Andersen, Dan E. et al.

Patent Trials and Appeals Board

Nov 25, 2020

2019001647 (P.T.A.B. Nov. 25, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/170,005 06/28/2005 Dan E. Andersen 15589000-003101 2726
150005 7590 11/25/2020
DENTONS US LLP - San Francisco
P.O. Box 061080
Wacker Drive Station, Willis Tower
Chicago, IL 60606
EXAMINER
KOHARSKI, CHRISTOPHER
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
11/25/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
dentons_PAIR@firsttofile.com
patent.docket@dentons.com
patents.us@dentons.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAN E. ANDERSEN, DAVID H. MORDAUNT, and
MICHAEL W. WILTBERGER
Appeal 2019-001647
Application 11/170,005
Technology Center 3700
Before JENNIFER D. BAHR, JEREMY M. PLENZLER, and
CARL M. DEFRANCO, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6, 8–16, 18–20, 22–33, and 35–54.
An oral hearing was held on November 12, 2020. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Topcon Medical
Laser Systems, Inc. Appeal Br. 3.
Appeal 2019-001647
Application 11/170,005

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CLAIMED SUBJECT MATTER
The claims are directed to an optical scanning system for performing
therapy on target eye tissue of a patient. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. An optical scanning system for performing therapy on
target eye tissue of a patient, comprising:
a light source for producing a beam of light;
a scanning device that includes at least one movable
optical element for moving the beam of light to produce a pattern
of the light beam;
a controller for controlling the scanning device to create
the light beam pattern in response to a user command from an
input device;
at least one lens for focusing the pattern of the light beam
from the scanning device in a telecentric manner; and
an ophthalmic lens assembly having a contact surface for
contacting the patient and having a reflective optical element for
reflecting the light beam pattern from the at least one lens onto
the target eye tissue;
wherein the at least one lens is configured such that the
telecentric focusing of the pattern is parallel to an optical axis of
the ophthalmic lens assembly before reaching the ophthalmic
lens assembly.
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Application 11/170,005

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Dixon US 5,381,224 Jan. 10, 1995
Huang US 6,033,396 Mar. 7, 2000
Hsia US 6,514,241 B1 Feb. 4, 2003
Erickson US 6,767,098 B2 July 27, 2004
Rich US 2005/0041200 A1 Feb. 24, 2005
Andersen EP 1354573 A1 Oct. 22, 2003
REJECTIONS
Claims 1–6, 10–16, 18–20, 22–25, 28–33, 35–40, 43–49, 51, and 53
are rejected under 35 U.S.C. § 103(a) as being unpatentable over Andersen,
Dixon, and Hsia.
Claims 8, 26, and 41 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Andersen, Dixon, Hsia, and Erickson.
Claims 9, 27, and 42 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Andersen, Dixon, Hsia, and Rich.
Claims 50, 52, and 54 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Andersen, Dixon, Hsia, Erickson, and Huang.
OPINION
The Examiner’s rejections each require utilizing Hsia’s glaucoma
treatment including goniolens 22 with side reflector 36, which reflects laser
light to a target region of trabecular meshwork 18 of the eye, in combination
with Andersen’s retina treatment device. Non-Final Act. 3–4; Ans. 11–12.
Appellant contends that “modifying Anderson[’s] optical system 20 to
include the Hsia’s goniolens 22 . . . would . . . be improper because it would
change the principle of operation of Anderson and render it inoperable for its
Appeal 2019-001647
Application 11/170,005

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intended purpose” because it “would cause incident laser beams to be
reflected (by reflectors 36) towards the trabecular meshwork 18 of the eye.”
Appeal Br. 17. Appellant explains that “[t]his diverts laser beams away
from the iris, which prevents the formation of a ‘pivot point’ at the pupil and
prevents Anderson’s system 20 from performing its intended purpose of
scanning the retina.” Id. (emphasis omitted). Appellant has the better
position.
The Examiner states, for example, that the proposed modification
would have been obvious to “provide[] more accurate treatment” and
because “the devices and methods of Andersen . . . are useful for many types
of surgeries, including intraocular surgeries.” Non-Final Act. 4. This does
not explain, however, why one skilled in the art would have modified a
glaucoma treatment (Hsia) with a retina treatment (Andersen), nor does it
explain why one skilled in the art would have modified a retina treatment
(Andersen) with a glaucoma treatment (Hsia).
The Examiner’s rejection requires ignoring Andersen’s overall
purpose of treating the retina. There is no real dispute that the embodiments
of Andersen are related solely to treating the retina. To support the basis for
the rejection, the Examiner requires us to consider the reference more
broadly, directing our attention to column 2, lines 29–31 (¶ 9) of Andersen.2
See Ans. 16 (“Andersen . . . teach[es] the use of their invention in ‘laser
surgical and diagnostic techniques’ in general, not as only applied to the

2 The cited portion of Andersen simply states that “[t]here is provided, in
accordance with an embodiment of the present invention, an apparatus,
system, and method for providing uniform illumination to all or selected
points in target tissue, such as the retina.” Andersen ¶ 9.
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retina, and further contemplate[s] ‘an apparatus, system, and method for
providing uniform illumination to all or selected points in target tissue.’”).
The only discussion not specifically related to treatment of the retina
in Andersen is a general background discussion of laser treatments.
Although Andersen states, generally, that “[t]he present invention relates to
methods and devices useful in laser surgical and diagnostic techniques,” it
goes on to clarify that “[s]pecifically, embodiments of the present invention
relate to systems, methods and apparatuses that provide uniform illumination
on the retina.” Andersen ¶ 2. Similarly, Andersen summarizes, generally,
that “[l]aser-based tools have become the standard for treating and
diagnosing quite a number of ophthalmic conditions, such as the
complications associated with diabetes, glaucoma, and aging,” but then goes
on to explain applications related specifically to the retina. Id. ¶ 3. The
remainder of the discussion is related to retina treatment. That Andersen
summarizes laser treatments, generally, in its opening discussion, or
generally references tissue treatment, does not provide sufficient support for
a wholesale modification to Andersen’s specific teachings related to retina
treatment. As Appellant explains, and the Examiner does not dispute in any
meaningful way, retina treatment, which is addressed by Andersen, and that
related to glaucoma, which is the subject of Dixon and Appellant’s
purported invention, are quite different from one another.
Simply stated, the Examiner has failed to provide sufficient basis to
conclude that one skilled in the art would have modified the teachings of
Andersen and Dixon in the manner proposed to arrive at the claimed
arrangement.
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Application 11/170,005

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For at least this reason, we do not sustain the Examiner’s decision to
reject claims 1–6, 8–16, 18–20, 22–33, and 35–54.
CONCLUSION
The Examiner’s rejections are reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–6, 10–16,
18–20, 22–
25, 28–33,
35–40, 43–
49, 51, 53
103(a) Andersen, Dixon,
Hsia
1–6, 10–16,
18–20, 22–
25, 28–33,
35–40, 43–
49, 51, 53
8, 26, 41 103(a) Andersen, Dixon,
Hsia, Erickson
8, 26, 41
9, 27, 42 103(a) Andersen, Dixon,
Hsia, Rich
9, 27, 42
50, 52, 54 103(a) Andersen, Dixon,
Hsia, Erickson,
Huang
50, 52, 54
Overall
Outcome
1–6, 8–16,
18–20, 22–
33, 35–54

REVERSED