Ex Parte Andersen et al

Patent Trial and Appeal Board

Oct 31, 2018

11595423 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/595,423 11/08/2006
150005 7590 11/02/2018
DENTONS US LLP - San Francisco
P.O. Box 061080
Wacker Drive Station, Willis Tower
Chicago, IL 60606
FIRST NAMED INVENTOR
Dan E. Andersen
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
15589000-009101 9088
EXAMINER
EISEMAN, LYNSEY C
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
11/02/2018 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):
patents.us@dentons.com
dentons_PAIR@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANE. ANDERSEN and DAVID H. MORDAUNT
Appeal2017-000139
Application 11/595,423
Technology Center 3700
Before GEORGE R. HOSKINS, BRADLEY B. BAY AT, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-000139
Application 11/595,423
STATEMENT OF THE CASE
Under 35 U.S.C. § 134(a), Appellants (Dan E. Andersen and
David H. Mordaunt) 1 appeal from the Examiner's decision, as set forth in
the Final Office Action dated November 26, 2014 ("Final Act."), rejecting
claims 1, 3, 5-9, 26-30, and 38. 2 We have jurisdiction under 35 U.S.C.
§ 6(b ). An oral hearing was held on October 11, 2018.
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The claims are directed to a multiple spot photomedical treatment
using a laser indirect ophthalmoscope. Spec., Title. Claim 1, the only
independent claim on appeal, is reproduced below with disputed limitations
italicized for emphasis:
1. An apparatus for photomedical treatment or diagnosis of a
target tissue, the apparatus comprising:
a light source for generating light;
a headset designed to be worn by a user, wherein the
headset includes an input for receiving the light and an output for
projecting the light on a target tissue;
a beam multiplier positioned for receiving the light and/or
generating a plurality of optical beams by spatial and temporal
separation of the light for projection thereof via the output on the
target tissue in the form of a pattern,
wherein the beam multiplier is supported by the
headset,
wherein the pattern comprises a plurality of discrete
spots on the target tissue, and
Appellants identify Topcon Medical Laser Systems, Inc. as the real
party in interest. Appeal Brief, dated December 28, 2015 ("Appeal Br."), at
4.
2 Claims 2, 4, and 32-37 are cancelled, and claims 10-25 and 31 are
withdrawn from consideration. Appeal Br. 15-19 (Claims App.).
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Application 11/595,423
wherein the beam multiplier is configured to form
the pattern automatically.
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Crow
Simon
Lin
Munnerlyn
Gutridge
Abe
Altshuler
us 5,423,798
us 5,480,396
US 2001/0037105 Al
US 6,331,177 Bl
US 2004/0017545 Al
US 2005/0080467 Al
US 2006/0004347 Al
REJECTIONS
The Examiner made the following rejections:
June 13, 1995
Jan.2, 1996
Nov. 1, 2001
Dec. 18, 2001
Jan.29,2004
Apr. 14, 2005
Jan. 5,2006
1. Claim 38 stands rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite
2. Claims 1, 3, 6, 9, 26, 27, and 30 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Abe and Lin.
3. Claim 5 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Abe, Lin, and Altshuler.
4. Claim 7 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Abe, Lin, and Gutridge.
5. Claims 8 and 29 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Abe, Lin, and Munnerlyn.
6. Claim 28 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Abe, Lin, and Crow.
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Application 11/595,423
7. Claim 38 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Abe, Lin, and Simon.
Appellants seek our review of these rejections.
DISCUSSION
Rejection 1: Claim 38 as Being Indefinite
Claim 3 8 recites the "apparatus of claim 1, further comprising a
mirror positioned to receive and reflect the plurality of spatially separated
beams for simultaneous delivery of the spatially separated beams of the
plurality of spatially separated beams towards the target tissue." (Emphasis
added).
The Examiner finds that the italicized limitation in claim 3 8 is
"confusing" (Final Act. 4) and is "redundant and unclear" whether the
limitation "refers to all of the plurality of spatially separated beams or just a
subset of the plurality of spatially separated beam[ s ]" (Answer, dated July
28, 2016 ("Ans."), at 10).
In response to the Examiner's rejection, Appellants contend that,
"when claim 3 8 is read in light of the specification, one skilled in the art
would understand what is reflected towards a target tissue - all of the
spatially separate beams of a group of such beams." Reply Brief, dated
September 28, 2016 (Reply Br."), at 12; see also Appeal Br. 6.
We agree with the Examiner that it is unclear whether claim 3 8 refers
to all of the plurality of spatially separated beams or just a subset of the
beams. Under Appellants' proposed interpretation that claim 3 8 refers to all
of the plurality of spatially separated beams, it would seem that claim 3 8
should refer to a mirror positioned to receive and reflect the plurality of
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Application 11/595,423
spatially separated beams for simultaneous delivery of the plurality of
spatially separated beams towards the target tissue. Recitation of the
delivery of "the spatially separated beams" of "a plurality of spatially
separated beams" could refer to a subset of the plurality of beams, as stated
by the Examiner. Even under Appellants' proposed construction, delivery of
"the spatially separated beam" is redundant and unclear. Because both
Appellants' and the Examiner's interpretations are plausible, the claim is
indefinite. Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BP AI 2008)
(precedential) ("if a claim is amenable to two or more plausible claim
constructions, the USPTO is justified in requiring the applicant to more
precisely define the metes and bounds of the claimed invention by holding
the claim unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite.") (cited with approval in Ex parte McAward, 2017 WL 3947829
(PTAB Aug. 23, 2017) (precedential), at *2, n.3). Thus, the rejection of
claim 3 8 is sustained.
