Ex Parte Muehlhoff et al

Patent Trial and Appeal Board

Oct 26, 2017

11716994 (P.T.A.B. Oct. 26, 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.
11/716,994 03/12/2007 Dirk Muehlhoff 3795.16US01 7203
24113 7590 10/26/2017
PATTERSON THUENTE PEDERSEN, P.A.
80 SOUTH 8TH STREET
4800 IDS CENTER
MINNEAPOLIS, MN 55402-2100
EXAMINER
PAHAKIS, MANOLIS Y
ART UNIT PAPER NUMBER
3769
MAIL DATE DELIVERY MODE
10/26/2017 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 DIRK MUEHLHOFF, MARTIN WIECHMANN,
MARK BISCHOFF, and KARSTEN FESTAG
Appeal 2015-004358
Application 11/716,994
Technology Center 3700
Before PATRICK R. SCANLON, BEVERLY M. BUNTING, and
GORDON D. KINDER, Administrative Patent Judges.
SCANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Dirk Muehlhoff et al. (“Appellants”)1 seek our review under
35 U.S.C. § 134 of the Examiner’s decision, as set forth in the Final Office
Action, dated May 20, 2014 (“Final Act.”), rejecting claims 27—33, 35—42,
and 47—52, which are all of the pending claims. An oral hearing was
conducted on June 13, 2017. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Carl Zeiss Meditec AG as the real party in interest.
Appeal Br. 1.
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CLAIMED SUBJECT MATTER
Claim 27, reproduced below, is the sole independent claim and is
representative of the claimed subject matter.
27. A system for the treatment of a patient’s eye, comprising:
a plurality of clinical devices for the treatment of the eye
including a first clinical device that includes a femtosecond laser
device that is used to create a flap cut in the surface of the cornea
and a second clinical device that includes an excimer laser that is
used to ablate the cornea, the first clinical device being fixedly
located remotely from the second clinical device;
means for logistical linking of the clinical devices with
each other, including
a patient positioner that supports and movably positions
the patient and the eye to be treated relative to the clinical
devices, the patient positioner being shiftable by rotation about a
rotation axis between a first position wherein the patient’s eye is
located proximate the first clinical device positioned for the
treatment by application of the first clinical device and a second
position wherein the patient’s eye is located proximate the
second clinical device positioned for the treatment by application
of the second clinical device, the rotation axis being located in a
fixed location relative to the first clinical device and the second
clinical device and the rotation axis is situated between a middle
and a foot end of the patient positioner wherein a distance D1
between the rotation axis and a comer of the foot end of the
patient positioner is a safety distance smaller than a distance D2
of the rotating axis from a nearest housing contour of the
femtosecond laser device or the excimer laser;
control systems that control power and auxiliary energy
supply to the clinical devices; and/or
notification tools that transmit information or control
commands between the clinical devices, the patient positioner
and the control systems, and that output information.
Appeal Br. 28—29, Claims App.
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REFERENCES
The Examiner relies upon the following prior art references:
Kelman
Bachus
Payman US 2003/0208189 A1
US 6,651,279 B1
US 4,602,378
US 6,385,480 B1
July 22, 1986
May 7, 2002
Nov. 6, 2003
Nov. 25, 2003
Dec. 4, 2003
Apr. 13, 2006
Muthuvelan
Hohla
Wavelight2
US 2003/0225400 A1
DE 20 2005 018 911 U1
REJECTIONS
The following rejections3 are before us on appeal:
I. Claims 27—33, 35—42, and 47—52 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Wavelight, Bachus, Payman, Hohla,
Kelman, and Muthuvelan.
II. Claim 27 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Hohla, Bachus, Payman, Kelman, Muthuvelan, and
admitted prior art.
2 The record contains two different English-language translations of
Wavelight: a first machine translation entered June 14, 2011, and a second
machine translation entered October 1, 2013. The record further contains a
Derwent summary of Wavelight, also entered October 1, 2013. Unless
indicated otherwise, citations to Wavelight in this Decision refer to the
English-language translation entered October 1, 2013.
3 The Examiner sets forth two “interpretation approaches,” A and B, in
rejecting the claims on appeal. Final Act. 5—19; see also Ans. 3
(“Alternative interpretation approaches are often given as a constructive
means for the purpose of advancing prosecution, reducing arguments and
providing guidance at least by illustrating the dead ends on the path
forward.”). The Examiner, however, also refers to these “approaches” as the
“ground(s) of rejection [that] are applicable to the appealed claims” and “the
rejections.” Ans. 2. For the purposes of this Decision, we address
“interpretation approaches” A and B as two separate grounds of rejection.
