger I and LaserSmile

15 LaserSmile describes a soft-tissue and whitening laser system. The

16 system as depicted on the fourth page and the last page of LaserS mile

17 includes a housing; a fiber; a spool on a side of the housing for receiving the

18 fiber; a control panel on the front of the housing; and a handpiece coupled to

19 a distal end of the fiber. The last page of the reference provides

20 specifications for a "LASERSMILETM Soft-Tissue Diode Laser" and a

21 "LASERSMILETM Whitening Handpiece," the latter including a "Fiber Cable

22 Length," indicating that the laser system includes a semiconductor laser

23 diode, a fiber and a handpiece.

24 The Examiner finds that one of ordinary skill in the art would have

25 had reason to substitute a removably attachable spool such as the spool22

26 described by Potteiger I for the spool on the side of the laser system depicted

24



1 in LaserSmile. (See RAN 18). See In re Bush, 296 F.2d 491,496 (CCPA

2 1961 ). 6 This mere substitution would have required only minor modification

3 of the housing of the laser system depicted in LaserSmile (such as the

4 addition of slots or depressions for engaging the locking tabs 42 of the spool

5 22). (See RAN 20 ("[T]he mere substitution of the Potteiger spool would

6 not [have] amount[ ed] to a complex mechanical reconfiguration and would

7 have been well within the skill of those in the art at the time of the

8 invention.")). The teachings of Potteiger I would have provided one of

9 ordinary skill sufficient guidance to implement the necessary modifications.

10 The Patent Owner has not identified any unpredictable results which the

11 substitution might have yielded.

12

13 Obviousness over Potteiger I and LaserSmile-Teaching Away

14 The Patent Owner argues that LaserSmile teaches away from making


16 the "intended purpose of the Laser Smile fiber holder is to make fiber easily

17 available when needed ... and to retain the fiber close to the device when

18 not needed." (App. Br. PO 20). Potteiger II describes guide elements 54, 59

19 positioned on the baseplate 20. (See Potteiger II, col. 3, 1. 66- col. 4, 1. 4,

20 col. 4, ll. 22-26 and Figs. 1 and 2). The guide elements 54 "prevent the

21 optical fiber 16 from unwinding from the spool 22, to any point beyond the

6 "[W]here a rejection is predicated on two references each containing pertinent disclosure which has been pointed out to the [Patent Owner], we deem it to be of no significance, but merely a matter of exposition, that the rejection is stated to be on A in view of B instead of on B in view of A, or to term one reference primary and the other secondary." Bush at 496.

25



1 bounds of the baseplate 20." (Potteiger II, col. 4, 11. 19-22; see also App.

2 Br. PO 20---21 (citing Potteiger II, col. 4, 11. 2--4)). The guide elements 59

3 also "help prevent the optical fiber 16 from protruding beyond the bounds of

4 the baseplate 20." (Potteiger II, col. 4, 11. 22-26). The Patent Owner

5 interprets Potteiger II as teaching that the spool22 depicted in Figure 1 of

6 Potteiger I cannot retain fiber wound onto the spool. (See App. Br. PO 20---

7 21).

8 One of ordinary skill in the art, according to the Patent Owner, would

9 have been discouraged from substituting a spool similar to the spool22 for

10 the spool depicted in LaserS mile because the substituted spool likely would

11 not retain the fiber absent guide elements similar to those bearing reference

12 numerals 54 and 59 in Figure 2 of Potteiger II. (See App. Br. PO 21). Such

13 guide elements could have made it more difficult to unwind the fiber for use

14 during a therapeutic procedure. (See id.)

15 The Examiner correctly finds that a spool similar to the spool22

16 described in Potteiger I, if substituted for the spool depicted in LaserS mile,

17 would have retained fiber when attached to the housing of the LaserS mile

18 system in the same manner as the spool actually depicted in LaserSmile.

19 (See RAN 20). The spool depicted in LaserSmile and the spool 22 of

20 Potteiger I are similar in configuration, each including a flange imposed over

21 a section for receiving the fiber. Taking into account the natural "spring

22 action" of fiber wound on a spool (see Lawhon, col. 6, 11. 7-17), one of

23 ordinary skill in the art would have had a reasonable expectation that the two

24 spools would succeed in retaining fiber in similar manners.

25 The teaching of Potteiger II to use guide elements 54 to prevent the

26 optical fiber 16 from unwinding from the spool 22 so as to extend beyond

26



1 the perimeter of the baseplate 20 does not persuade us that fiber wound onto

2 a spool similar to the spool 22 likely would unwind if not held in place by

3 guide elements. Therefore, one of ordinary skill in the art would not have

4 been discouraged from substituting a removably attachable spool such as

5 that described in Potteiger I for the spool depicted in LaserSmile based on a

6 risk that the substituted spool would not have retained fiber.

7

8 Obviousness over Potteiger I and LaserSmile-"a fiber module, said fiber 9 module having an outer casing attachable to and removable from said

1 0 housing and configured to store amounts of extra fiber"

11 The Patent Owner argues that the proposed combination would not

12 have included "a fiber module, said fiber module having an outer casing

13 attachable to and removable from said housing and configured to store

14 amounts of extra fiber," as recited in claim 1. (See App. Br. PO 21). As

15 discussed earlier, the Examiner correctly concludes that claim 1 is not

16 limited to a laser system in which the casing of the fiber module retains

17 amounts of extra fiber without human intervention when removed from the

18 housing. (RAN 9; see also Resp. Br. Req'r 9-10). It is sufficient that the

19 fiber module be configured to store amounts of extra fiber when attached to

20 the housing. Once the proposed substitution is implemented, the substituted

21 spool would retain fiber when attached to the housing of the laser system.

22 We sustain the Examiner's decision rejecting claims 1, 2, 4, 10, 30, 40, 44,

23 45 and 56 under§ 103(a) as being unpatentable over Potteiger I and

24 LaserSmile.

25 We also sustain the following rejections under§ 103(a) which the

26 Patent Owner did not argue separately: the rejection of claim 24 over

27



1 Potteiger I and Baer; the rejection of claim 25 over Potteiger I, Baer and

2 Uejima; the rejection of claim 28 over Potteiger I and Synrad; the rejection

3 of claim 31 over Potteiger I, LaserS mile and August 2003 Waterlase Internet

4 Capture; and the rejection of claim 36 over Potteiger I, LaserSmile and

5 February 2002 Waterlase Press Release. (See App. Br. PO 22).

6

7 The Rejection of Claim 22 under§ 103(a) as being unpatentable over 8 Potteiger I and LaserSmile

9 The Patent Owner's Appeal Brief includes a subsection that refers

10 specifically to the rejection of claim 22. More specifically, the Patent

11 Owner argues that "the rejection of claim 22 must be based on the

12 combination of Potteiger I and LaserSmile where the spool22 from

13 Potteiger I is added to LaserSmile." (App. Br. PO 22). Having said this, the

14 Patent Owner repeats the same arguments directed against the proposed

15 substitution of a removable spool for the spool depicted in LaserS mile. (See

16 id.) The Patent Owner does not provide any explanation suggesting that

17 claim 22 might be patentable even if the Examiner's rejection of claim 1

18 over Potteiger I and LaserSmile is sustained. We sustain the rejection of

19 claim 22 under§ 103(a) as being unpatentable over Potteiger I and

20 LaserSmile.

21

22 The Rejection of Claim 38 under§ 103(a) as being unpatentable over 23 Potteiger I and LaserSmile

24 The Patent Owner separately argues the rejection of claim 38 under

25 § 103(a) as being unpatentable over Potteiger I and LaserSmile. Claim 38

26 recites the laser system of claim 1, in which the housing includes "an

28



1 electronic display panel configured to enable electronic adjustments of ...

2 continuous wave operation selection [and] pulse operation selection." Soltz

3 teaches that it was known as of the filing date of the ' 116 patent to provide

4 both a laser output and an aiming beam (that is, a low power guide laser) to

5 assist an operator in aiming the laser output. (Soltz, col. 6, 11. 3-12).

6 LaserSmile states "[y]ou can quicky adjust treatment power and aiming

7 beam intensity with large, tactile buttons." The Requester argues that this

8 statement would have suggested providing continuous wave and pulse

9 selection because "aiming beam intensity is a continuous wave operation."

10 (See Resp. BR. Req'r 17-19; "Third Party Requester's Comments after

11 Patent Owner's Response under 37 C.P.R.§ 1.947 and M.P.E.P. § 2666.05,"

12 dated February 15, 2013, at 44). The Examiner, on the other hand,

13 reproduces photographs appearing in advertisements for second-hand sales

14 of BIOLASE LASERSMILE dental laser whitening systems, one dated

15 August 26, 2013 and the other undated. The Examiner finds that these

16 photographs show controls for continuous wave and pulse status indication

17 and selection. (See RAN 26---29).

18 The Patent Owner argues that the Requester is interpreting the terms

19 "continuous wave selection" and "pulse selection" unreasonably broadly.

20 More specifically, the Patent Owner quotes a declaration by the named

21 inventor of the '116 patent: "Aiming beam intensity refers to the power of

22 the aiming beam. Continuous wave operation refers to the mode in which a

23 laser module may operate. These are two entirely different things." (App.

24 Br. PO 25-26, quoting Cao Decl., para. 35). The Requester responds by

25 pointing out potential bias of the named inventor and by arguing that the

29



1 named inventor does not cite any supporting evidence for the testimony.

2 (Resp. Br. Req'r 17-18).

3 The testimony of the named inventor as to how one of ordinary skill

4 in the art would have understood the term "continuous wave selection" is

5 supported by the teachings of Soltz. Soltz describes a therapeutic laser

6 system having both a laser output and an aiming beam. (Soltz, col. 6, 11. 3-

7 12). Soltz uses the words "continuous wave" and "pulse" to identify modes

8 of operation of the laser output and not to refer to the aiming beam. (See,

9 eg., Soltz, col. 4, 11. 22-32). We find that Soltz's use of these terms

10 supports the testimony the named inventor declaring that "[ c ]ontinuous wave

11 operation refers to the mode in which a laser beam may operate."

12 The Patent Owner correctly points out that the Examiner has not

13 shown the two advertisements cited in the RAN are prior art; that they depict

14 the same model of laser system depicted in LaserS mile; and that the

15 photographs in the advertisements fairly and accurately represent the

16 appearance of the laser system depicted in LaserS mile. (See App. Br. PO

17 25). Lacking such a showing, the photographs in the advertisements do not

18 prove that LaserSmile teaches continuous wave selection or pulse selection.

