Ex Parte Bischoff et al

Patent Trial and Appeal Board

Jul 31, 2018

13810169 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/810,169 03/29/2013
24113 7590 07/31/2018
PATTERSON THUENTE PEDERSEN, P.A.
80 SOUTH 8TH STREET
4800 IDS CENTER
MINNEAPOLIS, MN 55402-2100
FIRST NAMED INVENTOR
Mark Bischoff
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.
308 l .350WOUS 7112
EXAMINER
NGANGA, BONIFACE N
ART UNIT PAPER NUMBER
3762
MAIL DATE DELIVERY MODE
07/31/2018 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 MARK BISCHOFF, GREGOR STOBRA WA,
and MICHAEL BERGT
Appeal2017-006497
Application 13/810, 169 1
Technology Center 3700
Before TONI R. SCHEINER, DEMETRA J. MILLS, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to a device and method of
generating control data for controlling a laser device for surgically
correcting defective eye vision. The Examiner rejected the claims as
obvious under 35 U.S.C. § 103. Appellants appeal the rejections pursuant to
35 U.S.C. § 134. We have jurisdiction under 35 U.S.C. § 6(b). The
rejections are reversed.
STATEMENT OF THE CASE
Appellant appeals from the Examiner's final rejection of claims 12-
4 7. The claims are finally rejected by the Examiner as follows:
1 The Appeal Brief ("Appeal Br.") 2 lists Carl Zeiss Meditec AG.as the real-
party-in-interest.
Appeal2017-006497
Application 13/810, 169
1. Claims 12-16, 21-26, 31-36, and 41--47 under pre-AIA 35 U.S.C.
§ I03(a) as obvious in view of Muhlhoff et al., U.S. Pat. Appl. Publ.
2007 /0293851 Al (published Dec. 20, 2007) ("Muhlhoff') and Wiechmann
et al., U.S. Pat. Appl. Publ. 2008/0319428 Al (published Dec. 25, 2008)
("Wiechmann"). Final Office Action ("Office Act.") (entered Dec. 15,
2015) 5.
2. Claims 17-20, 27-30, and 37--40 under pre-AIA 35 U.S.C.
§ I03(a) as obvious in view of Muhlhoff, Wiechmann, and Kitaya et al.
(U.S. Pat. No. 4,685,180) (issued Aug. 11, 1987) ("Kitaya"). Final Act. 10-
1 1.
There are three independent claims on appeal. Independent claim 12
is to a method; claim 22 is directed to a device for performing the method
which is programmed with the instructions recited in claim 12; claim 32 is
directed to computer data storage medium which contains the instructions
for the method of claim 12. All three independent claims have the same
limitations and thus stand or fall together.
Claim 12, which is representative of the claimed subject matter, reads
as follows:
12. A method for generating control data, which are adapted
to control a laser device emitting laser radiation for surgically
correcting defective vision of an eye by surgically altering a
shape of an optical component of the eye, the method
compnsmg:
specifying a cutting surface, which is curved, has a vertex
and a border and which is to be produced in the eye by
application of the laser radiation from the laser device to the
optical component of the eye for correcting a defective vision;
defining at least one path curve for the control data, along
which a focus of the laser radiation is to be shifted by
controlling the laser device according to the control data;
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Application 13/810, 169
selecting the at least one path curve such that at least one
path curve lies in the cutting surface or within a tolerance zone
around the cutting surface;
further comprising, for the selection of the at least one
path curve:
defining a reference plane which is at a
predetermined angle to a direction of incidence of the
laser radiation and defining various shifting positions
between the vertex and the border of the cutting surface
for the reference plane;
defining, for each shifting position several axes or
semi-axes, which lie in the reference plane, are not
parallel to each other and which, when viewed in a
projection along a direction of incidence, in the case of
axes, intersect and in the case of semi-axes, have at least
one common point;
determining, for each shifting position of the
reference plane, intersection points of the axes or semi-
axes with the cutting surface; and
wherein the at least one path curve is fixed in that
the intersection points are connected.
DISCUSSION
The claim is directed to a method of "generating control data." The
data is used "to control a laser device emitting laser radiation for surgically
correcting defective vision of an eye by surgically altering a shape of an
optical component of the eye." The method comprises steps of specifying a
cutting surface on the eye and defining and selecting at least one curve path
to perform the cutting. All three independent claims recite these limitations.
The Examiner found that the claimed method is obvious based on
Muhlhoff and Wiechmann. The Examiner determined that Muhlhoff
describes a method of generating control data to control a laser as claimed,
including the steps of specifying a cutting surface on the eye and defining
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Application 13/810, 169
and selecting at least one curve path. Final Act. 5. The Examiner found that
Muhlhoff does not describe the following limitations of claim 12:
defining, for each shifting position several axes or semi-
axes, which lie in the reference plane, are not parallel to each
other and which, when viewed in a projection along a direction
of incidence, in the case of axes, intersect and in the case of
semi-axes, have at least one common point;
determining, for each shifting position of the reference
plane, intersection points of the axes or semi-axes with the
cutting surface; and
wherein the at least one path curve is fixed in that the
intersection points are connected.
The Examiner stated, in response to Appellants' arguments:
Muhlhoff is not being applied to teach axes and semi-axes as
asserted by Appellant, both office actions state the following:
"Muhlhoff does not expressly disclose wherein the several axes
or semi-axes are defined for each shifting position,
determination of the intersection points of axes with the cutting
surface. However, Muhlhoff does teach in [0021] that the
maximum distance between contour lines should not exceed a
