Ex Parte Freedman

Board of Patent Appeals and Interferences

Dec 19, 2011

11220302 (B.P.A.I. Dec. 19, 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 12/20/2011
Philip D. Freedman PC
1449 Drake Lane
Lancaster, PA 17601
EXAMINER
SHAY, DAVID M
ART UNIT PAPER NUMBER
3769
MAIL DATE DELIVERY MODE
12/20/2011 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 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 November 3, 2011, affirming the rejections of appealed
claims 1, 2, 7, 9, 10, 19, 21, 26, 28-30 and 32-38 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 seven (7) points 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.

Prior Decision on Appeal as Controlling/Law of the Case
Appellant again contends that the prior Board decision in Ex parte
Freedman (Appeal No. 1997-3942 (BPAI May 15, 2001) is controlling here.
More specifically, Appellant contends that we are bound to adopt the finding
that “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)].” (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

1 KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
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‘disparate’2 Nishizawa semiconductor evaluation teaching with a corneal
surgery reference teaching.” (Request 5).
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. We also noted that the prior Board decision was
decided prior to the KSR decision, which, given the prior Board’s use of the
term “motivation”, could possibly be considered an intervening change of
controlling legal authority (Decision 6-7). We did not, as Appellant alleges
(Request 8), determine that the prior Board decision would have been
decided differently under the KSR controlling authority. Given the different
body of evidence before us, we did not reach that issue.
Most of the remaining arguments on this issue (several raised for the

2 Appellant finds it notable that, “[t]he ‘disparate’ wording is directly from
the Ex parte Freedman decision.” (Request 5-6). 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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first time) are 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 by the prior Board
decision under our own procedures involving Board-designated precedential
decisions. (Request 6, 9). 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.

Propriety of Combining Nishizawa with Other References
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 misapprehends or misapplies
principles set forth in the KSR decision. (Request 13-16). Appellant asserts
that the analysis set forth primarily at page 8 of the Decision, directed to
whether Nishizawa should be regarded as nonanalogous art, misconstrues
both law and fact. (Request 13). Appellant maintains that “the ‘pertinent’
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art--not the assumed ‘field’--is the claimed ‘treating biological tissue by
laser surgery’ . . . and ‘cornea’ ‘laser surgery device’.” (Id.).
Appellant appears to be arguing that the so-called “pertinent” art
available to be applied against the claims on appeal is limited to art directed
specifically to Appellant’s field of endeavor. The Decision correctly notes
that, in order for a reference to be nonanalogous art that is not properly
combinable, it must also not be “reasonably pertinent”. In re Oetiker, 977
F.2d 1443, 1447 (Fed. Cir. 1992). The Decision presents an analysis as to
why Nishizawa is deemed “reasonably pertinent”, Appellant simply
disagrees.
Appellant asserts that the Decision merely repeats, but does not adopt
or confirm, the Examiner’s reason for combining the references. (Request
13-14). Appellant appears to contend that this supports the argument that
“the rejections ‘provide no KSR [footnote omitted] logical reasoning to
combine to show teachings of the claim language’”. (Request 13).
Appellant’s sole challenge to the Examiner’s reason to combine (aside from
the above general denial statement) was that the Examiner erroneously
stated that the interferometry employed in the optical coherence tomography
(OCT) taught in the Wei (US 5,493,109, issued February 20, 1996),
Hellmuth (US 5,491,524, issued February 13, 1996) and Swanson (US
5,321,501, issued June 14, 1994) references was the same type of
interferometry employed by Nishizawa. (Reply Br. 5-6). We addressed this
argument specifically in the paragraph bridging pages 8 and 9 of the
Decision. Appellant did not, and in the Request does not, challenge the
Examiner’s contention that the combination of Nishizawa with the
remaining references would have been obvious in order to gather and
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process the data to yield more accurate data from the interferometric
imaging devices and methods of the other references, and, as such,
Appellant waived any argument as to the technical accuracy of the
Examiner’s reason. 37 C.F.R. § 41.37(c)(1)(vii).
Appellant now attempts to further argue that Nishizawa is not
properly combinable with the remaining references because “[a]ll references
relied upon by the Patent Office (except Nishizawa) relate to imaging
techniques and devices.” (Request 14). Additionally, Appellant argues that
“Wei, Hellmuth and Swanson do not teach or suggest interferometry; they
teach a visualization technique that may be a basis of an interferometric
technique that would be a different interferometry from the Nishizawa and
the ‘pertinent’ art of the claims that are interferometric measuring
techniques.” (Request 6; see also Request 7). These arguments fail to
establish that we overlooked or misapprehended any points that were argued
on appeal. The arguments simply were 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.
We are also not persuaded, even considering the new arguments and
assuming, arguendo, that Appellant’s assertions contained therein are true,
that Nishizawa is not properly combinable with the other references cited in
the rejections. Appellant has merely pointed out apparent “differences”,
without presenting evidence or argument as to how those differences would
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cause the person of ordinary skill in the art to not consider employing the
measuring technique taught in Nishizawa in characterizing a cornea for
refractive laser eye surgery.3
We are not persuaded that we misapprehended or overlooked any
arguments raised by Appellant regarding the combinability of Nishizawa
with the remaining references.

