Ex Parte Donitzky et al

Patent Trial and Appeal Board

Aug 18, 2017

12972899 (P.T.A.B. Aug. 18, 2017)

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.
12/972,899 12/20/2010 Christof Donitzky PAT904071-US-PCT 1844
26356
ALCON
IP LEGAL
7590 08/22/2017 EXAMINER
PAHAKIS, MANOLIS Y
6201 SOUTH FREEWAY
FORT WORTH, TX 76134 ART UNIT PAPER NUMBER
3769
NOTIFICATION DATE DELIVERY MODE
08/22/2017 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 CHRISTOF DONITZKY and
CHRISTIAN WULLNER
Appeal 2016-000657
Application 12/972,899
Technology Center 3700
Before MICHAEL L. HOELTER, JILL D. HILL, and
PAUL J. KORNICZKY, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner’s final rejection of claims 1,3, and 4, which constitute all the
claims pending in this application. App. Br. 1. Claims 2 and 5 have been
canceled. App. Br. 17 (Claims Appendix). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2016-000657
Application 12/972,899
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to an apparatus for cutting a
tissue part out of a tissue with focused laser radiation. In particular, the
apparatus relates to the cutting of a so-called flap out of the cornea of an eye
in the course of refractive surgery, in particular LASIK.” Spec. 1:7—10.
Claim 1 is the sole independent claim, is illustrative of the claims on appeal,
and is reproduced below.
1. Apparatus for use with focused femtosecond laser
radiation, comprising:
a suction ring comprising a contact plate with a sealing
surface configured to be applied onto a surface of a tissue,
one or more devices configured to generate an
underpressure in a cavity that is delimited only by the surface of
the tissue, the sealing surface, and the suction ring,
an applanation plate coupled to the suction ring and
configured to be pressed against the surface of the tissue to
shape the tissue, and
a radiation-opaque body disposed between the contact
plate of the suction ring and the applanation plate, the radiation-
opaque body separated from the cavity, the radiation-opaque
body separated from the applanation plate, the radiation-opaque
body having an annular shape with an inner edge, the radiation-
opaque body being opaque to the femtosecond laser radiation,
the inner edge having a diameter to define an edge of a LASIK
flap in the tissue.
REFERENCES RELIED ON BY THE EXAMINER
Trokel US 5,711,762 Jan. 27, 1998
Webb US 7,018,376 B2 Mar. 28, 2006
Berry US 2006/0287662 A1 Dec. 21, 2006
Yahagi US 2007/0219542 A1 Sept. 20, 2007
Kanngiesser US 2008/0051771 A1 Feb. 28, 2008
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Application 12/972,899
THE REJECTIONS ON APPEAL
Claims 1,3, and 4 are rejected under 35U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.
Claims 1,3, and 4 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kanngiesser and Trokel.
Claims 1,3, and 4 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kanngiesser and Yahagi.
Claims 1,3, and 4 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kanngiesser, Trokel, and Yahagi.
Claims 1,3, and 4 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Berry, Kanngiesser, and Webb.
ANALYSIS
The rejection of claims 1, 3, and 4
as failing to comply with the written description requirement
The Examiner’s rejection is two-fold. First, the Examiner focuses on
the word “only” in sole independent claim 1 finding that Appellants’
Specification does not provide support for the limitation “a cavity that is
delimited only by the” three recited items (i.e., the tissue, the sealing surface,
and the suction ring). Final Act. 4. Second, the Examiner addresses the
limitation in claim 1 of the opaque body that is “separated from the cavity,”
finding that this recitation is broader than what was originally disclosed.
Final Act. 5. We address each matter separately below.
“only”
The Examiner states that Appellants’ Specification does not explicitly
disclose, “that specifically only these form the cavity, and the disclosure
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Application 12/972,899
does not preclude other elements.” Final Act. 4; Ans. 4. In making this
point, the Examiner provides an example of how another combination of
elements can form the recited cavity.1 Final Act. 4; Ans. 4. Appellants, on
the other hand, explain how the inventors “had possession of a cavity that is
delimited only by these three items” (i.e., the recited tissue, sealing surface,
and suction ring) and, thus, “the specification supports the claims.” App. Br.
