Biolase Technology, Inc. v. Patent of CAO Group, Inc.

• Decision Date: 01 July 2015
• Docket Number: Appeal 2014-007366
• Parties: BIOLASE TECHNOLOGY, INC. Appellant, Requester[1] v. Patent of CAO GROUP, INC. Respondent, Cross-Appellant, Patent Owner Inter Partes Reexamination Control 95/002, 271 Patent No. U.S. 7, 485, 116 B2 Technology Center 3900
• Court: Patent Trial and Appeal Board

BIOLASE TECHNOLOGY, INC. Appellant, Requester^[1] v. Patent of CAO GROUP, INC. Respondent, Cross-Appellant, Patent Owner

Inter Partes Reexamination Control 95/002, 271 Patent No. U.S. 7, 485, 116 B2^[2] Technology Center 3900

Appeal No. 2014-007366

United States Patent and Trademark Office, Patent Trial and Appeal Board

July 1, 2015

Filing Date 09/14/2012

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

DECISION ON APPEAL

McCARTHY, Administrative Patent Judge.

STATEMENT OF THE CASE

The §116 patent as issued included claims 1-21. Claims 3 6-9, 13 and 16-19 were not reexamined. ("Right of Appeal Notice, " mailed December 10, 2013 ("RAN") at 4). Reexamined claims 1, 2, 4, 5, 10-12, 14, 15, 20 and 21 were not amended during the reexamination proceeding. (See "Third Party Requester's Brief on Appeal, " dated Mar. 17, 2014 ("App. Br. Req'r") at 26-28). New claims 22-57 were added during the proceeding. (See id. at 28-43). Of these, claims 32 and 35 subsequently were cancelled. (See id. at 1; see also RAN 4).

The Appellant/Requester appeals from the Examiner's decision refusing to adopt proposed rejections of claims 11, 12, 14, 15, 20, 21, 23, 26, 27, 29, 33, 34, 37, 39, 41, 43, 46-51, 53, 55 and 57. (App. Br. Req'r 1). A hearing was held on November 19, 2014, addressing only the issues in this appeal. (See "Record of Oral Hearing, " mailed February 4, 2015, at 4, 1. 4 -5, 1. 4). We have jurisdiction over the appeal under 35 U.S.C. § 134(c) (2002) and 35 U.S.C. § 315(b) (2002).

The Cross-Appellant/Patent Owner appeals from the Examiner's decision rejecting claims 1, 2, 4, 5, 10, 22, 24, 25, 28, 30, 31, 36, 38, 40, 42, 44, 45, 52, 54 and 56. ("Patent Owner's Brief on Appeal under 37 C.F.R. § 41.67, " dated Mar. 24, 2014 ("App. Br. PO") at 4). The claims at issue in the cross-appeal do not overlap the claims at issue in the appeal. The Patent Owner did not request a hearing in the cross-appeal. (See "Record of Oral Hearing, " mailed February 4, 2015, at 4, 1. 4 - 5, 1. 4). We have jurisdiction over the cross-appeal under 35 U.S.C. § 134(b) and 35 U.S.C. § 315(a) (2002).

The Requester states that the §116 patent is at issue in CAO Group v. Biolase Technology, Case No. 2:12-CV-00388, in the U.S. District Court for the District of Utah. (See "Third Party Requester's Brief on Appeal" dated March 17, 2014 at 1).

THE'116 PATENT

The §116 patent teaches a semiconductor laser system having surgical and therapeutic applications in medicine and dentistry. (See § 116 patent, col. 1, ll. 51-56). Most components of the system, including a laser module 131, are contained within an enclosure or box 101. (See '116 patent, col. 1, 1. 66 - col. 2 1. 1; see also id., col. 2, ll. 62-63 and fig. lc). The '116 patent teaches that the enclosure 101 "provides protection for the laser system, permits ventilation of interior components as needed, accommodates portability, and accommodates convenient physical positioning." ('116 patent, col. 2, ll. 1-4). The laser system of the '116 patent, as depicted in Figures la and lc, also includes an optical fiber 131a (303 in Figs. 3a and 3b).

A handpiece 107 (601 in Fig. 6a) "serves to control the fiber which delivers a laser beam to a therapeutic or surgical surface [of a patient]" ('116 patent, col. 5, ll. 22-23). A fiber cartridge 102 (see '116 patent, col. 2, ll. 11-12 and fig. la), also referred to as a fiber storage and dispensing unit 201 (see '116 patent, col. 3, ll. 12-14; and figs. 2a and 2b), "is a modular unit [for storing] a certain length of fiber used for application and [dispensing] the fiber to desired length when it is used" ('116 patent, col. 3, ll. 17-19).

