Ex Parte Freedman

Board of Patent Appeals and Interferences

Dec 27, 2011

11220300 (B.P.A.I. Dec. 27, 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.
11/220,300 09/07/2005 Philip D. Freedman pdfx0001E 4525
7590 12/28/2011
Philip D. Freedman PC
1449 Drake Lane
Lancaster, PA 17601
EXAMINER
SHAY, DAVID M
ART UNIT PAPER NUMBER
3769
MAIL DATE DELIVERY MODE
12/28/2011 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 2010-008456
Application 11/220,300
Technology Center 3700
____________

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

KERINS, Administrative Patent Judge.
DECISION ON APPEAL

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STATEMENT OF THE CASE
Philip D. Freedman (Appellant) seeks our review under 35 U.S.C.
§ 134 of twice-rejected claims 1, 2, 5-7, 12, 17-19, 21 and 24-31. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
We AFFIRM.
THE INVENTION
Appellant’s claimed invention is directed to a method and a device for
performing laser surgery on biological tissue, particularly on a cornea.
Claim 1, reproduced below, is illustrative of the claimed subject matter1:
1. A method of treating [biological tissue] a
cornea by laser surgery, comprising detecting a
limit or location of surface or mass of [biological
tissue] a cornea by a process of interferometry
comprising projecting a coherent light beam to a
beam splitter to split the beam into a measurement
beam and a reference beam; directing the
measurement beam onto the surface or mass of the
cornea and directing the reference beam onto a
reference target; combining a reflected
measurement beam reflected from the surface or
mass of the cornea with a reflected reference beam
reflected from the reference target; evaluating a
phase difference between the reflected
measurement beam and the reflected reference
beam that represents the surface or mass of the
cornea; and controlling the laser [treating] ablating
of [said biological tissue] the surface or mass of
the cornea according to an ablating plan

1 The 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.
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constructed according to the [detected] evaluated
phase difference representing the limit or location
of surface or mass of the cornea.

THE REJECTIONS
The Examiner has rejected all of claims 1, 2, 5-7, 12, 17-19, 21 and
24-31 under 35 U.S.C. § 103(a) as being unpatentable over:
(i) Wei (US 5,493,109, issued February 20, 1996) in view of
L’Esperance (US 4,669,466, issued June 2, 1987)and Nishizawa (US
5,227,861, issued July 13, 1993);
(ii) Wei in view of Sklar (US 5,098,426, issued March 24, 1992) and
Nishizawa;
(iii) Hellmuth (US 5,491,524, issued February 13, 1996) in view of
L’Esperance and Nishizawa;
(iv) Hellmuth in view of Sklar and Nishizawa;
(v) Swanson (US 5,321,501, issued June 14, 1994) in view of
L’Esperance and Nishizawa; and
(vi) Swanson in view of Sklar and Nishizawa.
The Examiner has also rejected, in a new ground of rejection set forth
in the Examiner’s Answer, claims 29 and 31 under 35 U.S.C. § 251 as being
based upon new matter added to the patent for which reissue is sought.
These claims were also previously and continue to be rejected under 35
U.S.C. §112, first paragraph, as failing to comply with the written
description requirement.
The Examiner has further rejected, in a new ground of rejection set
forth in the Examiner’s Answer, claims 5, 17, 19, 21, 24, 25 and 28-31 under
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35 U.S.C. § 251 as being broadened in a reissue application filed outside the
two year statutory period.
The Examiner withdrew, on appeal, a rejection of claims 29 and 31
under 35 U.S.C. § 112, second paragraph (indefiniteness).
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, 11/220,301, 11/220,302 and
11/220,303, each in view of Nishizawa. Appellant has not traversed the
merits of these rejections, and the Examiner has thus treated the rejections as
not under review on appeal. (Ans. 3). Since the rejections are provisional
and no patent has issued from any of the applications, we conclude that it is
premature for the Board to address the rejections, and thus 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?
Did the Examiner err in rejecting claims 29 and 31 as containing new
matter and failing to meet the written description requirement?
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Did the Examiner err in rejecting claims 5, 17, 19, 21, 24, 25 and 28-
31 as being broader than any claim in the original Freedman patent?

