Ex Parte Barth et al

Board of Patent Appeals and Interferences

Jan 19, 2012

11932170 (B.P.A.I. Jan. 19, 2012)

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.
11/932,170 10/31/2007 Roland Barth 3081.164US02 2109
24113 7590 01/20/2012
PATTERSON THUENTE CHRISTENSEN PEDERSEN, P.A.
4800 IDS CENTER
80 SOUTH 8TH STREET
MINNEAPOLIS, MN 55402-2100
EXAMINER
STULTZ, JESSICA T
ART UNIT PAPER NUMBER
2828
MAIL DATE DELIVERY MODE
01/20/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROLAND BARTH, ROLAND BERGNER, LOTHAR MUELLER,
DIETMAR STEINMETZ, SIEGFRIED SCHUBERT, KLAUS-DITMAR
VOIGT, FRANK BEHRENDT, BURKHARD DIETZEL, and AXEL
DOERING
____________

Appeal 2010-006770
Application 11/932,170
Technology Center 2800
____________

Before DEBRA K. STEPHENS, DENISE M. POTHIER,
and BRUCE R. WINSOR, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 13-17. Claims 1-12 are withdrawn pursuant to a restriction
requirement and election (App. Br. 12). An Oral Hearing was held January
10, 2012. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellants‟ invention relates to:
[c]ombined equipment for non-contacting determination
of axial length (AL), anterior chamber depth (VKT) and corneal
curvature (HHK) of the eye, [which] are . . . important for . . .
the selection of an intraocular lens (IOL) to be implanted,
preferably with fixation of the eye by means of a fixating lamp
and/or illumination through light sources grouped eccentrically
about the observation axis.
(Abstract.) Claim 13, which is illustrative of the invention, reads as follows:
13. A combination device which determines the axial length
and corneal curvature or corneal radius of a human eye,
comprising a controller which carries out a central control of
adjustable units and optical elements of the device arrangement
1

and calculates the optical power of an intraocular lens to be
implanted in the eye.
Claims 13-17 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Jolson (US 5,094,521; Mar. 10, 1992) in view of Capetan (US
5,282,852; Feb. 1, 1994).
Rather than repeat the arguments here, we make reference to the
Briefs (App. Br. filed Nov. 13, 2009; Reply Br. filed Mar. 1, 2010) and Oral

1
The recitation, “the device arrangement,” lacks antecedent basis. Based on
Appellants‟ statement at the Oral Hearing, we presume that “the device
arrangement” refers back to the combination device and that Appellants
intended to recite “the device.” We analyze the claims on that basis.
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Hearing for the positions of Appellants and the Answer (mailed Dec. 30,
2009) for the positions of the Examiner. Only those arguments actually
made by Appellants have been considered in this decision. Arguments that
Appellants did not make in the Briefs or Oral Hearing have not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii)
(2010).

ISSUE
Did the Examiner err in rejecting claims 13-17 as obvious over Jolson
in view of Capetan?

