Ex parte GWON et al.

Board of Patent Appeals and Interferences

Apr 4, 2001

08103089 (B.P.A.I. Apr. 4, 2001)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of
the Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ARLENE E. GWON and MICHAEL W. BERNS
__________
Appeal No. 1997-2646
Application 08/103,089
___________
ON BRIEF
___________
Before HAIRSTON, JERRY SMITH, and FLEMING, Administrative
Patent Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1-26. Claims 1-3, 7-9, 15-18, and 20-25 were amended
in the response filed December 18, 1995.
The invention relates to a method of laser photoablation
of ocular lens tissue. The method comprises steps of
determining the volume of lens tissue to be photoablated and
Appeal No. 1997-2646
Application 08/103,089
The examiner’s answer mailed October 13, 1995 also lists1
Aron Nee Rosa et al. as prior art of record. However, only
Bille and L’Esperance are used as a basis for a rejection.
2
directing a pulsed laser beam at such a volume with an amount
of energy effective for photoablating the region without
causing substantial damage to the surrounding tissue.
Independent claim 1 is as follows:
1. A method for selective removal of ocular lens tissue,
for the correction of vision defects, said method consisting
essentially of the steps of:
focusing a laser into an ocular lens with a focal
point below an anterior surface of the ocular lens where
ablation is intended to occur;
pulsing said laser at said focal point; and
moving the laser focal point towards the ocular lens
anterior surface and pulsing said laser at a selected
volume of ocular lens, where ablation is intended to
occur, said selected volume being of a size enabling
resolve by adjacent healthy ocular lens tissue.
The Examiner relies on the following references:1
L’Esperance, Jr. 4,538,608 Sep. 3, 1985
Bille et al. (Bille) 4,907,586 Mar. 13, 1990
Claims 1-26 stand rejected under 35 U.S.C. § 112, second
paragraph, claim 17 stands rejected under 35 U.S.C. § 102 in
view of Bille, claims 1-8, 18, and 20-24 stand rejected under
35 U.S.C. § 103 in view of Bille, and claims 9-16, 19, 25,
Appeal No. 1997-2646
Application 08/103,089
See the briefs filed May 8, 1995, December 18, 1995, and2
April 5, 1999, as well as answers mailed October 13, 1995,
March 21, 1996, and August 17, 2000. A communication was
mailed July 16, 1996 informing Appellant that amended claims
and reply brief filed December 18, 1995 would be entered.
3
and 26 stand rejected under 35 U.S.C. § 103 in view of Bille
and L’Esperance, Jr.
Appellants have indicated that claims 1-16 and 18-26
stand or fall together while claim 17 forms a separate group.
Rather than reiterate all arguments of Appellants and
Examiner, reference is made to the briefs and answers for the
respective details thereof.2
OPINION
We will not sustain the rejection of claims 1-26 under
35 U.S.C. § 112, second paragraph. In addition, we will not
sustain the rejection of claim 17 under 35 U.S.C. § 102(b) or
of claims 1-16 and 18-26 under 35 U.S.C. § 103.
Turning first to the rejection of claims 1-26 under
35 U.S.C. § 112, second paragraph, the Examiner first asserts
that if claims are read in light of the specification, they
“inherently require ablation.” The Examiner goes on to assert
Appeal No. 1997-2646
Application 08/103,089
See page 2 of answer mailed August 17, 2000 (hereinafter3
paper no. 28).
4
that the claims “require the removal [of a volume] ‘being of a
size enabling resolve by adjacent healthy ocular lens
tissue’.” Based on these assumptions, the Examiner concludes
that a conflict in claim language exists in that: (1) claim
language fails to recite a step of removal; (2) the “removed”
tissue is then restored to normal, or resolved, while it is
“apparently now outside of the lens.” 3
On page 6 of the reply brief, Appellants argue that “[the
language at issue] distinctly claims the subject matter which
the Appellants regard as the invention. The Appellants have
not claimed a step of ‘ablating’ by laser, but a step of
focusing and pulsing at a volume to be removed, with such
removal being effected by adjacent tissues.” We are directed
by appellants to page 23, lines 10-12, of the specification
for support.
