Ex Parte Bisch et al

Patent Trial and Appeal Board

Jan 14, 2015

11071087 (P.T.A.B. Jan. 14, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MICHAEL E. BISCH and BRUCE R. COCHRAN
__________

Appeal 2012–007208
Application 11/071,087
Technology Center 3700
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Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
CHRISTOPHER W. PAULRAJ, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to an
ophthalmic surgical system and method of using the system. The Examiner
rejected the claims as anticipated and as obvious. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.

1 Appellants identify the Real Party in Interest as Bausch & Lomb
Incorporated (see App. Br. 2).
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Statement of the Case
Background
“[T]he present invention is directed to an ophthalmic surgical system
having a user interface that presents a guided and filtered set–up for the
surgical system” (Spec. 1 ¶ 1).
The Claims
Claims 1–30 are on appeal. Independent claim 1 is representative and
reads as follows:
1. An ophthalmic surgical system comprising:
at least one aspiration device for aspirating fluids and
tissue from a surgical site;
at least one surgical handpiece for performing a
surgical function;
a control unit connected to each of the aspiration
device and surgical handpiece for controlling
the operation of each device and handpiece; and
a user interface forming a portion of the control unit
for guiding a user by prompting the user to
answer a series of questions and the control unit
controlling the device and handpiece based on
the user’s answers.

The Issues
A. The Examiner rejected claims 1, 2, 6–11, 14–23, and 27–30 under 35
U.S.C. § 102(b) as anticipated by Baum2 (Ans. 4–10).
B. The Examiner rejected claims 3, 12, and 24 under 35 U.S.C. § 103(a)
as obvious over Baum and Quiroz–Mercado3 (Ans. 10–11).

2 Baum et al., US 5,249,121, issued Sept. 28, 1993.
3 Quiroz-Mercado, H., US 2004/0092861 A1, published May 13,
2004.
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C. The Examiner rejected claims 4 and 25 under 35 U.S.C. § 103(a) as
obvious over Baum and Cochran4 (Ans. 11).
D. The Examiner rejected claims 5, 13, and 26 under 35 U.S.C. § 103(a)
as obvious over Baum and Conley5 (Ans. 11–12).
A. 35 U.S.C. § 102(b) over Baum
The Examiner finds that:
Baum discloses an ophthalmic surgical system . . . [which]
comprises at least one aspiration device 140 for aspirating
material . . . during the process . . . fluid and tissue are
aspirated out of the eye into a collection container . . . one
surgical handpiece 100/110 for performing a surgical
function . . . a control unit 40 connected to each of the
aspiration device 140 and surgical handpiece 110 for
controlling the operation of each device and handpiece . . . a
user interface 50/52–62 forming a portion of the control unit
. . . the user interface provides the user with a variety of
options for the procedure that is to be performed. Once a
procedure is selected, the user interface illuminates another
set of options that correspond to the different functions
available for that procedure

(Ans. 4–5).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Baum anticipates claim 1?
Findings of Fact
1. The Specification teaches that “user interface 48 also preferably
includes a filtering presentation of options to the user based on the answers
provided by the user. That is to say the filtering presentation intelligently

4 Cochran et al., US 6,055,458, issued Apr. 25, 2000.
5 Conley et al., US 5,242,404, issued Sept. 7, 1993.
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makes available only those options that are still relevant based on the
previous answer provided by the user” (Spec. 4 ¶ 13).
2. Baum teaches that an aspiration device where “[v]itrectomy
probe 140 includes a hollow needle 141 having an inner tube which
reciprocates to cut intraocular material sucked in a small hole near the tip of
the needle. . . . The suction part of this instrument is also coupled to the
collection container 72 by tubing 142” (Baum, col. 7, ll. 22–30).
3. Baum teaches that “Phaco fragmentation handpiece 110 is a
conventional piezoelectric device for disintegrating hard objects such as
intraocular cataractous material utilizing ultrasonic (‘US’) energy
transmitted to its needle 112” (Baum, col. 6, ll. 62–65).
4. Baum teaches that the “microsurgical control system 40 is
capable of operating a number of different microsurgical instruments”
(Baum, col. 6, ll. 43–45).
5. Baum teaches that integration of these surgical
functions into a single console 46 represents a formidable
organizational challenge since the system 40 must provide
the operator(s) with a straightforward means of invoking all
of the different modes, the functions under each mode, and a
way to adjust the various set–up and operating parameters
associated with various electronic control circuits and
pneumatic control systems. The CRT display and
pushbutton arrangement assists system flexibility greatly in
this regard since it is possible to reprogram the functions of
the switches 52 in accordance with the selected anterior
segment or posterior segment procedure or with the selected
utility functions, such as establishing set–up values or
configuring the system for a particular surgeon’s use.

