Ex Parte Kuebler et al

Patent Trial and Appeal Board

Mar 9, 2018

13448240 (P.T.A.B. Mar. 9, 2018)

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.
06368 1027
EXAMINER
KOO, BENJAMIN K
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
13/448,240 04/16/2012
03/09/201847988 7590
Walter Ottesen, P.A.
PO BOX 4026
GAITHERSBURG, MD 20885-4026
Christoph Kuebler
03/09/2018 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 PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPH KUEBLER, MICHAEL EICHLER, and
TOBIAS MAIER
Appeal 2016-001151
Application 13/448,2401
Technology Center 3700
Before LINDA E. HORNER, MICHAEL L. HOELTER, and
LYNNE H. BROWNE, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Christoph Kuebler et al. (Appellants) appeal under 35 U.S.C. § 134
from the rejection of claims 1—11. We have jurisdiction under 35 U.S.C.
1 According to Appellants, the real parties of interest in this
application are Carl Zeiss Meditec AG and the named inventors. Appeal Br.
2.
Appeal 2016-001151
Application 13/448,240
§ 6(b). Appellants’ representative presented oral arguments on February 27,
2018.2
We affirm.
CLAIMED SUBJECT MATTER
Claims 1 and 11 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. An ophthalmosurgical measuring device comprising:
an irrigation line for transporting irrigation fluid
therethrough;
a suction pump;
an aspiration line for transporting aspiration fluid
therethrough to said suction pump;
a sensor for detecting a differential pressure between said
irrigation line and said aspiration line;
said sensor including a first chamber and a second chamber
separated from said first chamber; and,
said first chamber being inserted into said irrigation line and
said second chamber being inserted into said aspiration line.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Cosman US 4,593,703 June 10, 1986
Beuchat US 5,499,969 Mar. 19, 1996
Bui US 2002/0019607 A1 Feb. 14,2002
Kadziauskas US 7,169,123 B2 Jan. 30,2007
2 We note that our decision is based on the record before us. In an oral
hearing, Appellants may only rely on evidence that has been previously
entered and considered by the primary examiner and present argument that
has been relied upon in the brief or reply brief except upon a showing of
good cause based on a recent relevant decision. 37 C.F.R. § 41.47(e)(1).
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Application 13/448,240
REJECTIONS
I. Claims 1—5 and 7—11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bui, Beuchat, and Cosman.
II. Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Bui, Beuchat, Cosman, and Kadziauskas.
DISCUSSION
Rejection of claims 1—5 and 7—11
As Unpatentable Over Bui, Beuchat, and Cosman
Appellants argue claims 1 and 11 together. See Appeal Br. 8—12.
Appellants do not present separate arguments for the patentability of claims
2—5 and 7—10 which depend from claim 1. See id. at 13. Accordingly,
claims 2—5 and 7—10 stand or fall with claim 1.
The Examiner finds that Bui discloses all of the limitations of claim 1
except for a sensor comprising “two chambers, each being inserted into
either the irrigation or aspiration line.” Final Act. 2. The Examiner reasons,
“[gjiven that Bui shows two sensors (27/34), simply moving each sensor
into the associated irrigation or aspiration line would be considered an
obvious shift in location of known elements as is known in the art as an
alternative sensor location” and cites Beuchat as “explicitly showing] a
sensor (column 8, lines 20—24) having a chamber (164), each chamber being
inserted into a line (514).” Id. The Examiner determines that it would have
been obvious “to have incorporated chambered sensors into . . . each of the
lines of Bui as taught by Beuchat because such a limitation is an obvious art-
recognized alternative pressure sensor design.” Id. The Examiner notes that
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Application 13/448,240
“such designs are known in the art as providing greater accuracy by locating
the sensor element closer to the flow of the fluid for better pressure
readings.” Id.
In addition, the Examiner determines that “[njeither Bui nor Beuchat
show a single sensor design.” Id. The Examiner finds that “Cosman . . .
show[s] an example of a chambered single sensor (Fig. 11) design used to
detect a differential pressure between two fluid sources.” Id. at 2—3. Based
on this additional finding, the Examiner determines that it would have been
obvious “to have used the sensor design of Cosman in the device of Bui and
Beuchat because such a limitation would be considered a[] design
preference, integrating what was once separate.” Id. at 3. The Examiner
explains that “[a] unitary design again simplifies and promotes accuracy of
the pressure differential determining process, the use of a single sensor
simplifies the design and reduces manufacturing cost, and the location of the