Analysis of 35 U.S.C. § 112, second paragraph, should
begin with the determination of whether claims set out and
circumscribe the particular area with a reasonable degree of
precision and particularity; it is here where definiteness of
Appeal No. 1997-2646
Application 08/103,089
5
the language must be analyzed, not in a vacuum, but always in
light of teachings of the disclosure as it would be
interpreted by one possessing ordinary skill in the art. In
re Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA
1977); citing In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236,
238 (1971). Furthermore, our reviewing court points out that
a claim which is of such breadth that it reads on subject
matter disclosed in the prior art is rejected under 35
U.S.C. § 102 rather than under 35 U.S.C. § 112, second
paragraph. See In re Hyatt, 708 F.2d 712, 715, 218 USPQ 195,
197 (Fed. Cir. 1983); citing In re Borkowski, 422 F.2d 904,
909, 164 USPQ 642, 645-46 (CCPA 1970). "The legal standard for
definiteness is whether a claim reasonably apprises those of
skill in the art of its scope." In re Warmerdam, 33 F.3d
1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir. 1994).
We find that the claims at issue set out and circumscribe
methods of selective removal and of increasing an
accommodation of amplitude of an ocular lens with a reasonable
degree of precision and particularity. They also apprise the
person of ordinary skill in the art of the scope of the
Appeal No. 1997-2646
Application 08/103,089
See pages 9-10 of the answer mailed August 17, 2000.4
6
invention. We agree with Appellants that the invention is
directed to the step of focusing and pulsing at a volume to be
removed, with such removal being effected by adjacent tissues.
This is further supported by Appellant's specification, page
23, lines 10-12. We agree that the claim scope is broad but
the proper rejection for breadth is under 35 U.S.C. § 102
rather than under 35 U.S.C. § 112, second paragraph.
Turning next to the rejection of claim 17 under 35 U.S.C.
§ 102(b), the method of claim 17 includes a step of selecting
a volume of ocular lens tissue to be removed. The specific
volume selected is identified as being of “a size enabling
resolve by adjacent healthy ocular lens tissue.” The Examiner
acknowledges that Bille fails to explicitly disclose removal
of the specific volume of lens tissue recited in claim 17. 4
However, Examiner goes on to conclude that the reference must
inherently include the limitation in question. The Examiner’s
arguments of inherency are based on an assumption that, as
Bille fails to discuss surgical removal of lens tissue, the
invention disclosed therein must inherently resolve the tissue
Appeal No. 1997-2646
Application 08/103,089
See page 10 of the answer mailed August 17, 2000.5
See page 10 of the reply brief.6
7
acted upon by a laser in order to accomplish its removal.5
Appellants argue that Bille fails to teach selection of a
volume of tissue which would enable resolve by adjacent
tissue.6
"Anticipation is established only when a single prior art
reference discloses, expressly or under principles of
inherency, each and every element of a claimed invention."
RCA Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440,
1444, 221 USPQ 385, 388 (Fed. Cir.), cert. dismissed, 468 U.S.
1228 (1984), citing Kalman v. Kimberly-Clark Corp., 713 F.2d
760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983). Furthermore,
"[t]o establish inherency, the extrinsic evidence 'must make
clear that the missing descriptive matter is necessarily
present in the thing described in the reference, and that it
would be so recognized by persons of ordinary skill.'" In re
Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed.
Cir. 1999), citing Continental Can Co. v. Monsanto Co., 948
F.3d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991).
Appeal No. 1997-2646
Application 08/103,089
8
"Inherency, however, may not be established by probabilities
or possibilities. The mere fact that a certain thing may
result for a given set of circumstances is not sufficient."
Id. citing Continental Can, 948 F.3d at 1269, 20 USPQ2d at
1749.
