Ex Parte Roberts

Patent Trial and Appeal Board

Mar 31, 2016

12091307 (P.T.A.B. Mar. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/091,307 04/24/2008
44564 7590 04/04/2016
BOND, SCHOENECK & KING, PLLC
10 BROWN ROAD, SUITE 102
ITHACA, NY 14850-1248
FIRST NAMED INVENTOR
Cynthia J. Roberts
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.
1228P003I (US) 1872
EXAMINER
MAI, HUY KIM
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
04/04/2016 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):
bskpto@bsk.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CYNTHIA J. ROBERTS 1
Appeal2014-006708
Application 12/091,3 07
Technology Center 2800
Before MICHAEL P. COLAIANNI, WESLEY B. DERRICK, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant appeals the maintained
rejection of claims 1-9, 22-31, 34, and 35 under 35 U.S.C. § 103(a) over
Chou2 in view ofWamicki. 3 We have jurisdiction pursuant to 35 U.S.C. § 6.
We REVERSE.
1 Appellant identifies Vision Optimization LTD as the Real Party in Interest.
Appeal Brief (filed June 20, 2013, "Br."), 3.
2 Chou et al., US 7,871,378 Bl, issued January 18, 2011.
3 Wamicki et al., US 4,995,716, issued February 26, 1991.
Appeal2014-006708
Application 12/091,3 07
CLAIMED SUBJECT MATTER
Appellant's invention relates to an apparatus and method for
measuring deformation characteristics of a cornea. Spec. Abstract.
Independent claim 1 is directed to the apparatus. Independent claim 22 is
directed to the method of using a device according to the apparatus.
Appellant's device and method projects a grid image over a substantial
portion of the surface of the cornea. Claims 1, 22.
Claim 1 is illustrative:
1. A device for measuring deformation characteristics of a
live cornea throughout a deformation time interval, comprising:
a corneal topographic characteristic-measuring
apparatus, which can measure a topographic deformation
characteristic of the live cornea, which includes an
optical system disposed along a fixed operational axis,
which further includes a spatially distributed grid object,
an image of which is disposable over a substantial
portion of the surface of the live cornea; and
a non-contact, deformation force-providing
apparatus disposed along a central operational axis,
which can deform the live cornea over the deformation
time interval,
wherein the corneal topographic characteristic-measuring
apparatus and the non-contact, deformation force-providing
apparatus are operationally integrated such that the topographic
deformation characteristic of the live cornea over the spatially-
distributed region of the surface of the cornea covered by the
image of the grid can be measured by the corneal topographic
characteristic-measuring apparatus during the deformation time
interval over which the live cornea is being deformed by the
non-contact, deformation force-providing apparatus.
Br. 17 (Claims Appendix).
2
Appeal2014-006708
Application 12/091,3 07
DISCUSSION
Having reviewed the Examiner's decision in light of Appellant's
arguments, 4 we are of the opinion that the Examiner erred in finding Chou
discloses illuminating a substantial portion of the surface of a cornea rather
than illuminating slices using a slit and, having relied on that erroneous
finding, has also failed to provide the necessary reasoning to modify the
cited prior art to provide the claimed invention. In re Spada, 911 F.2d 705,
708 n.3 (Fed. Cir. 1990) ("The primafacie case ... means not only that the
evidence of the prior art would reasonably allow the conclusion the
examiner seeks, but also that the prior art compels such a conclusion if the
applicant produces no evidence or argument to rebut it."). It follows,
therefore, that we reverse the Examiner's decision. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on
review of the prior art or on any other ground, of presenting a prim a facie
case of unpatentability.").
The Examiner relies on Chou as disclosing a device for measuring
deformation characteristics of a cornea according to claim 1 "except for a
spatially-distributed grid object, an image of which is disposable over a
substantial portion of the surface of the live cornea." Non-Final Act. 3--4
(citing Chou cols. 4-7; Figs. 1-3). As for the grid object, the Examiner
relies on W arnicki' s disclosure as evidence that it was known in the art of
ophthalmology to project a grid pattern onto the surface of a cornea. Non-
Final Act. 4.
4 We refer to the Non-Final Office Action (mailed November 8, 2012, "Non-
Final Act."), the Appeal Brief (filed June 20, 2013), and the Examiner's
Answer (mailed March 18, 2014, "Ans.").
3
Appeal2014-006708
Application 12/091,3 07
The Examiner relies on Chou's use of an adjustable slit 15-depicted
in Figure 3-to form "an appropriate illuminating profile" that is used to
detect topographic changes of the cornea, including a cornea deformation
event of at least the anterior surface of the eye as indicating "an illuminating
profile ... correspond[ ing] to the size of the eye." Ans. 4 (citing Chou col.
