Ex Parte Muhlhoff et al

Patent Trial and Appeal Board

Jun 28, 2018

10566009 (P.T.A.B. Jun. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/566,009 01/25/2006
24113 7590 06/29/2018
PATTERSON THUENTE PEDERSEN, P.A.
80 SOUTH 8TH STREET
4800 IDS CENTER
MINNEAPOLIS, MN 55402-2100
FIRST NAMED INVENTOR
Dirk Muhlhoff
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.
308 l.l 44WOUS 9949
EXAMINER
SHAY,DAVIDM
ART UNIT PAPER NUMBER
3762
MAIL DATE DELIVERY MODE
06/29/2018 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 DIRK MUHLHOFF, MARIO GERLACH, MARKUS STICKER,
CARSTEN LANG, MARK BISCHOFF, and MICHAEL BERGT
Appeal2016-005019 1
Application 10/566,0092
Technology Center 3700
Before MICHELLE R. OSINSKI, TARA L. HUTCHINGS, and
MATTHEWS. MEYERS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
July 21, 2015), Reply Brief ("Reply Br.," filed Apr. 18, 2016), and
Specification ("Spec.," filed Jan. 25, 2006), and the Examiner's Answer
("Ans.," mailed Feb. 17, 2016), and Final Office Action ("Final Act.,"
mailed Jan. 22, 2015). The record includes a transcript of the hearing held
June 11, 2018.
2 Appellants identify Carl Zeiss Meditec AG as the real party in interest.
App. Br. 2.
Appeal 2016-005019
Application 10/566,009
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 20, 22-32, and 34--46. An oral hearing was held on
June 11, 2018. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED INVENTION
Appellants' claimed invention relates generally to a method and
apparatus of producing curved cuts in a transparent material, in particular, in
the cornea. Spec. 1:3--4, 8-9.
Claims 20 and 32 are the independent claims on appeal. Claim 20,
reproduced below, is illustrative of the claimed subject matter:
1. A method of isolating a volume of material within a
cornea of an eye by producing curved cuts in the cornea, by
generating optical breakthroughs in the cornea by application of
laster radiation focused into the cornea and to a focal point,
compnsmg:
three-dimensionally shifting the focal point to produce
the cut by a series of optical breakthroughs;
shifting the focal point at a maximum speed which is
lower in a first spatial direction than in two other spatial
directions, the first spatial direction being parallel to an axis
along which the application of laser radiation is made; and
guiding the focal point such that it follows, with respect
to the two other spatial directions, contour lines of the cut, the
contour lines being located in planes that are perpendicular to
the first spatial direction.
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REJECTI0NS 3
Claims 28 and 42 are rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the enablement requirement.
Claims 20, 22-32, and 34--46 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
Claims 20, 22-26, 29-32, 36-40, 43--45 are rejected under 35 U.S.C.
§ I02(b) as anticipated by Juhasz (US 5,993,438, iss. Nov. 30, 1999).
Claims 27, 28, 41, and 42 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Juhasz and Williams (US 6,338,559 Bl, iss. Jan. 15,
2002).
Claims 29, 30, 34, and 46 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Juhasz, Williams, and Lai (US 5,549,632, iss. Aug. 27,
1996).
Claim 35 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Juhasz and Sasnett (US 5,928,221, iss. July 27, 1999).
ANALYSIS
Indefiniteness
We are persuaded that the Examiner erred in rejecting claims 20, 22-
32, and 34--46 under 35 U.S.C. § 112, second paragraph, as indefinite. With
respect to claim 20 and 32, the Examiner finds that the claims are "unclear"
regarding "the manner in which the volume is 'isolated' when the laser beam
is prevented from striking the cornea when traveling on an elliptical path."
3 The Examiner has withdrawn the obviousness-type double patenting
rejections, and the rejection of claims 25 and 32--46 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. Ans. 3.
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Final Act. 6. However, we agree with Appellants that a person of ordinary
skill in the art would understand the meaning of "isolating," when the claim
language is read in light of the Specification, i.e., that "isolating" relates to
the generation of a cut surface, not to prevention of a laser beam striking the
cornea. App. Br. 17-18 (citing Spec. Fig. 9, 15:7-15); see also Reply Br. 5-
8. For example, claim 20 recites that the isolation is "of a volume of
material within a cornea," and is done "by producing curved cuts in the
cornea." The Specification describes with reference to Figure 9 the isolation
limitations. See Spec. 15:7-15.
