Novartis AG

Patent Trials and Appeals Board

Jul 23, 2021

2021000224 (P.T.A.B. Jul. 23, 2021)

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.
15/262,255 09/12/2016 Joshua Anderson PAT057062-US-NP 2649
26356 7590 07/23/2021
ALCON INC.
C/O ALCON RESEARCH LLC
IP LEGAL
6201 SOUTH FREEWAY
FORT WORTH, TX 76134
EXAMINER
JAMIALAHMADI, MAJID
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
07/23/2021 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):
alcon_pair@firsttofile.com
patent.docketing@alcon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOSHUA ANDERSON and PAUL R. HALLEN
____________

Appeal 2021-000224
Application 15/262,255
Technology Center 3700
____________

Before MICHAEL J. FITZPATRICK, WILLIAM A. CAPP, and
JEREMY M. PLENZLER, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Joshua Anderson and Paul R. Hallen (hereinafter “Appellant”) seek
our review under 35 U.S.C. § 134(a) of the final rejection of claims 1–7
and 9–13.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant identifies Alcon Inc. as the real party in interest. Appeal Br. 2.
Appeal 2021-000224
Application 15/262,255
2

THE INVENTION
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Ross US 6,258,111 B1 July 10, 2001
Surti US 2006/0184187 A1 Aug. 17, 2006
Zaretzka US 2012/0209273 A1 Aug. 16, 2012
Cloutier US 2013/0197644 A1 Aug. 1, 2013
Scheller US 2014/0088576 A1 Mar. 27, 2014
Geuder US 2017/0231818 A1 Aug. 17, 2017
The following rejections are before us for review:
1. Claims 1–5, 9, and 11–13 are rejected under 35 U.S.C. § 103 as
unpatentable over Ross, Geuder, and Scheller.
2. Claim 6 is rejected under 35 U.S.C. § 103 as unpatentable over
Ross, Geuder, Scheller, and Zaretzka.
3. Claim 7 is rejected under 35 U.S.C. § 103 as unpatentable over
Ross, Geuder, Scheller, and Surti.
4. Claims 1–5, 9, and 10 are rejected under 35 U.S.C. § 103 as
unpatentable over Ross, Geuder, and Cloutier.
5. Claim 6 is rejected under 35 U.S.C. § 103 as unpatentable over
Ross, Geuder, Cloutier, and Zaretzka.
6. Claim 7 is rejected under 35 U.S.C. § 103 as unpatentable over
Ross, Geuder, Cloutier, and Surti.
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OPINION
Unpatentability of Claims 1–5, 9, and 11–13
over Ross, Geuder, and Scheller
Appellant argues claims 1–5, 9, and 11–13 as a group. Appeal
Br. 6–9. Claim 1 is representative. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Ross discloses the invention substantially as
claimed except for the side port limitation and the user adjustable curvature
limitation, for which the Examiner relies on Geuder and Scheller
respectively. Final Act. 4–7. The Examiner concludes that it would have
been obvious to a person of ordinary skill in the art at the time the invention
was made to combine the teachings of Geuder and Scheller with that of Ross
to achieve the claimed invention. Id. at 6–7. According to the Examiner, a
person of ordinary skill in the art would have done this to provide simple
and clean cutting of tissue and to accurately position the outer tube relative
to the affected tissue. Id.
Appellant argues that neither Ross, Geuder, nor Scheller discloses
curvature of the outer tube that is adjustable by user actuation of an element
on the vitrectomy probe. Appeal Br. 6. In particular, rather than teaching
user adjustability as claimed, Appellant argues that Scheller relies on
placement of apertures on the outer tube to control bending of the outer tube.
Id. Appellant further argues that modifying Ross by Scheller would render
Ross unsuitable for its intended purpose of producing controlled cutting at
outer port 126 due to the presence of a plurality of slits in Scheller. Id. at 7.
Appellant further argues that the flexibility of Ross’s outer tube is useful
only for being acted on by outside forces from body passages and would be
incompatible with an inner cable mechanism as taught by Scheller. Id. at 8.
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In this latter regard, Appellant emphasizes the slit placement of Scheller
which, according to Appellant, would result in bending that is
“uncontrollable.” Id. Finally, Appellant argues that there is no teaching as
to how the cable of Scheller could be secured to the inside of Ross’s outer
tube in view of the fact that Ross has a reciprocating inner cutter. Id.
