Ex Parte Andersen et al

Patent Trial and Appeal Board

Oct 28, 2016

11606451 (P.T.A.B. Oct. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/606,451 11129/2006 Dan E. Andersen
20872 7590 11/01/2016
MORRISON & FOERSTER LLP
425 MARKET STREET
SAN FRANCISCO, CA 94105-2482
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
685982001000 8429
EXAMINER
JACKSON, GARY
ART UNIT PAPER NUMBER
3769
NOTIFICATION DATE DELIVERY MODE
11/01/2016 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):
EOfficeSF@mofo.com
PatentDocket@mofo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANE. ANDERSEN and DA YID H. MORDAUNT
Appeal2013-005853
Application 11/606,451
Technology Center 3700
Before PA TRICK R. SCANLON, MICHELLE R. OSINSKI, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from the decision
rejecting claims 17-21, 23-25, and 39--42 under 35 U.S.C. § 103(a) as being
unpatentable over Slatkine2 and Latina. 3 Appellants' representative
presented oral arguments on October 17, 2016. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify the real party in interest as "Topcon Medical Laser
Systems, Inc." Appeal Brief2 ("Appeal Br.," filed Nov. 26, 2012).
2 Slatkine et al., US 2005/0096639 Al, pub. May 5, 2005.
3 Latina, US 5,549,596, iss. Aug. 27, 1996.
Appeal2013-005853
Application 11/606,451
CLAIMED INVENTION
Appellants' claimed invention provides methods "for the targeted
photothermal treatment of ocular structures, for example, the layers adjacent
to the retinal pigmented epithelium and those of the trabecular meshwork."
Specification if 2 ("Spec.," filed Nov. 29, 2006). Claims 17 and 23 are
independent and recite substantially similar subject matter. Claim 17,
reproduced below, is illustrative of the subject matter on appeal.
17. A method of treating ophthalmic tissue adjacent to a
retinal pigmented epithelium or ophthalmic tissue adjacent to a
pigmented portion of a trabecular meshwork of an eye,
compnsmg:
generating a beam of light;
deflecting the beam of light into a pattern;
wherein at least one of the generating and the
deflecting causing the beam oflight to comprise a plurality
of light pulses; and
delivering the pattern of light pulses through the cornea to
the retinal pigmented epithelium or the pigmented portion of the
trabecular mesh work of the eye, wherein:
each light pulse of the pattern of light pulses is
delivered for a duration of between 30 µsand 10 ms,
each light pulse of the pattern of light pulses has a
wavelength of between 400 and 700 nm, and
each light pulse of the pattern of light pulses has a
power intensity of less than or equal to 100 kW/cm2.
Appeal Br. 15, Claims Appendix.
ANALYSIS
Independent claim 17 recites, inter alia, "delivering the pattern of
light pulses through the cornea to the retinal pigmented epithelium or the
pigmented portion of the trabecular meshwork of the eye." See supra. In
interpreting this limitation, the Examiner asserts that "[t]his statement does
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Application 11/606,451
not preclude destroying or damaging the cornea in the step of delivering. In
fact, this statement doesn't preclude removing a portion of the cornea prior
to the step of delivering." Answer 6 (mailed Jan. 25, 2013). Relying on this
interpretation, the Examiner finds that Slatkine's laser ablation of parts of
the cornea necessarily results from delivering light pulses through the cornea
as required by the claim. Id. at 4, 8 (citing Slatkine iJ 59). According to the
Examiner, "[t]he only aspect that needs to be satisfied in order for the prior
art to mete [sic] the claims is that a portion of the cornea transmits a portion
of the incident light." Id. at 6.
Appellants argue that
the dictionary meanings of the claim terms "delivering ... light
pulses through the cornea to the retinal pigmented epithelium" in
the relevant limitations of claim 17 do not require ablation of the
cornea. The term that is alleged by the Examiner, "ablation,"
describes the melting or vaporizing of a target tissue. In contrast,
the terms that are recited by claim 17, "delivering" and
"through," have dictionary meanings that do not require that a
tissue be melted or vaporized. Rather, dictionary meanings of
the terms indicate that the light pulses can be transferred through
a transmission medium, in this case the cornea, while leaving the
cornea intact. Thus, the Examiner's position that the claimed
method ablates the cornea is inconsistent with the dictionary
meanings of the relevant claim terms.
Appeal Br. 6 (footnotes omitted).
Responding to Appellants' argument, the Examiner acknowledges:
although the term "through" does contrast with "absorb", which
is required to obtain an ablative effect, those of ordinary skill in
the art are fully aware that when light propagates though a
medium and or enters a new medium (e.g. the tissue/air interface)
it is at least partially absorbed, partially transmitted [particularly
in a transparent medium] and partially scattered. Therefore, the
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Application 11/606,451
notion that Applicant's term "through" precludes partial or
substantial absorption is not consistent with the understanding of
a skilled artisan.
Answer 7.
We disagree with the Examiner's interpretation of the plain claim
language. Contrary to the Examiner's assertion, an ordinary artisan would
not understand that delivering light pulses through the cornea necessarily
ablates a portion of the cornea. As the Examiner acknowledges supra, the
term "through" contrasts with the term "absorb," because ablation occurs
when the energy of the laser is absorbed. See Slatkine ,-i 5. "Laser ablation
operates by light being absorbed by tissues in a thin layer, for example
between 1 and 50 microns thick and the light causing heating of the tissue,
so that the absorbing tissue explodes." Slatkine ,-i 61. As such, we agree
with Appellants "that incidental absorption of light, if any, at a patient's
cornea as [a] result of the claimed method would not rise to levels that cause
ablation of the cornea." Reply Br. 2-3 (filed Mar. 25, 2013). Thus, the
plain meaning of "delivering the pattern of light pulses through the cornea to
the retinal pigmented epithelium or the pigmented portion of the trabecular
meshwork of the eye" cannot reasonably extend to ablation of the cornea, in
which sufficient absorption of light by the cornea takes place so as to destroy
the cornea. We find this interpretation is not inconsistent with the
Specification because the Examiner has not shown and we do not find any
ablation of the cornea resulting from the recited method in Appellants'
disclosure in which light is delivered to the particular targeted tissue.
Accordingly, Appellants have persuasively shown that the Examiner's
interpretation of the contested claim language is erroneous, and Slatkine
does not support the Examiner's finding as to the claimed subject matter as
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Application 11/606,451
recited in independent claim 17. As such, we do not sustain the rejection of
independent claim 17, and independent claim 23, which recites substantially
similar subject matter and stands rejected based on the same erroneous
interpretation. For the same reasons, we also do not sustain the rejection of
dependent claims 18-21, 24, 25, and 39-42. Cf In re Fritch, 972 F.2d 1260,
1266 (Fed. Cir. 1992) ("dependent claims are nonobvious if the independent
claims from which they depend are nonobvious") (citations omitted).
DECISION
The rejection of claims 17-21, 23-25, and 39--42 is reversed.
REVERSED
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