Ex Parte Boukhny

Board of Patent Appeals and Interferences

Jun 13, 2012

11060827 (B.P.A.I. Jun. 13, 2012)

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.
11/060,827 02/18/2005 Mikhail Boukhny 2826 US 1789
26356 7590 06/14/2012
ALCON
IP LEGAL, TB4-8
6201 SOUTH FREEWAY
FORT WORTH, TX 76134
EXAMINER
SEVERSON, RYAN J
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
06/14/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MIKHAIL BOUKHNY
__________

Appeal 2011-004762
Application 11/060,827
Technology Center 3700
__________

Before TONI R. SCHEINER, MELANIE L. McCOLLUM, and
ERICA A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to
phacoemulsification tips. The Patent Examiner rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
The Specification states,
In the United States, the majority of cataractous lenses are
removed by a surgical technique called phacoemulsification.
During this procedure, a thin phacoemulsification cutting tip is
Appeal 2011-004762
Application 11/060,827

2
inserted into the diseased lens and vibrated ultrasonically. The
vibrating cutting tip liquefies or emulsifies the lens so that the
lens may be aspirated out of the eye. The diseased lens, once
removed, is replaced by an artificial lens.

(Spec. 1, ll. 15-19.)
Claims 5-9, 23, 24, 26, and 27 are on appeal. Claim 5 is
representative and reads as follows:
5. A phacoemulsification tip, comprising:
a rigid tubular shaft enclosing a lumen, the shaft having distal and
proximal ends and a generally circular cross section, the shaft being arched
from its proximal end to its distal end along an arc contained in the lumen so
that the distal end of the shaft is located at one end of the arc and the
proximal end of the shaft is located at the other end of the arc, the distal end
of the shaft being cut at an angle between zero degrees and ninety
degrees so as to form an opening at the distal end of the shaft;
wherein the shaft of the phacoemulsification tip is arched along an
entire length of the shaft relative to a straight line, tangent to the arc of the
shaft at the proximal end of the shaft, such that each point on a shaft
centerline is displaced from the straight line, along a shortest distance from
the point to the straight line, a distance greater than any point on the shaft
centerline closer to the proximal end of the shaft;
wherein the rigid tubular shaft of the phacoemulsification tip is
configured to be inserted into a lens of an eye and vibrated ultrasonically to
liquefy or emulsify the lens for aspiration of the lens out of the eye.

The Examiner rejected the claims as follows:
• claims 5-9, 23, 26 and 27 under 35 U.S.C. § 103(a) as unpatentable
over Imonti1 and Amar;2 and
• claim 24 under 35 U.S.C. §103(a) as unpatentable over Imonti,
Amar, and Boukhny.3

1 US Patent No. 5,653,724 issued to Maurice M. Imonti, Aug. 5, 1997.
2 Patent No. US 6, 494,868 issued to Roger E. Amar et al., Dec. 17, 2002.
Appeal 2011-004762
Application 11/060,827

3
OBVIOUSNESS
The Examiner found that Imonti disclosed a phacoemulsification tip
that differed from the claimed invention by having a shaft that was bent
rather than being arched along an entire length of the shaft, as claimed.
(Ans. 4.) The Examiner found that Amar taught the use of an arched shaft as
an alternative to a bent shaft to advantageously access tissue. (Id.)
According to the Examiner, it would have been obvious to a person of
ordinary skill in the art at the time the invention was made to have arched
the shaft of Imonti as taught by Amar to obtain the same advantage. (Id.)
Appellant contends that “Imonti and Amar are not properly
combinable to teach at least ‘wherein the shaft of the phacoemulsification tip
is arched along an entire length of the shaft’ as recited in claim 5.” (App.
Br. 9.) Appellant asserts that the Examiner relied upon impermissible
hindsight because a person of ordinary skill in the art would not have
“appreciate[d] the benefit of a curved phacoemulsification tip by looking at
the Amar reference, without the knowledge of the Applicant’s specification,
as the curve in the injection needle of Amar is for the completely different
purpose of following the facial skeleton.” (Id.)
Additionally, Appellant asserts that Imonti taught away from Amar’s
continuous arch design by stating, “Surprisingly, it has been found that the
emulsification of the lens proceeds more efficiently if the bend 46 is not
located at a vibrational node.” (Id. at 11.) According to Appellant, this
teaching would have led a skilled artisan “away from a continuously arched

3 US Patent No. 5,676,649 issued to Mikhail Boukhny et al., Oct. 14, 1997.
Appeal 2011-004762
Application 11/060,827

4
needle as the person of ordinary skill in the art would be looking to carefully
place the ‘bend.’” (Id.)
After considering all the evidence and arguments, we conclude that
the record supports a conclusion of prima facie obviousness. In particular,
we are not persuaded of nonobviousness by Appellant’s assertion that a
skilled artisan at the time of the invention would not have “appreciate[d] the
benefit of a curved phacoemulsification tip by looking at the Amar
reference, without the knowledge of the Applicant’s specification, as the
curve in the injection needle of Amar is for the completely different purpose
of following the facial skeleton.” (App. Br. 9.) According to Appellant,
“Amar does not improve the device of Imonti in the same way (the needle of
Imonti does not need to follow a facial skeleton as in Amar.” (App. Br. 10.)
We disagree as Appellant considers Amar’s teaching too narrowly. More
broadly, a skilled artisan would understand from Amar that forming a rigid
tubular shaft as an arch improves access to the tissue/structure for which the
device is intended to contact. (See Ans. 4.) Thus, while Amar’s device,
comprising a rigid tubular shaft, is a cannula for muscle injections intended
to reach facial muscle tissue, and Imonti’s device, similarly comprising a
rigid tubular shaft, is a phacoemulsification device, an artisan would have
recognized that both devices could be improved to provide better access to a
target tissue, using the same technique, i.e., by forming the rigid tubular
shaft of the device into a continuous arch along the entire length of the shaft.
See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416-417 (2007).
We are also not persuaded of nonobviousness by Appellant’s assertion
Imonti taught away from arching its shaft by teaching that “the
emulsification of the lens proceeds more efficiently if the bend 46 is not
Appeal 2011-004762
Application 11/060,827

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located at a vibrational node.” (App. Br. 11.) According to Appellant,
this teaching would have led a skilled artisan to “carefully place the ‘bend.’”
(Id.) However, the Examiner’s combination of Imonti and Amar did not
involve relocating the placement of Imonti’s bend in the shaft, but rather
arching the shaft along its entire length. (Ans. 4.) In other words, as in
Imonti, the Examiner’s combination did not include a bend “located at a
vibrational node.”
Accordingly, we affirm the rejection of claim 5.
Appellant has not raised additional arguments for claims 6-9, 23, 26,
and 27. (See App. Br. 11.) Therefore, these claims fall with claim 5. See 37
C.F.R. § 41.37(c)(1)(vii).
Regarding the separate rejection of claim 24, Appellant asserts that
“Imonti and Amar are not properly combinable for the teaching of at least
‘wherein the shaft of the phacoemulsification tip is arched along an entire
length of the shaft’” for similar reasons as alleged regarding claim 5. (App.
Br. 12.) Therefore, we affirm this rejection for the same reasons discussed
regarding the rejection of claims 5-9, 23, 26, and 27.

SUMMARY
We affirm each of the obviousness rejections.

Appeal 2011-004762
Application 11/060,827

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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

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