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ANALYSIS
Rejection I
Appellants argue claims 27—33, 35—42, and 47—52 as a group. Appeal
Br. 9-19. We take independent claim 27 as representative pursuant to 37
C.F.R. § 41.37(c)(l)(iv) (2015), with claims 28—33, 35—42, and 47—52
standing or falling with claim 27.
With respect to claim 27, the Examiner finds that Wavelight discloses
a system for the treatment of a patient’s eye including a first clinical device
having a femtosecond laser and a second clinical device having an excimer
laser, with the first clinical device being fixedly located remotely from the
second clinical device. Final Act. 5. We agree with this finding, which
Appellants do not dispute. Namely, Wavelight discloses first treatment
station 14 having femtosecond laser 16 used to generate a LASIK flap and
second treatment station 24 having an excimer laser4 for performing cornea
ablation. Wavelight || 14, 15, Fig. Deck or patient support 12 translates
between the first and second treatment stations 14, 24 along rail 18. Id.
Thus, first treatment station 14 corresponds to the claimed first clinical
device, and second treatment station 24 corresponds to the claimed second
clinical device. Furthermore, the sole drawing figure of Wavelight shows
first treatment station 14 located remotely from second treatment station 24,
and first treatment station 14 is fixedly located with respect to second
treatment station 24 because Wavelight describes treatment stations 14, 24
and rail 18 as “a rigid mechanical system.” Wavelight 115.
4 Although not identified with a reference numeral in the Specification, the
excimer laser appears to be called out with reference numeral 22 in
Wavelight’s sole drawing figure.
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Next, we consider the “means for logistical linking of the clinical
devices with each other” limitation of claim 27. The Examiner interprets
this limitation as comprising the patient positioner and the control systems
recited in claim 27 and not under 35 U.S.C. § 112, sixth paragraph. Final
Act. 5. In other words, the Examiner determines that this claim language
does not invoke § 112 | 6. Ans. 8. Appellants do not contest this position.
When “a claim element contains the word ‘means’ and recites a
function,” as is the case here, the element is presumed to be a means-plus-
function element under § 112 | 6. Envirco Corp. v. Clestra Cleanroom,
Inc., 209 F.3d 1360, 1364 (Fed. Cir. 2000) (citing Al-Site Corp. v. VSIInti,
Inc., 174 F.3d 1308, 1318 (Fed. Cir. 1999)). That presumption, however, is
overcome if the claim recites sufficient structure for performing the claimed
function. TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir.
2008). “Sufficient structure exists when the claim language specifies the
exact structure that performs the functions in question without need to resort
to other portions of the specification or extrinsic evidence for an adequate
understanding of the structure.” Id. at 1259-60 (citing Altiris, Inc. v.
Symantec Corp., 318 F.3d 1363, 1376 (Fed.Cir.2003)).
Claim 27 recites that the “means for logistical linking of the clinical
devices with each other” includes a patient positioner, control systems,
and/or notification tools. Appeal Br. 28—29, Claims App. The patient
positioner is recited as movably positioning the patient (and the patient’s
eye) relative to the clinical devices; specifically, between a first position
proximate the first clinical device and a second position proximate the first
clinical device. Id. at 28. The control systems are recited as controlling
power and auxiliary energy to the clinical devices. Id. The notification tools
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are recited as transmitting information or control commands between the
clinical devices. Id. at 29. As such, the claim articulates structure—the
patient positioner, control systems, and/or notification tools—for performing
the function of logistically linking the clinical devices.
Accordingly, we agree with the Examiner that the “means for
logistical linking” language does not invoke § 112 | 6, and, thus, we do not
construe this language as limited to the structure described in the
Specification and equivalents thereof. Instead, we construe this claim
language as comprising the structural elements of the patient positioner, the
control systems, and/or the notification tools.
Turning now to the patient positioner limitation, the Examiner finds
that Wavelight’s patient support 12 is a patient positioner that is
shiftable by translation between a first position wherein the
patient’s eye is located proximate the first clinical device
positioned for the treatment by application of the first clinical
device and a second position wherein the patient’s eye is located
proximate the second clinical device positioned for the treatment
by application of the second clinical device.
