Ex Parte Hauger

Patent Trial and Appeal Board

Jul 26, 2017

13470680 (P.T.A.B. Jul. 26, 2017)

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.
13/470,680 05/14/2012 Christoph HAUGER 0902-022 CONT 6656
42015 7590 07/28/2017
POTOMAC PATENT GROUP PLLC
P. O. BOX 270
FREDERICKSBURG, VA 22404
EXAMINER
LUAN, SCOTT
ART UNIT PAPER NUMBER
3769
NOTIFICATION DATE DELIVERY MODE
07/28/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Emily @ ppblaw .com
info @ leffleriplaw .com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPH HAUGER
Appeal 2015-006099
Application 13/470,680
Technology Center 3700
Before JENNIFER D. BAHR, WILLIAM A. CAPP, and
ANTHONY KNIGHT, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Christoph Hauger (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 88, 89, 91—104, 106—110, 113, 114,
117, and 118.1 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Claims 111, 112, 115, 116, and 119-122 have been withdrawn from
consideration. Final Act. 2.
Appeal 2015-006099
Application 13/470,680
THE CLAIMED SUBJECT MATTER
Claim 88, reproduced below, is illustrative of the claimed subject
matter.
88. A surgical instrument system for ophthalmic surgery in an
interior of an eye, comprising:
an OCT apparatus including an interferometer;
an optical fiber coupled to the OCT apparatus and
extending a probe arm of the interferometer, the optical fiber
having a tip end;
a hand tool comprising:
a hand piece,
a tube extending away from the hand piece and
comprising a distal end portion having a longitudinal axis
and a tip end, wherein a distal portion of the optical fiber
is received within the tube;
a beam emitter coupled to the tip end of the optical
fiber and configured to emit an OCT measuring beam into
an emission direction of the beam emitter; and
an actuator configured to change the emission
direction of the OCT measuring beam relative to the tip
end of the distal end portion;
wherein a first tangent to the longitudinal axis at a
proximal end of the distal end portion and a second tangent to the
longitudinal axis at the tip end of the distal end portion form a
bending angle of the distal end portion of between 60 and
100 degrees; and
wherein a first distance between an intersection point of
the first tangent with the second tangent and the proximal end is
between 4.5 mm and 8 mm; and
wherein a second distance between the intersection point
and the tip end of the distal end portion is between 3 mm and 9
mm.
REJECTION
Claims 88, 89, 91-104, 106-110, 113, 114, 117, and 118 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Reynard
2
Appeal 2015-006099
Application 13/470,680
(US 5,651,783, issued July 29, 1997), Izatt (US 2003/0004412 Al, published
Jan. 2, 2003), and Baerveldt (US 2006/0106370 Al, published May 18,
2006).2
DISCUSSION
Each of Appellant’s independent claims 88 and 102 recites “[a]
surgical instrument system for [intraocular] ophthalmic surgery” comprising,
inter alia, an OCT apparatus and a tube in which an optical fiber is received,
the tube comprising a distal end portion having a longitudinal axis and a tip
end, “wherein a first tangent to the longitudinal axis at a proximal end of the
distal end portion and a second tangent to the longitudinal axis at the tip end
of the distal end portion form a bending angle of the distal end portion of
between 60 and 100 degrees.” Appeal Br. 34, 36—37 (Claims App.).
The Examiner acknowledges that Reynard does not teach an OCT
apparatus or a tube comprising a distal end portion having a bending angle
as claimed. Final Act. 8 (“Reynard does not teach OCT and the particular
geometric dimensions recited in the instant claim(s).”).
The Examiner finds that Izatt teaches surgical instrument systems
comprising an OCT apparatus, beam emitter, and actuator as called for in
claims 88 and 102 for producing tomogram data of biological tissue
generally. Final Act. 8—9.
The Examiner finds that Baerveldt teaches that laser-based ophthalmic
surgical instruments can have a straight, angled, or curved probe tip, “which
2 Although the Examiner does not include claims 117 and 118 in the
statement of the rejection, the Examiner discusses these claims in the
detailed explanation of the rejection. Final Act. 7, 16.
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Appeal 2015-006099
Application 13/470,680
provides for optimal access to specific anatomy and pathology.” Id. at 10
(quoting Baerveldt, paras. 91, 153).
The Examiner determines that it would have been obvious to
incorporate the teachings of Izatt and Baerveldt into Reynard’s system in
order to achieve the advantages of “a 360-degree visualization of intraocular
structures without moving the probe itself, thereby minimizing trauma to the
eye.” Id. at 10—11. As for the claimed geometric dimensions, including the
bending angle, the Examiner states that the system resulting from the
