Ex Parte 7,871,404 et al

Patent Trial and Appeal Board

Jun 10, 2013

95000644 (P.T.A.B. Jun. 10, 2013)

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.
95/000,644 09/15/2011 7,871,404 PRES06-00488 8295
7590 06/11/2013
ONE LLP
WEST TOWER, SUITE 1100
4000 MACARTHUR BLVD.
NEWPORT BEACH, CA 92660
EXAMINER
JASTRZAB, JEFFREY R
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
06/11/2013 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
________________

REFOCUS GROUP, INC.
Third Party Requester and Appellant

v.

ACE VISION EURO, LTD.
Patent Owner and Respondent
________________

Appeal 2013-006021
Inter partes Reexamination Control 95/000,644
United States Patent 7,871,404 B2
Technology Center 3900

________________

Before JEFFREY B. ROBERTSON, DANIEL S. SONG and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2013-006021
Inter partes Reexamination Control 95/000,644
United States Patent 7,871,404 B2

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STATEMENT OF THE CASE
Third Party Requester Refocus Group, Inc. (hereinafter “Appellant”),
appeals1,2 under 35 U.S.C. §§ 134 and 315 from the Examiner’s decision to
not adopt Appellant’s proposed rejection and confirm claim 15.3 Patent
Owner Ace Vision Euro, LTD. (hereinafter “Patent Owner Respondent”) is a
party to the appeal under 35 U.S.C. § 315(a)(2) and disputes the Appellant’s
contentions.4 Claims 1-14 and 16-17 have been rejected by the Examiner
but the Patent Owner Respondent does not appeal the rejections thereof.5
We have jurisdiction under 35 U.S.C. §§ 6, 134 and 315. We
AFFIRM.

STATEMENT OF THE CASE
This proceeding arose from a request for inter partes reexamination
filed by Appellant on Sep. 15, 2011, of United States Patent 7,871,404 B2
(the “'404 Patent”), issued to Annmarie Hipsley on Jan. 18, 2011.

1The America Invents Act states that the provisions of 35 U.S.C. §§ 134 and
315 as in effect on September 15, 2012 shall continue to apply to inter
partes reexaminations that are requested before September 16, 2012. See
Pub. L. No. 112-29, §§ 6(c)(3)(C) and 7(e).
2 See Third Party Requester’s Appeal Brief filed Oct. 15, 2012, hereinafter
“App. Br.,” at 1; see also Third Party Requester’s Rebuttal Brief filed Jan. 4,
2013, hereinafter “Rebut. Br.”
3 See Right of Appeal Notice mailed Jul. 12, 2012, hereinafter “RAN.”
4 See Patent Owner’s Respondent Brief filed Nov. 15, 2012, hereinafter “PO
Resp. Br.”
5 RAN 4-10, see also App. Br. 4.
Appeal 2013-006021
Inter partes Reexamination Control 95/000,644
United States Patent 7,871,404 B2

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THE CLAIMED SUBJECT MATTER
The '404 patent relates to “treating connective tissue to alter the
fundamental and biomechanical properties of the connective tissue.” '404
patent 1:13-16. Independent claim 15, the sole claim on appeal, is
reproduced below:
15. A method of using a laser system, having a laser, to treat
an eye having scleral tissue, having a thickness and a surface,
the method comprising:
using the laser to form a plurality of generally
quadrilateral shaped matrices of pores, each matrix having a
central hexagon, on the surface of the scleral tissue;
wherein the pores have inner walls that are spaced a
distance from each another; and
filling each pore with a collagen-based scaffold.

THE PRIOR ART
Schachar US 5,354,331 Oct. 11, 1994
Lin US 6,824,540 B1 Nov. 30, 2004

THE PROPOSED REJECTION
Appellant appeals the Examiner's refusal to reject claim 15 as being
unpatentable over the proposed combination of Lin and Schachar. App. Br.
7.

ANALYSIS
The Examiner’s Answer incorporates by reference “all grounds of
rejection, determinations of patentability, and explanations set forth in the
RAN” and “[t]he examiner’s answer does not contain any new ground of
rejection and any new determination not to make a proposed rejection.”
Appeal 2013-006021
Inter partes Reexamination Control 95/000,644
United States Patent 7,871,404 B2

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Ans. 1. We cite to the Right of Appeal Notice (RAN) with respect to the
Examiner’s findings and conclusions.
Sole claim 15 includes the limitation of using a laser “to form a
plurality of generally quadrilateral shaped matrices of pores, each matrix
having a central hexagon.” While no explicit definition of these claim terms
is provided in the '404 Patent, there is no dispute that a “quadrilateral”
means four sides, a “hexagon” means six sides and “central” means inner or
center (RAN 18 discussing these terms as used by Appellant and by Patent
Owner Respondent, see also App. Br. 10).
Regarding the claim term “matrix”, the '404 Patent uses this term to
refer to items 22, 32 and 42, and also in its discussion of the first, second,
third and fourth sets 52, 54, 56 and 58, respectively. For matrices 22, 32 and
42, the '404 Patent explains that they are populated based on the distance a
perforation is located from “the outer diameter of the posterior surgical
limbus 28 of the eye 20,” the distance for each matrix 22, 32 and 42 being
different. '404 Patent 4:59-63, 5:10-15 and 5:37-41.
Regarding sets 52, 54, 56 and 58, the '404 Patent discloses that they
are formed in a respective first, second, third or fourth quadrants of the eye.
'404 Patent 5:59-64; Figs. 2 and 3. The '404 Patent also states that these sets
“are arranged to have an overall diamond shape” but that they “may have a
different number of patterns, differently shaped patterns, or a different
number of perforations.” '404 Patent 5:65 to 6:3. Figures 2 and 3 of the '404
Patent illustrate the sets 52, 54, 56 and 58 of patterns as being diamond or
rectangular shaped depending on perspective, and characterizes the
illustrated sets as also being “matrices.” '404 Patent 5:59-64; Figs. 2 and 3.
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United States Patent 7,871,404 B2