ANALYSIS
I. REJECTIONS UNDER 35 U.S.C. § 103
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 references.”
(Reply Br. 11, 17; see Appeal Br. 15). Appellant also 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
binding here as law of the case, res judicata, estoppel, or “as persuasive to
the current appeal.” (Appeal Br. 15).
In the prior appeal, claims were rejected under 35 U.S.C. §103(a) as
unpatentable over the combination of the L’Esperance and Nishizawa
patents, which are again relied on here in several of the rejections on appeal.
The portion of the prior Board decision which is asserted to be binding in
this appeal, is as follows:
[a]s for the two references which were properly
applied in support of the rejection, the appellant’s
position that the disparate teachings of
L’Esperance and Nishizawa would not have
suggested the combination proposed by the
examiner is well taken. In short, even if the
Nishizawa reference is deemed to be analogous art
(the appellant urges that it is not), there is nothing
in its disclosure of the use of interferometry to
evaluate semiconductors which would have
motivated one of ordinary skill in the art to utilize
same in the corneal surgery device and method
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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, Appeal No. 1997-3942, slip op. at 6-7 (BPAI May 15,
2001).
The authority cited by Appellant for the proposition that this prior
Board decision is binding on us in this appeal is not persuasive. The prior
Board decision addressed only the propriety of combining the teachings of
the two references, finding no “motivation”2 in Nishizawa to utilize the
interferometry techniques disclosed therein in the corneal surgery device and
method of L’Esperance, and that the teachings of those references do not
afford a suggestion of the desirability of the modification resulting from the
combination of teachings. However, in the rejections currently before us,
each of Wei, Hellmuth and Swanson forms part of the grounds of rejection,
with the teachings of those references each being combined with the
teachings 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 The Supreme Court’s intervening decision in KSR Int’l. Co. v. Teleflex
Inc., 550 U.S. 398 (2007), rejected a rigid and mandatory application of the
teaching, suggestion, motivation (TSM) test applied by the prior panel.
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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
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 binding on us in this appeal, whether as law
of the case, res judicata, or estoppel.
The “law of the case” doctrine simply does not apply. Under this
doctrine, a court will generally adhere to a decision in a prior appeal in the
same case unless one of three exceptions exist: (1) the evidence in a
subsequent trial contains new and different material evidence; (2) there has
been an intervening change of controlling legal authority; or (3) the earlier
ruling was clearly erroneous and would work a manifest injustice.
Intergraph Corp. v. Intel Corp., 253 F.3d 695, 698 (Fed. Cir. 2001); Ormco
Corp. v. Align Tech., Inc., 498 F.3d 1307, 1319 (Fed. Cir. 2007); Gould, Inc.
v. United States, 67 F.3d 925, 930 (Fed. Cir. 1995). As noted in footnote 2,
the possibility exists that the prior panel decided the earlier appeal using
what would now be considered improper controlling legal authority.
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Regardless, it is manifest that exception (1) above applies to the present
appeal, in that there is new evidence that is substantially different from the
evidence before the panel in the prior Board decision, and is material in the
context of the combinability of references. As such, we are not persuaded
that the prior Board decision constitutes law of the case in this appeal.
The weight of authority is that res judicata does not apply to the
USPTO. See In re Borkowski, 505 F.2d 713 (CCPA 1974). The policy and
purpose of the patent laws preclude the applicability of any doctrine akin to
the judicially-developed doctrine of “res judicata” to bar the granting of
patents on inventions that comply with the statute. In re Craig, 411 F.2d
1333 (CCPA 1969); In re Russell, 439 F.2d 1228, 1230 (CCPA 1971). The
same policy and purpose preclude an applicant’s reliance on any such
doctrine to force the granting of patents on inventions that do not comply
with the statute. In this vein, the CCPA counseled that:
It is the duty of the Patent Office to satisfy
itself in the first instance that the statutory