Final Act. 6 (citing Wavelight || 8, 15). The Examiner, however,
acknowledges that Wavelight does not disclose a patient positioner that
rotates about a rotation axis. Id. The Examiner further concedes that
Wavelight does not disclose a fixed rotation axis situated between the
middle and the foot end of the patient positioner such that “a distance D1
between the rotation axis and a comer of the foot end of the patient
positioner is a safety distance smaller than a distance D2 of the rotating axis
from a nearest housing contour of the femtosecond laser device or the
excimer laser,” as required by claim 27. Id. at 6—7.
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The Examiner finds that Bachus discloses an “analogous patient
table” that is shiftable by rotation about a rotation axis (defined by column
11) that is fixedly located relative to the first and second clinical devices and
is situated between a middle and a foot end of the patient positioner. Id. at 7
(citing Bachus, 3:25—34, Figs. 1, 2). In addition, the Examiner finds that
Bachus discloses that this rotating arrangement “simplifies the system
change over appreciably and shortens the examination time.” Id. (citing
Bachus, 1:25—31, 3:25—34). Based on these findings, the Examiner
concludes that it would have been obvious to one of ordinary skill in the art
to modify Wavelight to use “a rotating mechanism for the movement of the
patient table” (i.e., patient support 12) as taught by Bachus. Id. The
rationale the Examiner gives for making this modification is the
modification
would amount to an equivalent mechanism yielding the
predictable result of effective transfer of a patient from one
system to another, while simplifying the system change over
appreciably and shortening the examination time, and
minimizing the surface swept by the table, thus reducing the
possibility for mechanical damage and minimizing the loads due
to friction.
Id.
Furthermore, the Examiner finds that Bachus discloses the claim
limitation of distance D1 being a safety distance smaller than distance D2
because Figures 1 and 2 of Bachus show “the foot end of [Bachus’] table is
clearly off reach from either instrument (1 or 3).”5 Id. at 7—8. The Examiner
thus concludes that it would have been obvious to adopt this arrangement
5 The Examiner presumably means that the foot end of Bachus’ table is out
of reach of either instrument.
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taught by Bachus when modifying Wavelight with the teachings of Bachus.
Id. at 8. We agree with this finding and conclusion, which Appellants do not
dispute. Specifically, Figures 1 and 2 of Bachus show that the distance from
the axis defined by rotating column 11 to a comer of the foot end of patient
support table 8 (i.e., distance Dl) is less than the distance from the axis
defined by rotating column 11 to the nearest point of either MR system 1 or
radiographic angio system 3 (i.e., distance D2).
The Examiner also cites Hohla as disclosing “a 90 degree
arrangement” that satisfies the distance limitation, Kelman as disclosing a
pivotable patient table having sufficient clearance at the foot end, and
Muthuvelan as disclosing a pivotable patient bed having sufficient clearance
to prevent collisions. Id. at 8—9. The Examiner apparently relies on these
references as alternatives to the determination that Bachus discloses the
distance limitation. Because we agree that the arrangement of Bachus
discloses the relative distance relationships recited in claim 27 as discussed
above, we do not address the Examiner’s alternative findings and
conclusions based on Hohla, Kelman, and Muthuvelan.
Appellants argue that the Examiner has not provided a “coherent
rationale” for why one of ordinary skill in the art would have combined the
references in the manner proposed. Appeal Br. 9. More specifically,
regarding the reasons for combining given by the Examiner, Appellants
argue that the Examiner has failed to establish “that any of these assertions
as to the benefits of such a modification are tme, or if they are, where they
are supported by evidence in the record.” Id. at 11.
We disagree with this argument. As noted above, one of the
Examiner’s reasons for concluding it would have been obvious to replace the
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translating patient support of Wavelight with a rotating patient support as
taught by Bachus is that this modification “would amount to an equivalent
mechanism yielding the predictable result of effective transfer of a patient
from one system to another.” Final Act. 7. The evidence of record shows
that both translating patient support tables and rotating support tables are
known in the art. Wavelight || 14, 15; Bachus, 3:25—34, Figs. 1, 2. Thus,
we agree that a person having ordinary skill in the art would have recognized
the proposed modification as the simple substitution of one known
mechanical element for another that produces predictable results. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“when a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result”).
