Rolando Toyos et al.

Patent Trials and Appeals Board

Sep 13, 2021

2021002839 (P.T.A.B. Sep. 13, 2021)

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.
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Application 16/436,220

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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.
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Application 16/436,220

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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.
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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.
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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.”).
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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

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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