19 Because the Examiner and the Requester have not shown that the combined

20 teachings of Potteiger I and LaserS mile suggested a laser system satisfying

21 a11limitations recited in claim 38, we do not sustain the rejection of claim 38

22 under§ 103(a) as being unpatentable over Potteiger I and LaserSmile.

30



1 The Rejection of Claim 52 under§ 103(a) as being unpatentable over 2 Potteiger I, Baer, Uejima and Soltz

3 Claim 52 recites the laser system of claim 1 in which the "laser

4 module includes a plurality of individual semiconductor laser chips each

5 capable of producing individual laser light having a wavelength that

6 provides a medical or dental therapeutic effect." The claim also recites that

7 the "plurality of individual semiconductor laser chips are separate and

8 distinct semiconductor laser chips that are each separated from one another

9 by at least some open space." The Patent Owner argues that a laser system

10 including individual semiconductor laser chips separated from one another

11 by at least some "open space" would not have been obvious from the

12 combined teachings of Potteiger I, Baer, Uejima and Soltz. (See App. Br.

13 PO 26---27).

14 We find that Potteiger I does not describe the solid state laser 12 other

15 than to identify a Laser 2000 Module manufactured by Lucent Technologies

16 as a preferred laser module 10. (See Potteiger I, col. 2, 11. 54-55; see also

17 id., col. 1, 11. 37--40). The Examiner does not find that a Laser 2000 Module

18 necessarily includes individual semiconductor laser chips. Baer describes

19 the use of a collimating lens 2 6 to couple light generated by a laser diode

20 array 10 to a bundle 24 of optical fibers 18, 20, 22. (Baer, col. 3, 11. 3-10

21 and Fig. 1 ). Baer describes the laser diode array 10 as including ten one-

22 Watt laser diode emitters contained on a one-centimeter diode bar. Figure 1

23 of Baer depicts the laser diode array 10 as including separate and distinct

24 laser diodes 12, 14, 16 apparently separated by a solid material.

25 Soltz describes hand held laser devices 10 for use in such fields as

26 medicine. (See Soltz, col. 1, 11. 33--44). Each of the hand held laser devices

31



1 10 depicted in Figures 1 and 6 of Soltz includes a semiconductor laser

2 device 14 and a guide laser device 16. (Soltz, col. 3, ll. 18-23 and col. 5, ll.

3 52-55; see also Resp. Br. Re'q 20). Soltz identifies the frequency of the

4 guide laser device 16 only as being within the visible range. Soltz, col. 6, ll.

5 62---66). Soltz instead teaches that the "current supplied to the guide laser 16

6 device is minimal such that the power output by the guide laser device 16 is

7 minimal." (Soltz, col. 5, 1. 66- col. 6, 1. 2). Figure 7 of Soltz depicts a hand

8 held laser device including a first semiconductor laser 14 and a second

9 semiconductor laser 72. The device lights the second semiconductor laser

10 72 if a photodetector 36 detects a decrease in the output of the first

11 semiconductor laser 14 below a minimum level. (Soltz, col. 3, ll. 12-14 and

12 col. 7, ll. 41-61; see also July 2013 Req'r Comm. 41).

13 The Examiner concludes that "any separation between the laser chips,

14 would create 'open space' between adjacent chips" in accordance with the

15 use of the term "open space" in claim 52. (RAN 38; see also Resp. Br.

16 Req'r 20---21 ). This interpretation gives effect to the adjective "open" in the

17 sense that the adjective excludes the possibility that any space between two

18 chips is filled by a similar chip. The Patent Owner argues that the words

19 "open space" includes only individual semiconductor laser chips "separated

20 by some distance that is 'open' and not filled with any solid material" (App.

21 Br. PO 27; see also Reb. Br. PO 13). As support for this interpretation, the

22 Patent Owner cites Figure 3b of the '116 patent. Figure 3b depicts an

23 embodiment in which individual semiconductor laser chips or modules

24 350a-g are attached to a laser module casing using either holes 355a---d in

25 the casings of the chips shown in Figure 3d or heat conductive adhesives.

26 (' 116 patent, col. 4, ll. 27-30).

32



1 The words "open space" do not appear in the written description of

2 the '116 patent at all. Neither does the '116 patent explain what function the

3 open spaces might perform in the claimed laser system. Although Figure 3b

4 of the '116 patent depicts an arrangement of individual semiconductor laser

5 chips within a laser module, neither the drawing figure itself nor the

6 accompanying text explain in what sense the individual chips may be

7 separated by "open space." There is no evidence in the '116 patent or in the

8 briefs that the Patent Owner intended to use the words "open space" in a

9 technical sense different from the usage of the words by a lay person.

10 Therefore, in the absence of a formal definition or a clear disclaimer, both

11 the Examiner's interpretation and the Patent Owner's interpretation are

12 reasonable. In the present context, the Examiner's interpretation is broader.

13 Baer describes the laser diode array 10 capable of use in the laser

14 module 10 described in Potteiger I. It would have been obvious to merely

15 substitute Baer' s laser diode array 10 for the solid state laser 12 of Potteiger

16 I. The combined teachings of Baer and Potteiger I would have sufficed to

17 enable one of ordinary skill to implement the substitution. Furthermore, the

18 teachings of Baer and Potteiger I do not indicate that the results of the

19 substitution would have been so unpredictable as to deny one of ordinary

20 skill in the art a reasonable expectation that the substitution would have been

21 a success. Baer's laser diode array 10, once substituted for the solid state

22 laser 12 of Potteiger I, would have met the limitation by which the "plurality

23 of individual semiconductor laser chips are separate and distinct

24 semiconductor laser chips that [were] each separated from one another by at

25 least some open space."

33



1 This conclusion is bolstered by the teachings of Soltz. The

2 embodiment of Figure 7 would have suggested including two separate and

3 distinct semiconductor laser chips in a hand held laser device, one serving as

4 a backup in the event that the other failed to generate a minimum level of

5 laser energy. The embodiment of Figure 6 would have suggested that two

6 semiconductor laser chips might be each separated from one another by at

7 least some open space, even if one of the two spaced laser devices depicted

8 in Figure 6 emitted light in the visible spectrum. Considering the teachings

9 of Potteiger I, Baer, Uejima and Soltz together, we affirm the Examiner's

10 decision rejecting claim 52 under§ 103(a) as being unpatentable over

11 Potteiger I, Baer, Uejima and Soltz.

12

13 The Rejection of Claim 54 under§ 103(a) as being unpatentable over 14 Potteiger I and Patterson

15 Claim 54 recites the laser system of claim 1 wherein:

16 said fiber included in said fiber module is a 1 7 first fiber that includes said fiber proximal end and 18 said fiber distal end,

19 said first fiber further has a first connector 20 attached to said fiber proximal end of said first 21 fiber;

22 said laser system further includes a second 23 fiber positioned within said housing,

24 said second fiber has a second proximal end 25 in light communication with said laser module,

26 said second fiber further has a second distal 27 end having a second connector attached thereto, 28 and

34



1 said first connector is configured to receive 2 said laser light from said second connector so that 3 said second proximal end of said second fiber can 4 receive said laser light from said laser module and 5 transport said laser light through said second 6 connector and through said first connector to said 7 fiber distal end of said first fiber.

8 We find that Patterson describes a fiber optic connector 1 0 for

9 connecting ends of two segments of optical fiber. The fiber optic connector

10 10 includes a first plug assembly 14 and a second plug assembly 16 received

11 in a receptacle 12. (Patterson, col. 4, 11. 54----64 and Fig. 1 ). Patterson also

12 describes a connector storage/fiber management tray 118 for mounting fiber

13 optic connectors. (Patterson, col. 10, 11. 9-14 and Fig. 6). Patterson teaches

14 that the connector storage/fiber management tray 118 "may be provided with

15 one or more spools for storing excess fiber slack." (Patterson, col. 10, 11.

16 31-32).

17 As the Patent Owner correctly points out (see App. Br. PO 29), the

18 optical fiber connectors 10 depicted in Figure 6 are not connected to optical

19 fibers. Patterson does not appear to teach connecting the excess fiber slack

20 wound on the one or more spools in the connector storage/fiber management

21 tray 118 to any of the optical fiber connectors 10 while the connectors are

22 resident in the tray. (See generally Patterson, col. 10, 11. 9-38). The

23 teachings of Patterson are consistent with the use of the connector

24 storage/fiber management tray 118 to separately store optical fiber

25 connectors 10 and unbroken excess fiber prior to the incorporation of the

26 connectors and fiber into laser modules.

27 The Examiner adopts the Requester's argument that it would have

28 been obvious to have broken the optical fiber 16 depicted in Figure 1 of

35



1 Potteiger I into two pieces and to have connected the two pieces using first

2 and second optical connectors. (See RAN 39, citing July 2013 Req'r Comm.

3 42--44). The Examiner reasons that:

4 Those in the art, given [the combined teachings of 5 Potteiger I and Patterson] would have recognized 6 that the Potteiger [I] storage could have been easily 7 adapted to store multiple fibers as clearly taught by 8 Patterson and such fibers would have used their 9 own connectors. Such a duplication of parts

10 clearly would have been within the level of those 11 having ordinary skill in the art at the time of the 12 invention as a [routine] engineering modification.

13 (RAN 39). The Requester argues that:

14 However, a person of ordinary skill in the art 15 would [have] recognize[d] that breaking the single, 16 long fiber optic cable into the first fiber and the 1 7 second fiber that are connected via the connector 18 10 of Patterson would [have] be[ en] advantageous 19 because if one of the first or second fibers became 20 damaged, the particular fiber portion that was 21 damaged could be replaced, thus eliminating the 22 expense of replacing an entirety of the single, long 23 fiber optic cable.

24 (Resp. Br. Req'r 22).

25 Neither the Examiner nor the Requester has shown by a

26 preponderance of the evidence that fiber damage during use was a

27 recognized problem in the pertinent art; or that breaking a new optical fiber

28 into two pieces and connecting the two pieces using optical connectors was a

29 known solution to this problem. On the contrary, the Patent Owner has

30 identified several reasons why one of ordinary skill in the art might not have

3 1 adopted this expedient.

