Ex Parte Klaffenbach et al

Patent Trial and Appeal Board

Aug 4, 2017

14072859 (P.T.A.B. Aug. 4, 2017)

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.
14/072,859 11/06/2013 David K. Klaffenbach P05538 (6639-000331-US) 5734
23702 7590 08/08/2017
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EXAMINER
1400 North Goodman Street
Rochester, NY 14609
MATTHEWS, TESSA M
ART UNIT PAPER NUMBER
3733
NOTIFICATION DATE DELIVERY MODE
08/08/2017 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 @ bausch. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID K. KLAFFENBACH, BRIAN McCARY,
JOHN GOEWERT, and DAVID H. MORDAUNT
Appeal 2016-003609
Application 14/072,859
Technology Center 3700
Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal1 under 35U.S.C. § 134 involving claims to
ophthalmic laser illuminators. The Examiner rejected the claims as
anticipated. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-
part.
Statement of the Case
Background
When a surgeon uses a multiple wavelength laser illuminator
simultaneously with a treatment laser, “there is required the use of a filter
eliminating the bandwidth of the treatment laser from the view of the
1 Appellants identify the Real Party in Interest as Bausch & Lomb
Incorporated (see App. Br. 2).
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Application 14/072,859
surgeon, to prevent damage to the surgeon’s eye” (Spec. 1 5). However,
“[filtering out this narrow bandwidth of light corresponding to the treatment
laser then affects the perceived color of light” (id.). In addition, “[t]he
surgeon often wants to change the illuminating light color to better visualize
tissue or to help distinguish one tissue type from another” (Spec. 1 6).
“The present disclosure relates to an ophthalmic illuminator using
multiple wavelength lasers having a graphical user interface to control the
color of the light exiting the illuminator” (Spec. 12).
The Claims
Claims 20 and 21 are on appeal2 and read as follows:
20. An ophthalmic laser illuminator comprising:
multiple laser devices, wherein there are at least three different
wavelengths of light emitted by the multiple laser devices
and each wavelength of light emitted by each laser device
is outside of wavelengths blocked by a safety filter used
for surgical treatment lasers;
a controller for controlling the multiple laser devices;
a graphical user interface operably attached to the controller for
allowing a user to select a plurality of light parameters
for a light beam exiting the illuminator; and
wherein the graphical user interface displays a simulated target
appearance based on data stored in a memory of the
controller corresponding to the plurality of light
parameters selected.
21. An ophthalmic illuminator for use with a surgical
treatment laser, the surgical treatment laser requiring the use of
a safety notch filter corresponding to a nominal wavelength of
the surgical treatment laser, the illuminator comprising:
an illumination source capable of producing multiple and
varying wavelengths of light exiting the illuminator;
2 Claims 1—19 stand allowed by the Examiner (see Final Act. 5).
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an illumination filter for removing a band of wavelengths
from the illumination source corresponding to the safety
notch filter; and
generating a desired color of light exiting the illuminator
after the illumination filter has removed the band of
wavelengths corresponding to the safety notch filter, so
that a light exiting the illuminator will not be effected by
safety notch filter.
The Issue
The Examiner rejected claims 20 and 21 under 35 U.S.C. § 102(e) as
anticipated by Border3 (Final Act. 2—5). Because the analysis for each claim
differs significantly, we will address claims 20 and 21 separately.
Claim 20
The Examiner finds that Border teaches:
a laser illuminator comprising: multiple laser devices
(paragraph [0153] discloses RGB projector, ref. 200 which
includes red, green and blue color projection)... a safety filter
capable of use for surgical treatment lasers (different safety
filters are disclosed . . .);
a controller for controlling the multiple laser devices (paragraph
[0157] discloses optical technologies which may be used to
control the laser devices, such as a beam splitter and redirecting
mirror . . .);
a graphical user interface ... the eyepiece of the device is
configured to function as a graphical user interface . . .
wherein the graphical user interface displays a simulated target
appearance based on data stored in a memory of the controller
corresponding to the plurality of light parameters selected
(paragraphs [0232-238, 247-251, 280, 374-375, 309-310, 552]
3 Border, US 2012/0218172 Al, published Aug. 30, 2012.
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discloses a display or projected image based on data from the
RGB projector which is connected to a the GUI and has various
controls over the display in addition to being able to hav[e]
connectability to memory storage or other peripheral devices).
