Ex Parte Freedman

Patent Trial and Appeal Board

Sep 24, 2012

11220299 (P.T.A.B. Sep. 24, 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.
11/220,299 09/07/2005 Philip D. Freedman pdfx0001A 4524
7590 09/24/2012
Philip D. Freedman PC
1449 Drake Lane
Lancaster, PA 17601
EXAMINER
YAO, SAMCHUAN CUA
ART UNIT PAPER NUMBER
3769
MAIL DATE DELIVERY MODE
09/24/2012 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PHILIP D. FREEDMAN
____________________

Appeal 2011-011067
Application 11/220,299
Technology Center 3700
____________________

Before JOHN C. KERINS, CHARLES N. GREENHUT and JAMES P.
CALVE, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
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Philip D. Freedman (Appellant) has filed a Request for Rehearing
(“Request”) under 37 C.F.R. § 41.52. The Request seeks reconsideration of
our Decision dated January 5, 2012 (“Decision”), affirming the rejections of
appealed claims 1, 2, 4, 5, 7, 9, 10, 19-21, 24 and 26-34 under 35 U.S.C.
§ 103(a). We have jurisdiction over the Request under 35 U.S.C. § 6(b).
Requests for Rehearing are limited to points that Appellant believes
have been misapprehended or overlooked by the Board. 37 C.F.R.
§ 41.52(a)(1). Appellant’s Request identifies four (4) categories of matters
which are alleged to have been misapprehended and/or overlooked in the
Decision. We address these in a slightly different order, starting with issues
related to general legal principles and progressing to issues related to
specific claims.

Request for Panel Recusal
Appellant, in an introductory section, requests that the present panel
recuse itself from this appeal. Request 1-2. Prior to the Request being filed,
Appellant also filed a Petition to Recuse the Board Panel, Withdraw the
Panel Decision and to Appoint an Expanded Panel, dated February 7, 2012,
requesting the same relief. That petition was denied in a Decision on
Petition dated May 21, 2012.

Prior Decision on Appeal as Controlling/Law of the Case-Subpart (3) of
Request
Appellant repeats contentions to the effect that the prior Board
decision in Ex parte Freedman (Appeal No. 1997-3942 (BPAI May 15,
2001)) is controlling here. Request 44-48. More specifically, Appellant
contends that we are bound to adopt the finding that
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there is nothing in [the Nishizawa (US 5,227,861, issued July
13, 1993)] 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 [(US 4,669,466, issued June
2, 1987)].
Id. at 44, Freedman, slip op. at 6. Appellant maintains that the prior
decision “is based on the premise that one skilled in the KSR1 ‘pertinent’ art
would not have been led to combine the ‘disparate’2 Nishizawa
semiconductor evaluation teaching with a corneal surgery reference
teaching.” Request 45.
We decline to accept Appellant’s overly broad view of the “premise”
of the prior Board decision. That decision was reached having solely the
L’Esperance and Nishizawa references available as evidence. We are
presented with a different body of evidence, including evidence that
addresses Appellant’s arguments from the prior appeal, resurrected in the
Request, regarding the difference between biological tissue and
semiconductor crystal material, to the effect that imaging or measuring of
biological tissue such as a cornea, using principles of interferometry was
known in the art.
As explained in the Decision, the presence of new and different
material evidence plainly precludes Appellant’s attempt to invoke the “law
of the case” doctrine. Most of the remaining arguments on this issue are

1 KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
2 Appellant finds it notable that, “[t]he ‘disparate’ wording is directly from
the Ex parte Freedman decision.” Request 45. In the full context of the
prior decision, it is clear that the Board was referring to Appellant’s own
characterization of Nishizawa, and was not itself making that
characterization. Freedman, slip op. at 6, “. . . the appellant’s position that
the disparate teachings of L’Esperance and Nishizawa . . .”.
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directed to explaining, based on the particular disclosures of the references
of record, why Nishizawa is still not properly combinable with L’Esperance
and the other references. These are addressed, infra. If anything, the
arguments highlight that the “law of the case” doctrine does not obtain here.
Appellant further asserts that we are bound, in view of the principle of
stare decisis, by the prior Board decision under our own procedures
involving Board-designated precedential decisions. Request 45-46. The
prior Board decision is, however, not one that is designated as “precedential”
under the Board’s Standard Operating Procedures. The argument is thus
unavailing. This is not to say that we simply ignored the prior Board
decision, nor do we believe that our Decision in this appeal is in conflict
with the prior decision, rather our Decision was based upon additional
evidence than was before that panel, and the assertions and arguments
presented by Appellant and the Examiner directed thereto.
We are not persuaded that we misapprehended or overlooked any
appellate review principles, as alleged by Appellant.

