Ex Parte Klaver et al

Patent Trial and Appeal Board

Feb 19, 2019

13638523 (P.T.A.B. Feb. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/638,523
22913 7590
Workman Nydegger
60 East South Temple
Suite 1000
12/11/2012
02/21/2019
Salt Lake City, UT 84111
FIRST NAMED INVENTOR
Tom Klaver
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.
18194.35 2224
EXAMINER
NELSON, CHRISTINE L
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
02/21/2019 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):
Docketing@wnlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOM KLAVER, MARCUS DAPPER, and HANS-
JURGEN TIEDTKE
Appeal2018-000276 1
Application 13/638,523
Technology Center 3700
Before: DANIEL S. SONG, JAMES P. CAL VE, and LEE L. STEPINA,
Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner's final
decision rejecting claims 1-6, 8, 16-18, 20, and 21. We have jurisdiction
under 35 U.S.C. § 6(b ).
1 The Appeal Brief indicates that PIXIUM VISION SA is the real party in
interest.
Appeal2018-000276
Application 13/638,523
We REVERSE, but enter new grounds of rejection, pursuant to our
authority under 3 7 C.F .R. § 41. 50(b ), and provide Appellants with a full and
fair opportunity to respond to the rejection.
CLAIMED SUBJECT MATTER
The claims are directed to a retinal or ocular implant for a visual
prosthesis for use in artificially generating vision in a patient suffering from
partial or total vision loss. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A retinal prosthesis comprising:
a substrate, and a plurality of light sources arranged in an
array on the substrate, wherein the prosthesis is configured to be
implanted within an eye of a subject and positioned on or
adjacent a retina of the subject, and wherein each of the light
sources is configured to emit infrared radiation to stimulate nerve
cells of the retina in response to a respective stimulation signal,
derived from an image signal captured from outside of the eye of
the subject.
Appeal Br. 14 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Suaning
Tashiro
Seibel
Greenberg
Degenaar
Chow
Bendett
US 6,458,157 Bl
US 2004/0054407 Al
US 2005/0015120 Al
US 2008/0058898 Al
US 2010/0152849 Al
US 7,981,062 B2
US 8,475,506 Bl
2
Oct. 1, 2002
Mar. 18,2004
Jan.20,2005
Mar. 6, 2008
June 17, 2010
July 19, 2011
July 2, 2013
Appeal2018-000276
Application 13/638,523
REJECTIONS
I. Claims 1, 2, 5, 8, 16, 18, and 20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Greenberg, Degenaar, and Seibel.
II. Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Greenberg, Degenaar, Seibel, and Tashiro.
III. Claims 4 and 6 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Greenberg, Degenaar, Seibel, and Suaning.
IV. Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Greenberg, Degenaar, Seibel, and Bendett.
V. Claim 21 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Greenberg, Degenaar, Seibel, Suaning, and Chow.
OPINION
Rejection I
Claim 1
The Examiner finds Greenberg discloses many of the elements recited
in claim 1, but relies on Degenaar to teach that "optical stimulation of the
retina using light is a known alternative to electrical stimulation of the retina
by electrodes ... with the light producing means being in the form of an
array of light sources in the form of lasers/diodes (e.g. vertical cavity
lasers)." Final Act. 4 (citing Degenaar ,r,r 6, 9, 13). The Examiner reasons
that it would have been obvious to a person of ordinary skill in the art "to
replace the electrodes designed for electrical stimulation of the retina [ as
disclosed by Greenberg] with laser diodes for optical stimulation of the
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Application 13/638,523
retina [ as disclosed by Degenaar] since they are known to be suitable
alternatives for retinal stimulation." Id. at 5.
Appellants argue that, because Degenaar discusses certain problems
associated with retinal implants, Degenaar teaches away from a retinal
prosthesis that is configured to be implanted within the eye of a patient. See
Appeal Br. 7-12. Specifically, Appellants assert, "[b ]y disclosing the
benefits of non-invasive techniques and dismissing retinal implants,
Degenaar teaches away from a 'retinal prosthesis' that is 'configured to be
implanted within an eye of a subject and positioned on or adjacent a retina of
the subject."' Id. at 8 ( emphasis added). Appellants contend that providing
an implantable device using light sources as disclosed by Degenaar would
present technical difficulties amounting to a "high hurdle." Id. For
example, Appellants contend that Degenaar teaches that implants are
detrimentally invasive and are associated with power supply constraints, and
the device disclosed by Degenaar is too large (with or without a lens),
provides too much light, and generates too much heat to be implanted. See
id. at9-1I.
