Ex Parte Freedman

Board of Patent Appeals and Interferences

Nov 2, 2011

11220302 (B.P.A.I. Nov. 2, 2011)

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.
11/220,302 09/07/2005 Philip D. Freedman pdfx0001D 4521
25101 7590 11/03/2011
Philip D. Freedman PC
1449 Drake Lane
Lancaster, PA 17601
EXAMINER
SHAY, DAVID M
ART UNIT PAPER NUMBER
3769
MAIL DATE DELIVERY MODE
11/03/2011 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 PHILIP D. FREEDMAN

____________

Appeal 2011-011485
Application 11/220,302
Technology Center 3700
____________

Before WILLIAM F. PATE, III, JOHN C. KERINS and JAMES P. CALVE,
Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL

Appeal 2011-011485
Application 11/220,302

2
STATEMENT OF THE CASE
Philip D. Freedman (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 1, 2, 7, 9, 10, 19, 21, 26,
28-30, and 32-38, the only claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b) (2002). An oral hearing was conducted
on October 25, 2011.
We AFFIRM.
THE INVENTION
Appellant’s claimed invention is directed to a method and a device for
performing laser surgery on biological tissue, particularly on a cornea.
Claim 1, reproduced below, is illustrative of the claimed subject matter1:
1. A method of treating biological tissue by laser
surgery, comprising detecting a limit or location of
surface or mass of [biological tissue] a cornea by a
process of interferometry comprising: directing a
coherent light beam into an eye; detecting a
reflected coherent light that passes through the
cornea of the eye; using a processor to compare a
representation of the cornea according to the
reflected coherent light with a representation of a
standard of improved acuity to generate an
ablation plan; and controlling [the] laser treating
[of said biological tissue] by ablating the cornea
according to the [detected limit or location of
surface or mass] ablation plan.

1 This application from which this appeal is taken is an application for
reissue of US 6,454,761 B1, issued September 24, 2002. (hereafter
“Freedman”). The bracketing and underlining in claim 1 as presented herein
illustrate the amendments made to original patent claim 1 to the present form
for consideration on appeal.
Appeal 2011-011485
Application 11/220,302

3
THE REJECTIONS
The Examiner has rejected all of claims 1, 2, 7, 9, 10, 19, 21, 26, 28-
30, and 32-38 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 withdrew, on appeal, rejections of various groups of
claims under 35 U.S.C. §112, first paragraph (written description
requirement), under 35 U.S.C. § 112, second paragraph (indefiniteness), and
under 35 U.S.C. § 251 (new matter and impermissible broadening of
claims). (Ans. 4-5).
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
11/220,303, each in view of Nishizawa. Appellant has not traversed the
merits of these rejections. Nonetheless, since the rejections are provisional
and no patent has issued from any of the applications, we conclude that it is
Appeal 2011-011485
Application 11/220,302

4
premature for this Board to address the rejections, and thus to do not reach
the issues presented by the rejections. See Ex parte Moncla, 95 USPQ2d
1884 (BPAI 2010).

ISSUES
Did the Examiner establish that the teachings of the Nishizawa patent
are properly combinable with the teachings of the other references employed
in each of the grounds of rejection under 35 U.S.C. § 103(a)?
Did the Examiner err in concluding that the subject matter of the
claims would have been obvious over the combinations of teachings set forth
in each of the grounds of rejection?

ANALYSIS
Appellant contests all of the obviousness rejections made against all
claims on the basis that, “[t]he ‘disparate’ semiconductor teaching of
Nishizawa is not properly combinable with corneal surgery or evaluation
references.” (Appeal Br. 12; Reply Br. 3). Appellant maintains that the
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 (Appeal Br. 13), and that the rejections “must be withdrawn
as decided by” the Board in the prior appeal Ex parte Freedman2. (Appeal
Br. 12). Appellant further contends that “[t]he combinations issue was

