Ex Parte Akahoshi

Board of Patent Appeals and Interferences

Jul 17, 2012

10964964 (B.P.A.I. Jul. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte TAKAYUKI AKAHOSHI
____________________

Appeal 2009-014989
Application 10/964,964
Technology Center 3700
____________________

Before: EDWARD A. BROWN, MICHAEL L. HOELTER, and
BENJAMIN D. M. WOOD, Administrative Patent Judges.

WOOD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-014989
Application 10/964,964

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1, 2, 4 and 5. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE CLAIMED SUBJECT MATTER
The claims are directed to a method for providing more stable
intraocular pressure during phacoemulsification (cataract surgery). Claim 1,
reproduced below with emphasis added, is illustrative of the claimed subject
matter:
1. A method of providing more stable intraocular pressure
during phacoemulsification, comprising the steps of:
a. providing a control module capable of controlling an
aspiration pump, a single source of irrigating fluid having a
single irrigation supply tubing and a power level supplied to a
handpiece;
b. supplying an irrigating fluid from the single source of
irrigating fluid to the handpiece through the single irrigation
supply tubing, the tubing having an internal diameter; and
c. reducing a flow resistance in the single irrigation supply
tubing by increasing the internal diameter of the tubing.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kelman
Ludin
Easley
US 4,465,470
US 6,193,683 B1
US 6,599,271 B1
Aug. 14, 1984
Feb. 27, 2001
Jul. 29, 2003

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REJECTIONS
The Examiner made the following rejections:
Claims 1-2 and 4-5 stand rejected under 35 U.S.C §112 ¶ 2 as being
indefinite;
Claim 1 stands rejected under 35 U.S.C §102(b) as being anticipated
by Ludin;
Claims 1-2 and 5 stand rejected under 35 U.S.C §102(b) as being
anticipated by Kelman;
Claims 1-2 and 5 stand rejected under 35 U.S.C §102(b) as being
anticipated by Easley.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kelman or Easley.

ANALYSIS
Claims 1, 2, 4 and 5 – 35 U.S.C. § 112, ¶ 2
The Appellant argues claims 1, 2, 4 and 5 as a group. App. Br. 2-3.
We select claim 1 as representative of the group, with claims 2, 4 and 5
standing or falling with claim 1. 37 C.F.R. § 41.37(c)(1)(vii). Claim 1 is
drawn to a method of providing more stable intraocular pressure during
phacoemulsification (cataract surgery) comprising the steps of providing
irrigation fluid to the eye through irrigation supply tubing, and reducing
irrigation fluid flow resistance through the tubing by increasing the tube’s
internal diameter. App. Br. 7. The Examiner rejected claim 1 under 35
U.S.C. § 112 ¶ 2 because, inter alia, it is “unclear as to what dimension the
diameter is being increased from.” Ans. 4.
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We agree with the Examiner that claim 1 is indefinite. Rather than
expressly recite a particular tube diameter, claim 1 requires that, as a
separate step in the claimed method, the tube diameter be “increased.” But
as the Examiner pointed out, it is unclear from what size the tube diameter is
to be increased, that is, increased relative to what? Assuming that the
claimed diameter is to be increased from an irrigation-fluid tubing diameter
used in a prior art phacoemulsification device, there is little in the
Specification that would explain to a person of ordinary skill in the art how
much of an increase is necessary to fall within claim 1’s scope. Our
reviewing Court considered a similar situation in Halliburton Energy Svcs.,
Inv. v. M-I LLC, 514 F.3d 1244 (Fed. Cir. 2008). There the claims at issue
were drawn to the use of a “fragile gel” as an oil drilling fluid. The patentee
attempted to define “fragile gel” as one that more “easily” liquefies under
stress and reforms when the stress was removed in comparison with prior-art
gels. Id. at 1250. The Court found the term indefinite because “the
specification does not distinguish how the [claimed ‘fragile gels’] performed
differently than the disclosed prior art—how much more quickly the gels
broke when stress was imposed or how much more quickly the gels
reformed when stress was removed.” Id. at 1253. Claim 1 is likewise
indefinite because there is little if any guidance, in the Specification or
otherwise, as to where to draw the line between prior art tubing diameters
and “increased” tubing diameters falling within claim 1’s scope.
Appellant asserts that the claim specifies that the internal diameter of
the tubing is increased to reduce the flow resistance of the tubing
(presumably as compared with the flow resistance of prior-art tubing). App.
Br. 3. But this fact does little to render claim 1 definite because, again, it is
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not specified from what value the flow resistance must be reduced or where
to draw the line between claim 1 and the prior art. Appellant also apparently
argues that the Specification identifies a “preferred” flow rate of
approximately 148 cc/min – higher than the prior art 100 cc/min –
apparently suggesting a specific value for preferred flow resistance and,
consequently, a specified tubing diameter. Id. But to the extent that a
particular flow rate would lead a person of skill in the art to a particular
tubing diameter – and this has not been established – a preferred flow rate
and consequent tubing diameter cannot be read into the claims. See
Halliburton, 514 F.3d at 1250-51 (characteristics of preferred embodiments
of fragile gels could not be read into the claim term). Finally, Appellant
points out that claim 4 more specifically requires that the “increased internal
diameter of the tubing is 5 mm.” App. Br. 3. But under the doctrine of
claim differentiation it is presumed that this limitation is not present in claim
1. Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc).
While using a tubing having a diameter of 5 mm may be within the scope of
claim 1, one could conceivably use smaller diameter tubing and also be
within claim 1’s scope, as long as it could be deemed an “increased”
diameter. We therefore sustain the Examiner’s indefiniteness rejection of
claim 1.

The Prior Art Rejections
Because we sustain the Examiner’s indefiniteness rejections of claims
1, 2, 4 and 5, we do not reach the Examiner’s prior-art rejections. See Enzo
Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010) (“If a
claim is indefinite, the claim, by definition, cannot be construed. Without a
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discernable claim construction, an anticipation analysis cannot be
performed.”).

DECISION
For the above reasons, we affirm the Examiner’s rejection of claims
1-2 and 4-5 under 35 U.S.C. § 112 ¶ 2 as indefinite.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).

AFFIRMED

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