Beaver-Visitec International (US), Inc.

Patent Trials and Appeals Board

Jun 4, 2020

2019006062 (P.T.A.B. Jun. 4, 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.
15/407,673 01/17/2017 ROBERT H. OSHER 2070-132 9017
140503 7590 06/04/2020
Budzyn IP Law, LLC
120 Eagle Rock Avenue
Suite 328
East Hanover, NJ 07936
EXAMINER
CLARK, RYAN T
ART UNIT PAPER NUMBER
3794
MAIL DATE DELIVERY MODE
06/04/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT H. OSHER, BRIANA RAWSON, and
COLLIN ALEXANDER MURRAY
Appeal 2019-006062
Application 15/407,673
Technology Center 3700
Before JENNIFER D. BAHR, JOHN C. KERINS, and
MICHAEL L. WOODS, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 16–21. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as
Beaver-Visitec International (US), Inc. Appeal Br. 2.
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Application 15/407,673

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CLAIMED SUBJECT MATTER
Appellant’s invention is directed to an electrical resistance heating
device for marking a patient’s eye in preparation for or during a surgical
procedure. Spec. ¶ 4. Claim 16, reproduced below, is the only independent
claim and is illustrative of the claimed subject matter.
16. A method of marking a patient’s eye with reference marks
for ophthalmic procedures, the method comprising:
providing an ophthalmic marking device having:
a handle;
a tip on said handle;
an electrically conductive tip element at least
partially within said tip, said tip element including
spaced-apart first and second leads with an arched
conductor extending therebetween in physical-direct
contact with said first and second leads to define a closed
electrical flow path between said first and second leads
such that application of an electrical potential across said
first and second leads results in electrical flow through
said conductor, a first portion of said tip element
protruding from said tip to be exposed; and,
an electrical power storage associated with the
device, said electrical power storage being electrically
connectable to said conductive tip element,
wherein, said tip element and said electrical power
storage are configured so that, with electrical flow
through said tip element caused by said electrical power
storage, heat is resistively generated in said tip element
with temperature in the range of 250 °F – 450 °F at said
first portion of said tip element;
actuating said ophthalmic marking device to allow said
electrical power storage to cause electrical flow through said tip
element so that heat is resistively generated in said tip
element with a temperature in the range of 250 °F – 450 °F at
said first portion of said tip element; and,
contacting a target site on a patient’s eye to be marked
with a reference mark with said first portion of said tip element
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and maintaining contact for at least one second with
the temperature at said first portion of said tip element being in
the range of 250 °F – 450 °F.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Saliaris US 4,108,181 Aug. 22, 1978
Pao US 4,674,499 June 23, 1987
Fedorov US 4,907,587 Mar. 13, 1990

