Ex Parte Moore

Patent Trial and Appeal Board

Dec 17, 2012

12341427 (P.T.A.B. Dec. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte THOMAS G. MOORE JR.
__________

Appeal 2012-002406
Application 12/341,427
Technology Center 3700
__________

Before LORA M. GREEN, STEPHEN WALSH, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to a phacoemulsion system for use in ophthalmic surgery.
The Patent Examiner rejected the claims for anticipation and obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.
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STATEMENT OF THE CASE
“Ophthalmic surgery often involves cutting away or emulsifying
tissues that need to be removed from the eye, such as in cataract surgery.”
(Spec. 1, [0003].) “Surgery is performed using a phacoemulsion
handpiece.” (Id.) According to the Specification, “[a]ll commercially
available phacoemulsification handpieces operate at a single fixed resonant
frequency or a single fixed resonant frequency for each direction of travel.”
(Id. at 9, [0020].) “For example a handpiece capable of both longitudinal
and torsional vibration may have one resonant frequency for longitudinal
vibration and a second resonant frequency for torsional vibration.” (Id.)
Claims 1-10 are on appeal. Claim 1 is representative and reads as
follows (emphasis added):
1. A phacoemulsification system for use in ophthalmic surgery, the
phacoemulsification system comprising:
a phacoemulsification handpiece having a horn coupled to a
transducer that is configured to convert alternating current into mechanical
oscillation of the horn, a phacoemulsification needle with an aspiration
passage that is attached to the horn, whereby the phacoemulsification needle
is made to vibrate by oscillation of the horn, to provide for mechanical
cutting of tissue and inducing cavitation proximate a tip of the
phacoemulsification needle, to thereby cause fragmentation of tissue at the
surgical site; and
a control system includes associated drive circuitry in connection with
the transducer of the phacoemulsification handpiece device, the control
system being configured to selectively adjust a non-resonant operating
frequency of the transducer and vary an operating frequency of the
phacoemulsification needle, to thereby increase or decrease a mechanical
cutting performance and a cavitational-induced performance of the
phacoemulsification needle.

The Examiner rejected the claims as follows:
I. claim 1 under 35 U.S.C. § 112, second paragraph, as indefinite;
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II. claims 1-4, 6, 7, 9, and 10 under 35 U.S.C. § 102(b) as anticipated by
Koch;1
III. claim 5 under 35 U.S.C. § 103(a) as unpatentable over Koch and
Alexander;2
IV. claim 8 under 35 U.S.C. § 102(b) as anticipated by or, in the
alternative under 35 U.S. C. § 103(a) as obvious over, Koch.

I
The Appeal Brief lists the indefiniteness rejection among the
rejections for review (App. Br. 3), but neither the Appeal Brief nor the Reply
Brief discusses the merits of the rejection. We therefore summarily affirm
it. See MANUAL OF PATENT EXAMINING PROCEDURE § 1205.02 (“If a ground
of rejection stated by the examiner is not addressed in the appellant’s brief,
that ground of rejection will be summarily sustained by the Board.”); see
also, Ex parte Frye, 2010 WL 889747 *4 (Bd. Pat. App. & Int. 2010)
(precedential) (“If an appellant fails to present arguments on a particular
issue—or, more broadly, on a particular rejection—the Board will not, as a
general matter, unilaterally review those uncontested aspects of the
rejection”).

II
The Issue
Claim 1’s phacoemulsification system comprises a handpiece and a
control system. It is undisputed that Koch described a phacoemulsion

1 Hans-Reinhard Koch, US 6,716,219 B1, issued April 6, 2004.
2 Aaron James Alexander, US 6,283,974 B1, issued Sept. 4, 2001.
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system comprising a handpiece and a control system. The issue is whether
Koch described a control system “configured to selectively adjust a non-
resonant operating frequency of the transducer and vary an operating
frequency of the phacoemulsification needle” and thereby increase or
decrease needle performance.