In response, the Examiner finds that Ross and Scheller both feature
flexible outer tubes that are placed in the eye and directed to a specific
location in the eye to perform ophthalmic surgery. Ans. 4. According to the
Examiner, the proposed modification of Ross would feature a retractable
cable connected to the outer tube, which cable can be retracted by user
action. Id. at 4–5. The Examiner emphasizes that:
[C]ombining Ross with Scheller would not result in the outer
tube of Ross to be replaced with the outer tube of Scheller that
includes apertures, but only for Ross’[s] device to include a
retractable cable connected to the outer tube and a control
wheel in order to adjust the curvature of the outer tube.
Id. at 5. The Examiner notes that incorporation of Scheller’s slits is not
required as Ross’s outer tube is already flexible. Id.
The Examiner further responds that Appellant’s “uncontrollable
bending” argument lacks any factual support in the record and, therefore,
amounts to no more than unsubstantiated attorney argument, lacking
probative value. Id. With respect to Appellant’s argument regarding
securing a cable in Ross’s outer tube, the Examiner makes the following
observation.
[S]ince the outer tube 400 of Scheller as shown in Figure 5 is
hollow similar to the outer tube 122 of Ross, and an additional
element being an optic fiber 450 is disposed within the outer
tube of Scheller similar to the additional element being the
inner tube 124 disposed within the outer tube of Ross, then this
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would result in Ross modified by Scheller to have a retractable
cable to be secured to the inside of the outer tube of Ross
between the inner surface of the outer tube and the outer surface
of the inner tube similar to how the retractable cable is secured
to the inside of the outer tube of Scheller between the inner
surface of the outer tube and the outer surface of the optic fiber.
Id. at 6.
Ross is directed to a surgical cutting system that can be used to
remove intraocular tissue during an ophthalmic procedure to re-attach a
retina of an eye. Ross, col. 3, ll. 49–54. Ross features hand piece 26 that
houses motor 24. Id. Fig. 1. Ross also features inner sleeve 18 that moves
within a channel of outer sleeve 12 to cut tissue that is pulled into port 14 by
means of aspiration. Id. col. 3, l. 59 – col. 4, l. 3. Ross discloses an
embodiment where outer sleeve 122 and inner sleeve 124 are both flexible.
Id. col. 6, ll. 47–53, Fig. 7. Geuder is directed to a device for cutting and
aspirating tissue in connection with ophthalmology procedures such as
vitrectomy. Geuder, Abstract. Geuder’s device features a side port. Id.
¶¶ 24–29, Fig. 1.
Scheller is directed to a steerable laser probe that is used in eye
surgery. Scheller ¶ 52. The embodiment depicted in Figure 6B features
actuation control 100 disposed within handle inner portion 240. Id. ¶ 34,
Fig. 6B. According to Scheller, rotation of actuation control 100 causes an
optic fiber to transition from a straight configuration to a curved
configuration. Id.
Having considered the respective positions of Appellant and the
Examiner, we are inclined to agree with the Examiner’s position that it
would have been obvious to a person of ordinary skill in the art to modify
the device of Ross so that flexible outer sleeve 122 could be rendered
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Application 15/262,255
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adjustable in its curvature through user actuation. Scheller provides the
requisite teaching that user actuation of a cable or fiber can be used to steer a
flexible outer sleeve. Although Appellant questions whether Scheller’s
adjustable cable could be secured to the inside of Ross’s outer tube,
Appellant presents neither evidence nor persuasive technical reasoning that
the Examiner’s proposed modification would have required more than
ordinary skill or produced unexpected results.
The Examiner’s findings of fact are supported by a preponderance of
the evidence and the Examiner’s legal conclusion of unpatentability is well-
founded. In view thereof, we sustain the Examiner’s unpatentability
rejection of claims 1–5, 9, and 11–13
Unpatentability of Claims 6 and 7
over Combinations Based on Ross, Geuder, and Scheller
