Mark Bischoff et al.

Patent Trials and Appeals Board

Jul 2, 2020

13715670 - (D) (P.T.A.B. Jul. 2, 2020)

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.
13/715,670 12/14/2012 Mark Bischoff 3081.140US05 5135
24113 7590 07/02/2020
PATTERSON THUENTE PEDERSEN, P.A.
80 SOUTH 8TH STREET
4800 IDS CENTER
MINNEAPOLIS, MN 55402-2100
EXAMINER
KOHARSKI, CHRISTOPHER
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
07/02/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK BISCHOFF, DIRK MUEHLHOFF, and
GREGOR STOBRAWA
Appeal 2018-008234
Application 13/715,670
Technology Center 3700

Before EDWARD A. BROWN, ANNETTE R. REIMERS, and
SEAN P. O’HANLON, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–26. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Carl Zeiss Meditec
AG. Appeal Brief (“Appeal Br.”) 2, filed Feb. 22, 2018.
Appeal 2018-008234
Application 13/715,670
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CLAIMED SUBJECT MATTER
The claims are directed to a device and method for material
processing by means of laser radiation. Claims 1 and 8 are independent.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A device for material processing by laser radiation, said device
comprising:
a source of laser radiation emitting pulsed laser radiation
for interaction with the material;
optics focusing the pulsed laser radiation to a center of
interaction in the material;
a scanning unit shifting positions of the center of
interaction within the material, wherein each laser pulse interacts
with the material in a zone surrounding the center of interaction
assigned to said laser pulse so that material is separated in the
zones of interaction; and
a control unit which controls the scanning unit and the
source of laser radiation such that a cut surface is produced in the
material by sequential arrangement of zones of interaction,
wherein the spatial distance a of the centers of interaction of two
subsequent laser pulses is smaller than a size d of the focus so
that sequentially produced zones of interaction overlap in the
material and the fluence F of each laser pulse is below a threshold
value M, above which an optical breakthrough forms in the
material.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Bille US 4,988,348 Jan. 29, 1991
Lai US 5,984,916 Nov. 16, 1999
Hohla US 6,090,100 July 18, 2000

Appeal 2018-008234
Application 13/715,670
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REJECTIONS2,3
Claims 2–6, 9–13, and 16–184 are rejected under 35 U.S.C. § 112,
second paragraph, as indefinite.
Claims 1–26 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Lai, Bille, and Hohla.
Claims 1–26 are rejected on the ground of nonstatutory double
patenting as unpatentable over claims 1–15 of U.S. Patent No. 8,092,446.5
Claims 1–26 are rejected on the ground of nonstatutory double
patenting as unpatentable over claims 1–39 of U.S. Patent No. 8,553,735.6

2 The Examiner has withdrawn the rejection of claims 2 and 9 under 35
U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement. Examiner’s Answer (“Ans.”) 3, dated June 13, 2018; see also
Reply Brief (“Reply Br.”) 4 (“The Examiner is believed to have withdrawn
the earlier rejection[] on the basis of lack of enablement.”), filed Aug. 9,
2018.
3 In the Reply Brief, Appellant contends that the Examiner has not
considered the Information Disclosure Statement (“IDS”) filed October 19,
2017 and “requests that the Board reverse the Examiner and require that the
IDS be considered.” Reply Br. 4–5. However, the Examiner’s consideration
or lack of consideration of a filed IDS is not within the jurisdiction of the
Board. See 37 C.F.R. § 1.181.
4 Claims 2, 16, and 18 are missing from the heading of the rejection under
§ 112, second paragraph, but are rejected in the body of the Final Office
Action and the Examiner’s Answer. Final Office Action (“Final Act.”) 6–7,
dated Aug. 22, 2017; Ans. 4. We consider the Examiner’s omission of
claims 2, 16, and 18 in the heading of the rejection to be an inadvertent
typographical error. Additionally, the Examiner’s discussion of claims 2,
16, and 18 in the body of the rejection provides notice to Appellant as to the
rejection of claims 2, 16, and 18 under § 112, second paragraph. See Final
Act. 7; Ans. 4; Reply Br. 4, 7. We note that claim 6 depends from claim 5,
claim 13 depends from claim 11, and claim 17 depends from claim 16.
Appeal Br. 40–42 (Claims App.).
5 Bischoff (US 8,092,446 B2; issued Jan. 10, 2012).
6 Bischoff (US 8,553,735 B2; issued Oct. 8, 2013).
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Application 13/715,670
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ANALYSIS
Indefiniteness
The word “about,” as recited in the limitations at issue in claims 2–5,
9–12, 16, and 18 is a term of degree. See, e.g., Interval Licensing LLC v.
AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014) (identifying “unobtrusive
manner” as a term of degree); Star Scientific, Inc. v. R. J. Reynolds Tobacco
Co., 537 F.3d 1357, 1372 (Fed. Cir. 2008) (“Here, the term ‘anaerobic
condition’ is in effect a term of degree because its bounds depend on the
degree of oxygen deficiency.”). Our reviewing court has recently reaffirmed
that terms of degree are not “inherently indefinite.” Interval Licensing, 766
F.3d at 1370. “Claim language employing terms of degree has long been
found definite where it provided enough certainty to one of skill in the art
when read in the context of the invention.” Id. (citations omitted). To
satisfy the statute, however, “[t]he claims, when read in light of the
specification and the prosecution history, must provide objective boundaries
for those of skill in the art.” Id. at 1371 (citing Nautilus, Inc. v. Biosig
Instrs., Inc., 572 U.S. 898, 911 & n.8 (2014) (additional citation omitted)).
The Examiner determines that “about 10 µm” (claims 2 and 9), “about
5 [J]/cm2” (claims 3, 5, 10, 12), “about 3 [J]/cm2” (Claims 4 and 11), and
“about 5 seconds” (claims 16 and 18) are “relative term[s,] which render[]
the claim[s] indefinite,” and, which “[are] not defined by the claim[s].”
Final Act. 6–7; see also Ans. 4. The Examiner further determines that
Appellant’s Specification “does not provide a standard for ascertaining the
requisite degree, and one of ordinary skill in the art would not be reasonably
apprised of the scope of the invention.” Final Act. 6–7; see also Ans. 4.
Additionally, in the Answer, the Examiner provides analysis as to why the
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Application 13/715,670
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term “about” could be construed to include numerous interpretations of
different degrees based on Appellant’s Specification. Ans. 9–10.
Appellant contends that “the Examiner has not established a prima
facie case of indefiniteness,” because the Examiner’s determinations are
conclusory and that “[t]his conclusion is made without any presentation of
any analysis as to whether one of ordinary skill in the art, in view of the
prior art and the status of the art, would be nevertheless reasonably apprised
of the scope of the invention.” Appeal Br. 26–27; see also Reply Br. 5–7.
The Examiner has the better position here. In the Appeal Brief,
Appellant acknowledges the Examiner’s determination that Appellant’s
Specification “does not provide some standard for measuring the term of
degree ‘about.’” Appeal Br. 26. In addition, Appellant does not provide any
evidence that the meaning of the term “about” could be ascertained by one
of ordinary skill in the art when reading Appellant’s disclosure. See Appeal
Br. 26–27; see also Reply Br. 5–7; Ans. 11; Manual of Patent Examining
Procedure (“MPEP”) § 2173.05(b)(I) (9th Ed. Rev. 08.2017 (Jan. 2018)).
For these reasons, we sustain the Examiner’s rejection of claims 2–6,
9–13, and 16–18 as indefinite.

Obviousness over Lai, Bille, and Hohla
Claims 1 and 8 require, among other things, “wherein the spatial
distance a, of the centers of interaction of two subsequent laser pulses is
smaller than a size d of the focus so that sequentially produced zones of
interaction overlap in the material.” Appeal Br. 39, 40–41 (Claims App.).
The Examiner relies on Lai for this limitation. Final Act. 8; see also Ans.
11–13. In particular, the Examiner finds that Lai discloses that control unit
114 controls the source of laser radiation 100 and scanning unit 104, and that
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the interaction point diameter (focus of the laser beam) is in the range of 1
pm to about 30 pm and is produced from sequential laser pulses. Final Act.
8 (citing Lai 8:22–31, 44–45, 65–66). The Examiner reasons that since the
spatial distance of the centers of interaction is the distance between centers
of the diameters of the interaction point and laser unit 100 of Lai can output
a beam to any location in an area defined by orthogonal X and Y axes, “the
device of Lai is capable of having a spatial distance which is smaller than
the diameter of the interaction point, and therefore would inherently form
zones of interaction that overlap in the material.” Id. (citing Lai 8:56–59).7
Additionally, in reference to claim 24 of Lai, the Examiner states that
(1) as is well-known to one having ordinary skill in the art (who is at least an
ophthalmic surgeon, very familiar with laser surgery of the eye), “radial
keratotomy involves producing a cut in the form of continuous radial lines
that extend from near the center of the cornea to near the edge thereof,” and
(2) “as one having ordinary skill in the art would be well aware, the laser
pulses applied to produce this cut must touch, that is to say, overlap at least
slightly, in order to produce a continuous line.” Ans. 12; see also Lai 18:17–
51 (Claim 24).
Although we acknowledge that claim 24 of Lai recites performing an
ophthalmic surgical procedure using generated laser pulses, wherein the
ophthalmic surgical procedure includes “radial keratotomy” and “creating
straight line excisions in the cornea,” claim 24 also recites the ophthalmic
surgical procedure includes “creating curved-line excisions in the cornea.”
See Lai 18:17–23 (Claim 24). As claim 24 of Lai recites that the ophthalmic

7 The Examiner relies on the teachings of Bille and Hohla for limitations
other than those discussed above. See Final Act. 7–9.
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surgical procedure includes “creating curved-line excisions in the cornea,”
the Examiner’s findings are speculative. See Ans. 12; see also Lai 18:17–23
(Claim 24) (emphasis added). In particular, the Examiner does not provide
sufficient evidence or technical reasoning to support findings that “radial
keratotomy involves producing a cut in the form of continuous radial lines
that extend from near the center of the cornea to near the edge thereof” and
that “the laser pulses applied to produce this cut must touch, that is to say,
overlap at least slightly, in order to produce a continuous line.” Ans. 12
(emphases added); see also Lai 18:17–23 (Claim 24).
Further, even assuming for the sake of argument that the device of Lai
is capable of having a spatial distance that is smaller than the diameter of the
interaction point, as the Examiner suggests, the Examiner does not direct us
to any discussion in Lai of “overlap,” let alone, “sequentially produced
zones of interaction overlap in the material” as required by claim 1 of the
subject application. See Final Act. 8; see also Ans. 12. As pointed out by
Appellant, “the Examiner only argues that the device disclosed by Lai would
be capable of such a thing. At best, the device of Lai might or might not be
able to perform in such a fashion. Accordingly, the missing descriptive
matter is not necessarily present in . . . Lai.” Appeal Br. 29. “Inherency. . .
may not be established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not sufficient.”
Cont’l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir.
1991). Rejections based on 35 U.S.C. § 103 must rest on a factual basis. In
making such a rejection, the Examiner has the initial duty of supplying the
requisite factual basis and may not, because of doubts that the invention is
patentable, resort to speculation, unfounded assumptions, or hindsight
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Application 13/715,670
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reconstruction to supply deficiencies in the factual basis. In re Warner, 379
F.2d 1011, 1017 (CCPA 1967).
For these reasons, we do not sustain the Examiner’s rejection of
claims 1–26 as unpatentable over Lai, Bille, and Hohla.
Nonstatutory Double Patenting
Appellant contends that “[c]laims 1-15 of U. S. Patent 8,092,446 and
claims 1-39 of U.S. Patent 8,553,735 do not include any limitations
suggesting that sequentially produced zones of interaction overlap in the
treated material and that the zones of interaction are generated by the
application of laser pulses at a fluence that is below the threshold at which
optical breakthroughs occur.” Appeal Br. 36.
In this case, the Examiner does not apprise us how claim 1 of U.S.
Patent No. 8,553,735 teaches “the zones of interaction are generated by the
application of laser pulses at a fluence that is below the threshold at which
optical breakthroughs occur,” or how claim(s) 1 and/or 2 of U.S. Patent No.
8,092,446 teach(es) “sequentially produced zones of interaction overlap in
the treated material.” See Final Act. 10; see also Ans. 15–17; Appeal Br. 36.
For these reasons, we do not sustain (1) the Examiner’s nonstatutory
double patenting rejection of claims 1–26 over claims 1–15 of U.S. Patent
No. 8,092,446 or (2) the Examiner’s nonstatutory double patenting rejection
of claims 1–26 over claims 1–39 of U.S. Patent No. 8,553,735.8

8 Should there be further prosecution of the instant application, the Examiner
may want to evaluate other claims of US Patent No. 8,092,446 and US
Patent No. 8,553,735 as potentially reading on claim 1 of the instant
application.
Appeal 2018-008234
Application 13/715,670
9
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2–6, 9–13,
16–18
112, second
paragraph
Indefiniteness 2–6, 9–13,
16–18

1–26 103(a) Lai, Bille, Hohla 1–26
1–26 Nonstatutory
Double Patenting
1–26
1–26 Nonstatutory
Double Patenting
1–26
Overall
Outcome
2–6, 9–13,
16–18
1, 7, 8, 14,
15, 19–26

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)(1)(iv).
AFFIRMED IN PART