Ex Parte Muri et al

Patent Trial and Appeal Board

Mar 29, 2018

11558435 (P.T.A.B. Mar. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111558,435 11109/2006
33357 7590 04/02/2018
JOHNSON & JOHNSON SURGICAL VISION, INC.
1700 E. ST. ANDREW PLACE
SANTA ANA, CA 92705
John I. Muri
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.
27625US01 2236
EXAMINER
SASS, SARA A
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
04/02/2018 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):
JNJUSPatent@corus.jnj.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN I. MURI and CRAIG EDWARDS
Appeal2017-000646
Application 11/558,435
Technology Center 3700
Before JILL D. HILL, THOMAS F. SMEGAL, and
LISA M. GUIJT, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John I. Muri and Craig Edwards ("Appellants") 1 seek our review
under 35 U.S.C. § 134 of the Examiner's rejections2 under 35 U.S.C.
§ 103(a) of claims 1, 5, 19, 23, 26, and 30 as unpatentable over Nazarifar
(US 7,244,240 B2, issued July 17, 2007) and Artsyukhovich (US
2007/0107490 Al, pub. May 17, 2007); of claims 3, 20, 21, and28 as
unpatentable over Nazarifar, Artsyukhovich, and Cole (WO 99/17818, pub.
1 According to Appellants, the real party in interest is Abbott Medical Optics
Inc. Appeal Br. 3.
2 Appeal is taken from the adverse decision of the Examiner, set forth in the
Final Office Action, dated May 8, 2015 ("Final Act").
Appeal2017-000646
Application 11/558,435
Apr. 15, 1999); and of claims 6, 25, and 32 as unpatentable over Nazarifar,
Artsyukhovich, and Angelini (US 2003/0108429 Al, pub. June 12, 2003). 3
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claims 1, 19, and 26 are independent claims. Claim 26 is reproduced
below and illustrates the claimed subject matter, with disputed limitations
emphasized.
26. An eye treatment system comprising:
a console comprising a cassette receptacle,
an eye treatment probe configured to be fluidly
connected to the console via a cassette disposed within the
cassette receptacle, wherein the cassette receptacle is
configured to receive a plurality of cassette types, a first of the
plurality of cassette types configured to facilitate a positive
displacement aspiration functionality, a second of the plurality
of cassette types configured to facilitate vacuum-based
aspiration functionality, and a third of the plurality of cassette
types configured to facilitate the positive displacement
aspiration functionality and the vacuum-based aspiration
functionality, and wherein the console and each received
cassette type are configured to communicate to establish the
functionality of each received cassette type by the console
detecting a functional indicator in each received cassette type,
wherein the console is configured to activate the indicated
functionality to the received cassette commensurate with the
detected functional indicator.
3 Claims 8-18 have been cancelled by an Amendment filed September 17,
2010 and claims 2, 4, 7, 22, 24, 27, 29, and 31 have been canceled by an
Amendment filed November 18, 2014. Thus, inclusion of claim 24 in the
Final Office Action as a pending claim is a typographical error. Final Act.
1; Appeal Br. 15 (Claims App'x).
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Application 11/558,435
ANALYSIS
Obviousness of Claims 1, 5, 19, 23, 26, and 30 over Nazarifar and
Artsyukhovich
Appellants argue claims 1, 5, 19, 23, 26, and 30 as a group. See
Appeal Br. 6-11; Reply Br. 1-12. We select claim 26 as the representative
claim for this group, and the remaining claims stand or fall with claim 26.
See 37 C.F.R. § 41.37(c)(l)(iv); In re McDaniel, 293 F.3d 1379, 1383 (Fed.
Cir. 2002); see also In re Watts, 354 F.3d 1362, 1368 (Fed. Cir. 2004).
