Beaver-Visitec International (US), Inc.

Patent Trials and Appeals Board

Aug 31, 2020

15407673 - (R) (P.T.A.B. Aug. 31, 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.
15/407,673 01/17/2017 ROBERT H. OSHER 2070-132 9017
140503 7590 08/31/2020
Budzyn IP Law, LLC
120 Eagle Rock Avenue
Suite 328
East Hanover, NJ 07936
EXAMINER
CLARK, RYAN T
ART UNIT PAPER NUMBER
3794
MAIL DATE DELIVERY MODE
08/31/2020 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 ROBERT H. OSHER, BRIANA RAWSON, and
COLLIN ALEXANDER MURRAY
Appeal 2019-006062
Application 15/407,673
Technology Center 3700
Before JENNIFER D. BAHR, JOHN C. KERINS, and
MICHAEL L. WOODS, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
On August 4, 2020, Appellant1 filed a Request for Rehearing
(hereinafter “Request” or “Req. Reh’g) under 37 C.F.R. § 41.52 of the
Decision on Appeal (hereinafter “Decision” or “Dec.”) dated June 4, 2020.
In the Decision, the Board affirmed a rejection of claims 16–21 under

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as
Beaver-Visitec International (US), Inc. Appeal Br. 2.
Appeal 2019-006062
Application 15/407,673

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35 U.S.C. § 103 as unpatentable over Pao, Saliaris, and Fedorov.
Decision 7.
REQUIREMENTS FOR REQUEST FOR REHEARING
A Request for Rehearing must comply with the following
requirements:
The request for rehearing must state with particularity the
points believed to have been misapprehended or overlooked by
the Board. Arguments not raised, and Evidence not previously
relied upon, pursuant to §§ 41.37, 41.41, or 41.47 are not
permitted in the request for rehearing except as permitted by
paragraphs (a)(2) through (a)(4) of this section.
37 C.F.R. § 41.52(a)(1).
OPINION
Appellant first submits that the Board’s statement that “Pao does not
disparage or otherwise discourage the use of a resistive heating probe having
a tip comprising a resistance element heated by passing electrical current
from a direct-current voltage source, such as a battery” on page 6 of the
Decision “fails to provide a basis for modifying Pao to use resistive heating,
which operates completely different from use of passing alternating-current
through tissue.” Req. Reh’g. 2. This does not identify a point
misapprehended or overlooked by the Board. The Board made this
statement not to articulate a reason for modifying Pao to use resistive
heating, but, rather, to address Appellant’s argument that modifying Pao to
be battery powered would undermine Pao’s principle of operation and render
Pao unsuitable for its intended purpose. See Decision 4–5; id. at 6 (stating
that “Pao does not teach away from modifying Pao as the Examiner
proposes, in view of Saliaris, or otherwise indicate that such a modification
Appeal 2019-006062
Application 15/407,673

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would render Pao’s device unsuitable for its intended purpose or change
Pao's principle of operation”). As the Board pointed out in its Decision, the
Examiner’s articulated reason for modifying Pao in view of Saliaris is “in
order to make the device more compact, which is important when operating
in the region of the eye where there is limited space, and to make the device
more ‘simple and reliable for using disposable cauteries.’” Decision 4
(quoting Final Act. 4).
Appellant next submits that Pao’s objective is “to provide controlled
area cauterization for high frequency, alternating current applications.” Req.
Reh’g 3. Appellant also contends that “[t]he Decision hypothetically
modified Pao to be provided with a closed, resistive-heating element, rather
than two open, coaxial electrodes, configured for electrical flow
therebetween,” which, according to Appellant, “results in an impermissible
change in function in Pao, with no predictable results.” Id. at 4.
The Board addressed Pao’s principle of operation and objectives in
the paragraph bridging pages 6–7 of the Decision, which reads as follows:
As for the principle of operation and intended purpose of
Pao’s device, Pao seeks to provide an electrocautery device that
is visible through the sclera, capable of pinpoint accuracy to
produce cautery spots of predetermined areas for producing
repeatable marks for use in procedures such as scleral marking,
and capable of producing spot cauterization without passing
current through a patient’s body. See Pao 3:39–54. Pao teaches
that using electrical current to heat a resistance element, which
is then applied to the tissue to be cauterized, “precludes the
necessity of applying an electrical current through the tissue.”
Id. at 1:25–30. Further, Saliaris likewise seeks to provide a
cautery device that ensures “repeatable reliable operation.”
Saliaris 1:37–41. This suggests that providing a probe tip that
is resistively heated by application of current from a battery via
Appeal 2019-006062
Application 15/407,673

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first and second leads, as taught by Saliaris, would be consistent
with Pao’s objectives.
For the reasons set forth in this passage of the Decision, Appellant fails to
persuade us that the modification proposed by the Examiner would defeat
Pao’s objectives or impermissibly change Pao’s principle of operation or
function, and the record does not support Appellant’s contention that the
modification would yield “no predictable results.”
Appellant contends that the definition of “direct voltage” that the
Board entered into the record from McGraw-Hill Dictionary of Scientific &
Technical Terms “failed to take into account the context of the use of ‘direct
voltage.’” Req. Reh’g 4; see Decision 5–6. In particular, Appellant submits
that Pao discloses “‘bipolar electrode probe devices’ . . . as being used in
connection with alternating current.” Req. Reh’g 5 (citing Pao 1:34–36).
Appellant then points out that the first sentence of Pao’s Abstract opens by
“referring to ‘bipolar electrode probe devices’” and “also refers to ‘bipolar
electrode probe devices’ as including ‘a central electrode having an outer
electrode coaxially disposed therearound.’” Id. Appellant then submits that
“[t]he mention of ‘direct voltage’ [in the second sentence of Pao’s Abstract]
is in the context of the ‘central and outer electrodes [which] are electrically
insulated from each other.’” Id. Appellant thus asks us to conclude:
Based on Pao’s own disclosure of “bipolar electrode probe
devices,” “direct voltage,” which is in the context of “bipolar
electrode [probe] devices,” does not appear to refer to direct
current. Rather, as set forth at page 8 of the Appeal Brief, and
page 2 of the Reply Brief, the modifier “direct” may be taken as
indicating that voltage is applied directly to the “central and
outer electrodes,” not necessarily as yielding direct current.
Id.
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Application 15/407,673

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First, to the extent that Appellant may intend to represent that Pao has
defined “bipolar electrode probe devices” as requiring or being restricted to
use with alternating current, this is misleading. More accurately, Pao
discloses that, in the prior art, alternating current was typically applied
through tissue using a unipolar or bipolar technique. Pao 1:34–36. In other
words, Pao discloses that a unipolar or bipolar technique was a known way
to apply alternating current through tissue, not that a unipolar or bipolar
technique by definition means that alternating current must be applied.
Further, Appellant does not persuasively explain why the reference to
“central and outer electrodes [which] are electrically insulated from each
other” in the second sentence of Pao’s Abstract inherently points to the
application of alternating current, as opposed to direct current. Finally,
Appellant proffers no evidence to support Appellant’s asserted interpretation
of “the modifier ‘direct’” in the phrase “direct voltage” and rebut the
evidence relied on by the Board as to the well-established meaning of “direct
voltage” in the art.
For the above reasons, Appellant’s Request does not persuade us that
the Board misapprehended Pao’s teachings or erred in sustaining the
rejection of claims 16–21 as unpatentable over Pao, Saliaris, and Fedorov.
CONCLUSION
Appellant’s Request has been granted to the extent that we have
reconsidered our Decision in light of the arguments in Appellant’s Request,
but is denied with respect to our making any modification to the Decision.
Appeal 2019-006062
Application 15/407,673

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Outcome of Decision on Rehearing:
Claims 35 U.S.C. § Reference(s)/Basis  Denied Granted
16–21 103 Pao, Saliaris, Fedorov 16–21

Final Outcome of Appeal after Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
16–21 103 Pao, Saliaris, Fedorov 16–21

TIME PERIOD FOR RESPONSE
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).
DENIED