Ex Parte Neitz et al

Patent Trial and Appeal Board

Feb 22, 2017

13141161 (P.T.A.B. Feb. 22, 2017)

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.
13/141,161 09/12/2011 Jay Neitz MCW-1450US 3040
34395 7590 02/24/2017
OLYMPIC PATENT WORKS PLLC
P.O. BOX 4277
SEATTLE, WA 98104
EXAMINER
TALLMAN, ROBERT E
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
02/24/2017 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):
joanne@olympicpatentworks.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAY NEITZ and
MAUREEN NEITZ1
Appeal 2016-000748
Application 13/141,161
Technology Center 2800
Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 17—23. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
1 According to the Appellants, the real party in interest is Medical College of
Wisconsin. App. Br. 1. Furthermore, the Specification states that “[t]he
government has certain rights to the application under federally sponsored
research through the National Institutes of Health (NIH) Grant No.
EY009620LD.” Spec. 1:8-10.
Appeal 2016-000748
Application 13/141,161
BACKGROUND
The subject matter on appeal relates to a therapeutic device for
preventing, ameliorating, or reversing eye-length-related disorders such as
myopia. E.g., Spec. 1:13—16; Claim 17. Claim 17 is reproduced below from
page 15 (Claims Appendix) of the Appeal Brief:
17. A therapeutic device for preventing, ameliorating, or reversing
eye-length-related disorders, the therapeutic device comprising
optical elements that reduce the average spatial frequency of
light patterns incident on a patient’s retinas below a threshold
spatial frequency, the optical elements incorporated into one of:
blur-inducing glasses;
blur-inducing contact lenses;
blur-inducing glasses that incorporate wavelength-dependent
filters; and
blur-inducing contact lenses that incorporate wavelength-
dependent filters.
REJECTIONS ON APPEAL
1. Claims 17—19 and 21—23 stand rejected under 35 U.S.C. § 102(b)
as anticipated by To et al. (US 7,506,983 B2, filed Sept. 30, 2004).
2. Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over To.
3. Claims 17—19 and 21—23 stand rejected under 35 U.S.C. § 102(b)
as anticipated by To as evidenced by Okada et al. (Yuuki Okada et al.,
Target spatial frequency determines the response to conflicting defocus- and
convergence-driven accommodative stimuli, 46 Vision Research 475
(2006)).
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ANALYSIS
Rejection 1
The Appellants present arguments only for claim 17. We limit our
discussion to that claim. The remaining claims subject to Rejection 1
depend, directly or indirectly, from claim 17, and will stand or fall with
claim 17.
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner’s
rejection. Accordingly, we affirm the rejection for reasons set forth below,
in the Final Action, and in the Examiner’s Answer. See generally Final
Act. 2—6; Ans. 5—9.
In the Final Action, the Examiner finds that To teaches lenses that
produce a defocused image. Final Act. 2—3 (citing To Fig. 5b & 4:1—17).
The Examiner determines that defocusing is equivalent to blurring, and that
To’s lenses therefore inherently “reduce the average spatial frequency of
light patterns incident on a patient’s retinas below a threshold spatial
frequency,” as recited by claim 17. Id. at 2—3; Ans. 3,5.
On page 6 of the Answer, the Examiner further finds, inter alia, that
“[t]he structure from the applicant’s specification (Para. 0045) is the same as
the embodiment found in To [] (Para. 0033—0034).” Ans. 6. The Examiner
repeats that finding on page 7 of the Answer. See id. at 7. It appears that the
Examiner is referring to page 16, lines 10—21 of the Appellants’
Specification, and to To at 3:59-4:10. Page 16 of the Appellants’
Specification discusses embodiments of the invention in which blurring is
induced by light scattering (15:29—16:3), diffraction (16:4—9), and
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progressive lenses (16:10—21). The cited portions of To discuss treatment of
a refractive disorder through the use of lenses that induce defocusing. To at
3:59-4:10. In the same vicinity of To, To discusses the use of bi-focal or
multi-focal lenses and references Figure 5b (Figures 4—6), which the
Examiner also relies on. See Final Act. 2.