(Final Act. 2-4).
Appellants contend “Border merely mentions the use of a GUI as a
user interface but Border does not teach a GUI displaying a simulated target
appearance, as claimed” (App. Br. 3). Appellants contend “Border does not
teach or suggest simulating in a GUI what a surgical target’s appearance will
be before actually illuminating the target in surgery, as claimed” {id. at 4).
The issue with respect to the rejection of claim 20 is: Does the
evidence of record support the Examiner’s conclusion that Border teaches a
laser illuminator where “the graphical user interface displays a simulated
target appearance based on data stored in a memory of the controller
corresponding to the plurality of light parameters selected”?
Findings of Fact
1. Border teaches eyepiece electro-optics, specifically that:
The eyepiece may include projection optics suitable to project
an image onto a see-through or translucent lens, enabling the
wearer of the eyepiece to view the surrounding environment as
well as the displayed image. The projection optics, also known
as a projector, may include an RGB LED module that uses field
sequential color. With field sequential color, a single full color
image may be broken down into color fields based on the
primary colors of red, green, and blue and imaged by an LCoS
(liquid crystal on silicon) optical display 210 individually. As
each color field is imaged by the optical display 210, the
corresponding LED color is turned on. When these color fields
are displayed in rapid sequence, a full color image may be seen.
With field sequential color illumination, the resulting projected
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image in the eyepiece can be adjusted for any
chromatic aberrations by shifting the red image
relative to the blue and/or green image and so on.
(Border^ 150).
2. Border teaches: “Images may be projected with a projector 108
onto at least one lens 104 disposed in an opening of the frame 102” (Border
1151).
3. Border teaches “the image 618 that is being projected onto the
lens 602 happens to be an augmented reality version of the scene that the
wearer is seeing, wherein tagged points of interest (POI) in the field of view
are displayed to the wearer” (Border 1247).
4. Border teaches: “In one embodiment, the output of the camera
or optical transmitter may be sent to the eyepiece controller or memory for
storage, for transmission to a remote location, or for viewing by the person
wearing the eyepiece or glasses” (Border 1247).
5. Border teaches the “optical assembly may include a corrective
element that corrects the user’s view of the surrounding environment, an
integrated processor for handling content for display to the user, and an
integrated image source for introducing the content to the optical assembly”
(Border 1251).
6. Border teaches “the processor may provide image processing
to create images with special focusing, such as foveal imaging, where the
focus from one of the lens images is clear, higher resolution, and the like,
and where the rest of the image is defocused, lower resolution, and the like”
(Border 1280).
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Principles of Law
“[DJuring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the [Specification.” In re Hyatt,
211 F.3d 1367, 1372 (Fed. Cir. 2000).
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).
Analysis
We begin with claim interpretation because before a claim is properly
interpreted, its scope cannot be compared to the prior art. In this case, the
dispute centers over the phrase “simulated target appearance” in claim 20
because the Examiner contends “claim 20 does not require simulating in a
GUI what a surgical target’s appearance will be before actually illuminating
the target in surgery” (Ans. 6). Appellants respond “claim 20 claims
displaying a simulated target appearance based on data stored in a memory,
not displaying a recorded image of a target, as the Examiner asserts Border
teaches” (Reply Br. 2).
We find Appellants have the better position. Claim 20 requires a
graphical user interface that is programmed to display “a simulated target
appearance based on data stored in memory” relating to the “light
parameters selected.” When functional language is associated with
programming or some other structure required to perform the function, that
programming or structure must be present in order to meet the claim
limitation. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380
(Fed. Cir. 2011); see also Ultramercial, LLC v. Hulu, LLC, 657 F.3d 1323,
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1328—29 (Fed. Cir. 2011) (“[Programming creates a new machine, because a
general purpose computer in effect becomes a special purpose computer
once it is programmed to perform particular functions pursuant to
instructions from program software.”). Therefore, the specific programming
required by claim 20 is a limitation of the claim.
