Alcon Inc.

Patent Trials and Appeals Board

Dec 10, 2021

IPR2021-01069 (P.T.A.B. Dec. 10, 2021)

Trials@uspto.gov Paper: 16
Tel: 571-272-7822 Date: December 10, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

JOHNSON & JOHNSON SURGICAL VISION, INC.,
Petitioner,
v.
ALCON INC.,
Patent Owner.

IPR2021-01069
Patent 9,456,925 B2

Before GRACE KARAFFA OBERMANN, CHRISTOPHER M. KAISER,
and JAMIE T. WISZ, Administrative Patent Judges.

WISZ, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 325(d)

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I. INTRODUCTION
Johnson & Johnson Surgical Vision, Inc. (“Petitioner”) filed a Petition
(Paper 2, “Pet.”) requesting an inter partes review of claims 1, 2, 4, 5, 11,
12, 17, 23, 24, 26, and 27 of U.S. Patent No. 9,456,925 B2 (Ex. 1001, “the
’925 patent”). Alcon Inc. (“Patent Owner”) filed a Preliminary Response
(Paper 8, “Prelim. Resp.”). With Board pre-authorization (Ex. 1022),
Petitioner filed a Reply (Paper 14, “Reply”), and Patent Owner filed a Sur-
reply (Paper 15, “PO Sur-reply”) limited to addressing whether the Board
should exercise its discretion and deny review under 35 U.S.C. § 325(d).
Under 35 U.S.C. § 314(a), the Board “may not authorize an inter
partes review to be instituted unless . . . the information presented in the
petition . . . and any response . . . shows that there is a reasonable likelihood
that the petitioner would prevail with respect to at least 1 of the claims
challenged in the petition.” The Board has discretion to deny a request for
institution when the information presented shows a petitioner raises “the
same or substantially the same prior art or arguments previously presented
to the Office,” for example, during patent examination. 35 U.S.C.
§ 325(d).
For the reasons stated below, upon considering the arguments and
evidence, we exercise our discretion to deny institution of inter partes
review under 35 U.S.C. § 325(d).
II. BACKGROUND
A. Real Parties-in-Interest
Petitioner identifies Johnson & Johnson Surgical Vision, Inc., and its
subsidiaries AMO Development, LLC, AMO Manufacturing USA, LLC,
and AMO Sales and Service, Inc. as the real parties-in-interest. Pet. 64.
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Patent Owner identifies Alcon Vision, LLC, and Alcon Research, LLC, as
the real parties-in-interest. Paper 4, 1.
B. Related Proceedings
Both parties identify as a related matter co-pending district court
litigation in AMO Development, LLC v. Alcon LenSx Inc., No. 1:20-cv-
00842-CFC (D. Del.). Pet. 64; Paper 4, 1.
C. The ’925 Patent (Ex. 1001)
The ’925 patent is titled, “Photodisruptive Laser Treatment of the
Crystalline Lens,” and relates to methods of treating a hard lens region of an
eye with a laser, for example, for cataract surgery. Ex. 1001, codes (54),
(57), 5:60–6:38. Cataracts are an eye condition that occurs when the lens
transparency decreases and stiffness of the lens increases. Id. at 5:60–6:8.
The reduced transparency region of the lens can be removed and replaced
with an artificial intraocular lens. Id. at 6:9–20. Surgical procedures to
remove the crystalline lens utilize various techniques (such as manual
instruments, ultrasound, heated fluids and lasers), to break up the lens into
small fragments that can be removed from the eye through incisions. Id. at
1:23–27. According to the ’925 patent, “[p]hotodisruptive laser technology
can deliver laser pulses into the lens to optically fragment the lens without
insertion of a probe and thus is potentially a less intrusive procedure,
offering higher precision and control.” Id. at 1:33–36.
A laser-induced lens fragmentation process involves using the laser to
ionize a targeted portion of the hard lens region, resulting in the formation of
cavitation bubbles. Ex. 1001, 7:4–11. These bubbles aid in the disruption,
fragmentation, or emulsification of the targeted hard lens region, which can
then be removed via aspiration through a smaller incision, or possibly
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without inserting a surgical device into the lens itself. Id. at 7:16–21, 7:49–
59.
The ’925 patent describes using a laser to make certain types of “non-
transverse” incisions in the lens. Ex. 1001, 4:6–7, 12:37–13:4. These non-
transverse incisions follow the Z axis, which passes through the middle of
the eye. Id. at 11:41–61, 12:38–41. The ’925 patent describes one
embodiment in which the incisions are formed “on a layer-by-layer basis,
wherein one or more layers are at least partially formed along a curved focal
plane of a laser delivery system.” Id. at 3:46–49. This is shown in
Figure 5J′ (annotated by Petitioner) below:

Pet. 6, Ex. 1001, Fig. 5J′. Annotated Figure 5J′ from the ’925 patent shows
the focal plane 271 (highlighted in green) is curved and the incision 276
formed by the cavitation bubbles (highlighted in purple) follows the
curvature of the focal plane 271. Pet. 6; Ex. 1001, 19:44–55.
According to the ’925 patent, forming the curved incisions along a
curved focal plane reduces or eliminates the need to move the Z scanner at
the rate of the X-Y scanner. Ex. 1001, 19:53–55. This technique allows the
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scanners to operate “at the fast X-Y transverse scanning speed instead of the
slower z-scanning speed.” Id. at 19:55–57.
D. Challenged Claims
Petitioner challenges claims 1, 2, 4, 5, 11, 12, 17, 23, 24, 26, and 27 of
the ’925 patent. Claim 1, which is the only independent claim of the ’925
patent, is illustrative of the challenged claims, and is reproduced below:
1. A method of treating a crystalline lens of an eye with a laser,
the method comprising:
selecting a surgical region of the lens; and
forming an incision in the surgical region on a layer-by-layer
basis by scanning a laser beam with an XY scanner of a laser
delivery optics along a curved focal plane of the laser delivery
optics to form a line of bubbles in each layer without adjusting
a Z scanner of the laser delivery optics at a scanning rate of the
XY scanner, wherein:
an orientation of a portion of the incisions is one of an
orientation intersecting fibers of the lens and an orientation
non-transverse to an axis of the eye; and
the incision has a spatial extent in a Z direction in the range of
0.5-10 mm, and in an X-Y plane in the range of 2-10 mm.
Ex. 1001, 40:46–61. Challenged claims 2, 4, 5, 11, 12, 17, 23, 24, 26, and
27 depend from claim 1, either directly or indirectly.
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E. The Asserted Grounds of Unpatentability
Petitioner contends claims 1, 2, 4, 5, 11, 12, 17, 23, 24, 26, and 27 of
the ’925 patent (“the challenged claims”) are unpatentable in view of the
following grounds.
Ground Claim(s)
Challenged
35 U.S.C. § Reference(s)/Basis
1 1, 2, 4, 5, 11,
12, 17, 23, 24,
26
103 Frey1, Knowledge in the Art
2 17, 27 103 Frey, Blumenkranz2,
Knowledge in the Art
3 1, 2, 4, 5, 11,
12, 17, 23, 24,
26, 27
103 Blumenkranz, Frey, Knowledge
in the Art
Pet. 2. Petitioner submits the Declaration of Georg Schuele, Ph.D.
(Ex. 1004) in support of institution of inter partes review. Patent Owner
submits the Declaration of Edward A. DeHoog, Ph.D. (Ex. 2001) in support
of its Preliminary Response.
III. DENIAL UNDER 35 U.S.C. § 325(d)
Patent Owner asserts that we should deny the Petition under 35 U.S.C.
§ 325(d) because the Petition presents the same art and arguments that the
Office previously analyzed and fails to show that the Office erred during
prosecution. Prelim. Resp. 20.
We have discretion to deny review when “the same or substantially
the same prior art or arguments previously were presented to the Office.”

