Ex Parte Sorensen et al

Patent Trial and Appeal Board

Oct 31, 2017

13311766 (P.T.A.B. Oct. 31, 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.
13/311,766 12/06/2011 Gary P. Sorensen PAT903683-US-NP 3423
26356
ALCON
IP LEGAL
7590 11/02/2017 EXAMINER
HO, TAN-UYEN THI
6201 SOUTH FREEWAY
FORT WORTH, TX 76134 ART UNIT PAPER NUMBER
3778
NOTIFICATION DATE DELIVERY MODE
11/02/2017 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):
patent, docketing @ alcon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY P. SORENSEN and SUSAN GOODMAN ZURCHER
Appeal 2016-007774
Application 13/311,766
Technology Center 3700
Before: MARKNAGUMO, KAREN M. HASTINGS, and
AVELYN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—10 and 21—30. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In our Decision we refer to the Specification filed December 6, 2011
(“Spec.”), the Final Office Action appealed from dated July 16, 2015 (“Final
Act.”), the Appeal Brief filed December 11, 2015 (Appeal Br.), the
Examiner’s Answer dated June 30, 2016 (“Ans.”) and the Reply Brief filed
August 11, 2016 (“Reply Br.”).
2 Appellants identify the real party in interest as Alcon Research, Ltd., an
affiliate of Novartis AG. Appeal Br. 2.
Appeal 2016-007774
Application 13/311,766
STATEMENT OF THE CASE
The subject matter on appeal relates to a phacoemulsification surgical
system having a non-compliant resistive element in the aspiration path.
Spec. 1. The Specification explains that, during eye surgery, irrigation fluid
is provided to the eye as lens tissue, fragmented by a vibrating cutting
needle, is removed by aspiration through the interior bore of the cutting
needle. Id. The resistive element is said to diminish fluctuations in flow by
increasing the resistance to flow, so when an occlusion is removed, the
sudden increase in flow is lessened. Spec. 2. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. An aspiration system for a phacoemulsification surgical
system, comprising:
a pump configured to create a low pressure differential
sufficient to draw aspiration fluid from a phacoemulsification
surgical site;
flexible tubing configured to convey the aspiration fluid
from a hand piece to the pump, the flexible tubing being
structurally configured to allow a user to manipulate the hand
piece during a surgical procedure; and
a non-compliant, resistive element associated with the
hand piece and disposed between the surgical site and the flexible
tubing, the resistive element comprising a single non-compliant
fluid pathway extending from a first end of the resistive element
to a second end of the resistive element, the fluid pathway having
a substantially consistent nominal inner diameter and being
configured to convey the aspiration fluid to the flexible tubing,
the resistive element being formed in a compact orientation that
provides a nonlinear fluid pathway length that is significantly
greater than the axial length of the resistive element, and the
resistive element being structurally configured to provide
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Application 13/311,766
occlusion surge resistance due to pressure changes resulting from
occlusions in an aspiration path at a hand piece needle.
Appeal Br. 13 (Claims App’x).
REJECTIONS
The Examiner made the following rejections:
A. Claim 29 stands rejected under 35 U.S.C §112 first
paragraph as failing to comply with the written description
requirement. Final Act. 3.
B. Claims 1—10 and 21—30 stand rejected under 35 U.S.C
§ 103(a) as unpatentable over Urich3 in view of Kuebler.4
Id. at 4.
Appellants request reversal of Rejections A and B. See generally
Appeal Br. Appellants present arguments for claims 1,21 (Rejection B),
and 29 (Rejection A), but do not present any argument in support of the
remaining claims 2—10 and 22—30 separate from what is argued for the
claims identified. Therefore, for Rejection B, claims 2—10 and 22—30 will
stand or fall together with their respective parent claims 1 and 21. 37 C.F.R.
§ 41(c)(l)(iv). We focus our discussion on claims 1,21, and 29 to resolve
the issues on appeal.
3 Alex Urich, US 2002/0022810 Al, published February 21, 2002 (“Urich”).
4 Kuebler et al., WO 2009/007223 Al, published January 15, 2009 and
corresponding to US 8,303,553 B2, issued November 6, 2012 (English
translation) (“Kuebler”).
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Application 13/311,766
OPINION
Rejection A — Written Description (claim 29)
The Examiner rejects claim 29 as failing to comply with the written
description requirement. Final Act. 3. Claim 29 depends from independent
claim 27 and requires that “the second flexible tube [has] a length
substantially smaller than a length of the first flexible tube.” Appeal Br. 16
(Claims App’x). The second flexible tubing connects the second end of the
noncompliant resistive element to the hand piece; the first flexible tubing
connects the noncompliant resistive element to the pump. Spec. 11. The
Examiner finds that Appellants’ Specification fails to provide the requisite
support for the smaller length of the second tube in relation to the first.