Burden Shifting Upon Establishment of Prima Facie Case of Unpatentability
Appellant contends that the Decision misapprehended and overlooked
statutory and case law authority requiring the USPTO to establish a prima
facie case of unpatentability, and improperly shifted the burden to Appellant
to provide persuasive evidence or argument in favor of patentability of the
claims. (Request 10-13, 16). We disagree.
The Examiner’s Answer and the Decision are consistent with our
reviewing Court’s recent reaffirmation that the procedural burden of
establishing a prima facie case of obviousness is met, in accordance with 35

3 Appellant did argue that “OCT is an imaging technique much like a
camera. OCT cannot measure the precise multi-layer aberrations of a cornea
in need of correction. One skilled in the art would not have been led to an
interferometric-based method or device by OCT teachings.” (Reply Br. 14).
We did consider this argument, albeit without specifically citing to that
portion of the Reply Brief, and found that the Wei, Hellmuth and Swanson
references evidenced that OCT was considered to be a viable technique for
imaging or obtaining size and shape data for a cornea, for use in laser eye
surgery. (Decision 10). This is consistent with Appellant’s own disclosure,
which treats OCT as a type of interferometry, and a type that is suitable for
use in laser eye surgery. (Compare, Freedman (US 6,454,761 B1, issued
September 24, 2002) claim 1, “by a process of interferometry”, with
dependent claim 3, “by a process of optical coherence tomography”; see
also, Freedman, col. 2, lines 7-13).
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U.S.C. §132, by stating reasons for a rejection together with information and
references as may be useful to applicant in judging the propriety of
continuing prosecution. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir.
2011). The Court in Jung also spoke approvingly of the Board's long-
standing practice of requiring an Appellant to identify the alleged error in an
examiner's rejection, with the panel then reviewing the rejection for error
based upon the issues identified by Appellant, and in light of the arguments
and evidence produced thereon. Jung, 637 F.3d at 1365-66 (citing to Ex
Parte Frye, 94 USPQ2d 1072 (BPAI 2010) (precedential).
Appellant excerpts language from pages 8 and 9 of the Decision in an
attempt to show that the burden was improperly shifted such that Appellant
was being called on to provide persuasive evidence or argument as to the
issues there decided. However, in the first instance, the Decision points to
evidence in the cited references and the reasoning that is relied on (and was
relied on by the Examiner) in finding that the teachings of Nishizawa would
have logically commended themselves to, and are reasonably pertinent to, a
person of ordinary skill in the art in the field of laser eye (refractive) surgery.
In the second instance, the Decision, with citations to the Examiner’s
Answer, is simply a refutation of Appellant’s unsubstantiated and general
assertion 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). Appellant maintains that
“it is not Appellant’s burden to substantiate” this, rather “it is the burden of
examination to provide these examination elements.” (Request 11). The
various grounds for rejection (including the Examiner’s Response to
Argument) fairly exhaustively identify the portions of the references relied
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on as meeting the limitations of the claims on appeal. In contrast, Appellant
has not here presented any specific arguments as to why the Examiner’s
position as to any of these limitations is in error, and simply ignores the
reason to combine presented by the Examiner, which is quoted in the
Decision.
Appellant presents arguments of a similar nature with respect to
portions of the Decision that are directed to the rejections of specific claims.
We believe that these analyses, when read as a whole, confirm that we
believe the Examiner has adequately established a prima facie case of
obviousness, i.e., that in each instance, the Examiner has stated reasons for
the rejection together with information and references that were useful to
Appellant in judging the propriety of continuing prosecution and in
formulating a substantive response, and sufficient to put Appellant on notice
of the reasons why he is not entitled to a patent. 35 U.S.C. § 132; Jung, 637
F.3d at 1365-66. As such, we believe that it was appropriate to note that
Appellant’s arguments were not persuasive as to the lack of a prima facie
case of obviousness, and that this did not improperly shift any burden to
Appellant. Similarly, we believe that it was appropriate in the circumstances
where Appellant merely recited language from the claims and baldly
asserted that the combination of references did not establish a prima facie
case of obviousness, to affirm the rejections on the basis that the statements
merely pointed out what the claims recite, and were not considered to be
arguments for separate patentability. In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011)(accepting the Board’s interpretation of 37 C.F.R.
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§ 41.37(c)(1)(vii) as requiring more substantive arguments in an appeal brief
than a mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art).
We are not persuaded that we misapprehended or overlooked the
requirement that the USPTO carries a procedural burden of establishing the
prima facie unpatentability of claims.
The remaining arguments appearing in this section of the Request are
directed to specific claims, the references applied in the rejections, and
Appellant’s contention that no prima facie case of obviousness has been
established with respect to those claims. These arguments are addressed,
infra.