requirements pertaining to the obtaining of patents
have been met. We are aware of no authority, and
appellants cite none, which precludes the Patent
Office from retaining jurisdiction in the
prosecution of applications and correcting what it
considers to be mistakes in its decisions, until the
time for judicial review has expired or a patent has
issued.
In re Schmidt, 377 F.2d 639, 642 (CCPA 1966)(sustaining Board's right to
grant an Examiner's request for reconsideration and thereafter to reverse its
decision favorable to an applicant).
The doctrine of res judicata is particularly inapplicable in cases, such
as the one before us, where the issues of patentability, in particular, the
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evidentiary bases for the rejections of the claims, are different than they
were in the prior Board decision. Cf. Russell, 439 F.2d at 1230. In deciding
that the references employed by the Examiner in rejecting the claims are
properly combinable, we are not in any way correcting what we believe to
be a mistake in the prior Board decision, rather, we are taking a decision on
the basis of additional and collectively different evidence than presented in
the prior appeal.
Similarly, while Appellant has not elaborated on his position that
some unspecified form of estoppel, based on the prior Board decision,
obtains here, the issue as to whether the references are properly combinable
is significantly different than it was in the prior appeal. The Wei, Hellmuth
and Swanson references place the use of measuring or imaging techniques
based upon principles of interferometry within the field of obtaining data
pertaining to the eye and cornea for use in medical procedures including
refractive surgery. The prior Board decision was based on a record in which
such evidence was not present, or was treated as not being present. As such,
we fail to see how some form of estoppel would preclude us from deciding
that Nishizawa is properly combinable with those references, as well as with
L’Esperance and Sklar.
Appellant further argues that the combination of references is
improper because, “[t]he Nishizawa semiconductor evaluation is not within
the ‘pertinent’ art.” (Reply Br. 12). In the same vein, Appellant refers 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. 15; Reply Br. 11-12). These arguments appear to
assert that Nishizawa is nonanalogous art.
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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, and we thus 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 that “[t]he Examiner’s Answer does not provide
a reason why a three reference combination rejection makes a difference.
(Reply Br. 12). We disagree. Much of the analysis presented by the
Examiner at pages 29-32 of the Answer is directed to this issue in particular.
We have above noted, as did the Examiner in greater detail, that the Wei,
Hellmuth and Swanson references evidence that interferometric techniques
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may be used to obtain size and shape data regarding the cornea to be used in
medical procedures including laser refractive surgery.
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 next focus on Appellant’s contentions that the various
proposed combinations do not establish the prima facie obviousness of the
claims.
Claims 1, 2, 5- 7, 12, 17, 18, 26 and 27—Obviousness
Appellant argues for the patentability of claims 1, 2, 5-7, 12, 17, 18
and 26 as a group. (Appeal Br. 15-17). We will take claim 1 as
representative of this group, and claims 2, 5-7, 12, 17, 18 and 26 will stand
or fall with claim 1 for the § 103 rejections. Appellant, in the Reply Brief,
presents claim 27 under a separate heading, therefore claim 27 will be
separately addressed.
In the Appeal Brief, Appellant argues that the non-final Office Action3
from which this appeal was taken “only articulates an omnibus rejection of
[all pending claims].” (Appeal Br. 16). Appellant further argues that
“‘according to an ablating plan’ is the patentability imparting limitation that
Appellant incorporated into claim 1”. (Id.). We are uncertain what
Appellant means by “omnibus rejection”. In any event, the grounds of
rejection set forth in the Examiner’s Answer, together with responses to
Appellant’s arguments, identify with adequate specificity the claim
limitations and the portions of the references relied on as teaching or
suggesting those claim limitations. The Examiner’s Answer, as well as the
non-final Office Action, contain findings directed to the claim limitation