We will address the cross-appeal first. For the sake of brevity, findings of fact will be stated within the discussion of each issue. All findings of fact have been found by a preponderance of the evidence.

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

Claim 1 is the sole independent claim subject to the Patent Owner's Cross-Appeal:

1. A laser system useful in medicine or dentistry comprising:

a housing,

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

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

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

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

The remaining claims in the cross-appeal depend, directly or indirectly, from independent claim 1.

We AFFIRM the Examiner's decision to adopt each of the following rejections:^[3]

Ground 1: claims 1, 2, 4 and 10 under 35 U.S.C. § 102(b) (2002) as being anticipated by Potteiger I (US 6, 263, 143 Bl, issued July 17, 2001) (RAN 4);

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 56^[4] under § 103(a) as being unpatentable over Potteiger I and BIOLASE Tech., Inc., "LaserSmile The Soft-Tissue & Whitening Laser" (2002) ("LaserSmile") (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);

Ground 7: claim 25 under § 103(a) as being unpatentable over Potteiger I, Baer and Uejima (US 6, 061, 371, issued May 9, 2000) (RAN 31);

Ground 8: claim 28 under § 103(a) as being unpatentable 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);

Ground 12: claim 31 under § 103(a) as being unpatentable over Potteiger I, LaserSmile and BIOLASE Tech., Inc., "WATERLASE YSGG" (Aug. 2, 2003) ("August 2003 Waterlase Internet Capture") (RAN 36); and

Ground 15: claim 52 under § 103(a) as being unpatentable over Potteiger I, Baer, Uejima and Soltz (US 5, 272, 716, issued Dec. 21, 1993) (RAN 37).

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

Ground 5: claim 38 under § 103(a) as being unpatentable over Potteiger I and LaserSmile (RAN 21); and

Ground 16: claim 54 under § 103(a) as being unpatentable over Potteiger I and Patterson (US 5, 682, 450, issued Oct. 28, 1997) (RAN 39).

Each of these grounds of rejection relies on Potteiger I either as an anticipatory reference under § 102(b) or as a primary reference under § 103(a). We find that Potteiger I describes "shipping casings, packages and storage compartments configured to retain a laser module assembly." (Potteiger I, col. 1, ll. 19-22). Figure 1 of Potteiger I depicts a prior art laser module 10 in combination with a support assembly including a baseplate 20. (Potteiger I, col. 2, ll. 53-55 and col. 3, ll. 5-14). The Examiner relies on the embodiment of Figure 1 of Potteiger I as the basis for rejecting the claims subject to the Patent Owner's cross-appeal. (See, e.g., RAN 5 ("As to Claim 1, the baseplate 20 [which appears only in Figure 1] is considered a housing in the broadest sense as it houses the laser module [10]")).

Issues

The Patent Owner argues that Potteiger I fails to anticipate claim 1 because the embodiment of Figure 1 of Potteiger I is not a "laser system useful in medicine or dentistry;" because the embodiment does not include "a laser module within said housing, said laser module being capable of producing laser light;" and because the embodiment does not include "a fiber module, said fiber module having an outer casing attachable to and removable from said housing and configured to store amounts of extra fiber." (See App. Br. PO 11-16; Reb. Br. PO 3-7).

The Patent Owner argues that the subject matter of claim 1 would not have been obvious from the combined teachings of Potteiger I and Lawhon because the combination proposed by the Examiner would not have been suitable for carrying out the purposes of the embodiment of Figure 1 of Potteiger I (see App. Br. PO 17-19; Reb. Br. PO 7-8); and because the combined teachings would not have provided one of ordinary skill in the art reason to modify the embodiment of Figure 1 to include "a laser module within said housing said laser module being capable of producing laser light which is usable for therapeutic purposes in medicine of dentistry" as recited in claim 1 (see App. Br. PO 19; Reb. Br. PO 8).

The Patent Owner argues that the subject matter of claim 1 would not have been obvious from the combined teachings of Potteiger I and LaserSmile because the combination proposed by the Examiner would not have been suitable for carrying out the purposes of the embodiment of Figure 1 of Potteiger I (see App. Br. PO 20-21; Reb. Br. PO 8); and because the combined teachings would not have provided one of ordinary skill in the art reason to modify the embodiment of Figure 1 to include "a fiber module, said fiber module having an outer casing attachable to and removable from said housing and configured to store amounts of extra fiber" (see App. Br. P0 21;Reb. Br. PO 8).

The Patent Owner argues the subject matter of claim 38 would not have been obvious from the combined teachings of Potteiger I and LaserSmile because the combined teachings would not have provided one of...