ANALYSIS
Claim 13
Claim construction is an issue of law that we review de novo. Cordis
Corp. v. Boston Scientific Corp., 561 F.3d 1319, 1331 (Fed. Cir. 2009).
Claims are not to be read in a vacuum, but must be given their broadest
reasonable interpretation in light of the Specification as it would be
interpreted by ordinary artisans. Phillips v. AWH Corp., 415 F.3d 1303,
1316 (Fed. Cir. 2005) (en banc).
“Generally,” we have said, “the preamble does not limit the
claims.” Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d
1336, 1346 (Fed.Cir. 2002). Nonetheless, the preamble may be
construed as limiting “if it recites essential structure or steps, or
if it is „necessary to give life, meaning, and vitality‟ to the
claim.” Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289
F.3d 801, 808 (Fed.Cir.2002), quoting Pitney Bowes, Inc. v.
Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed.Cir.1999). A
preamble is not regarded as limiting, however, “when the claim
body describes a structurally complete invention such that
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deletion of the preamble phrase does not affect the structure or
steps of the claimed invention.” Catalina, 289 F.3d at 809.
American Medical Systems, Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358-9
(Fed. Cir. 2010).
The preamble of claim 13 merely recites an intended use of the
“combination device” and does not limit the structure of the claimed device.
We conclude that the preamble of claim 13 does not affect the structure of
the claimed invention and its recitations are not necessary to give meaning to
the claim. Therefore, the preamble does not limit the claim, and we will not
give it patentable weight. See id. Appellants‟ arguments for the
patentability of claim 13 relate solely to statements of intended use in the
preamble of the claim (see App. Br. 13-17) and are, for that reason,
unpersuasive. Accordingly, we find that Appellants have not shown error in
the Examiner‟s rejection of claim 13, and we sustain the rejection.
Nevertheless, although not determinative of the patentability of claim
13, we note that we agree with Appellants that, as used by those of ordinary
skill in the art, “the terms of art corneal curvature and the corneal radius
relate to a sphere that approximates that cornea's three dimensional shape”
(App. Br. 10), while “corneal diameter is measured from one visible edge of
the cornea to the opposite visible edge when viewing the cornea from the
front of the eye” (App. Br. 11). “[A]s understood by one of ordinary skill in
the art, the corneal radius is not one half of the corneal diameter because the
structures measured are different.” (Id.) In addition to the arguments
presented, Appellants point to the use of the term “corneal radius” and
related terms in the Specification (Reply Br. 5-6; see Spec. 1:17-18, 2:21-22,
12:7, 17-19, 18:17-19) and in the Capetan reference cited by the Examiner
(Reply Br. 6-8; compare Capetan 2:37-40 with Capetan 2:24-31).
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Claim 14
Appellants contend “[t]here is no disclosure [in Jolson or Capetan] of
storage of calculation formulas used by the controller to calculate the
optical power as recited in claim 14” (App. Br. 18). More particularly
Appellants contend:
[I]t is readily apparent that formulas used to analyze digital
images [as disclosed by Jolson] are not the same as formulas to
calculate the optical power of an intraocular lens.
Accordingly, Jolson does not disclose or suggest the storage of
calculation formulas used to calculate the optical power of an
intraocular lens as recited in claim 14.
(Reply Br. 9.) Appellants further contend that:
[w]hile the citations to the Capetan reference have some
relation to intraocular lens implant formulas, there is nothing in
these passages that states anything about them being stored in a
computer. Since formulas for calculating intraocular lens
powers, as well as anything else, can be calculated with a pencil
and paper or with an abacus, there is no disclosure in Capetan
to indicate that the formulas of Capetan are inherently stored in
a computer memory. Thus, a computer memory is not
"necessarily present" in Capetan.
(Reply Br. 10.)
“But one cannot show non-obviousness by attacking references
individually where, as here, the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981) (citations
omitted). The Examiner has relied on Jolson (Jolson 3:20-4:6; Fig. 1) to
teach device storage in which calculation formulas are stored such that they
can be called up and used by the controller, and Capetan (Capetan 3:8-23;
4:12-34) to teach calculation formulas for calculating optical power (see
Ans. 4). We find Appellants‟ contention that the Examiner has improperly
applied the doctrine of inherency (Reply Br. 10) to be unpersuasive because
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“the [obviousness] analysis need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ,” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). We find that the Examiner‟s use of the word “inherently” (see Ans.
7) was intended to convey that a person of ordinary skill in the art would
recognize or infer from Jolson‟s disclosure that calculations using Jolson‟s
computer would use formulas stored on Jolson‟s computer and would also
infer that in combining Capetan with Jolson, Capetan‟s taught formulas
would also be stored on the combined Jolson/Captean computer device.
We agree with the Examiner‟s findings (Ans. 4) and adopt them as
our own. We find it would have been obvious to a person of ordinary skill
in the art to combine the teachings of Capetan and Jolson as described by the
Examiner because such a combination is merely a combination of familiar
elements according to known methods that does no more than yield
predictable results, see KSR, 550 U.S. at 416, that can be implemented by a
person of ordinary skill in the art, see id. at 417.
Accordingly, Appellants have not shown error in the Examiner‟s
rejection of claim 14 and we sustain the rejection of claim 14.