Rejection 2: Claims 1, 3, 6, 9, 26, 27, and 30
as Unpatentable Over Abe and Lin
Claims 1, 3, 6, 9, 26, 27, and 30
Appellants do not argue claims 3, 6, 9, 26, 27, and 30 apart from
claim 1. See, e.g., Appeal Br. 12. We select independent claim 1 as the
representative claim, and its dependent claims 3, 6, 9, 26, 27, and 30 stand or
fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that the combined teachings of Abe and Lin
disclose all of the limitations of claim 1. In particular, the Examiner finds
that Abe discloses a beam multiplier that separates beams temporally, but
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Application 11/595,423
not a beam multiplier that separates beams both spatially and temporally as
recited in claim 1. Final Act. 5---6. For this missing limitation, the Examiner
finds that Lin's beam multiplier divides beams spatially and temporally. Id.
at 6 (citing Lin ,r 50, Fig. 3); Ans. 10. The Examiner determines that it
would have been obvious to one of ordinary skill in the art "to substitute the
beam multiplier taught by Abe for the beam splitter taught by Lin, as a
known way to deliver a plurality of discrete spots to a target area,
specifically within the field of ophthalmic laser surgery" because "this is
considered a simple substitution of one known element for another to obtain
predictable results." Final Act. 6. The Examiner also explains that "the
exact scanner in Fig. 3 of Lin" does not have to be is incorporated into Abe,
and
it is known in the art that you can use temporal separation,
spatial separation or both in order to provide a plurality of
beams and one of ordinary skill in the art would know how to
incorporate similar scanning systems into the system taught by
Abe, if it is considered desirable to separate the beams both
spatially and temporally.
Ans. 10-11 ( citing Lin as demonstrating the "alternative equivalents" of a
temporal separation device in Figure 1, and a temporal and spatial separation
device in Figure 3).
In their Appeal Brief, Appellants do not address why the Examiner's
findings and reasoning that one of ordinary skill in the art would understand
that Abe's and Lin's beam multiplier are known substitutes for one another
and that substituting Lin's beam multiplier for Abe's beam multiplier would
lead to predictable results is in error. Instead, Appellants argue that the
"proposed combination of Abe and Lin would leave Abe's invention
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unsatisfactory for its intended purpose" (Appeal Br. 7) because
incorporating Lin's beam splitter in Abe along optical path L2 or L3 (1)
"would impede the physician's ability to perform laser treatment as it blocks
illumination light that is used to aim the treatment laser on the target tissue"
(id. at 9--10 (emphasis omitted)), (2) "would result in ablation rather than
Abe's intended purpose of coagulation" due to differences in fluences and
wavelengths (id. at 10-11 ( emphasis omitted)), and (3) "would impede the
physician's ability to perform laser treatment due to the significantly
reduced brightness of the aiming beam on the target tissue" (id. at 11-12
( emphasis omitted)).
Appellants' arguments are unpersuasive for several reasons. First,
Appellants' arguments are unsupported attorney argument. See In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (lawyer arguments and
conclusory statements which are unsupported by factual evidence are
entitled to little probative value); In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974) ("Attorney's argument in a brief cannot take the place of
evidence."). Second, Appellants' arguments do not identify the amount of
illumination, fluence, wavelength, and brightness necessary to achieve Abe's
intended purpose and the amounts that would be provided by the proposed
combination of Abe and Lin. Third, we agree with the Examiner that
Appellants' "arguments seem to be directed towards bodily incorporating the
exact beam multiplier of Lin (Fig. 3) into the device of Abe, and that one of
ordinary skill in the art would not know how to do that without making
Abe's device unsatisfactory for its intended purpose or inoperable." Ans.
11. As the Examiner correctly explains "the test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
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Application 11/595,423
into the structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the references,"
but rather "the test is what the combined teachings of the references would
have suggested to those of ordinary skill in the art." Id. (emphasis omitted)
(citing to In re Keller, 642 F.2d 413 (CCPA 1981)).
In the Reply Brief, Appellants raise several new arguments: (1) the
Examiner's finding that Abe discloses "an apparatus with a beam multiplier
achieving temporal separation is erroneous" (Reply Br. 3-5); (2) based
solely on that allegedly erroneous finding concerning the Abe disclosure, the
"Examiner's rationale to support a conclusion of obviousness based on 'a
simple substitution of one known element for another' is flawed" (id. at 6-
7); and (3) the Examiner relies on impermissible hindsight in combining Abe
and Lin (id. at 9-11). Because these arguments could have been presented in
the Appeal Brief to rebut the rejections in the Final Office Action, thus
affording the Examiner an opportunity to consider and respond, the
arguments are untimely. See 3 7 C.F .R. § § 41.3 7 ( c )(iv)( third sentence),
41.41(b)(2); In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000) (noting that
an argument not first raised in the brief to the Board is waived on appeal);
Ex part Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative) (The
Board is not required "to take up a belated argument that has not been
addressed by the Examiner, absent a showing of good cause.").