1 Frey et al., WO 2007/084602, published July 26, 2007 (Ex. 1006, “Frey”).
2 Blumenkranz et al., US 2006/0195076 A1, published Aug. 31, 2006
(Ex. 1008, “Blumenkranz”).
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35 U.S.C. § 325(d) (“Section 325(d)”). In that respect, Section 325(d)
provides that the Director may elect not to institute a proceeding if the
challenge to the patent is based on matters previously presented to the
Office.3 Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte
GmbH, IPR2019-01469, Paper 6 at 7 (PTAB Feb. 13, 2020) (precedential)
(“Advanced Bionics”).
In evaluating the exercise of discretion to deny institution under
Section 325(d), the Board uses the following two-part framework: (1)
determining whether the same or substantially the same art previously was
presented to the Office or whether the same or substantially the same
arguments previously were presented to the Office; and (2) if either
condition of the first part of the framework is satisfied, determining whether
the petitioner has demonstrated that the Office erred in a manner material to
the patentability of challenged claims. Advanced Bionics, Paper 6 at 8.
In applying the two-part framework, we consider several non-
exclusive factors, including:
(a) the similarities and material differences between the asserted
art and the prior art involved during examination;
(b) the cumulative nature of the asserted art and the prior art
evaluated during examination;
(c) the extent to which the asserted art was evaluated during
examination, including whether the prior art was the basis for
rejection;
(d) the extent of the overlap between the arguments made
during examination and the manner in which petitioner relies on
the prior art or patent owner distinguishes the prior art;

3 The Board institutes trial on behalf of the Director. 37 C.F.R. § 42.4(a).
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(e) whether petitioner has pointed out sufficiently how the
examiner erred in its evaluation of the asserted prior art; and
(f) the extent to which additional evidence and facts presented
in the petition warrant reconsideration of the prior art or
arguments.
Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586,
Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5,
first paragraph) (“Becton, Dickinson”).
Factors (a), (b), and (d) of the Becton, Dickinson factors relate to
whether the art or arguments presented in the Petition are the same or
substantially the same as those previously presented to the Office. Advanced
Bionics, Paper 6 at 10. Factors (c), (e), and (f) “relate to whether the
petitioner has demonstrated a material error by the Office” in its prior
consideration of that art or arguments. Id. Only if the same or substantially
the same art or arguments were previously presented to the Office do we
then consider whether petitioner has demonstrated a material error by the
Office. Id. “At bottom, this framework reflects a commitment to defer to
previous Office evaluations of the evidence of record unless material error is
shown.” Id. at 9.
A. The ’925 Patent Prosecution History
The original application for the ’925 patent was filed with thirty-nine
claims. Ex. 1002, 65–72.4 While original claim 1 did not include the
limitation that the laser be scanned “along a curved focal plane,” as recited
in issued claim 1, dependent claim 27 recited that the incision layers were at

4 The cited page numbers in Exhibit 1002 refer to the page numbers added
by Petitioner in the bottom-right corner of the page.
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least partially formed “along a curved focal plane.” Id. at 70. An
Information Disclosure Statement (“IDS”) submitted on April 7, 2010 cited
Blumenkranz and was marked as considered by the Examiner. Id. at 135,
446.
In a Non-Final Office action on March 21, 2014, the Examiner
rejected claim 1 as anticipated by Gray5 and claim 27 as obvious over Gray
in view of Bille.6 Ex. 1002, 1066–1085. With respect to claim 27, the
Examiner stated that, although Gray “discloses a system and method for
delivering a laser beam to a lens of an eye,” it “does not expressly disclose
the method . . . wherein one or more layers are at least partially formed
along a curved focal plane of a laser delivery system.” Id. at 1075–1076.
The Examiner relied on the knowledge of “one skilled in the art” in
combination with Bille to teach that feature. Id.
The applicant subsequently amended claim 1 by adding, “forming an
incision in the surgical region on a layer-by-layer basis by scanning a laser
beam with an XY scanner of a laser delivery optics along a curved focal
plane of the laser delivery optics to form a line of bubbles in each layer
without adjusting a Z scanner of the laser delivery optics at a scanning rate
of the XY scanner,” and argued for the patentability of amended claim 1
over Gray. Ex. 1002, 1093, 1102–1103 (emphasis added). The applicant

