Ex Parte Fitzgerald et al

Board of Patent Appeals and Interferences

Aug 28, 2012

12181673 (B.P.A.I. Aug. 28, 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.
12/181,673 07/29/2008 Matthew J. Fitzgerald P04734 (6639-000191/US) 2368
7590 08/29/2012
Bausch & Lomb Incorporated
One Bausch & Lomb Place
Rochester, NY 14604-2701
EXAMINER
BOSQUES, EDELMIRA
ART UNIT PAPER NUMBER
3767
MAIL DATE DELIVERY MODE
08/29/2012 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 MATTHEW J. FITZGERALD and TOH SENG GOH
____________________

Appeal 2010-008511
Application 12/181,673
Technology Center 3700
____________________

Before: KEN B. BARRETT, BRETT C. MARTIN, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-008511
Application 12/181,673

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STATEMENT OF CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
rejection of claims 1-6. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Appellants’ claims are directed “generally to a device for controlling
fluid flow in a system used in various surgical procedures.” Spec. [0001].
Claim 1, reproduced below, with emphasis added, is illustrative of the
claimed subject matter:
1. A safety device in a fluid vent conduit for
reducing vacuum level in an aspiration conduit of
an ophthalmic surgical system, the device
comprising:
an orifice having an inlet for receiving a
flow of fluid from an irrigation source;
wherein the orifice further has an outlet for
directing the flow of fluid into the aspiration
conduit;
wherein the orifice has a cross-sectional
area sufficiently large to ensure an acceptable
amount of fluid flows into the aspiration conduit,
to reduce the vacuum level in the aspiration
conduit, to an acceptable level in an acceptable
amount of time and to provide adequate reflux; and
wherein the cross-sectional area is
sufficiently small to restrict the flow of fluid to
allow enough fluid to continue to flow from the
irrigation source to a handpiece at a surgical site.

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Easley US 6,599,271 B1 Jul. 29, 2003

Castany, G., Principes et methodes de I'hydrogeologie, Paris: Dunod.
Freeze, RA and Cherry, J.A. 1979: Groundwater. Englewood Cliffs, NJ:
Prentice-Hall Todd, D.K. 1980: Groundwater hydrology. 2nd edn. New
York and Chichester: Wiley

Lucio Buratto, et al., Phacoemulsification: Principles and Techniques, 2nd
Edition, 43, (SLACK Incorporated, 2003)

REJECTIONS
The Examiner made the following rejections:
Claim 1-3 stand rejected under 35 U.S.C §102(b) as being anticipated
by Easley. Ans. 3.
Claims 4 and 5 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Easley in view of Castany. Ans. 5.
Claim 6 stands rejected under 35 U.S.C §103(a) as being unpatentable
over Easley, Castany, and Buratto. Ans. 6.

ANALYSIS
Anticipation of Claims 1-3 by Easley
Claim 1
Appellants’ argument essentially centers around assertions that
functional language contained in claim 1 is allegedly not taught by Easley.
See App. Br. 3-5; Rep. Br. 1-3. A patent applicant is free to recite features
of an apparatus either structurally or functionally. See In re Swinehart, 439
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F.2d 210, 212 (CCPA 1971) (“[T]here is nothing intrinsically wrong with
[defining something by what it does rather than what it is] in drafting patent
claims.”). “Yet, choosing to define an element functionally, i.e., by what it
does, carries with it a risk.” In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir.
1997). As stated in Swinehart, 439 F.2d at 213:

where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.