36



1 Breaking the fiber and inserting connectors would have increased the

2 cost of the laser module as a whole. Setting aside the overall cost of the

3 system, the fiber itself is expensive. Were the fiber damaged during use, it

4 would have been more efficient simply to cut out and replace the damaged

5 portion on the fly than to replace a predetermined length of the fiber at a

6 predetermined connection. Finally, surface area of the baseplate 20 is

7 limited. Were one to have attempted to store a fiber of significant length,

8 broken and reconnected in the middle, on the spool22 and the baseplate 20

9 of Potteiger I, there would have been a risk that either winding the optical

10 connectors onto the spool or capturing the optical connectors in carriers on

11 the surface of the baseplate would have caused the fiber to kink in a manner

12 which would have rendered the fiber less suited for transmitting laser light.

13 (See App. Br. PO 28 -29).

14 One of ordinary skill in the art would not have had reason to break the

15 fiber in an end portion which might have hung off the spool when the fiber

16 was wound. A break in such an end portion would have allowed a user only

17 to replace a very short portion of the fiber at one end or essentially the entire

18 fiber at the other end in the event of damage. Although the Patent Owner is

19 under no obligation to prove that one of ordinary skill in the art would have

20 lacked reason to modify the laser system of Potteiger I in the manner

21 proposed by the Requester, the Patent Owner's arguments emphasize the

22 lack of evidence suggesting that such a reason existed. See In re Ahlert, 424

23 F.2d 1088, 1091 (CCPA 1970) ("Allegations concerning specific

24 'knowledge' of the prior art, which might be peculiar to a particular art

25 should also be supported and the [patent owner] similarly given the

26 opportunity to make a challenge.").

37



1 The "duplication of parts" which would have entailed breaking a new

2 optical fiber into two pieces and connecting the two pieces using optical

3 connectors would not have been an obvious "routin[ e] engineering

4 modification" as the Examiner implies. (See RAN 39). The Examiner finds

5 that the presence of the connector connecting the two segments of the

6 broken fiber would have required some adaptation (albeit easy adaptation) of

7 the support assembly to accommodate. (See id.) In this sense, the broken,

8 connected fiber proposed by the Examiner would have functioned differently

9 than the unbroken fiber depicted in Figure 1 of Potteiger I. The structural

10 and functional differences between the broken and unbroken fibers implies

11 that the "duplication" resulting from the breaking of the fiber would not

12 have been merely a routine engineering modification. See In reGal, 980

13 F.2d 717 (Fed. Cir. 1992). We reverse the Examiner's decision adopting the

14 rejection of claims 54 under§ 103(a) as being unpatentable over Potteiger I

15 and Patterson.

16

17 APPEAL OF THE REQUESTER: CLAIMS 11, 12, 14, 15, 20, 21, 23, 26, 18 27,29,33,34,37,39,41,43,46-51,53,55&57

19 Claim 11 is the sole independent claim subject to the Requester's

20 appeal:

21 11. A therapeutic laser system useful m 22 medicine or dentistry comprising:

23 a casmg;

24 a laser module capable of producing laser 25 light which is usable for therapeutic purposes in 26 medicine or dentistry,

38



1 a fiber storage module, further comprising a 2 module housing attachable and detachable from 3 the casing and having a volume sufficient to store 4 significant amounts of extra fiber,

5 fiber, mostly stored in the fiber module but 6 at least some fiber being located in said casing, and

7 a distal end of said fiber projecting from 8 within said casing to the exterior of said casing,

9 said fiber having a proximal end, and

10 said fiber proximal end being in light 11 communication with said laser module so that said 12 fiber can receive laser light from said laser module 13 and transport said laser light to said fiber distal 14 end,

15 further comprising a handpiece adapted to 16 receive said fiber distal end and being adapted for 1 7 gripping by a human hand.

18 Of the remaining claims at issue in the appeal, claims 48 and 49 depend

19 from claim 2 which, in tum, depends from independent claim 1; and claims

20 12, 14, 15,20,21,23,26,27,29,33,34,37,39,41,43,46,47,50,51,53,

21 55 and 57 depend, directly or indirectly, from independent claim 11. (See

22 generally App. Br. Req'r 26---43 (Claims App'x)).

23 We AFFIRM the Examiner's decision not to adopt the following

24 proposed rejections:

25 claim 39 under§ 103(a) as being unpatentable over

26 Potteiger I and LaserSmile (see RAN 17, 41 and 43; see also

27 ACP 17-18; April2013 Office Action 10; Determination 8);

28 and

39




2 Potteiger I and Patterson (see RAN 17, 47 and 48; see also ACP

3 32 and 33).

4 We REVERSE the Examiner's decision not to adopt the following proposed

5 rejections:

6 claims 11, 12, 14 and 20 under§ 102(b) as being

7 anticipated by Potteiger I (see RAN 5-6 and 41; see also

8 "Order Granting/Denying Request for Inter Partes

9 Reexamination" mailed November 19, 2012 ("Determination")

10 at 7);

11 claims 11, 12, 14, 15, 20 and 43 under§ 103(a) as being

12 unpatentable over Potteiger I and Lawhon (see RAN 16, 41 and

13 45; see also "Action Closing Prosecution," mailed August 28,

14 2013 ("ACP"), at 28-29; "Office Action in Inter Partes

15 Reexamination" mailed April23, 2013 ("April2013 Office

16 Action") at 13; Determination 7);

17 claims 11, 12, 14, 20, 21, 23, 33, 41, 46 and 47 under

18 § 103(a) as being unpatentable over Potteiger I and LaserSmile

19 (see RAN 17, 41 and 43; see also ACP 17-18; April2013

20 Office Action 10; Determination 8);


22 Potteiger I and Baer (see RAN 17 and 44; see also ACP 22;

23 April2013 Office Action 10);

40


1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18


claim 277 under§ 103(a) as being unpatentable over

Potteiger I, Baer and Uejima (see RAN 17 and 44; see also

ACP 24; April2013 Office Action 11);


Potteiger I and Synrad (see RAN 17 and 44; see also ACP 25-

26; April2013 Office Action 12);


Potteiger I, LaserSmile and August 2003 W ATERLASE

Internet Capture (see RAN 17 and 45; see also ACP 29; April

2013 Office Action 14);

claim 37 under 103(a) as being unpatentable over

Potteiger I, LaserSmile and February 2002 WATERLASE

Press Release (see RAN 17 and 45; see also ACP 27; April

2013 Office Action 13);

claims 48-51 under § 103 (a) as being unpatentable over

Potteiger I, LaserSmile and ILX Lightwave, "LFS-498 Fiber

Spool" (bearing the date Sept. 25, 2001) ("LFS-498 Manual")

(see RAN 17 and 46; see also ACP 31 );

7 The Examiner determined that the Requester was reasonably likely to prevail against claims 25 and "7 6" on page 11 of the April 2013 Office Action based on the combined teachings of Potteiger I, Baer and Uejima. The Examiner rejected claim 27 over Potteiger I, Baer and Uejima in the next paragraph. The entry of the rejection implies that the determination regarding claim "7 6" was a typographical error and that the Examiner intended to determine that the Requester was reasonably likely to prevail against claim 2 7.

41




2 Potteiger I, Baer, Uejima and Soltz (see RAN 17 and 47; see

3 also ACP 32); and


5 Potteiger I and Patterson (see RAN 17 and 48; see also ACP 32

6 and 33).

7 Pursuant to 37 C.P.R.§ 41.77(b), we enter these proposed grounds of

8 rejection as new grounds of rejection against 11, 12, 14, 15, 20, 21, 23, 26,

9 27, 29, 33, 34, 37, 41, 43,46---51, 53 and 57.

10

11 Issues

12 The Requester argues that its proposed rejection of claims 11, 12, 14

13 and 20 under§ 102(b) as being anticipated by Potteiger I is appealable (See

14 App. Br. Req'r 4--12; Resp. Br. PO 5-8; Reb. Br. Req'r 2); and that Figure 2

15 of Potteiger I depicts a therapeutic laser system in which "a distal end of said

16 fiber project[ s] from within said casing to the exterior of said casing."

17 The Patent Owner argues that Potteiger I fails to anticipate claim 1

18 because the embodiment of Figure 2 of Potteiger I is not a "therapeutic laser

19 system useful in medicine or dentistry;" because the embodiment does not

20 include "a fiber storage module, further comprising a module housing

21 attachable and detachable from the casing and having a volume sufficient to

22 store significant amounts of extra fiber;" and because the embodiment

23 depicted in Figure 2 of Potteiger I lacks "a handpiece ... adapted for

24 gripping by a human hand." (See Resp. Br. PO 9-12).

25 The Patent Owner argues that the subject matter of claim 11 would

26 not have been obvious from the combined teachings of Potteiger I and

42



1 Lawhon because the combination proposed by the Requester would not have

2 been suitable for carrying out the purposes of the embodiment of Figure 2 of

3 Potteiger I. (See Resp. Br. PO 12-13).

4 The Examiner concludes that a laser system in which "a distal end of

5 said fiber project[s] from within said casing to the exterior of said casing,"

6 as recited in claim 11, would not have been obvious from the combined

7 teachings of Potteiger I and LaserS mile. (See RAN 6).

8 The Patent Owner argues that a laser system "further comprising a

9 fiber tip, said fiber tip being attachable to said handpiece and optically

10 coupled to said fiber distal end, said fiber tip serving to determine angular

11 orientation of laser light emitted by said fiber distal end with respect to said

12 handpiece," as recited in claim 21, would not have been obvious from the

13 combined teachings of Potteiger I and LaserSmile. (See Resp. Br. PO 14).

14 The Patent Owner argues that a laser system in which the casing

15 includes "an electronic display panel configured to electronically display

16 operation information of said laser module, said operation information

17 including ... laser module protection function status," as recited in claim 39,

18 would not have been obvious from the combined teachings of Potteiger and

19 LaserSmile. (See Resp. Br. PO 15).

20 The Examiner concludes that the LFS-498 Manual was not a "printed

21 publication" as of the critical date of claims 48-51. (See RAN 46). The

22 Patent Owner argues that a laser system including a fiber module configured

23 to store said fiber in place on [a] fiber holder in said spooled state

24 independently of outside assistance while said fiber module outer casing is

25 removed from said housing," as recited in claim 48, would not have been

43



1 obvious from the combined teachings of Potteiger I, LaserS mile and LFS-

2 498 Manual. (See Resp. Br. PO 17-18).


