Ex Parte Bisch et alDownload PDFPatent Trial and Appeal BoardJan 14, 201511071087 (P.T.A.B. Jan. 14, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte MICHAEL E. BISCH and BRUCE R. COCHRAN __________ Appeal 2012–007208 Application 11/071,087 Technology Center 3700 __________ Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and CHRISTOPHER W. PAULRAJ, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal1 under 35 U.S.C. § 134 involving claims to an ophthalmic surgical system and method of using the system. The Examiner rejected the claims as anticipated and as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the Real Party in Interest as Bausch & Lomb Incorporated (see App. Br. 2). Appeal 2012-007208 Application 11/071,087 2 Statement of the Case Background “[T]he present invention is directed to an ophthalmic surgical system having a user interface that presents a guided and filtered set–up for the surgical system” (Spec. 1 ¶ 1). The Claims Claims 1–30 are on appeal. Independent claim 1 is representative and reads as follows: 1. An ophthalmic surgical system comprising: at least one aspiration device for aspirating fluids and tissue from a surgical site; at least one surgical handpiece for performing a surgical function; a control unit connected to each of the aspiration device and surgical handpiece for controlling the operation of each device and handpiece; and a user interface forming a portion of the control unit for guiding a user by prompting the user to answer a series of questions and the control unit controlling the device and handpiece based on the user’s answers. The Issues A. The Examiner rejected claims 1, 2, 6–11, 14–23, and 27–30 under 35 U.S.C. § 102(b) as anticipated by Baum2 (Ans. 4–10). B. The Examiner rejected claims 3, 12, and 24 under 35 U.S.C. § 103(a) as obvious over Baum and Quiroz–Mercado3 (Ans. 10–11). 2 Baum et al., US 5,249,121, issued Sept. 28, 1993. 3 Quiroz-Mercado, H., US 2004/0092861 A1, published May 13, 2004. Appeal 2012-007208 Application 11/071,087 3 C. The Examiner rejected claims 4 and 25 under 35 U.S.C. § 103(a) as obvious over Baum and Cochran4 (Ans. 11). D. The Examiner rejected claims 5, 13, and 26 under 35 U.S.C. § 103(a) as obvious over Baum and Conley5 (Ans. 11–12). A. 35 U.S.C. § 102(b) over Baum The Examiner finds that: Baum discloses an ophthalmic surgical system . . . [which] comprises at least one aspiration device 140 for aspirating material . . . during the process . . . fluid and tissue are aspirated out of the eye into a collection container . . . one surgical handpiece 100/110 for performing a surgical function . . . a control unit 40 connected to each of the aspiration device 140 and surgical handpiece 110 for controlling the operation of each device and handpiece . . . a user interface 50/52–62 forming a portion of the control unit . . . the user interface provides the user with a variety of options for the procedure that is to be performed. Once a procedure is selected, the user interface illuminates another set of options that correspond to the different functions available for that procedure (Ans. 4–5). The issue with respect to this rejection is: Does the evidence of record support the Examiner’s conclusion that Baum anticipates claim 1? Findings of Fact 1. The Specification teaches that “user interface 48 also preferably includes a filtering presentation of options to the user based on the answers provided by the user. That is to say the filtering presentation intelligently 4 Cochran et al., US 6,055,458, issued Apr. 25, 2000. 5 Conley et al., US 5,242,404, issued Sept. 7, 1993. Appeal 2012-007208 Application 11/071,087 4 makes available only those options that are still relevant based on the previous answer provided by the user” (Spec. 4 ¶ 13). 2. Baum teaches that an aspiration device where “[v]itrectomy probe 140 includes a hollow needle 141 having an inner tube which reciprocates to cut intraocular material sucked in a small hole near the tip of the needle. . . . The suction part of this instrument is also coupled to the collection container 72 by tubing 142” (Baum, col. 7, ll. 22–30). 3. Baum teaches that “Phaco fragmentation handpiece 110 is a conventional piezoelectric device for disintegrating hard objects such as intraocular cataractous material utilizing ultrasonic (‘US’) energy transmitted to its needle 112” (Baum, col. 6, ll. 62–65). 4. Baum teaches that the “microsurgical control system 40 is capable of operating a number of different microsurgical instruments” (Baum, col. 6, ll. 43–45). 5. Baum teaches that integration of these surgical functions into a single console 46 represents a formidable organizational challenge since the system 40 must provide the operator(s) with a straightforward means of invoking all of the different modes, the functions under each mode, and a way to adjust the various set–up and operating parameters associated with various electronic control circuits and pneumatic control systems. The CRT display and pushbutton arrangement assists system flexibility greatly in this regard since it is possible to reprogram the functions of the switches 52 in accordance with the selected anterior segment or posterior segment procedure or with the selected utility functions, such as establishing set–up values or configuring the system for a particular surgeon’s use. (Baum, col. 10, ll. 43–57). Appeal 