2 (Appeal No. 1997-3942, decided May 15, 2001, in application 08/380,639,
now US 6,454,761 B1, issued Sep. 24, 2002; copy of decision of record in
this appeal)(decision hereafter referred to as the “prior Board decision”).
Appeal 2011-011485
Application 11/220,302

5
decided in Ex parte Freedman”, and that the prior Board decision is law of
the case. (Reply Br. 3, 6).
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 controlling in
this appeal, or is law of the case, 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.
Ex parte Freedman, slip op. at 6-7.
Appellant cites no authority for the proposition that this prior Board
decision is “controlling”. That decision addressed only the propriety of

Appeal 2011-011485
Application 11/220,302

6
combining the teachings of the two references, finding no “motivation”3 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 of Nishizawa 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, and Appellant
acknowledges, is based on principles of interferometry (see Freedman, col.
2, ll. 7-9; col. 7, ll. 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, ll. 34-45; Hellmuth, col. 1, ll. 12-17; col. 2,
ll. 3-8 and col. 2, l. 66-col. 3, l. 2). Swanson discloses the use of optical
coherence domain reflectometry (OCDR) based on principles of
interferometry to produce cross-sectional images of biological specimens, in
particular eye sections. (Swanson, col. 4, ll. 59-63; col. 5, ll. 41-47; col. 8,
ll. 13-23). Thus, while the L’Esperance and Nishizawa references
considered by the panel in the prior appeal contained no evidence of the use

3 Given the Supreme Court’s intervening decision in KSR Int’l. Co. v.
Teleflex Inc., 550 U.S. 398 (2007), which rejected a rigid and mandatory
application of the teaching, suggestion, motivation (TSM) test as
incompatible with its precedents, the prior panel’s insistence on there being
evidence of “motivation” seemingly applied what is no longer good law.
Appeal 2011-011485
Application 11/220,302

7
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.
For the same reasons, the “law of the case” doctrine 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 (Fed. Cir. 2007); Gould, Inc. v.
United States, 67 F.3d 925, 930 (Fed. Cir. 1995). As noted in footnote 1, the
possibility exists that the prior panel decided the earlier appeal using what is
no longer would now be considered improper controlling legal authority.
However, 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 combinability of references. As such, we are not persuaded
that the prior Board decision constitutes law of the case in this appeal.
Appellant further argues that the combination of references is
improper because, “[t]he Nishizawa semiconductor evaluation is not within
the ‘pertinent’ art [footnote referencing KSR decision omitted] of any of the
Wei, Hellmuth, Swanson, Sklar ‘426 or L’Esperance ‘466 corneal surgery or
corneal evaluation art.” (Appeal Br. 13). In the same vein, Appellant refers
Appeal 2011-011485
Application 11/220,302

8
to the teachings of Nishizawa as being “disparate” from, and not properly
combinable with, the references directed to corneal surgery or corneal
evaluation. (Appeal Br. 12; Reply Br. 3). These arguments appear to assert
that Nishizawa is nonanalogous art.
A reference is nonanalogous art if the reference is both: not in the
field of the applicant's endeavor and not reasonably pertinent to the problem
with which the inventor was concerned. See In re Oetiker, 977 F.2d 1443,
1447 (Fed. Cir. 1992). Our reviewing court has further counseled that a
reference is reasonably pertinent if, even though in a different field from that
of the inventor's endeavor, it is one which, because of the matter with which
it deals, logically would have commended itself to an inventor's attention in
considering his problem. In re Icon Health & Fitness, Inc., 496 F.3d 1374,
1379-80 (Fed. Cir. 2007). Here, even assuming that the field of Appellant’s
endeavor is narrowly viewed as the field of laser eye (refractive) surgery, the
Wei, Hellmuth and Swanson references evidence that interferometric
techniques may be used to obtain size and shape data regarding the cornea to
be used in medical procedures including laser refractive surgery. As such,
the interferometric techniques disclosed in Nishizawa would, at a minimum,
have logically commended themselves to one of ordinary skill in the field of
Appellant’s endeavor. Appellant has presented no persuasive evidence or
argument to the contrary.
We note that our decision does not rely on the Examiner’s apparently
erroneous assertion that OCT is “the same type of interferometry employed
by Nishizawa et al. . . .”. (Ans. 22). OCT is based on principles of
interferometry (see, e.g., Freedman, col. 2, ll. 7-9; Wei, col. 2, ll. 44-46),
which in Wei, for example, is used to obtain corneal thickness and
Appeal 2011-011485
Application 11/220,302

9
topography data (Wei, col. 3, ll. 39-45) and Nishizawa discloses particular
interferometry techniques for determining the thicknesses and boundaries of
layers of thin films. (Nishizawa, col. 3, ll. 25-27). In the absence of
evidence or reasonably specific arguments to the contrary, we conclude that
a person of ordinary skill in the art would find the teachings of Nishizawa
reasonably pertinent to obtaining corneal measurement or imaging data.
Appellant also asserts, without providing any substantiation, that
“[t]he rejections do not identify the claim limitations and provide no KSR
[footnote omitted] logical reasoning to combine to show teachings of the
claim language.” (Appeal Br. 17). The Examiner’s Answer, however,
identifies the claim limitations and the portions of the references relied on in
meeting those limitations, and each ground of rejection includes the reason
or reasons to combine the teachings, in the Examiner’s view. (See Ans. 7-
18). The Examiner’s reason for combining the device and method of
Nishizawa with the other references to gather and process the data to yield
more accurate data from the interferometric imaging devices and methods of
those other references is supported by a rational underpinning. See KSR Int’l
Co. v. Teleflex Inc., 417 (2007) (“[I]f a technique has been used to improve
one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.”).
Having decided that the Examiner did not err in combining the
teachings of Nishizawa with those of Wei, Hellmuth, Swanson, L’Esperance
and Sklar, we now focus on Appellant’s contentions that the various
proposed combinations do not establish the prima facie obviousness of the
claims.
Appeal 2011-011485
Application 11/220,302

10

Claims 1, 2, 9, 10 and 28
Appellant argues for the patentability of claims 1, 2, 9, 10 and 28 as a
group. We will take claim 1 as representative of that group. Appellant
further addresses all six rejection permutations under the main heading for
these claims, with various arguments directed to alleged shortcomings of the
various references.
Appellant states generally that the combined teachings of the
references do not establish a prima facie case of obviousness. (Appeal Br.
13). Appellant first attempts to discredit OCT as a technique that can be
used to image or obtain size and shape data for a cornea. Appellant argues
that:
OCT employs near-infrared light. The use of
relatively long wavelength light allows penetration
into a scattering medium such as the eye retina.
The mechanism has little relevance to the claimed
cornea deflected coherent light that passes through
the cornea.
(Appeal Br. 14).
None of this appears to be substantiated by evidence, and to the extent
that these statements are intended to stand for the proposition that OCT is
not a viable technique for imaging or obtaining size and shape data for a
cornea, they are against the great weight of evidence of record, in the form
of the Wei, Hellmuth and Swanson references.
Appellant contends that none of the references, discussing in
particular the L’Esperance and Sklar references, teach the claimed step of
“using a processor to compare a representation of the cornea according to
Appeal 2011-011485
Application 11/220,302