4 have been obvious from the combined teachings of Potteiger I, Baer, Uejima

5 and Soltz because the combined teachings would not have provided one of


7 include a laser system including individual semiconductor laser chips which

8 are "separate and distinct semiconductor laser chips that are each separated

9 from one another by at least some open space." (See Resp. Br. PO 15-16).


11 have been obvious from the combined teachings of Potteiger I and Patterson

12 because the combined teachings would not have provided one of ordinary

13 skill in the art reason to modify the embodiment of Figure 1 to break the

14 fiber recited in parent claim 1 into first and second fibers, each having an

15 attached first or second connector, as recited in claim 54. (See Resp. Br. PO

16 16---17).

17

18 Discussion

19 Anticipation by Potteiger !-Appealability

20 The Requester appeals under§ 134(c) and§ 315(b). 37 C.P.R.

21 § 41.61(a)(2), which implements§ 134(c) and§ 315(b), states that, "[u]pon

22 issuance of a Right of Appeal Notice ... , the requester may appeal to the

23 Board with respect to any final decision favorable to the patentability,

24 including any final determination not to make a proposed rejection, of any

25 original, proposed amended, or new claim of the patent." The Requester

26 proposed in the Request to reject claims 11, 12, 14 and 20 under§ 102(b) as

44



1 being anticipated by a combination of a laser module 10 and a package

2 housing 60 depicted in Figure 2 of Potteiger I. (Request 32-37; see also id.

3 at 25-26 and App'x A at the third page through the fifth page; cf Potteiger I,

4 col. 3, ll. 54-57 and Fig. 2). The Examiner determined that there existed a

5 reasonable likelihood that the Requester would prevail against at least one of

6 the claims subject to this proposed ground of rejection. (See Determination

7 5-7).

8 The Patent Owner argues that the Requester failed to preserve the

9 proposed rejection of claims 11, 12, 14 and 20 as anticipated under § 1 02(b)

10 for appeal. More specifically, the Patent Owner argues that the rejection

11 initially adopted and subsequently withdrawn by the Examiner, which forms

12 the basis of the adverse decision the Requester seeks to appeal, is not the

13 same rejection proposed on pages 27-31 of the Request. The Patent Owner

14 asserts that the rejection which the Examiner initially adopted and

15 subsequently withdrew was an anticipation rejection under § 1 02(b) over the

16 embodiment of Figure 2 of Potteiger I; and that the rejection proposed on

17 pages 27-31 of the Request was a rejection under§ 103(a) combining

18 teachings related to the separate embodiments of Figures 1 and 2 of

19 Potteiger I. (See Resp. Br. PO 5-8).

20 The argument is not persuasive. The anticipation rejection which the

21 Examiner determined to raise a reasonable likelihood of prevailing against

22 claims 11, 12, 14 and 20 adopted the "[R]equester's showing" on pages 27-

23 31 of the Request. (Determination 5). Despite the Patent Owner's argument

24 to the contrary (see Resp. Br. PO 6---7), the most that the Requester admitted

25 in its "Petition under 37 C.F .R. § 1.181 for Reconsideration of the

26 Examiner's Refusal to Consider Rejections Detailed in Third Party

45



1 Requester's Original Request for Inter Partes Reexamination," dated

2 January 8, 2014 ("Petition for Reconsideration"), was that both the

3 Requester and the Examiner might have mislabeled the statutory basis for

4 the rejection proposed by the Requester and initially adopted by the

5 Examiner. (See, e.g., id. at 2, n.1 ). Under the facts of this proceeding, the

6 Requester is entitled to appeal the Examiner's final decision not to adopt that

7 proposed rejection.

8 Despite the admission in the Petition for Reconsideration, the

9 Examiner correctly characterized the proposed rejection as one for

10 anticipation under § 1 02(b ). As the Requester points out, the rejection as set

11 forth on pages 27-31 of the Request relied solely on structure depicted in

12 Figure 2 of Potteiger I. (See App. Br. Req'r 4--5 and 6; Reb. Br. Req'r 2).

13 The description of the embodiment of Figure 2 in Potteiger was not self-

14 contained. Elements common to the embodiments of Figures 1 and 2 were

15 described only once, in relation to the embodiment of Figure 1. (See App.

16 Br. Req'r 6 and 9 n.5). The Requester's citation to passages of Potteiger I

17 describing these common features did not imply that the Requester proposed

18 modifying the embodiment of Figure 2 so as to invoke obviousness under

19 § 103(a) rather than anticipation under§ 102(b).

20

21 Anticipation by Potteiger I-The Examiner's Withdrawal of the Rejection

22 During the reexamination proceeding, the Patent Owner argued that

23 Potteiger I failed to disclose "a laser module within said housing" as recited

24 in claim 1. (See "Amendment A and Response to Non-Final Action" dated

25 January 18, 2013, at 14--16). The Requester responded by arguing that this

46



1 limitation was satisfied in the embodiment of Figure 1. ("Third Party

2 Requester's Comments after Patent Owner's Response under 37 C.P.R.

3 § 1.947 and M.P.E.P. § 2666.05," dated February 15, 2013, at 8). In doing

4 so, the Requester proposed a new ground of rejection different from the

5 anticipation rejection proposed in the Request.

6 The Examiner adopted this proposed rejection both with respect to

7 claim 1 and claim 11, even though the claim language that prompted the

8 Requester to propose the rejection did not appear in claim 11. The Examiner

9 also determined that that there existed a reasonable likelihood that the

10 Requester would prevail against at least one of claims 1, 2, 4, 10---12, 14 and

11 20 based on the proposed new rejection invoking the embodiment depicted

12 in Figure 1 of Potteiger I. (See April2013 Office Action 5).

13 Claim 11, from which claims 12, 14 and 20 depend, recites a

14 therapeutic laser system in which "a distal end of [a] fiber project[s] from

15 within said casing to the exterior of the casing." The Examiner found that

16 "the fiber in Potteiger [I] terminates in the optical connector, which is

17 located within the bounds of the baseplate/casing[;] thus it would not be fair

18 to state that the fiber is 'projecting from within said casing to the exterior of

19 said casing.'" (RAN 6). On the basis of this finding, the Examiner

20 withdrew the new ground of rejection of claims 11, 12, 14 and 20 under

21 § 1 02(b) based on Figure 1 of Potteiger I. (See RAN 5-6). The Examiner

22 made no other findings to support withdrawal of the rejection.

23 The Examiner's finding the "the fiber in Potteiger [I] terminates in the

24 optical connector, which is located within the bounds of the baseplate

25 /casing," is correct with respect to the embodiment of Figure 1 of Potteiger I.

26 (See Potteiger I, col. 3, 11. 18-23). The finding is not correct with respect to

47



1 the embodiment of Figure 2 of Potteiger I. As noted earlier, we find that

2 Figure 2 of Potteiger I depicts a combination of a laser module 10 and a

3 package housing 60. (See Potteiger I, col. 3, 11. 54-57 and Fig. 2). The laser

4 module 10 includes a solid state laser 12, an optical connector 18 and an

5 optical fiber 16 extending from the laser 12 at a proximal end to the optical

6 connector 18 at a distal end. (See Potteiger I, col. 5, 11. 6---8; see also id., col.

7 2, 1. 63- col. 3, 1. 2).

8 The package housing 60 includes a first segment 62 and a second

9 segment 64 joined to the first segment by an integral hinge 66. (See

10 Potteiger I, col. 3, 11. 54--60). The first segment 62 of the package housing

11 60 of Potteiger I included a hub 68 surrounded by a groove 70 for receiving

12 a spool22. (Potteiger I, col. 3, 1. 65- col. 4, 1. 6). The first segment 62 also

13 included a closure protrusion 78 encompassing the hub 68 and the groove

14 70. The second segment 64 include a mating closure groove 79 for

15 receiving the closure protrusion 78 to releasably lock the second segment 64

16 in place over the first segment 62 so as to secure the spool 22 between the

17 two segments. (Potteiger I, col. 4, 11. 46---56; see also id., col. 5, 11. 40---44).

18 The package housing 60 as depicted in Figure 2 of Potteiger I includes feed-

19 through ports 80 embodied as gaps through the closure protrusion 78 of the

20 first segment 62. (Potteiger I, col. 4, 11. 57---61). When the laser module 10

21 is positioned in the package housing 60, the two ends of the optical fiber 16

22 project from within the package housing, through the feed-through ports 80,

23 to the exterior of the package housing. (Potteiger I, col. 5, 11. 6---17). In fact,

24 as the Requester points out (see Reb. Br. Req'r 4), the Patent Owner does

25 not appear to dispute the Requester's assertion that the embodiment depicted

48



1 in Figure 2 of Potteiger I includes "a distal end of [a] fiber projecting from

2 within said casing to the exterior of the casing."

3

4 Anticipation by Potteiger !-Additional Arguments by the Patent Owner

5 The sole finding which prompted the Examiner to withdraw the

6 anticipation rejection of claims 11, 12, 14 and 20 is not correct, at least with

7 respect to the embodiment shown in Figure 2 of Potteiger. That said, the

8 Patent Owner advances additional arguments in support of the Examiner's

9 decision not to adopt the anticipation rejection. Cf Rexnord Indus. LLC v.

10 Kappas, 705 F.3d 1347, 1355-56 (Fed. Cir. 2013)("0njudicial review, the

11 correctness of the decision appealed from can be defended by the appellee

12 on any ground that is supported by the record, whether or not the appellant

13 raised the argument."). Independent claim 11 is representative for purposes

14 of the anticipation rejection.