13; Reply Br. 5.
It is not disputed that Appellants disclose the recited cavity as being
delimited by the three recited items. See, e.g., Spec. Figs. 2, 3 and
associated discussion. Appellants do not describe or illustrate the cavity as
being formed in another manner and Appellants contend that this limitation
“is not a negative limitation.” Spec. 5:11—14; Reply Br. 5. We understand
Appellants have elected to recite (as is their right), in this instance, what is
sometimes called a “picture claim” by seeking protection for the particular
embodiment of the cavity disclosed and no other.2 In other words, we
understand Appellants are not seeking to encompass other constructions for
1 The Examiner also states, “Fig. 2 of the disclosure appears to show
horizontal holes in the suction ring” and Appellants do not address the role
such holes have in forming the recited cavity. Final Act. 4. Nevertheless,
such “holes” are a part of the geometry of the suction ring and as such, they
comprise a part of one of the three items recited as delimiting the cavity.
2 “It is common, and often permissible, for particular claims to pick out a
subset of the full range of described features, omitting others.” Scriptpro,
LLC v Innovation Associates, 762 F.3d 1355, 1359 (Fed. Cir. 2014)
(referencing Crown Packaging Technology, Inc. v. Ball Metal Beverage
Container Corp., 635 F.3d 1373, 1380—81 (Fed. Cir. 2011); Revolution
Eyewear, Inc. v. Aspex Eyewear, Inc., 563 F.3d 1358, 1366—67 (Fed. Cir.
2009); Phillips v. AWHCorp., 415 F.3d 1303, 1326-27 (Fed. Cir. 2005)).
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Application 12/972,899
the cavity that may employ items in addition to the three recited items.3
With this understanding of the limited nature of Appellants’ claim limitation,
we agree with Appellants that there is sufficient support in the original
disclosure of a cavity formed by just these three recited items.
In view of the above, and based on the record presented, we reverse
the rejection based on usage of the term “only” of claim 1 by the Examiner,
and claims 3 and 4 that depend therefrom, as “failing to comply with the
written description requirement.” Final Act. 4.
“separated from”
The Examiner states that the recitation of the opaque body being
“‘separated from the cavity’ is broader than what has been originally
disclosed, which is that the body is separated from the cavity by the contact
plate on which it rests.” Final Act. 5. As understood, the Examiner is
requiring a recitation as to how the body is separated from the cavity (i.e.,
via the contact plate), and not just that the body is separated from the cavity
as recited.4 Appellants argue, “one skilled in the art is clearly able to
reasonably conclude that the inventor had possession of the radiation-opaque
body separated from the cavity, not necessarily by the contact plate.” App.
Br. 14; see also Reply Br. 6.
3 This would occur should the claim have instead recited that the cavity is
“delimited by the surface” of these three items because without the term
“only,” the limitation becomes open-ended and does not preclude the
addition of fourth and/or other structure as also delimiting the cavity.
4 The Examiner states, “to take the specific illustration of the body being
separated from the cavity by the contact plate on which it rests (which only
finds support in Fig. 2; body #40 on plate #44) and broaden it to a generic
separation of the body from the cavity,” “broadens the scope of the
disclosure.” Ans. 6.
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Application 12/972,899
It is not disputed that Appellants have disclosed the body being
separated from the cavity. Appellants, however, do not recite just how such
separation is accomplished. Perhaps in contrast to the above discussion
regarding “only,” the Examiner now seems to desire a “picture claim”
specific to the embodiment disclosed (i.e., specific to how the separation
occurs). We are instructed that where, as here, the level of unpredictability
is low, the written description requirement does not confine the scope of the
claims to specific embodiments disclosed. In re Smythe, 480 F.2d 1376,
1383—84 (CCPA 1973). This is true regardless of whether the claims are
broader or narrower than the embodiments described in the original
disclosure. See In re Smith, 458 F.2d 1389, 1395 (CCPA 1972); see also
Scriptpro, 762 F.3d at 1359 (“A specification can adequately communicate
to a skilled artisan that the patentee invented not just the combination of all
identified features but combinations of only some of those features
(subcombinations)—which may achieve stated purposes even without
omitted features.”).