We reviewed the portions of Border cited by the Examiner and find
the Examiner does not explain how Border discloses a “simulated target
appearance” based on the selected light parameters. While Border clearly
projects images (FF 2), including augmented reality images (FF 3) using
image processing techniques (FF 6), the Examiner does not specifically
explain where Border teaches that the simulated images are based on stored
data “corresponding to the plurality of light parameters selected” as required
by claim 20.
Because the rejection is for anticipation, and we do not find the
Examiner has clearly evidenced that Border teaches the argued limitation,
we are constrained to reverse this rejection.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Border teaches a laser illuminator where “the graphical user interface
displays a simulated target appearance based on data stored in a memory of
the controller corresponding to the plurality of light parameters selected.”
Claim 21
The Examiner finds:
Border discloses a laser illuminator . . .
the illuminator comprising: an illumination source capable of
producing multiple and varying wavelengths of light exiting the
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illuminator (paragraph [0213], ref. 10102 discloses a RGB LED
array and paragraph [0205] discloses that the illumination
module may be configured to emit any number of wavelengths
an illumination filter for removing a band of wavelengths from
the illumination source corresponding to the safety notch filter
(different safety filters are disclosed and include paragraph
[0157] an optical filter, paragraphs [0175-176], wavelength-
selective filter, paragraph [0269], polarizing filter and
paragraph [0312] wherein the filters are capable of removing
bands of wavelengths . . .
[and] RGB LED lasers are capable of use to generate a desired
color after passing through a filter, as noted above, such that the
light exiting the illuminator will not be effected by a safety
notch filter, wherein the disclosed components are capable of
interacting to generate a specific color of light without
disruption.
(Final Act. 4—5).
The issue with respect to the rejection of claim 21 is: Does the
evidence of record support the Examiner’s conclusion that Border teaches a
laser illuminator with “an illumination filter for removing a band of
wavelengths from the illumination source corresponding to the safety notch
filter”?
Findings of Fact
7. Border teaches “a laser illumination system 9200” (Border
1204) where the “illumination module may be configured to emit any
number of wavelengths including one, two, three, four, five, six, or more, the
wavelengths spaced apart by varying amounts, and having equal or unequal
power levels” (Border 1205).
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8. Figure 89 of Border is reproduced below:
FIG. 89 is a block diagram of an illumination module,
according to an embodiment of the invention. Illumination
module 8900 comprises an optical source, a combiner, and an
optical frequency converter, according to an embodiment of the
invention. An optical source 8902, 8904 emits optical radiation
8910, 8914 toward an input port 8922, 8924 of a combiner
8906. Combiner 8906 has a combiner output port 8926, which
emits combined radiation 8918.
(Border^ 174).
9. Border teaches that “optical sources 8902 and 8904 may be
elements of an array of semiconductor lasers . . . Combiner 8906 may
include . . . assemblies of wavelength-selective filters” (Border! 176).
10. Border teaches “illumination modulation may be accomplished
through filtering ... For example, filtering techniques may be employed
that allow the intensity and or color of the light to be changed such that the
optimal or desired illumination is achieved” (Border ! 312).
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11. The Specification teaches the “illuminator designs are intended
to work with a large set of safety filters” (Spec. 143), but the Specification
does not describe any specific filter types or structures.
12. Border teaches the “system may also utilize other optical
components, such as a tunable optical filter (e.g. with a deformable
membrane actuator)” (Border 1157).