15 The Patent Owner argues that the embodiment of Figure 2 is not a

16 "therapeutic laser system useful in medicine or dentistry" as recited in the

17 preamble of claim 11. (See Resp. Br. PO 9). We interpret the phrase "laser

18 system useful in medicine or dentistry" as recited in the preamble of claim

19 11 in the same manner that we interpreted the phrase as recited in the

20 preamble of claim 1. Although Potteiger I does not expressly identify the

21 laser module 10 depicted in Figure 2, we find that the Laser 2000 Module

22 manufactured by Lucent Technologies of Murray Hill, New Jersey is the

23 only laser module named in Potteiger I. (Potteiger I, col. 2, 11. 54-55; see

24 also id., col. 1, ll. 37--40). One may draw a reasonable inference that the

25 laser module 10 depicted in the combination of Figure 2 is a Laser 2000

26 Module. In other words, Figure 2 of Potteiger I and the accompanying text

49



1 would have put one of ordinary skill in the art in possession of the package

2 housing 60 with a Laser 2000 Module therein. Extrapolating the Examiner's

3 findings with respect to the anticipation of claim 1, the laser system depicted

4 in Figure 2 of Potteiger I satisfies the preamble of claim 11 because it

5 includes a solid state laser 12 and an optical fiber 16 satisfying the

6 limitations recited in the body of claim 11 which define the use recited in the

7 preamble. (See RAN 1 0).

8 The Patent Owner's arguments in support of its contention that the

9 embodiment of Figure 2 of Potteiger I is not a "laser system useful in

10 medicine or dentistry" are not persuasive here for the same reasons that the

11 arguments were not persuasive as applied to claim 1. Likewise, the Graeber

12 and Koceja Declarations fail to persuade us that the embodiment of Figure 2

13 is not a therapeutic laser system capable of use in medicine or dentistry.

14 The Patent Owner also argues that the embodiment of Figure 2 lacks

15 "a fiber storage module, further comprising a module housing attachable and

16 detachable from the casing and having a volume sufficient to store

17 significant amounts of extra fiber," as recited in claim 11. (See Resp. Br.

18 PO 10). Figure 2 of Potteiger I depicts a laser system including a spool22

19 having an outer casing including a cylindrical wall 3 8 and a segmented

20 flange 39. The outer casing is attachable to, and removable from, the

21 baseplate 20 by means of locking tabs 42. (See id. ("Patent Owner

22 acknowledges that spool22 is removable from package housing 60."); see

23 also Potteiger I, col. 3, ll. 26---30; col. 3, 1. 65- col. 4, 1. 14; and Fig. 2). The

24 spool 22 is configured to store amounts of fiber that are "extra" in the sense

25 that the spool includes the cylindrical wall38, about which the extra fiber

26 may be wound. (See Potteiger I, col. 3, 11. 26---30). Claim 11, like claim 1, is

50



1 not limited to a laser system including a fiber module able to store extra

2 amounts of fiber without human assistance when removed from the housing.

3 This argument as applied to claim 11 is not persuasive for the same reasons

4 that the argument was not persuasive as applied to claim 1.

5 Finally, the Patent Owner argues that the embodiment depicted in

6 Figure 2 of Potteiger I lacks "a handpiece ... adapted for gripping by a

7 human hand" as recited in claim 11. (See Resp. Br. PO 11 ). The Requester

8 argues that the optical connector 18 depicted in Figure 2 is such a handpiece.

9 (See Reb. Br. Req'r 8-9; see also Request 36; April2013 Office Action 5).

10 The Patent Owner concedes that the optical connector 18 is susceptible of

11 being gripped. (See Resp. Br. PO 12 ("Optical connector 18 is a good

12 example of something that is capable of being gripped, but is not designed

13 or constructed for gripping by a human hand.")).

14 Nevertheless, citing the passage at column 5, lines 23-36 of the '116

15 patent, along within re Giannelli, 739 F.3d 1375 (Fed. Cir. 2014), the

16 Patent Owner argues that "the term 'adapted for' in claim 11 should be

17 construed to mean 'designed or constructed' to accomplish the recited

18 function (gripping by a human hand) and not merely capable of the recited

19 function." (Resp. Br. PO 11).

20 In Giannelli, our reviewing court recognized that the words "adapted

21 to" may denote "capable of' as well as "made to" or "designed to." See id.

22 at 1379. In this instance, "capable of' is a broader reasonable interpretation

23 than "designed to" or "constructed to." The passage of the '116 patent cited

24 by the Patent Owner as evidence that the recitation "handpiece ... adapted

25 for gripping by a human hand" is limited to a handpiece "designed to" or

26 "constructed to" be gripped describes a particular handpiece 107 ( 601) as

51



1 being "ergonomically designed to ensure a firm grip, user comfort, and

2 maximum manual dexterity and maneuverability during use[.]" (Resp. Br.

3 PO 11, citing '116 patent, col. 5, 11. 23-36). The passage neither formally

4 defines the words "adapted to" nor expresses a clear intent to limit the scope

5 of the rights defined by the claims. See In re ICON Health & Fitness, Inc.,

6 496 F.3d 1374, 1379 (Fed. Cir. 2007).

7 Claim 33 depends from claim 11 and further defines the recited

8 handpiece as "adapted for being ergonomically and firmly gripped by an

9 adult human hand." Were we to import the passage cited by the Patent

10 Owner into our interpretation of claim 11, claim 33 would be superfluous.

11 In order to give meaning and effect to claim 33 (which the Requester

12 proposes rejecting over the combined teachings of Potteiger I and

13 LaserS mile rather than over the description of Figure 2 in Potteiger I alone),

14 we must interpret the phrase "adapted for gripping by a human hand" recited

15 in claim 11 more broadly as encompassing handpieces susceptible of being

16 gripped. See Phillips v. AWH Corp., 415 F.3d 1303, 1314-15 (Fed. Cir.

17 2005)(en bane). This consideration is more persuasive as to the scope of the

18 phrase "adapted for gripping by a human hand" than the passage cited by the

19 Patent Owner describing one particular handpiece suitable for use in the

20 claimed laser system.

21 The Patent Owner does not dispute that the optical connector 18

22 depicted in Figure 2 of Potteiger I is susceptible of being gripped.

23 Therefore, the optical connector 18 satisfies the limitation "adapted for

24 gripping by a human hand." The Requester has shown that claims 11, 12, 14

25 and 20 should be rejected under § 1 02(b) as being anticipated by Potteiger I

26 for the reasons given on pages 32-37 of the Request and the third page

52



1 through the sixth page of Appendix A to the Request. Pursuant to 37 C.P.R.

2 § 41.77, we enter new grounds of rejection against claims 11, 12, 14 and 20

3 under§ 103(a) as being anticipated by Potteiger I.

4

5 Obviousness over Potteiger I and Lawhon

6 One of ordinary skill in the art would have had reason to replace the

7 spool22 depicted in Figure 2 of Potteiger I with a package similar to the

8 package 10 described by Lawhon. (See RAN 14). Potteiger I criticizes the

9 spool22 as depicted in Figure 1 because the fiber might slip off the end of

10 the cylindrical wall38 opposite the segmented flange 39 while the spool is

11 being attached to the baseplate 20 unless the fiber is held in place by the

12 dexterous application of a user's fingers. (Potteiger I, col. 3, 11. 45-51 ). The

13 same criticism applies to the spool22 depicted in Figure 2 of Potteiger I.

14 Potteiger I does not teach providing the spool 22 depicted in Figure 2 with

15 any structural barrier to prevent the fiber from slipping off the free end of

16 the spool. Instead, the first segment 62 of the package housing 60 of Figure

17 2 includes finger depressions 76 providing room for the user's fingers to

18 continue to hold the fiber 16 on the spool 22 as the spool is positioned on the

19 hub 68. (See Potteiger I, col. 4, 11. 37--45).

20 Lawhon's package 10 does not suffer from this deficiency. The

21 substitution of Lawhon's package 10 for the spool22 in the support

22 assembly depicted in Figure 1 of Potteiger I would have addressed the

23 criticism of Potteiger I regarding the likelihood of the fiber falling off the

24 spool when not attached to the first segment 62 of the package housing 60.

25 The Patent Owner argues that Potteiger I teaches away from making


53



1 one of ordinary skill in the art would have been discouraged from making

2 the proposed substitution because the substitution would have allowed the

3 fiber to easily unwind from the substituted package so as to extend beyond

4 the perimeter of the package housing 60, thereby increasing the likelihood

5 that the fiber would be damaged during testing or shipping. (See Resp. Br.

6 PO 12-13). The Patent Owner also argues that one of ordinary skill would

7 have been discouraged from making the proposed substitution because a

8 user could not have removed the fiber completely from the substituted

9 package. This, it is asserted, would have prevented a user from recycling the

10 entire support assembly to the manufacturer. (See App. Br. PO 13). These

11 argument are not persuasive as to the patentability of claim 11 for the same

12 reasons that they were not persuasive as to the patentability of claim 1.

13

14 Obviousness over Potteiger I and LaserSmile

15 The Examiner initially determined that there existed a reasonable

16 likelihood that the Requester would prevail against at least one of claims 11,

17 12, 14, 15, 20 and 21 under§ 103(a) based on the combined teachings of

18 Potteiger I and LaserSmile. (See Determination 8). The Examiner withdrew

19 the ground of rejection in the RAN. (See RAN 17). The Requester appeals

20 the Examiner's decision not to adopt the proposed rejection of claims 11, 12,

21 14, 20, 21, 23, 33, 39, 41,46 and 47 as being unpatentable over Potteiger I

22 and LaserSmile (Notice of Appeal, dated January 9, 2014, at 2; see also

23 App. Br. Req'r 3), but does not suggest any persuasive reason in the Appeal

24 Brief or the Reply Brief why the Examiner might have erred in withdrawing

25 the rejection. In doing so, the Requester has waived its opportunity to

54



1 present its own arguments opposing the Examiner's withdrawal of this

2 ground of rejection. See 37 C.P.R.§ 41.57 (c)(l)(vii).

3 Nevertheless, the public retains an interest in this proceeding in

4 having the Patent and Trademark Office determine the patentability of the

5 appealed claims over the prior art cited by the Requester. We have the

6 discretion to enter a new ground of rejection, pursuant to 37 C.P.R.

7 § 41.77 (b), based on the Requester's arguments and the Examiner's

8 reasoning in support of the rejection of claim 1 under§ 103(a) over Potteiger

9 I and LaserS mile. We exercise this discretion so as to treat claim 11 and the

10 other claims subject to the appeal in a manner consistent with our treatment

11 of claim 1 and the other claims subject to the cross-appeal. To the extent

12 that the Patent Owner may have relied on the silence of the Requester's

13 briefs in not addressing this ground of rejection, the procedures set forth in

14 37 C.P.R. § 41.77 will adequately protect the Patent Owner's rights to notice

15 and to respond.

16 As we found earlier, LaserSmile describes a soft-tissue and whitening

17 laser system. The system as depicted on the fourth page and the last page of

18 LaserS mile includes a housing; a fiber; a spool on a side of the housing for

19 receiving the fiber; a control panel on the front of the housing; and a

20 handpiece coupled to a distal end of the fiber. The last page of the reference

21 provides specifications for a "LASERSMILETM Soft-Tissue Diode Laser" and a

22 "LASERSMILETM Whitening Handpiece," the latter including a "Fiber Cable

23 Length," indicating that the laser system includes a semiconductor laser

24 diode, a fiber and a whitening handpiece.

25 The Examiner found in connection with the rejection of claim 1 that

26 one of ordinary skill in the art would have had reason to substitute a

55



1 removably attachable spool similar the spool22 described by Potteiger I for

2 the spool on the side of the laser system depicted in LaserS mile. (See RAN

3 18). A similar finding applies here. This mere substitution would have

4 required only minor modification of the housing of the laser system depicted

5 in LaserS mile (such as the addition of slots or depressions for engaging

6 locking tabs 42 of the spool 22). (See RAN 20 ("[T]he mere substitution of

7 the Potteiger spool would not [have] amount[ ed] to a complex mechanical

8 reconfiguration and would have been well within the skill of those in the art

9 at the time of the invention.")). The teachings of Potteiger I would have

10 provided one of ordinary skill sufficient guidance to implement the

11 necessary modifications. The Patent Owner has not identified any

12 unpredictable results which the substitution might have yielded.

13 The Examiner withdrew the rejection of claim 11 over the teachings

14 of Potteiger I and LaserSmile in the RAN. (See RAN 17; see also RAN 5-

15 6). Claim 11, from which claims 12, 14 and 20 depend, recites a therapeutic

16 laser system in which "a distal end of [a] fiber project[ s] from within said

17 casing to the exterior of the casing." In finding that Potteiger I alone did not

18 anticipate claim 11, the Examiner found that "the fiber in Potteiger

19 terminates in the optical connector, which is located within the bounds of the

20 baseplate/casing[;] thus it would not be fair to state that the fiber is

21 'projecting from within said casing to the exterior of said casing.'" (RAN

22 6). The Examiner reiterated this finding when withdrawing the rejection

23 over Potteiger I and LaserSmile. (See RAN 17). In addition, the Examiner

24 adopted the Patent Owner's argument that "LaserSmile contains no

25 disclosure of any fiber located within the device to which the Potteiger [I]

26 spool would be attached. Instead, the only fiber disclosed in Laser Smile ...

56



1 is clearly located completely outside the LaserSmile System."

2 ("Amendment C and Response to Action Closing Prosecution," dated Sept.

3 27, 2013, at 22; see also RAN 17).

4 The Examiner's finding, and the Patent Owner's argument, are not

5 persuasive. The last page of LaserS mile describes the laser medium used in

6 the LaserSmile system as including a semiconductor laser diode. No such

7 laser diode is visible on the exterior of the housing or casing of the

8 LaserSmile system in the photographs appearing on the fourth and last pages

9 ofLaserSmile. Nevertheless, a reasonable inference may be drawn that the

1 0 semiconductor laser diode is inside the housing. An optical fiber appears to

11 project from within the casing to the exterior of the casing through a strain

12 relief on the front panel of the casing, below the grey control panel.

13 Although the photocopy of LaserS mile attached to the Request is not

14 altogether clear, a reasonable inference may be drawn that the optical fiber

15 wraps around the spool on the side of the casing and extends to the

16 handpiece, which receives the fiber distal end.

17 We enter new grounds of rejection against claims 11, 12, 14, 20, 23,

18 33, 41, 46 and 47 under§ 103(a) as being unpatentable over Potteiger I and

19 LaserS mile. Because the Patent Owner argues the patentability of claims 26,

20 27, 29, 34, 37 and 57 solely based on the patentability of claim 11 (see Resp.

21 Br. PO 13), we enter new grounds of rejection pursuant to 37 C.P.R.

22 § 41.77(b) against claim 26 under§ 103(a) as being unpatentable over

23 Potteiger I and Baer; against claim 27 under§ 103(a) as being unpatentable

24 over Potteiger I, Baer and Uejima; against claim 29 under§ 103(a) as being

25 unpatentable over Potteiger I and Synrad; against claim 34 under§ 103(a) as

26 being unpatentable over Potteiger I, LaserSmile and August 2003

57



1 WATERLASE Internet Capture; against claim 37 under 103(a) as being

2 unpatentable over Potteiger I, LaserSmile and February 2002 WATERLASE

3 Press Release; and against claim 57 under§ 103(a) as being unpatentable

4 over Potteiger I and Patterson.

5

6 The Proposed Rejection of Claim 21 under§ 103(a) as being unpatentable 7 over Potteiger I and LaserSmile



10 recites the laser system of claim 11 "further comprising a fiber tip, said fiber

11 tip being attachable to said handpiece and optically coupled to said fiber

12 distal end, said fiber tip serving to determine angular orientation of laser

13 light emitted by said fiber distal end with respect to said handpiece." The

14 Requester argues that a flared, distal end of a whitening handpiece depicted

15 on the second page of LaserS mile includes a "fiber tip" satisfying the

16 additional limitations of claim 21. (See Reb. Br. Req'r 10).

17 The Requester defines a "tip" as "a small piece or part serving as an

18 end." (MERRIAM-WEBSTER'S COLLEGIATE DICTIONARY (Merriam-Webster,

19 Inc., 11th edition 2003)("tip," entry 4, def. 2)("a small piece or part serving

20 as an end, cap or point"); see also Reb. Br. Req'r 10; July 2013 Req'r

21 Comm. 25). The Patent Owner argues that the flared, distal end of the

22 whitening handpiece depicted in LaserS mile is not a "fiber tip" because it is

23 not small relative to the remainder of the handpiece. (See Resp. Br. PO 14).

24 Alternatively, the Patent Owner seeks to define a "tip" as "a pointed end of

25 something." (See Resp. Br. PO 14; see also MERRIAM-WEBSTER'S

26 COLLEGIATE DICTIONARY ("tip," entry 4, def. 1)("a usu[ally] pointed end of

58



1 something")). The Patent Owner argues that the flared, distal end of the

2 whitening handpiece is not pointed.

3 The Patent Owner's argument that "fiber tip" recited in claim 21 must

4 be pointed is not persuasive. The written description of the '116 patent does

5 not define the term "fiber tip." Neither does the Patent Owner allege that the

6 noun "tip" has a technical meaning different from the meaning that an

7 ordinary layman would have attributed to the noun. The Patent Owner

8 argues the interpretation of the term "fiber tip" solely on the basis of the

9 definitions in the general-purpose dictionary cited by the Requester.

10 The noun "small" does not appear in claim 21; and is not used to

11 describe a fiber tip in the written description of the '116 patent. The '116

12 patent does not suggest that the size of the fiber tip plays any role in the

13 claimed subject matter which might illuminate how small such a fiber tip

14 might have to be to satisfy the limitation of claim 21. Nothing in the '116

15 patent indicates that the term "fiber tip" is limited to a structure which is

16 small relative to the remainder of the handpiece. As a consequence, nothing

17 in the '116 patent suggests how small a fiber tip must be compared to the

18 handpiece as a whole. We find that the flared, distal end of the whitening

19 handpiece depicted on the second page of LaserS mile is small relative to the

20 handpiece as a whole in the sense that it is no longer than the remaining

21 portion of the handle.

22 Furthermore, both of the cited dictionary definitions identify

23 pointedness as an optional feature of a "tip." The first definition states that a

24 "tip" is "a usu[ally] pointed end of something;" and the second definition

25 identifies a "tip" as "a small piece or part serving as an end, cap or point."

26 (MERRIAM-WEBSTER'S COLLEGIATE DICTIONARY (italics added for

59



1 emphasis)). Although tip 606 appearing in Figure 6a and the tips 753a-e

2 appearing in Figure 6b appear to be pointed, the '116 patent does not include

3 any statement describing the tips as such. Therefore, the absence of a point

4 at the distal end of the whitening handpiece does not preclude the flared,

5 distal end of the handpiece from being a "fiber tip."

6 The flared, distal portion of the whitening handpiece depicted on the

7 second page of LaserS mile is a "fiber tip" as recited in claim 21. We enter

8 new grounds of rejection pursuant to 37 C.P.R.§ 41.77(b) against claim 21

9 under§ 103(a) as being unpatentable over Potteiger I and LaserSmile.

10

11 The Proposed Rejection of Claim 39 under§ 103(a) as being unpatentable 12 over Potteiger I and LaserSmile



15 recites the laser system of claim 11 in which the casing includes "an

16 electronic display panel configured to enable electronic adjustments of ...

17 continuous wave operation selection [and] pulse operation selection." The

18 Requester's arguments regarding similar language in claim 38, as well as the

19 Examiner's reasoning connected with that claim, are not persuasive for the

20 reasons discussed earlier. The Requester has not made any additional

21 arguments unique to claim 39. On this basis, we sustain the Examiner's

22 decision not to reject claim 39 under§ 103(a) as being unpatentable over

23 Potteiger I and LaserSmile.

60



1 The Rejection of Claims 48-51 under§ 103(a) as being unpatentable over 2 Potteiger I, LaserSmile and LFS-498 Manual-The LFS-498 Manual as a 3 Printed Publication

4 Claims 48 and 49 depend from claim 2, which depends from claim 1.

5 Claims 50 and 51 depend from claim 12, which depends from claim 11.

6 Claim 48 is representative of claims 48-51 for purposes of this proposed

7 ground of rejection. Most pertinently, claim 48 recites a laser system in

8 which "said fiber module is configured to store said fiber in place on [a]

9 fiber holder in said spooled state independently of outside assistance while

1 0 said fiber module outer casing is removed from said housing." The

11 Examiner withdrew the rejection of claims 48-51 in the RAN on the basis

12 that the LFS-498 Manual was not a printed publication as of the effective

13 filing date of the '116 patent. (See RAN 46).