In view of the above, and based on the record presented, we reverse
this rejection of claim 1 based on the phrase “separated from,” and
dependent claims 3 and 4 that depend therefrom, because it is “broader than
what has been originally disclosed.” Final Act. 5.
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The rejection of claims 1, 3, and 4
as unpatentable over Kanngiesser and Trokel
Appellants argue independent claim 1 and dependent claims 3 and 4
together. App. Br. 10—11. We select claim 1 for review with claims 3 and 4
standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
Appellants address the recitations, “the radiation-opaque body
having an annular shape with an inner edge” and “the inner edge having
a diameter to define an edge of a LASIK flap in the tissue.” App. Br. 10.
The Examiner relies on Kanngiesser for disclosing this “annular” limitation
and on Trokel for disclosing the use of “an annular laser radiation opaque
mask” “for protecting the eye from undesired laser incisions and for defining
the treatment area.” Final Act. 8—9. However, Appellants, in their Appeal
Brief, only address the teachings of Trokel, contending that such masks
“have extremely small openings” and further, “do not have ‘an annular
shape with an inner edge’” as recited.5 App. Br. 10; see also Reply Br. 3.
The Examiner, after asserting that Appellants are arguing “the
references individually,” states, “[Appellants’] arguments are based on the
false premise that the rejections rely solely on the secondary reference[ to
Trokel] to teach an annular shape for the body.” Ans. 7; see also id. at 10.
The Examiner reiterates, “Kanngiesser discloses a protective body 1 having
an annular shape with an inner edge.” Ans. 7 (referencing Kanngiesser Fig.
2a). “In summary . . . Kanngiesser lays the framework for using an
5 Appellants also contend that Trokel is “used” for a different purpose and
“not for flap cutting.” App. Br. 10. However, we are instructed that “[i]n
determining whether the subject matter of a patent claim is obvious, neither
the particular motivation nor the avowed purpose of the patentee controls.”
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007).
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Application 12/972,899
annularly shaped thermoplastic body . . . and Trokel. . . teach[es] that [it] is
well known in the art to use laser radiation opaque masks to protect the eye
from laser treatment and to shape the treatment area.” Ans. 8 (citations
omitted); see also id. at 12. The Examiner also states, “Trokel does indeed
teach an annular protective mask as he explicitly teaches that the masks have
a single circular opening.” Ans. 10 (referencing Trokel Abstract (“[t]he
masks are formed with a slit, circular, crescent or other opening”)).
Regarding Appellants’ contention that Trokel’s opening is small (App. Br.
10; Reply Br. 3), the Examiner replies, “the size (and shape) is taught by
Kanngiesser, but this does in no way disqualify Trokel for not teaching an
annular shaped mask” as this term “annular” is understood. Ans. 10
(referencing “[t]he American Heritage Dictionary, 2000”). The Examiner
has also indicated that a change in the shape, size, or proportion of a prior art
device is “a design consideration within the skill of the art.” Final Act. 9
(citations omitted).
Appellants address Kanngiesser (and not Trokel) in their Reply Brief
replicating Kanngiesser’s Figure 2a which was relied on by the Examiner
above. Appellants also replicate a passage from Kanngiesser describing
Figure 2a, which states that a protective film “has a treatment area (2) of a
first film thickness and a profile region (3) that is raised with reference to the
treatment area (2) and whose film thickness is configured to be greater than
the first film thickness.” Reply Br. 3. From a review of Figure 2a (and 2b)
of Kanngiesser, treatment area 2 is clearly circular (even depicted as having
a diameter D) with thicker region 3 surrounding this treatment area.
Appellants contend, however, “the Examiner mistakenly believes that
reference number 3 indicates an annular body, reference number 3 actually
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indicates an area of different thickness” and, hence, “the Examiner’s
primary reference fails to teach an annular body.” Reply Br. 3. Even should
Kanngiesser’s reference numeral 3 identify an area of different thickness,
such identification does not refute the fact that this thicker area 3 is depicted
in Kanngiesser as having an annular shape. See Kanngiesser Figs. 2a, 2b.
Accordingly, and based on the record presented, we sustain the
Examiner’s rejection of claims 1,3, and 4 as being unpatentable over
Kanngiesser and Trokel.
The rejection of claims 1, 3, and 4
as unpatentable over Kanngiesser and Yahagi
Appellants argue claims 1, 3, and 4 together. App. Br. 11. We select
claim 1 for review. Similar to their arguments above, Appellants attack the
references individually, arguing that the opaque mask taught by the
secondary reference to Yahagi “does not have ‘an annular shape with an
inner edge’” as recited. App. Br. 10. Appellants again only initially address
Yahagi, and specifically the shape of Yahagi’s mask. App. Br. 11. The
Examiner again reminds Appellants that Appellants’ argument is based on a
false premise of Yahagi disclosing the annular shape, and does not address
Kanngiesser’s disclosure of this shape. Ans. 7—8. Consequently,
Appellants’ argument that “Yahagi actually teaches away from modifying”
the mask to make it annular is moot. App. Br. 11; see also Ans. 12—13. In
reply, Appellants do not address the teachings of Kanngiesser as articulated
in the rejection, but instead reiterate that “[a]s shown previously, the
transparent portion of the Yahagi mask has a rectangular shape.” Reply Br.
4.
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Appellants’ contentions are not persuasive of Examiner error. We
sustain the Examiner’s rejection of claims 1,3, and 4 as being unpatentable
over Kanngiesser and Yahagi.
The rejection of claims 1, 3, and 4
as unpatentable over Kanngiesser, Trokel, and Yahagi
Appellants do not separately address this rejection involving both the
teachings of Trokel and Yahagi (in addition to Kanngiesser). Instead, it
appears Appellants are relying on their previous arguments where each of
Trokel and Yahagi were separately addressed. The Examiner seems to
understand that this is the case by responding once to the three groupings of
Trokel (alone), Yahagi (alone), and both together. See Ans. 6 (noting the
Examiner’s grouping of rejections “i-iii”). Thus, we sustain the Examiner’s
rejection of claims 1,3, and 4 as being unpatentable over Kanngiesser,
Trokel, and Yahagi for the reasons previously expressed.
The rejection of claims 1, 3, and 4
as unpatentable over Berry, Kanngiesser, and Webb
Here, the Examiner initially finds that Berry teaches an annular shape
for an opaque mask. Final Act. 22. Appellants dispute such teaching. App.
Br. 11—12. The Examiner provides reasons why Berry discloses the annular
shape, and further concludes, “Kanngiesser does teach an annular body.”
Ans. 14. In reply to this reliance on Kanngiesser, Appellants assert that they
“have respectfully shown that Kanngiesser, the Examiner’s primary
reference, fails to teach an annular body and have respectfully pointed out
flaws in the Examiner’s arguments regarding the secondary references” and
their teachings of such a body. Reply Br. 4. We disagree with Appellants
that they have successfully argued that Kanngiesser “fails to teach an
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annular body” as asserted in view of the Examiner’s discussion of
Kanngiesser above. Accordingly, we are not persuaded the Examiner erred
in relying on Kanngiesser for disclosing the recited annular body.
Consequently, and based on the record presented, we sustain the Examiner’s
rejection of claims 1,3, and 4 as being unpatentable over Berry,
Kanngiesser, and Webb.
DECISION
The Examiner’s written description rejection of claims 1,3, and 4 is
reversed.
The Examiner’s prior art rejections of claims 1,3, and 4 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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