Eichler, Michael

Patent Trials and Appeals Board

Oct 16, 2019

14229743 - (D) (P.T.A.B. Oct. 16, 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.
14/229,743 03/28/2014 Michael Eichler P16807 7999
47988 7590 10/16/2019
Walter Ottesen, P.A.
PO BOX 4026
GAITHERSBURG, MD 20885-4026
EXAMINER
HERBERMANN, ERICH G.
ART UNIT PAPER NUMBER
3771
MAIL DATE DELIVERY MODE
10/16/2019 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 MICHAEL EICHLER
____________

Appeal 2018-003477
Application 14/229,743
Technology Center 3700
____________

Before STEFAN STAICOVICI, MICHELLE R. OSINSKI, and
LEE L. STEPINA, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated Mar. 20, 2017) rejecting claims 1
and 3–8.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We REVERSE.

1 Carl Zeiss Meditec AG is the Applicant as provided in 37 C.F.R. § 1.46
and is identified as the real party in interest in Appellant’s Appeal Brief
(filed Oct. 10, 2017). Appeal Br. 2.
2 Claim 2 is canceled. Appeal Br. 4.
Appeal 2018-003477
Application 14/229,743
2

INVENTION
Appellant’s invention relates to an “ophthalmic surgical system” that
“repeatedly provide[s] periods of time during phacoemulsification, during
which the eye can cool down.” Spec. 1, l. 12, Spec. 5, ll. 21–22.
Claims 1, 7, and 8 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. An ophthalmic surgical control apparatus configured to
be connectable to an ophthalmic surgical piezo handpiece for
emulsifying an eye lens, the piezo handpiece having a hollow
needle defining a longitudinal axis and having an ultrasonic
resonant frequency, the ophthalmic surgical control apparatus
comprising:
a frequency generator having a first and a second
frequency module;
said first frequency module being configured to generate
a first oscillation signal having a first frequency f1 and said first
oscillation signal being a sinusoidal vibration in accordance
with the equation y1 = sin(2πf1 · t);
said first frequency being lower than the ultrasonic
resonant frequency of the piezo handpiece;
said second frequency module being configured to
generate a second oscillation signal having a second frequency
f2 and said second oscillation signal being a sinusoidal vibration
in accordance with the equation y2 = sin(2πf2 · t);
said second frequency being greater than the ultrasonic
resonant frequency of the piezo handpiece;
a frequency generator control module configured to
control said first and said second frequency modules;
a superposition module configured to additively
superpose said first oscillation signal and said second
oscillation signal in accordance with the equation yu = y1 + y2
so as to generate a superposition oscillation signal having a
superposition oscillation frequency;
said superposition module being further configured to
provide said superposition oscillation signal for operation of the
piezo handpiece; and,
Appeal 2018-003477
Application 14/229,743
3

said piezo handpiece containing a plurality of piezo
stacks connected mechanically in series so as to permit an
oscillation of said hollow needle only along said longitudinal
axis.

REJECTIONS
I. The Examiner rejects claims 1 and 3–7 under 35 U.S.C.
§ 103(a) as being unpatentable over Salehi,3 Vaitekunas,4 and
Zhou.5
II. The Examiner rejects claim 8 under 35 U.S.C. § 103(a) as being
unpatentable over Salehi, Vaitekunas, Zhou, and Urich.6

ANALYSIS
Rejection I
Each of independent claims 1 and 7 requires, inter alia, “a hollow
needle defining a longitudinal axis and . . . an oscillation of said hollow
needle only along said longitudinal axis.” Appeal Br. 40, 42–43 (Claims
App.) (emphasis added).
The Examiner finds that the ophthalmic surgical control apparatus of
Salehi, as modified by Vaitekunas and Zhou, “will deliver an oscillation of
said hollow needle only along said longitudinal axis since both the torsional
and longitudinal oscillation generated from the two frequencies of Salehi are
along the longitudinal axis.” Final Act. 4.