14 "Because there are many ways in which a 15 reference may be disseminated to the interested 16 public, 'public accessibility' has been called the 17 touchstone in determining whether a reference 18 constitutes a 'printed publication' bar under 35 19 U.S.C. § 102(b)." InreHall, 781 F.2d897, 898-20 99 (Fed. Cir. 1986) (emphasis added). "A given 21 reference is 'publicly accessible' upon a 22 satisfactory showing that such a document has 23 been disseminated or otherwise made available to 24 the extent that persons interested and ordinarily 25 skilled in the subject matter or art exercising 26 reasonable diligence, can locate it." Bruckelmyer 27 v. Ground Heaters, Inc., 445 F.3d 1374, 1378 28 (Fed. Cir. 2006). "The decision whether a 29 particular reference is a printed publication 'must 30 be approached on a case-by-case basis."' In re 31 Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989).

61



1 SRI Int'l, Inc. v. Internet Security Sys., Inc., 511 F.3d 1186, 1194-95 (Fed.

2 Cir. 2008). Although the ultimate question whether a document is a printed

3 publication is one of law, the party advocating the printed publication bar

4 must establish a factual underpinning by a preponderance of the evidence.

5 See Cooper Cameron Corp. v. Kvaerner Oilfield Prods., Inc., 291 F.3d

6 1317, 1321 (Fed. Cir. 2002); Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427

7 (Fed. Cir. 1988)(explaining that the standard of proof in a reexamination

8 proceeding is by a preponderance of the evidence).

9 The Requester has shown by a preponderance of the evidence that the

10 LFS-498 Manual was made publically accessible through a technical library

11 on an Internet site maintained by ILX Lightwave. The Requester's showing

12 depends on the disclosure of the LFS-498 Manual itself, along with three

13 Internet captures attached as exhibits to the Requester's Appeal Brief.

14 The LFS-498 Manual itselfbears the date "25 September, 2001." The

15 LFS-498 Manual includes instructions for installing an LFS-498 Fiber Spool

16 on an LDM-4980 series mount using hold-down clips.

17 Exhibit C to the Requester's Appeal Brief is a page from the

18 "Products" section of an ILX Lightwave Internet site, dated December 17,

19 2001. The page bears the title, "Optical Test and Measurement

20 Instruments." The page includes a link, under the heading "Accessories,"

21 bearing the title, "LFS-498 Fiber Management Spool." Other headings

22 include "Laser Diode Controller," "Laser Diode Current Sources," "Laser

23 Diode Mounts," "Fiber Optic Test Systems" and "Fiber Optic Instruments."

24 Exhibit D to the Requester's Appeal Brief is another page from the

25 "Products" section of the ILX Lightwave Internet site. The page is dated

26 February 19, 2002 and includes a caption, "Last modified on Monday, 03-

62



1 Dec-2001 13:27:26 PST." The page bears the title "LFS-498 Fiber

2 Management Spool Overview" and includes a photograph of the spool. The

3 words "Ordering Information LFS-498 Laser Fiber Spool" appear near the

4 bottom of the page.

5 Exhibit E to the Requester's Appeal Brief is a page from the

6 "Support" section of the ILX Lightwave Internet site, dated October 21,

7 2001. The following statement appears near the top of the page:

8 Product and Application Documentation

9 Comprehensive manuals that document the 10 product[s'] operation, hardware and software 11 (where applicable) are available for each ILX 12 product.

13 The documents submitted by the Requester demonstrate that, in or

14 around the end of 2001, ILX Lightwave was engaged in the business of

15 selling and servicing optical test and measurement instruments, including

16 instruments employing laser diodes and optical fibers. The documents also

17 demonstrate that, in or around the end of 2001, ILX Lightwave maintained

18 an Internet site. One of ordinary skill in the art seeking information

19 concerning the management of optical fibers could have consulted the ILX

20 Lightwave Internet site.

21 The documents also demonstrate that, as of December 2001, ILX

22 Lightwave advertised the LFS-498 Fiber Management System through the

23 Internet site. One of ordinary skill in the art consulting the Internet site

24 maintained by ILX Lightwave seeking information regarding the

25 management of optical fibers would have been able to find the LFS-498

26 Fiber Management System (also identified as the LFS-498 Laser Fiber

63



1 Spool); and could have identified the LFS-498 Laser Fiber Spool as an

2 example of a fiber management system. (See App. Br. Req'r 23-24).

3 The LFS-498 Manual is a manual providing instructions for installing

4 the LFS-498 Fiber Spool. The LFS-498 Manual bears the date "25

5 September, 2001 ," indicating that it was in existence as of that date. The

6 documents submitted by the Requester stated that "[ c ]omprehensive manuals

7 that document the product[ s'] operation, hardware and software (where

8 applicable) are available for each ILX product." Having identified the LFS-

9 498 Fiber Spool as an example of a fiber management system, one of

10 ordinary skill in the art seeking information regarding the management of

11 optical fibers could have contacted ILX Lightwave and obtain a copy of

12 literature regarding the LFS-498 Laser Fiber Management System (including

13 the LFS-498 Manual), either through the online technical library maintained

14 by ILX Lightwave or by other means. In this manner, one of ordinary skill

15 in the art seeking information concerning the management of optical fibers

16 would have been able to locate the LFS-498 Manual through the exercise of

17 reasonable diligence. In other words, the documents show that the LFS-498

18 Manual was publically accessible in or around the end of 2001. (See App.

19 Br. Req'r 24).

20 The Examiner finds that "none of the evidence submitted establishes

21 proof of sale, and while there is evidence to support the notion that the

22 manual was 'available for each ILX product,' there is no conclusive

23 evidence to establish that the manuals accompanied the ... purportedly sold

24 products." (RAN 46). Based on this finding, the Examiner concludes that

25 the "Patent Owner's arguments are persuasive that the evidence fails to

26 establish that the LFS-[ 498] [M]anual was publically disseminated, i.e.

64



1 published on the date in question." (!d.) There are decisions holding that

2 one may establish that an insert included with a product offered for sale to

3 the public was a printed publication by showing that significant numbers of

4 the product were distributed to the public before the critical date of the

5 patent at issue. See, e.g., Stored Value Solutions, Inc. v. Card Activation

6 Techs., Inc., 796 F. Supp. 2d 520 (D. Del. 2011), aff'd 499 Fed. Appx. 5

7 (Fed. Cir. 2012); Tampax Inc. v. Personal Prods. Corp., 38 F. Supp. 663

8 (E.D.N.Y. 1941), aff'd, 123 F.2d 722 (2d Cir.), cert. denied, 316 U.S. 665

9 (1942). This scenario is not the only manner in which a document may be

10 proven to be a printed publication, however. In the present case, public

11 accessibility is established by showing that one of ordinary skill seeking

12 information concerning the management of optical fibers could have

13 identified the LFS-498 Laser Fiber Management System and obtained

14 documents regarding the system from ILX Lightwave exercising only

15 reasonable diligence.

16

17 The Rejection of Claims 48-51 under§ 103(a) as being unpatentable over 18 Potteiger I, LaserSmile and LFS-498 Manual-"said fiber module is 19 configured to store said fiber in place on said fiber holder in said spooled 20 state independently of outside assistance while said fiber module outer 21 casing is removed from said housing"

22 The proposed rejection of representative claim 48 is explained on

23 pages 32-38 of the July 2013 Requester Comments. Figure 4 of the LFS-

24 498 Manual depicts the LFS-498 Laser Fiber Management System as

25 comprising a disk having an approximately square, central aperture and a slit

26 extending from the central aperture to the edge of the disk. The LFS-498

27 Laser Fiber Management System also includes hold-down clips for securing

65



1 the LFS-498 spool on a laser diode mount (see July 2013 Req'r Comm. 33)

2 and fiber retaining clips for receiving fiber (see July 2013 Req'r Comm. 34).

3 The diode mount depicted in Figures 1 and 2 of the LFS-498 Manual

4 includes a socket designed to receive a laser diode module and a fiber

5 channel extending outwardly from the socket. Figure 2 shows that, when the

6 disk of the LFS-498 Laser Fiber Management System is secured onto the

7 laser diode mount, the central aperture of the disk aligns with the socket and

8 the slit aligns with the fiber channel. This arrangement permits a fiber

9 coupled to the laser module to extend over an exposed, top surface of the

10 disk.

11 Figure 2 of the LFS-498 Manual depicts the fiber retaining clips

12 coupled in an annular pattern about the top surface of the disk. The fiber

13 retaining clips appear to include flexible prongs. The flexible prongs may be

14 separated to receive the fiber and then allowed to relax to capture the fiber in

15 the fiber retaining clips. (See Resp. Br. PO 17). Figure 3 indicates that,

16 when the LFS-498 Laser Fiber Management system is removed from the

17 laser diode mount, the fiber retaining clips remain coupled to the disk in a

18 manner which would permit a fiber captured by the fiber retaining clips to

19 remain wound on the LFS-498 Laser Fiber Management system

20 independently of outside assistance. (See July 2013 Req'r Comm. 34--35).

21 The Requester argues that the LFS-498 Manual "provides details on fiber

22 retaining clips that could be implemented on the spool22 of Potteiger [I],

23 such that the spool 22 of Potteiger [I] could be enhanced with a 'physical

24 barrier that prohibits the wound optical fiber 16 from falling off' the spool

25 22." (July 2013 Req'r Comm. 35, quoting Potteiger I, col. 3, 11. 47--48).

66



1 The Patent Owner argues that the combined teachings of Potteiger I,

2 LaserSmile and the LFS-498 Manual would not have suggested a laser

3 system in which "said fiber module is configured to store said fiber in place

4 on said fiber holder in said spooled state independently of outside assistance

5 while said fiber module outer casing is removed from said housing." More

6 specifically, the Patent Owner argues that:

7 In order to retain fiber on the spool 22 of Potteiger 8 [J] using the clips disclosed in LFS-498, the fiber 9 retaining clips would either need to be placed 1) on

10 the segmented flange 39 of the spool 22 facing the 11 outer casing of the LaserSmile System (such that 12 the open end of the retaining clips would face 13 toward the exterior casing of LaserSmile) or 2) in 14 adjacent positions on the cylindrical wall 38 of the 15 spool 22 (such that the open end of the retaining 16 clips would face radially outward from the 17 cylindrical wall38 ofthe spool22).

18 (Resp. Br. PO 17-18). The Requester correctly points out in its Rebuttal

19 Brief that:

20 The segmented flange 39 and the LFS-498 prongs 21 perform the same function, retaining fiber. Thus, 22 one of ordinary skill in the art would [have] 23 consider[ ed] it obvious to omit the segmented 24 flange 39 of Potteiger [I] or to form it so that it 25 [did] not get in the way of access to the LFS-498 26 prongs when LFS-498 prongs [were] used.

