Ex Parte Poirrier et al

Patent Trial and Appeal Board

Oct 14, 2014

10599520 (P.T.A.B. Oct. 14, 2014)

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.
10/599,520 05/11/2007 Robert Poirrier 80119/40360
(150026.00000
1235
29471 7590 10/14/2014
MCCRACKEN & FRANK LLC
P.O. Box 787
Elmhurst, IL 60126
EXAMINER
LIPITZ, JEFFREY BRIAN
ART UNIT PAPER NUMBER
3769
MAIL DATE DELIVERY MODE
10/14/2014 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 ROBERT POIRRIER and VICNENT MOREAU
____________

Appeal 2012-0064901
Application 10/599,520
Technology Center 3700
____________

Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.

JENKS, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal2 under 35 U.S.C. § 134 involving claims directed to
a method and device for applying phototherapy to the eyes of a patient. The
Examiner has rejected the claims as obvious. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part.

1 This record includes a transcript of the oral hearing held Sept. 16, 2014.
2 Appellants identify Constructions Electriques Schréder of Ans, Belgium as
the Real Party in Interest. (Br. 2.)
Appeal 2012-006490
Application 10/599,520

2
STATEMENT OF THE CASE
The Specification explains that light therapy is provided by “arranging
the light source at the periphery of the field of vision so as to allow the usual
activities of the individual, and in deflecting said light rays onto a specific
zone of the retina so as to maintain vision.” (Spec. 4: ¶ 9.) “[T]he fovea
being the most sensitive zone of the eye which allows fine vision and
analysis of details during” activities, the present therapy is specifically
applied to deflect rays “in such a way as to exclude the fovea” (id. at ¶ 11).
Claims 1–3, 6–10, and 13–17 are on appeal, and can be found in the
Claims Appendix of the Appeal Brief (Br. 13–14). Claims 1 and 6 are
representative of the claims on appeal, and read as follows (emphasis
added):
1. Phototherapy method, acting on a set of eyes of an
individual with a head, each eye
comprising a pupil, a retina and a fovea, through light
rays of at least one specific wavelength, emitted by at least one
light source which is stationary relative to the head of the
individual, wherein the method comprises the steps of:
arranging the light source at the periphery of the field of
vision so as to allow the usual activities of the individual; and
using a diffractive optical element to deflect said light
rays by diffraction onto a specific zone of the retina so as to
maintain vision.

6. Device for implementing a phototherapy method on a set of
eyes of an individual with a head, each eye comprising a pupil,
a retina and a fovea, and comprising:
a support designed to be immobilised on the head of the
individual;
at least one light source mounted on the support at the
periphery of a field of vision of the individual, emitting light
rays of at least one specific wavelength and being arranged so
Appeal 2012-006490
Application 10/599,520

3
that the latter are directed into the eyes, by deflection means,
onto a specific zone of the retina; and
wherein said deflection means comprises at least one off-
axis diffractive optical element for each eye.
The following grounds of rejection are before us for review:
I. claims 1–3, 6, 7, 9, 10, and 13–17 under 35 U.S.C. § 103(a) as
unpatentable over Gerdt3 in view of Potin;4 and
II. claim 8 under 35 U.S.C. § 103(a) as unpatentable over Gerdt
and Potin and further in view of Goldman.5

I. The Issue: Obviousness over Gerdt and Potin
The Examiner finds that Gerdt teaches almost all elements of the
claimed invention (Ans. 5). The Examiner acknowledges that “Gerdt does
NOT teach an off-axis diffractive optical element” and looks to Potin for a
teaching of this missing element (id.).
Does the preponderance of the evidence of record support the
Examiner’s position that the combination of Gerdt and Potin disclose a
diffractive optical element?
Findings of Fact
FF1. Gerdt disclosed that “[p]hotons of specific wavelength are
delivered to the eye in flux densities near zero at the fovea and much higher
at retinal regions away from the fovea.” (Gerdt, col. 5, ll. 57-59; see also
Ans. 5.)

3 Gerdt, US 6,235,046 B1, issued May 22, 2001.
4 Potin, US 6,715,150 B1, issued Apr. 6, 2004.
5 Goldman, US 5,923,398, issued July 13, 1999.
App
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Appeal 2012-006490
Application 10/599,520

5
Principle of Law
“[O]bviousness requires a suggestion of all limitations in a claim.”
CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003)
(citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)).