The Appellants principally argue that To says nothing expressly about
blurring or reducing average spatial frequency, and they rely on the
“Statement by Dr. Jay Neitz” (“Neitz Statement”), which was originally
filed with an Office Action Response dated January 14, 2014, to further
argue that To’s “defocusing” is not equivalent to “blurring” and would not
have been expected inherently to reduce average spatial frequency. See
generally App. Br.; Reply Br.; Neitz Statement.
As an initial matter, we must evaluate the scope of the claim. The
Examiner determines that the claim language “reduce the average spatial
frequency” is a functional limitation. E.g., Final Act. 3. However, to the
extent that the recited functional language limits the structure of the
therapeutic device of claim 17, the functional language cannot be ignored.
See, e.g., Textron Innovations Inc. v. Am. Eurocopter Corp., 498 F. App’x
23, 28 (Fed. Cir. 2012) (citing K-2 Corp. v. Salomon S.A., 191 F.3d 1356,
1363 (Fed. Cir. 1999)). Thus, claim 17 does not encompass optical elements
such as blur-inducing glasses or lenses unless those optical elements are
structurally capable of reducing average spatial frequency, as recited by
claim 17.
Next, we turn to issues concerning the Neitz Statement. In the
Answer, the Examiner largely disregards the Neitz Statement because the
Statement is not made under oath and fails to “make a statement to validity
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of the statement.” See Ans. 5—6. In general, the Neitz Statement explains
concepts of focusing, defocusing, and blurring from the perspective of a
person of ordinary skill in the art. See generally Neitz Statement. With
reference to various figures of To, Dr. Neitz states that “To does not attempt
to induce blur or to induce low spatial frequency of light patterns falling on
the retina, but instead attempts to produce images focused either in front of
the retina or behind the retina . . . .” Id. at 2-4. Dr. Neitz concludes that
“[tjhere is simply no reason to believe that a user of To’s devices would
experience even a slight decrease in the spatial frequency of light patterns
falling on the user’s retina.” Id. at 5—6.
In the Reply Brief, the Appellants describe the Examiner’s treatment
of the Neitz Statement as “disgraceful”2 and essentially argue that, because
the Neitz Statement is part of the prosecution history and listed in the
Evidence Appendix, it should be fully considered as evidence. See Reply
Br. 8-9.
Section 1.132 of Title 37, Code of Federal Regulations, states:
When any claim of an application or a patent under
reexamination is rejected or objected to, any evidence
submitted to traverse the rejection or objection on a basis not
otherwise provided for must be by way of an oath or declaration
under this section.
2 Both the Appeal Brief and the Reply Brief include numerous unnecessary
comments concerning the Examiner and the Office. See, e.g., App. Br. 6, 7,
8, 9, 12; Reply Br. 2, 3, 5, 6, 7, 8, 9, 10, 11, 12, 13. We note that counsel for
the Appellants has previously been warned that such comments are
unhelpful. See, e.g., Ex parte Naeemi, No. 2015-006286, slip-op. at 4 n.7
(PTAB Nov. 30, 2016) (Application no. 12/610,322). We remind counsel of
the duty to conduct all business with the Office with decorum and courtesy.
See 37 C.F.R. § 1.3.
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37 C.F.R. § 1.132; see also MPEP § 715.04(11) (discussing “Formal
Requirements of Affidavits and Declarations” in the context of 37 C.F.R.
§ 1.131).3 “The reason for requiring evidence in declaration or affidavit
form is to obtain the assurance that any statements or representations made
are correct, as provided by 35 U.S.C. § 25 and 18 U.S.C. § 1001.” Ex parte
Gray, 10 USPQ2d 1922, 1928 (BPAI 1989).
The Neitz Statement lacks a statement or oath recognizing that false
statements are subject to punishment under 18 U.S.C. § 1001 and, as such,
lacks the indicia of accuracy and reliability necessary to serve as evidence.
Thus, the Neitz Statement is not entitled to a presumption of accuracy and
truthfulness, like a signed oath or declaration. It will not be treated as
evidence, and instead will be treated as attorney argument, persuasive to the
extent that it is supported by other evidence of record.