2012-007208 Application 11/071,087 5 6. Figure 13 of Baum is reproduced below: FIG. 13 is a view of the remote control console 370 which has the anterior card 780a inserted therein. As may be seen, the identification tab 880 projects outside of the slot 784 so that the user may know what legend card is in the slot whether or not the controller is plugged in and powered up. For convenience, all of the legend fields 864–870 are shown in FIG. 13 as being illuminated. In practice, only those fields associated with a particular mode of operation which has been selected would be illuminated. Illumination of such fields would end when the mode was deselected. In the Storz DAISY console, the CRT display includes similar fields and legends, although there are not as many buttons in the button columns 54 and 56, and bidirectional endless digital potentiometers were provided instead of the button pairs 58 for adjusting parameters. (Baum, col. 26, ll. 17–32). Appeal 2012-007208 Application 11/071,087 6 7. Figure 11 of Baum is reproduced below: FIG. 11 shows a legend card 780a with one possible group of legends thereon . . . While these legends are in the English language, those skilled in the art will appreciate that the legends may be in a foreign language or universal symbols which would be readily recognized independent of the language of the user. The card 780a shown in FIG. 11 represents a most of the legends which are displayed upon the display screen 50 of the main console 46 when various anterior segments surgical procedures are performed. Similarly, the legend card 780p contains a number of different legends which are related to various surgical procedures which are performed during posterior segments operations. . . . A number of the legends on legend card 780a or 780p may be readily understood by referring to this previous discussion. For example, the legend 864a is illuminated when the irrigation mode is selected, the legend 864b is illuminated when the irrigation/aspiration mode is selected, the legend 864c is illuminated when the phaco mode is selected . . . (Baum, col. 23, ll. 55–62). Appeal 2012-007208 Application 11/071,087 7 8. Baum teaches that: When irrigation mode, irrigation/aspiration mode, or vitrectomy mode is selected, the field 866d will light up, so that the user can prime the probe or handpiece to be used. Once the button 716d is pushed, this selects the irrigation prime function and the field 866d begins to blink, and the ‘aspiration prime’ field 866e is now fully backlit to indicate to the user that the aspiration tubing should be primed. (Baum, col. 24, ll. 15–24). Principles of Law The Examiner bears the initial burden of establishing a prima facie case of anticipation. In re King, 801 F.2d 1324, 1326–27 (Fed. Cir. 1986). Anticipation under 35 U.S.C. § 102 requires that “each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). “An essential purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process.” In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989). Analysis We begin our analysis with claim interpretation, since it is a necessary prerequisite before a claim can be compared to the prior art. In this case, the phrase “user interface . . . for guiding a user by prompting the user to answer a series of questions” in claims 1, 10, and 18 requires interpretation. During prosecution, claim terms are given their broadest reasonable interpretation as they would be understood by persons of ordinary skill in the Appeal 2012-007208 Application 11/071,087 8 art in the light of the Specification. Therefore, we first turn to the Specification to interpret the meaning of the phrase. While the Specification does not define the “user interface” phrase, the Specification does teach “a filtering presentation of options . . . [that] intelligently makes available only those options that are still relevant based on the previous answer provided by the user” (Spec. 4 ¶ 13-14; FF 1). Appellants contend that “it is clear that prompting a user to answer a series of questions is not the same as presenting a user with several buttons labeled with individual modes” (App. Br. 4). Appellants contend that “Baum does not guide a user with a series of questions, but rather the user must have prior working knowledge of the system of Baum to proceed and the user is not guided, as claimed” (App. Br. 5). The Examiner responds that “[p]roviding the user with various choices is prompting the user to answer the question, ‘which do you want?’” (Ans. 12). We conclude that the Examiner has the better position. Consistent with the filtered presentation of options in the Specification (FF 1), Baum teaches a surgical system (FF 2–4) with a user interface (FF 5) which presents labeled textual buttons for user selection (FF 6–8). Baum explains that these labels (termed “legends” in Baum) may be in any desired language or symbol set (FF 7) and represent sequential sets of selections (i.e., prompts) for navigating the hierarchy of operations of the Baum interface (FF 5–8). While Appellants correctly note that the text presented on the Baum interface does not explicitly include a question mark placed after the labels Appeal 2012-007208 Application 11/071,087 9 on the buttons used for selection, this difference is solely one of printed matter, which does not impart a meaningful distinction for