Where, as here, the Patent Office has reason to believe that a
functional limitation is an inherent characteristic of the prior art, Appellants
have the burden to show that the prior art does not possess that
characteristic. See In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977)
(quoting In re Swinehart, 439 F.2d at 212-13; see also In re Spada, 911 F.2d
705, 708 (Fed. Cir. 1990) (“when the PTO shows sound basis for believing
that the products of the applicant and the prior art are the same, the applicant
has the burden of showing that they are not.” (citations omitted)) and In re
King, 801 F.2d 1324, 1327 (Fed. Cir. 1986) (finding it insufficient for an
appellant to merely assert that the prior art does not inherently possess the
characteristic relied on and challenge the PTO to prove the contrary by
experiment or otherwise. “The PTO is not equipped to perform such
tasks.”).
Here, Appellants do not even argue against the Examiner’s findings of
inherency (by way of the Examiner’s finding that Easley is “capable of” the
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claimed functions), but simply state that the references do not teach the
claimed functionality. “[T]he absence of a disclosure relating to function
does not defeat [a] finding of anticipation.” In re Schreiber, 128 F.3d 1473,
1477 (Fed. Cir. 1997). Accordingly, the Examiner need only point to
structure capable of performing the recited function, and is not required to
show that the references disclose the claimed function(s) as Appellants
argue. In the Reply, Appellants further state:
One skilled in the art would need to rearrange Easley's device
10 and connect that new rearranged device to a system, not
shown in Easley, that includes a fluid vent conduit and
appreciate that the new rearranged device divert some irrigation
fluid to the aspiration conduit but yet still provides sufficient
irrigation fluid flow to the handpiece to come up with the
claimed present invention.
Rep. Br. 3. Appellants go on to state that this would be “simply
unacceptable” when in fact, this is exactly what a proper inherency inquiry
could entail. We agree with the Examiner that, in claim 1, the only claimed
structural limitations are an orifice, an inlet, an outlet, and a cross-section.
See Ans. 8.
Additionally, Appellants argue many aspects of the overall disclosed
system that are unclaimed. For example, with respect to claim 1, Appellants
argue that “[t]here is no venting of irrigation fluid [in Easley] into the
aspiration path as specifically claimed.” App. Br. 4. There is, however, no
positive, structural limitation in claim 1 that requires an aspiration path or a
vent. As long as the Examiner reasonably finds the claimed structure in
Easley is capable of the recited function, as has been done, then the
Examiner has met the necessary burden. While the Examiner does
characterize this as an intended use argument, the requisite findings that
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Easley’s orifice is capable of the claimed functional language are present in
the rejection. Ans. 4, 7-8. Without any structural recitations of other aspects
of the disclosed (but not claimed) system, essentially all Appellants have
claimed is a fluid path with a cross-section and having an inlet and an outlet.
We conclude that the Examiner has properly found sufficient teachings to
support an anticipation rejection of claim 1.
In conclusion, Appellants merely argue that the various functional
language is not found in Easley, but do not persuasively explain why
Easley’s orifice would not be capable of the claimed functional language.
App. Br. 3-5. Accordingly, we agree with the Examiner that Easley teaches
an orifice with an inlet, an outlet, and a cross-section (the only structure
claimed by Appellants in claim 1) and conclude that the Examiner has made
a sufficient showing that Easley’s orifice is capable of performing the
claimed function(s). Accordingly, we affirm the rejection of claim 1.
Claim 2
Appellants make no separate argument with respect to claim 2 (App.
Br. 5), so claim 2 stands or falls with claim 1. Accordingly, we also affirm
the rejection of claim 2.
Claim 3
Regarding claim 3, Appellants argue only that “[t]here is simply no
irrigation manifold in Easley” and that “Easley does not connect the
aspiration path to the irrigation path in any way.” App. Br. 5. The Examiner
states in the rejection: “Easley teaches a compressible length of tubing (26
and 22, respectively) connected to the aspiration manifold and an irrigation
manifold, the length of tubing can be compressed by a pinch valve (23)
assembly for controlling the flow of fluid into the orifice.” Ans. 4-5.
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Appellants’ conclusory assertions fail to address the Examiner’s specific
findings and do not persuade us that those findings are in error.
Further, as to Appellants’ suggestion that the irrigation and aspiration
paths are not connected, we again conclude that Appellants are attempting to
argue limitations not present in the claims. Nowhere in claim 3 is there a
requirement that the two paths be connected as suggested by Appellants, and
in fact, there is no structural recitation of any “path” in claim 3.
Accordingly, we affirm the rejection of claim 3.
Rejection of Claims 4 and 5 over Easley and Castany
Appellants allege that the Examiner utilized the teachings of Castany
to arrive at “the claimed cross sectional area of 0.0002 to 0.0004 square
inches.” App. Br. 6. As stated by the Examiner, however, “Castany’s
reference was provided only to support that a cross-sectional area is the
perpendicular are [sic] to flow direction.” Ans. 8. The Examiner uses
Easley for the teaching of a channel having a diameter that could be less
than 0.06 inches and then states that “it would have been obvious to
calculate a cross-sectional area between about 0.0002 and about 0.0004,
since it involves only a routine skill in the art. In other words, discovering
of a cross-sectional area of an orifice is not of innovation but of ordinary
skill and common sense.” Ans. 5. As with claim 1, Appellants again argue a
lack of a teaching in the combination of functional language. App. Br. 6.
Appellants do not, however, persuade us of error in the Examiner’s
statement of obviousness as to the claimed cross-sectional dimension vis-à-
vis the stated diameter in Easley of less than 0.06 inches. Accordingly, we
affirm the rejection of claims 4 and 5.

Appeal 2010-008511
Application 12/181,673

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Rejection of Claim 6 over Easley and Buratto
Appellants admit that Buratto is a “known prior art reflux teaching[],”
but assert that combining Buratto with Easley “would not result in a device
with reflux capability, let alone the claimed invention.” App. Br. 7. The
Examiner utilizes Buratto only to show that continuous reflux flow is known
in the art, which is not specifically disclosed in Easley. Ans. 8, 6. Thus, as
stated by the Examiner, utilizing the orifice of claim 1, which we have
affirmed as anticipated, with the continuous reflux of Buratto would be
obvious. Ans. 6-7. Because we find Appellants’ arguments as to claim 6
unpersuasive, we affirm the rejection of claim 6.

DECISION
For the above reasons, we AFFIRM the Examiner’s decision to reject
claims 1-6.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009).

AFFIRMED

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