Ex Parte Freedman

Patent Trial and Appeal Board

Sep 24, 2012

11220300 (P.T.A.B. Sep. 24, 2012)

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.
11/220,300 09/07/2005 Philip D. Freedman pdfx0001E 4525
7590 09/25/2012
Philip D. Freedman PC
1449 Drake Lane
Lancaster, PA 17601
EXAMINER
YAO, SAMCHUAN CUA
ART UNIT PAPER NUMBER
3769
MAIL DATE DELIVERY MODE
09/25/2012 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 PHILIP D. FREEDMAN
____________________

Appeal 2010-008456
Application 11/220,300
Technology Center 3700
____________________

Before JOHN C. KERINS, CHARLES N. GREENHUT and JAMES P.
CALVE, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
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Philip D. Freedman (Appellant) has filed a Request for Rehearing
(“Request”) under 37 C.F.R. § 41.52. The Request seeks reconsideration of
our Decision dated December 28, 2011 (“Decision”), affirming the
rejections of appealed claims 1, 2, 5-7, 12, 17-19, 21 and 24-31 under 35
U.S.C. § 103(a); of claims 29 and 31 under 35 U.S.C. §§ 251 and 112, first
paragraph; and of claims 5, 17, 19, 21, 24, 25 and 28-31 under 35 U.S.C.
§ 251 as being broadened claims presented more than two years after the
issuance of the original patent. We have jurisdiction over the Request under
35 U.S.C. § 6(b).
Requests for Rehearing are limited to points that Appellant believes
have been misapprehended or overlooked by the Board. 37 C.F.R.
§ 41.52(a)(1). Appellant’s Request identifies eight (8) matters which are
alleged to have been misapprehended and/or overlooked in the Decision.
We address these in a slightly different order, starting with issues related to
general legal principles and progressing to issues related to specific claims.

Request for Panel Recusal
Appellant, in an introductory section, requests that the present panel
recuse itself from this appeal. Request 1. Soon after the Request was filed,
Appellant also filed a Petition to Recuse the Board Panel, Withdraw the
Panel Decision and to Appoint an Expanded Panel, dated February 7, 2012,
requesting the same relief. That petition was denied in a Decision on
Petition dated May 21, 2012.
Prior Decision on Appeal as Controlling/Law of the Case--Subpart (7) of
Request
Appellant repeats contentions to the effect that the prior Board
decision in Ex parte Freedman (Appeal No. 1997-3942 (BPAI May 15,
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2001)) is controlling here. Request 23-25. More specifically, Appellant
contends that we are bound to adopt the finding that “there is nothing in [the
Nishizawa (US 5,227,861, issued July 13, 1993)] disclosure of the use of
interferometry to evaluate semiconductors which would have motivated one
of ordinary skill in the art to utilize same in the corneal surgery device and
method disclosed by L’Esperance [(US 4,669,466, issued June 2, 1987)].”
Id., Freedman, slip op. at 6. Appellant maintains that the prior decision “is
based on the premise that one skilled in the KSR[1] ‘pertinent’ art would not
have been led to combine the ‘disparate’[2] Nishizawa semiconductor
evaluation teaching with a corneal surgery reference teaching.” Request 23.
We decline to accept Appellant’s overly broad view of the “premise”
of the prior Board decision. That decision was reached having solely the
L’Esperance and Nishizawa references available as evidence. We are
presented with a different body of evidence, including evidence that
addresses Appellant’s arguments from the prior appeal, resurrected in the
Request, regarding the difference between biological tissue and
semiconductor crystal material, to the effect that imaging or measuring of
biological tissue such as a cornea, using principles of interferometry was
known in the art.
As explained in the Decision, the presence of new and different
material evidence plainly precludes Appellant’s attempt to invoke the “law