Alleged Misapprehension/Misapplication of Klein and KSR Principles-
Subparts (2) and (4) of Request
Appellant, in addition to urging that the prior Board decision, which
found Nishizawa to not be properly combinable with L’Esperance, be
followed, also maintains that the Decision overlooks the holding in In re
Klein, 647 F.3d 1343 (Fed. Cir. 2011), and misapprehends or misapplies
principles set forth in the KSR decision and Request 37-44, 48-50.
In subpart (2) of the Request, Appellant now attempts to further argue
that Nishizawa is not properly combinable with the remaining references
because all of the remaining references “relate to corneal surgery or corneal
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evaluation.” Request 38. Appellant attempts to bootstrap that
characterization to a purported paraphrasing of language employed in the
prior Board decision that “the ‘disparate’ semiconductor teaching of
Nishizawa is not properly combinable with corneal surgery or evaluation
references.” Id. The actual language of the prior Board decision is, “there is
nothing in [the Nishizawa] 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” of L’Esperance.
Freedman, slip op. at 6. Clearly, the prior panel was relying solely on
Nishizawa in reaching that conclusion. The additional references before us
(Wei, Hellmuth, Swanson) not only relate to corneal surgery and evaluation,
as acknowledged by Appellant, but also disclose using interferometric
techniques in those procedures.
Appellant further presents arguments to the effect that “slice by slice
OCT-based interferometry in corneal display teaches away from considering
the different Nishizawa interferometry on a cornea.” Request 39-40. This
argument fails to establish that we overlooked or misapprehended any points
that were argued on appeal. The argument simply was not made by
Appellant in the Appeal Brief or Reply Brief. “Arguments not raised in the
briefs before the Board . . . are not permitted in the request for rehearing
except as permitted by paragraphs (a)(2) and (a)(3) of this section.” 37
C.F.R. § 41.52(a)(1). Appellant has not shown good cause as to why this
new argument is entitled to consideration under 37 C.F.R. § 41.52(a)(2), and
37 C.F.R. § 41.52(a)(3), directed to new grounds of rejection, does not
apply.
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We are also not persuaded, even considering the new argument, that
the use of slice-by-slice OCT-based interferometry teaches away from use of
the technique disclosed in Nishizawa. Appellant has not shown where, in
the Wei, Hellmuth and Swanson references, there is any criticism,
discrediting or discouragement of using techniques of the type disclosed in
Nishizawa in a corneal surgery or evaluation context. See In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004); In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994).
Appellant, in attempting to clarify an argument made at page 15 of the
Appeal Brief, which was addressed at pages 11-12 of the Decision,
maintains that “OCT is an imaging technique that in of itself, is not
‘interferometry’,” and that “[t]he statement that OCT is the same type of
interferometry employed by Nishizawa et al. is a mischaracterization of the
Nishizawa reference.” Request 40-41. Appellant argues that this
mischaracterization is a basis on which the rejections should be overturned.
Request 41. The Decision does not rely on any such characterization, as
specifically pointed out at pages 9-10 of the Decision. See also Decision 10-
11, quoted at Request 40. We believe that this also addresses Appellant’s
argument that “OCT is not the claimed or the Nishizawa interferometry.”
Request 41.
Appellant, in subpart (4) of the Request, further argues that the
Decision misconstrues the problem to be solved by Appellant’s invention,
namely the devising of an ablating plan based on a patient’s own cornea, as
required by the holding in Klein. Request 43. Appellant maintains that the
Nishizawa reference would not have been looked to by the person of
ordinary skill in the art to solve this problem, due to its disclosure of
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evaluating layers of epitaxial crystal and not biological tissue, and that
Nishizawa is nonanalogous art. Request 43. The decision addressed the
“nonanalogous art” argument. Decision 8-9. That layers of biological tissue
may be very much different from layers of epitaxial crystal, as Appellant
argues (Request 43), the disclosures in Wei, Hellmuth and Swanson
evidence the use of interferometric techniques on biological tissue, and as
such the interferometric techniques of Nishizawa would have logically
commended themselves to a person of ordinary skill in the art faced with
Appellant’s problem. We are not persuaded that we failed to take into
account the problem addressed by Appellant, and thus are not persuaded that
there was a misapplication of any principle set forth in the Klein decision.
See Decision 8-9, 10-11.
In subpart (4) of the Request, much of the argument with respect to
the alleged misapplication of the principles in KSR is directed to a discussion
that the prior Board decision would have been decided the same way even in
view of the KSR decision, and that we must, for that reason, follow the prior
decision. Request 48-50. We never took the position that the earlier appeal
would have been decided differently--we did not and need not reach the
issue. Appellant makes too much of our observation, in discussing that
intervening precedent might be an additional reason why we would not be
bound to follow the prior Board decision, that the decision employed the
term “motivation” in determining the combinability of references. We are
not persuaded that we misapplied any principles set forth in the KSR
decision.

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Alleged Misapprehension of Legal Principles and Overlooking of Arguments
Directed to Prima Facie Obviousness of Claims--Subpart (1) of Request
We have carefully reviewed Appellant’s contentions set forth at pages
5-37, and are not persuaded that we misapprehended any legal principles
directed to establishing a prima facie case of obviousness, nor overlooked
any of Appellant’s arguments set forth in the Appeal Brief and Reply Brief.
Nor do we believe that the Decision mischaracterizes any of Appellant’s
arguments.
Appellant, in clarifying a prior argument (Appeal Br. 15), argues that
“the OCT imaging technique is not relevant to the claimed interferometry
coherent light ‘through the eye cornea’ detecting technique or device.”
Request 6. While the various references (Wei, Hellmuth, Swanson)
involving OCT imaging may or may not identically disclose the claimed
interferometry steps, they are relevant to imaging the eye. The argument
fails to persuade us of error in the rejections, which include the incorporation
of the teachings of the Nishizawa patent.
Appellant revisits an argument presented in the Reply Brief, stating
that “[t]he Examiner’s Answer . . . at length argues that Wei, Hellmuth and
Swanson ‘within their four corners’ teach claim 1.” Request 7. The
Decision noted that the Examiner had taken no such position. Decision 12.
A review of the Examiner’s Answer supports our position. The Answer uses
the term “within the four corners of the reference” only with respect to the
Wei reference, and then specifically states what is found within the Wei
reference, none of which is disputed by Appellant. Appeal Br. 21. The
Examiner has not maintained that those findings address all limitations of
the claims. We are not persuaded that we misapprehended anything in this
respect.
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Appellant next attempts to clarify that the position being taken is not
that no reference singly teaches the entire subject matter of claim 1, but
rather that the combined teachings do not teach or suggest the subject matter
of claims 1 and 19. Request 7. We have not misunderstood the argument--
Appellant has simply failed to point to specific error in the Examiner’s
findings underlying the conclusion that the subject matter of those claims
would have been obvious in view of the cited references.
Appellant next directs our attention to the fact that, while we correctly
pointed out that claim 1 does not include a “comparing” step, claims 26 and
27 do. Request 7. We direct Appellant’s attention to pages 18-21 of the
Decision, where claims 26 and 27, and the “comparing” limitation, are
specifically addressed.
Appellant maintains that the Decision, at page 14, indicates that we
did not understand Appellant’s Reply Brief arguments directed to
L’Esperance. Request 8. This mischaracterizes the statement in the
Decision, which was directed solely to the argument concerning the
automatic firing information not being derived. Decision 14. Appellant
attempts to clarify this argument at Request 9. The disclosure that the
L’Esperance device may employ user-entered data in one mode does not
address the further disclosure that the process may be done on a fully
automated basis. See, e.g., L’Esperance, col. 6, l. 63-col. 7, l. 10. We are
not persuaded that the Examiner erred in rejecting the claims, even in light
of this clarification.
The paragraph bridging pages 9 and 10 of the Request argues, in
effect, that Sklar does not teach or suggest the use of interferometry on a
cornea to conduct laser treating of the cornea. The argument presented in a
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section beginning at the bottom of page 13 and extending over to page 15 of
the Request is to the same effect. Sklar is not relied on, however, for
teaching or suggesting the use of interferometry. As such, this amounts to
nothing more than an individual attack on Sklar when the rejection is based
upon a combination of references.
Appellant further argues that Nishizawa “has nothing to do with an
interferometric ‘patient-customized surgery method’” and “nothing to do
with an interferometric ‘patient-customized laser surgery device’”. Request
11. Neither the Examiner nor we have ever taken the position that
Nishizawa alone involves surgery conducted on patients.
Appellant further appears to question what teachings of Nishizawa are
relied on in the rejection of claim 1 in the various combinations of
references. Request 11-12. The Decision makes clear how the references,
including Nishizawa, are relied on in reaching the conclusions as to
unpatentability of claim 1. Decision 10-11, citing to Ans. 5-6. Appellant
has apprised us of no error in the Examiner’s position in this respect.
Appellant maintains that the Decision did not respond to certain
arguments directed to alleged shortcomings of the L’Esperance reference.
Request 12-13. In the quoted passage from page 8 of the Reply Brief,
Appellant discusses several aspects of L’Esperance, and concludes by
repeating the bulk of the claim language appearing in claims 1 and 19,
stating that nowhere does L’Esperance teach or suggest, to paraphrase, using