Claim 15
Appellants contend that the Examiner:
does not present any explanation, reasoning or rational
underpinning as to how an A-scan biometer, which is a separate
free standing device that can only measure distances by
ultrasound, can be combined with the optical electronic
"Trophorometer" as disclosed by the Jolson patent to render
obvious the combination device as claimed.
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(App. Br. 19.) We disagree. When read in conjunction with the grounds for
rejection for claim 13 (Ans. 3-4), from which claim 15 depends, we find that
the Examiner has articulated (Ans. 4, 7) a reasonable and adequate rationale
for the rejection of claim 15, and we adopt the Examiner‟s findings (Ans. 4)
and explanations (Ans. 7) as our own.
To justify combining reference teachings in support of a
rejection it is not necessary that a device shown in one
reference can be physically inserted into the device shown in
the other. The test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
Keller, 642 F.2d at 425 (citations omitted). We also note that nothing in the
claim precludes the “combined device” from utilizing both ultrasound and
optical electronic measuring structures.
Appellants further contend that Capetan does not disclose a
combination device as claimed (Reply Br. 11). However, the Examiner has
relied on Jolson (Jolson 1:67-2:6; Fig. 1), not Capetan, for disclosure of a
combination device (Ans. 3). As discussed supra non-obviousness cannot
be shown by attacking references individually. Keller, 642 F.2d at 426. We
find that it would have been obvious to a person of ordinary skill in the art to
combine the teachings of Capetan and Jolson as described by the Examiner
because such a combination is merely a combination of familiar elements
according to known methods that does no more than yield predictable
results, see KSR, 550 U.S. at 416, that can be implemented by a person of
ordinary skill in the art, see id. at 417.
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Finally, Appellants contend (Reply Br. 11) that the explanations (Ans.
7) provided by the Examiner are untimely. We find that, by virtue of the
filing of the Reply Brief in accordance with 37 C.F.R. § 41.41 (2010) and
the oral hearing in accordance with 37 C.F.R. § 41.47 (2010), Appellants
have been afforded, and have availed themselves of, adequate opportunity to
address the Examiner‟s explanations.
For the foregoing reasons, Appellants have not shown error in the
Examiner‟s rejection of claim 15. We sustain the rejection of claim 15 and
of claim 16, which depends from claim 15 and was not separately argued.
Claim 17
Appellants‟ contentions regarding claim 17 (App. Br. 19-20; Reply
Br. 11-12) are substantially similar to those presented for claim 14 (App. Br.
18; Reply Br. 9-10) and are unpersuasive for similar reasons. The Examiner
cites Jolson (Jolson 3:20-4:6; Fig. 1) as disclosing a combination device
having a controller that receives determined parameters of the eye and
makes calculations based on these parameters (Ans. 3, 5) and cites Capetan
(Capetan 3:8-23; 4:12-34) as disclosing calculation of optical power based
on determined parameters (Ans. 5). We find that, as with claim 14,
discussed supra, it would have been obvious to a person of ordinary skill in
the art to combine the teachings of Capetan and Jolson as described by the
Examiner because such a combination is merely a combination of familiar
elements according to known methods that does no more than yield
predictable results, see KSR, 550 U.S. at 416, that can be implemented by a
person of ordinary skill in the art, see id. at 417.
Appellants have not shown error in the Examiner‟s rejection of claim
17 and we sustain the rejection of claim 17.
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DECISION
The decision of the Examiner to reject claims 13-17 is affirmed.
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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

ELD