3 Salehi et al., US 2007/0249942 A1, published Oct. 25, 2007.
4 Vaitekunas, US 5,630,420, issued May 20, 1997.
5 Zhou, US 2012/0065578 A1, published Mar. 15, 2012.
6 Urich et al., US 6,884,252 B1, issued Apr. 26, 2005.
Appeal 2018-003477
Application 14/229,743
4

Appellant argues that in contrast to each of independent claims 1 and
7, in which vibration is imparted to a “hollow needle that is only along the
longitudinal axis” of the needle, Salehi’s handpiece “execute[s] a
longitudinal movement and a torsional movement.” Appeal Br. 22–23.
In response, the Examiner contends that neither of independent claims
1 and 7 “require[s] the frequency to be in a specific plane.” Ans. 4.7 Thus,
according to the Examiner, because “the resulting frequency does have both
longitudinal and torsional motion, each motion can be seen to be ‘along the
longitudinal axis’ depending on the orientation of the device” of Salehi, as
modified by Vaitekunas and Zhou. Id. The Examiner explains that “the
torsional movement in Salehi” constitutes an “oscillation along the
longitudinal axis, since it is rotation about the longitudinal axis along the
length of the device.” Adv. Act. 2 (emphasis added).8
We do not agree with the Examiner that rotation “about” a
longitudinal axis constitutes oscillation “along” that same longitudinal axis. 9
Even though the torsional (rotational) movement of the needle in the
ophthalmic surgical control apparatus of Salehi, as modified by Vaitekunas
and Zhou occurs along the length of the needle, as the Examiner asserts, this
does not mean that the torsional (rotational) movement of the needle occurs
in a line in the direction of the longitudinal axis. Rather, the torsional

7 Examiner’s Answer, dated Dec. 12, 2017.
8 Advisory Action, dated Aug. 10, 2017.
9 Ordinary and customary meanings of the terms “about” and “along” are “in
a circle around : on every side of : AROUND” and “in a line matching the
length or direction of,” respectively.
See MERRIAM-WEBSTER, https://www.merriam-webster.com/dictionary
/about, https://www.merriam-webster.com/dictionary
/along (last visited October 4, 2019).
Appeal 2018-003477
Application 14/229,743
5

(rotational) movement of the needle occurs around the longitudinal axis.
We, thus, agree with Appellant that because the torsional movement of the
needle in the ophthalmic surgical control apparatus of Salehi, as modified by
Vaitekunas and Zhou, is “around the longitudinal axis,” such movement of
the needle is not “along the longitudinal axis.” Reply Br. 5.10 Appellant is
correct that movement “‘[a]long [a longitudinal axis] is not the same as
around the longitudinal axis.” Id.
As such, we agree with Appellant that the combined teachings of
Salehi, Vaitekunas, and Zhou disclose a “combined torsional movement
around the longitudinal axis and . . . along the longitudinal axis” of the
needle. Reply Br. 6 (emphasis added). Hence, the combined teachings of
Salehi, Vaitekunas, and Zhou do not disclose “oscillation of said hollow
needle only along said longitudinal axis,” as called for by each of
independent claims 1 and 7. See Appeal Br. 40, 43 (emphasis added).
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 103(a) of claims 1 and 3–7 as unpatentable over
Salehi, Vaitekunas, and Zhou.

Rejection II
Similar to independent claims 1 and 7, independent claim 8 recites a
“a hollow needle defining a longitudinal axis . . . to impart vibrations to said
hollow needle only along said longitudinal axis.” Appeal Br. 43–44 (Claims
App.) (emphasis added).

10 Appellant’s Reply Brief, filed Feb. 12, 2018.
Appeal 2018-003477
Application 14/229,743
6

The Examiner’s use of Urich does not remedy the deficiency of the
Examiner’s interpretation of the combined teachings of Salehi, Vaitekunas,
and Zhou discussed supra. See Final Act. 7–9.
Accordingly, for the same reasons discussed above, we also do not
sustain the rejection of claim 8 as unpatentable over the combined teachings
of Salehi, Vaitekunas, Zhou, and Urich.

CONCLUSION

Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1 and 3–7 103(a) Salehi, Vaitekunas,
and Zhou
1 and 3–7
8 103(a) Salehi, Vaitekunas,
Zhou, and Urich
8
Overall
outcome
1 and 3–8

REVERSED