Rolando Toyos et al.Download PDFPatent Trials and Appeals BoardSep 13, 20212021002839 (P.T.A.B. Sep. 13, 2021) 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. 16/436,220 06/10/2019 Rolando Toyos 57TCA10202PA 4056 25006 7590 09/13/2021 DINSMORE & SHOHL LLP 900 WILSHIRE DRIVE SUITE 300 TROY, MI 48084 EXAMINER BALDWIN, NATHAN AARON ART UNIT PAPER NUMBER 3792 NOTIFICATION DATE DELIVERY MODE 09/13/2021 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): MichiganPatTM@dinsmore.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROLANDO TOYOS and MELISSA TOYOS Appeal 2021-002839 Application 16/436,220 Technology Center 3700 Before CHARLES N. GREENHUT, MICHELLE R. OSINSKI, and JEREMY M. PLENZLER, 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 1–5 and 7–18. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on August 23, 2021. We AFFIRM. 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 the named inventors. Appeal Br. 2. Appeal 2021-002839 Application 16/436,220 2 CLAIMED SUBJECT MATTER The application “relates to increasing secretion of meibum in a subject in need thereof.” Spec. ¶ 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A process for increasing secretion of meibum in a subject in need thereof, consisting essentially of: applying light emitted from a treatment apparatus to an outer surface of one or more eyelids of the subject, the light emitted from the treatment apparatus having a predetermined set of photomodulating parameters, the light emitted from the treatment apparatus consisting of one or more wavelengths from 380 nm+/- 10 nm to 500 nm+/- 10 nm, and increasing secretion of meibum in the subject to promote normal meibum passage through a duct thereby; wherein the one or more eyelids of said subject are not heated above 2 degrees Celsius from physiological temperature. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Kelleher US 2015/0057701 A1 Feb. 26, 2015 Toyos US 2015/0174425 A1 June 25, 2015 Zhu et al. “Antimicrobial Blue Light Therapy for Infectious Keratitis: Ex Vivo and In Vivo 27 Studies” IOVS Vol. 58, No.1, 586−593 (2017) REJECTIONS Claims 1–5, 7–14, 17, and 18 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by Toyos. Claims 1–5, 7–14, 17, and 18 are rejected under 35 U.S.C. § 103 as obvious over Toyos. Claim 15 is rejected under 35 U.S.C. § 103 as being unpatentable over Toyos and Zhu. Appeal 2021-002839 Application 16/436,220 3 Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Toyos and Kelleher. OPINION Anticipation The claims are directed to a process. The Examiner finds that Toyos anticipates claim 1, for example, because it includes a device that is capable of providing a wide range of wavelengths for its emitted light. Final Act. 4. Although in some circumstances such a showing might suffice to establish anticipation of an apparatus claim, for purposes of relying on a prior art device to anticipate a method claim it must also be demonstrated that the prior art device, in its normal and usual operation, would necessarily perform the method claimed. In re King, 801 F.2d 1324, 1326–7 (Fed. Cir. 1986). The Examiner, however, provides no findings related to the device of Toyos being operated at the recited wavelengths for the treatment recited in claim 1, and provides no explanation as to why that device necessarily performed the recited process when used. The mere possession of an apparatus does not teach or suggest all the possible processes to which it may be adapted. Carnegie Steel Co v. Cambria Iron Co 185 U.S. 403, 424–5 (1902). Accordingly, we do not sustain the Examiner’s decision to reject claims 1–5, 7–14, 17, and 18 as anticipated by Toyos. Appeal 2021-002839 Application 16/436,220 4 Obviousness Appellant argues claims 1–5, 7–14, 17, and 18 as a group.2 We select claim 1 as representative. Claims 2–5, 7–14, 17, and 18 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Claims 15 and 16 depend from claim 1, and Appellant does not provide separate arguments for the patentability of those claims. The sole disputed issue concerns whether it would have been obvious to operate the device of Toyos at the recited wavelength range. The Examiner provides a number of reasons to support the obviousness rejection, including that it would also be obvious as a matter of routine optimization, and that such a “lower part of the range/smaller wavelengths within this range . . . are further from infrared range of light and less likely to raise the skin temperature see Toyos [0040].” Final Act. 5 (emphases omitted). We are not apprised of error in the Examiner’s decision to reject claim 1. Initially, we note that the first named inventor in Toyos is the same as that of the present application. Appellant also relies on the use of a known device, such as that in Toyos, for its application. Indeed, Appellant has no disclosure in the present application, whatsoever, with respect to the particular device used. There should be no reasonable dispute that the wavelength applied is a known result-effective variable. Appellant does not present any contentions in this regard. Indeed, Toyos, itself, provides such evidence through its disclosure. Moreover, throughout prosecution, which, as noted above, 2 Appellant includes a separate heading for claim 2, but no separate argument. Appeal Br. 11. Appeal 2021-002839 Application 16/436,220 5 involved the same first named inventor (and also the same attorney as the instant proceeding), the focus was on the light wavelength range being the controlling parameter. The first independent claim from the patent that ultimately issued from Toyos (US 10,272,256 B2) recites: 1. A process for improving meibomian gland function in a subject in need thereof comprising: applying light emitted from a treatment apparatus to an outer surface of one or more eyelids of said subject, said light having a predetermined set of photomodulating parameters comprising emitting light, said light consisting of one or more wavelengths from 605 nm+/−10 nm to 700 nm+/−10 nm, and increasing secretion of meibum transfer through a meibomian duct; wherein the one or more eyelids of said subject are not heated above 2 degrees Celsius from physiological temperature. The only difference between the claim reproduced above and that at issue in the instant appeal is the wavelength range. When asked at oral hearing what the difference was between how the processes work, including whether one has benefits compared to the other, Appellant’s only response was that they are different. See Tr. 8:3–9, 11:9–12:1. At the time of invention of the Toyos reference, Appellant may have discovered the benefits of controlling wavelength ranges in its process and identified that parameter is a result effective variable. But now, it is a known result-effective variable based on the teachings of Toyos. That Appellant found a new range of values, itself, does not make that discovery patentable. See In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Circ. 2012) (“A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.”). Appeal 2021-002839 Application 16/436,220 6 Nevertheless, “[t]he outcome of optimizing a result-effective variable may still be patentable if the claimed ranges are ‘critical’ and ‘produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art.’” Id. (quoting In re Aller, 220 F.2d 454, 456 (CCPA 1955)). Appellant provides no reason to believe the claimed ranges are critical or produce anything more than a difference in degree. Appellant alleges there would be no reasonable expectation of success. See, e.g., Appeal Br. 10. As noted above, however, Appellant employs its purported invention using a known device similar to that disclosed in Toyos. And, as also noted above, Toyos, itself, expressly suggests the desirability of lower wavelength usage. See Toyos ¶ 40. Based on the record before us, which lacks any meaningful dispute regarding the Examiner’s optimization reasoning, such as evidence regarding criticality or unexpected results, we see no error in the Examiner’s rejection of claims 1–5 and 7–18 under 35 U.S.C. § 103. CONCLUSION The Examiner’s anticipation rejection is reversed. The Examiner’s obviousness rejections are affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–5, 7–14, 17, 18 102(a)(1) Toyos 1–5, 7–14, 17, 18 1–5, 7–14, 17, 18 103 Toyos 1–5, 7–14, 17, 18 Appeal 2021-002839 Application 16/436,220 7 15 103 Toyos, Zhu 15 16 103 Toyos, Kelleher 16 Overall Outcome 1–5, 7–18 TIME PERIOD FOR RESPONSE 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)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation