Ex Parte Freedman

Patent Trial and Appeal Board

Sep 24, 2012

11220301 (P.T.A.B. Sep. 24, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/220,301 09/07/2005 Philip D. Freedman pdfx0001C 4522
7590 09/25/2012
Philip D. Freedman PC
1449 Drake Lane
Lancaster, PA 17601
EXAMINER
SHAY, DAVID M
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 2010-008466
Application 11/220,301
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 11, 2011 (“Decision”), affirming the
rejections of appealed claims 1, 2, 5, 7, 9, 10, 19-21, 24 and 26-34 under 35
U.S.C. § 103(a); of claims 30 and 31 under 35 U.S.C. §§ 251 and 112, first
paragraph; and of claims 19-21, 24 and 30-34 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 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 26-29. 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 KSR1 ‘pertinent’ art would not
have been led to combine the ‘disparate’2 Nishizawa semiconductor
evaluation teaching with a corneal surgery reference teaching.” Request 27.
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 28. 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 22. 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.” Id. 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, 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 24. 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 25. 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 26. 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 (id.), 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 30. 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, 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 31. 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, 10.

Alleged Misapprehension of Legal Principles of Invention Categories--
Subpart (1) of Request
Most of Appellant’s arguments presented in this section of the
Request are directed not to whether independent claims 1 and 19 are directed
to different categories of invention, but rather whether Appellant has
apprised us of error in the Examiner’s conclusions as to obviousness of the
subject matter of the claims.
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Appellant’s initial argument appears to maintain that we considered
only an “improper combination of references” argument that was made with
respect to claim 1, in determining the propriety of the rejection of claim 19,
which Appellant maintains is directed to a different category of invention.
Request 6. Our Decision, however, as later acknowledged by Appellant,
mentions not only the arguments raised with respect to claim 1, but also that
Appellant’s remaining arguments were simply quotations of language
appearing in claim 19, together with statements that the combination of
references did not establish a prima facie case of obviousness. Request 7.
We noted there that such arguments were not persuasive of error in the
Examiner’s position. Decision 15. We are thus not persuaded that there was
any misapprehension as to the categories of invention involved in claims 1
and 19.
Appellant’s remaining arguments with respect to claim 19 are directed
to whether the Examiner met his burden of establishing a prima facie case of
obviousness. Request 7-9. The Examiner’s Answer and the Decision are
consistent with our reviewing Court’s recent reaffirmation that the
procedural burden of 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-
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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 further alleges that the Decision mischaracterizes
Appellant’s arguments directed to claims 20, 30 and 31. Request 9-10. The
Decision noted that Appellant’s Appeal Brief arguments consisted of
quotations of claim language, statements to the effect that the prior art does
not teach or suggest the quoted claim language, with further statements
using the expression “according to a custom cornea plan.” Decision 15.
Appellant’s arguments in the Request reflect that we accurately
characterized Appellant’s arguments. In addition, the Decision addressed
Appellant’s Reply Brief arguments. Decision 15-17.
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, 20, 30 and 31.
We are 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 Claims--Subpart (2) of Request
We have carefully reviewed Appellant’s contentions set forth at pages
10-17, and are not persuaded that we misapprehended or overlooked any of
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Appellant’s arguments set forth in the Appeal Brief and Reply Brief, from
which Appellant quotes extensively. Nor do we believe that the Decision
mischaracterizes any of Appellant’s arguments.
To the extent that the Decision failed to explicitly address Appellant’s
arguments that “examination has failed to address” the KSR reason to
combine requirements and the alluding to case law discussing consideration
of the invention as a whole (Request 13-14, citing to Reply Br. 13-14), it
should have been apparent that we found those arguments unpersuasive from
the discussion of the proper combinability of the references in addressing
Appellant’s non-analogous art arguments. Decision 9-11.
The Examiner presented reasons to combine the references, with those
reasons being supported by rational underpinnings, and Appellant, other than
making the general allegation that these requirements were not addressed,
has not pointed to any specific flaws in the reasons advanced. Appellant’s
argument directed to consideration of the invention as a whole involved a
quotation from Ruiz v. Chance Co., 234 F.3d 654 (Fed. Cir. 2000), which
focused on the use of hindsight analysis and the requirement for suggestion
or motivation to make a particular combination. Request 13-14, citing
Appeal Br. 12-13. As noted above, Appellant has not apprised us of error in
the Examiner’s reasons to combine the references.
Appellant criticizes several passages of the Decision as
mischaracterizing Appellant’s arguments. Request 15-16. We understand
Appellant’s argument to the effect that none of the references teaches or
suggests “controlling . . . laser treating of [a] cornea according to an ablating
plan constructed according to [a reflected collinearly] detected . . . cornea.”
Request 16. In our view, the argument fails to take into account the
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combined teaching of the references as applied by the Examiner. We also
understand Appellant’s argument directed to the Sklar reference, id., and
believe that the Decision adequately addresses that argument. Decision, 13-
14.

