Ex parte Berry

Board of Patent Appeals and Interferences

Jun 13, 2001

08192979 (B.P.A.I. Jun. 13, 2001)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MICHAEL J. BERRY
____________
Appeal No. 1999-2674
Application No. 08/192,979
____________
ON BRIEF
____________
Before COHEN, McQUADE, and NASE, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 59
through 75. These claims constitute all of the claims
remaining in the application.
Appellant’s invention pertains to a method of reshaping
an outside surface of a cornea of an eye. A basic
understanding of the invention can be derived from a reading
of exemplary claims 59 and 73, copies of which appear in
“APPENDIX 1" to the main brief (Paper No. 21).
Appeal No. 1999-2674
Application No. 08/192,979
2
As evidence of obviousness, the examiner has applied the
documents listed below:
Neefe 3,776,230 Dec. 04, 1973
Baron 4,461,294 Jul. 24, 1984
L’Esperance, Jr. 4,665,913 May 19, 1987
Sand 4,976,709 Dec. 11,
1990
The following rejections are before us for review.
Claims 59 through 63, 67, 68, and 71 stand rejected under
35
U.S.C. § 103 as being unpatentable over Sand in combination
with
L’Esperance and Neefe.
Claims 64 through 66, 69, 70, and 72 through 75 stand
rejected under 35 U.S.C. § 103 as being unpatentable over Sand
in combination with L’Esperance and Neefe, as applied above,
further in view of Baron.
The full text of the examiner’s rejections and response
to the argument presented by appellant appears in the answer
(Paper No. 22), while the complete statement of appellant’S
Appeal No. 1999-2674
Application No. 08/192,979
1 In our evaluation of the applied prior art, we have considered all of
the disclosure of each document for what it would have fairly taught one of
ordinary skill in the art. See In re Boe, 355 F.2d 961, 965, 148 USPQ 507,
510 (CCPA 1966). Additionally, this panel of the board has taken into account
not only the specific teachings, but also the inferences which one skilled in
the art would reasonably have been expected to draw from the disclosure. See
In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
3
argument can be found in the main and reply briefs (Paper Nos.
21 and 23).
OPINION
In reaching our conclusion on the obviousness issues
raised in this appeal, this panel of the board has carefully
considered appellant’s specification and claims, the applied
teachings,1 and the respective viewpoints of appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
We do not sustain the examiner’s respective rejections
under 35 U.S.C. § 103.
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Application No. 08/192,979
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Each of independent claims 59 and 73 set forth a method
of reshaping an outside surface of a cornea of an eye
comprising, inter alia, engaging an outside surface of the eye
surrounding the cornea with a coupler structure that also
contacts the
outside surface of the cornea with a concave surface, with the
concave surface being transparent to infrared radiation,
passing infrared radiation through the concave surface of the
coupler and into the cornea in order to raise the temperature
of collagen tissue within the cornea sufficiently to shrink
the tissue without damaging an endothelium layer of the
cornea, and urging the concave surface of the coupler against
the outside surface of the cornea during or while infrared
radiation is passed therethrough.
The underlying disclosure describes a part of the coupler
10 as an annular suction ring 20 (Fig. 1; specification, pages
12 and 13) whose purpose is to attach the coupler to the eye
by use of vacuum to position and restrain the eye. In light
of this disclosure, we comprehend the recitation of the urging
Appeal No. 1999-2674
Application No. 08/192,979
5
step in the claims as denoting the application of a force to
position the coupler against the outside surface of the cornea
during the passing of infrared radiation. It is also worthy
of noting that the second indicated major functional part of
the coupler 10 is the substantially transparent center portion
11 that has the radially curved surface or corneal engaging
surface 30, which
surface performs the functions of acting as a heat sink and
thermostat, a template for the cornea, and a mask during the
reshaping procedure (specification, page 13).
We turn now to the evidence of obviousness.
This panel of the Board certainly appreciates the
relevance of the Sand disclosure in describing laser
keratoplasty to effect collagen shrinkage in a human cornea
for bringing about shape modification thereof in correcting
refractive disorders. Sand also teaches a lower surface
temperature for corneal layers anterior to the stroma produced
by flowing insert gas or liquid over the cornea during
irradiation or by applying a contact lens window of a material
Appeal No. 1999-2674
Application No. 08/192,979
6
such as saffire which has a high thermal conductivity.
However, as appropriately acknowledged by the examiner
(answer, page 3), the Sand reference as whole is clearly
deficient in a number of ways relative to the method now
claimed.
To overcome the recognized deficiencies, the examiner
relies upon the respective teachings of L’Esperance, Neefe,
and Baron.
Individually, the teachings of these documents do have some
relevance to aspects of the claimed method.
L’Esperance (column 2, lines 14 through 24) addresses an
ablative decomposition apparatus for fixing the position of an
eye with respect to a scanning laser to effect a desired depth
of ablation as a sculpturing step to arrive at a desired
ultimate surface change in the cornea. As seen in Fig. 2 of
L’Esperance, an eye-retaining fixture is disclosed having a
hollow annulus and a wall 23 of air-permeable material
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contoured to engage and retain the eye via a scleral-corneal
region by the application of vacuum (column 3, lines 42
through 52). Like appellant (main brief, pages 13 and 14), we
perceive that the L’Esperance teachings lacks the now claimed
concave surface of the coupler which is urged against the
outside surface of the cornea and through which infrared
radiation is passed.
The patent to Neefe relates to a method of correcting
refractive error of the eye by applying heat and drugs to
soften the cornea thereby allowing the cornea to be reshaped.
In
particular, the rearrangement of the cornea is brought about
by pressure applied to the cornea by a heated metal or plastic
concave mold which establishes a desired corneal curvature.
Simply stated, when we set aside in our minds that which
appellant has taught us in the present application, we readily
conclude that the applied prior art, in and of itself, would
not have suggested the method of claims 59 or 73. It is quite
apparent to us that only by impermissibly relying upon
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Application No. 08/192,979
8
appellant’s own teaching would one having ordinary skill in
the art have been able to derive the claimed method based upon
the examiner’s evidence of obviousness. Clearly, the art
before us would not have been suggestive of the claimed
coupler with a concave surface that is transparent to infrared
radiation, which concave surface is urged against the outside
surface of the cornea during the passage of infrared radiation
through the concave surface. As a concluding point, we note
that the patent to Baron does not make up for the deficiencies
of the Sand, L’Esperance, and Neefe disclosures.
The decision of the examiner is reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED
Appeal No. 1999-2674
Application No. 08/192,979
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IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
icc/vsh
Appeal No. 1999-2674
Application No. 08/192,979
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