Final Act. 3. Rather, the Examiner notes that the Specification provides
“that the second flexible tube may be no longer than twenty-four inches” and
one skilled in the art would be unable to ascertain the relative lengths of the
first and second flexible tubes from this description. Id. at 2-A (citing Spec.
11).
Appellants disagree and argue that the description in the Specification
that the second flexible tube as “relatively small” and the identification of
exemplary embodiments of tubing with progressively smaller lengths
between the hand piece and resistive elements, provides the necessary
support for claim 29. Appeal Br. 7; see also Reply Br. 2.
The Examiner counters that “[t]he progressively shorter examples
given in the written description does not necessarily equate to the length of
the second flexible tube being substantially smaller than the first flexible
tube.” Ans. 11.
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Application 13/311,766
We are not persuaded by the Examiner’s rationale. The test for
sufficiency of a written description is whether the disclosure “clearly
allow[s] persons of ordinary skill in the art to recognize that [the inventor]
invented what is claimed.” AriadPharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (enbanc) (citing Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1562—63 (Fed Cir. 1991)). “It is not necessary that the
application describe the claim limitations exactly . . . but only so clearly that
persons of ordinary skill in the art will recognize from the disclosure that
appellants invented the processes including those limitations.” In re
Wertheim, 541 F.2d 257, 262 (CCPA 1976). The initial burden is placed on
the Patent Office to show the lack of written description (id. at 263) and
where “[t]he PTO has done nothing more than to argue lack of literal
support, [that] is not enough.” Id. at 265.
Here, the Specification explains that in some embodiments, the
resistive element 328 attaches directly to the hand piece 118 while in other
embodiments, there may be “<2 small segment of flexible tube between the
resistive element [328] and the hand piece 118.” Spec. 11 (emphasis added).
The Specification continues to explain that the tube length “is selected so
that the system still realizes the benefits of having the rigid resistive element
128 associated with the hand piece” and may be “no longer than about
twenty-four inches . . . may be less than twelve inches, or may be less than
six inches.” Id. And, the Specification states that the resistive element may
be inside the hand piece or positioned outside of the hand piece but, that
“[effectiveness of the added resistance is compounded by being close to the
eye with minimal compliance between the resistive element and the eye.”
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Application 13/311,766
Id. at 3 and 5; see also id. at 8 (“[t]he effectiveness of the added resistance is
maximized by being in close proximity to the eye with minimal
compliance . . . between the resistive element 328 and the eye.”). Thus, the
Specification suggests minimizing the length of the second piece of flexible
tubing to maximize effectiveness of the resistance provided by the resistive
element.
Furthermore, and according to the Specification, the second flexible
tube is “a relatively small length of flexible tube [that] may connect the
resistive element and the hand piece.” Spec. 12. As Appellants note,
“relative” requires comparison to something else and “[t]he only other
portion of tubing disclosed in the same paragraph of the Appellant’s
Specification for which the “small length” can be compared . . . would be the
flexible tube between the resistive element and the console.” Reply Br. 2.
Thus, we find adequate written description support for claim 29 and
do not sustain the Examiner’s rejection.
Rejection B — Obviousness (claims 1—10 and 21—30)
The Examiner rejects claims 1—10 and 21—30 as obvious over Urich
and Kuebler. Final Act. 4.
Claim 1:
The Examiner finds that Urich teaches an aspiration system for
phacoemulsification surgical system that includes nearly all limitations of
claim 1, including resistive element 42, except that Urich fails to teach that
“the resistive element is non-compliant, which is distinct from the flexible
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tubing.” Final Act. 4—5. The Examiner finds, however, that Kuebler, also
describing an aspiration system for phacoemulsification surgical system,
includes a resistive element that is non-compliant or rigid. Id. at 5. The
Examiner reasons that one skilled in the art would have reason to modify the
resistive element of Urich to be non-compliant as described Kuebler “in
order to reduce the pressure oscillations from particle breakthrough thereby
improving patient outcomes.” Id.
Appellants argue that Urich fails to teach a separate fluid resistor and
flexible tube. Appeal Br. 8. Instead, Appellants urge that the Examiner
improperly identifies the aspiration tube 34 as both the flexible tubing and
the resistive element. Id. Appellants also contend that modifying Urich to
include a non-compliant resistive element would render Urich unsatisfactory
for its intended purpose as “such a modification is unworkable because if the
tubing 34 of Urich were made non-compliant, then Urich’s hand-piece 12
could not be manipulated for surgical operations.” Id. at 9. Appellants note
further that there is no suggestion to make only a portion of the flexible
aspiration tube 34 non-compliant. Id.