(Baum, col. 10, ll. 43–57).
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6. Figure 13 of Baum is reproduced below:

FIG. 13 is a view of the remote control console 370 which
has the anterior card 780a inserted therein. As may be seen,
the identification tab 880 projects outside of the slot 784 so
that the user may know what legend card is in the slot
whether or not the controller is plugged in and powered up.
For convenience, all of the legend fields 864–870 are shown
in FIG. 13 as being illuminated. In practice, only those
fields associated with a particular mode of operation which
has been selected would be illuminated. Illumination of
such fields would end when the mode was deselected. In the
Storz DAISY console, the CRT display includes similar
fields and legends, although there are not as many buttons in
the button columns 54 and 56, and bidirectional endless
digital potentiometers were provided instead of the button
pairs 58 for adjusting parameters.

(Baum, col. 26, ll. 17–32).
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7. Figure 11 of Baum is reproduced below:

FIG. 11 shows a legend card 780a with one possible group
of legends thereon . . . While these legends are in the
English language, those skilled in the art will appreciate that
the legends may be in a foreign language or universal
symbols which would be readily recognized independent of
the language of the user. The card 780a shown in FIG. 11
represents a most of the legends which are displayed upon
the display screen 50 of the main console 46 when various
anterior segments surgical procedures are performed.
Similarly, the legend card 780p contains a number of
different legends which are related to various surgical
procedures which are performed during posterior segments
operations. . . . A number of the legends on legend card
780a or 780p may be readily understood by referring to this
previous discussion. For example, the legend 864a is
illuminated when the irrigation mode is selected, the legend
864b is illuminated when the irrigation/aspiration mode is
selected, the legend 864c is illuminated when the phaco
mode is selected . . .

(Baum, col. 23, ll. 55–62).
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8. Baum teaches that:
When irrigation mode, irrigation/aspiration mode, or
vitrectomy mode is selected, the field 866d will light up, so
that the user can prime the probe or handpiece to be used.
Once the button 716d is pushed, this selects the irrigation
prime function and the field 866d begins to blink, and the
‘aspiration prime’ field 866e is now fully backlit to indicate
to the user that the aspiration tubing should be primed.