Arguments Directed to Individual Claims/Groups of Claims
Appellant makes somewhat more specific arguments, at various
places in the Request, directed to matters which were allegedly
misapprehended or overlooked in the Decision. We address these below in
the order in which they appear in the Request.
(A) Independent Claim 19 and Dependent Claims 21 and 32-38
Appellant contends that he has “extensively argued that the claim
limitations of the claim 19 ‘patient-customized device’ are not taught or
suggested by . . .” the references applied in rejecting claim 19. (Request 4).
The Request criticizes the Decision as affirming the rejection of claim 19
and its dependent claims on the basis that “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.” (Request 4, quoting Decision 16). Appellant
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notes that claim 19, a device, and claim 1, a method, are not even in the
same category of invention, and invites a comparison of the arguments
presented at Appeal Brief 13-19 (claim 1 method) with those presented at
Appeal Brief 27-32 (claim 19 device) and “the differing discussion of
respective method and device limitations in the Reply Br. 6 to 14.” (Request
4).
Turning first to the arguments presented in the Reply Brief at pages 6
to 14, it is readily apparent that Appellant’s arguments directed to alleged
shortcomings of the teachings in the prior art are directed to both claims 1
and 19, with the only difference being that, in certain but not all instances,
Appellant highlights that claim 1 involves method steps, whereas claim 19
involves a controller comprising a computer which functions to perform
essentially the same method steps. See, e.g., Reply Br. 8 (“There is no
generation of an ablation plan as claimed in claim 1 and claim 19.”); and
Reply Br. 11 (“To any extent that the Examiner’s Answer argument is
intended to imply a teaching of the claimed ‘comparing’ step of claim 1 or
the interferometer or controller of claim 19, the argument is incorrect.”).
The same is essentially true of the arguments presented in the Appeal
Brief relative to claims 1 and 19. The underlying arguments as to the
alleged shortcomings of the prior art are basically the same, many being
verbatim, for claim 19 as they are for claim 1. The only difference is that
the arguments either end with, or are preceded by, a statement that the prior
art does not teach or suggest “the claimed patient-customized plan” (Appeal
Br. 14) or a “‘patient-customized plan’ computer” (Appeal Br. 28).
Appellant has not identified in the Request a single argument made for claim
19 that differs in any material respect from the arguments presented for
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claim 1.
Appellant concludes this challenge by baldly asserting that
“[e]xamination has not identified in the references any teaching or
suggestion [sic, of] the claimed ‘patient-customized procedure’ device claim
limitations” and that the Decision incorrectly refers back to the analysis of
the rejection of claim 1. (Request 4). Both the grounds for rejection and the
Examiner’s Response to Argument identify the use, by L’Esperance and
Sklar, of a computer adapted to and capable of carrying out the functional
limitations set forth in claim 19, including the limitations that Appellant
refers to as the “patient-customized plan device.” (Ans. 7, 9, 35-40).
We are not persuaded that we misapprehended or overlooked
Appellant’s arguments directed to the patentability of claims 19, 21 and 32-
38.
Appellant contends that the discussion on page 11 of the Decision,
directed to claim 1, in which we noted that one of Appellant’s arguments
(Appeal Br. 15-16, 18; Reply Br. 11) amounted to nothing more than an
individual attack on the L’Esperance reference, overlooked Appellant’s
argument that “none of the references teaches or suggests ‘a comparison or
detection of a phase difference,’ or a device that ‘detects’ a reflected
coherent light . . .”. (Request 11). We have carefully reviewed both the
cited portions of the Appeal Brief and Reply Brief, as well as both briefs as a