5 Frey et al., US 2007/0185475 A1, published Aug. 9, 2007 (Ex. 1020,
“Gray”). Although the Examiner referred to this application as “Frey”
during prosecution of the ’925 patent, Petitioner and Patent Owner refer to it
as “Gray” to avoid confusion with the Frey reference cited supra. Pet. 8 n.3;
Prelim. Resp. 6 n.1. To be consistent with how the parties describe this
reference, we will also refer to it as “Gray.”
6 Bille et al., U.S. Patent No. 5,439,462, issued Aug. 8, 1995 (“Bille”).
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argued that “the Office Action did not point to any portion of [Gray] where
[Gray] would have described the newly added limitation ‘scanning a laser
beam with an XY scanner of a laser delivery optics along a curved focal
plane.’” Id. at 1102. The applicant also stated that it had “reviewed [Gray]
at the non-referenced locations as well, but found no express mention of
such a limitation either.” Id. at 1103. The applicant further argued that:
[S]canning the laser beam along a curved focal plane is not
equivalent either to scanning along a flat, or transverse, focal
plane in the context of the claimed method, since the claimed
method is directed towards “forming an incision” with an
orientation that is “one of an orientation intersecting fibers of
the lens and an orientation non-transverse to an axis of the eye”.
When scanning a laser beam with an XY scanner along a
curved focal plane, then each line of bubbles can intersect fibers
or can form an incision with an orientation non-transverse to an
axis of the eye, making the method more effective than methods
that XY scan in a flat plane.
Id.
In a September 25, 2014 Final Rejection, the Examiner maintained all
the same rejections against the claims and provided additional analysis of
Gray. Ex. 1002, 1111–1129. The Examiner asserted that Gray discloses the
curved focal plane limitation added to claim 1 because Gray discloses that in
“all of the laser shot patterns,” “the laser shot patterns generally follow the
shape of the lens.” Id. at 1111–1113, 1129 (citing Ex. 1020, Fig. 19, ¶¶ 92,
107) (emphasis omitted). With respect to claim 27, the Examiner argued
that Gray in view of Bille rendered obvious the curved focal plane limitation
because “one skilled in the art would recognize that using [] the method of
[Gray] [to form] the incision on a layer-by-layer basis and layers are at least
partially formed along a curved focal plane, as taught by Bille, would allow
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the operator to input the curvature of the posterior capsule and the anterior
capsule.” Id. at 1120.
In a December 23, 2014 response, the applicant did not substantively
amend the claims but, instead, argued that Gray does not describe scanning
“along a curved focal plane” “either explicitly or inherently.” Ex. 1002,
1157–1158 (emphasis omitted). The applicant stated that it had “searched
the entire [Gray] document and did not readily find a corresponding
description either.” Id. at 1158. The applicant also argued that “[Gray] does
not even inherently describe ‘scanning . . . along a curved focal plane’”
because “following the shape of the lens at the periphery requires varying
the Z depth of the cut quite fast.” Id.
In a March 23, 2015 Non-Final Rejection, the Examiner again
maintained the same rejections and provided additional analysis of Gray’s
disclosure in asserting that Gray discloses laser delivery optics along a
curved focal plane. Ex. 1002, 1249–1256, 1267–1270 (citing Ex. 1020,
Figs. 19, 28, 29, ¶¶ 107, 115, 121). Specifically, the Examiner pointed to
Gray’s Figure 28B and argued “position 2801 is an incision in the surgical
region on a layer-by-layer basis by scanning a laser beam with an XY
scanner of a laser delivery optics along a curved focal plane without
adjusting a Z scanner of the lase [sic] delivery optics.” Ex. 1002, 1251–
1252, 1269–1270 (citing Ex. 1020, Fig. 28B (reproduced below)).