3 Office Action dated June 29, 2007.
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calling for controlling a laser ablating of the cornea “according to an
ablating plan”. (Ans. 9-20, 26-27, 33; Ofc. Action 3-4).
The Reply Brief refers to the language in claim 1 starting with
“projecting a coherent light beam to a beam splitter” and ending with “and
controlling the laser ablating”, by the term “split beam interferometry”.
(Reply Br. 13). Appellant contends that the references do not teach or
suggest a split beam interferometry-based method of cornea treating. (Id.).
More specifically, in response to the Examiner’s position that Nishizawa
discloses the claimed split beam interferometry, Appellant argues that “the
Nishizawa disclosure is not a teaching or suggestion of a split beam
interferometry-based cornea treating method.” (Id.). Nishizawa, however,
discloses several embodiments that employ the splitting of a beam for use in
an interferometric measuring technique. (Nishizawa, Figs. 2, 7, 9; col. 2, ll.
9-12). Nishizawa admittedly does not disclose the use of these techniques in
treatment of a cornea, however, when combined with L’Esperance or Sklar,
the techniques would be employed in the treatment of a cornea. As such, the
argument is not persuasive, as it fails to address the combination of
teachings employed in rejecting claim 1.
The Reply Brief further maintains that the references do not establish
a prima facie case of obviousness of the claimed invention. (Reply Br. 14).
Specifically, Appellant criticizes the rejections as identifying bits and pieces
of multiple reference disclosures that are purported to be teachings of the
claimed invention steps, and maintains that “the bits and pieces fail to teach
or suggest the claimed iterative steps.” (Reply Br. 13-14). Alternatively,
Appellant contends that the rejections fail to address a “reason to combine”
required in view of the decision in KSR. (Reply Br. 14).
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The latter contention is not supported by the record. At each of pages
10, 12, 14, 16, 18 and 20 of the Examiner’s Answer, a “reason to combine”
the teachings is set forth. The former contention is so lacking in specificity
that we are unable to afford it any weight. The Examiner’s Answer presents
detailed findings as to what teachings from the references are regarded as
meeting the claim limitations, together with a rationale for combining the
teachings, thus establishing a prima facie case of obviousness. See In re
Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011)(prima facie case is established
by stating reasons for a rejection together with information and references as
may be useful to applicant in judging the propriety of continuing
prosecution). 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).
The rejection of claim 1, and of claims 2, 5-7, 12, 17, 18 and 26
grouped therewith, under 35 U.S.C. §103(a) will be sustained.
Appellant’s separate argument for patentability of claim 27 is nothing
more than a recitation of the claim language, a coining of the term “custom
cornea plan” to refer to the claim language, and an assertion that “[t]he
references do not make out a prima facie case of obviousness of the claim 27
custom cornea plan.” (Reply Br. 16). The Examiner presented findings
directed to the claimed generation of an electrical signal as well as the rest of
the limitations in claim 27, and thus, contrary to Appellant’s assertion, did
establish a prima facie case of obviousness with respect to claim 27. (Ans.
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26, 33). The rejection of claim 27 under 35 U.S.C. §103(a) will be
sustained.
Claims 19, 21, 24 25 and 28-31
Appellant argues for the patentability of claims 19, 21, 24, 25, and 28-
30 as a group. (Appeal Br. 13-15). We will take claim 19 as representative
of this group, and the remaining claims in the group will stand or fall with
claim 19 for the § 103 rejections. Appellant, in the Reply Brief, presents
claim 31 under a separate heading, therefore claim 31 will be separately
addressed.
Appellant argues, in the Appeal Brief, that the non-final Office Action
does not contend that the cited references teach or suggest “a controller . . .
that compares said electrical signal to a standard, constructs an ablating plan
according to the comparison and that controls an output of applied laser
ablating beam . . . according to the ablating plan.” (Appeal Br. 13).
Notwithstanding that the Office Action appears to address this specific
limitation at pages 3 and 4 thereof, the Examiner’s Answer, both in the
grounds of rejection as well as in the Response to Argument, provides a
detailed discussion as to how these claim limitations are seen as being
disclosed in L’Esperance and Sklar. (Ans. 9-20, 25-27). This argument is
thus unpersuasive of nonobviousness.
The Appeal Brief also contends that the references do not establish a
prima facie case of obviousness of the claimed controller, but merely
restates claim language without identifying any alleged error in a finding of