We also are not persuaded by Appellants’ argument that the Examiner
has failed to point to any record evidence supporting the notion that the
proposed substitution would have achieved predictable results or that one of
ordinary skill in the art would have expected the results. See Reply Br. 3^4.
Although neither Wavelight nor Bachus explicitly discloses substituting a
rotating patient support for a translating patient support would yield
predictable results, such explicit disclosure is not required. “What a
reference teaches or suggests must be examined in the context of the
knowledge, skill, and reasoning ability of a skilled artisan,” and “is not
. . . limited to what a reference specifically ‘talks about’ or what is
specifically ‘mentioned’ or ‘written’ in the reference.” Syntex (U.S.A.) LLC
v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005). Here, in light of the
teachings of Wavelight and Bachus, one of ordinary skill using his or her
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“knowledge, skill, and reasoning ability” would have understood that
substituting one of the patient supports for the other would yield predictable
results.
Furthermore, another reason for combining Wavelight and Bachus
given by the Examiner—the proposed modification would simplify system
change over appreciably and shorten examination time—is supported by the
teachings of Bachus. See Final Act. 7 (citing Bachus, 1:25—31, 3:25—34).
Specifically, Bachus discloses patient support table 8 mounted on rotating
column 11, with column 11 situated in the intersection of the respective axes
of insertion of MR system 1 and radiographic angio system 3. Bachus,
3:25—28, Figs. 1, 2. With this arrangement, “a mere pivoting of the patient
support table around the axis of the column 11 is required in order to change
from one examination system to the other, without any additional transport
movement, which simplifies the system change over appreciably and
shortens the examination item6 accordingly.” Id. at 3:28—33. Thus, we
agree with the Examiner that Bachus discloses a benefit of rotating patient
support tables that would have led one of ordinary skill in the art to make the
proposed modification.
Appellants argue that, when read in context, the passages of Bachus
cited by the Examiner pertain to benefits relative to prior systems lacking
integration of multiple clinical systems and do not refer to any advantage of
a rotating patient support over a translating patient support. Appeal Br. 11.
Thus, according to Appellants, one of ordinary skill in the art would not
have discerned from Bachus any special benefit of a rotating patient support
6 It appears that “examination item” is a typographical error that should read
“examination time.”
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over a translating patient support. Id. at 12. This argument is not persuasive
because, even if Bachus does not state explicitly that a rotating patient
support is superior to a translating patient support, an ordinarily skilled
artisan considering Bachus in the context of his or her “knowledge, skill, and
reasoning ability” would have appreciated that a rotating patient support is a
viable—and even desirable—approach to the problem of transporting a
patient between clinical devices. See Syntex, 407 F.3d at 1380.
Furthermore, an obviousness analysis “need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see also id. at
421 (“A person of ordinary skill is also a person of ordinary creativity, not
an automaton.”). Accordingly, we agree with the Examiner that Bachus’
disclosure of a rotating patient support would have caused one of ordinary
skill in the art to consider replacing a translating patient support with a
rotating patient support.
Furthermore, Appellants argue that Wavelight indicates that
modifying its device with the substitution of a rotating table would not have
been beneficial. Reply Br. 4 (citing Wavelight || 6, 7). Appellants repeated
and elaborated on this argument at the oral hearing. Tr. 4:6—7:8. Paragraph
6 of Wavelight reads: “EP 0906073 817 describes a treatment station for the
refractive ophthalmic surgery, a patient bed, which is arranged rotatable.”
Paragraph 7 of Wavelight reads: “The present invention aims to remedy the
situation regarding this burden.” Appellants’ position is that the rotating
7 Appellants assert that this reference is the European counterpart patent to
Hohla. Reply Br. 4.
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patient bed described in paragraph 6 is the “burden” to be remedied in
paragraph 7. Tr. 5:8—16, 6:24—7:8.
We disagree with this position, however. Paragraph 5 of Wavelight
reads: “This reburial8 of patients is complex and represents a significant
burden on both the surgical staff as well as the patient dar.”9 In view of this
disclosure, we determine that the reburial or repositioning of a patient
relative to different clinical devices—not the use of a rotating patient
support—is the “burden” that Wavelight seeks to remedy. In any event,
Wavelight does not “criticize, discredit, or otherwise discourage” using
rotating patient supports and, as such, does not teach away from the
proposed combination. See DePuy Spine, Inc. v. Medtronic Sofamor Danek,
Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009).
