Ex Parte Freedman

Patent Trial and Appeal Board

Sep 16, 2016

11220303 (P.T.A.B. Sep. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111220,303 0910712005
7590
Philip D. Freedman PC
1449 Drake Lane
Lancaster, PA 17601
09/19/2016
FIRST NAMED INVENTOR
Philip D. Freedman
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
pdfxOOOlF 4519
EXAMINER
SHAY,DAVIDM
ART UNIT PAPER NUMBER
3769
MAILDATE DELIVERY MODE
09/19/2016 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
Exparte PHILIP D. FREEDMAN
Appeal2013-009468
Application 11/220,303
Technology Center 3700
Before JOHN C. KERINS, CHARLES N. GREENHUT, and
JAMES P. CALVE, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Philip D. Freedman (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1, 2, 5-7, 10, 11, 19, 21, and 25. We
have jurisdiction under 35 U.S.C. § 6(b) (2002).
We AFFIRM.
THE INVENTION
Appellant's claimed invention is directed to a method and a device for
performing laser surgery on biological tissue. Claims 1 and 19, reproduced
below1, are illustrative:
1 The application from which this appeal is taken is an application for reissue
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Application 11/220,303
1. A method of treating biological tissue by laser surgery,
comprising detecting a limit or location of surface or mass of
biological tissue by a process of interferometry comprising
applying a measurement beam by an optical fiber; constructing
an ablating plan according to a computer comparison between
the optical fiber detected limit or location of surface or mass of
biological tissue and a standard and controlling the laser
treating of said biological tissue by computer instructions
according to a computer constructed plan according to the
detected limit or location of surface or mass.
19. A laser surgery device, comprising:
laser beam irradiator for applying a laser beam to a target
region of biological tissue;
interferometer for projecting a light beam by optical fiber onto
said target region of biological tissue, including a detector for
receiving a reflected interference beam from said target region,
detecting a phase difference of said interference beam and
providing an electrical signal according to said phase
difference; and
a controller responsive to said electrical signal [for controlling]
comprising a processor that compares said electrical signal to a
standard and constructs an ablating plan according to the
comparison to control an output of applied laser beam from said
laser beam irradiator according to the ablating plan.
of US 6,454,761 Bl, issued September 24, 2002 (hereafter "Freedman").
The bracketing and underlining in claims 1 and 19 as presented herein
illustrate the amendments made to original patent claims 1 and 19 to their
present form for consideration on appeal.
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THE REJECTIONS
The Examiner has rejected all of claims 1, 2, 5-7, 10, 11, 19, 21, and
25 under 35 U.S.C. § 103(a) as being unpatentable over:
(i) Wei (US 5,493,109, issued February 20, 1996) in view of
L'Esperance (US 4,669,466, issued June 2, 1987) and Nishizawa (US
5,227,861, issued July 13, 1993);
(ii) Wei in view of Sklar (US 5,098,426, issued March 24, 1992) and
Nishizawa;
(iii) Hellmuth (US 5,491,524, issued February 13, 1996) in view of
L 'Esperance and Nishizawa;
(iv) Hellmuth in view of Sklar and Nishizawa;
(v) Swanson (US 5,321,501, issued June 14, 1994) in view of
L 'Esperance and Nishizawa; and
(vi) Swanson in view of Sklar and Nishizawa.
The Examiner has also provisionally rejected all claims on appeal
under the judicially-created doctrine of obviousness-type double patenting as
being unpatentable over various groups of claims presented in copending
Applications 11/220,298, 11/220,299, 11/220,300, 11/220,301 and
11/220,302, each in view of certain of the references applied against the
claims in the§ 103(a) rejections on appeal. (Final Act. 27-33 (dated Apr.
24, 2012); Ans. 3). Appellant has not traversed the merits of these
rejections. Since the rejections are provisional and no patent has issued from
any of the applications, we conclude that it is premature for the Board to
address the rejections, and thus do not reach the issues presented by the
rejections. See Ex parte Moncla, 95 USPQ2d 1884 (BP AI 2010). We note
that at least Applications 11/220,298, 11/220,300, and 11/220,301 show as
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Application 11/220,303
abandoned in the Patent and Trademark Office records.
ANALYSIS
Appellant presents arguments that are not directed to any specific
rejection, nor any specific claim. Therefore, we regard the arguments made
to be directed to each of the rejections, and that no claims are separately
argued. We will take claims 1 and 19 as representative, and claims 2, 5-7,
10, 11, 21, and 25 stand or fall with their respective independent claim.
Appellant presents, in the Appeal Brief, a characterization of the
disclosures of each of the references, followed by arguments to the effect
that "L'Esperance only teaches video displays for aid of a surgeon," and that
none of the six references discloses certain quoted limitations found in
claims 1 and 19. Appeal Br. 11-13.