fact or in the reasoning used in concluding that the claims would have been
obvious. (Appeal Br. 13). As noted above, the Examiner presented detailed
findings and provided an explicitly stated conclusion, therefore we are not
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persuaded by Appellant’s bald assertion as to the lack of a prima facie case
of obviousness. Frye, 94 USPQ2d at 1075 (“An appellant may attempt to
overcome an examiner's obviousness 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.”); see also, In re Lovin, 652 F.3d 1349
(Fed. Cir. 2011) (Board reasonably interpreted Rule 41.37 to require 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).
In contrast, the Examiner’s Answer presents detailed findings as to
what teachings from the references are regarded as meeting the claim
limitations, together with a rationale for combining the teachings, thus
establishing a prima facie case of obviousness. See In re Jung, 637 F.3d at
1362.
Appellant also argues that Nishizawa and Swanson are not properly
combinable with the other references directed to laser surgery procedures.
We have addressed the propriety of combining Nishizawa with those
references, supra. Appellant presents no arguments directed to why
Swanson is not properly combinable with L’Esperance or Sklar, and
Nishizawa.
The Reply Brief refers to the language in claim 19 starting with
“interferometer for projecting a coherent light beam to a beam splitter” and
ending with “from the reference target”, by the term “split beam
interferometer”. (Reply Br. 17). Appellant contends that the references do
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not teach or suggest a split beam interferometer-based laser surgery device.
(Reply Br. 17-18). More specifically, in response to the Examiner’s position
that Nishizawa discloses the claimed split beam interferometer, Appellant
argues that “the Nishizawa disclosure is not a teaching or suggestion of a
split beam interferometer-based cornea laser surgery device.” (Reply Br.
18). Nishizawa, however, discloses several embodiments that employ the
splitting of a beam for use in an interferometric measuring technique and
device. (Nishizawa, Figs. 2, 7, 9; col. 2, ll. 9-12). Nishizawa admittedly
does not disclose the use of these techniques in treatment of a cornea,
however, when combined with L’Esperance or Sklar, the techniques and
devices would be employed in the treatment of a cornea. As such, the
argument is not persuasive, as it fails to address the combination of
teachings employed in rejecting claim 19.
The Reply Brief further maintains that the references do not establish
a prima facie case of obviousness of the claimed invention. (Reply Br. 18).
Specifically, Appellant criticizes the rejections as identifying bits and pieces
of multiple reference disclosures that are purported to be teachings of the
claimed invention steps, and maintains that “the bits and pieces fail to teach
or suggest the claimed device.” (Id.). Alternatively, Appellant contends that
the rejections fail to address a “reason to combine” required in view of the
decision in KSR. (Id.).
The latter contention is not supported by the record. At each of pages
10, 12, 14, 16, 18 and 20 of the Examiner’s Answer, a “reason to combine”
the teachings is set forth. The former contention is so lacking in specificity
that we are unable to afford it any weight. As noted above, the Examiner’s
Answer presents detailed findings as to what teachings from the references
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are regarded as meeting the claim limitations, together with a rationale for
combining the teachings, thus establishing a prima facie case of
obviousness. See In re Jung, 637 F.3d at 1362.
The rejection of claim 19, and of claims 21, 24, 25 and 28-30 grouped
therewith, under 35 U.S.C. §103(a) will be sustained.
Appellant’s first separate argument for patentability of claim 31 is
nothing more than a recitation of the claim language, a coining of the term
“custom ablating plan” to refer to the claim language, and an assertion that
“[t]he applied references do not teach or suggest a controller that controls a
laser ablating beam according to a ‘custom ablating plan.’” (Reply Br. 21).
The Examiner presented findings directed to the provision of a controller
that is capable of and adapted to control a laser ablating beam, in accordance
with the rest of the limitations in claim 31 (Ans. 26-27), and this argument
does not point out any alleged error in the Examiner’s findings or conclusion
of obviousness.
Appellant’s second separate argument for claim 31 is that the
Examiner incorrectly found that Sklar teaches an ablating plan.4 (Reply Br.
21). The Examiner appears to agree that Sklar does not use that exact
terminology, but explains adequately and in detail what portions of the Sklar
reference were deemed to disclose this claim feature. (Ans. 25-27). See In
re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (a reference does not have
to satisfy an ipsissimis verbis test to disclose a claimed element).
Specifically, Appellant contends that:

4 No detailed argument for the separate patentability of claim 31 over the
combination of any of Wei, Hellmuth or Swanson, in view of L’Esperance
and Nishizawa, is presented.
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Sklar teaches (1) a control mechanism dependent
upon “templates” - steps of other surgeries, and
teaches (2) a different tracking mechanism that
compares a first representation of a patient’s eye
with a later displaced representation of the same
patient’s eye. Neither mechanism is a teaching or
suggestion of any of the quoted claim limitations
of the present claims. Sklar is an imaging
teaching: the invention claims a “controller
controls an output of an applied laser ablating
beam [remainder of claim quoted]”.
(Reply Br. 21).
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 ablation plan is 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. The template used by Sklar in a given laser surgery procedure
would be understood by persons of ordinary skill in the art to alter the
corneal lens from the beginning diopter power to the ending diopter power.
Appellant’s third argument for the separate patentability of claim 31 is
a general criticism that the rejection identifies bits and pieces of multiple
reference disclosures that are purported to be teachings of the claimed
invention steps, and maintains that “the bits and pieces fail to teach or
suggest the claimed structure.” (Reply Br. 21-22). Additionally, Appellant
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contends that the rejection fails to address a “reason to combine” required in
view of the decision in KSR. (Id.).
The latter contention is not supported by the record. At each of pages
10, 12, 14, 16, 18 and 20 of the Examiner’s Answer, a “reason to combine”
the teachings is set forth. The former contention is so lacking in specificity
that we are unable to afford it any weight. As noted above, the Examiner’s
Answer presents detailed findings as to what teachings from the references
are regarded as meeting the claim limitations, together with a rationale for
combining the teachings, thus establishing a prima facie case of
obviousness. See In re Jung, 637 F.3d at 1362.
The rejections of claim 31 under 35 U.S.C. § 103(a) will be sustained.