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Id. at 1252. Figure 28B shows the cutting pattern 2801 in the anterior
portion of the lens. Ex. 1020, ¶ 121.
In a June 23, 2015 response, the applicant again argued that Gray does
not disclose scanning along a curved focal plane either “explicitly” or
“inherently.” Ex. 1002, 1297–1300. Specifically, the applicant argued that
Gray’s “layer-by-layer embodiments clearly show flat shot-layers, not
curved ones” that “follow[] the shape of the lens” because each layer starts
and ends “at different XY coordinates.” Id. at 1298. The applicant also
argued that the feature is not inherent to Gray because:
To recognize that (1) a focal plane of the laser system can be
curved, and (2) to exploit this curvature to increase the speed,
and (3) to increase the safety of the surgical procedure were all
inventive insights by Applicant, and are thus not inherent
without express disclosure. [Gray] did not recognize any of
these points (1)–(3), that his focal planes can be curved, that
creating the flat cuts can pose safety challenges, and that
Applicant’s claimed combination can turn a potential problem
into an advantage both for safety and for speed.
Id. at 1299.
In an October 19, 2015 Non-Final Rejection, the Examiner again
rejected claim 1, this time as being obvious over Gray in view of Bille.
Ex. 1002, 1336. In this rejection, the Examiner stated that, “[Gray] does not
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clearly disclose forming an incision in the surgical region on a layer-by-layer
basis by scanning a laser beam with an XY scanner of a laser delivery optics
along a curved focal plane of the laser delivery optics to form a line of
bubbles in each layer.” Id. at 1339, 1358. However, the Examiner argued
that one skilled in the art would have known how to scan along a curved
focal plane in light of Bille, since “one skilled in the art would recognize that
modifying the method of [Gray] with using the wavefront detector and
ellipsometer, as taught by Bille, would improve the method by forming an
incision in the surgical region by scanning a laser beam along a curved focal
plane.” Id. at 1340, 1359.
In a final response on January 19, 2016, the applicant again argued
that Gray does not “explicitly” or “inherently” disclose the curved focal
plane limitation. Ex. 1002, 1395–1399. For example, the applicant
contended:
Applicant agrees that [Gray] showed and described curved
incisions. However, [Gray] never taught forming these curved
incisions (a) along a curved focal plane of the laser delivery
optics, and (b) without adjusting his Z scanner. These ideas
require the recognition that forming curved incisions has a
slowness problem, and that this problem can be solved by
designing the optics with a curved focal plane that tracks the
curvature of the ophthalmic targets. Such systems can create
curved incisions much faster than systems without such a
suitably curved focal plane.
The Office Action was unable to point to an explicit
description of a laser optical system with a curved focal plane
by [Gray]. Moreover, [Gray] does not describe curved focal
planes inherently either, because curved incisions can be
created by more than one technique: by Applicant’s inventive
curved focal plane optics, or by designing a controller that
adjusts the XY and the Z scanners simultaneously to form the
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curved incision. Therefore, the description of a system that
creates a curved incision is not a description of a system with a
curved focal plane. Thus, the curved focal plane system is not
inherent either in [Gray].
Id. at 1395.
The Examiner then issued a Notice of Allowance in which the
Examiner stated that the closest prior art (including Gray) failed to “teach,
suggest or render obvious: ‘forming an incision in the surgical region on a
layer-by-layer basis by scanning a laser beam with an XY scanner of a laser
delivery optics along a curved focal plane of the laser delivery optics to form
a line of bubbles in each layer without adjusting a Z scanner of the laser
delivery optics at a scanning rate of the XY scanner.’” Ex. 1002, 1409–
1410.
B. Same or Substantially the Same Art or Arguments Previously
Presented to the Office
We first consider whether Petitioner asserts the same or substantially
the same art or arguments that previously were presented to the Office.
Advanced Bionics, Paper 6 at 8.
Petitioner’s grounds rely on two references – Frey and Blumenkranz –
to show obviousness of the challenged claims. Pet. 2. Patent Owner argues