In traversing the rejections of claims 6 and 7, Appellant relies solely
on arguments that we previously considered and found unpersuasive with
respect to claim 1 and find equally unpersuasive here. Appeal Br. 9. We
sustain the unpatentability rejections of claims 6 and 7 over combinations
based on Ross, Geuder, and Scheller.
Unpatentability of Claims 1–5, 9, and 10
over Ross, Geuder, and Cloutier
Appellant argues claims 1–5, 9, and 10 as a group. Appeal Br. 9–11.
Claim 1 is representative. See 37 C.F.R. § 41.37(c)(1)(iv).
In this ground of rejection, the Examiner relies on Cloutier as
disclosing the adjustability of curvature of an outer tube by user actuation.
Final Act. 15–16. The Examiner concludes that it would have been obvious
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to a person of ordinary skill in the art at the time the invention was made to
modify Ross by the teaching of Cloutier to achieve the claimed invention.
According to the Examiner, a person of ordinary skill in the art would have
done this to allow a surgeon to accurately position the surgical instrument.
Id. at 16.
Appellant argues against the proposed combination, asserting that
Cloutier has slits in its outer tube so as to result in “uncontrolled cutting”
along the length of a Cloutier outer tube and a Ross inner tube. Appeal
Br. 10. Appellant further argues that Cloutier’s adjustment mechanism
could not be successfully combined with Ross’s outer tube (that does not
have slits), because Cloutier’s device requires slits in the outer tube to
function properly. Id.
In response, the Examiner states that the proposed modification of
Ross in the rejection does not rely on replacing the outer tube of Ross
(which does not have slits) with the outer tube of Cloutier (which has slits).
Ans. 7. The Examiner notes that Ross’s tube is flexible, despite not having
slits. Id. Finally, the Examiner states that, even if Ross is modified so that
its outer tube had slits, Appellant presents no evidence to support its
argument that such slits would cause uncontrolled cutting. Id.
Cloutier discloses a device for performing spinal surgery. Cloutier,
Abstract. Cloutier features a flexible outer tube that is adjustable in its
curvature by means of a control system. Id. ¶ 58. Cloutier’s control system
uses gear mechanism 240 with teeth 250a that mesh with teeth 250b along
the surface of elongated member 190. Id. ¶ 58, Figs. 1A-2.
The Examiner, once again, states the more persuasive position. Slits
are not necessarily required to make an outer tube flexible. Ross, col. 6,
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Application 15/262,255
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ll. 47–53. Appellant presents no evidence to support the notion that a
flexible outer tube without slits, such as in Ross, cannot be adjusted by user
actuation using Cloutier’s control system. Cloutier, ¶ 58. Although Cloutier
does teach a control system and also teaches an outer tube with slits,
Appellant presents neither evidence nor persuasive technical reasoning that
the control system and the slits on the outer tube are dependent upon each
other for the successful operation of the device.
The Examiner’s findings of fact are supported by a preponderance of
the evidence and the Examiner’s legal conclusion of unpatentability is well-
founded. In view thereof, we sustain the Examiner’s unpatentability
rejection of claims 1–5, 9, and 10.
Unpatentability of Claims 6 and 7
over Combinations Based on Ross, Geuder, and Cloutier
In traversing the rejections of claims 6 and 7, Appellant relies solely
on arguments that we previously considered and found unpersuasive with
respect to claim 1 and find equally unpersuasive here. Appeal Br. 11. We
sustain the unpatentability rejections of claims 6 and 7 over combinations
based on Ross, Geuder, and Cloutier.

Appeal 2021-000224
Application 15/262,255
9
CONCLUSION
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1-5, 9, 11-13 103 Ross, Geuder, Scheller 1-5, 9, 11-13
6 103 Ross, Geuder, Scheller, Zaretzka 6

7 103 Ross, Geuder, Scheller, Surti 7

1-5, 9, 10 103 Ross, Geuder, Cloutier 1-5, 9, 10
6 103 Ross, Geuder, Cloutier, Zaretzka 6

7 103 Ross, Geuder, Cloutier, Surti 7

Overall
Outcome
1-7, 9-13

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)(iv).
AFFIRMED