whole, and nowhere do we see the argument that Appellant now, belatedly,
appears to be making, to the effect that “none” of the references teaches or
suggests the claim limitations at issue. The arguments are specifically
directed to the L’Esperance disclosure. As such we are not persuaded that
the Decision overlooked or misapprehended such an argument.
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In the paragraph bridging pages 11 and 12 of the Request, Appellant
again argues, with respect to claim 29, that the burden has been improperly
shifted to Appellant in a situation where the Examiner had allegedly not
shown where the references were alleged to teach or suggest the claim 29
limitations. The Decision at page 15 identified where the relevant findings
were in the Examiner’s Answer, and weighed that against Appellant’s
blanket denial that the references teach or suggest that which the Examiner
relied on. The Decision did not overlook or misapprehend Appellant’s
argument, it simply did not afford it sufficient weight to overcome the
Examiner’s prima facie case of obviousness.
Appellant challenges the affirmance of the rejection of claims 29, 30,
32, 33 and 34 on the basis that it was improper to invoke 37 C.F.R.
§ 41.37(c)(1)(vii) in view of the “arguments” which simply repeated
language from the claims, together with an assertion that no prima facie case
of obviousness was established. (Request 12-13). Appellant maintains that
this mischaracterizes the argument, and that the argument was instead “that
examination has not met its burden to establish a prima facie case of
obviousness required prerequisite to a 35 U.S.C. § 103(a) obviousness
rejection”. (Request 12). Appellant states that, in order to make such an
argument, Appellant must identify the additional limitations presented in the
claims. We agree that it is appropriate to identify the additional limitations,
but it is also necessary to identify the alleged error in the Examiner's
rejection, i.e., to identify with some degree of specificity why the additional
claim limitations as found by the Examiner (see, e.g., Answer 45-50) would
not have been obvious in view of the cited references. Frye, 94 USPQ2d at
1075 (“An appellant may attempt to overcome an examiner's obviousness
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rejection on appeal to the Board by submitting arguments and/or evidence to
show that the examiner made an error in either (1) an underlying finding of
fact upon which the final conclusion of obviousness was based, or (2) the
reasoning used to reach the legal conclusion of obviousness.”).
The arguments beginning at page 16 of the Request (section (5)), and
extending through the first full paragraph of page 18 appear to be nothing
more than restatements of arguments previously presented by Appellant
relative to claim 1 and the dependent claims grouped with claim 1,
interspersed with excerpts from the Decision. Of note, Appellant states that
the Decision “acknowledges that L’Esperance does not teach or suggest the
claimed patient-customized procedure”.4 (Request 17). It is unclear to us
the significance of this acknowledgement, in that, as has been repeatedly
pointed out to Appellant, the rejection is based on a combination of the
teachings of several references, even though the claimed invention is not
identically disclosed in any single one of the references.
The first full paragraph on page 18 of the Request contains a new
argument directed to the Examiner’s finding (Answer 30-31) that, in the
Sklar reference, the ending diopter power parameter corresponds to the
“standard of improved acuity” set forth in independent claims 1 and 19.
Appellant argues, for the first time, that “the diopter power comes from an
‘estimate’ from observed keratometer cross section readings of a patient’s
untreated eye” or from a surgeon using a look-up format list to select an
ending power. (Request 18). Appellant further argues that “a surgeon
selecting an ‘ending power’ (and applying that power)” is not the claim 1