II. REJECTION UNDER 35 U.S.C. §§ 251 and 112, first paragraph
Claims 29 and 31 were rejected under 35 U.S.C. §251 as being based
on new matter added to the patent for which reissue is sought. Similarly, the
claims were rejected under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.5 The Examiner maintains,
for both claims, that the claim limitation directed to “a computer with
resident instructions” is added material not supported by the original
disclosure in the prior patent. (Ans. 5, 20). The language in claim 31

5 The Examiner’s Answer contains an obvious typographical error, citing to
claim 27 instead of claim 29 in the 35 U.S.C. § 112, first paragraph
rejection. (Ans. 8). The Examiner correctly refers to claim 29 in the 35
U.S.C. § 251 rejection, as well as in the Response to Argument section of
the Answer. (Ans. 5, 22-24). While Appellant has not contested these
rejections with respect to claim 29, we will, in view of the typographical
error, regard the arguments directed to claim 31 as also being directed to
claim 29, where pertinent.
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reciting “determining the plan according to the comparison and by detecting
ablating incision by the detector” is not supported by the original disclosure
in the prior patent. (Id.).
Determining whether a Specification provides written descriptive
support for a claim is a question of fact. In re Wertheim, 541 F.2d 257, 262
(CCPA 1976). The determination and level of detail required also varies
depending on the nature and scope of the claims and on the complexity and
predictability of the relevant technology. Capon v. Eshhar, 418 F.3d 1349,
1357-58 (Fed. Cir. 2005). The written description requirement does not
demand any particular form of disclosure, Carnegie Mellon Univ. v.
Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008), or that the
specification recite the claimed invention in haec verba. Lockwood v. Am.
Airlines, 107 F.3d 1565, 1571-72 (Fed. Cir. 1997). A description that
merely renders the invention obvious does not satisfy the requirement. Id. at
1572.
Appellant relies on the disclosure of a patent to Eldridge (US
4,388,682, issued June 14, 1983), as showing “that computer resident
instructions were well known in the art”. (Reply Br. 22). Appellant further
cites to several passages in the Specification, noting that those passages,
“would enable one skilled in the art to make and use a computer with
‘resident instructions’”. (Reply Br. 23).
As to the latter contention, the question as to whether a claim is
enabled by the Specification is different than and separate from the question
as to whether the Specification provides an adequate written description of
the claimed subject matter. Ariad Pharmaceuticals Inc. v. Eli Lilly & Co.,
598 F.3d 1336 (Fed. Cir. 2010). As such, even if we accept that the
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Specification is enabling for the claims, that does not resolve the written
description issue.
As to the former contention, to the effect that Eldridge evidences that
computers with “resident instructions” are well known in the art, it is
somewhat telling that, as admitted by Appellant, Eldridge does not use that
term either. Appellant’s Specification discloses merely that “[p]rocessor 48
can be a computer” (Spec., col. 5, ll. 23-24), and it is unclear as to what
“resident instructions” actually would mean in this context.
Further, Appellant does not appear to contest the Examiner’s position
that neither the Specification nor the Eldridge patent establish that
“computer resident instructions” are inherent to all computers, which
appears to have been a position previously espoused by Appellant.
Appellant further cites to the Wertheim case for the proposition that
the original disclosure need not “describe the claim limitations exactly,…
but only so clearly that persons of ordinary skill in the art will recognize
from the disclosure that appellants invented processes [or structures]
including those limitations.” In re Wertheim, 541 F.2d 257, 262 (CCPA
1976). Notwithstanding, our review of Appellant’s arguments and of the
disclosure in the original patent do not persuade us that the disclosure
evidences that Appellant was in possession, as of the filing date of the
original application, of a laser surgery device in which the controller
comprises a computer which controls an output of an applied laser beam
according to an ablating plan constructed “according to computer resident
instructions” as set forth in claims 29 and 31.
Appellant does not challenge the second basis for the rejection of
claim 31, directed to the language “determining the plan according to the
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comparison and by detecting ablating incision by the detector”. In
particular, the Examiner found that no part of the original disclosure
provides adequate written descriptive support for determining the ablation
plan on the basis of a detected ablating incision. (Ans. 24). Appellant
argues only that the term “define” as used in the expression “define an
ablation plan” is well known and supported by the original disclosure.
(Appeal Br. 11-12). This is not persuasive on two fronts: (1) the term
“define” is not in the claim, thus not at issue; and (2) what is at issue is
whether a detection of an ablating incision used in determining the ablating
plan finds written descriptive support. Nonetheless, Appellant’s original
disclosure evidences that Appellant was in possession of a process in which
the plan is determined at least in part by detecting an ablation incision.
(Freedman, col. 8, ll. 52-65). The rejection of claim 31, on the basis that this
