Ex Parte Schachar

Patent Trial and Appeal BoardJan 30, 2013

11322728 (P.T.A.B. Jan. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RONALD A. SCHACHAR ____________ Appeal 2011-004824 Application 11/322,728 Technology Center 3700 ____________ Before JENNIFER D. BAHR, JOHN C. KERINS and WILLIAM V. SAINDON, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-004824 Application 11/322,728 2 STATEMENT OF THE CASE Ronald A. Schachar (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 31-50. Claims 1-30 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. THE INVENTION Appellant’s invention is directed to a method of operating a laser to treat presbyopia or other ocular conditions. Claims 31 and 38, reproduced below, are representative of the claimed subject matter: 31. A method, comprising: increasing a diameter of a sclera overlying a ciliary body of an eye as a function of irradiating at least a portion of the sclera; wherein increasing the diameter of the sclera comprises reducing a thickness of the sclera in a region of the ciliary body without forming an opening completely through the sclera. 38. The method of Claim 31, wherein increasing the diameter of the sclera increases a working distance of a ciliary muscle of the eye. THE REJECTION The Examiner has rejected claims 31-50 under 35 U.S.C. § 102(b) as being anticipated by Wayne F. March, et al., Safety of High- Energy Neodymium:YAG Laser Pulses in YAG Sclerostomy, 6 Lasers in Surgery and Medicine, 584-87 (1987) (hereafter, “March”). Appeal 2011-004824 Application 11/322,728 3 ISSUES Has the Examiner established that March discloses a method in which the diameter of an eye overlying the ciliary body is increased by reducing the thickness of the sclera in the region of the ciliary body without forming an opening completely through the sclera? Has the Examiner established that March discloses a method as summarized above, in which method the increasing of the diameter of the sclera increases a working distance of a ciliary muscle of the eye? ANALYSIS Claims 31-37, 39-46, 48 and 49 Appellant argues claims 31-37, 39-46, 48 and 49 as a group. We take claim 31 as representative, and claims 32-37, 39-46, 48 and 49 stand or fall with claim 31. The March publication discloses a sclerostomy process using a pulsed YAG laser for opening a channel completely through the sclera to form a permanent drainage fistula for drainage of aqueous humor from the interior of the eye. (March 584, Introduction). In addition, March discloses that “a number of previous laser treatments for glaucoma have been advocated and used clinically,” and that “none of these previous treatments created a complete scleral perforation or sclerostomy.” (March 586, Discussion). The Examiner maintains that, “. . . the claims at bar would be met by any intermediate state of the procedure of March et al[.], for example at the seventh pulse thereof.” (Ans. 5). Supporting this finding, the Examiner maintains that removing of material from the eye will, to some degree Appeal 2011-004824 Application 11/322,728 4 weaken the eye and will, as a result, produce some degree of expansion of the eye. Id. The Examiner additionally maintains, with respect to the previous laser treatments disclosed by March which did not achieve complete perforation of the sclera, that even though March “does not detail the location of the tissue removal,” persons of ordinary skill in the art1 would understand that those procedures would have been “performed on the sclera proximate to the trabecular meshwork.” Ans. 5-6. Appellant does not contest this position. The Examiner again notes that those previous treatments would weaken the eye and produce expansion of the eye, to some degree. Appellant counters these positions principally by maintaining that the Examiner has failed to produce evidence in support of the position that any removal of material from the sclera, whether at an intermediate state in the March procedure or in the previous laser treatments that March discloses, will necessarily result in an increasing of the diameter of the sclera, as claimed. See, e.g., Appeal Br. 16-19; Reply Br. 4-6. Appellant characterizes the Examiner’s position as improperly shifting the burden to Appellant to disprove anticipation. Appeal Br. 18-19. We are not persuaded that the Examiner’s position improperly shifts the burden to Appellant. As pointed out by the Examiner, “[n]o particulars of the degree or amount of tissue removal or amount of expansion of the eye is given in the originally filed disclosure . . .,” and that Appellant has 1 The Examiner notes, and Appellant does not contest, that the person of ordinary skill in the relevant art would be a fully qualified ophthalmologist having a familiarity with laser ophthalmological procedures. Ans. 6. Appeal 2011-004824 Application 11/322,728 5 “provide[d] no particulars as to the amount of tissue removed, the amount of laser energy to be applied, the pulse width, energy density, average power, peak power, wavelength exposure time, etc.[,] of the laser energy . . .” used in Appellant’s procedure. Given this absence of disclosure as to the details of how Appellant’s procedure achieves an increase in the diameter of the sclera, and given that it is reasonable to expect that a thinning of a material in general will weaken it, the Examiner’s position that any removal of scleral material will weaken the eye and cause expansion due to the intraocular pressure within the eye, is reasonable as well. The Examiner thus has a reasonable basis for maintaining that both an intermediate stage in the March procedure and the previous laser treatments described by March necessarily meet the limitation in claim 31 that the diameter of the sclera is increased as a result of the removal of scleral material. Where the Examiner has such a reasonable basis for believing that the prior art inherently discloses the claimed invention, the burden properly is shifted to Appellant to produce evidence that the prior art does not meet one or more claim limitations. In re Spada, 911 F.2d 705, 708 (Fed Cir. 1990) (“[W]hen the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.”). Appellant has provided no such evidence. Therefore, the rejection of claim 31, and of claims 32-37, 39-46, 48 and 49 which stand or fall with claim 31, is sustained. Claims 38, 47 and 50 Claims 38, 47 and 50 depend, respectively, from independent claims 31, 40 and 48, and include the limitation that the increasing of the diameter Appeal 2011-004824 Application 11/322,728 6 of the sclera also increases a working distance of a ciliary muscle of the eye. Appeal Br., Clms. App’x. Appellant maintains that March is completely silent with respect to the behavior of the ciliary muscle in the procedures disclosed therein, including any increasing of the working distance of that muscle. Appeal Br. 20. While we agree that the Examiner’s general finding that removal of material from a structure is logically expected to weaken the structure, the Examiner has not established that “removal of material from the eye, regardless of the precise location of the removal” (Ans. 5) will have the effect of increasing a working distance of a ciliary muscle of the eye, as claimed. The rejection of claims 38, 47 and 50 as being anticipated by March is not sustained. CONCLUSIONS The Examiner has established that March discloses a method in which the diameter of an eye overlying the ciliary body is increased by reducing the thickness of the sclera in the region of the ciliary body without forming an opening completely through the sclera. The Examiner has not adequately established that March discloses a method as summarized above, in which method the increasing of the diameter of the sclera increases a working distance of a ciliary muscle of the eye DECISION The decision of the Examiner to reject claims 31-37, 39-46, 48 and 49 is affirmed. The decision of the Examiner to reject claims 38, 47 and 50 is reversed. Appeal 2011-004824 Application 11/322,728 7 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). AFFIRMED-IN-PART hh