Turning now to the substance of the § 102(b) rejection, even if we
were to agree with the Appellants that the Examiner has not established that
To’s optical elements necessarily and inherently reduce average spatial
frequency merely because they are described as “generat[ing] a defocus,” we
are nevertheless persuaded that at least some of the embodiments disclosed
by To do inherently reduce average spatial frequency and fall within the
scope of claim 17.
As explained above, at two different points in the Examiner’s Answer,
the Examiner determines that embodiments described by To are “the same as
the embodiment” described by the Appellants’ Specification. In that regard,
3 The Examiner’s citation to MPEP § 715.4, see Ans. 5—6, appears to be a
typographical error that was intended to read 715.04.
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we note that Figure 5b of To, cited by the Examiner, see Final Act. 2,
discloses a lens that includes surface bumps or aberrations to produce two
difference optical zones. See To at Fig. 5b, 4:31—43; see also id. at 4:13—17
(describing “bi-focal and multi-focal” lenses, and “diffractive multi-focal”
lenses). Those bumps or aberrations appear to refract or scatter light,
resulting in the production of one image on the retina, and one image in front
of the retina (i.e., a defocused image). Id. at 4:31—43. To teaches that the
result of this is that the eye is “prevented] . . . from growing or elongating.
Consequently, myopic progression in the myopic eye is slowed, stopped, or
reversed.” Id. at 4:41—43.
The Appellants likewise describe a lens that includes surface bumps
or aberrations. E.g., Spec. 15:3—8, 16:18—21, 23:13—15; see also Claim 18.
The Specification teaches that such features induce blur. E.g., Spec. 15:3—8,
16:18—21. The Specification also teaches that light scattering induces
artificial blurring. E.g., Spec. 15:29-16:3. Similar to To, the Specification
teaches that use of a lens according to an embodiment of the invention treats
eye-length-related disorders (such as myopia) by preventing the eye from
lengthening. E.g., Spec. 10:18—31, 13:7—11, 13:22—27,23:28—24:6.
As noted above, To also discloses bi-focal lenses, multi-focal lenses,
and “diffractive multi-focal lenses.” To at 4:13—17. The Appellants’
Specification expressly describes embodiments in which “progressive lenses
are employed to introduce artificial blurring.” Spec. 16:10—11. The
Specification also expressly describes embodiments in which “diffraction is
used to provide the blurring.” Id. at 16:4—5. The Appellants provide no
persuasive explanation as to how the progressive lenses and diffraction
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described by the Specification differs from the multi-focal and diffractive
multi-focal lenses of To.
Thus, on the record before us, and consistent with the Examiner’s
finding that To teaches embodiments that are the same as those disclosed by
the Appellants’ Specification, To (1) discloses structures (e.g., lenses with
bumps and/or surface aberrations, progressive lenses, and diffractive lenses)
that appear to be the same as those disclosed by the Specification,
(2) teaches or suggests that those structures function in a way that the
Specification indicates induces blurring (e.g., scattering or diffracting light),
and (3) teaches that the same result is achieved by To’s lenses as the result
achieved by the Appellants’ invention (i.e., “prevents the eye from growing
or elongating,” consequently “slowing], stopping], or reversing]” myopia,
To at 4:40-43).
That evidentiary record is sufficient to shift the burden to the
Appellants to show that To’s lenses do not meet the “reduce the average
spatial frequency of light patterns” limitation of claim 17. See In re
Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (“[Wjhere the Patent Office
has reason to believe that a functional limitation asserted to be critical for
establishing novelty in the claimed subject matter may, in fact, be an
inherent characteristic of the prior art, it possesses the authority to require
the applicant to prove that the subject matter shown to be in the prior art
does not possess the characteristic relied on.”); In re Spada, 911 F.2d 705,
708 (Fed. Cir. 1990) (“[Wjhen the PTO shows sound basis for believing that
the products of the applicant and the prior art are the same, the applicant has
the burden of showing that they are not.”); see also In re Best, 562 F.2d
1252, 1255 (CCPA 1977) (“Where, as here, the claimed and prior art
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products are identical or substantially identical, or are produced by identical
or substantially identical processes, the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product.”).