patentability. That is, we agree with the Examiner that the presentation of a series of alternatively labeled buttons is reasonably interpreted as an invitation to the user to select a desired button based on the label. Whether the text on Figure 11 utilizes the spare terms “irrigation” or “vitrectomy”, or displays the complete questions “Do you select irrigation?” and “Do you select vitrectomy?”, the distinction is solely based on a difference in the printed matter being displayed on the device, and not necessarily any difference in device structure that is required. In Ngai, the court confronted a similar fact pattern. The applicant in Ngai claimed a kit with reagents for performing a method and instructions on how the method was to be performed. See In re Ngai, 367 F.3d 1336, 1337 (Fed. Cir. 2004). The Ngai court concluded that “the printed matter in no way depends on the kit, and the kit does not depend on the printed matter. All that the printed matter does is teach a new use for an existing product.” Id. at 1339. With regard to method claim 10, the Court in King Pharmaceuticals found that the Ngai rationale “extends to the situation presented in this case, wherein an instructional limitation is added to a method, as opposed to a product, known in the art.” King Pharmaceuticals, Inc. v. Eon Labs, Inc., 616, F.3d 1267, 1279 (Fed. Cir. 2010). The same logic applies in the instant case since “prompting the user to answer a series of questions” in claims 1, 10, and 18 represents printed matter which does not necessarily relate functionally to the user interface. As in King Pharmaceuticals at 1279 “[i]rrespective of whether the patient is Appeal 2012-007208 Application 11/071,087 10 informed . . . the actual method . . . is the same.” Id. The same result is obtained for the claimed invention as the method of selecting buttons through a menu as taught by Baum, differs from Appellants’ claimed invention only in the textual content of the labels on the buttons. These question prompts, as claimed, do not necessarily differ in structure or function from the label prompts disclosed in Baum (FF 6–7). As we have already pointed out, the only difference between the claimed “question” and Baum’s label is the specific text printed on the label, where the labels lack a question mark. We also agree with the Examiner that when Baum only illuminates “fields associated with a particular mode of operation” (FF 6), Baum is providing guidance to the user regarding which fields may be selected (see Ans. 15). Baum teaches an example of when “irrigation mode . . . is selected, the field 866d will light up, so that the user can prime the probe or handpiece to be used. Once the button 716d is pushed, this selects the irrigation prime function and the field 866d begins to blink” (Baum, col. 24, ll. 15–20; FF 8). Thus, after the user is prompted to select irrigation mode, further guidance is provided to the user for additional selections (FF 8). Appellants contend that a novice user might see 864e and 868b–2 both labeled as “bipolar”, yet that user would not be able to select the bipolar mode through pushing buttons associated with 868b– 2. The button associated with 864e must be pushed and then the buttons associated with 868b–2 allow the bipolar level to be increased or decreased. However, the novice user would not know this without prior training or guidance. (Reply Br. 1–2). Appeal 2012-007208 Application 11/071,087 11 We are not persuaded. This argument goes to the quality of the guidance, not the existence of guidance itself. That is, even in Appellants own examples, sufficiently vague choices would require further guidance or training. Thus, a user unfamiliar with the different aspiration systems in Figure 4 of the Specification would need prior training in order to properly select the correct aspiration system. The claims certainly do not require any specific level of guidance and do not require that the user be untrained or unfamiliar with the device or system. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments fail from the outset because . . . they are not based on limitations appearing in the claims.”) Conclusion of Law The evidence of record supports the Examiner’s conclusion that Baum anticipates claim 1. B–D. 35 U.S.C. § 103(a) rejections Appellants do not argue separately the claims in these obviousness rejections. Having affirmed the anticipation rejection of claims 1, 10, and 18 over Baum for the reasons given above, we also find that the combinations with Quiroz–Mercado, Cochran, and Conley render the remaining claims obvious for the reasons given by the Examiner (see Ans. 10–12). SUMMARY In summary, we affirm the rejection of claims 1, 10, and 18 under 35 U.S.C. § 102(b) as being anticipated by Baum. Pursuant to 37 C.F.R. § 41.37(c), claims 2, 6–9, 11, 14–17, 19–23 and 27–30 fall with claim 1, as these claims were not argued separately. Appeal 2012-007208 Application 11/071,087 12 We affirm the rejection of claims 3, 12, and 24 under 35 U.S.C. § 103(a) as obvious over Baum and Quiroz–Mercado. We affirm the rejection of claims 4 and 25 under 35 U.S.C. § 103(a) as obvious over Baum and Cochran. We affirm the rejection of claims 5, 13, and 26 under 35 U.S.C. § 103(a) as obvious over Baum and Conley. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED lp Copy with citationCopy as parenthetical citation