27 (Reb. Br. Req'r 16). In view of this argument, representative claim 48

28 should have been rejected under§ 103(a). We enter new grounds of

29 rejection pursuant to 37 C.P.R.§ 41.77(b) against claims 48-51 under

30 § 103(a) as being unpatentable over Potteiger I, LaserSmile and LFS-498

31 Manual.

67



1 The Rejection of Claim 53 under§ 103(a) as being unpatentable over 2 Potteiger I, Baer, Uejima and Soltz

3 Claim 53 recites the laser system of claim 1 in which the "laser

4 module includes a plurality of individual semiconductor laser chips each

5 capable of producing individual laser light having a wavelength that

6 provides a medical or dental therapeutic effect." The claim also recites that

7 the "plurality of individual semiconductor laser chips are separate and

8 distinct semiconductor laser chips that are each separated from one another

9 by at least some open space." Here, as was the case with claim 52, the

10 Patent Owner argues that a laser system including individual semiconductor

11 laser chips separated from one another by at least some "open space" would

12 not have been obvious from the combined teachings of Potteiger I, Baer,

13 Uejima and Soltz. (See Resp. Br. PO 15-16).

14 In interpreting the corresponding language in claim 52, the Examiner

15 concluded that "any separation between the laser chips, would create 'open

16 space' between adjacent chips" in accordance with the use of the term "open

17 space" in claim 52. (RAN 38; see also Reb. Br. Req'r 13-15). The Patent

18 Owner argues that the words "open space" includes only individual

19 semiconductor laser chips "separated by some distance that is 'open' and not

20 filled with any solid material" (App. Br. PO 27; see also Reb. Br. PO 13).

21 For the reasons discussed in connection with claim 52, both the Examiner's

22 interpretation and the Patent Owner's interpretation are reasonable. In the

23 present context, the Examiner's interpretation is broader.

24 As further discussed in connection with claim 52, Baer describes a

25 laser diode array 10 capable of use in the laser module 10 described in

26 Potteiger I. It would have been obvious to merely substitute Baer' s laser

68



1 diode array 10 for the solid state laser 12 of Potteiger I. On this basis, we

2 reverse the Examiner's decision not to adopt the proposed rejection of claim

3 53 under§ 103(a) as being unpatentable over Potteiger I, Baer, Uejima and

4 Soltz.

5

6 The Rejection of Claims 55 under§ 103(a) as being unpatentable over 7 Potteiger I and Patterson

8 Claim 55 recites the laser system of claim 11 wherein:

9 said fiber stored in said fiber module is a 1 0 first fiber that includes said fiber distal end,

11 said first fiber further has a first proximal 12 end and a first connector attached to said fiber 13 proximal end of said first fiber;

14 said fiber located in said casing is a second 15 fiber that includes said fiber proximal end, said 16 second fiber further has a second distal end and a 1 7 second connector attached to said second distal 18 end of said second fiber, and

19 said first connector is configured to receive 20 said laser light from said second connector so that 21 said fiber proximal end of said second fiber can 22 can receive said laser light from said laser module 23 and transport said laser light through said second 24 connector and through said first connector to said 25 fiber distal end of said first fiber.

26 In rejecting claim 54, the Examiner adopted the Requester's argument

27 that it would have been obvious to have broken the optical fiber 16 depicted

28 in Figure 1 of Potteiger I into two pieces and to have connected the two

29 pieces using first and second optical connectors. (See RAN 39, citing July

30 2013 Req'r Comm. 42--44). That reasoning is not persuasive here just as it

69



1 was not persuasive as applied to claim 54. For reasons similar to those given

2 in connection with the rejection of claim 54, we affirm the Examiner's

3 decision not to reject claim 55 under§ 103(a) as being unpatentable over

4 Potteiger I and Patterson.

5

6 DECISION

7 In the Patent Owner's Cross-Appeal, we AFFIRM the Examiner's

8 decision to adopt each of the following rejections:

9 claims 1, 2, 4 and 10 under § 1 02(b) as being anticipated

10 by Potteiger I;


12 unpatentable over Potteiger I and Lawhon;

13 claims 1, 2, 4, 10, 22, 30, 40, 44, 45 and 56 under

14 § 103(a) as being unpatentable over Potteiger I and LaserSmile;


16 Potteiger I and Baer;


18 Potteiger I, Baer and Uejima;


20 Potteiger I and Synrad;

21 claim 31 under § 103 (a) as being unpatentable over

22 Potteiger I, LaserSmile and August 2003 Waterlase Internet

23 Capture;

24 claim 36 under 103(a) as being unpatentable over

25 Potteiger I, LaserSmile and February 2002 Waterlase Press

26 Release; and

70




2 Potteiger I, Baer, Uejima and Soltz.

3 We REVERSE the Examiner's decision to adopt the following rejections:


5 Potteiger I and LaserSmile; and



8 In the Requester's Appeal, we AFFIRM the Examiner's decision not

9 to adopt the following proposed rejections:


11 Potteiger I and LaserSmile; and



14 As a consequence, we AFFIRM the Examiner's decision to reject

15 claims 1, 2, 4, 5, 10, 22, 24, 25, 28, 30, 31, 36, 40, 42, 44, 45, 52 and 56.

16 Claims 38, 39, 54 and 55 are not subject to an affirmed ground of rejection

17 or to a new ground of rejection to be entered below.

18

19 NEW GROUNDS OF REJECTION

20 In the Requester's Appeal, we REVERSE the Examiner's decision not

21 to adopt the remaining proposed rejections listed in the Requester's Notice

22 of Appeal. Pursuant to our authority under 37 C.P.R.§ 41.77(b), we enter

23 the following new grounds of rejection:

24 claims 11, 12, 14 and 20 under§ 102(b) as being

25 anticipated by Potteiger I;

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2 unpatentable over Potteiger I and Lawhon;

3 claims 11, 12, 14, 20, 21, 23, 33, 41, 46 and 47 under

4 § 103(a) as being unpatentable over Potteiger I and LaserSmile;


6 Potteiger I and Baer;


8 Potteiger I, Baer and Uejima;


10 Potteiger I and Synrad;


12 Potteiger I, LaserSmile and August 2003 W ATERLASE

13 Internet Capture;

14 claim 37 under 103(a) as being unpatentable over

15 Potteiger I, LaserS mile and February 2002 W ATERLASE

16 Press Release;

17 claims 48-51 under §103(a) as being unpatentable over

18 Potteiger I, LaserSmile and LFS-498 Manual;


20 Potteiger I, Baer, Uejima and Soltz; and



23 This decision contains new grounds of rejection pursuant to 37 C.P.R.

24 § 41.77 (b), which provides that " [a ]ny decision which includes a new

25 ground of rejection pursuant to this paragraph shall not be considered final

26 for judicial review." Correspondingly, no portion of the decision is final for

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1 purposes of judicial review. The Patent Owner or the Requester may request

2 rehearing under 37 C.P.R.§ 41.79, if appropriate; however, the Board may

3 elect to defer issuing any decision on such request for rehearing until such

4 time that a final decision on appeal has been issued by the Board.

5 For further guidance on new grounds of rejection, see 37 C.P.R.

6 § 41.77 (b }-(g). The decision may become final after it has returned to the

7 Board. 37 C.P.R.§ 41.77([).

8 37 C.P.R.§ 41.77(b) also provides that the Patent Owner, WITHIN

9 ONE MONTH FROM THE DATE OF THE DECISION, must exercise one

10 of the following two options with respect to the new grounds of rejection to

11 avoid termination of the appeal as to the rejected claims:

12 (1) Reopen prosecution. The owner may file 13 a response requesting reopening of prosecution 14 before the examiner. Such a response must be 15 either an amendment of the claims so rejected or 16 new evidence relating to the claims so rejected, or 17 both.

18 (2) Request rehearing. The owner may 19 request that the proceeding be reheard under 20 § 41.79 by the Board upon the same record.

21 Any request to reopen prosecution before the examiner under 37

22 C.P.R.§ 41.77(b)(l) shall be limited in scope to the "claims so rejected."

23 Accordingly, a request to reopen prosecution is limited to issues raised by

24 the new ground(s) of rejection entered by the Board. A request to reopen

25 prosecution that includes issues other than those raised by the new ground(s)

26 is unlikely to be granted. Furthermore, should the Patent Owner seek to

27 substitute claims, there is a presumption that only one substitute claim would

28 be needed to replace a cancelled claim.

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1 The Requester may file comments in reply to a Patent Owner

2 response. 37 C.P.R.§ 41.77(c). The Requester's comments under 37 C.P.R.

3 § 41.77 (c) shall be limited in scope to the issues raised by the Board's

4 opinion reflecting its decision to reject the claims and the patent owner's

5 response under paragraph 37 C.P.R.§ 41.77(b)(1). A newly proposed

6 rejection is not permitted as a matter of right. A newly proposed rejection

7 may be appropriate if it is presented to address an amendment and/or new

8 evidence properly submitted by the patent owner, and is presented with a

9 brief explanation as to why the newly proposed rejection is now necessary

10 and why it could not have been presented earlier.

11 Compliance with the page limits pursuant to 37 C.P.R.§ 1.943(b), for

12 all Patent Owner responses and Requester comments, is required.

13 The Examiner, after the Board's entry of a patent owner response and

14 requester comments, will issue a determination under 37 C.P.R.§ 41.77(d)

15 as to whether the Board's rejection is maintained or has been overcome. The

16 proceeding will then be returned to the Board together with any comments

17 and reply submitted by the owner and/or requester under 37 C.P.R.

18 § 41.77 (e) for reconsideration and issuance of a new decision by the Board

19 as provided by 37 C.P.R. § 41.77([).

20

21 AFFIRMED-IN-PART;§ 41.77(b)

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Patent Owner:

CAO GROUP, INC. ATTN: LEGAL DEPARTMENT 4628 W. SKYHA WK DRIVE WEST JORDAN, UT 84084-4501

Third Party Requester:

JONES DAY ATTENTION: DAVID COCHRAN NORTH POINT, 901 LAKESIDE A VENUE CLEVELAND, OH 44114

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inter partes administrative patent judges. … 26, 2002 press release ("february 2002 waterlase...

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