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Turning to the arguments presented, Appellant and Patent Owner
Respondent do not address the teachings of Schachar in any meaningful way
(e.g. App. Br. 8-9; PO Resp. Br. 3) but instead focus on the teachings of Lin
(App. Br. 9-15, Rebut. Br. 2-9 and PO Resp. Br. 3-6). Appellant contends
that Lin discloses the above referenced limitation and provides numerous
illustrations of Lin’s annotated figure 3B in support thereof which Patent
Owner Respondent disputes. Id. After consideration, the Examiner finds
that “Requester's interpretation fails to acknowledge the claim requirement
that multiple matrices, are formed, i.e. ‘plurality of generally quadrilateral
shaped matrices of pores, each matrix having a central hexagon.’” RAN 18.
The Examiner reiterates that “[t]he claim []requires a plurality of matrices to
be formed” but “[i]f the outer and inner pores in [Appellant’s] interpretation
were a part of the same matrix, there would only be one matrix present in
Lin.” RAN 19, see also PO Resp. Br. 4-5. The Examiner also states that
“[a]ny additional matrices [identified by Appellant] would have to
incorporate those same inner pores to be considered as having a central
hexagon, which would amount to applying the same sets of pores to two
different claim limitations, which is improper.” RAN 19. We agree with the
Examiner.
While the Appellant agrees with the Examiner as to the impropriety of
using the same pores in two different matrices, the Appellant contends that
the fact that one of Appellant’s identified matrices falls within or resides
inside another “is irrelevant.” App. Br. 13, Rebut. Br. 3-4. However, we do
not agree that the ordinary and customary meaning of matrix, or as used in
the claim, can be reasonably interpreted to encompass selective connection
of pores within a larger matrix, or that such selectively connected pores can
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United States Patent 7,871,404 B2

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be considered to be a matrix within the larger matrix. Separate and distinct
matrices are disclosed in the '404 Patent. Appellant does not direct our
attention to persuasive evidence that the matrices of the '404 Patent include
or would be understood in the art to include the connecting of pores or
overlapping arrangement employed by Appellant.
Appellant addresses the Examiner’s reasoning as to the plurality of
matrices by illustrating two additional annotations of Lin’s figure 3B where
no pores overlap. Rebut. Br. 4-5. However, these newly drawn
configurations are not arranged in a matrix which connotes arrangement in
columns and rows as that term is generally understood. In this regard, we
find persuasive the Patent Owner Respondent's response that “[a]s
understood by a skilled artisan, a matrix is a regular arrangement of elements
into rows and columns, generally identified as n x m, where n is the number
of rows and m is the number of columns.” PO Resp. Br. 6. The Patent
Owner Respondent's interpretation of the term “matrix” as recited in the
claim is also consistent with the disclosure in the '404 Patent of the sets 52,
54, 56 and 58 of patterns in that they are “matrices” having pores that are
arranged in rows and columns.
The Examiner also notes that while Lin does teach the addition of
pores (Lin 4:40-42), Appellants’ analysis relies on Lin’s figure 3B “as
modified,” i.e., with the inclusion of additional pores. RAN 18-19, see also
App. Br. 11-12 with illustration and also Rebut. Br. 3 with illustration.
Patent Owner Respondent contends that “one of ordinary skill in the art
would have had to modify the ablation patterns shown in Lin in order to
arrive even at a single such matrix.” PO Resp. Br. 3.
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Inter partes Reexamination Control 95/000,644
United States Patent 7,871,404 B2

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Appellant’s modification of Lin’s original figure 3B does not
adequately explain the quantity and location of any pores added by one
skilled in the art. Lin provides no such guidance on this point other than that
the prior invention has “at least one ring with at least 3 spots [pores] in each
ring.” Lin 4:39-42. As such, Appellant’s contention that Lin discloses the
limitation in question is premised on an inadequately supported modification
of Lin’s figure 3B and also on an unexplained assumption of how one skilled
in the art might arrange variously added pores. App. Br. 11-12, Rebut Br. 2-
3.
The Patent Owner Respondent also addresses Appellant’s lack of any
reason for one skilled in the art to modify Lin’s figure 3B in the manner
depicted and contends that Appellant impermissibly relied on hindsight. PO
Resp. Br. 5. Granted, the Examiner acknowledges that “Lin explicitly
teaches the addition of pores and/or radials” (RAN 18, see Lin 4:40-42) but
Appellant does not provide a persuasive rational reason to modify each
radial in the same manner, such as by providing four additional pores as
contemplated by Appellant. We thus also agree with the Examiner that
“using [Appellant’s] suggested modifications of Lin to arrive at the claimed
invention would have amounted to hindsight reasoning.” RAN 20, see also
PO Resp. Br. 4-5.
Accordingly, Appellant does not persuade us of Examiner error and as
such, we are not persuaded that the Examiner’s analysis is unreasonable or
that the Examiner’s refusal to adopt the proposed rejection should be
reversed.

DECISION
Appeal 2013-006021
Inter partes Reexamination Control 95/000,644
United States Patent 7,871,404 B2

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The Examiner’s refusal to adopt the Appellant's proposed rejection of
claim 15 as being unpatentable over the proposed combination of Lin and
Schachar is affirmed.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g).

AFFIRMED

Patent Owner and Respondent
One LLP
West Tower, Suite 1100
4000 MacArthur Blvd.
Newport Beach, CA 92660

Third Party Requester and Appellant

Munck Wilson Mandala, LLP
Docket Clerk
P.O. Drawer 800889
Dallas, TX 75380