(Baum, col. 24, ll. 15–24).
Principles of Law
The Examiner bears the initial burden of establishing a prima facie
case of anticipation. In re King, 801 F.2d 1324, 1326–27 (Fed. Cir. 1986).
Anticipation under 35 U.S.C. § 102 requires that “each and every element as
set forth in the claim is found, either expressly or inherently described, in a
single prior art reference.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
1999).
“An essential purpose of patent examination is to fashion claims that
are precise, clear, correct, and unambiguous. Only in this way can
uncertainties of claim scope be removed, as much as possible, during the
administrative process.” In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989).
Analysis
We begin our analysis with claim interpretation, since it is a necessary
prerequisite before a claim can be compared to the prior art. In this case, the
phrase “user interface . . . for guiding a user by prompting the user to answer
a series of questions” in claims 1, 10, and 18 requires interpretation.
During prosecution, claim terms are given their broadest reasonable
interpretation as they would be understood by persons of ordinary skill in the
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art in the light of the Specification. Therefore, we first turn to the
Specification to interpret the meaning of the phrase. While the Specification
does not define the “user interface” phrase, the Specification does teach “a
filtering presentation of options . . . [that] intelligently makes available only
those options that are still relevant based on the previous answer provided by
the user” (Spec. 4 ¶ 13-14; FF 1).
Appellants contend that “it is clear that prompting a user to answer a
series of questions is not the same as presenting a user with several buttons
labeled with individual modes” (App. Br. 4). Appellants contend that
“Baum does not guide a user with a series of questions, but rather the user
must have prior working knowledge of the system of Baum to proceed and
the user is not guided, as claimed” (App. Br. 5).
The Examiner responds that “[p]roviding the user with various
choices is prompting the user to answer the question, ‘which do you want?’”
(Ans. 12).
We conclude that the Examiner has the better position. Consistent
with the filtered presentation of options in the Specification (FF 1), Baum
teaches a surgical system (FF 2–4) with a user interface (FF 5) which
presents labeled textual buttons for user selection (FF 6–8). Baum explains
that these labels (termed “legends” in Baum) may be in any desired language
or symbol set (FF 7) and represent sequential sets of selections (i.e.,
prompts) for navigating the hierarchy of operations of the Baum interface
(FF 5–8).
While Appellants correctly note that the text presented on the Baum
interface does not explicitly include a question mark placed after the labels
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on the buttons used for selection, this difference is solely one of printed
matter, which does not impart a meaningful distinction for patentability.
That is, we agree with the Examiner that the presentation of a series of
alternatively labeled buttons is reasonably interpreted as an invitation to the
user to select a desired button based on the label. Whether the text on Figure
11 utilizes the spare terms “irrigation” or “vitrectomy”, or displays the
complete questions “Do you select irrigation?” and “Do you select
vitrectomy?”, the distinction is solely based on a difference in the printed
matter being displayed on the device, and not necessarily any difference in
device structure that is required.
In Ngai, the court confronted a similar fact pattern. The applicant in
Ngai claimed a kit with reagents for performing a method and instructions
on how the method was to be performed. See In re Ngai, 367 F.3d 1336,
1337 (Fed. Cir. 2004). The Ngai court concluded that “the printed matter in
no way depends on the kit, and the kit does not depend on the printed matter.
All that the printed matter does is teach a new use for an existing product.”
Id. at 1339. With regard to method claim 10, the Court in King
Pharmaceuticals found that the Ngai rationale “extends to the situation
presented in this case, wherein an instructional limitation is added to a
method, as opposed to a product, known in the art.” King Pharmaceuticals,
Inc. v. Eon Labs, Inc., 616, F.3d 1267, 1279 (Fed. Cir. 2010).
The same logic applies in the instant case since “prompting the user to
answer a series of questions” in claims 1, 10, and 18 represents printed
matter which does not necessarily relate functionally to the user interface.
As in King Pharmaceuticals at 1279 “[i]rrespective of whether the patient is
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informed . . . the actual method . . . is the same.” Id. The same result is
obtained for the claimed invention as the method of selecting buttons
through a menu as taught by Baum, differs from Appellants’ claimed
invention only in the textual content of the labels on the buttons. These
question prompts, as claimed, do not necessarily differ in structure or
function from the label prompts disclosed in Baum (FF 6–7). As we have
already pointed out, the only difference between the claimed “question” and
Baum’s label is the specific text printed on the label, where the labels lack a
question mark.
We also agree with the Examiner that when Baum only illuminates
“fields associated with a particular mode of operation” (FF 6), Baum is
providing guidance to the user regarding which fields may be selected (see
Ans. 15). Baum teaches an example of when “irrigation mode . . . is
selected, the field 866d will light up, so that the user can prime the probe or
handpiece to be used. Once the button 716d is pushed, this selects the
irrigation prime function and the field 866d begins to blink” (Baum, col. 24,
ll. 15–20; FF 8). Thus, after the user is prompted to select irrigation mode,
further guidance is provided to the user for additional selections (FF 8).
Appellants contend that
a novice user might see 864e and 868b–2 both labeled as
“bipolar”, yet that user would not be able to select the
bipolar mode through pushing buttons associated with 868b–
2. The button associated with 864e must be pushed and then
the buttons associated with 868b–2 allow the bipolar level to
be increased or decreased. However, the novice user would
not know this without prior training or guidance.

(Reply Br. 1–2).
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We are not persuaded. This argument goes to the quality of the
guidance, not the existence of guidance itself. That is, even in Appellants
own examples, sufficiently vague choices would require further guidance or
training. Thus, a user unfamiliar with the different aspiration systems in
Figure 4 of the Specification would need prior training in order to properly
select the correct aspiration system. The claims certainly do not require any
specific level of guidance and do not require that the user be untrained or
unfamiliar with the device or system. See In re Self, 671 F.2d 1344, 1348
(CCPA 1982) (“[A]ppellant’s arguments fail from the outset because . . .
they are not based on limitations appearing in the claims.”)
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that Baum
anticipates claim 1.
B–D. 35 U.S.C. § 103(a) rejections
Appellants do not argue separately the claims in these obviousness
rejections. Having affirmed the anticipation rejection of claims 1, 10, and 18
over Baum for the reasons given above, we also find that the combinations
with Quiroz–Mercado, Cochran, and Conley render the remaining claims
obvious for the reasons given by the Examiner (see Ans. 10–12).
SUMMARY
In summary, we affirm the rejection of claims 1, 10, and 18 under 35
U.S.C. § 102(b) as being anticipated by Baum. Pursuant to 37 C.F.R.
§ 41.37(c), claims 2, 6–9, 11, 14–17, 19–23 and 27–30 fall with claim 1, as
these claims were not argued separately.
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We affirm the rejection of claims 3, 12, and 24 under 35 U.S.C.
§ 103(a) as obvious over Baum and Quiroz–Mercado.
We affirm the rejection of claims 4 and 25 under 35 U.S.C. § 103(a)
as obvious over Baum and Cochran.
We affirm the rejection of claims 5, 13, and 26 under 35 U.S.C.
§ 103(a) as obvious over Baum and Conley.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED
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