1 KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
2 Appellant finds it notable that, “[t]he ‘disparate’ wording is directly from
the Ex parte Freedman decision.” Request 27. In the full context of the
prior decision, it is clear that the Board was referring to Appellant’s own
characterization of Nishizawa, and was not itself making that
characterization. Freedman, slip op. at 6, “. . . the appellant’s position that
the disparate teachings of L’Esperance and Nishizawa . . . . ”
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of the case” doctrine. Most of the remaining arguments on this issue are
directed to explaining, based on the particular disclosures of the references
of record, why Nishizawa is still not properly combinable with L’Esperance
and the other references. These are addressed, infra. If anything, the
arguments highlight that the “law of the case” doctrine does not obtain here.
Appellant further asserts that we are bound, in view of the principle of
stare decisis, by the prior Board decision under our own procedures
involving Board-designated precedential decisions. Request 24. The prior
Board decision is, however, not one that is designated as “precedential”
under the Board’s Standard Operating Procedures. The argument is thus
unavailing. This is not to say that we simply ignored the prior Board
decision, nor do we believe that our Decision in this appeal is in conflict
with the prior decision, rather our Decision was based upon additional
evidence than was before that panel, and the assertions and arguments
presented by Appellant and the Examiner directed thereto.
We are not persuaded that we misapprehended or overlooked any
appellate review principles, as alleged by Appellant.

Alleged Misapprehension/Misapplication of KSR and Klein Principles-
Subparts (6) and (8) of Request
Appellant, in addition to urging that the prior Board decision, which
found Nishizawa to not be properly combinable with L’Esperance, be
followed, also maintains that the Decision misapprehends or misapplies
principles set forth in the KSR decision and overlooks the holding in In re
Klein, 647 F.3d 1343 (Fed. Cir. 2011). Request 22-26, 29-32.
In subpart (6) of the Request, Appellant now attempts to further argue
that Nishizawa is not properly combinable with the remaining references
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because all of the remaining references “relate to corneal surgery or corneal
evaluation.” Request 17. Appellant attempts to bootstrap that
characterization to a purported paraphrasing of language employed in the
prior Board decision that “the ‘disparate’ semiconductor teaching of
Nishizawa is not properly combinable with corneal surgery or evaluation
references.” Request 17-18. The actual language of the prior Board
decision is, “there is nothing in [the Nishizawa] disclosure of the use of
interferometry to evaluate semiconductors which would have motivated one
of ordinary skill in the art to utilize same in the corneal surgery device and
method” of L’Esperance. Freedman, slip op. at 6. Clearly, the prior panel
was relying solely on Nishizawa in reaching that conclusion. The additional
references before us (Wei, Hellmuth and Swanson) not only relate to corneal
surgery and evaluation, as acknowledged by Appellant, but also disclose
using interferometric techniques in those procedures.
Appellant further presents arguments to the effect that “slice by slice
OCT-based interferometry in corneal display teaches away from considering
the different Nishizawa interferometry on a cornea.” Request 19. This
argument fails to establish that we overlooked or misapprehended any points
that were argued on appeal. The argument simply was not made by
Appellant in the Appeal Brief or Reply Brief. “Arguments not raised in the
briefs before the Board . . . are not permitted in the request for rehearing
except as permitted by paragraphs (a)(2) and (a)(3) of this section.” 37
C.F.R. § 41.52(a)(1). Appellant has not shown good cause as to why this
new argument is entitled to consideration under 37 C.F.R. § 41.52(a)(2), and
37 C.F.R. § 41.52(a)(3), directed to new grounds of rejection, does not
apply.
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We are also not persuaded, even considering the new argument, that
the use of slice-by-slice OCT-based interferometry teaches away from use of
the technique disclosed in Nishizawa. Appellant has not shown where, in
the Wei, Hellmuth and Swanson references, there is any criticism,
discrediting or discouragement of using techniques of the type disclosed in
Nishizawa in a corneal surgery or evaluation context. See In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004); In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994).
Appellant further argues that the Decision misconstrues the problem
to be solved by Appellant’s invention, namely the devising of an ablating
plan based on a patient’s own cornea. Request 21. Appellant maintains that
the Nishizawa reference would not have been looked to by the person of
ordinary skill in the art to solve this problem, due to its disclosure of
evaluating layers of epitaxial crystal and not biological tissue, and that
Nishizawa is nonanalogous art. Request 21-22. The decision addressed the
“nonanalogous art” argument. Decision 9-10. That layers of biological
tissue may be very much different from layers of epitaxial crystal (Request
22), as Appellant argues, the disclosures in Wei, Hellmuth and Swanson
evidence the use of interferometric techniques on biological tissue, and as
such the interferometric techniques of Nishizawa would have logically
commended themselves to a person of ordinary skill in the art faced with
Appellant’s problem. We are not persuaded that we failed to consider or
misconstrued the problem to be solved by Appellant.
In subpart (8) of the Request, much of the argument with respect to
the alleged misapplication of the principles in KSR is directed to a discussion
that the prior Board decision would have been decided the same way even in
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view of the KSR decision, and that we must, for that reason, follow the prior
decision. Request 26-28. We never took the position that the earlier appeal
would have been decided differently--we did not and need not reach the
issue. Appellant makes too much of our observation, in discussing that
intervening precedent might be an additional reason why we would not be
bound to follow the prior Board decision, in that the decision employed the
term “motivation” in determining the combinability of references. We are
not persuaded that we misapplied any principles set forth in the KSR
decision.
Appellant again argues in subpart (8) that the decision in Klein is that,
in order to determine whether references are properly combinable, one must
consider the problem addressed by the inventor. Request 28. This is
followed by a statement that “one skilled in the pertinent art would not have
looked to the semiconductor crystalline evaluation art to address a problem
of devising a customized ablating plan for the unique cornea structure.” Id.
We are not persuaded that we failed to take into account the problem
addressed by Appellant, and thus are not persuaded that there was a
misapplication of any principle set forth in the Klein decision. See,
Decision, 6-7, 9-10.