Appellants do not convince us of reversible error. As the Examiner
explains, only the coiled portion is considered the resistive element, and only
the resistive element is to be made rigid. Final Act. 4 (identifying resistive
element 42); Ans. 12—13. Both the instant Specification and Urich recognize
that increasing the length of the flexible aspiration tubing increases overall
resistance of the aspiration path and that providing a nonlinear segment, i.e.,
a resistive element, extends the length of the tubing while providing a
compact design. See Spec. 3 and 5; Urich || 20.
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Because the Examiner’s modification does not require the entire
length of the flexible tube 34 of Urich to be non-compliant, we are not
persuaded by Appellants’ contention that combination of Urich with Kuebler
would render Urich unsuitable for its intended purpose.
Appellants further suggest that if a person of ordinary skill were to
make a combination, the combination would be to add the rigid restrictive
element of Kuebler to the tubing of Urich. Appeal Br. 9—10. But,
Appellants urge that such a combination would not result in a non-compliant
resistive element “comprising a single non-compliant fluid pathway”
because “Kuebler’s limiter element has at least one main channel and at least
one subsidiary channel, the limiter element does not have a single, non-
compliant fluid pathway.” Id.
Appellants’ argument fails to identify reversible error in the
Examiner’s rejection because Appellants do not address the reasoning
forming the basis of the Examiner’s rejection. Instead, Appellants overlook
the Examiner’s rejection and argue that the only reasonable modification
would be to add the rigid restrictive element of Kuebler to the existing
system of Urich. Appeal Br. 9-10. However, and in contrast to Appellants’
position, the Examiner relies on the teachings of Kuebler preferring a rigid
restrictive element to modify the existing restrictive element of Urich to
make the element noncompliant or rigid as opposed to flexible. Kuebler
explains that through use of a limiter element, the “pressure pulse or a
pressure oscillation can be at least significantly reduced in that specific
operational state where there is a particle breakthrough in the aspiration
device.” Kuebler col. 2,11. 56—60. Kuebler adds that using a limiter element
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Application 13/311,766
that is stiff “means that the force actions, as are generated on these inner
walls 10 by the flowing fluid and by pressure pulsations of the flowing fluid
in particular, do not lead to an elastic deformation of these inner walls 10.”
Id. col. 11,11. 2—5. Notably, Appellants prefer a noncompliant resistive
element for a similar reason. See Spec. 8 (“as the vacuum increases, the
resistive element does not deform.”).
Accordingly, we find no harmful error in the Examiner’s findings or
reasoning.
Claim 21 (and claims 5 and 30):
In addition to the arguments advanced for claim 1, Appellants provide
a separate argument in support of claim 21 (and claims 5 and 30). Appeal
Br. 10. Independent claim 21 is similar to independent claim 1 but
additionally requires “the fluid pathway [to] hav[e] a substantially consistent
nominal inner diameter substantially matching the inner diameter of the
flexible tubing.” Appeal Br. 14 (Claims App’x). In addition to the findings
above with respect to claim 1, the Examiner finds that Urich teaches that the
inner diameter of the flexible tubing substantially matches the diameter fluid
pathway of the resistive element. Final Act. 6 (citing Urich H 21 and 23).
Appellants argue that there is no teaching in either Urich or Kuebler
that suggests the diameter of the flexible tubing and rigid resistive element
substantially match. Appeal Br. 10. In particular, Appellants urge that
Urich fails teach a rigid resistive element and that even if combined with the
resistive element (i.e., “limiter element”) of Kuebler, there is no suggestion
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that the internal diameters be the same. Id. Rather, the pathways of Kuebler
“do not even appear to have a consistent inner diameter.” Id.
Appellants fail to identify harmful error by the Examiner. The
Examiner relies upon Urich—not Kuebler—for the teaching that the
diameter of the flexible tubing substantially matches the diameter of the
resistive element. Final Act. 6. Urich provides that “[t]he inner diameter of
tube 34 may be 0.065 inches” and that “the flow restrictor 50 with 50 bends
[has] an inner diameter of 0.065 inches.” See Urich H 21 and 23.
Furthermore, as the Examiner aptly explains, coiling the tube into the
resistive element would have no impact on the diameter of the tube (id.) and
similarly, that modifying the resistive element to become rigid would not
change the diameter of the tube. Ans. 14. Therefore, we sustain the
Examiner’s rejection.
CONCLUSION
Appellants have identified a reversible error in the Examiner’s
rejection of Claim 29 under 35 U.S.C §112 first paragraph as failing to
comply with the written description requirement.
Appellants have not identified a reversible error in the Examiner’s
rejection of Claims 1—10 and 21—30 under 35 U.S.C § 103(a) as unpatentable
over Urich in view of Kuebler.
DECISION
For the above reasons, the Examiner’s rejection of claims 1—10 and
21—30 is affirmed.
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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)(1).
AFFIRMED
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