With respect to claims 27, 28, 41, and 42, the Examiner determines
that the term "higher orders" is a relative term that renders the claim
indefinite. Final Act. 6. However, we are persuaded by Appellants'
argument tht the term is readily understandable to those of ordinary skill in
the art. App. Br. 15-16; see also Reply Br. 4--5, 9.
With respect to claim 29, the Examiner determines that the steps
"involved in 'considering the particular shape' are unclear." Final Act. 6.
However, we are persuaded by Appellants' argument that one of ordinary
skill would understand the claim language, in light of the Specification, to
mean that the shape of the contact glass imparts a particular curvature upon
the cornea and this would be taken into account in the claimed method.
Reply Br. 11; see also Spec. 4: 19-29 ( describing role of the shape of contact
glass).
The Examiner finds that claim 3 9 's recitation of "about ten percent" is
a relative term, rendering the claim indefinite. Final Act. 6 ("'about ten
percent' is not defined by the claim, [and] the [S]pecification does not
provide a standard for ascertaining the requisite degree"). However, we are
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persuaded by Appellants' argument that the term is not indefinite because
infringement can be assessed through evaluation of operation of the control
of the movement of the laser focus and the use of precise measuring
instruments to assess the actual spacing of contour lines created in the
cornea. App. Br. 20; see also Reply Br. 9. "When 'about' is used as part of
a numeric range, the use of the word 'about,' avoids a strict numerical
boundary to the specified parameter. Its range must be interpreted in its
technologic and stylistic context." Cohesive Techs, Inc. v. Waters Corp.,
543 F.3d 1351, 1368 (Fed. Cir. 2008) (quoting Pall Corp. v. Micron
Separations, Inc., 66 F. 3d 1211, 1217 (Fed. Cir. 1995) (internal quotation
marks omitted). The Examiner has not adequately explained why one of
ordinary skill in the art would not have been reasonably apprised of the
scope of the claim as a result of the claim term "about." Cf Accentra, Inc. v.
Staples, Inc., 500 Fed. Appx. 922, 930 (Fed. Cir. 2013) (non-precedential)
( explaining the term "about" is not indefinite if it can be understood in the
context of the technology).
Therefore, we do not sustain the Examiner's rejection of claims 20,
22-32, and 34--46 under 35 U.S.C. § 112, second paragraph.
Enablement
The test for compliance with the enablement requirement is whether
the disclosure, as filed, is sufficiently complete to enable a person of
ordinary skill in the art to make and use the claimed invention without undue
experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Thus,
when rejecting a claim for lack of enablement, the Examiner bears the initial
burden of setting forth a reasonable explanation of why the scope of the
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claim is not adequately enabled by the description provided in the
specification. In re Wright, 999 F.2d 1557, 1561---62 (Fed. Cir. 1993).
Factors that may be considered in determining whether a disclosure would
require undue experimentation include (1) the quantity of experimentation
necessary, (2) the amount of direction or guidance presented, (3) the
presence or absence of working examples, (4) the nature of the invention, (5)
the state of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of the claims.
See Wands, 858 F.2d at 737.
Here, the Examiner bases the enablement rejection on the alleged
failure of the Specification to describe "how to 'modify the shift in the first
spatial direction according to the influence of the higher orders of curvature,
while shifting the focal point in the other two directions according to the
contour lines which are assigned to the corrected cut surface without higher
orders of curvature,"' as recited in dependent claim 28, and similarly recited
in dependent claim 42. Final Act. 5-6.
In response, Appellants argue that higher order aberrations (e.g.,
spherical aberration, coma, trefoil), which Appellants' Specification at page
6 describes as associated with higher order curvature, are well known to a
person of ordinary skill in the art. App. Br. 15-16 ( citing Cox (US
2004/0054358 Al, pub. Mar. 18, 2004)). The Examiner does not dispute
Appellants' contention that higher order aberrations are known to those of
ordinary skill in the art, or otherwise address the relative skill of those in the
art, but instead points out that the claim language recites curvature, not
aberations. See Ans. 3--4. In particular, the Examiner finds that Appellants
have not established "what 'higher orders of curvature' are," or how they
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would be integrated into the claimed step or structure responsible for
modifying the shift. Id. Appellants respond that optical aberrations and the
curvature of optical surfaces are tied together by the physics of light and the
law of optics. Reply Br. 4. "Higher order aberrations are associated with
higher order curvatures[,] and would be understood as such to those skilled
in the art." Id. at 5; see also Spec. 6:12-14.