11
the reflected coherent light with a representation of a standard of improved
acuity to generate an ablation plan; and controlling laser treating by ablating
the cornea according to the ablation plan.” (Appeal Br. 14). At several
places in both the Appeal Brief and Reply Brief (see, e.g., Appeal Br. 15,
Reply Br. 10), Appellant maintains that L’Esperance and Sklar have been
mischaracterized. Below, the specific reasons advanced by Appellant in this
respect will be addressed.
Appellant argues that L’Esperance does not teach or suggest “a
comparison or detection of a phase difference”, nor a device that “detects ‘a
reflected coherent light that passes through the cornea of the eye’ and detects
‘a phase difference of said [interference beam] reflected coherent light phase
difference.’” (Appeal Br. 15-16, 18; Reply Br. 11). The Examiner does not,
however, rely on L’Esperance as teaching or suggesting those limitations.
Rather, the Examiner finds those limitations in the teachings of Wei,
Hellmuth, Swanson and Nishizawa. (Ans. 29-30). As such, this argument is
nothing more than an individual attack on the L’Esperance reference,
whereas the rejection is based on a combination of L’Esperance with those
additional references. The argument is thus not persuasive as to the lack of a
prima facie case of obviousness.
Appellant further contends, with respect to the disclosure in
L’Esperance of automated operation of the refractive surgery via Module G,
that the “automatic firing information is not derived. It is available from an
input of the ‘axial length of the eye determined by A-scan ultrasonography .
. . age and sex of the patient, intraocular pressure of the eye . . . . refractive
condition desired,’ etc, (col. 5, lines 41 to 55).” (Appeal Br. 15; Reply Br.
11). It is not clear at the outset of what significance it is, if true, that the
Appeal 2011-011485
Application 11/220,302

12
automated firing information is “not derived”. In any event, as noted by the
Examiner, that the standard of improved acuity in L’Esperance may be
established taking into consideration the input of such data, does not serve to
distinguish the claimed invention from L’Esperance, as claim 1 does not
recite any details as to how the standard of improved acuity is obtained.
(Ans. 37).
The above being the only arguments presented in any detail directed
to the rejections of claim 1 over any of Wei, Hellmuth and Swanson in view
of L’Esperance and Nishizawa, the rejections will be sustained. The
rejections of claims 2, 9, 10 and 28 grouped with claim 1 will also be
sustained.
Appellant’s principal argument directed against the grounds of
rejection that include Sklar in place of L’Esperance is that Sklar does not
teach the generation of an ablation plan as claimed. More specifically, that
[t]he Sklar ‘426 template is never a plan or
iterative steps that are a result of a comparison
between the patient’s eye and a standard of
improved acuity. The template is only “a
prestored program of steps that represent”
“ophthalmic surgery directed to a particular type of
correction,” Sklar ‘426 col. 3, lines 66 to 68. The
steps directed by the surgeon “draws on a bank of
prior experience and knowledge,” Sklar ‘426, col.
3, lines 63 to 65. See also Sklar ‘426 col. 4, lines
57 to 65; “a library of such templates . . .
developed a priori and via accumulating
experience, and the ability to modify these
templates to fit particular requirements of a given
situation,” (emphasis added). The “automatically
controlling” (Sklar ‘426 col. 3, line 61) is
according to a template of a prior experience, not a
plan from a comparison of the patient’s eye.
Appeal 2011-011485
Application 11/220,302

13
(Appeal Br. 16; Reply Br. 9).
Sklar discloses the use of a template, which may be an existing
template, a modified existing template, or a new template, to automatically
control the path of the firing of the laser in ophthalmic surgery. (Sklar, col.
14, ll. 17-22). Sklar also teaches that other surgical parameters must be
determined in addition to the path of firing, including the laser pulse power
level or repetition rate, as well as the beginning and ending diopter power of
the corneal lens. (Sklar, col. 13, ll. 64-67). The Examiner found that the
standard of improved acuity is the ending diopter power parameter in the
Sklar process. (Ans. 30-31). Impliedly, the ablation plan would be
generated via a comparison of the ending diopter power to a beginning
diopter power obtained by the representation of the cornea obtained from the
imaging of the cornea. Appellant has not argued that the ending diopter
power process parameter does not meet the limitation calling for a standard
of improved acuity to be compared to a representation of the patient’s
cornea.
The rejections of claim 1, and those of claims 2, 9, 10 and 28 grouped
with claim 1, over any of Wei, Hellmuth and Swanson in view of
L’Esperance and Nishizawa will be sustained.
Claim 7
Appellant presents claim 7 under a separate heading. (Appeal Br. 21).
Appellant argues that claim 7 is patentable based on its dependency from
claim 1, and additionally quotes language from the claim, and asserts that
the combination of references does not establish a prima facie case of
obviousness of the quoted limitations. Statements which merely point out
what a claim recites are not considered to be arguments for separate
Appeal 2011-011485
Application 11/220,302

