Ex Parte 6212006 et al

Patent Trial and Appeal Board

Jun 27, 2016

96000057 (P.T.A.B. Jun. 27, 2016)

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.
96/000,057 02/20/2014 6212006 129569.00161 8824
26710 7590 06/27/2016
QUARLES & BRADY LLP
Attn: IP Docket
411 E. WISCONSIN AVENUE
SUITE 2350
MILWAUKEE, WI 53202-4426
EXAMINER
CORSARO, NICK
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
06/27/2016 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 OCULUS OPTIKGERAETE, GmbH
Patent Owner and Appellant
Appeal 2015-008322
Reexamination Control 96/000,057
Patent 6,212,006 B1
Technology Center 3900
Before DENISE M. POTHIER, ANDREW J. DILLON, and JENNIFER L.
McKEOWN, Administrative Patent Judges.
DILLON, Administrative Patent Judge
DECISION ON APPEAL
STATEMENT OF THE CASE
This proceeding arose out of a request by Oculus Optikgeraete, GmbH
(“Patent Owner”) for supplemental examination of U.S. Patent No.
6,212,006 B1 (“the ’006 patent”) to Josef Reiner, entitled Stereoscopic
Microscope, issued April 3, 2001, and assigned to Oculus Optikgeraete,
GmbH.
Patent Owner appeals under 35 U.S.C. §§ 134 and 306 from the
Examiner’s rejection of claims 2 and 4—20. Claims 1 and 3 have been
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Patent 6,212,006 B1
cancelled; claims 2, 4, 5, 10, and 15 were amended; claims 16—20 were
added. App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b).
The disclosed invention relates generally to a stereoscopic microscope
which includes a binocular eyepiece arrangement, a binocular magnification
changer, and a monocular lens arrangement. A reversal lens system can be
inserted into beam paths in front of or behind the magnification changer,
whereby it exchanges the two beam paths against one another and at the
same time causes an image reversal. Spec 1:4—13.
Amended independent claim 2 reads as follows:
2. A stereoscopic microscope comprising: a binocular lens
arrangement, a binocular magnification changer, a monocular
lens arrangement, and a movable reversal lens system for
selective insertion into two beam paths in front of or behind the
magnification changer, the reversal lens system exchanging the
two beam paths against one another and causing at the same
time an image reversal, the improvement comprising a
supplementary lens for selective insertion or movement into an
input beam path on an input side of the lens arrangement, and
an optic system for selective insertion into the input beam path
between the supplementary lens and an eye being tested for
wide-angle viewing of a retina, the supplementary lens
comprising a convex lens having a focal length being chosen or
preselected so that the retina is viewable through the
supplementary lens and the optic system of the microscope,
while the lens arrangement of the microscope is focused on the
cornea, wherein the reversal lens system and the supplementary
lens are coupled with one another at least one of mechanically
or electromechanically so that the reversal lens system and the
supplementary lens are capable of simultaneous insertion into
the beam paths and the input beam path, respectively.
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Patent 6,212,006 B1
REJECTIONS
The following rejections are disputed by Patent Owner (App. Br. 6):
1. The Examiner rejects claims 4—9, 11—15, 18, and 20 under 35
U.S.C. § 112, second paragraph, as indefinite for failing to particularly point
out and distinctly claim the subject matter which the inventor regards as the
invention. Final Act. 7—10.
2. The Examiner rejects independent claims 2, 4, 8, 10, and 15 under
35 U.S.C. § 103(a), as obvious in view of various combinations of U.S.
Patent 3,799,645, Mar. 26, 1974 (“Stankewitz”) with one or more of Optical
Technology Sales Literature entitled “SDI and BIOM” (1985) (“OTS
Literature”); Admitted Prior Art (“APA”); M. Spitznas and J. Reiner, A
Stereoscopic Diagonal Inverter (SDI) For Wide-Angle Vitreous Surgery,
Graefe's Arch. Clin. Exp. Ophthalmology. (1987) 225:9-12 (“SDI
Paper”); Manfred Spitznas, A Binocular Indirect Ophthalmomicroscope
(BIOM) For Non-Contact Wide-Angle Vitreous Surgery, Graefe's Arch.
Clin. Exp. Ophthalmology (1987) 225:13-15 (“the BIOM Paper”)
(collectively, “The Stereoscopic Art.”) Final Act. 17—19, 21—35, 47—61.
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Patent 6,212,006 B1
ANALYSIS
We have reviewed the Examiner’s rejections in light of Patent
Owner’s contentions (App. Br. 6—14; Reply Br. 1—4) that the Examiner has
erred. We have also reviewed the findings and reasons set forth by the
Examiner in (1) the action from which this appeal is taken (Final Act. 2—
141), and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Patent Owner’s Appeal Brief (Ans. 2—27). We
highlight and amplify certain teachings and suggestions of the references as
follows.
§112 Second Paragraph Rejection
The Examiner rejects claims 4—9, 11—15, 18, and 20 under 35 U.S.C.
§112, second paragraph, as indefinite for failing to particularly point out
and distinctly claim the subject matter which the inventor regards as the
invention.
As a preliminary matter, the Examiner determines that Patent Owner
did not invoke 35 U.S.C. §112, sixth paragraph for claims 2 and 4—20, which
includes the claims rejected under 35 U.S.C. § 112. Specifically, the
Examiner found that Patent Owner failed to utilize the term “means” or
“step,” and further that the claims fail prong (A) as set forth in MPEP
§2181 (I), which discusses whether the claims recite sufficiently definite
structure for performing the claimed structure. See Final Act. 6.
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In particular, with respect to claim 4, the Examiner finds that the
phrase “wherein upon removal of the optic system from the beam path, the
reversal lens system is withdrawn from the beam path upon insertion of the
supplemental lens into the beam path” include indefinite functional
language. Final Act. 8.
Regarding claim 5, the Examiner finds the phrase “wherein, said
insertable optic system being disposed in the input beam path when said
movable supplementary lens moves out of said input beam path, and said
movable supplementary lens being movable into said input beam path when
said insertable optic system is out of said input beam path” include indefinite
functional language. Id.
Finally, with regard to claim 15, the Examiner also finds the phrase
“wherein upon removal of the optic system from the beam path, the reversal
lens system is withdrawn from the beam path upon insertion of the
supplemental lens into the beam path” include indefinite functional
language. Id.
Specifically, the Examiner notes that claims 4, 5, and 15 each recite a
“stereoscopic microscope” as well as various physical structures, e.g. “a
reversal lens system.” Final Act. 9. The Examiner finds that one of ordinary
skill in the art would conclude that these claims are product claims and
would not be able to reasonably determine what structures are being referred
to by the phrases rejected and set forth above (i.e., the discussed “Lens
Switching Functions”). Id.', January 9, 2015 Advisory Act. 8.
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Consequently, the Examiner finds that the aforementioned phrases render
those claims indefinite under 35 U.S.C. §112, second paragraph because the
boundaries of the claim scope are not clear. See Final Act. 9—10.
Patent Owner argues that claims 4, 5, and 15 each specifically recite a
coupling between the “supplementary lens” and the “lens reversal system”
and consequently, these claims are definite. Patent Owner further contends
that claims 4, 8, and 15 each functionally correlate the insertion of the optic
system with the reversal system and corresponding lens. Patent Owner
makes no separate arguments with regard to the claims which depend from
claims 4, 5, and 15. App. Br. 13—14; Reply Br. 3^4.
We find no error in the Examiner’s position. The mere coupling
between the “supplementary lens” and the “lens reversal system” does not,
in our opinion, address the Examiner’s concerns related to the scope of the
claims’ “Lens Switching” function or provide the requisite structure to insert
or withdraw one lens system into or out of the beam path, in relation to the
movement of the other lens system, as claimed. We find the coupling
between two lens systems, while an important element of the claimed
functions, fails to recite any mechanism or structure for inserting or
removing one lens system in relation to the movement of the other lens
system and thus the scope of structure covered by the recited claims is
unclear.
Moreover, if Patent Owner is attempting to recite method steps within
an apparatus claims of claims 4, 5, and 15, the claims are equally indefinite.
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SeelPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed.
Cir. 2005)
Consequently, we determine the Examiner did not err in rejecting
claims 4, 5, and 15, and dependent claims 6—9, 11—14, 18, and 20 under 35
U.S.C. § 112, second paragraph, as indefinite.
Rejections Under 35 U.S.C. § 103(a)
Patent Owner argues the Examiner erred in rejecting claims 2, 4, 8, 10,
and 15 as obvious in view of various combinations of Stankewitz and multiple
publications referred to collectively herein as “The Stereoscopic Art.”
The bases for Patent Owner’s assertions are: Stankewitz fails to
disclose coupling a reversal system with a supplementary lens; Stankewitz
does not teach or suggest alternate insertion of a dispersion lens and other
optical elements as recited in claim 4; there is no logical reason to combine
Stankewitz with the Stereoscopic Art; and, Stankewitz is not analogous art
to the Stereoscopic Art, rendering the proposed combination improper. We
note Patent Owner similarly argues these points for claims 7 and 9; however,
the Examiner did not reject claims 7 and 9 over this disputed combination of
references (e.g., Stankewitz). Consequently, we do not address these
arguments further for claims 7 and 9. Appeal Br. 8—13; Reply Br. 1—3.
