Trent Spencer. Wells et al.

Patent Trials and Appeals Board

Jan 31, 2020

14130888 - (D) (P.T.A.B. Jan. 31, 2020)

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.
14/130,888 08/28/2014 Trent Spencer Wells 71523-15800 4010
21611 7590 01/31/2020
SNELL & WILMER LLP (OC)
600 ANTON BOULEVARD
SUITE 1400
COSTA MESA, CA 92626
EXAMINER
WEI, CHARLES M
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
01/31/2020 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):
ipocdocket@swlaw.com
kvakil@swlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TRENT SPENCER WELLS, MATTHEW T. MCCORMICK,
RAPLH KERNS, and MARK S. HUMAYUN
____________

Appeal 2018-008133
Application 14/130,888
Technology Center 3700
____________

Before GEORGE R. HOSKINS, LISA M. GUIJT, and
BRENT M. DOUGAL, Administrative Patent Judges.

HOSKINS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–202 in this application. The Board
has jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Doheny Eye Institute as the real party
in interest. Appeal Br. (filed Jan. 26, 2018) 3.
2 Claims 21–23 are canceled. Appeal Br. 22 (Claims App.).
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CLAIMED SUBJECT MATTER
Claim 1 illustrates the claimed subject matter on appeal, and it recites,
with our emphases added:
1. An ocular cutting device comprising:
a housing having a motor positioned within the housing;
an aspiration line; and
a working end coupled to the aspiration line, the working
end comprising:
an outer sleeve member coupled in fixed relationship
to the housing and having a proximal end and a distal end,
the proximal end coupled to the housing, the distal end
having first and second openings, the first opening having a
first cutting edge; and
an inner sleeve member having a proximal end and a
distal end, the inner sleeve member positioned within the
outer sleeve member, the motor operatively coupled to the
proximal end to move the inner sleeve member relative to
the outer sleeve member, the inner sleeve member having a
third opening with a second cutting edge and a fourth
opening in the distal end of the inner sleeve member,
wherein the third opening is smaller than the first opening
and the first opening and third opening are configured to
interact to cut tissue between the first and second cutting
edges; and
wherein the second opening of the outer sleeve is
configured to remain unobstructed by the movement of the
inner sleeve such that a vacuum applied to the working end
through the aspiration line allows the second opening to
hold a tissue mass at a first location of the tissue mass while
the tissue mass is cut and removed by the working end at a
second location of the tissue mass spaced from the first
location.
Appeal Br. 18 (Claims App.) (emphases added).
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REJECTIONS ON APPEAL
Claim 8 is rejected under 35 U.S.C. § 112(a)3 for lack of written
description. Final Act. (dated June 27, 2017) 3.
Claims 11, 14, 17, and 18 are rejected under 35 U.S.C. § 112(b) as
indefinite. Final Act. 3–4.
Claims 1–20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Hayafuji (US 5,106,364, iss. Apr. 21, 1992) and Vijfvinkel
(US 5,843,111, iss. Dec. 1, 1998). Final Act. 4–13.
OPINION
A. Lack of Written Description (claim 8) and
Indefiniteness (claims 11, 14, 17, and 18)
The Appeal Brief states the written description and indefiniteness
rejections “are not appealed herein.” Appeal Br. 9. Further: “Appellant[]
agree[s] that amendment of the claims to overcome the [written description
and indefiniteness] rejections under 35 U.S.C. § 112 is appropriate and will
attend to such amendment or cancellation of the claims upon withdrawal” of
the obviousness rejections. Id. at 9–10.
We, therefore, summarily sustain the written description and
indefiniteness rejections. See 37 C.F.R. § 41.37(c)(1)(iv) (2017); In re
Baxter Int’l, Inc., 678 F.3d 1357, 1362 (Fed. Cir. 2012) (argument waived
when not timely presented in briefing to the Board, absent exceptional
circumstances); MPEP § 1215.03 (9th ed., Rev. 08.2017, eff. Jan. 2018)

3 This application was filed on August 28, 2014, after the AIA amendments
to § 112 took effect on September 16, 2012. See Leahy-Smith America
Invents Act (“the AIA”), Pub. L. No. 112-29, § 4(e), 125 Stat. 284, 297
(2011); MPEP § 2161(I).
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(“An appellant may, of course, choose not to present arguments or rely upon
particular evidence as to certain claim rejections; however, such arguments
and evidence are waived for purposes of the appeal and the Board may
summarily sustain any grounds of rejections not argued.”).
B. Obviousness over Hayafuji and Vijfvinkel (Claims 1–20)
1. Claims 1–11
a. Hayafuji Disclosure
The Examiner relies principally on Figure 14 of Hayafuji, which we
reproduce here:

Figure 14 is a sectional view of the cutting portion of Hayafuji’s ocular
cutting device, where inner tube 13 with apertures 30a reciprocates within
outer tube 12 with apertures 180a to cut tissue. Hayafuji, 4:11–22,
12:55–62. The Examiner finds, in part, that Hayafuji’s device comprises
a third opening (i.e., one of the openings 30a) that is smaller than a first
opening (i.e., one of the openings 180a). Final Act. 5–6. In support, the
Examiner states “the bottom of 180a is wider than 30a.” Id. at 6.
Appellant argues the Examiner errs in relying on Hayafuji as
disclosing a third opening 30a being smaller than a first opening 180a.
Appeal Br. 10–12.
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The Examiner responds that Figure 14 of Hayafuji “may . . . be used
to establish relative sizes and relationships between the various [illustrated]
components.” Ans. (dated May 25, 2018) 4. For example, the Examiner
finds Figure 14 discloses one opening 180a “is larger than” another
opening 30a. Advisory Act. (dated Sept. 7, 2017) 2; Ans. 4.
Upon our review of the foregoing, we determine a preponderance of
the evidence does not support the Examiner’s finding that Hayafuji
discloses, in Figure 14, a third opening 30a that is smaller than a first
opening 180a. Claim 1 requires a third opening to be smaller than a first
opening. The Examiner’s focus on “the bottom of” an opening 180a being
“wider than” the bottom of an opening 30a (Final Act. 6) is not
commensurate with that claim requirement. Also, openings 180a have a
complex configuration. See, e.g., Hayafuji, Figs. 9–10, 11:12–24
(illustrating and describing configuration of aperture 180); id. at 12:55–58
(apertures 180a are “each similar in shape to the aperture 180”). The
Examiner’s findings do not account for the complex configuration of
openings 180a, or the fact that openings 30a are shown in Figure 14 to be
much deeper than openings 180a, in finding the latter openings are smaller
than the former openings.4 For these reasons, we conclude the Examiner
merely speculates in finding that Hayafuji’s openings 30a are smaller than
openings 180a.

