Bausch & Lomb Incorporated

Patent Trials and Appeals Board

Oct 22, 2020

2020001263 (P.T.A.B. Oct. 22, 2020)

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.
15/293,562 10/14/2016 Brian D. McCary P05287 6639-000323-
US-COB
7391
23702 7590 10/22/2020
Bausch & Lomb Incorporated
1400 North Goodman Street
Rochester, NY 14609
EXAMINER
PONTON, JAMES D
ART UNIT PAPER NUMBER
3783
NOTIFICATION DATE DELIVERY MODE
10/22/2020 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 BRIAN D. McCARY, TOH SENG GOH,
and JAMES TAYLOR PERKINS

Appeal 2020-001263
Application 15/293,562
Technology Center 3700
____________

Before JAMES P. CALVE, JAMES A. WORTH, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–23. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Bausch &
Lomb Incorporated. Appeal Br. 2.
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BACKGROUND
The Specification discloses that “[t]he present embodiment relates to
an ophthalmic surgical device for the removal of vitreous and other tissue
from a patient’s eye, and more particularly, to an ophthalmic surgical device
that vibrates a cannula with at least one port to disrupt and aspirate vitreous
and other tissue from the eye.” Spec. ¶ 2.
ILLUSTRATIVE CLAIM
Claim 1 is the only independent claim on appeal and recites:
1. An ophthalmic surgical device comprising:
a housing having a distal end and a proximal end;
a cannula attached to the housing distal end and having a
distal tip with at least one port in communication with a lumen
extending through the cannula and in communication with an
aspiration path in the housing;
a vibration source held within the housing for vibrating the
distal tip of the cannula for assisting in vitreous and other tissue
removal from a patient’s eye;
wherein the vibration source is configured to create a peak
velocity of the distal tip that is equal to or less than a potential
maximum flow velocity of water through the at least one port
caused by a pressure differential between an intraocular pressure
of the eye and a pressure within the cannula lumen that is less
than the intraocular pressure.
Appeal Br. 6 (Claims App.).
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REJECTIONS
1. The Examiner rejects claims 1, 2, 6–11, 13–15, and 17–23 under
35 U.S.C. § 103(a) as unpatentable over Anis2 in view of Zacharias3 and
Kadziauskas.4
2. The Examiner rejects claim 3 under 35 U.S.C. § 103(a) as unpatentable
over Anis in view of Zacharias, Kadziauskas, and Hood.5
3. The Examiner rejects claims 4 and 5 under 35 U.S.C. § 103(a) as
unpatentable over Anis in view of Zacharias, Kadziauskas, and Banko.6
4. The Examiner rejects claim 12 under 35 U.S.C. § 103(a) as unpatentable
over Anis in view of Zacharias, Kadziauskas, and Barrett.7
5. The Examiner rejects claim 16 under 35 U.S.C. § 103(a) as unpatentable
over Anis in view of Zacharias, Kadziauskas, and Mulvihill.8
DISCUSSION
Rejection Over Anis, Zacharias, and Kadziauskas
As discussed below, we are persuaded of reversible error by
Appellant’s argument that the Examiner has not established that the
combination of the art of record proposed would result in a device as recited
in claim 1.
The Examiner finds that Anis teaches an ophthalmic surgical device
including a housing, a cannula having a distal tip with a port, and a vibration

2 Anis et al., US 6,007,513, iss. Dec. 28, 1999.
3 Zacharias, US 2007/0088376 A1, pub. Apr. 19, 2007.
4 Kadziauskas et al., US 2006/0253056 A1, pub. Nov. 9, 2006.
5 Hood, US 4,989,583, iss. Feb. 5, 1991.
6 Banko, US 3,805,787, iss. Apr. 23, 1974.
7 Barrett, US 2008/0188792 A1, pub. Aug. 7, 2008.
8 Mulvihill et al., US 2009/0069830 A1, pub. Mar. 12, 2009.
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source for vibrating the distal tip for assisting in tissue removal from a
patient’s eye. Non-Final Act. 2 (citing Anis Figs. 6–14, 19; col. 6, ll. 1–8;
col. 14, l. 62; col. 15, l. 14–28). The Examiner also finds that Anis discloses
adjusting vibration speed and the aspiration rate. Id. at 2–3 (citing Anis col.
4, l. 62–col. 5, l. 5; col. 9, ll. 45–58, col. 17, l. 63–col. 18, l. 11). The
Examiner acknowledges that:
Anis is not explicit to wherein the vibration source is configured
to create a peak velocity of the distal tip that is equal to or less
than a potential maximum flow velocity of water through the at
least one port caused by a pressure differential between an
intraocular pressure of the eye and a pressure within the cannula
lumen that is less than the intraocular pressure.
Id. at 3. However, the Examiner finds that “Zacharias discloses a precision
surgical system and teaches” a control unit that provides proportional control
of vibration. Id. (citing Zacharias ¶¶ 0010, 0014, 0054, 0055). The
Examiner determines
[i]t would have been obvious to one having ordinary skill in the
art to modify Anis in view of Zacharias and provide Anis with a
proportionally controlled means for activating the vibration
(such as a foot-pedal) and/or rotation of Anis in order to provide
a surgeon with greater control over how much vibration and/or
rotation occurs with the tip of Anis’ cannula.
Id. Further, the Examiner relies on Kadziauskas as disclosing “multi-
purpose phacoemulsification needles that have port diameters . . . ‘chosen so
as to restrict the aspiration flow rate . . . to be at or below a predetermined
value.’” Id. at 3 (citing Kadziauskas ¶ 31; Figs. 1, 2, 4–6). The Examiner
determines that it would have been obvious to make the port of Anis with a
size similar to that taught by Kadziauskas “in order to selectively restrict the
aspiration flow rate.” Id.
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Further, the Examiner finds that the sizes of the ports taught by
Kadziauskas are similar to those taught in the present application. Thus, the
Examiner concludes:
The resulting modified version of Anis, which includes
proportionally-controlled vibration (added in view of Zacharias
above), as well as a diameter for the at least one port with a value
described by Kadziauskas above, could thus be considered as
having a vibration source that is configured to create a peak
velocity of the distal tip that is equal to or less than a potential
maximum flow velocity of water through the at least one port
caused by a pressure differential between an intraocular pressure
of the eye and a pressure within the cannula lumen that is less
than the intraocular pressure. This is due to the modified version
of the device having a port size similar to what is described in
applicant’s specification (i.e. a diameter than can be used to
provide the claimed effect) as well as a the vibration source being
capable of producing low levels of vibration.
Id. at 4. Based on the foregoing, the Examiner finds that “[t]he resulting
modified version of Anis therefore possesses a size for the at least one port
that is within ranges disclosed by the appellant as capable of fulfilling the
claimed limitations, operates within the same medium as appellant’s
invention . . . and also possesses a proportionally controlled vibration
source.” Ans. 5.
Claim 1 requires, inter alia, that “the vibration source is configured to
create a peak velocity . . . equal to or less than a potential maximum flow
velocity of water through the . . . port caused by a pressure differential
between an intraocular pressure of the eye and a pressure within the cannula
lumen that is less than the intraocular pressure.” The Examiner does not rely
on any evidence from the art of record that teaches a vibration source that is
actually configured to perform this function. Rather, the Examiner finds that
because the art teaches a proportionally controlled vibration source and
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needles with port diameters similar to those provided in the present
disclosure, the combination with Anis would be capable of performing this
function. Yet, we find this is not sufficient to show obviousness in this case.
Specifically, we find that the claims require more than a vibration source
capable of performing the claimed function, i.e., the claims require that the
vibration source is specifically designed to accomplish the function claimed.
See Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d. 1335, 1349
(Fed. Cir. 2012) (noting that claim language “configured to” is construed
more narrowly than “capable of” and holding that where claim language
including the phrase “adapted to” is to be construed consisted with
“configured to” language it requires that the structure must be “designed or
configured to accomplish the specified objective, not simply that [it] can be
made to serve that purpose.”) This interpretation of the claim is consistent
with Appellant’s written disclosure, which provides extensive discussion
regarding the design considerations and major factors required in
configuring Appellant’s vibration source based on a particular distal tip of
the device. See, e.g., Spec. ¶¶ 65, 82, 84, 120–153.
Thus, we agree with Appellant that
[t]he fact that Anis and other prior art such as Zacharias teaches
varying vibration speed is not enough to provide motivation to
one skilled in the art to create a peak velocity of the distal tip that
is equal to or less than a potential maximum flow velocity of
water through the at least one port caused by a pressure
differential between an intraocular pressure of the eye and a
pressure within the cannula lumen that is less than the intraocular
pressure, as claimed.
Reply Br. 2. We also agree that the Examiner has not provided evidence
showing that the art recognized “any connection between the distal tip
velocity and the maximum flow velocity of water for allowing the effective,
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safe removal of vitreous from the eye when close to the retina,” which might
indicate that the proposed modification to Anis would result in a device
configured as claimed. Id.
Based on the foregoing, we are persuaded of error in the rejection of
claim 1. For the same reasons, we are persuaded of error in the rejection of
dependent claims 2, 6–11, 13–15, and 17–23. Accordingly, we do not
sustain the rejection of claims 1, 2, 6–11, 13–15, and 17–23.
Remaining Rejections
With respect to the rejections of claims 3–5, 12, and 16, the Examiner
does not provide further reasoning or findings that cures the deficiency in
the rejection of independent claim 1, as discussed above. Accordingly, we
also do not sustain the rejection of claims 3–5, 12, and 16.
CONCLUSION
We REVERSE the rejections of claims 1–23.
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 2, 6–11,
13–15, 17–
23
103(a) Anis, Zacharias,
Kadziauskas
1, 2, 6–11,
13–15, 17–23
3 103(a) Anis, Zacharias,
Kadziauskas,
Hood
3
4, 5 103(a) Anis, Zacharias,
Kadziauskas,
Banko
4, 5
12 103(a) Anis, Zacharias,
Kadziauskas,
Barrett
12
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Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
16 103(a) Anis, Zacharias,
Kadziauskas,
Mulvihill
16
Overall
Outcome
1–23

REVERSED