Findings of Fact
1. Koch disclosed:
In parallel to these procedures, the phaco-machine function
parameters are monitored continuously. These function parameters
can be optimized by the operator, which is known as “tuning.” A head
unit used to shatter the natural lens of the eye operates, for example, at
a nominal frequency of 40 kHz. In order to determine the optimum
frequency and amplitude, the phaco-head unit is first placed into a
testing vessel and optimized. This value is stored in the control unit.
During the operation, however, the optimum frequency changes when
the phaco-head unit comes into contact with the natural lens, so that a
certain improvement or re-tuning is required. This re-tuning is
performed either by the operator or automatically via a control unit
test program.

(Koch, col. 8, ll. 22-34.)

Principles of Law
To anticipate a claim, a prior art reference must disclose
every limitation of the claimed invention, either explicitly or
inherently. Anticipation is an issue of fact, and the question
whether a claim limitation is inherent in a prior art reference is
a factual issue.

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In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted).
To anticipate, “the reference need not satisfy an ipsissimis verbis test.” In re
Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).
If a claim is subject to two interpretations and one interpretation
would render the claim unpatentable over the prior art, the proper course of
action is for the Examiner to enter both a § 112, ¶2, rejection and a rejection
over prior art based on an interpretation of the claim which renders the prior
art applicable. Ex parte Ionescu, 222 USPQ 537, 540 (Bd. Pat. App. & Int.
1984).

Analysis
Claim 1
Appellant’s control system is
configured to selectively adjust a non-resonant operating frequency of
the transducer and vary an operating frequency of the
phacoemulsification needle, to thereby increase or decrease a
mechanical cutting performance and a cavitational-induced
performance of the phacoemulsification needle.

(App. Br. 9, claim 1, emphasis added.)
It is undisputed that Koch described a control system configured to
tune or adjust an operating frequency. (FF 1.) Koch explained that if the
nominal frequency were 40 kHz, for example, but re-tuning was required
during operation, a control system could perform the re-tuning
automatically. (FF 1.) That is, the control system could vary the operating
frequency automatically from an undesired to a desired frequency. Koch did
not distinguish between resonant and non-resonant frequencies. Koch did
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not specify that an undesired frequency was resonant or non-resonant, nor
did Koch specify that an operating frequency must be a resonant frequency.
Appellant contends that “Koch is simply an example of prior art
systems that tune a handpiece having a nominal resonant frequency to a
specific resonant frequency of the specific handpiece and to the load placed
on that handpiece during surgery, nothing more.” (App. Br. 4.) More
specifically, Appellant argues:
All the frequency change teachings of Koch are with respect to
obtaining an optimal (resonant) frequency; Koch is completely silent
regarding the claimed control system adjusting a non-resonant
transducer operating frequency to change the mechanical cutting and
cavitation of the phaco needle. Koch is intent on moving from a non-
resonant frequency to a resonant frequency, as opposed to the claimed
invention of adjusting a non-resonant operating frequency.

(Id.) Appellant also contends that “Koch does not have a control device that
adjusts a non-resonant frequency so that a desired level of mechanical and
cavitational performance is achieved.” (Id. at 5.)
Appellant does not offer evidence to support their argument that
Koch’s frequencies were only resonant frequencies. On this factual
question, evidence, not argument, is what is needed. See In re Pearson,
494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot
take the place of evidence”); In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir.
1997) (same). Because Koch did not limit its frequencies solely to resonant
frequencies, and Appellants provide no other reason to give Koch such a
narrow reading, we decline to do so.
The Examiner responds that “Koch is fully capable of adjusting to a
non-resonant frequency . . . . A user can also control the controller to adjust
non-resonant frequencies.” (Ans. 9.) We find the Examiner’s explanation
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reasonable. Thus, if even the example “nominal” 40 kHz operating
frequency in Koch was a resonant frequency for that device, Koch explains
that if the device were in fact operating at some other frequency, which
could be a non-resonant frequency, the controller could automatically adjust
the non-resonant frequency to the desired operating frequency. That
operation would meet the claim limitation “adjust a non-resonant operating
frequency of the transducer.” The other function, “vary an operating
frequency of the phacoemulsification needle,” is broader than the first
because it is not limited to varying a non-resonant frequency. Koch’s device
had that capability because, for example, if the undesired frequency were a
resonant frequency, Koch’s controller would automatically vary it to the
desired frequency, e.g., 40 kHz. That is, even if the operating frequency was
an undesired resonant frequency, Koch described retuning, or varying, an
operating frequency to the desired one. We therefore agree with the
Examiner that Koch described what is now claimed. The rejection of claim
1 is affirmed.
Claims 2, 6, 9, and 10 have not been argued separately and therefore
fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