14
patentability of a claim. 37 C.F.R. §41.37(c)(1)(vii). Appellant further
argues that the grounds of rejection do not include any findings that any of
the references teach or suggest the limitations of claim 7.
The Examiner’s Answer sets forth in detail the findings that support
the rejections of claim 7. (Ans. 41-43). Appellant does not assign error to
these findings or the ultimate conclusion of obviousness which follows those
findings. The rejections of claim 7 will be sustained. See In re Jung, 637
F.3d 1356, 1362 (Fed. Cir. 2011)(procedural burden of establishing prima
facie case of obviousness met by stating reasons for rejection together with
information and references as may be useful to applicant in judging
propriety of continuing prosecution).
Claim 26
Appellant presents claim 26 under a separate heading. (Appeal Br.
22). Appellant argues that claim 26 is patentable based on its dependency
from claim 1, and additionally quotes language from the claim, and asserts
that the combination of references does not establish a prima facie case of
obviousness of the quoted limitations. Statements which merely point out
what a claim recites are not considered to be arguments for separate
patentability of a claim. 37 C.F.R. §41.37(c)(1)(vii).
The Examiner’s Answer sets forth in detail the findings that support
the rejections of claim 26. (Ans. 44). Appellant asserts, in the Reply Brief,
that “[t]he L’Esperance ‘466 and Sklar ‘426 devices have no plan
computational capability. The computers are incapable of ‘generating an
ablation plan according to computer resident instructions comprising
comparing the electrical signal representing the [patient’s] cornea with an
Appeal 2011-011485
Application 11/220,302

15
electrical signal representing a standard of improved acuity for the cornea . .
. .’” (Reply Br. 15).
Given that, in both L’Esperance and Sklar, a computer or processor is
used to automatically perform a refractive correction surgery procedure
based on data related to the size and shape of the cornea, we are not
persuaded, without having evidence to the contrary, that the computers in
L’Esperance and Sklar lack the capabilities asserted by Appellant. The
rejections of claim 26 will be sustained.
Claim 29
Appellant presents claim 29 under a separate heading. (Appeal Br.
24-25). Appellant argues that claim 29 is patentable based on its
dependency from claim 1, and additionally quotes language from the claim,
and asserts that the combination of references does not establish a prima
facie case of obviousness of the quoted limitations. Statements which
merely point out what a claim recites are not considered to be arguments for
separate patentability of a claim. 37 C.F.R. §41.37(c)(1)(vii).
The Examiner’s Answer sets forth in detail the findings that support
the rejections of claim 29. (Ans. 30-31, 45). Appellant replies that
L’Esperance and Sklar do not teach or suggest compared signals, or that
electrical signal representing improved acuity is “‘an electrical signal
representing a limit or location of a surface or mass of improved acuity for
the cornea of the eye.’” (Reply Br. 16). We find that the Examiner has the
better position here, in presenting specific findings, while Appellant simply
denies that the teachings exist in the references without explanation. The
rejections of claim 29 will be sustained.
Appeal 2011-011485
Application 11/220,302

16
Claim 30
Appellant presents claim 30 under a separate heading. (Appeal Br.
25-26). Appellant argues that claim 30 is patentable based on its
dependency from claim 1, and additionally quotes language from the claim,
and asserts that the combination of references does not establish a prima
facie case of obviousness of the quoted limitations. Statements which
merely point out what a claim recites are not considered to be arguments for
separate patentability of a claim. 37 C.F.R. §41.37(c)(1)(vii).
The Examiner’s Answer sets forth in detail the findings that support
the rejections of claim 30. (Ans. 46). Appellant does not assign error to
these findings or the ultimate conclusion of obviousness which follows those
findings. The rejections of claim 30 will be sustained.
Claims 19, 21 and 35-38
Appellant presents claims 19, 21 and 35-38 under a separate heading.
(Appeal Br. 25-26).4 Appellant presents essentially the same arguments as
are presented for the patentability of claim 1. For the reasons set forth above
in the analysis of claim 1, the rejections of these claims will be sustained
Claims 32 and 33
Appellant presents claims 32 and 33 under a separate heading.
(Appeal Br. 33). Appellant argues that claims 32 and 33 are patentable
based on their dependency from claim 19, and additionally quotes language
from the claim, asserting that the combination of references does not
establish a prima facie case of obviousness of the quoted limitations.

