Ex Parte BACHER et alDownload PDFPatent Trial and Appeal BoardNov 29, 201814723654 (P.T.A.B. Nov. 29, 2018) Copy Citation 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. 3 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 5 Copy with citationCopy as parenthetical citation