4 “Patient-customized procedure” does not appear in the claims, it is
Appellant’s shorthand reference to the process set forth in claim 1.
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limitation calling for using a processor to compare the representation of the
actual cornea with a standard of improved acuity. (Id.). These arguments do
not establish that the Decision misapprehended or overlooked arguments
raised by Appellant, in that the arguments are presented for the first time in
the Request. Furthermore, as to the former argument, we fail to see how this
establishes that the Examiner erred in finding that a selected ending diopter
power would not represent a standard of improved acuity. If the ending
diopter power were not to provide improved acuity, the surgery would
seemingly be counterproductive. As to the latter point, we do not
understand what “applying [a] power”, which appears to suggest applying
the laser power in surgery, has to do with the ending “diopter power” of the
cornea undergoing surgery.
In the paragraph bridging pages 18 and 19 of the Request, Appellant
takes issue with the use of the term “impliedly” in the Decision, in
discussing the operation of the Sklar system. Appellant maintains that the
correct standard is whether the claimed ablation plan would have been
obvious. (Request 18). We do not disagree with the latter point, but that is
not in conflict with the language of the Decision. The Examiner found that
the ablation plan in Sklar would employ the selected ending diopter power
as the reference point (the standard of improved acuity) against which the
actual measured diopter power would be compared, albeit Sklar did not
expressly use the term “ablation plan”. As such, the Decision was, in effect,
supporting the Examiner’s finding that this particular aspect of the claims is
disclosed in Sklar. (Decision 13). Appellant’s further arguments that “Sklar
does not teach or suggest ‘directing a reflected coherent light beam into an
eye’” (Request 18), and the further claim limitations involved in processing
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the reflected coherent light, fail, once again, to take into account that the
rejection combines the teachings of Nishizawa, as well as each of Wei,
Hellmuth and Swanson, with Sklar, and that at least Nishizawa brings to the
combination the use of directing a coherent beam of light to a target of
interest, and using reflected coherent light to characterize the target. (See,
e.g., discussion of Nishizawa, Answer 7-8; 9-10; 11-12).
Appellant additionally maintains that the “[e]xamination and the
Decision never point out, where teachings or suggestions of the ‘patient-
customized procedure’ claim limitations appear in any of [the cited
references’] teachings”, and thus no matter how the references are
combined, “there is no teaching or suggestion of ‘detecting a reflected
[coherent] light that passes through the cornea and using a processor to
compare . . . [the detected] cornea with . . . a standard of improved acuity to
generate an ablation plan.’” (Request 19). Again, this argument appears to
simply ignore the teachings of Nishizawa in combination with the other
references, the Examiner’s findings with respect to the teachings of
Nishizawa and the other references, and the Examiner’s combination of the
teachings of Nishizawa with the other references cited in the rejections. See
Decision 11-16.
We are not persuaded that we overlooked or misapprehended any
arguments presented with respect to independent claim 1 and dependent
claims 2, 7, 9, 10 and 28-30 grouped therewith.
Appellant further argues, for the first time, that the Examiner and the
Board have not pointed out where the claim 26 limitations appear in the
references. (Request 20). The Examiner presented his findings in this
respect at page 44 of the Answer, to the effect that the computers in
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L’Esperance and Sklar convert signals to electrical signals for processing.
The remaining limitations in claim 26 are covered in the rejections of claim
1. Appellant asserted in the Reply Brief, and reasserts in the Request, that
the computers in L’Esperance and Sklar are merely display devices.
(Request 20). Appellant also maintained in the Reply Brief that those
devices have no plan computational capability and are incapable of
generating an ablation plan as claimed. (Reply Br. 15). The decision
addressed these arguments at pages 14-15, as well as at page 18, in the
analysis of the rejection of claim 34. We have not misapprehended or
overlooked any arguments presented with respect to claim 26.
Appellant argues that the “persistent argument” presented with respect
to claim 29, that the references “do not teach or suggest compared signals”,
was overlooked or misapprehended. (Request 21). Claim 29 does not add a
limitation directed to comparing signals, rather, it further limits what the
“electrical signal representing the improved acuity” is to be.5 The findings
presented by the Examiner regarding the comparing of signals can be found
in the rejections of claim 1. (See, e.g., Answer 29-30). Appellant again
argues that the “[e]xamination and the Decision do not point out in the
references where purported teachings or suggestions of the claim 29
limitations appear.” (Request 21). The Examiner addresses claim 29 in
detail at page 45 of the Answer, and Appellant has failed to identify any
particular inadequacy in the Examiner’s findings and conclusions.
Appellant maintains that we misapprehended or overlooked