that Gray, which is the published U.S. Patent Application version of Frey, is
substantively identical to Frey and was cited by the Examiner in four Office
Actions during prosecution of the ’925 patent. Prelim. Resp. 6, 22. Patent
Owner also points out that Blumenkranz was cited in an IDS during
prosecution. Id. at 21. Petitioner acknowledges that Gray was discussed by
the Examiner and that it has substantially the same disclosure as Frey.
Pet. 8 n.3, 61. Petitioner also acknowledges that Blumenkranz was cited in
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an IDS but asserts that “nothing in the record indicates that the Examiner
substantively considered it.” Id. at 63.
Under Advanced Bionics, “[p]reviously presented art includes art
made of record by the Examiner, and art provided to the Office by an
applicant, such as on an Information Disclosure Statement (IDS), in the
prosecution history of the challenged patent.” Advanced Bionics, Paper 6
at 7–8. Because Gray, which is substantially identical to Frey, and
Blumenkranz were before the Office during prosecution of the ’925 patent,
we find that the same or substantially the same art was previously presented
and we move on to the second part of the Advanced Bionics framework.
C. Whether the Office Erred in a Manner Material to Patentability
Because we find that the same or substantially the same art previously
was presented to the Office, we turn to whether Petitioner demonstrates that
the Office erred in a manner material to the patentability of the challenged
claims. Advanced Bionics, Paper 6 at 8, 10; see Becton, Dickinson, Paper 8
at 24. We conclude that Petitioner has failed to do so.
Petitioner asserts that the Examiner “overlooked and failed to consider
Gray’s disclosure of ‘conventional focusing optics,’ which provides a curved
focal plane.” Pet. 61. Specifically, Petitioner contends that the Examiner
erred by overlooking the disclosure in paragraph 65 of Frey (paragraph 64 of
Gray), which allegedly teaches curved focal plane optics. Reply 2.
Paragraph 65 of Frey states that “[t]he focusing optics may be conventional
focusing optics, and/or flat field optics and/or telecentric optics.” Ex. 1006
¶ 65; Ex. 1020 ¶ 64. Petitioner contends that one of skill in the art would
have known that the “conventional focusing optics” discussed in
paragraph 65 of Frey have a curved focal plane. Pet. 18–21 (citing Ex. 1004
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¶¶ 55–57, 81). According to Petitioner, the “prosecution history nowhere
suggests that the Examiner implicitly evaluated whether Frey [0065]’s
‘conventional focusing optics’ disclose curved focal plane optics” and that
the Examiner never “relied on disclosures of Frey’s optics” in rejecting the
claims but, rather, relied on paragraphs describing Frey’s laser patterns for
cutting the lens. Reply 2–3.
Patent Owner argues that Petitioner fails to meet its burden of
showing material error by the Office because “the Office considered and
reconsidered Gray’s disclosure in response to Applicant’s repeated
arguments that Gray did not ‘explicitly’ or ‘inherently’ disclose the curved
focal plane limitation” and because paragraph 65 of Frey does not describe a
“curved focal plane.” Prelim. Resp. 22. According to Patent Owner, “[a]fter
four rounds of active debate over what Gray disclosed, spanning over 80
pages of analysis, the Examiner allowed the claims,” which was not an error.
Id. at 14; PO Sur-reply 2.
On this record, we agree with Patent Owner that the Office previously
conducted an extensive analysis of whether Gray discloses a “curved focal
plane” and Petitioner has not demonstrated that the Examiner materially
erred. As described supra, the issue of whether Gray “explicitly” or
“inherently” discloses a “curved focal plane” was specifically discussed by
the Examiner and the applicant during prosecution, spanning 82 pages of the
file history. See Prelim. Resp. 23. Petitioner directs us to no persuasive
evidence that the Examiner, who was “engaged with the prior art and the
‘curved focal plane’ limitation,” erred by “fail[ing] to consider Gray’s
disclosure of ‘conventional focusing optics.’” PO Sur-reply 3; Pet. 61.
Patent Owner, by contrast, directs us to persuasive evidence from the
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prosecution history supporting the position that the Examiner considered
whether Gray discloses this limitation.
For example, in the first rejection (of claim 27) based on Gray, the
Examiner stated that Gray lacked the “curved focal plane” limitation and
relied on the secondary reference, Bille, for that teaching. Ex. 1002, 1075–
1076. The applicant responded by amending claim 1 to include the “curved
focal plane” element and argued that it had reviewed Gray “at the non-
referenced locations as well, but found no express mention of such a
limitation either.” Id. at 1103. After claim 1 was amended to include the
“curved focal plane” limitation, the Examiner then rejected claim 1 as
anticipated by Gray and cited to Gray’s disclosure that the “laser shot
patterns generally follow the shape of the lens.” Id. at 1129. In response,
the applicant disagreed with the Examiner’s analysis and stated that it had
“searched the entire [Gray] document” and could not find any “express” or
“inherent” disclosure of this limitation. Id. at 1158. The Examiner
responded by citing to new portions of Gray to support a maintained
anticipation rejection. Id. at 1249–1252. When the applicant again argued
that Gray does not “explicitly” or “inherently” teach the “curved focal
plane” limitation, the Examiner acknowledged this element was missing
from Gray but argued that it would have been obvious in view of Bille.
Id. at 1339–1340. In sum, the prosecution history demonstrates that the
Examiner reevaluated the Gray disclosure after each of the applicant’s
arguments and presented different analysis and citations in each of the four
rejections involving Gray. Id. at 1064, 1109, 1247, 1334. Ultimately, the
Examiner determined that Gray does not disclose the “curved focal plane”
limitation and allowed the claims. Id. at 1409–1410.
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The detailed and extensive analysis in the prosecution history of
whether Gray discloses a “curved focal plane” undermines Petitioner’s
argument that the Examiner overlooked and failed to consider Gray’s
disclosure of “conventional focusing optics.” We are not persuaded by
Petitioner’s argument that the Examiner never “relied on disclosures of
Frey’s optics” in rejecting the claims but, rather, relied on Frey’s laser
patterns for cutting the lens. Reply 2–3. The claim limitation at issue during
prosecution recited “forming an incision in the surgical region on a layer-by-
layer basis by scanning a laser beam with an XY scanner of a laser delivery
optics along a curved focal plane of the laser delivery optics.” Ex. 1002,
1093 (emphasis added). Petitioner’s contention that the Examiner did not
consider the delivery optics disclosed in Gray when specifically analyzing
this claim limitation is not persuasive.
Similarly, we are also not persuaded by Petitioner’s argument that the
Examiner’s failure to specifically cite paragraph 64 of Gray suggests that the
Examiner never “evaluated whether Frey [0065]’s ‘conventional focusing
optics’ disclose curved focal plane optics.” Reply 2–3. For the reasons
discussed above, we agree with Patent Owner that “[t]he thorough
prosecution history demonstrates an Examiner engaged with the prior art and
the ‘curved focal plane’ limitation,” and that Petitioner has not sufficiently
demonstrated how the Examiner erred in its evaluation of Gray. PO Sur-
reply 3. Advanced Bionics, Paper 6 at 9 (“[I]f reasonable minds can disagree
regarding the purported treatment of the art or arguments, it cannot be said
that the Office erred in a manner material to patentability.”). Thus, we find
that Petitioner has not persuasively shown that the Office erred in a manner
material to the patentability of the challenged claims.
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D. Conclusion as to Section 325(d)
For the reasons set forth above, we do not institute review of claims 1,
2, 4, 5, 11, 12, 17, 23, 24, 26, and 27 because, under 35 U.S.C. § 325(d), the
same or substantially the same art previously was presented to the Office,
and Petitioner has not shown that the Office erred in a manner material to
patentability.
IV. CONCLUSION
For the foregoing reasons, we exercise discretion not to institute inter
partes review under 35 U.S.C. § 325(d).
V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied and no inter partes review is
instituted.

IPR2021-01069
Patent 9,456,925 B2
20
PETITIONER:

Michael Morin
Giri Pathmanaban
Jonathan Strang
Roger J. Chin
Latham & Watkins LLP
michael.morin@lw.com
giri.pathmanaban@lw.com
jonathan.strang@lw.com
roger.chin@lw.com

PATENT OWNER:

Gregg F. LoCascio
Jeanne M. Heffernan
W. Todd Baker
Noah S. Frank
Kristen P. L. Reichenbach
KIRKLAND & ELLIS LLP
gregg.locascio@kirkland.com
jheffernan@kirkland.com
todd.baker@kirkland.com
noah.frank@kirkland.com
kristen.reichenbach@kirkland.com