Ex Parte BACHER et al

Patent Trial and Appeal Board

Nov 29, 2018

14723654 (P.T.A.B. Nov. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/723,654 05/28/2015
26356 7590 12/03/2018
ALCON
IP LEGAL
6201 SOUTH FREEWAY
FORT WORTH, TX 76134
FIRST NAMED INVENTOR
GERALD D. BACHER
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
PAT056227-US-NP 4748
EXAMINER
FISSEL, TRAVIS S
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
12/03/2018 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):
patent. docketing@alcon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERALD D. BACHER, STEVEN T. CHARLES,
EY AD AMMAR!, PAUL HALLEN, MICHAEL PAP AC, and
RONALD T. SMITH 1
Appeal2017---010632
Application 14/723,654
Technology Center 2800
Before BEYERL YA. FRANKLIN, MARK NAGUMO, and
RAEL YNN P. GUEST, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants are the applicant, Novartis AG, which, according to the Appeal
Brief, is the real party in interest. Appeal Br. 2.
Appeal2017---010632
Application 14/723,654
Appellants request our review under 35 U.S.C. § 134 of the
Examiner's decision rejecting claims 1-20. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b ).
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants' subject matter on appeal and is
set forth below:
1. An ophthalmic illumination system, comprising
a light source operable to generate a source light beam;
a beam splitter operable to split the source light beam
into a first light beam and a second light beam;
a first attenuator located in a path of the first light beam,
the first attenuator operable to change an intensity of the first
light beam;
a second attenuator located in a path of the second light
beam, the second attenuator operable to change an intensity of
the second light beam;
a first optical fiber port configured for connection to a
first optical fiber, the first optical fiber delivering at least a
portion of the first light beam to a patient's eye;
a second optical fiber port configured for connection to a
second optical fiber, the second optical fiber delivering at least
a portion of the second light beam to the patient's eye; and
a control unit communicatively coupled to the first
attenuator and the second attenuator, the control unit operable
to:
adjust the first attenuator in order to control the
intensity of the portion of the first light beam delivered to
the patient's eye via the first optical fiber; and
adjust the second attenuator to control the intensity
of the portion of the second light beam delivered to the
patient's eye via the second optical fiber.
2
Appeal2017---010632
Application 14/723,654
The Examiner relies on the following prior art references as evidence
of unpatentability:
Todd
Gj ettermann
Bhadri
Horvath
US 7,568,619 B2
US 2008/0137362 Al
US 2010/0157620 Al
US 2014/0066723 Al
THE REJECTIONS
Aug.4,2009
June 12, 2008
June 24, 2010
Mar. 6, 2014
1. Claims 1, 3 and 12 are rejected under 35 U.S.C. § I02(a)(l) as being
anticipated by Bhadri.
2. Claims 2 and 11 are rejected under 35 U.S.C. § 103 as being
unpatentable over Bhadri in view of Horvath.
3. Claims 4 and 17 are rejected under 35 U.S.C. § 103 as being
unpatentable over Bhadri in view of Gjettermann.
4. Claims 5-8, 16, 18 and 19 are rejected under 35 U.S.C. § 103 as being
unpatentable over Bhadri in view of Todd.
5. Claims 9, 10, 13-15 and 20 are rejected under 35 U.S.C. § 103 as
being unpatentable over Bhadri.
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Appeal2017---010632
Application 14/723,654
ANALYSIS
Upon consideration of the evidence and each of the respective
positions set forth in the record, we find that the preponderance of evidence
supports the Appellants' position in the record, and we thus reverse each of
the Examiner's rejections on appeal essentially for the reasons provided by
Appellants in the record, with the following emphasis.
Claim interpretation is dispositive in this case. In this regard, we agree
with Appellants (Appeal Br. 7; Reply Br. 3--4) that claim 1 requires that the
respective first and second attenuators are downstream from ( or in the path
of) the respective first and second light beams, which necessarily must be
downstream from the beam splitter that forms the first and second light
beams from the source light beam. This limitation is illustrated in Figure IA
of Appellants' Specification.
The Examiner's response on this point is set forth in the paragraph
bridging pages 4 and 5 of the Answer. Therein, the Examiner believes that
the beam exiting port C of Bhadri ( as shown in Figure 2A of Bhadri)
involves both light source A and light source B of Bhadri, and therefore is
attenuated by both attenuators 52 and 68 shown in Figure 2A. However, this
position overlooks the aforementioned point made by Appellants that claim
1 requires that the respective first and second attenuators are downstream
from the respective first and second light beams. Thus, the rejection does
not address a claim limitation. See In re NTP, Inc., 654 F.3d 1279, 1302
(Fed. Cir. 2011) ("It is axiomatic that for anticipation, each and every claim
limitation must be explicitly or inherently disclosed in the prior art."
( citations omitted)).
4
Appeal2017---010632
Application 14/723,654
With regard to method claim 13, we agree with Appellants'
stated position as set forth on pages 10-11 of the Appeal Brief. We
add that the Examiner's statement (Ans. 5) that no definition is
provided in Appellants' Specification for the claimed surgical
instrument is not correct. Spec. ,r 26. As such, the Examiner's claim
interpretation as set forth on page 6 of the Answer is overly broad.
In view of the above, we reverse the anticipation rejection.
Because the Examiner does not rely upon the additionally applied
references relied upon in Rejections 2--4 to overcome the stated
deficiencies of Bhadri, we also reverse these rejections. Also, with
regard to Rejection 5, the same deficiency remains in this rejection,
and we thus reverse Rejection 5 for .similar reasons.
DECISION
Each rejection is reversed.
REVERSED
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