Here, the Examiner neither addresses the Wands factors nor otherwise
explains why a person of ordinary skill in the art would have to engage in
undue experimentation to practice the claimed invention, particularly in light
of Appellants.
The Examiner has failed to establish a prima facie case of non-
enablement. Therefore, we do not sustain the Examiner's rejection of claims
28 and 42 under 35 U.S.C. § 112, first paragraph, as failing to comply with
the enablement requirement.
Anticipation
We are persuaded by Appellants' argument that the Examiner erred in
rejecting claims 20 and 32 under 35 U.S.C. § 102(b) at least because Juhasz
does not disclose "guiding the focal point such that it follows, with respect
to the two other spatial directions, contour lines of the cut, the contour lines
being located in planes that are perpendicular to the first spatial direction,"
as recited in claim 20, and similarly recited in claim 32. App. Br. 21-22.
The Examiner cites column 3, lines 1-18 and 27-35 as teaching producing
spots in a spiral pattern, each layer being produced in a plane perpendicular
to the optical axis, i.e., circular, with each layer completed before the next
layer is formed. Final Act. 6-7. The Examiner explains that these passages
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teach that "the focal point is moved along one contour line substantially
completely before making the transaction to the next contour line." Id. at 7.
We have carefully reviewed the portions of Juhasz on which the
Examiner relies. But we find no disclosure of contour lines, much less of
guiding the focal point to follow contour lines of the cut, as required by
claims 20 and 32. Appellants assert that contour lines are "lines of constant
elevation in the z direction similar to the contour lines on a topographical
map. Contour lines represent the perimeter of a geometric figure that may
include a circle, an ellipse or an irregularly shaped figure perimeter." App.
Br. 21. Appellants' proposed construction is consistent with the generally
understood meaning of the term "contour line." See Merriam-Webster
Dictionary, available at https://www.merriam-
webster.com/dictionary/contour%20line (defining a "contour line" as "a line
( as on a map) connecting the points on a land surface that have the same
elevation"). Consistent with Appellants' description of the term and its
ordinary meaning, Appellants' Specification describes the contour line as
dependent on topography, i.e., the curvature of the cut. App. Br. 21. For a
spherically curved cut, concentric circular contour lines are obtained. Id.;
see also Spec. 4:5-9 (further describing shapes of contour lines).
None of the cited portions of Juhasz teaches guiding the focal point to
follow contour lines of the cut. Instead, Juhasz describes positioning a
pattern of spots in each layer "in a spiral pattern [that] is substantially
centro-symmetric to the optical access of the eye." Juhasz, col. 3, 11. 29-31.
"The result is a plurality of substantially flat layers of photdisrupted stromal
tissue, each layer being substantially perpendicular and substantially
symmetric to the optical axis." Id. at col. 3, 11. 30-33. "Each successive
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layer in the anterior progression has a smaller outer diameter than the
previous layer" to result in the desired dome shaped cavity. Id. at col. 3, 11.
55---60. "The object is to create a dome-shaped cavity within the stromal
tissue[, which] subsequently collapses, reshaping the corneal surface." Id. at
col. 3, 11. 23-25. Thus, Juhasz does not disclose that the focal point follows
a contour line.
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claims 20 and 32, and dependent claims 22-26, 29-31, 36-
40, and 43--45 under 35 U.S.C. § 102(b).
Obviousness
Claims 27-30, 34, 35, 41, 42, and 46 each depend from one of
independent claims 20 and 32. The rejections of these dependent claims do
not cure the deficiency in the Examiner's rejection of the independent
claims. Therefore, we do not sustain the Examiner's rejections of claims
27-30, 34, 35, 41, 42, and 46 under 35 U.S.C. § 103(a) for the same reasons
set forth above with respect to independent claims 20 and 32.
DECISION
The Examiner's rejection of claims 28 and 42 under 35 U.S.C. § 112,
first paragraph, is reversed.
The Examiner's rejection of claims 20, 22-32, and 34--46 under 35
U.S.C. § 112, second paragraph, is reversed.
The Examiner's rejection of claims 20, 22-26, 29-32, 36--40, and 43-
45 under 35 U.S.C. § 102(b) is reversed.
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The Examiner's rejections of claims 27-30, 34, 35, 41, 42, and 46
under 35 U.S.C. § 103(a) are reversed.
REVERSED
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