Boris MalyuginDownload PDFPatent Trials and Appeals BoardAug 29, 201913661982 - (D) (P.T.A.B. Aug. 29, 2019) Copy Citation 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. 13/661,982 10/26/2012 Boris Malyugin 4837.1000-001 7585 21005 7590 08/29/2019 HAMILTON, BROOK, SMITH & REYNOLDS, P.C. 530 VIRGINIA ROAD P.O. BOX 9133 CONCORD, MA 01742-9133 EXAMINER PREBILIC, PAUL B ART UNIT PAPER NUMBER 3774 NOTIFICATION DATE DELIVERY MODE 08/29/2019 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docketing.department@hbsr.com helpdesk@hbsr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte BORIS MALYUGIN1 __________ Appeal 2019-001201 Application 13/661,982 Technology Center 3700 __________ Before JENNIFER D. BAHR, MICHAEL L. HOELTER, and BENJAMIN D. M. WOOD, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an Appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 11–20, 22, and 24–26. App. Br. 2. Claims 1–10, 21, 23, and 27 have been canceled. See App. Br. 16–18 (Claims Appendix). We have jurisdiction under 35 U.S.C. § 6(b). For the reasons explained below, we reverse the Examiner’s rejections of claims 11–20, 22, and 24–26 as 1 “The real parties in interest are inventor Dr. Boris Malyugin . . . and MicroSurgical Technology, Inc.” App. Br. 3. We refer to the appealing party as “Appellant.” Appeal 2019-001201 Application 13/661,982 2 being anticipated by Pavcnik under 35 U.S.C. § 102(b) and, in the alternative, as being obvious in view of Pavcnik under 35 U.S.C. § 103(a). CLAIMED SUBJECT MATTER The disclosed subject matter “relates to a ring used in a[n] ophthalmic surgical procedure.” Spec. 1:11. Claim 11 is the sole independent claim, is illustrative of the claims on appeal, and is reproduced below. 11. A ring for maintaining the pupil of a subject's eye in an extended position during an ophthalmic procedure, the ring comprising: a strand, the strand including: at least three side elements; and at least three loops, each loop further including a top portion and a bottom portion, wherein, in the extended ring position: each side element of the at least three side elements connects the top portion and the bottom portion of two adjacent loops of the at least three loops to form the ring, the ring circumscribing a central opening through which a posterior chamber of the subject's eye can be accessed during the ophthalmic procedure, the central opening being disposed in a plane between the at least three side elements and the at least three loops, and each loop of the at least three loops defines an iris- retaining gap between the top portion and the bottom portion of the loop, the iris-retaining gap of each loop facing away from the central opening of the ring and dimensioned to receive iris tissue of the subject's eye during the ophthalmic procedure. REFERENCE Pavcnik et al. US 6,200,336 B1 Mar. 13, 2001 Appeal 2019-001201 Application 13/661,982 3 THE REJECTIONS ON APPEAL Claims 11–20, 22, and 24–26 are rejected under pre-AIA 35 U.S.C. § 102(b) as anticipated by Pavcnik or, in the alternative, under pre-AIA 35 U.S.C. § 103(a) as obvious over Pavcnik. ANALYSIS The rejection of claims 11–20, 22, and 24–26 as anticipated by Pavcnik Sole independent claim 11 includes a limitation directed to a ring having multiple loops with “each loop further including a top portion and a bottom portion.” Further, claim 11 includes a limitation wherein each loop “defines an iris-retaining gap between the top portion and the bottom portion of the loop.” The Examiner relies on Pavcnik, and specifically Figure 1 thereof, as disclosing these limitations stating that Pavcnik’s device “is fully capable of being utilized in a subject’s eye.” Final Act. 2. The Examiner states, “the iris retaining gap between the top and bottom portion of each loop is inherently met because the bends are coils that are not so tightly wrapped so as to prevent even the thin tissue of the iris from going between those gaps.”2 Final Act. 3. Appellant disagrees stating “Pavcnik is not only ‘silent with regard to the gap between the windings of the coils’ as noted by the Examiner (see [Final Act. 3]), but Pavcnik does not teach or suggest any kind of gap at all - 2 The Examiner further states, as an alternative, that “even two round surfaces touching each other would form a groove between the highest points in the form of gull wings.” Final Act. 3. On this point, Appellant contends, “these ‘grooves’ are not gaps, and particularly not iris-retaining gaps as required by Claim 11.” App. Br. 7. Appeal 2019-001201 Application 13/661,982 4 there is no mention of a gap and none of the drawings of Pavcnik’s stent show a gap.” App. Br 5–6. The Examiner acknowledges this “no gap” argument presented by Appellant, but repeats that “the bends of the coils in Pavcnik are not so tightly wrapped so as prevent the very thin tissue of an iris from going between those gaps.” 3 Ans. 5. More importantly, however, when addressing the alternative rejection of obviousness, the Examiner clearly states, “it is noted that [Pavcnik] is silent with regard to the gap.” Final Act. 3. As is well known, “[a] claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.”4 Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Pavcnik is indeed