Ex Parte Hertweck et al

Board of Patent Appeals and Interferences

Mar 26, 2012

11595544 (B.P.A.I. Mar. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DAVID W. HERTWECK and JEFFERY A. KNIGHT
__________

Appeal 2010-010748
Application 11/595,544
Technology Center 3700
__________

Before TONI R. SCHEINER, LORA M. GREEN, and
ERICA A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to an
ophthalmic surgical control system and a method for its operation. The
Patent Examiner rejected the claims as anticipated and obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

Appeal 2010-010748
Application 11/595,544

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STATEMENT OF THE CASE
Claims 1-11 are on appeal. Claims 1 and 7 are representative and read
as follows:
1. An ophthalmic surgical control system comprising:
a surgical console for controlling a variety of surgical instruments;
a foot controller connected to the surgical console including a pedal for
movement by a user over a pre-determined range in pitch and yaw;
wherein the system allows the foot controller to independently control two
parameters for a single function where a first parameter is controlled
by movement of the pedal in pitch and a second parameter is
controlled by movement of the pedal in yaw.

7. A method of operating an ophthalmic surgical control system
comprising the steps of:
providing a surgical console and controlling a variety of surgical
instruments;
connecting a foot controller to the surgical console, the foot controller
including pedal for movement by a user over a pre-determined range
in pitch and yaw; and
independently controlling with the foot controller two parameters of a single
function where a first parameter is controlled by movement of the
pedal in pitch and a second parameter is controlled by movement of
the pedal in yaw.

The Examiner rejected the claims as follows:
• claims 1, 3, 5, 7and 10 under 35 U.S.C. §102(b) as anticipated by
Bisch;1
• claims 2 and 8 under 35 U.S.C. § 103(a) as unpatentable over Bisch
and Murray;2

1Patent Application Publication No. WO 98/08442 by Michael Bisch et al.,
published Mar. 5, 1998.
2 US Patent No. 4,156,187 issued to Edward J. Murray et al., May 22, 1979.
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Application 11/595,544

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• claims 4 and 9 under 35 U.S.C. § 103(a) as unpatentable over Bisch
and Rockley;3 and
• claims 6 and 11 under 35 U.S.C. § 103(a) as unpatentable over
Bisch and Ross.4

ANTICIPATION
The Issue
The Examiner’s position is that Bisch disclosed an ophthalmic
surgical control system and method of operating the system, as recited in
independent claims 1 and 7, respectively. (Ans. 3, 4.) In particular, the
Examiner found that Bisch disclosed a system which allows the foot
controller to independently control two parameters for a single function
where a first parameter is controlled by movement of the pedal in pitch and a
second parameter is controlled by movement of the pedal in yaw. (Id. at 3-
4)(citing Bisch 25, ll. 9-13). The Examiner found that Bisch disclosed a
system wherein the function to be controlled includes fluid flow and the
parameters include at least irrigation and aspiration. (Id. at 4.)
Appellants contend that Bisch does not teach a foot controller for
independently controlling two parameters of a single function, as required by
independent claims 1 and 7. (App. Br. 4.) Appellants assert that “[t]he
Examiner seems to confuse the difference between a function and a
parameter, as defined and explained in the present invention.” (Id. at 3.)

3 Patent Application Publication No. US 2001/0003155 by Paul W. Rockley
et al., published Jun. 7, 2001.
4 US Patent No. 5,833, 643 issued to Rod Ross et al., Nov. 10, 1998.

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Application 11/595,544

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According to Appellants, “Bisch allows some single parameter of two
separate functions to be controlled - a first function is controlled in pitch
and a second function is controlled in yaw.” (Id.) (citing Bisch 25, ll. 6-9).
According to Appellants, the Specification and prior art make “clear that
functions are actions or steps in a surgery and not as the Examiner asserts
the surgery itself. The functions such as ultrasound, fluid flow, or
vitrectomy cutting are then defined by the parameters that determine the
extent of use of the function.” (Id. at 4.)
The issue is whether Bisch disclosed a foot controller for
independently controlling two parameters for/of a single function.
Findings of Fact
1. The Specification provides an example of various parameters for a
single function:
For example in controlling ultrasound during
phacoemulsification in cataract surgery the function of
ultrasound control includes such parameters as power, pulse
rate, duty cycle, pulse duration, pulse interval, and
minimum/maximum duty cycle switching.

(Spec. [0004].)

2. Appellants’ claim 5 further limits claim 1 by reciting that “the
function to be controlled includes fluid flow and the parameters include at
least irrigation and aspiration.” (App. Br. 6, Claims App’x.)
3. Appellants’ claim 10 further limits claim 7 by reciting that “the
function to be controlled includes fluid flow and the parameters include at
least irrigation and aspiration.” (Id. at 7.)
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Application 11/595,544

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4. Bisch states that “[t]he pitch and yaw may control two separate linear
functions simultaneously, so that the system may be said to be a dual-linear
system.” (Bisch 25, ll. 6-9.)
5. Bisch provides examples of various ophthalmic modules which can be
employed in its disclosed surgical control system, including an “irrigation
and scroll aspiration module….” (Id. at 9, ll. 1-6; Ans. 4.)
Principles of Law
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987).
Analysis
Appellants assert that Bisch does not disclose a foot controller for
independently controlling two parameters of a single function, as required by
independent claims 1 and 7, but instead only “allows some single parameter
of two separate functions to be controlled - a first function is controlled in
pitch and a second function is controlled in yaw.” (App. Br. 3-4)(citing
Bisch 25, ll. 6-9). We disagree with Appellants. While Bisch states that
“[t]he pitch and yaw may control two separate linear functions
simultaneously, so that the system may be said to be a dual-linear system”
(FF-4)(emphasis added) the Examiner correctly found that Bisch also
disclosed a system module which allows the foot controller to independently
control irrigation and aspiration (FF-5) which the claimed invention
expressly recognizes as two parameters for the single function of fluid flow
(see FF-2, 3).
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Accordingly, we affirm the anticipation rejection of independent
claims 1 and 7. Because Appellants have not argued dependent claims 3, 5
and 10 separately, these claims fall with claims 1 and 7. 37 C.F.R.
§ 41.37(c)(1)(vii).

OBVIOUSNESS
Appellants do not raise additional arguments regarding the
obviousness rejections, but instead contend that the rejected claims should
be allowed because the Bisch did not “contemplate allowing a using through
the foot control to independently control two of those parameters
simultaneously,” and that the cited secondary references do not cure this
deficiency. (See App. Br. 4-5.) Consequently, we are not persuaded by this
contention for the same reasons discussed supra regarding the anticipation
rejection.
Accordingly, we affirm the obviousness rejections.

CONCLUSION OF LAW
Bisch disclosed a foot controller for independently controlling two
parameters for/of a single function.

SUMMARY
We affirm each of the Examiner’s rejections.

Appeal 2010-010748
Application 11/595,544

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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