In response the Examiner points out that in the original request for
Supplemental Examination, Patent Owner submitted a declaration by Rainer
Kirchhubel, Managing Director of Oculus Optikgeraete GmbH. Ans. 3;
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Final Act. 3. In that declaration Mr. Kirchhiibel stated that the distinction
between the claimed invention and the Stereoscopic Art was “the novel
feature of coupling the reversal lens system and supplementary lens together
. . . Kirchhiibel Decl. Under Rule 1.132, paragraph 11.
In light of the admission by Patent Owner’s Managing Director that
the novel distinction between the Stereoscopic Art and the claimed invention
was the coupling of lens systems, the Examiner merely cited Stankewitz to
demonstrate that the coupling of lens systems was obvious, given the
disclosure of a reversal lens, supplementary lens and removable insertable
optic system within the Stereoscopic Art. Ans. 5—7.
With respect to Patent Owner’s arguments above regarding
Stankewitz failure to disclose particular combinations of lens systems which
are coupled together (see App. Br. 8—10), we find that Patent Owner has
attacked the Stankewitz reference individually, rather than considering what
Stankewitz suggests when viewed in combination with the other cited
references.
“The test for obviousness is not whether . . . the claimed invention
must be expressly suggested in any one or all of the references. Rather, the
test is what the combined teachings of the references would have suggested
to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA
1981) (citations omitted). “Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references.” In re Merck & Co., 800 F.2d
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1091, 1097 (Fed. Cir. 1986) (citing Keller, 642 F.2d at 425). In determining
obviousness, furthermore, a reference “must be read, not in isolation, but for
what it fairly teaches in combination with the prior art as a whole.” Id.
In view of Patent Owner’s admissions regarding the elements
disclosed by the Stereoscopic Art, we find the teaching by Stankewitz that
various lens systems may be mechanically coupled together does indeed
render obvious the claimed invention, as set forth in independent claims 2, 4,
10, and 15, and dependent claim 8.
With regard to Patent Owner’s arguments regarding a logical reason
to combine Stankewitz with the Stereoscopic Art, and the alleged non-
analogous nature of Stankewitz (see App. Br. 10-13), the Examiner finds
that Stankewitz discloses an illumination system for use with microscopes,
and is thus, in the same field of endeavor as the Stereoscopic Art. See
Stankewitz, Title. Further, the Examiner finds that Stankewitz describes
“adapting to different objectives” (col. 1,11.11—19) which is described as
“exchanging condenser lenses.” Ans. 16—18.
The Examiner notes that Stankewitz discusses moving and positioning
lenses, and the Stereoscopic Art also discusses microscopes with moveable
lenses. The Examiner finds that a person of ordinary skill in the art has the
skill set to appreciate both Stankewitz and the Stereoscopic Art, and
Stankewitz is analogous art to the Stereoscopic Art, given the common
teaching of microscopes and interchangeable lenses. Ans. 19—22.
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We agree with the Examiner. We find that Stankewitz is analogous
art, given the common teaching of microscopes and moveable lenses.
Further, we determine that one of ordinary skill in the art, upon review of
Stankewitz and the Stereoscopic Art, would find the mechanical coupling of
various lenses to be an obvious modification of the Stereoscopic Art for the
reasons set forth by the Examiner. See Ans. 6 (citing Stankewitz 1:5—10,
2:62-3:18).
Accordingly, we determine the Examiner did not err in rejecting
claims 2, 4, 8, 10, and 15 under 35 U.S.C. § 103.
Reamining Rejections Under 35 U.S.C. §§ 102 and 103
As for the remaining pending rejections not disputed in the Final
Action, Patent Owner did not argue these rejections and we find no evidence
in the record that following the amendment to the claims the Examiner
withdrew these rejections. Accordingly we summarily sustain the remaining
rejections under 35 U.S.C. §§102 or 103.
The Examiner has rejected claim 5 under 35 U.S.C. § 102(b) as
anticipated by Optical Technology Sales Literature entitled "SDI and
BIOM" (1985) ("OTS Literature"). Final Act. 10. Patent Owner did not
argue this rejection ,and we find no evidence in the record that following the
amendment to claim 5 the Examiner withdrew the rejection or substituted a
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rejection under 35 U.S.C. § 103(a) in the manner applied to independent
claims 2, 4, 10, and 15.
Accordingly we summarily sustain the rejection of claim 5 under 35
U.S.C. § 102(b). In the alternative, if the Examiner intended to substitute a
rejection of claim 5 under 35 U.S.C. § 103(a), as applied above, we would
affirm that rejection for the reasons we set forth above.
CONCLUSION
We find no error in the Examiner’s rejection of claims 2 and 4—20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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