Bille’s silence as to the surgical removal of tissue in
no way makes clear that resolve of tissue acted upon by a
laser is necessarily a part of Bille's invention. The
Examiner provides no basis for the assumption that surgery and
resolve are the only two methods for removal of tissue acted
upon by a laser which would have been available to one of
ordinary skill in the art. Thus, even if the assumption is
made that surgery could not have formed a part of Bille’s
invention, there are other methods of removal other than by
resolve. Therefore, we find that Bille does not anticipate
the invention as recited in claim 17.
We turn next to the rejection of claims 1-8, 18 and 20-24
under 35 U.S.C. § 103 over Bille and of claims 9-16, 19, 25,
and 26 over Bille in view of L’Esperance.
The Federal Circuit states that “[t]he mere fact that the
Appeal No. 1997-2646
Application 08/103,089
9
prior art may be modified in the manner suggested by Examiner
does not make the modification obvious unless the prior art
suggested the desirability of the modification.” In re
Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.
14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984). It is further
established that “[s]uch a suggestion may come from the nature
of the problem to be solved, leading inventors to look to
references relating to possible solutions to that problem.”
Pro-Mold & Tool Co. v. Great Lakes Plastics, 75 F.3d 1568,
1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996), citing In re
Rinehart, 531 F.2d 1048, 1054, 189 USPQ 143, 149 (CCPA 1976)
(considering the problem to be solved in a determination of
obviousness). The Federal Circuit reasons in Para-Ordnance
Mfg. v. SGS Importers Int’l Inc., 73 F.3d 1085, 1088-89, 37
USPQ2d 1237, 1239-40 (Fed. Cir. 1995), cert. denied, 519 U.S.
822 (1996), that for the determination of obviousness, the
court must answer whether one of ordinary skill in the art who
sets out to solve the problem and who had before him in his
workshop the prior art, would have reasonably expected to use
Appeal No. 1997-2646
Application 08/103,089
See pages 25-27.7
10
the solution that is claimed by Appellants. However,
“[o]bviousness may not be established using hindsight or in
view of the teachings or suggestions of the invention.” Para-
Ordnance 73 F.3d at 1087, 37 USPQ2d at 1239; citing W. L. Gore
& Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551, 1553,
220 USPQ 303, 311, 312-13, cert. denied, 469 U.S. 851 (1984).
In addition, our reviewing court requires the PTO to make
specific findings on a suggestion to combine prior art
references. In re Dembiczak, 175 F.3d 994, 1000-01, 50 USPQ2d
1614, 1617-19 (Fed. Cir. 1999)
In the rejections under 35 U.S.C. § 103, the Examiner
relies on the same arguments presented for claim 17 as a basis
for asserting that Bille must inherently include this
feature. However, as discussed above with respect to the7
rejection of claim 17, the Examiner fails to establish that
Bille explicitly or implicitly discloses use of the specific
amount of tissue recited in the claimed invention. No
arguments are presented as motivation for one of ordinary
skill in the art to modify Bille to include this feature.
Appeal No. 1997-2646
Application 08/103,089
11
Therefore, we find that the Examiner has failed to set forth a
prima facie case. It is the burden of the Examiner to
establish why one having ordinary skill in the art would have
been led to the claimed invention by the express teachings or
suggestions found in the prior art, or by implications
contained in such teachings or suggestions. In re Sernaker,
702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983).
“Additionally, when determining obviousness, the claimed
invention should be considered as a whole; there is no legally
recognizable ‘heart’ of the invention.” Para-Ordnance 73 F.3d
at 1087, 37 USPQ2d at 1239; citing W. L. Gore 721 F.2d at
1548, 220 USPQ at 309.
Appeal No. 1997-2646
Application 08/103,089
12
For these reasons we reverse the rejection of claims 1-26
under 35 U.S.C. § 112, second paragraph; of claim 17 under
35 U.S.C. § 102(b); and of claims 1-16, and 18-26 under 35
U.S.C. § 103.
REVERSE
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Appeal No. 1997-2646
Application 08/103,089
13
MRF:pgg
Walter A. Hackler
2373 S.E. Bristol - Ste. B
Santa Ana Heights, CA 92707