The Examiner finds that N azarifar discloses an eye treatment system
including, inter alia, a console having a cassette receptacle "configured to
interchangeably receive more than one type of cassette to simplify surgical
setup for different portions of surgical procedure. " 4 Final Act. 2 (citing
Nazarifar, col. 3, 11. 24--30; Fig. 9). The Examiner also determines that in
Figure 2, Nazarifar teaches a "console and cassette [that] communicate to
establish a functionality of [the] cassette by the console detecting a
component [regarding] the operation of the cassette." Id. at 4 (citing
Nazarifar, col. 6, 1. 59-col. 7, 1. 17; col. 8, 11. 30-39). Although finding that
"N azarifar discloses the console detects the received cassette (column 7,
lines 26-33)," the Examiner acknowledges Nazarifar "fails to teach [such
detection] is by a detected functional indicator," as claimed. Id.
4 We understand the Examiner to be generally referring to conventional
surgical systems such as briefly described in Nazarifar, column 1, line 66-
column 2, line 6, where a single surgical console is designed to receive
separate cassettes for either posterior segment or anterior segment
procedures. We also understand Nazarifar to teach a console for receiving
an improved single cassette capable of performing both procedures. See
column 3, lines 19-31.
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However, the Examiner determines Artsyukhovich "teaches the ability
of and thus provides motivation for eye treatment systems and consoles that
detect a functional indicator ... in different types of cassettes to identify
cassette features and cassette specific performance characteristics." Final
Act. 5 (citing Artsyukhovich i-fi-1 5-8). In particular, the Examiner also
determines that Artsyukhovich
teaches cassette receptacles 110 configured to receive a plurality
of cassettes 10, 1 O' types, . . . each cassette type 10, 1 O' having a
different configuration as recited in claim 26, and wherein the
console 100 and each received cassette 10, 10 communicate to
establish a functionality of each cassette by the console 100
detecting a component in each cassette indigenous to the
operation of the cassette.
Id. at 5 (citing Artsyukhovich i-fi-f 13-14; Figs. 1-3); Ans. 17-18.
Based on the foregoing, the Examiner determines that it would have
been obvious
to provide the types of cassettes as taught by [ Artsyukhovich]
with the system of Nazarifar since [Artsyukhovich] states ...
that the benefit of providing systems with this design is that
information specific to the performance parameters of each
individual type of cassette is transferred to the surgical console
so that the software or controller of the console can make
automatically appropriate adjustments in the operating
parameters of the console to help assure optimum performance
of the console and cassettes . . . to optimize the fluidic
performance of the entire system thereby providing an improved
surgical system for patients.
Id. at 5---6 (citing Artsyukhovich i-fi-13, 5-8, 14); Ans. 18.
Furthermore, the Examiner relies on Nazarifar's disclosure of
"aspiration port 118 coupled to first vacuum chamber port 120 through a
manifold 136," as well as Nazarifar's teaching that "'a peristaltic pump
opens and closes manifold 13 8 in order to pump aspirated ophthalmic tissue
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Application 11/558,435
and fluid from vacuum chamber 108, through third vacuum chamber port
124, into manifold 138, and through drainage bag port 126," for determining
that, in Nazarifar, "not only is a vacuum based pump employed for
aspiration, but Nazarifar's pump chambers are used with a peristaltic pump,"
such that Nazarifar also discloses the claimed first type of cassette (i.e.,
configured to facilitate a positive displacement aspiration functionality).
Ans. 11-12 (citing Nazarifar. col. 5, 11. 1-3and11. 45--48, Fig. 8, Spec. i-f 18).
In taking issue with the Examiner's findings and conclusions,
Appellants acknowledge "Nazarifar generally discloses a prior art surgical
system that may accept two separate surgical cassettes," but contend that
Nazarifar employs "only vacuum based aspiration functionality," not
"positive displacement aspiration functionality." 5 Appeal Br. 8. Appellants
also contend that ''Nazarifar nowhere discloses a single console that is
configured to receive the three specific cassette types as claimed."6 Id. at 10
Although we agree that Nazarifar does not anticipate claim 26, we
understand the Examiner's rejection to include Artsyukhovich, about which
Appellants merely observe "fails to cure the deficiencies ofNazarifar." 7 Id.
at 9-10; see also Reply Br. 12. However, Appellants' contention amounts
5 Whether or not the Examiner has correctly described the teaching of
Nazarifar, Appellants acknowledge that "vacuum based aspiration
functionality" and "positive displacement aspiration functionality" are both
conventional fluid transport mechanisms during treatment of the eye. See
Specification, i-fi-1 6-10.