The Appellants have not carried that burden. Beyond a conclusory
statement that “[t]he current claimed therapeutic device is not ‘the same as
the embodiment found in [To],” Reply Br. 12, the Appellants do not
meaningfully address the specific embodiments of To described above and
the similarity of those embodiments to embodiments described by the
Appellants’ Specification. For example, the Appellants do allege or provide
persuasive evidence to show that the lens of To Fig. 5b does not constitute a
lens with bumps, depressions, or aberrations. Nor do they explain or provide
evidence to show why the scattering of light depicted by the lenses in To
Figs. 5a and 5b would not inherently induce blurring. See Spec. 15:29-16:3.
Similarly, the Appellants do not address why To’s multi-focal and
diffractive embodiments would not induce blurring that would be expected
to reduce the average spatial frequency of light patterns. Those omissions
from the Appellants’ arguments are particularly noteworthy given that To
expressly teaches that its lenses achieve the same result sought by the
Appellants: Prevention of eye lengthening.
The fact that To’s lenses superimpose two images within a patient’s
eye is not persuasive of reversible error. E.g., Reply Br. 12. One of those
images is focused on the patient’s retina (i.e., a focused imaged), and one of
those images is focused in front of or behind the patient’s retina (i.e., a
defocused image). To col. 4. The Appellants provide no persuasive
evidence that lenses that produce a defocused image in front of or behind the
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retina would not be considered “blur-inducing,” as required by claim 17,
particularly given that the structure of the lenses appears to be the same as
the structure of lenses described by the Appellants’ Specification as inducing
blur, as described above. We recognize that To states that “[i]t is preferred
that the shift be introduced together with the conventional correction so that
normal vision can be maintained throughout the treatment.” To at 4:5—7;
App. Br. 5. However, To describes the maintaining of normal vision as
“preferred,” not required, and the Appellants do not persuasively explain
why that description in and of itself somehow removes the lens structures
taught by To from the scope of claim 17.
We also recognize that the Neitz Statement concludes that “[t]here is
simply no reason to believe that a user of To’s devices would experience
even a slight decrease in the spatial frequency of light patterns falling on the
user’s retina.” Neitz Statement at 5—6. However, as explained above, the
Neitz Statement is not evidence, and, in any event, it does not persuasively
address the embodiments of To described above that appear to be
structurally and functionally the same as embodiments described by the
Specification, and that achieve the same end result of preventing eye growth.
Thus, on the record before us, we are not persuaded of reversible error
in the Examiner’s determination that To discloses embodiments that
inherently meet the “reduce the average spatial frequency” limitation of
claim 17 and fall within the scope of the claim. Accordingly, we affirm the
Examiner’s rejection of claim 17.
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Rejection 2
Claim 20 indirectly depends from claim 17 and recites “wherein one
lens of the therapeutic device has a central, non-blur-inducing region and the
other lens has a central, blur-inducing region.”
For reasons set forth by the Appellants, see App. Br. 12—13, we
cannot sustain the Examiner’s rejection. Namely, claim 20 requires two
different lenses—one with a central, non-blur-inducing region and another
with a central, blur-inducing region. The portion of To relied upon by the
Examiner does not appear to have any relevance to such a pair of lenses.
See id. The Examiner’s rejection does not adequately explain why the fact
that “myopic distortion in one eye can vary from the other [eye]” would
motivate a person of ordinary skill in the art to achieve the device of
claim 20. See Final Act. 5—6; Ans. 9.
Accordingly, we must reverse the Examiner’s rejection of claim 20.
Rejection 3
Because we affirm Rejection 1, above, which encompasses the same
claims as those subject to Rejection 3, we decline to address the Examiner’s
reliance on Okada, which was newly cited in the Examiner’s Answer. See
Ans. 2-4.
CONCLUSION
We AFFIRM the Examiner’s § 102(b) rejection of claims 17—19 and
21—23 as anticipated by To.
We REVERSE the Examiner’s § 103(a) rejection of claim 20 as
unpatentable over To.
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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-IN-PART
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