the results of interferometry to have a computer generate electrical signals to
ablate the cornea and control laser treating of the cornea. As has been made
clear numerous times, L’Esperance is not relied on as teaching the use of
interferometry. Appellant has further not persuasively shown that the
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disclosure in L’Esperance (column 5, lines 29-41 and column 6, line 63 to
column 7, line 10) directed to operating the surgery automatically, fails to
disclose or render obvious using computer control to generate electrical
signals to ablate the cornea and control the laser treating of the cornea.
The arguments presented beginning near the middle of page 15 and
extending to the end of page 16 of the Request were previously presented in
the context of the alleged failure of Sklar to teach a “comparing step”. See
Reply Br. 9. The Request does not specify which claims these arguments
are now being directed to. The Decision addresses these arguments in the
section directed to claim 26, which introduced a comparison step to the
claimed invention. Decision 18-19. We are not persuaded that we
misapprehended Appellant’s Reply Brief arguments in any manner.
Turning to the arguments presented at pages 17-18 of the Request, to
the extent that the arguments include statements beyond recitations of claim
language preceded or followed by statements that Wei does not disclose
such limitations, the arguments were not previously made in the Appeal
Brief or Reply Brief, and are not permitted. 37 C.F.R. § 41.52(a)(1).
Notably, this section of the Request cites to nothing in the Decision other
than an observation that Appellant had made bald assertions as to the failure
of the Answer to anywhere address the language of claim 1. Decision 12,
citing to Reply Br. 7.
The arguments presented in the paragraph bridging pages 18 and 19,
and continuing to the top of page 20, to the extent that they are not new
arguments presented for the first time in the Request, are directed to the
alleged uncombinability of Nishizawa with the remaining references, and
arguments attacking individually the disclosure of Wei.
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The arguments directed to the Hellmuth reference, and the Hellmuth,
Wei and Swanson references, beginning on page 20 and extending to the
middle of page 22, to the extent that they are directed to anything other than
attacking the references individually, are new arguments presented for the
first time in the Request, and will not be entertained. It is significant to note
that the Decision is not once mentioned in this section, only the Answer is.
Appellant presents further arguments directed to L’Esperance
extending from the middle of page 22 to nearly the end of page 27 of the
Request. To the extent that these arguments were raised in either the Appeal
Brief or the Reply Brief, the arguments were addressed in the Decision, and
augmented by the discussion of L’Esperance supra. To the extent that any
portion or portions of these arguments were not addressed there, they are
new arguments presented for the first time in the Request, and do not point
out why we misapprehended any prior arguments made by Appellant.
Again, no reference is made to the Decision, only to the Answer.
Appellant presents further arguments directed to alleged shortcomings
of the various references, extending from the bottom of page 27 to the
middle of page 30 of the Request. To the extent that these arguments were
raised in either the Appeal Brief or the Reply Brief, the arguments were
addressed in the Decision, and augmented by the discussions supra. To the
extent that any portion or portions of these arguments were not addressed
there, they are new arguments presented for the first time in the Request, and
do not point out why we misapprehended any prior arguments made by
Appellant. Again, no reference is made to the Decision, only to the Answer.
Appellant next addresses purported arguments for the separate
patentability of dependent claims 4, 5, 7, 20, 21, 26, 27, 32 and 34. Request
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30-37. We stand by our position that, provided a rejection states a reason or
reasons for the rejection, together with information and references useful to
an applicant in judging the propriety of continuing prosecution, a mere
recitation of claim elements and a naked assertion that those elements are
not found in the prior art is insufficient to apprise us of error in the rejection.
See In re Jung, 637 F.3d 1356 (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); 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 than a
mere recitation of the claim elements and naked assertion that the
corresponding elements were not found in the prior art.”). The Examiner
provided exhaustive discussion as to the teachings of the references relied
upon, only to be met, in most instances, by naked assertions that claim
elements are not found in the prior art. To the extent that the arguments in
the Request go beyond that, and to the extent that the arguments are not
being presented for the first time in order to point out where the Decision
misapprehended a previous argument by Appellant, they will be addressed