6 If there is further prosecution of this application, the Examiner may wish to
consider whether all the pending claims should be rejected under 35 U.S.C.
§ 101, based on a lack of utility in reciting three cassette types that are
redundant in their functionality.
7 In an appeal under 35 U.S.C. § 134(a), it is the Examiner's final rejection
that we review. See In re Webb, 916 F.2d 1553, 1556 (Fed. Cir. 1990).
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Application 11/558,435
to unsupported attorney argument, and is entitled to little, if any, weight.
See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). In other words,
Appellants do not explain why the Examiner's reliance on Nazarifar, as set
forth supra, for teaching a first cassette type configured to facilitate a
positive aspiration functionality, as claimed, is in error. Nor do Appellants
address the Examiner's proposed combination ofNazarifar and
Artsyukhovich to arrive at a system that uses a single console to receive
different types of cassettes, including the three claimed.
Furthermore, based upon our review of the Examiner's stated
rationale, as set for in the Final Action and Answer, we are not persuaded
that the Examiner failed to produce sufficient evidence and findings
(supported by citation to the reference) to support a prima facie case of
obviousness based on the teachings of the cited references. See, e.g., In re
Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). 8 As indicated above,
Appellants do not explain how or why the Examiner's analysis of
Artsyukhovich might be in error only that it is.
For the foregoing reasons, we sustain the Examiner's rejection of
claims 1, 5, 19, 23, 26, and 30 as obvious over Nazarifar and Artsyukhovich.
Obviousness of Claims 3, 20, 21, and 28 over Nazarifar,
Artsyukhovich, and Cole
Other than observing that Cole "fails to overcome the deficiencies of
Nazarifar and [Artsyukhovich]," we understand Appellants' appeal of the
8 "[A ]ll that is required of the office to meet its prima facie burden of
production is to set forth the statutory basis of the rejection and the reference
or references relied upon in a sufficiently articulate and informative manner
as to meet the notice requirement of [35 U.S.C.] § 132." Jung, 637 F.3d at
1363.
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rejection of dependent claims 3, 20, 21, and 28 to rest on the arguments
presented supra regarding the combination ofNazarifar and Artsyukhovich.
Appeal Br. 11; Reply Br. 13. We are not persuaded that Appellants'
arguments are demonstrative of error in the Examiner's rejection of
independent claims 1, 19, and 26, as set forth supra. As such, for the same
reasons, we sustain the rejection of claims 3, 20, 21, and 28 under 35 U.S.C.
§ 103(a) as unpatentable over Nazarifar, Artsyukhovich, and Cole.
Obviousness of Claims 6, 25, and 32 as unpatentable over Nazarifar,
Artsyukhovich, and Angelini
Other than observing that Angelini "fails to overcome the deficiencies
ofNazarifar and [Artsyukhovich]," we understand Appellants' appeal of the
rejection of dependent claims 6, 25, and 32 to rest on the arguments
presented supra regarding the combination ofNazarifar and Artsyukhovich.
Appeal Br. 11-12; Reply Br. 13-14. We are not persuaded that Appellants'
arguments are demonstrative of error in the Examiner's rejection of
independent claims 1, 19, and 26, as set forth supra. As such, for the same
reasons, we sustain the rejection of claims 3, 20, 21, and 28 under 35 U.S.C.
§ 103(a) as unpatentable over Nazarifar, Artsyukhovich, and Angelini.
DECISION
We AFFIRM the Examiner's rejections.
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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