Alleged Misapprehension and Overlooking of Arguments Directed to Claims
26, 27 and 29; In re Lovin and 37 C.F.R. § 41.37(c)(1)(vii)--Subpart (3) of
Request
We have carefully reviewed Appellant’s contentions set forth at pages
17-19, and are not persuaded that we misapprehended or overlooked any of
Appellant’s arguments. Appellant, in the Request, again simply quotes
language from claim 26, and states that the references relied on do not make
out a prima facie case of obviousness of those claim limitations. Request 18.
Appellant further states that, “[n]owhere during prosecution of this
application has the Patent Office pointed to teachings in the references that
would establish prima facie obviousness” of the further limitations in claims
26, 27 and 29. Request 18-19. The Examiner’s Answer, in each of the
grounds for rejection of those claims, points out with sufficient specificity
which portions of the references, particularly which portions of the
L’Esperance and Sklar references, in combination with the teachings of
Nishizawa, are relied on in disclosing these limitations.

Alleged Misapprehension of Appellant’s Arguments Directed to Rejection of
Claims 30 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 “joins the
written description and enablement requirement,” and that Appellant’s
arguments to the effect that the claimed “computer resident instructions” is
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enabled by the Specification means also that the claim limitation has written
descriptive support in the Specification. We disagree. As noted in the
Decision, the written description requirement is not the same thing as the
enablement requirement. Decision 19. 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.

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
We disagree with Appellant that the Decision imposed a new ground
of rejection as to the rejection of claim 19 as being a broadened claim
presented more than two years after issuance of the Freedman patent.
Request 21. The Examiner, in the rejection, identified the absence in
appealed claim 19 of the limitation directed to “providing an electrical signal
according to said phase difference,” which appeared in patent claim 19.
Ans. 7. Appellant did not contest this. In our decision, we elaborated that
the omitted language, “phase difference” was replaced by “limit or location
of the cornea surface or mass”, and that the change rendered the claim
broader in scope, in that it appeared that an apparatus could be produced that
would infringe appealed claim 19, but would not have infringed patent claim
19.
Appellant’s new arguments presented in the Request do not persuade
us of error in the Decision affirming the rejection of claim 19 and its
dependent claims. Request 21. While Appellant maintains that “limit or
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location of the cornea surface or mass” further limits the previous term
“phase difference”, it instead appears to replace the use of an electrical
signal representative of a “phase difference” of the interference beam with
the use of an electrical signal representative of the reflected interference
beam that represents a limit or location of the cornea surface or mass. The
claim separately calls for detecting a phase difference of that interference
beam, and as originally claimed, providing an electrical signal representative
of that phase difference. We are not persuaded that the limitation appearing
in the appealed claim is further limiting of the limitation in the patent claim.

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) (2007).

REQUEST DENIED

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