combination of Reynard, Izatt, and Baerveldt
will inherently assume the particular geometric dimensions as
recited in the instant claim(s) given the natural range of the
anatomical structures of the eye and the constraint that the
imaging beam is emitted in a direction orthogonal to the
longitudinal axis of the probe in order to provide for optimal
access to specific anatomy of the eye.
Id.
Appellant argues, and we agree, that the Examiner has not articulated
sufficient factual findings and technical reasoning to explain why the natural
range of dimensions of the anatomical structures of the eye necessarily
dictate that Reynard’s system, modified to include an OCT apparatus, beam
emitter, and actuator as taught by Izatt, and a bent probe tip (i.e., distal end
portion) as taught by Baerveldt, will inherently assume a bending angle
between 60 and 100 degrees as claimed. Appeal Br. 17—18. More
specifically, even assuming the applied references suggest providing a
surgical instrument system for intraocular surgery comprising an OCT
apparatus emitting an imaging beam in a direction orthogonal to the
longitudinal axis of the tip end of the tube and a bent tube distal end portion
to facilitate insertion of the instrument and optimal access to specific
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Appeal 2015-006099
Application 13/470,680
anatomy of the eye, as proposed in the rejection, Appellant contends that
“[w]hen one considers the universe of potential shapes for such hand pieces,
the bending angles claimed by [Appellant] cannot be considered to be
inherent” without assuming Appellant’s objective of aligning the
longitudinal axis of the tip end along the main axis (i.e., optical axis) of the
eye. Reply Br. 4—5. Appellant submits that because the references applied
in the rejection “are unconcerned with alignment of probes with the optical
axis of the eye[,] it is not surprising that they fail to teach Appellant’s
specified bending angle range.” Id. at 5.
The Examiner states that “the optimization of the bending angle of the
probe is based on natural anatomical and geometric constraints of the human
eye” and that “only routine experimentation is required to determine” the
range of bending angles and first and second distances that will permit a
curved shaft to be aligned with the main axis of the human eye. Ans. 6—1?
Thus, it appears the Examiner’s position is that the claimed angle range is a
matter of optimization, and that, given the natural anatomical and geometric
constraints of the eye, optimization of the bending angle to achieve the
objective of aligning the tip end with the main axis of the eye would yield
the claimed angle range.
“[W]here the general conditions of a claim are disclosed in the prior
art, it is not inventive to discover the optimum or workable ranges by routine
experimentation.” In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed.
Cir. 2012) (quoting In re Aller, 220 F.2d 454, 456 (CCPA 1955). Thus,
3 The Answer does not include page numbers. Thus, in referring to pages of
the Answer, we designate the page with the heading “EXAMINER’S
ANSWER” as page 1 and number the pages chronologically thereafter.
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Application 13/470,680
once the objective of aligning the tip end of the distal end portion of the tube
with the main eye axis is assumed, it is not inventive to discover by routine
experimentation the optimum or workable ranges of the bending angle that
permits such alignment. However, the Examiner does not explain why, in
the absence of Appellant’s disclosure, a person having ordinary skill in the
art would have been prompted to optimize the bending angle to align the tip
end with the main axis of the eye, rather than to align the tip end in some
other direction. See, e.g., Ans. 6 (citing Appellant’s discussion (Appeal
Br. 24) of the present application for the proposition that the bending angle
makes it possible to align the longitudinal axis within the axial end section
of the distal end portion of the tube with the main axis of the human eye).
Consequently, the Examiner does not establish that the claimed angle range
would have been an obvious matter of routine optimization to a person of
ordinary skill in the art at the time of Appellant’s invention.
For the above reasons, the Examiner does not establish that a surgical
instrument system as recited in independent claim 88 or independent claim
102, including the claimed bending angle range, would have been obvious.
Accordingly, we do not sustain the rejection of claims 88 and 102, or their
dependent claims 89,91-101, 103, 104, 106-110, 113, 114, 117, and 118,
under 35 U.S.C. § 103(a) as unpatentable over Reynard, Izatt, and Baerveldt.
DECISION
The Examiner’s decision rejecting claims 88, 89, 91—104, 106—110,
113, 114, 117, and 118 is reversed.
REVERSED
6