In addition, Appellants argue that the Examiner has engaged in
hindsight reasoning. Appeal Br. 15. We do not agree that the Examiner’s
proposed combination involves impermissible hindsight. The Examiner’s
combination does not include knowledge gleaned only from the Appellants’
disclosure. Rather, for the reasons discussed above, the proposed
combination takes into account the teachings of Wavelight and Bachus, i.e.,
knowledge which was within the level of ordinary skill at the time the
8 We understand “reburial” in this context to refer to repositioning a patient.
For instance, paragraph 4 of Wavelight describes a patient being positioned
under a first device and then reburied on a bed positionable relative to
another device.
9 Although not identical to the text quoted above, Paragraphs 5, 6, and 7 are
substantially similar in the English-language translation of Wavelight
entered June 14, 2011.
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claimed invention was made. See In re McLaughlin, 443 F.2d 1392, 1395
(CCPA 1971).
Appellants also argue that the combination of references relied on by
the Examiner does not disclose the rotation axis being located in a fixed
position relative to the first and second clinical devices. Appeal Br. 16. In
particular, Appellants argue that because radiographic angio device 3 of
Bachus appears to be shiftable about at least two vertical axes of rotation,
Bachus fails to disclose that the rotation axis of column 11 is fixed relative
to radiographic angio device 3. Id. (citing Bachus, Fig. 1 (annotated)).
We are not persuaded by this argument for two reasons. First, Bachus
does not describe explicitly that radiographic angio device 3 is rotatable
about any vertical axis. Bachus does refer to “rotational motions” of
radiographic angio device 3 (Bachus, 3:16), but this reference appears to
relate to components 6 and 7. And even if portions of radiographic angio
device 3 rotate about one or more vertical axes, Bachus does not disclose
that radiographic angio device 3 as a whole moves relative to the rotation
axis of column 11. Indeed, Appellants concede that the base of radiographic
angio device 3 is fixed. Tr. 8:13—14. We thus determine that one of
ordinary skill in the art would consider the rotation axis of Bachus to be
located in a fixed location relative to radiographic angio device 3 because,
even if portions of radiographic angio device 3 are movable, the location of
the device does not change relative to the rotation axis of column 11.
Second, as noted by the Examiner, “the imaging device of Bachus was
never adapted into the combination of references.” Ans. 9. In other words,
the modification proposed by the Examiner is to replace the translating
patient support of Wavelight with Bachus’ rotating patient support, but does
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not contemplate replacing either of Wavelight’s clinical devices with
Bachus’ radiographic angio device 3. The clinical devices of Wavelight are
fixedly located via rail 18. Wavelight 115. Accordingly, the rotation axis
of the rotating patient support in the proposed combination of Wavelight and
Bachus would be fixed relative to both clinical devices. Appellants’
assertion that Bachus “was applied in the rejection as the reference that
allegedly teaches ‘the rotation axis being located in a fixed location relative
to the first clinical device and the second clinical device’” because the
Examiner states that Bachus discloses such an axis (Reply Br. 4—5 (citing
Final Act. 7)), is misplaced. The Examiner’s findings about the rotation axis
disclosed by Bachus do not in any way indicate that the proposed
modification included using Bachus’ radiographic angio device 3 in the
combination.
For the above reasons, we determine that the patient positioner
limitation of claim 27 would have been obvious over the combination of
Wavelight and Bachus. Accordingly, the Examiner’s alternative reliance on
Hohla, Kelman, or Muthuvelan as disclosing the safety distance recited in
claim 27 is not necessary, and Appellants’ arguments regarding the
teachings of Hohla, Kelman, or Muthuvelan (Appeal Br. 13—14, 17—18) are
rendered moot.