Principles of Law
The Examiner has the burden of providing reasonable proof that a
claim limitation is an inherent characteristic of the prior art. In re Best, 562
F.2d 1252, 1254—55 (CCPA 1977). The Examiner meets this “burden of
production by ‘adequately explaining the shortcomings it perceives so that
the applicant is properly notified and able to respond.’” In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011) (quoting Hyatt v. Dudas, 492 F.3d 1365, 1370
(Fed. Cir. 2007)). The burden of proof then shifts to the applicant “to prove
that the subject matter shown to be in the prior art does not possess the
characteristic relied on.” Best, 562 F.2d at 1254—55; In re Schreiber, 128
F.3d 1473, 1478 (Fed. Cir. 1997) (holding that once the Examiner
established a prima facie case of anticipation, the burden of proof was
properly shifted to the inventor to rebut the finding of inherency).
Analysis
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Final Act. 4—5; FF 1—10, 12) and agree
that claim 21 is anticipated by Border. We address Appellants’ arguments
below.
Appellants contend “Border does not teach or suggest the claimed
illumination filter for removing a band of wavelengths from the illumination
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source corresponding to the safety notch filter nor the claim limitation that a
light exiting the illuminator will not be affected by safety notch filter” (App.
Br. 5). Appellants contend “inherency is of no help with claim 21 because
Border does not mention filtering to remove wavelengths corresponding to
the safety notch filter as claimed” (App. Br. 6).
We are not persuaded. Border teaches a device that comprises an
illumination source capable of producing multiple, varying wavelengths of
light (FF 7—8) and teaches the device includes an illumination filter that
“may include . . . assemblies of wavelength-selective filters” (FF 9). Border
expressly teaches that “filtering techniques may be employed that allow the
. . . color of the light to be changed such that the optimal or desired
illumination is achieved” (FF 10).
Thus, not only does Border teach the two structural requirements of
claim 21, the illumination source and illumination filter, but Border also
teaches the functional requirement of using the filter for “generating a
desired color of light.”
While Border does not specifically discuss a “safety notch filter,” this
argument is not persuasive for two reasons. First, in the context of claim 21,
the “safety notch filter” limitations represent an intended use for the
illuminator, but impose no specific structural requirements. “[AJpparatus
claims cover what a device is, not what a device does.'” Hewlett-Packard
Co. v. Bausch &Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). Here, the
apparatus is an illuminator with an illumination source and an illumination
filter, where the filter may control the final light color exiting the
illuminator, all limitations disclosed by Border (FF 7—10).
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Second, even if we treated the functional recitation of “for removing a
band of wavelengths from the illumination source corresponding to the
safety notch filter” as having some structural consequence, Schreiber
teaches that writing a claim that mixes structural and functional limitations
comes at a price. In re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997).
(“[CJhoosing to define an element functionally, i.e., by what it does, carries
with it a risk.”). The price is that when the structural limitations are met by
a single prior art reference, and when the examiner “has reason to believe”
that the prior art reference inherently teaches the functional limitation, the
burden shifts to the patent applicant to show that the functional limitation
cannot be met by the single prior art reference.
We find the Examiner has provided evidence to support the position
that the illumination filters disclosed by Border inherently meet the
structural requirements of claim 21, in that they are capable of removing
desired bands of wavelengths (FF 10). Neither the Specification (FF 11) nor
claim 21 specifically identify any particular wavelength that corresponds to
a safety notch filter, nor do Appellants identify any desirable wavelength
that Border could not filter with the disclosed filters (FF 9, 10, 12).
Appellants provide no evidence in rebuttal that shows that the
illumination filters of Border would not be capable of the required function,
nor do Appellants point to any teaching in their Specification of a specific
illumination filter that distinguishes their illuminator from the illuminator of
Border.
Conclusion of Law
The evidence of record support the Examiner’s conclusion that Border
teaches a laser illuminator with “an illumination filter for removing a band
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of wavelengths from the illumination source corresponding to the safety
notch filter.”
SUMMARY
In summary, we reverse the rejection of claim 20 under 35 U.S.C.
§ 102(e) as anticipated by Border.
We affirm the rejection of claim 21 under 35 U.S.C. § 102(e) as
anticipated by Border.
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-IN-PART
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