below.
Regarding claims 4 and 5, Appellant maintains that the Reply Brief
responded to the substance of the Examiner’s Answer. Request 31-32. The
Reply Brief did indeed address one position taken by the Examiner, namely
that a broadest reasonable interpretation of claims 4 and 5 would encompass
the plan being constructed by a surgeon using a computer. Reply Br. 9-10.
As clearly explained in the Decision, we relied not on this position taken by
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the Examiner, but rather an alternative position set forth at pages 34-35 and
27-28 of the Answer. Decision 16. We are not persuaded that we
misapprehended Appellant’s argument with respect to these claims.
Regarding claim 7, Appellant’s arguments do not persuade us that we
misapprehended the argument presented at page 10 of the Reply Brief. The
Decision responded to the statement that Appellant “is unable to find any
argument [in the Examiner’s Answer] addressing dynamic monitoring,”
which is Appellant’s shorthand reference for the limitations in claim 7.
Decision 17-18. The portion of Appellant’s Reply Brief argument
identifying Wei and Hellmuth specifically is nothing more than a naked
assertion that the claim 7 elements are not taught or suggested by these
references. We are not persuaded that we misapprehended Appellant’s
arguments.
Appellant’s argument directed to claim 26 does not persuade us that
we misapprehended Appellant’s Reply Brief argument directed to Sklar.
Appellant has not identified any error in the discussion of Sklar appearing at
page 19 of the Decision.
Appellant’s argument directed to claim 27 is that “the references do
not teach or suggest ‘computer resident instructions’ as claimed in claim
27.” Request 33. Appellant acknowledges that “computer resident
instructions” are old or well known. Id. The Examiner, however, took the
position that computer resident instructions were inherently employed in the
computers in the references, relying on Appellant’s argument relative to a
different issue that computers, as of the time of Appellant’s invention,
inherently operated using computer resident instructions. We did not
misapprehend Appellant’s arguments directed to this claim.
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We did not misapprehend Appellant’s Reply Brief argument directed
to claim 28. Request 33. The Decision pointed out that Appellant did not
identify with any specificity any error in the Examiner’s findings at pages
42-43 of the Answer. Decision 21. In any event, Appellant’s argument was
directed only to Hellmuth, whereas the findings directed to Wei and
Swanson were completely uncontested.
Appellant has not shown that we misapprehended Appellant’s Appeal
Brief argument directed to claim 29. Request 34.
Appellant’s statement with respect to claim 19 does not appear to be
attempting to apprise us of any specific misapprehension of any argument.
Request 34.
Appellant’s arguments directed to claims 20 and 21 do not persuade
us that we misapprehended the argument presented at page 11 of the Reply
Brief. Request 34-35. At its essence, Appellant asserts that neither the
Decision nor the Examiner’s Answer point out teachings in the L’Esperance
and Sklar references that correspond to the claim limitations. Id.; Reply Br.
11. The Decision refers Appellant to the Examiner’s analysis directed to
claim 19, pages 26-28 of the Answer, as well as to our analysis directed to
claim 1. Decision 27. Those sections adequately identify what portion of
those references were relied on.
The Decision, at pages 27-28, addresses Appellant’s argument
directed to claim 31. Request 35-36. We are not persuaded that we
misapprehended Appellant’s prior argument.
Appellant argues, with respect to claims 32-34, that the Examiner
made no specific findings as to the limitations set forth in these claims, and
that we therefore misapprehended the pertinence of the Lovin and Frye cases
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to these rejections. Request 36-37. The Decision pointed to pages 55-58 of
the Answer as providing findings as to these claim limitations. Those
sections clearly advise that the findings and reasoning employed in rejecting
claim 29 (Ans. 44-45) also applied to the limitation in claim 32; those
employed in rejecting claim 28 (Ans. 41-43) also applied to claim 33; and
those employed in rejecting claim 30 (Ans. 46-47) also applied to claim 34.
To the extent that Appellant would argue that the claims are directed to two
different statutory classes of invention (method claims 28-30, device claims
32-34), we note that the limitations in the device claims are functional in
nature, with the functions corresponding nearly exactly to the method steps
set forth in the method claims. We are not persuaded that we
misapprehended any argument or state of the law relative to claims 32-34.

DECISION
We have carefully reviewed and considered Appellant’s Request for
Rehearing. We have granted the Request only to the extent that Appellant’s
arguments have been considered. The Request is denied with respect to
making any changes in the Decision.
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) (2007).

REQUEST DENIED

mls