Alleged Misapprehension of Legal Principles of Prima Facie Obviousness of
Device Claims--Subpart (1) of Request
Appellant’s arguments with respect to independent claim 19 and
dependent claims 21, 24, 25 and 28-31 are directed to whether the Examiner
met his burden of establishing a prima facie case of obviousness. Request 5-
10. The Examiner’s Answer and the Decision are consistent with our
reviewing Court’s recent reaffirmation that the procedural burden of
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establishing a prima facie case of obviousness is met, in accordance with 35
U.S.C. § 132, by stating reasons for a rejection together with information
and references as may be useful to applicant in judging the propriety of
continuing prosecution. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir.
2011). The Court in Jung also spoke approvingly of the Board's long-
standing practice of requiring an Appellant to identify the alleged error in an
examiner's rejection, with the panel then reviewing the rejection for error
based upon the issues identified by Appellant, and in light of the arguments
and evidence produced thereon. Jung, 637 F.3d at 1365-66 (citing to Ex
Parte Frye, 94 USPQ2d 1072 (BPAI 2010) (precedential); see also, In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)(accepting the Board’s
interpretation of 37 C.F.R. § 41.37(c)(1)(vii) as requiring more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art).
Appellant argues that none of the Decision, the Examiner’s Answer,
and the non-final Office Action dated June 29, 2007, addresses the claim
limitation calling for a “controller responsive to said electrical signal [from a
first detection of a cornea] that compares said electrical signal to a standard,
constructs an ablating plan according to the comparison and that controls an
output of applied laser ablating beam from said laser beam irradiator
according to the ablation plan.” Request 6, quoting claim 19. Appellant
maintains that pages 9-20 and 25-27 of the Examiner’s Answer cited in the
Decision “ha[ve] nothing to do with” this limitation and do not indicate
where such teachings appear in the references. Request 7. The Examiner’s
discussions of the L’Esperance and Sklar references identify the portions of
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those references relied on as disclosing that limitation. See Decision 14.
Appellant has not apprised us of Examiner error in this respect.
Appellant alleges that the Decision mischaracterizes Appellant’s
arguments. Request 8. The Decision noted that Appellant’s Appeal Brief
arguments merely consisted of quotations of claim language, and statements
to the effect that the prior art does not teach or suggest the quoted claim
language. Decision 14-15. Appellant’s arguments in the Request reflect that
we accurately characterized Appellant’s arguments. Appellant simply
appears to believe that a general statement to the effect that the prior art does
not disclose a particular limitation, without addressing why the Examiner’s
contrary position is in error, is sufficient to overcome the rejection. The
Jung, Lovin and Frye decisions discussed above indicate otherwise.
Appellant presents specific arguments directed to the alleged
shortcoming of the Sklar reference in teaching the claimed controller.
Request 10. We did not misapprehend Appellant’s previous arguments nor
the arguments presented in the Request, and believe that the analysis set
forth at page 18 of the Decision adequately addresses Appellant’s position.
We are not persuaded that we misapprehended Appellant’s arguments
directed to the Examiner’s establishment of a prima facie case of
obviousness as to claims 19, 21, 24, 25 and 28-31. We are further not
persuaded that we misapprehended or overlooked the requirement that the
USPTO carries a procedural burden of establishing the prima facie
unpatentability of claims.
Alleged Misapprehension and Overlooking of Arguments Directed to Prima
Facie Obviousness of Method Claims--Subpart (2) of Request
Appellant cites to the pages 13-14 of the Reply Brief, and a portion of
claim 1 quoted therein, and maintains that the Decision and the
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“examination” ignore the limitation in claim 1 calling for “‘controlling
ablating of [a patient’s] cornea according to an ablating plan constructed
according to [a] phase difference representing the [patient’s] cornea.’”
Request 10-11. Appellant’s Reply Brief argument was, however, directed to
the Nishizawa reference not containing “a teaching or suggestion of a split
beam interferometry-based cornea treating method.” Reply Br. 13. The
Decision responded to that argument (Decision 12), and Appellant does not
maintain that we misapprehended or overlooked anything with respect to the
argument actually presented. “Arguments not raised in the briefs before the
Board . . . are not permitted in the request for rehearing except as permitted
by paragraphs (a)(2) and (a)(3) of this section.” 37 C.F.R. § 41.52(a)(1).