particular limitation lacks adequate written descriptive support, will not be
sustained.
The rejection of claims 29 and 31 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement,
will be sustained. The rejection of claims 29 and 31 under 35 U.S.C. § 251
will also be sustained, as the claims introduce new matter into the reissue
application.
III. REJECTION UNDER 35 U.S.C. § 251-BROADENED CLAIMS
Claims 5, 17, 19, 21, 24, 25 and 28-31 have been rejected under 35
U.S.C. § 251, as being broadened claims presented in a reissue application
more than two years after the original patent issued. (Ans. 6).
A claim of a reissue application is broader in
scope than the original claims if it contains within
its scope any conceivable apparatus or process
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which would not have infringed the original patent.
A reissue claim that is broader in any respect is
considered to be broader than the original claims
even though it may be narrower in other respects.
Hockerson-Halberstadt, Inc. v. Converse, Inc., 183 F.3d 1369, 1374 (Fed.
Cir. 1999); Medtronic, Inc. v. Guidant Corp., 465 F.3d 1360, 1374 (Fed. Cir.
2006); see also, Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033, 1037 n.2
(Fed. Cir. 1987).
We agree with Appellant that the rejection is in error with respect to
claims 5 and 17, which depend from independent claim 1, which the
Examiner has not rejected as having been broadened. A dependent claim is
construed to contain all of the limitations of the claim upon which it
depends, and thus claims 5 and 17 are narrower in scope than claim 1 of the
original patent. See, MPEP § 1412.03(II) (notes common example of
dependent claim being broadened while independent claim not broadened).
The rejection as it applies to claims 5 and 17 will not be sustained.
We are not persuaded that independent claim 19 has not been
broadened. In particular, Appellant has replaced the limitation directed to
receiving a reflected “interference beam from said target region” with --
measurement beam from the surface or mass of the cornea and a reflected
reference beam from the reference target--, and, similarly, has replaced
detecting a phase difference of “said interference beam” with detecting a
phase difference of --said reflected measurement beam and reflected
reference beam that represents the surface or mass of the cornea--.
According to Appellant’s disclosure, the previously claimed
interference beam is obtained by synthesizing a transmitted beam and a
reflected beam, with the interference beam then being emitted to an optical
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system, projected onto the surface of the cornea, whereupon two reflected
light components having a phase difference due to having different optical
lengths are generated, then converged for detection by a photodetector.
(Freedman, col. 4, l. 58-col. 5, l. 22. In contrast, Appellant’s disclosure
describes, in connection with a different embodiment of the invention, what
is now claimed, i.e., an interferometer adapted to direct a measurement beam
onto the surface or mass of the cornea, and direct a reference beam onto a
reference target, with a detector for detecting the reflected measurement and
reference beams and detecting a phase difference between the two beams.
(Freedman, col. 6, ll. 1-52).
Claim 19 as currently presented does not require that an interference
beam be produced such that it and a phase difference of it can be detected, as
was required in claim 19 as issued. Accordingly, it is possible that current
claim 19 (if issued) could be infringed by a construction of an interferometer
that omits the function of producing an interference beam and instead
performs the function of splitting a coherent light beam into a measurement
beam and a reference beam, as well as functioning to process those beams in
the manner set forth in the remainder of current claim 19. Thus, claim 19 as
currently presented is broader than any claim in the original patent, and since
the claim was presented more than two years after the grant of the original
patent, the provisions of 35 U.S.C. §251 prohibit claim 19 from being
included in any reissue patent.
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The rejection of claim 19 will thus be sustained. The rejection will
also be sustained as to claims 21, 24, 25 and 28-31, as they depend from
broadened claim 19, and are thus also broadened in that respect, even if
narrowed in other respects. Hockerson-Halberstadt, 183 F.3d at 1374.

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).
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.
The Examiner did not err in rejecting claims 29 and 31 as containing
new matter and as failing to meet the written description requirement.
The Examiner erred in rejecting claims 5 and 17, but did not err in
rejecting claims 19, 21, 24, 25 and 28-31 as being broader than any claim in
the original Freedman patent.

DECISION
The decision of the Examiner to reject claims 1, 2, 5-7, 12, 17-19, 21
and 24-31 under 35 U.S.C. § 103 is affirmed.
The decision of the Examiner to reject claims 29 and 31 under 35
U.S.C. §§ 251 and 112, first paragraph, is affirmed.
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The decision of the Examiner to reject claims 5 and 17 under 35
U.S.C. § 251 as broadened claims presented more than two years after the
issuance of the original patent is reversed.
The decision of the Examiner to reject claims 19, 21, 24, 25 and 28-31
under 35 U.S.C. § 251 as being broadened claims presented more than two
years after the grant of the original patent 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/nlk