silent as to any spacing or gap between the recited top and bottom coil portions. At best, Pavcnik teaches that the disclosed device “has a first configuration wherein the sides and bends generally lie within a single, flat plane” without mentioning whether a gap also exists between the top and bottom coils. Pavcnik 1:62–64. Further, Pavcnik’s drawings do not indicate the presence 3 Upon investigation of Pavcnik, we note a teaching therein that frame 11 is made “of resilient material, preferably metal wire made of stainless steel or a superelastic material (e.g., nitinol).” Pavcnik 3:18–19; see also id. at 3:51– 57 (“the size of the wire depends on the size of the device and the application” and “[w]ire that is too stiff can damage the vessel”). However, such disclosures of the resiliency and elasticity of the material employed, do not address the presence of a gap between adjoining coils. 4 Additionally, we are instructed that “[a]n examiner’s belief, however, must be tethered to or grounded in some rationale so as to establish a prima facie case of anticipation.” In re Chudik, 674 Fed. Appx. 1011, 1015 (Fed. Cir. 2017) (referencing In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997)). Appeal 2019-001201 Application 13/661,982 5 of a gap between the coils. See, e.g., Pavcnik Figs. 2, 4, 6, 8. Accordingly, Pavcnik is indeed silent as to whether or not there is “an iris-retaining gap between the top portion and the bottom portion of the loop” as recited. Further, the Examiner also failed to explain how the identified, open gull- wing “groove” (Final Act. 3; Ans. 6, 8) would be able to retain iris tissue therein without slipping or sliding out, or otherwise separating, under the least provocation, including gravity (due, in part, to the limited rigidity of both the iris tissue and the device itself). See supra; see also e.g., App. Br. 7–8. Thus, we do not sustain the Examiner’s rejection. In other words, the Examiner has not established by a preponderance of the evidence and/or rationales provided, that Pavcnik anticipates claims 11–20, 22, and 24–26. The rejection of claims 11–20, 22, and 24–26 as obvious in view of Pavcnik After acknowledging that Pavcnik is silent regarding any gap between the coils, the Examiner states, “it would be difficult to prevent a gap from forming between the coil windings that would prevent” thin tissue “from being able to slip between the windings.” Final Act. 3; see also Ans. 5. This unsupported statement is not persuasive because the question is not whether or not it would have been difficult to prevent a gap from forming (which depends, in part, on coil characteristics and the rigidity of the tissue being inserted), but instead, whether it would have been obvious, in view of Pavcnik, to form the recited device with a gap in the manner cited. Additional instructions from our reviewing court include guidance that The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not, because it may doubt that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis Appeal 2019-001201 Application 13/661,982 6 . . . Likewise, we may not resolve doubts in favor of the Patent Office determination when there are deficiencies in the record as to the necessary factual bases supporting its legal conclusion of obviousness. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). The Examiner also states, “if there is a structural differen[ce] between [Pavcnik] and the claimed ring it is only slight such that [the] claimed ring would have been considered at least clearly obvious over [Pavcnik] alone.” Final Act. 3 (emphasis added). The Examiner’s characterization of a missing element as being “only slight” if it is lacking runs counter to instructions from our reviewing court which, instead, inform us that claims are construed with an eye toward giving effect to all terms in the claim. See Bicon Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006). It is well settled that obviousness is not determined based on the gist of the invention. See W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1548 (Fed. Cir. 1983). All claim limitations must be considered. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). Appellant also states, “[t]he presence of iris-retaining gaps in the devices as claimed provides for utility and operability, and, thus, are not merely a ‘slight’ difference as asserted in the Office Action.” App. Br. 10. Appellant further asserts “that the Examiner failed to establish a prima facie case of obviousness with respect to these claims on the basis of Pavcnik.” Reply Br. 2. We agree with Appellant’s contentions. Relying on the lack of a missing element as being “only slight” is not a valid basis upon which to render a rejection. See supra. Accordingly, based on the Examiner’s stated reasons and rationales, we do not sustain the Examiner’s rejection of claims 11–20, 22, and 24–26 as being obvious in view of Pavcnik. Appeal 2019-001201 Application 13/661,982 7 DECISION The Examiner’s rejection of claims 11–20, 22, and 24–26 as being anticipated by Pavcnik is reversed. The Examiner’s rejection of claims 11–20, 22, and 24–26 as being obvious in view of Pavcnik is reversed. REVERSED Copy with citationCopy as parenthetical citation