3, 11. 55-57; col. 5, 11. 18-24; claim 10, 11. 1-5). The Examiner finds,
accordingly, that "the adjustable slit of the Chou's device would form an
appropriate illumination profile for illuminating at least the anterior surface
of said eye." Ans. 4. Similarly, in addressing Appellant's position as to
what Chou discloses, the Examiner maintains that Chou's device "could not
operate as a slit lamp" because it forms an "illuminating profile for the size
of an eye." Ans. 5; see also Ans. 10 (Chou's "system would not and could
not be operated as a slit lamp.").
Having determined Chou discloses illuminating a substantial area
rather than operating as a slit lamp, the Examiner declines to provide any
reasoning or explanation as to how Chou would be modified other than to
include a grid pattern as disclosed in W arnicki. Ans. 11. As explained by
the Examiner, the deficiency of Chou was the lack of a grid pattern and
including the grid pattern "would not change the scope of the invention
disclosed by Chou." Ans. 11.
Appellant's general argument is that, contrary to the Examiner's
position, Chou discloses a slit lamp and its operation as a slit lamp to
illuminate a slice of an eye rather than to illuminate an area as required by
the claims and, having so erred, the Examiner has failed to establish a prima
facie case of obviousness. See generally Br.
4
Appeal2014-006708
Application 12/091,3 07
Having considered the record, it is our opinion that the Appellant's
position is well-founded. While it is undisputed that Chou discloses a device
and method for measuring/recording topographic changes of the cornea,
including thickness, radius curvature, and biomechanical properties of the
cornea, at issue is whether, in doing so, it illuminates a substantial portion of
the surface of a cornea rather than simply a slice.
The Examiner's factual finding includes that Chou uses an
"appropriate illuminating profile" in recording "topographic changes of the
cornea" (col. 3, 11. 57-58) and that the disclosed method "record[s] cornea
deformation event of at least the anterior surface" (claim 10). Ans. 4.
According to the Examiner, the "appropriate illuminating profile" is the size
of the eye. Ans. 4. The Examiner fails, however, to explain how
illuminating a slice would not be an appropriate illuminating profile where a
device and method illuminating a slice would allow measuring/recording
topographic changes of the cornea, either when used to illuminate a single
slice, or by composing a series of slices taken over a substantial portion of a
cornea. Ans., generally. In this regard, the depicted operation of Chou's
device identified as the "preferred embodiment" with an adjustable slit 15
provides illumination of but a portion of the depicted cornea tissue 3. Chou
col. 5, 11. 14-17, Fig. 3.
Further, we find the Examiner's response to Appellant's argument that
Chou describes its apparatus and method as improving prior art devices
using a slit shape to obtain slice images by incorporating a fluid discharge
system (Br. 6-7, citing Chou col. 5, 11. 54-59) to be inadequate to establish
Chou does not also use illumination of slices (Ans. 6-7, citing Chou col. 5,
11. 54-62). In particular, we find the cited portion of Chou to describe the
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Appeal2014-006708
Application 12/091,3 07
benefit obtained by addition of the fluid discharge system to the identified
prior art apparatus, not to describe any other alteration, and so fails to
sufficiently support the Examiner's finding "the referred operation [of
Snook] is opposite to the Chou's indication." Ans. 7. Similarly, the
Examiner's reliance on this portion of Chou as evidence that Chou does not
use slit illumination is not well-founded. The Examiner's position is
grounded on the fact that Chou is able to measure biomechanical properties
of the cornea where devices using slit illumination, e.g., Snook and Koest,
were not. Ans. 8 (citing Chou col. 5, 11. 61-62). Chou distinguishes its
system from that used in Snook and Koest, however, in that Chou includes a
fluid discharge system that provides the corneal topographic deformation
that Chou monitors to measure various biomechanical properties (see, e.g.,
Chou Abstract).
As explained above, it follows that the required factual basis for
illumination allowing a spatially-distributed grid object over a substantial
portion of the surface of the live cornea that is required for a prima facie
case is lacking. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) ("The
Patent Office has the initial duty of supplying the factual basis for its
rejection. It may not ... resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in its factual basis."); In re
Sporck, 301F.2d686, 690 (CCPA 1962).
For this reason, we find the Examiner has failed to establish a prima
facie case of obviousness.
6
Appeal2014-006708
Application 12/091,3 07
CONCLUSION
The Examiner's rejection of claim 1-9, 22-31, 34, and 35 is
REVERSED.
REVERSED
7