limit value so as to form a contiguous cut swface, wherein
either the measure to be used for this purpose is either the
contour line projection image or the three-dimensional space"
(see page 6 office of the non-final office action and page 7 of
the final office action).
Ans. 7-8.
The Examiner further referenced the discussion on page 15 of the
Final Office Action (i-f 15), stating:
As noted above, Wiechmann teaches a method of determining
the distance between incision path distance dra and dTb as
illustrated in Fig. 11, the incision path distance dra and drb are
determined using axes, see [0176] is representative of path
distance along the main axes a and b.
Figure 11 of Wiechmann is reproduced below:
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Application 13/810, 169
Figure 11, reproduced above, shows the path distances dra and drb on
an eye lens along which cuts are made. Wiechmann ,r 17 6. The Examiner
explained:
The Office has taken the posit[i]on that the teachings of
Wiechmann suggests to those of ordinary skill in the art to
determine the distance between two incision paths by defining
axes and finding the distance (see illustration Fig. 11, distances
dra and dTb) noting that similar axes or semiaxes would be
defined in other regions of the incision path to determine an
incision path distance.
Office Act. 15.
Paragraph 17 6 of Wiechmann describes the distances dra and drb
between two paths that intersect with the a-axis and b-axis, respectively.
The Examiner states that the distances between incision paths is used to
determine an incision path distance. Office Act. 15. However, in rejected
claim 12, axes of the shifting positions are used to identify "intersection
points" with a cutting surface. The Examiner did not explain how paragraph
176 of Wiechmann teaches finding intersection points "for each shifting
position of the reference plane" as recited in claim 12. Moreover, while
Figure 11 of Wiechmann shows intersection points with axes a and b, the
Examiner did not explain how the intersection points define "at least one
path curve" as recited in the claim, rather than multiple curves and multiple
cutting paths as shown in Figure 11 of Wiechmann.
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Application 13/810, 169
The Examiner states:
Since Muhlhoff teaches that the distance between incision curve
should not exceed a limit [0021 ], a skilled artisan would seek
other references in the art [i.e., Wiechmann] that teach known
methods for determining the distance between two incision
path, so as to make a determination whether the distance
between incision path exceeds a given limit.
Office Act. 15.
The Examiner is therefore relying on Muhlhoff s teaching as the
reason for using Wiechmann. However, the Examiner did not adequately
explain how Wiechmann's teaching in view of Muhlhoff would result in "at
least one path curve is fixed in that the intersection points are connected" as
recited in claim 12. Figure 11 of Wiechmann shows two curves intersecting
axis a and b, but it does not show a curve fixed from the connected
intersection points as required by all the claims.
The Examiner also states:
Note: the axes or semi-axes required to determine the distance
between incision paths at different sections of the incision path
of Muhlhoff would not be necessarily x and y axes since the
distance between incision path would need to be determined at
different sections that are not necessarily along x and y axes, for
instance a determination of path distance in shifting positions
that are not along either x or y axes).
Office Act. 15-16.
The Examiner appears to be explaining why "defining, for each
shifting position several axes or semi-axes," of the claim would be met.
However, the claim also requires "determining, for each shifting position of
the reference plane, intersection points of the axes or semi-axes with the
cutting surface" and fixing a path curve "in that the intersection points are
connected." The Examiner did not adequately explain or provide evidence
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Application 13/810, 169
of how the latter limitation is met by the combination of Muhlhoff and
Wiechmann. As discussed by Appellants:
[T]he claimed invention does not relate to measuring distance
between contour lines or spirals upon which a focus of laser
radiation to be applied travels [ as the Examiner found to be
described in Wiechmann] but instead relates to using a defined
reference plane to determine intersection points between the
axes or semi-axes and the cutting surface. The reference plane
is then shifted to another location and the determination of
intersection points between the axes or semi-axes and the
cutting surface is repeated. Then, "at least one path curve is
fixed in that the intersection points are connected" to define the
path to be followed by the focal point of the laser.
Appeal Br. 40.
In Wiechmann, the path curves shown in Figure 11 correspond to the
paths along which the laser follows to cut into the lens. Wiechmann ,r,r 35,
108, 178. In contrast, in claim 12, the path curve "along which a focus of
the laser radiation is to be shifted by controlling the laser device according to
the control data" is "fixed" by connecting the intersection points on the axes.
Figure 10 of the Specification shows a spiral path fixed by connecting
intersection points. Spec. 14: 14--15. The Examiner did not adequately
explain how the distances shown in Fig. 11 of Wiechmann meet this
limitation.
For the foregoing reasons, we conclude that the Examiner did not
meet the burden of establishing that the disputed limitation is described or
suggested by Muhlhoff and Wiechmann. Consequently, the rejection of
claim 12 is reversed. Claims 22 and 32 comprise the same limitation and the
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Application 13/810, 169
rejection of these claims are reversed for the same reasons, as are the
rejections of dependent claims 13-21, 23-31, and 33--47.
REVERSED
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