4 Appellant’s Specification indicates, in at least some circumstances, the
“ratio of the axial length[s]” between two openings may be used as a proxy
to determine the relative size of two openings. Spec. ¶ 43. However, given
the complex configuration of openings 180a, and the fact that openings 30a
are much deeper than openings 180a, this simplified comparison does not
apply to Hayafuji’s Figure 14.
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b. Vijfvinkel Disclosure, and Obviousness
In the event it is found Hayafuji fails to disclose a third opening 30a
being smaller than a first opening 180a in Figure 14, as we have done above,
the Examiner alternatively relies on Vijfvinkel for obviousness in this
regard. Final Act. 7; Ans. 4. The Examiner cites Vijfvinkel as disclosing
“the size of the openings on the outer sleeve is a result effective variable,
wherein the depth [of] the opening affects fine control of the shaving and the
width of the slit affects the rate of material removal.” Final Act. 7 (emphasis
added) (citing Vijfvinkel, 6:21–24). Based on that disclosure, the Examiner
determines it would have been obvious to modify the size of Hayafuji’s
outer sleeve openings 180a such that inner sleeve openings 30a are smaller
than openings 180a. Id.; Ans. 4. This would have been done “for the
purpose of finding the correct balance of fine control and rate of material
removal, since it has been held that where the general conditions of a claim
are disclosed in the prior art, discovering the optimum or workable ranges
involves only routine skill in the art.” Final Act. 7 (citing In re Aller,
220 F.2d 454 (CCPA 1955)).
Appellant argues Vijfvinkel does not establish the obviousness of the
claimed invention, because “[t]he mere teaching in Vijfvinkel that opening
size[] affect[s] the results in the tool of Vijfvinkel is not sufficient reason to
modify the different tool of Hayafuji.” Appeal Br. 12–13.
The Examiner answers that “Vijfvinkel teaches a similar cutting
mechanism” to Hayafuji’s cutting device, “and establishes that the size of
the openings is a result effective variable” such that it would have been
obvious “to increase the size of the outer sleeve openings of Hayafuji as
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taught by Vijfvinkel, in order to allow for faster material removal.” Ans. 5
(emphasis added).
Upon review of the foregoing, we determine a preponderance of the
evidence does not support the Examiner’s determination of obviousness.
We agree with the Examiner’s finding that Vijfvinkel indicates the size of an
outer sleeve opening is a variable that affects how fast tissue may be
removed via a cutting action provided by a reciprocating inner sleeve. See
Vijfvinkel, Figs. 2 & 3, 4:11–55 (inner sleeve 202 with sharp cutting
edge 206 reciprocates within outer sleeve 200 to provide a cutting action at
slit ports 204 in outer sleeve 200); id. at Fig. 11, 6:21–24 (“[t]he smaller
depth of the first slit is intended to provide more fine control of the shaving
action closest to the retina and when only one slit is active” and “[t]he wider
third slit allows for faster material removal”). However, the outer sleeve
opening size is not the claim limitation at issue here, which instead specifies
an inter-relationship between the size of an outer sleeve opening and the
size of an inner sleeve opening, namely that the latter is smaller than the
former.
Even if we were to agree with the Examiner’s determination that it
would have been obvious to increase the size of Hayafuji’s outer sleeve
openings 180a to allow for faster material removal, the Examiner
additionally needs to provide a reason why this would have led to Hayafuji’s
inner sleeve openings 30a being smaller than outer sleeve openings 180a.
See, e.g., In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (Examiner bears
burden to provide a rational underpinning sufficient to support legal
conclusion of obviousness), cited with approval in KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). For example, the Examiner apparently
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concludes that a person of ordinary skill in the art would have maintained
the size of inner sleeve openings 30a as they are shown in Hayafuji’s
Figure 14, while increasing the size of outer sleeve openings 180a to achieve
faster tissue removal. It is not clear, however, how such a design would lead
to faster tissue removal, given that the removed tissue must pass through one
outer sleeve opening 180a and one inner sleeve opening 30a. See Hayafuji,
Fig. 14. It seems that increasing the size of both openings would be required
to achieve the desired goal. Further, Vijfvinkel differs from Hayafuji in that
Vijfvinkel has just one inner sleeve opening formed in the distal end of inner
sleeve 202 to cut tissue, whereas Hayafuji has several inner sleeve
openings 30a formed in the side surface of inner sleeve 13 to cut tissue. See
Vijfvinkel, Figs. 2–3; Hayafuji, Fig. 14. Due to this difference in structure,
it is not readily apparent that increasing the size of Hayafuji’s outer sleeve
openings 180a, without other changes, will have the same effect as in
Vijfvinkel. Thus, a preponderance of the evidence does not support the
Examiner’s determination of obviousness.
c. Conclusion as to Claims 1–11
For the foregoing reasons, we do not sustain the rejection of claim 1
as having been obvious over Hayafuji and Vijfvinkel. The Examiner’s
additional consideration of dependent claims 2–11 does not cure the noted
deficiencies as to claim 1. See Final Act. 7–9. We, therefore, likewise do
not sustain the rejection of claims 2–11 as having been obvious over
Hayafuji and Vijfvinkel.
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2. Claims 12–16
Appellant argues for the patentability of independent claim 12 and its
dependent claims 13–16 as a group, without arguing for any of the claims in
this group separately from the other claims. See Appeal Br. 13–15. We
therefore select claim 12 to decide the appeal of the obviousness rejection of
these claims. See 37 C.F.R. § 41.37(c)(1)(iv) (2017).
The Examiner finds Hayafuji discloses an ocular cutting device
embodying the invention of claim 12, “except for a motor,” which it would
have been obvious to employ in light of the combined teachings of Hayafuji
and Vijfvinkel. Final Act. 9–10. Appellant challenges only one aspect of
these findings and determination. See Appeal Br. 13–15. Appellant has
therefore waived any other objection to the Examiner’s determination of
obviousness as to claim 12. See 37 C.F.R. § 41.37(c)(1)(iv) (2017) (“any
arguments or authorities not included in the appeal brief will be refused
consideration by the Board for purposes of the present appeal”).
The Examiner pertinently finds Hayafuji’s ocular cutting device
comprises a first port and a second port that are configured as recited in the
final clause of claim 12. Final Act. 9–10; Ans. 5–7. In support, the
Examiner provides the following annotations to Hayafuji’s Figure 14:

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Ans. 7. Figure 14 is a sectional view of the cutting portion of Hayafuji’s
device, where inner tube 13 with apertures 30a reciprocates within outer
tube 12 with apertures 180a to cut tissue. Hayafuji, 4:11–22, 12:55–62. The
Examiner has identified a first port 180a, a second port 180a, a third
port 30a, and a fourth port 30a. Our following discussion will
correspondingly refer to these specific ports as “the” first, second, third, and
fourth ports.
The Examiner finds Hayafuji discloses, as recited in claim 12, that the
second port 180a remains unobstructed by the movement of inner tube 13
such that an applied vacuum allows the second port 180a to remain attached
to tissue while tissue is cut and removed at the first port 180a. Final
Act. 9–10; Ans. 5–7. In particular, according to the Examiner, as inner
tube 13 begins to move distally from the proximal position illustrated in
Figure 14, the tissue in the first port 180a “will be cut first while the more
distal [second port 180a] would just be holding tissue since there are no
blades there yet.” Advisory Act. 2 (emphasis added); Final Act. 9–10;
Ans. 7.
Appellant argues Hayafuji fails to disclose that the second port 180a
remains unobstructed by the movement of inner tube 13. Appeal Br. 13–15.
Appellant cites Hayafuji’s Figure 5 as illustrating that “all openings [18a,
18b] in outer sleeve 12 [are] obstructed by portions of inner sleeve 13.” Id.
at 14. Appellant then addresses Hayafuji’s Figure 14 by asserting “there is
no disclosure in Hayafuji indicating that the surgical cutting instrument
shown in Figure 14 operates differently from the surgical cutting instrument
shown in Figure 5.” Id. In Appellant’s view, the embodiment of Figure 14
differs from that of Figure 5 in having “additional cutting apertures, but [the
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two embodiments have] the same mechanical operation.” Id. at 14–15
(citing Hayafuji, 2:55–62). Appellant additionally asserts the Examiner’s
finding that “there are no blades there yet” at the second port 180a in
Figure 14 of Hayafuji is “in contrast with the limitation recited in [claim 12]
that the second [port 180a] is ‘configured to remain unobstructed.’” Id.
at 15 (emphases by Appellant).
The Examiner answers that Appellant’s “reliance on Figure 5 is
misplaced,” because the respective embodiments of Figure 5 and Figure 14
“cannot operate in the same manner.” Advisory Act. 2; Ans. 6. The
Examiner further concludes Appellant errs in reading the “remain
obstructed” term in claim 12 to require “that the second [port 180a] is never
obstructed during the entirety of the procedure.” Id. at 7. The Examiner’s
position is that claim 12 “does not require that the second [port 180a] remain
unobstructed indefinitely.” Id.
Upon review of the foregoing, we agree with the Examiner. Claim 12
pertinently recites that “the second port . . . is configured to remain
unobstructed by the movement of the inner cutting member to cut tissue
such that vacuum applied through the aspiration line allows the second port
to remain attached to tissue while tissue is cut and removed at the first
port.” Appeal Br. 20 (Claims App.) (emphases added). Under a broadest
reasonable construction, this does not require the second port to remain
unobstructed throughout the entire cutting cycle of the claimed cutting
device, as Appellant would construe the claim. Claim 12 merely requires
that, at one point during the cutting cycle, tissue is cut at the first port while
the second port is unobstructed by the movement of the inner cutting
member to remain attached to tissue. That occurs in Hayafuji’s Figure 14,
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when inner tube 13 begins a distal cutting movement from the position
illustrated in Figure 14, and the third port 30a encounters the first port 180a.
As to Hayafuji’s Figure 5 embodiment, we agree with the Examiner’s
position that it operates differently from Hayafuji’s Figure 14 embodiment.
In particular, Figure 14 indicates inner tube 13 retracts proximally far
enough that the distal-most inner tube port (i.e., the third port 30a) is
proximal of the proximal-most outer tube port (i.e., the first port 180a),
which does not appear to occur in Figure 5. See Hayafuji, Figs. 5 & 14,
2:56–65, 7:65–8:7.
For the foregoing reasons, we sustain the rejection of claims 12–16 as
having been obvious over Hayafuji and Vijfvinkel.
3. Claims 17–20
Claim 17 recites, similarly to claim 1 as discussed above, “the third
opening [of an inner cutting member] is smaller than the first opening [of an
outer cutting member].” Appeal Br. 21–22 (Claims App.). The Examiner’s
rejection of claim 17 in this respect is substantially the same as discussed
above in connection with claim 1, and Appellant’s opposition is likewise
substantially the same. See Final Act. 11–12; Appeal Br. 10–12. Therefore,
for the reasons provided above concerning claim 1, we do not sustain the
rejection of claim 17 and its dependent claims 18–20 as having been obvious
over Hayafuji and Vijfvinkel.
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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Basis/References Affirmed Reversed
8 112(a) Written Description 8
11, 14,
17, 18
112(b) Indefiniteness 11, 14,
17, 18

1–20 103 Hayafuji, Vijfvinkel 12–16 1–11,
17–20
Overall
Outcome
8, 11–18 1–7, 9, 10,
19, 20
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART