Boris Malyugin

Patent Trials and Appeals Board

Aug 29, 2019

13661982 - (D) (P.T.A.B. Aug. 29, 2019)

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.”
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Application 13/661,982

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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
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Application 13/661,982

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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.
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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)).
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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
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. . . 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.
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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