REJECTION
Claims 16–21 stand rejected under 35 U.S.C. § 103 as unpatentable
over Pao, Saliaris, and Fedorov.
OPINION
Appellant groups claims 16–21 together in contesting the rejection.
See Appeal Br. 5–8. We decide the appeal on the basis of independent claim
16, and claims 17–21 stand or fall with claim 16. See 37 C.F.R.
§ 41.37(c)(1)(iv) (permitting the Board to select a single claim to decide the
appeal as to a single ground of rejection of a group of claims argued
together).
The Examiner finds that Pao teaches a method of marking a patient’s
eye comprising providing a device having a handle and a tip element on the
handle including first and second electrical leads, actuating the device to
allow electrical flow to the tip element, and contacting a target site on a
patient’s eye to be marked with a reference mark with a first portion of the
tip element. Final Act. 2–3. The Examiner finds that
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Pao does not specifically teach arched conductor
extending therebetween in physically-direct contact with said
first and second leads, an electrical power storage associated
with the device, said electrical power storage being electrically
connectable to said conductive tip element, wherein, said tip
element and said electrical power storage are configured so that,
with electrical flow through said tip element caused by said
electrical power storage, heat is resistively generated in said tip
element with temperature in the range of 250 °F - 450 °F at said
first portion of said tip element; and maintaining contact for at
least one second with the temperature at said first portion of
said tip element being in the range of 250 °F - 450 °F.
However, Pao does say that an alternative to the bipolar
configuration described in detail in the reference is heating
through a resistance element (col. 1 lines 24-33).
Id. at 3.
The Examiner finds, however, that Saliaris teaches an analogous
ophthalmic device with a battery that supplies electrical current through two
leads (electrodes 17, 18) to an arched conductor (tip 19) to resistively heat
the tip. Final Act. 4. The Examiner determines it would have been obvious
to modify Pao’s device by providing an arrangement as taught in Saliaris,
with a “battery powered resistive heating element connecting leads” in order
to make the device more compact, which is important when operating in the
region of the eye where there is limited space, and to make the device more
“simple and reliable for using disposable cauteries.” Id.
The Examiner relies on Fedorov regarding the claimed temperature
range of Appellant’s method. See Final Act. 4. Appellant does not contest
this aspect of the rejection. See Appeal Br. 5–7.
Appellant contends that “Pao’s intended purpose and principle of
operation are premised on controlling spot cauterization with high frequency
alternating current.” Appeal Br. 6. According to Appellant, “[m]odifying
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Pao to be battery powered would undermine the principle of operation of
Pao, as well as, render Pao unsatisfactory for its intended purpose.” Id.
Appellant submits that “Pao specifically provides improved spot
cauterization for high frequency alternating current applications” and the
proposed modification “seeks to impermissibly alter Pao at its crux.” Id.
The Examiner counters that Pao does not indicate that direct current
would be less satisfactory than, or go against the principle of operation of,
using alternating current. Ans. 4. Rather, according to the Examiner, Pao
lists direct current as an alternative to high frequency energy. Id. (citing
Pao, Abstract). The Examiner states that Appellant has not shown that the
modification proposed by the Examiner would hinder the flow of electricity
to the tip of Pao’s device to heat tissue, but, rather, “has simply alleged that
the intended purpose and principle [of] operation of Pao is to use alternating
current.” Id. at 5.
Appellant takes issue with the Examiner’s statement that Pao teaches
direct current as an alternative to high frequency, alternating current. Reply
Br. 2. In particular, Appellant submits that the single mention in Pao’s
Abstract “references ‘direct voltage,’” and that “[t]he modifier ‘direct,’ as
applied to voltage, may be used to describe how a voltage is applied, i.e.,
direct vs. indirect, and not necessarily as yielding direct current.” Id.
Pao discloses that the electrodes “are adapted to receive a high
frequency voltage or direct voltage thereacross.” Pao, Abstract. The
language “high frequency voltage or direct voltage” suggests that “direct
voltage” is an alternative to “high frequency voltage.” Further, an ordinary
and customary meaning of “direct voltage” is “[a] voltage that forces
electrons to move through a circuit in the same direction continuously,
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thereby producing a direct current. Also known as direct-current voltage.”
McGraw-Hill Dictionary of Scientific & Technical Terms (2003),
https://encyclopedia2.thefreedictionary.com/direct+voltage (last visited May
27, 2020).2 Thus, a preponderance of the evidence supports the Examiner’s
interpretation of Pao’s Abstract as teaching direct current (i.e., direct voltage
or direct-current voltage) as an alternative to high frequency voltage for
cauterizing eye tissue for scleral marking. See Pao 2:30–42, 3:27–29.
Moreover, although Pao discloses an embodiment comprising a
bipolar probe energized using high frequency voltage, Pao does not
disparage or otherwise discourage the use of a resistive heating probe having
a tip comprising a resistance element heated by passing electrical current
from a direct-current voltage source, such as a battery. Thus, Pao does not
teach away from modifying Pao as the Examiner proposes, in view of
Saliaris, or otherwise indicate that such a modification would render Pao’s
device unsuitable for its intended purpose or change Pao’s principle of
operation.
As for the principle of operation and intended purpose of Pao’s
device, Pao seeks to provide an electrocautery device that is visible through
the sclera, capable of pinpoint accuracy to produce cautery spots of
predetermined areas for producing repeatable marks for use in procedures
such as scleral marking, and capable of producing spot cauterization without
passing current through a patient’s body. See Pao 3:39–54. Pao teaches that
using electrical current to heat a resistance element, which is then applied to
the tissue to be cauterized, “precludes the necessity of applying an electrical

2 A copy of this definition is appended to this opinion.
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current through the tissue.” Id. at 1:25–30. Further, Saliaris likewise seeks
to provide a cautery device that ensures “repeatable reliable operation.”
Saliaris 1:37–41. This suggests that providing a probe tip that is resistively
heated by application of current from a battery via first and second leads, as
taught by Saliaris, would be consistent with Pao’s objectives.
For the above reasons, Appellant does not apprise us of error in the
Examiner’s determination that the subject matter of claim 16 would have
been obvious in view of the combined teachings of Pao, Saliaris, and
Fedorov. Accordingly, we sustain the rejection of claim 16 as unpatentable
over Pao, Saliaris, and Fedorov. We also sustain the rejection of claims 17–
21, which fall with claim 16, as unpatentable over Pao, Saliaris, and
Fedorov.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
16–21 103 Pao, Saliaris,
Fedorov
16–21

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