In response, the Examiner explains that the rejection of claim 1 relies
on Degenaar to teach light stimulation, and, thus, Degenaar' s discussion of
the problems associated with implants does not amount to teaching away
from the invention as claimed. The Examiner states, "[t]he combination of
Greenberg in view of Degenaar does not attempt to make an external device
implantable, but merely relies on the teaching of lights from Degenaar to
replace the electrodes of Greenburg, which is already an implantable
device." Ans. 8. In this regard, the Examiner finds, "[a]s seen in Figure 1 of
Degenaar, the light sources [LED devices] (28) appear physically small
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enough to be implanted, therefore meeting the limitation of 'configured to be
implanted' as claimed." Id. at 9.
In the Reply Brief, Appellants reiterate the argument that Degenaar
teaches away from the claimed invention and that incorporation of the lights
from Degenaar in the implant taught by Greenberg would present technical
problems. See Reply Br. 3-7. Appellants also argue that "there is no
disclosure of 'light sources' that can actually be implanted in an eye in
Degenaar (or in Greenberg or in any of the other references)[, and n]o
consideration is presented or disclosed in Degenaar relating to the
environment of the eye." Reply Br. 4. Appellants contend "[t]here is no
disclosure that this arrangement of Degenaar can be 'positioned on or
adjacent a retina of the subject' without causing significant damage to the
eye." Id. at 6.
The Examiner's finding that LED devices 28 "appear physically small
enough to be implanted, [and] therefore meet[] the limitation of 'configured
to be implanted' as claimed" (Ans. 9) implies that the rejection of claim 1
relies, at least in part, upon a direct replacement of electrodes 6 of Greenberg
with LED devices 28 of Degenaar. Given that, as noted by Appellants,
retinal prosthetic device 10 of Degenaar is described only as an externally
mounted device, a preponderance of the evidence does not support the
finding that LED devices 28 of Degenaar are "configured to be implanted."
In other words, given that the Examiner's rejection of claim 1 implements
Degenaar's LED devices 28 themselves in the implant of Greenberg rather
than using the general teaching of replacing electrodes with light sources,
Appellants' assertions regarding certain problems associated with implanting
LED devices 28 of Degenaar have merit.
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Nonetheless, for the reasons that follow, we agree with the Examiner
that a person of ordinary skill in the art would have found it obvious to
replace electrodes 6 of Greenberg with light sources as recited in claim 1.
The Background section of Degenaar teaches that it was known to provide
"silicon chips which actively replace the non-functioning light sensing
structures in the retina (rods and cones)," and this treatment included placing
chips underneath the retinal layers or on the surface of the retina. Degenaar
,r 3. Paragraph 5 of Degenaar explains that "[ r ]etinal prostheses represent a
realistic near-term possibility for individuals with incurable retinal
dystrophies." Degenaar also states that rigid silicon structures have a
problem with covering a significant portion of the retina, when implanted,
but "there have been attempts at more flexible substrates." Id. Paragraph 5
of Degenaar discusses some other difficulties in providing power to
electrodes and that the use of implanted electrodes can cause degradation of
remaining functional tissue. After discussing these disadvantages of
implanted electrodes, Degenaar states, "[t]he present invention therefore
relates to a prosthetic device based on optical stimulation rather than the use
of electrodes." Id. ,r 6.
Although Degenaar discusses disadvantages associated with implants
(for example, the implantation process is invasive), we understand that many
of the disadvantages noted by Degenaar relate to the use of electrodes, not
implants per se, and these disadvantages are ameliorated by the use of
stimulation via light. See id. ,r,r 3-9. Accordingly, we agree with the
Examiner that Degenaar teaches that "aiding the vision of a patient through
the use of optical stimulation of the retina using light is a known alternative
to electrical stimulation of the retina by electrodes." Final Act. 4. Further, a
person of ordinary skill in the art would have understood that implanted
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devices are likely to be less noticeable and, in some respects, more
convenient than externally mounted devices. Thus, to the extent Appellants
contend Degenaar teaches away from the use of implants, we find that the
identification of certain disadvantages of implants in Degenaar does not
outweigh the benefits associated with the Examiner's proposed modification
of the implant already taught by Greenberg. One of ordinary skill in the art
may be motivated to pursue the desirable properties taught by one reference,
even if that means foregoing the benefit taught by another reference. In re
Urbanski, 809 F.3d 1237, 1244 (Fed. Cir. 2016); see also Winner Int'!
Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) ("The fact
that the motivating benefit comes at the expense of another benefit, however,
should not nullify its use as a basis to modify the disclosure of one reference
with the teachings of another. Instead, the benefits, both lost and gained,
should be weighed against one another.").
Furthermore, a reference teaches away from a claimed invention when
a person of ordinary skill, "upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant." In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). The fact that Greenberg already
uses an implant, and the proposed modification changes the implant's mode
of action from the use of electrodes to the use of light, means that any
disparagement of implants, as a class of device, noted by Degenaar is
unrelated to modifying the existing implant disclosed by Greenberg to obtain
the benefits of nerve stimulation via light. To the contrary, Degenaar
provides explicit motivation for changing the human/machine interface from
electrodes to light emitting devices. See Degenaar ,r,r 6, 9. Thus, a person of
ordinary skill in the art reading Greenberg and Degenaar would not have
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been discouraged from modifying Greenberg's existing implant to replace
electrodes 6 with light emitting devices.
In addition to the motivation explicitly set forth in Degenaar, we find
that Bendett ( cited by the Examiner in the rejection of claim 17) also
provides a reason for modifying the implant of Greenberg to replace
electrodes 6 with light sources. Bendett, 5:5-8 ("Recent animal experiments
have caused a fundamental paradigm shift in the field of neural stimulation,
namely the use of light rather than electrical energy to induce nerve
potentials"), 5:25-28 ("What are needed are improved methods and
apparatus for stimulation of bodily tissues (such as stimulating one or more
nerves together or separately) using light (such as infrared[2J laser light from
an array of lasers)"), 5 :3 8--44 ("the VCSEL arrayl3J is part of a device that is
implanted and/or affixed externally to the body and coupled to stimulate
and/or sense nerve signals from a particular site such as the ... eye or optic
nerve ( to restore or provide a vision-like sense)"), 8 :46--49 ("this device
forms the stimulator portion of a prosthetic device for therapy of damaged
cells, tissues, or organs. The uses include vestibular, cochlear, or retinal
implants.").
Thus, in view of the teachings of Degenaar and Seibel, as further
evidenced by the teachings of Bendett, a person of ordinary skill in the art
would have found it obvious to modify the implantable retinal prosthesis
taught by Greenberg to replace electrodes 6 with light sources arranged in an
array as recited in claim 1. This modification to Greenberg's device relies
2 In Rejection I, the Examiner relies on Seibel to teach the use of infrared
light. Final Act. 5.
3 The Examiner relies on Greenberg to teach "an array of electrodes (6)."
Final Act. 4.
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on the general teaching of replacing electrodes with light sources for the
purpose of retinal stimulation and does not rely on a bodily incorporation of
LED devices 28 taught by Degenaar. Thus, Appellants' arguments relating
to the size and external implementation of the devices taught by Degenaar
are moot. Accordingly, we conclude that claim 1 would have been
unpatentable over Greenberg, Degenaar, and Seibel, as further evidenced by
Bendett. Because our analysis relies on additional evidence and reasoning,
we designate this rejection a new ground of rejection.
Claims 2, 5, 8, 16, 18, and 20
Appellants make no separate arguments in support of the patentability
of claims 2, 5, 8, 16, 18, and 20. See Appeal Br. 12. Accordingly, we reject
these claims as unpatentable over Greenberg, Degenaar, and Seibel, with
further evidence from Bendett, and we designate this rejection a new ground
of rejection.
Rejections 11-V
Appellants make no additional arguments traversing any of Rejections
II-V. See Appeal Br. 13. Accordingly, we enter Rejections II-V, as
modified with further evidence from Bendett, and we designate these
rejections as new grounds of rejection.
DECISION
The Examiner's rejection of claims 1---6, 8, 16-18, 20, and 21 is
reversed.
Because the fact finding and reasoning relied on by the Board to reject
claims 1-6, 8, 16-18, 20, and 21 differs from the facts and reasoning relied
on by the Examiner, we designate the rejections of these claims as a NEW
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GROUND OF REJECTION so as to provide Appellants with a full and fair
opportunity to respond to the thrust of the rejections.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 4I.50(b ). Section 4I.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides:
When the Board enters such a non-final decision, the Appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be found in
the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REVERSED; 37 C.F.R. § 4I.50(b)
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