sensor provides accurate real-time data for the user to properly monitor the
conditions for treatment.” Id. The Examiner makes similar findings, sets
forth similar reasoning, and draws similar conclusions in the rejection of
claim 11. See id. at 4—5.
Noting that claims 1 and 11 “recite: ‘said first chamber being inserted
into said irrigation line and said second chamber being inserted into said
aspiration line,’” Appellants contend that “[a]t least these features of
independent claims 1 and 11 cannot reasonably be considered to be
suggested by Bui, Beuchat et al[.] and/or Cosman.” 3 Appeal Br. 9.
3 Appellants also contest the Examiner’s characterization of this language as
product-by-process in the Advisory Action. Appeal Br. 10. Although, we
agree with Appellants that these limitations are not product-by-process
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Application 13/448,240
Acknowledging that the rejection relies upon Beuchat to meet this limitation,
Appellants argue that “as can be seen from FIG. 8 of Beuchat et al[.],
chamber 164 is not ‘in’ aspiration line 508 because aspiration line 508
terminates at coupling 506.” Appeal Br. 11. Appellants further argue that
“enlarged bore 191 is not a continuation for a fluid flowing through
aspiration line 508.” Id.
Appellants’ argument is not responsive to the rejection as articulated
by the Examiner in the Final Action. As discussed supra, the rejection relies
upon Beuchat’s aspiration line 514, not line 508. As shown in Beuchat’s
Figure 8, Beuchat’s pressure indicating chamber 164 is in aspiration line
514.* * * 4 See Beuchat Fig. 8, 8:19-23. Thus, Appellants do not apprise us of
error.
Next, noting that Beuchat “merely suggests], at FIG. 8, that the
absolute pressure in the aspiration line can be measured with pressure
sensing chamber 164,” Appellants argue that Beuchat “fail[s] to suggest a
pressure chamber for measuring the pressure within the irrigation line.”
Appeal Br. 12. Based on this observation, Appellants argue that “even if a
skilled artisan were to combine Bui and Beuchat et al[.], there would be no
suggestion of providing the pressure chamber 164 of Beuchat et al[.] in
irrigation line 30 of Bui.” Id.
limitations, the Examiner also finds that Beuchat discloses the structure
claimed. See Ans. 3^4. Accordingly, we hold the Examiner’s
mischaracterization of these limitations to be harmless error.
4 We note that to the extent the Examiner modifies the rejection in the
Advisory Action, we understand such modification to be an alternative
explanation of the rejection which does not alter the rejection as set forth in
the Final Action.
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Again, Appellants’ argument is not responsive to the rejection as
articulated by the Examiner which relies upon the combined teachings of
Bui, Beuchat, and Cosman as discussed supra. Specifically, the rejection
relies upon Bui for its disclosure of sensors for both the aspiration and
irrigation lines. See Final Act. 2. Nonobviousness cannot be established by
attacking the references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986). Appellants do not explain why Beuchat’s teaching of
locating a pressure sensor in the aspiration line is not equally applicable to
Bui’s irrigation pressure sensor. Thus, Appellants do not apprise us of error.
Appellants raise numerous new arguments in the Reply Brief. For
example, for the first time Appellants contend that “Bui fails to suggest that
a differential pressure is sensed.” Reply Br. 2. Appellants also raise new
arguments pertaining to Cosman. Reply Br. 4—5. These arguments are not
responsive to arguments raised in the Answer. See Ans. 2—5 (essentially
reiterating the Examiner’s argument response section of the Final Action).
In accordance with 37 C.F.R. § 41.41(b)(2), lacking a showing of good
cause, we do not consider the arguments raised in the Reply Brief which are
not responsive to an argument raised in the Answer.
For these reasons, we sustain the Examiner’s decision rejecting claims
1 and 11, and claims 2—5 and 7—10 which fall with claim 1.
Rejection of Claim 6 as Unpatentable
Over Bui, Beuchat, Cosman, and Kadziauskas
Claim 6 depends indirectly from claim 1. See Appeal Br. 16 (Claims
App.). Appellants do not present separate arguments for the patentability of
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claim 6. See Appeal Br. 12—13. Appellants merely contend that
Kadziauskas “is not applied in a manner to cure the deficiencies of Bui,
Beuchart [sic] et al[.], and Cosman.” Id. at 13. As we find no such
deficiencies in the rejection of claim 1 as discussed supra, we sustain the
Examiner’s decision rejecting claim 6.
DECISION
The Examiner’s rejections of claims 1—11 are 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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