As to the latter, the assertions are analogous to those found inadequate
by our reviewing court in In re Lovin, 652 F.3d 1349 (Fed. Cir. 2011) ("we
hold that the Board reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief that a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art.") The arguments thus do not apprise us of Examiner
error.
As to the former, it appears that Appellant is traversing the
Examiner's findings that L'Esperance discloses automated execution of laser
ablation under computer control, either without or with modifications made
to an ablation plan by a surgeon. See Final Act. 11-12. Appellant's
assertion is not supported by the evidence, and, conversely, the Examiner's
position is supported by a preponderance of the evidence.
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L 'Esperance discloses that a surgeon has the option of using an
"automated scanning laser apparatus," and that "the stored decisional data
for the pertinent parameters of the operation will be available for total
adoption (or for adoption with deliberate modification)." L'Esperance, col.
6, 1. 63---col. 7, 1. 2. L'Esperance further discloses that "the digitized
decisional data are directly utilizable ... to provide automated directions for
incision or ablative sculpting." Id. at col. 7, 11. 25-29. L'Esperance further
explains that "the automated use of Module G lends itself to perform a single
operative procedure to effect the entire refractive correction," noting, as an
alternative to the fully automated surgery, that a surgeon "may opt to modify
the surgery in the conservative direction." Id. at col. 7, 11. 33--40.
Appellant's argument thus fails to persuade us of Examiner error.
Appellants next advance an argument that the Examiner's use of the
expression "within their four comers," in explaining the disclosures of Wei,
Hellmuth, and Swanson, is not a proper standard for an obviousness
rejections. Appeal Br. 13. We understand that expression to have been used
in lieu of a statement that the references explicitly teach that which the
Examiner proffers, and not as any sort of substitute for an obviousness
standard. Appellant also asserts that "Wei, Hellmuth, and Swanson, all use
fiber optics with an OCT imaging apparatus, not to deliver an
interferometric measurement beam that is used in a computer (digital)
comparison." Id. at 13-14. The Examiner responds that these references all
teach interferometry, and, "of necessity teach applying a measurement beam
and generating a standard beam, with which the measurement beam coming
back from the sample is caused to interfere (hence the nomenclature
'interferometry')," as well as teaching transporting the beams by optical
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fibers. Ans. 11 (including citations to relevant portions of the references).
The Examiner has the better position here, and Appellant's argument does
not apprise us of error.
Appellant additionally contests all of the obviousness rejections made
against all claims on the basis that a decision of the Board of Patent Appeals
and Interferences in an appeal decided prior to the issuance of the patent for
which reissue is here sought, is controlling here as "law of the case" Appeal
Br. 14. Appellant maintains that the "holding" in that prior decision is that
"one skilled in the pertinent art would not have been led to combine the
'disparate' Nishizawa semiconductor teaching with corneal surgery
reference teachings." Id.
In the prior appeal, claims were rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of the L 'Esperance and Nishizawa
patents, which are again relied on here in several of the rejections on appeal.
The portion of the prior Board decision, which is asserted to be binding in
this appeal, is as follows:
[a]s for the two references which were properly applied in
support of the rejection, the appellant's position that the disparate
teachings of L'Esperance and Nishizawa would not have
suggested the combination proposed by the examiner is well
taken. In short, even if the Nishizawa reference is deemed to be
analogous art (the appellant urges that it is not), there is nothing
in its disclosure of the use of interferometry to evaluate
semiconductors which would have motivated one of ordinary
skill in the art to utilize same in the corneal surgery device and
method disclosed by L 'Esperance. The mere fact that the prior
art could be so modified would not have made the modification
obvious unless the prior art would have suggested the desirability
of the modification. In re Gordon, 733 F .2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984). The fair teachings of L'Esperance
and Nishizawa afford no such suggestion.
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Ex parte Freedman, Appeal No. 1997-3942, slip op. at 6-7 (BPAI May 15,
2001).
The authority cited by Appellant for the proposition that this prior
Board decision is binding on us in this appeal is not persuasive. The prior
Board decision addressed only the propriety of combining the teachings
of the two references, finding no "motivation"2 in Nishizawa to utilize the
interferometry techniques disclosed therein in the corneal surgery device
and method of L 'Esperance, and that the teachings of those references do not
afford a suggestion of the desirability of the modification resulting from the
combination of teachings. However, in the rejections currently before us,
each of Wei, Hellmuth, and Swanson forms part of the grounds of rejection,
with the teachings of those references each being combined with the
teachings ofNishizawa and L'Esperance. In addition, there are three
separate rejections in which the Sklar reference is relied on instead of the
L 'Esperance reference.
Each of Wei and Hellmuth discloses the use of optical coherence
tomography (OCT), which the references disclose as being based on
principles of interferometry (see Freedman, col. 2, 11. 7-9; col. 7, 11. 15-18),
to obtain data directed to the size and shape of a cornea, to be used in order
to perform medical procedures, such as refractive surgery. (See, e.g., Wei,
col. 3, 11. 34--45; Hellmuth, col. 1, 11. 12-17; col. 2, 11. 3-8; col. 2, 1. 66-col.
3, 1. 2). Swanson discloses the use of optical coherence domain
reflectometry (OCDR) based on principles of interferometry to produce
2 The Supreme Court's intervening decision in KSR Int 'l. Co. v. Teleflex
Inc., 550 U.S. 398 (2007), rejected a rigid and mandatory application of the
teaching, suggestion, motivation (TSM) test applied by the prior panel.
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Application 11/220,303
cross-sectional images of biological specimens, in particular, eye sections.
(Swanson, col. 4, 11. 59---63; col. 5, 11. 41--47; col. 8, 11. 13-23). Thus, while
the L'Esperance and Nishizawa references considered by the panel in the
prior appeal contained no evidence of the use of interferometry techniques
such as those disclosed in Nishizawa in connection with obtaining data
regarding the size and shape of a cornea - the type of data needed to perform
the laser eye surgery procedure disclosed in L'Esperance- such evidence is
now before us. As such, we are not persuaded that the prior Board decision
is controlling in this appeal, nor is it law of the case.
The "law of the case" doctrine simply does not apply. Under this
doctrine, a court will generally adhere to a decision in a prior appeal in
the same case unless one of three exceptions exist: ( 1) the evidence in a
subsequent trial contains new and different material evidence; (2) there has
been an intervening change of controlling legal authority; or (3) the earlier
ruling was clearly erroneous and would work a manifest injustice.
Intergraph Corp. v. Intel Corp., 253 F.3d 695, 698 (Fed. Cir. 2001); Ormco
Corp. v. Align Tech., Inc., 498 F.3d 1307, 1319 (Fed. Cir. 2007); Gould, Inc.
v. United States, 67 F.3d 925, 930 (Fed. Cir. 1995). As noted in footnote 2,
the possibility exists that the prior panel decided the earlier appeal using
what would now be considered improper controlling legal authority.
Regardless, it is manifest that exception ( 1) above applies to the present
appeal, in that there is new evidence that is substantially different from the
evidence before the panel in the prior Board decision, and is material in the
context of the comb inability of references. As such, we are not persuaded
that the prior Board decision constitutes law of the case in this appeal.
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Appellant further argues that the combination of references is
improper because Nishizawa is nonanalogous art. Appeal Br. 15-17.
Appellant maintains that "[ o ]ne skilled in the pertinent laser eye surgery art
would not have been led to consider the disparate Nishizawa wave
transporting and penetrating coherent light interferometry teaching in view
of different OCT-based interferometry display techniques," in reference to
the Wei, Hellmuth, and Swanson references cited in the rejections. Id. at
15-16. The only statement made in support of this conclusory assertion is
that "the Wei, Hellmuth and Swanson OCT imaging techniques only permit
a surgeon[] to visually compare displays. Id. at 15.
The Examiner's rejections propose to modify either L'Esperance or
Sklar, in view of the knowledge in the art, as evidenced by those three
references, that interferometric techniques can be used in the imaging of the
eye, to employ the interferometry technique disclosed in Nishizawa. As
such, we fail to see the relevance of the ultimate usage of the images
produced by any of Wei, Hellmuth, and Swanson to the non-analogous art
issue.
Appellant also argues that "the PTO misconstrues the problem to be
solved by the Freedman invention," which is, according to Appellant, "to
devise an ablating plan based on a patient's own cornea - a customized
cornea ablation plan." Appeal Br. 16. Appellant asserts that "[t]he
Nishizawa evaluation of a regular crystalline thin film would not have
logically commended itself to an inventor's attention in considering the very
different, diverse, and 'dissimilar' cornea tissue evaluation to control laser
surgery." Id.
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The Examiner acknowledges that Appellant's proffered "problem to
be solved" is an aspect of Appellant's invention, but also points out that
other problems evidenced in Appellant's Specification include an alleged
inability of the prior art to accurately construct images of very small
structures, and the intrusiveness of certain methods or devices in obtaining
images or measurements. Final Act. 6-8. The Examiner discusses in detail
why Nishizawa would be seen as logically commending its interferometric
technique to the attention of Appellant or a person of ordinary skill in the art.
Id.
Appellant also maintains that the prior Board decision compels a
finding that Nishizawa is nonanalogous art. Appeal Br. 16-17. For the
reasons discussed above, we do not view the prior Board decision as holding
that Nishizawa's teachings would, under any circumstances, not be properly
combinable with any prior art directed to corneal surgery. The prior
decision was reached having solely the L 'Esperance and Nishizawa
references available as evidence.