In response to the Examiner’s statement that “the combination of
Wavelight over Bachus or Hohla alone is sufficient in reading over the
claimed invention”10 (Ans. 7), Appellants argue that the inclusion of the
10 We understand this statement to mean that either the combination of
Wavelight and Bachus or the combination of Wavelight and Hohla (as
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other references cited by the Examiner obfuscates, rather than clarifies, the
obviousness analysis. Reply Br. 3. Without clarity, Appellants argue that
“it is difficult, if not impossible, to determine whether a rejection is
technically accurate and conforms to the legal requirements for prima-facie
obviousness.” Id. at 2. Although the several alternatives set forth by the
Examiner render the obviousness analysis somewhat convoluted, we
disagree that the analysis is so unclear that Appellants were not adequately
notified of the reasons for rejection, including that the Examiner relies on
Hohla, Kelman, and Muthuvelan as alternative teachings. For instance, the
Examiner describes adapting the arrangement taught by Bachus into the
device of Wavelight, “at the angles taught by Bachus or Hohla,” thereby
indicating Hohla is relied on in the alternative. Final Act. 8 (emphasis
added). The Final Office Action also states Kelman and Muthuvelan are
relied on in the alternative. Id. at 8—9; see also Ans. 7—8 (explaining that
Kelman and Muthuvelan were provided as two additional interpretation
approaches reading on safety clearances).
Next, regarding the control systems limitation of claim 27, the
Examiner finds “[i]t is considered inherent that the lasers taught by
Wavelight must have power control systems capable of controlling power, at
least at the level of on and off, or the treatments disclosed cannot take
place.” Final Act. 6. The Examiner’s reasoning, which Appellants do not
contest, is sound. We agree that the lasers in the clinical devices of
Wavelight necessarily must be controlled at least to the extent of being
turned on and off. One of ordinary skill in the art would not expect these
opposed to either the combination of Wavelight and Bachus or Hohla alone)
could read on the claimed invention.
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lasers to run continuously. We therefore find a preponderance of the
evidence shows that the control systems recited in claim 27 would be
inherent in the combination of Wavelight and Bachus.
As another alternative “in case it is determined that Wavelight does
not explicitly teach centralized control systems,” the Examiner finds that
Payman and Hohla both disclose centralized control of multiple ophthalmic
laser devices. Final Act. 9. The Examiner concludes that it would have
been obvious to centralize control of the devices of Wavelight as taught by
Payman and/or Hohla. Id. at 9—10. Because we find that the combination of
Wavelight and Bachus includes control systems as claimed, however, we do
not address the Examiner’s alternative findings and conclusions based on
Payman and/or Hohla, and Appellants’ arguments regarding the teachings of
Payman and/or Hohla (Appeal Br. 14—15) are rendered moot.
Last, regarding the notification tools limitation of claim 27, the
Examiner determines that this limitation is not required by the claim because
it is preceded by the conjunction “and/or.” Final Act. 5—6. We agree with
the Examiner. In reciting a patient positioner, control systems, and/or
notification tools, claim 27 covers all combinations of one or more of these
elements, including just the patient positioner and the control systems. See
Ex Parte Gross (Appeal No. 2011-004811, Decision mailed Jan. 3, 2014)
(finding that A and/or B includes A alone, B alone, or both A and B). In this
case, a preponderance of the evidence shows that the combination of
Wavelight and Bachus includes the claimed patient positioner and control
systems and, thus, the means for logistical linking.
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In view of the above, Appellants’ arguments do not apprise us of
error, and we sustain the rejection of claim 27 and of claims 28—33, 35—42,
and 47—52 grouped therewith.
Rejection II
In rejecting claim 27, the Examiner finds that Hohla discloses a first
clinical device including a microkeratome used to create a flap in the cornea
and a second clinical device including an excimer laser. Final Act. 15
(citing Hohla 17, 19). The Examiner also finds that Hohla discloses a
patient positioner (patient bed 102) “that supports and movably positions the
patient and the eye to be treated relative to the clinical devices” and is
rotated between two positions: one for laser treatment and one for non-laser
ophthalmic surgery. Id. (citing Hohla 24, 25).
The Examiner concedes that Hohla has the following deficiencies
with respect to claim 27: (1) Hohla does not disclose that the first clinical
device includes a femtosecond laser; (2) Hohla does not disclose that the
first clinical device is located remotely from the second clinical device;
(3) Hohla does not disclose that the rotation axis of the patient positioner is
situated between a middle and a foot end of the patient positioner; and
(4) Hohla is silent as to whether wherein a distance D1 between the rotation
axis and a comer of the foot end of the patient positioner is a safety distance
smaller than a distance D2 of the rotating axis from a nearest housing
contour of the femtosecond laser device or the excimer laser. Id.