Alleged Misapprehension and Overlooking of Arguments Directed to Prima
Facie Obviousness of Claims 29 and 31--Subpart (3) of Request
Appellant alleges that the Decision mischaracterizes Appellant’s
arguments. Request 11-12. The Decision noted that Appellant’s Appeal
Brief arguments merely consisted of quotations of claim language, and
statements to the effect that the prior art does not teach or suggest the quoted
claim language. Decision 14-15. Appellant’s arguments in the Request
reflect that we accurately characterized Appellant’s arguments. Appellant
simply appears to believe that a general statement to the effect that the prior
art does not disclose a particular limitation, without addressing why the
Examiner’s contrary position is in error, is sufficient to overcome the
rejection. The Jung, Lovin and Frye decisions discussed above indicate
otherwise. We have not misapprehended or overlooked Appellant’s
arguments in this respect.

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Alleged Misapprehension of Appellant’s Arguments Directed to Rejection of
Claims 29 and 31 Under 35 U.S.C. § 112, First Paragraph--Subpart (4) of
Request
Appellant argues that the first paragraph of 35 U.S.C. § 112 “requires
written description and enablement of the invention, not of precise wording
used in a claim.” Request 13. The written description requirement is not the
same thing as the enablement requirement. Decision 20. The term
“computer resident instructions” does not appear in the Specification, and
the portions of the Specification identified by Appellant as providing written
descriptive support for the term do not evidence that Appellant was in
possession of an invention having that claimed feature.
The Decision noted that Appellant did not challenge the second basis
for the rejection, i.e., that the Specification fails to provide written
descriptive support for the claim 31 limitation calling for “‘determining the
plan according to the comparison and by detecting ablating incision by the
detector.’” Decision 20-21. The Request maintains that this limitation is not
present in claim 31, thus explaining why there was no challenge. Request
14. Appellant presents what purports to be a reproduction of claim 31,
however that claim is at variance with claim 31 in the official record, as
evidenced at least by the version of claim 31 appearing in the Claims
Appendix to the Appeal Brief. Appeal Br. 22. Claim 31 there presents the
limitation at issue, and Appellant has not contested the finding that the
limitation does not have adequate written descriptive support in the
Specification.
We are not persuaded that we misapprehended or overlooked anything
in regard to the rejection of claims 29 and 31 under 35 U.S.C. § 112.

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Alleged Misapprehension of Arguments Directed to Rejection of Claims 19-
21, 24 and 30-34 Under 35 U.S.C. § 251--Broadened Claims--Subpart (5) of
Request
Appellant did not contest the Examiner’s rejection of claims 19-21, 24
and 30-34 on appeal, only the rejection of claims 5 and 17. Reply Br. 15.
Appellant’s new arguments are not responsive to the discussion as to the
broadening of claim 19 presented at pages 23-24 of the Decision. As such,
we are not persuaded of error in the Decision affirming the rejection of claim
19 and its dependent claims.

DECISION
We have carefully reviewed and considered Appellant’s Request for
Rehearing. We have granted the Request only to the extent that Appellant’s
arguments have been considered. The Request is denied with respect to
making any changes in the Decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).

REQUEST DENIED

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