Andersen, Dan E. et al.Download PDFPatent Trials and Appeals BoardNov 25, 20202019001647 (P.T.A.B. Nov. 25, 2020) Copy Citation 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 2 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. Appeal 2019-001647 Application 11/170,005 3 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 4 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. Appeal 2019-001647 Application 11/170,005 5 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. Appeal 2019-001647 Application 11/170,005 6 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 Copy with citationCopy as parenthetical citation