Analysis
Claim 1
Appellants acknowledge that Gerdt directs light onto specific portions
of the retina (Br. 10). Appellants, however, contend that Gerdt “fails to
disclose or suggest a diffractive optical element (DOE), which is recited by
all of the claims of the present application.” (Id.)
We recognize, but are not persuaded by Appellants contention, that
Gerdt does not disclose a diffractive optical element. “[D]uring examination
proceedings, claims are given their broadest reasonable interpretation
consistent with the specification.” In re Hyatt, 211 F.3d 1367, 1372 (Fed.
Cir. 2000). The Specification provides that the deflection means can be a
diffractive lens “such as an ‘off-axis diffractive optical element’” (Spec. 8: ¶
37 (emphasis added)). This exemplary language indicates that multiple
types of diffractive optical elements are contemplated within the scope of the
claim. The Specification explains that, as light passes through a diffractive
optical element, the wave front is changed (FF3). In addition, the
Specification acknowledges that the diffractive optical elements can be made
of various materials including glass (FF3). A skilled artisan would
recognize that lenses are often made of glass.
Here, the Examiner finds that “Gerdt teaches using a lens (136; Figure
12) to redirect light to the eye” (Ans. 5; see FF2), specifically, “to ‘modify
Appeal 2012-006490
Application 10/599,520

6
the transmission angle of the light” (Ans. 10). Furthermore, we note that
when light passes through glass there will necessarily be some diffraction of
the light rays as they traverse the medium due to the wave properties of
light. The Examiner finds that Gerdt teaches all elements of the claimed
invention, but acknowledges that Gerdt does not disclose the “off-axis
diffractive optical element” (Ans. 5 (emphasis added)). Although claim 1
recites “diffractive optical elements,” it does not recite the “off-axis
diffractive optical element,” which the only element specifically identified
by the Examiner as missing from Gerdt. The Examiner’s reliance on Potin
with respect to claim 1 is not relevant because this claim does not recite the
“off-axis diffractive optical element.”
Accordingly, with respect to claim 1, we conclude that the
preponderance of the evidence of record supports the Examiner conclusion
that the claim is obvious. As claims 2, 3, and 16 have not been argued
separately, they fall with claim 1. 37 C.F.R. § 41.37(c)(1). The Board may
rely on less than all of the references applied by an Examiner in an
obviousness rationale without designating it as a new ground of rejection. In
re Bush, 296 F.2d 491, 496 (CCPA 1961); In re Boyer, 363 F.2d 455, 458,
n.2 (CCPA 1966).
Claim 6
Appellants contend that Potin’s holographic diffraction mask is used
“to focus light onto any or all areas of the retinas [and] to reduce or
eliminate visual distortion experienced by a wearer of a helmet.” (Br. 9.)
There is nothing in Potin to suggest “that the holographic mask is used to
direct light into the eye of the helmet wearer or that the light is focused by
this hologram.” (Id. at 10.)
Appeal 2012-006490
Application 10/599,520

7
With respect to claim 6, we find that Appellants have the better
position. The Examiner acknowledges that Gerdt does not disclose the “off-
axis diffractive optical element” (Ans. 5). The Examiner looks to Potin as
disclosing “an off-axis diffractive optical element or holographic diffraction
mask affixed to a face of the visor . . . . [That allows] the user to look in any
direction and see the projected image or a real image clearly” (Ans. 5).
Here, the Examiner has not sufficiently explained how to combine the
various portions of the references in order to direct light of a specific
wavelength onto a defined area of the retina. What is missing from the
Examiner’s analysis is evidence that a skilled artisan would have a reason to
take the off-axis diffractive optical element that provides clarity over the
entire visual field of the wearer and apply that mechanism to project light
onto a specific area of the eye. See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (obviousness rejections require “some articulated reasoning
with some rational underpinning”).
We find that the Examiner failed to establish a sufficient evidentiary
basis on this record to support a conclusion that the combination of Gerdt
and Potin provides a “deflection means [that] comprises a least one off-axis
diffractive optical element” that directs the light onto a specific zone of the
retina. Accordingly, we reverse claim 6 and its dependents.

II. The Issue: Obviousness over Gerdt, Potin, and Goldman
The rejection claim 8, relies upon the underlying obviousness
rejection over claim 6, and is based on the combination of Gerdt, Potin, and
Goldman.
Appeal 2012-006490
Application 10/599,520

8
Although Goldman teaches off-axis stimulation, there is nothing in
Goldman to indicate that this is achieved by a diffractive optical element
(see Oral Hearing Transcript 10). Indeed, the Examiner’s reliance on
Goldman is limited to the “clip-on elements” (Ans. 8). Having reversed the
rejection of claim 6, we necessarily reverse this obviousness rejection further
including the “spectacle attachment,” since Goldman is not relied upon to
teach the “off-axis diffractive optical element” as required by claim 6.

SUMMARY
We affirm the rejection of claims 1–3 and 16 under 35 U.S.C.
§ 103(a) as unpatentable over Gerdt in view of Potin.
We reverse the rejection of claims 6, 7, 9, 10, 13–15, and 17 under
35 U.S.C. § 103(a) as unpatentable over Gerdt in view of Potin.
We reverse the rejection of claim 8 under 35 U.S.C. § 103(a) over
Gerdt and Potin and further in view of Goldman.

TIME PERIOD FOR RESPONSE
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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