For the reasons discussed above, the Examiner's rejection of claim 1
under 35 U.S.C. § 103(a) is sustained. Because Appellants do not allege any
other patentable distinctions for claims 3, 6, 9, 26, 27, and 30, we likewise
sustain the Examiner's rejections of these claims under 35 U.S.C. §103(a).
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Re} ection 3: Claim 5
as Unpatentable Over Abe, Lin, and Altshuler
Claim 5 depends from independent claim 1 and additionally requires
that "each discrete spot of the plurality of discrete spots is a straight or
curved line." Appellants argue that because claim 1 "is allowable over Abe
and Lin for reasons discussed above [ with respect to claim 1 ]", and the
"Altshuler reference does not cure the deficiencies of Abe and Lin with
respect to claim 1," "dependent claim 5 is allowable for at least the reason
that it depends from allowable claim 1." Appeal Br. 12. As discussed
above, the rejection of claim 1 is sustained.
Appellants also argue that Altshuler does not disclose a spot that is a
straight line or curved line. Id. According to Appellants, Altshuler discloses
that "[ t ]reatment occurs via a lattice of islets, where the lattice is composed
of various lines," and that "orientation of the lines for the islets ... need not
all be the same." Id. (citing Altshuler ,r,r 151-152, Figs. 4A and 4B).
The Examiner correctly explains that Altshuler discloses that "each
spot, i.e. islet, can be a line or circle or any other shape," and Altshuler's
"cylindrical lens ... forms a 'line focus', i.e. a spot that is a line, on the
tissue." Ans. 15 (citing Altshuler,r,r 36, 54,152,368; Figs. 26A-B). The
Examiner explains that the "orientation of each of these lines is of no
patentable significance, as each of the spots is a line, which is all that is
required by [Appellants'] claims." Id. Even if the claims required that each
discrete spot be arranged in a line, the Examiner explains that Figure 40 of
Altshuler shows a pattern of spots/islets that form straight lines similar to
Appellants' Figures 4A--4I." Id. at 15-16.
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For the reasons above, Appellants' arguments are not persuasive and
the rejection of claim 5 is sustained.
Rejection 4: Claim 7
as Unpatentable Over Abe, Lin, and Gutridge
Claim 7 depends from claim 1. Appellants argue that because claim 1
"is allowable over Abe and Lin for reasons discussed above [ with respect to
claim 1 ]", and the "Gutridge reference does not cure the deficiencies of Abe
and Lin with respect to claim 1," "dependent claim 7 is allowable for at least
the reason that it depends from allowable claim 1." Appeal Br. 13. As
discussed above, the rejection of claim 1 is sustained. Thus, Appellants'
argument is not persuasive and the rejection of claim 7 is sustained.
Rejection 5: Claims 8 and 29
as Unpatentable Over Abe, Lin, and Munnerlyn
Claims 8 and 29 depend from claim 1. Appellants argue that because
claim 1 "is allowable over Abe and Lin for reasons discussed above [ with
respect to claim 1 ]", and the "Munnerlyn reference does not cure the
deficiencies of Abe and Lin with respect to claim 1," dependent claims 8 and
29 are "allowable for at least the reason that [they] depend[] from allowable
claim 1." Appeal Br. 13. As discussed above, the rejection of claim 1 is
sustained. Thus, Appellants' arguments are not persuasive and the rejection
of claims 8 and 29 is sustained.
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Rejection 6: Claim 28
as Unpatentable Over Abe, Lin, and Crow
Claim 2 8 depends from claim 1. Appellants argue that because claim
1 "is allowable over Abe and Lin for reasons discussed above [ with respect
to claim 1 ]", and the "Crow reference does not cure the deficiencies of Abe
and Lin with respect to claim 1," "dependent claim 28 is allowable for at
least the reason that it depends from allowable claim 1." Appeal Br. 13-14.
As discussed above, the rejection of claim 1 is sustained. Thus, Appellants'
argument is not persuasive and the rejection of claim 28 is sustained.
Re} ection 7: Claim 3 8
as Unpatentable Over Abe, Lin, and Simon
Claim 3 8 depends from claim 1. Appellants argue that because claim
1 "is allowable over Abe and Lin for reasons discussed above [ with respect
to claim 1 ]", and the "Simon reference does not cure the deficiencies of Abe
and Lin with respect to claim 1," "dependent claim 38 is allowable for at
least the reason that it depends from allowable claim 1." Appeal Br. 14. As
discussed above, the rejection of claim 1 is sustained. Thus, Appellants'
argument is not persuasive and the rejection of claim 38 is sustained.
DECISION
For the above reasons, the Examiner's rejections of claims 1, 3, 5-9,
26-30, and 38 are AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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