To overcome the first two deficiencies, the Examiner finds that
Appellants admit that it is well known to create flaps using either a
microkeratome or a femtosecond laser, and Payman discloses using spaced
apart femtosecond and excimer lasers, and that using femtosecond lasers for
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creating flaps offers enhanced precision. Id. (citing Spec. 14; Payman
20, 56, Fig. 1). Based on these findings, the Examiner concludes that one
of ordinary skill in the art “would readily recognize and appreciate that the
device of Hohla would not be limited to a single laser and would benefit
from the addition of separate spaced apart laser systems, as taught by
Payman.” Id. at 17. The Examiner further concludes that
it would have been obvious to a person having ordinary skill in
the art at the time of the invention to adapt the teachings of
Payman by replacing the microkeratome or adding a
femtosecond laser in a second position, as this would amount to
an equivalent mechanism yielding the predictable result of
creating a flap, and it would further improve the device by
enhancing precision, enabling remote control, and enabling the
coordination of treatments which otherwise requires multiple
systems and larger spaces.
Id. (emphasis added).
The Examiner, however, fails to explain adequately why one of
ordinary skill would modify Hohla by adding a femtosecond laser in a
second position. Hohla discloses a surgical system including a laser system,
wherein a beam from an excimer laser is directed via optical extension 114
to the eye of a patient lying on patient bed 102. Hohla 117, Fig. 1. Hohla
also discloses a microkeratome that is operated by foot switches 119, 121.
Id. 119, Fig. 1. The microkeratome is part of an automated lamellar
keratoplasty system that is integrated into the laser system. Id. 19, 34,
Fig. 5. Patient bed 102 rotates on bearing 126, which allows head portion
124 of the bed to be rotated out from under optical extension 114 so that the
patient can sit up. Id. 125, Fig. 3A. This arrangement also allows a
physician to perform non-laser ophthalmic surgery on a patient’s head
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Application 11/716,994
rotated away from workstation platform 104 (i.e., at a second position from
the microkeratome and excimer laser). Id.
Thus, the Examiner’s finding that Hohla discloses “a non-laser
surgical device at a second position” (Final Act. 16) is not correct. Hohla
discloses that non-laser ophthalmic surgery can be performed at the second
position but does not disclose any specific structure for performing this
surgery. Hohla 125. Hohla does not disclose a device at the second
position that is integrated in its surgery system in the sense that the
microkeratome and the excimer laser are elements of the surgery system.
Payman discloses a system for correcting refractive error of an eye
that includes three robotic arms, with each arm supporting a device such as
ultrashort pulse laser 18 and excimer laser 20. Payman | 50, Fig. 1. The
robotic arms are mounted to top portion 28 that can rotate relative to support
structure 30. Id. 1 51, Fig. 1. This arrangement allows the robotic arms to
be positioned “in any of a variety of ways.” Id. 1 51. As such, Payman does
not disclose moving the patient between ultrashort pulse laser 18 and
excimer laser 20, and appears to teach selectively moving ultrashort pulse
laser 18 and excimer laser 20 to a stationary patient by manipulating
rotatable top portion 28 and the robotic arms.
In view of these teachings, we disagree that one of ordinary skill in
the art would have considered modifying Hohla by providing a femtosecond
laser at the second position rotated away from workstation platform 104.
Both Hohla and Payman disclose using more than one device at a single
patient location. Although Hohla discloses performing surgery at the second
position, there is no suggestion of providing an integrated device at the
second position for performing this surgery. Furthermore, we agree with
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Application 11/716,994
Appellants that the proposed modification likely would defeat Hohla’s
purpose of providing a rotating patient bed so as to enable the patient to sit
up without striking his or her head. See Appeal Br. 22. Thus, even if a
person of ordinary skill in the art would have been motivated to modify
Hohla by adding a femtosecond laser, we do not agree that the skilled artisan
would have considered adding such a laser at the second location.
For the above reasons, we do not sustain the rejection of claim 27 as
unpatentable over Hohla, Bachus, Payman, Kelman, Muthuvelan, and
admitted prior art.
Objections
Appellants also ask us to review various objections made by the
Examiner. App. Br. 25—26. As correctly noted by the Examiner (Ans. 20),
however, such issues are reviewable by petition under 37 C.F.R. § 1.181,
and are not within the jurisdiction of the Board. In re Mindick, 371 F.2d
892, 894 (CCPA 1967); see Manual of Patent Examining Procedure
(MPEP) §§ 706.01, 1002 and 1201.
DECISION
We affirm the decision of the Examiner rejecting claims 27—33, 35—
42, and 47-52.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136 (a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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