4 The heading includes claims 32 and 33, however, Appellant presents those
claims under a further separate heading. (Appeal Br. 33). Those claims will
thus not be treated as being grouped with claim 19.
Appeal 2011-011485
Application 11/220,302

17
Statements which merely point out what a claim recites are not considered to
be arguments for separate patentability of a claim. 37 C.F.R.
§41.37(c)(1)(vii).
The Examiner’s Answer sets forth in detail the findings that support
the rejections of claims 32 and 33. (Ans. 49). Appellant responds that
L’Esperance and Sklar do not teach or suggest the claimed computer having
the claimed set of instructions to “compare the electrical signal of
representing the detected cornea with an electrical signal representing a
standard of improved acuity for the cornea and to define an ablation plan”.
(Reply Br. 16). Again, Appellant’s argument is in the nature of simply
repeating what the claims recite, without pointing out what the alleged error
in the Examiner’s position is. The rejections of claims 32 and 33 will be
sustained.
Claim 34
Appellant presents claim 34 under a separate heading. (Appeal Br.
36). Appellant argues that claim 34 is patentable based on its dependency
from claim 19, and additionally quotes language from the claim, asserting
that the combination of references does not establish a prima facie case of
obviousness of the quoted limitations. Statements which merely point out
what a claim recites are not considered to be arguments for separate
patentability of a claim. 37 C.F.R. §41.37(c)(1)(vii).
Appellant also asserts that it was improper to base the rejection of
claim 34, which depends from claim 19, on the basis that since the
combination of references was found to read on claim 19, then the
combination would also read on claim 34. (Appeal Br. 36). In response, the
Examiner takes the position that, since claim 34 contains the same limitation
Appeal 2011-011485
Application 11/220,302

18
as does claim 30 (which depends from claim 1), the rationale for the
rejection of claim 30 applies equally to claim 34. (Ans. 50; Ans. 46-47).
Appellant seizes on an apparent typographical error in L’Esperance ,
repeated in the Examiner’s reasoning directed to claim 30, in which the
Examiner refers to Module D in L’Esperance as a computer, rather than as a
CAD/CAM display. Appellant argues that Module D of L’Esperance does
not have the computational capability to determine displacement
characteristics for an incision. Even if true, this does not change the fact that
L’Esperance discloses that its system is designed for “automated operation
of laser-incisional/sculpting displacements” (L’Esperance, col. 7, ll. 5-6),
and enables the L’Esperance computer to “suggest the appropriate length
and depth of radial keratotomy incisions”, or “any combination of all of the
incisional refractive surgical procedures” then available. (L’Esperance, col.
7, ll. 58-63).
Appellant’s arguments with respect to Sklar fail to take into account
that the Sklar system, once a template is selected along with other
operational parameters (Sklar, col. 13, ll. 62-67), may be operated
automatically.
The rejections of claim 34 will be sustained.

CONCLUSIONS
The Examiner established that the teachings of the Nishizawa patent
are properly combinable with the teachings of the other references employed
in each of the grounds of rejection under 35 U.S.C. § 103(a).
Appeal 2011-011485
Application 11/220,302

19
The Examiner did not err in concluding that the subject matter of the
claims would have been obvious over the combinations of teachings set forth
in each of the grounds of rejection.

DECISION
The decision of the Examiner to reject claims 1, 2, 7, 9, 10, 19, 21, 26,
28-30, and 32-38 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)(1)(iv).

AFFIRMED

mls