Accordingly, Appellant's arguments as to Nishizawa being
nonanalogous art are not persuasive of Examiner error.
Appellant makes additional arguments in the Reply Brief, which
arguments, according to Appellant, are "in response to the new arguments of
the May 17, 2013 Examiner's Answer." Reply Br. 2. Although we view the
Examiner's Response to Arguments section of the Answer as providing
further elaboration as to why Appellant's arguments do not point to error,
and do not include any new substantive matter, out of an abundance of
caution, we herein address Appellant's Reply Brief arguments.
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Appellant expands upon the characterization of L 'Esperance
presented in the Appeal Brief, asserting that L'Esperance teaches a computer
that stores and displays information for the benefit of a surgeon, providing
numerous citations to the L'Esperance disclosure as well as quoting
passages from the Answer, but that L 'Esperance does not perform a
computer-constructed ablating plan according to a computer comparison of
the claimed data obtained by interferometry to a standard. Reply Br. 5-13.
When confronting the portions of L 'Esperance discussed above and the
Examiner's position with respect thereto, Appellant maintains that the
Examiner acknowledges that the L 'Esperance disclosure is only of a
"storage and display" system. Id. at 10. This mischaracterizes much of
what the quoted passages from the Examiner's Answer actually say.
Appellant, more than once, attempts to characterize a disclosure in
L 'Esperance of the data acquired from the eye enabling a computer to
suggest appropriate incisions for a surgery, as suggestions made "to the
surgeon by display." Reply Br. 11, 13. The Examiner's position is that, in
order for the computer to make incision suggestions, they would be arrived
at by calculations performed by the computer, and not input to the computer
by the surgeon, only to then be returned to the surgeon as "suggestions."
Ans. 6-7. The Examiner's position is supported by L'Esperance, which
states that after such suggestions are made, "the surgeon has the option to
accept the recommendation of the computer." L'Esperance, col. 7, 1. 68---col.
8, 1. 1. The only mention made in this discussion in L 'Esperance, at
columns 7-8, of merely displaying images and having the surgeon determine
the ablation plan from such displays is as an alternative approach to an
automated, computer-generated plan. See L'Esperance, col. 7, 11. 25-29
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("the digitized decisional data are directly utilizable for the modeling of
incisions ... or to provide automated directions for incision or ablative
sculpting").
We have considered all of Appellant's arguments directed to alleged
shortcomings in L'Esperance and find that they are against the weight of the
evidence.
Appellant, for the first time in the Reply Brief, attempts to address
alleged deficiencies within the Sklar reference. Reply Br. 13. Appellant
maintains that a position advanced by the Examiner with respect to Sklar
disclosing the computer generation of an ablating plan "is incorrect." Rather
than pointing out in what manner the statement is incorrect, Appellant states
that "[ e ]xamination has never shown or even alleged that the references
teach or suggest the recited 'patient-customized optical fiber interferometry
plan device' or the 'patient-customized optical fiber interferometry plan
method' claim limitations." Id. To the extent that those coined terms relate
to actual limitations set forth in the claims, they amount to nothing more
than a recitation of claim elements and a bald assertion that the claim
elements are not found in the prior art. Such arguments do not adequately
identify error in the Examiner's position relative to the Sklar reference. In
re Lovin, supra.
Appellant next argues that none of Wei, Hellmuth, and Swanson,
teach or suggest "the claimed computer comparison to derive the claimed
'patient-customized optical fiber interferometry plan device' or 'patient-
customized optical fiber interferometry plan method.'" Reply Br. 13. Not
only is this argument a restatement of shorthand claim language with a
naked assertion that the prior art lacks such features, it also only addresses
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these references individually, and not in combination with either
L 'Esperance or Sklar, as well as Nishizawa, which is the basis for the
rejections.
Appellant additionally argues that "[ e ]xamination has never pointed
out or alleged that the references teach or suggest 'an interferometer for
projecting a light beam by optical fiber' or 'applying a measurement beam
by optical fiber."' Reply Br. 15. This issue was addressed previously
herein, in addressing an argument made in the Appeal Brief, where we note
that the Examiner fully addresses the claim limitations at issue at page 11 of
the Final Action. The argument thus fails to apprise us of Examiner error.
Appellant again presents arguments directed to the alleged
impropriety of combining the teachings ofNishizawa with the other
references in rejecting the claims. Id. at 15-16. These arguments are not
persuasive, for the reasons noted above.
Each of rejections (i}-(vi) above is sustained as to claims 1, 2, 5-7,
10, 11, 19, 21, and 25.
DECISION
Each of the rejections of claims 1, 2, 5-7, 10, 11, 19, 21, and 25 under
35 U.S.C. § 103 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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