Claims 3 and 4
Claim 3 further limits the system of claim 1 by reciting “wherein the
control system is configured to change the operating frequency of the
transducer after oscillation at the same operating frequency for more than a
maximum duration of time.”
The Examiner found Koch described this configuration because “the
surgeon may determine a maximum length of time and manually change the
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frequency after that time has passed.” (Ans. 6, citing Koch, col. 8, ll. 33-
34.)
Appellant contends that “[t]he cited Koch section simply teaches re-
tuning the device after contacting a load, such as a lens; there is nothing in
Koch that even hints at changing a nonresonant operating frequency of the
transducer after a maximum amount of time.” (App. Br. 5.)
We agree with Appellant. Koch’s control system may be configured
to allow a surgeon to change the frequency, but there is no evidence the
control system itself is configured to change the frequency after a maximum
duration of time. The rejection of claim 3 is reversed. As claim 4 is
dependent from claim 3, the rejection of claim 4 must also be reversed.

Claims 7 and 8
Claim 7 further limits the system of claim 1 by reciting “and the
control system is configured to selectively adjust the operating frequency of
the transducer to establish a desired ratio of the mechanical disruption level
relative to the cavitation-induced emulsification level.”
The Examiner found Koch’s system had this feature because it was
configured to allow the surgeon to adjust the frequency “as desired and
needed.” (Ans. 6, citing Koch, col. 8.)
Appellant disputes the Examiner’s finding “as the surgeon is only
able to adjust the frequency to tune the device[,] not as desired and needed.”
(App. Br. 6.) Further, Appellant contends that it does not matter if Koch’s
operator is capable of adjusting the frequency as desired, “because claim 7
claims adjusting the operating frequency to establish a desired ratio, not
simply adjusting the frequency.”
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Koch’s control system may be configured to allow a surgeon to
change the frequency, but the rejection does not explain how Koch’s control
system itself is configured to adjust the frequency to select a desired ratio of
mechanical disruption level relative to the cavitation-induced emulsification
level. The rejection of claim 7 is reversed. As claim 8 is dependent from
claim 7, the rejection of claim 8 must also be reversed.

III
Regarding the obviousness rejection of claim 5, Appellant relies only
on the argument that claim 1 is not anticipated by Koch. As the evidence
supports the anticipation rejection of claim 1, we affirm the rejection of
claim 5.

IV
Claim 8 is dependent from claim 7. The evidence is insufficient to
show that Koch described a controller “configured to selectively adjust the
operating frequency of the transducer to establish a desired ratio of the
mechanical disruption level relative to the cavitation-induced emulsification
level.” The obviousness rejection did not address that difference between
Koch and claim 8. The rejection is therefore reversed.

SUMMARY
We affirm the rejection of claim 1 under 35 U.S.C. § 112, second
paragraph, as indefinite.
We affirm the rejection of claims 1, 2, 6, 9, and 10 under 35 U.S.C.
§ 102(b) as anticipated by Koch.
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We reverse the rejection of claims 3, 4, and 7 under 35 U.S.C.
§ 102(b) as anticipated by Koch.
We affirm the rejection of claim 5 under 35 U.S.C. § 103(a) as
unpatentable over Koch and Alexander.
We reverse the rejection of claim 8 under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative under 35 U.S. C. § 103(a) as obvious
over, Koch.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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