5 Given that claim 29 depends from claim 1, and that claim 1 provides no
antecedent basis for an “electrical signal”, it appears that claim 29 would
more appropriately be dependent on claim 26.
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arguments made relative to claim 30. (Request 22-23). As pointed out by
the Examiner (Answer 46), Appellant’s argument for claim 30 at page 26 of
the Appeal Brief purports to quote limitations from the claim which are not
actually present in claim 30. Notwithstanding, the Examiner elaborated on
the findings and reasoning directed to the limitations that actually are present
in claim 30. (Ans. 46-47). Appellant did not present arguments directed to
claim 30 in the Reply Brief.
Appellant, in the Request, instead quotes from an argument presented
in the Reply Brief relative to claim 34, which sets forth a limitation similar
to that found in claim 30, albeit with claim 30 being directed to a method,
whereas claim 34 is directed to a device. The Decision addressed this
argument, and found it to be unpersuasive in overcoming the Examiner’s
prima facie case of obviousness. (Decision 18). Nothing in the Request
persuades us that Appellant’s argument was misapprehended.
Appellant maintains, with respect to claims 32 and 33, that the
Examiner, and our Decision, overlooked Appellant’s argument that a prima
facie case of obviousness was not established with respect to the claim
limitation calling for “a computer having a set of resident instructions to
compare the electrical signal representing the detected cornea with an
electrical signal representing a standard of improved acuity for the cornea
and to define an ablation plan”. (Request 24-25). Appellant now maintains
that the Examiner’s findings do not point out where in the references these
limitations are taught or suggested.
While the Decision referred to only page 49 of the Examiner’s
Answer, the findings directed to claims 1 and 19 relative to the disclosure in
L’Esperance and Sklar of the use of a computer, and the ability of the
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computer to control the performance of the refractive laser eye surgery
pertain to claims 32 and 33 as well. In addition, the functional limitations in
device claim 32 quoted above are similar to those presented in method claim
26, and thus those findings pertain to claim 32 as well. We believe that the
Examiner has met his burden of establishing a prima facie case of
obviousness with respect to claims 32 and 33, and Appellant’s arguments,
which merely recite language quoted from the claims, were not overlooked
or misapprehended.
Appellant maintains that the Examiner erred in concluding that claim
34 is not patentable for the same reasons as claim 30, because the limitations
in claim 30 are method limitations, whereas the limitations in claim 34 are
device limitations. (Request 26-27). Claim 34, however, simply adds to the
device and controller set forth in independent claim 19 from which it
depends, the functional (i.e., non-structural) limitation, “wherein the
controller determines displacement characteristics . . .”. This is effectively a
recitation that the controller is configured to be capable of carrying out the
method step in claim 30. Tellingly, Appellant himself has, in the Request,
borrowed the previously-advanced arguments for patentability directed to
device claim 34 (Reply Br. 17), and now presented them in arguing for the
patentability of method claim 30 (Request 23). The Examiner’s findings
directed to claim 30 are adequate to establish a prima facie case of
obviousness as to claim 34, and we do not find error in the Examiner’s
statement that “claim 34 is not patentable for the same reasons as claim 30.”
(Ans. 50).
Appellant states, in response to the language used in the affirmance of
the rejection of claim 34, that the claim “has nothing to do with ‘automatic
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operation.’” (Request 28, in reference to Decision 18). The Decision quoted
language from L’Esperance which referenced “automated operation” and
used the term in characterizing the Sklar disclosure in response to
Appellant’s argument that “L’Esperance Module D is a CAD/CAM and
display, . . . , not a computer with computational capability to ‘determine
displacement characteristics for an incision that is cut into the [patient’s]
cornea.’” (Reply Br. 17). The Decision details the reasons why
L’Esperance, as well as Sklar, are deemed to meet the claim 34 limitation
calling for a controller (thus, automated operation) that is configured to
determine the incision displacement characteristics.
We have not misapprehended or overlooked Appellant’s arguments
directed to claim 34.
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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 to affirm the rejections of the appealed
claims under 35 U.S.C. § 103(a).
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

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