NOVARTIS AG

Patent Trials and Appeals Board

Jan 28, 2022

2020006475 (P.T.A.B. Jan. 28, 2022)

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. 16/025,502 07/02/2018 MIKHAIL BOUKHNY PAT055877-US-CNT 2633 26356 7590 01/28/2022 ALCON INC. C/O ALCON RESEARCH LLC IP LEGAL 6201 SOUTH FREEWAY FORT WORTH, TX 76134 EXAMINER ROSWELL, MICHAEL ART UNIT PAPER NUMBER 2145 NOTIFICATION DATE DELIVERY MODE 01/28/2022 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 MIKHAIL BOUKHNY, KEVIN KING, TIFFANY SUTLIFF, DAVID A. THOE, CRAIG WOOLDRIDGE, and MARK YOUNG _________________ Appeal 2020-006475 Application 16/025,502 Technology Center 2100 ____________________ Before MARC S. HOFF, JOHN A. EVANS, and CATHERINE SHIANG, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON APPEAL1 Appellant2 seek our review under 35 U.S.C. § 134(a) from the final rejection of Claims 39-64. Appeal Br. 10. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Our Decision refers to Appellant’s Appeal Brief filed May 20, 2020 (“Appeal Br.”); Examiner’s Answer mailed June 10, 2020 (“Ans.”); the Final Rejection mailed December 31, 2019 (“Final Act.”), and the Specification filed July 2, 2018 (“Spec.”). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appeal Brief identifies Alcon Inc., as the real party in interest. App. Br. 2. Appeal 2020-006475 Application 16/025,502 2 STATEMENT OF THE CASE INVENTION. The claims relate to a surgical system and method for configuring a surgical system. See Abstract. Claims 39, 46, 52, and 58 are independent. An understanding of the invention can be derived from a reading of Claim 39, which is reproduced below: 39. A surgical system comprising: a control device; a touch screen display; and a GUI displayed on the touch screen display, wherein the GUI comprises a parameter icon, the parameter icon comprising a parameter area having a closed obround shape bounded by a perimeter, a first set point located on one end of the perimeter of the parameter area, a second set point located on an opposite end of the perimeter of the parameter area, a parameter line extending from the first set point to the second set point, the parameter line located across and within the perimeter of the parameter area, and a value orb located on the parameter line; a numerical parameter value located within the perimeter of the parameter area and superimposed on the parameter line; and a value display area located below the parameter line and within the parameter area, the value display area extending from the first set point to the value orb, the value display area comprising a shaded or colored area extending from the parameter line to the perimeter of the parameter area, the value display area contained within the perimeter of the parameter area, the value display area bounded by the perimeter and the parameter line; wherein a location of the value orb corresponds to a control position of the control device and the numerical parameter and the value display area change in relation to the Appeal 2020-006475 Application 16/025,502 3 location of the value orb as the location of the value orb moves along the parameter line. Prior Art Name3 Reference Date Boukhny US 2006/0114175 A1 June 1, 2006 Claus US 2006/0149301 A1 July 6, 2006 Chaudhri US 7,117,450 B1 Oct. 3, 2006 REJECTIONS4 AT ISSUE 1. Claims 39-64 stand rejected under 35 U.S.C. § 103(a) as obvious over Boukhny, Chaudhri, and Claus. Final Act. 4-19. ANALYSIS We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). We have considered in this decision only those arguments Appellant actually raised in the Briefs. Any other arguments which Appellant could have made but chose not to make in the Briefs are deemed to be forfeit. See 37 C.F.R. § 41.37(c)(1)(iv). After considering the evidence presented in this Appeal and each of Appellant’s arguments, we are not persuaded that Appellant identifies reversible error. Thus, we affirm the Examiner’s rejections for the reasons expressed in the 3 All citations herein to the references are by reference to the first named inventor/author only. 4 The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Final Act. 2. Appeal 2020-006475 Application 16/025,502 4 Final Office Action and the Answer. We add the following primarily for emphasis. CLAIMS 39-64: OBVIOUSNESS OVER BOUKHNY, CHAUDHRI, AND CLAUS. Appellant argues these claims as a group in view of the limitations of Claim 39. See Appeal Br. 8-9. Therefore, we decide the appeal of the § 103 rejections on the basis of Claim 39, which we designate as representative, and refer to the rejected claims collectively herein as “the claims.” See 37 C.F.R. § 41.37(c)(1)(iv); In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986). Independent Claim 39 recites, inter alia: a GUI displayed on the touch screen display, wherein the GUI comprises a parameter icon, the parameter icon comprising a parameter area having a closed obround shape bounded by a perimeter, a first set point located on one end of the perimeter of the parameter area, a second set point located on an opposite end of the perimeter of the parameter area, a parameter line extending from the first set point to the second set point, the parameter line located across and within the perimeter of the parameter area. Appeal Br. 11. The Examiner finds Boukhny5 teaches a GUI substantially as claimed. Final Act. 4. Appellant contends: “[n]one of the cited references disclose a parameter area in a closed obround shape bounded by a perimeter.” Appeal Br. 8. The Examiner finds that the combination of Boukhny, Chaudhri, and Claus fails to disclose “the parameter icon comprising a parameter area 5 The Examiner finds: “Boukhny, the primary reference, includes common inventors and a common assignee, but is not related to the instant application through a continuity or priority chain.” Ans. 4, n. 1. Appeal 2020-006475 Application 16/025,502 5 having a closed obround shape bounded by a perimeter.” Ans. 4. However, the Examiner finds both Boukhny and Appellant’s Specification provide ample motivation to modify Boukhny’s display with another style of graphical representation, including a different shape. Id. (quoting Boukhny, ¶ 46: “boundary lines 113-115 [analogous in function to the claimed first and second set points] are shown as vertical lines, but may be other shapes and sizes as necessary.’) (and quoting Spec., 12, ll. 14-15: “[w]hile the parameter area 210 is shown as an obround or pill shape, any of a number of other different shapes may be employed”) (alteration in original). The Examiner finds Appellant’s Specification admits that altering the shape of the boundary does not change the functionality of the invention, and the Specification does not explain the criticality of its shape. Id. Nor does the record provide any evidence of secondary considerations. Id. The Examiner finds because an obround or pill-shape is notoriously well-known, such a modification would amount to a simple substitution of one known element (i.e. shape) for another to obtain predictable results. Id. Appellant does not file a Reply Brief and fails to persuade us the Examiner errs. Appellant contends the prior art fails to teach a perimeter with set points located on the perimeter, or a perimeter with set points located on opposite ends of the perimeter. Appeal Br. 8. The Examiner finds Boukhny teaches a GUI including first and second ends which are minimum and maximum parameter values. Ans. 5. Appellant does not file a Reply Brief and fails to persuade us the Examiner errs. Appeal 2020-006475 Application 16/025,502 6 Appellant contends: “[n]one of the cited references disclose a shaded or colored area extending from the parameter line to the perimeter of the parameter area, the value display area contained within the perimeter of the parameter area. [Chaudhri] and Claus simply disclose slider bars.” Appeal Br. 8. The Examiner finds the graphical representation of Claus includes a bounded area with differing coloring or shading extending from the perimeter of the displayed bar to the relevant value representation on the bar. Such a graphical representation, when combined with that of Boukhny and Chaudhri, is analogous in scope with the claimed limitations. Ans. 5-6. Appellant does not file a Reply Brief and fails to persuade us the Examiner errs. DECISION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 39-64 103 Boukhny, Chaudhri, Claus 39-64 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