Ex Parte Hofmann et al

Patent Trial and Appeal Board

Aug 24, 2016

13782332 (P.T.A.B. Aug. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
131782,332 03/01/2013 GUNTER A. HOFMANN
24955 7590 08/26/2016
ROGITZ & AS SOCIA TES
Jeanne Gahagan
750B STREET
SUITE 3120
SAN DIEGO, CA 92101
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1253.001 6093
EXAMINER
ITSKOVICH, MIKHAIL
ART UNIT PAPER NUMBER
2483
NOTIFICATION DATE DELIVERY MODE
08/26/2016 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):
Noelle@rogitz.com
eofficeaction@appcoll.com
J ohn@rogitz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUNTER A. HOFMANN and
JOHN L. ROGITZ 1
Appeal2015-001255
Application 13/782,332
Technology Center 2400
Before DEBRA K. STEPHENS, KEVIN C. TROCK, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 17 and 19-25. Claims 17 and 20 are independent. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We affirm.2
1 According to Appellants, the real party in interest is the inventors: Gunter
A. Hofmann and John L. Rogitz. See Appeal Brief 2.
2 Throughout this Decision, we refer to: ( 1) Appellants' Specification filed
Mar. 1, 2013 ("Spec."); (2) the Final Office Action ("Final Act.") mailed
Feb. 12, 2014; (3) the Appeal Brief ("Appeal Br.") filed Apr. 16, 2014; (4)
the Examiner's Answer ("Ans.") mailed May 21, 2014; and (5) the Reply
Brief ("Reply Br.") filed May 21, 2014.
Appeal2015-001255
Application 13/782,332
BACKGROUND
According to Appellants, the application "relates generally to human-
wearable eyeware to alleviate the effects of macular degeneration." Spec.
i-f 1. Claim 17 is representative and is reproduced below with disputed
limitations emphasized:
17. Lens comprising:
substrate defining a center, a perimeter, and no material
beyond the perimeter;
concentric rings of Fresnel ridges formed on the substrate
and no other light redirecting structure being formed on the
substrate, the substrate not being a portion of a larger lens
structure, a spacing "S" between adjacent concentric Fresnel
ridges becoming progressively less from the perimeter of the
lens toward the center of the lens, slopes relative to an axis of
light entering the lens of curvilinear non-vertical sides of the
ridges becoming progressively steeper, ridge to ridge, from the
perimeter of the lens to the center of the lens, such that light
entering the lens is diverted into a hollow ring-shaped pattern
of light exiting the lens, wherein a ridge nearest the center has a
steepest non-vertical side slope relative to remaining ridges and
a ridge nearest the perimeter has a shallowest non-vertical side
slope relative to remaining ridges, and the respective slopes of
all respective ridges relative to the axis of light become
progressively steeper ridge to ridge in a direction from the ridge
nearest the center to the ridge nearest the perimeter.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims:
Kohn et al. ("Kohn") US 2011/0285960 Al Nov. 24, 2011
Springer Series in Optical Sciences, Editor-in-Chief W.T. Rhodes,
Metz et.at., Springer-Verlag Berlin Heidelberg GmbH, (2001 ), ("Metz").
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Application 13/782,332
REJECTIONS
Claims 17 and 19-25 are rejected under 35 U.S.C. § 112(a) as failing
to comply with the written description requirement. Final Act. 4.
Claims 17 and 19-25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kohn in view of Metz. Id. at 6.
Our review in this appeal is limited only to the above rejections and
issues raised by the Appellants. We have not considered other possible
issues that have not been raised by Appellants and which are, therefore, not
before us. See 37 C.F.R. § 41.37(c)(l)(iv) (2013).
ISSUES
1. Did the Examiner err in finding that claim 1 7 fails to comply with
the written description requirement?
2. Did the Examiner err in finding that the combination of Kohn
and Metz teaches or suggests "such that light entering the lens is diverted
into a hollow ring-shaped pattern of light exiting the lens," as recited in
claim 17?
3. Was the Examiner's rationale for modifying Kohn based on Metz
erroneous because Kohn teaches away from the claimed invention or
because modifying Kohn to meet the present claims would render Kohn
unfit for its intended purpose?
DISCUSSION
35U.S.C.§112(a): Claims 17and19-25
We sustain the Examiner's decision to reject independent claim 17
under§ 112(a), as failing to comply with the written description requirement
by impermissibly adding new matter to the original disclosure. To satisfy
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the written description requirement, the disclosure must reasonably convey
to skilled artisans that the patentee possessed the claimed invention as of the
filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en bane). Although the description requirement under
§ 112 does not demand (1) any particular form of disclosure or (2) that the
specification recite the claimed invention verbatim, a description that merely
renders the invention obvious does not satisfy the requirement. Id. at 1352.
A written-description question often arises when an applicant, after
filing a patent application, subsequently adds "new matter" to the claims not
present in the original application. Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1560 (Fed. Cir. 1991). When an applicant amends or adds claims
during prosecution, for example, the newly claimed subject matter must find
written description support in the original specification. Id.; see also
Turbo Care Div. of Demag Delavel Turbomachinery Corp. v. Gen. Elec. Co.,
264 F.3d 1111, 1118 (Fed. Cir. 2001). Without written description support,
claims containing new matter are properly rejected under§ 112. Ariad, 598
F.3d at 1348. This required compliance with§ 112 ensures that the
applicant fully possessed the entire scope of the claim as of the original
filing date. TurboCare, 264 F.3d at 1118.
Here, it is undisputed that the negative limitations, "no other light
redirecting structure being formed on the substrate" and "the substrate not
being a portion of a larger lens structure," were added by amendment during
prosecution. See Amendment filed Oct. 29, 2013. It is likewise undisputed
that these particular phrases are not expressly stated in Appellants' original
disclosure.
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Application 13/782,332
Nevertheless, it is well settled that negative limitations are permissible
forms of expression to define the scope of a claimed invention. See
generally Animal Legal Defense Fund v. Quigg, 932 F.2d 920, 923 (Fed. Cir.
1991 ). But the mere absence of a positive recitation in the original
disclosure is not basis to exclude the limitation. MPEP § 2173.05(i).
Rather, "[ n ]egative claim limitations are adequately supported when
the specification describes a reason to exclude the relevant limitation."
Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012).
On this record, we find Appellants' original disclosure fails to convey
such a reason for the limitations, "no other light redirecting structure being
formed on the substrate" and "the substrate not being a portion of a larger
lens structure." That is, Appellants' original disclosure fails to convey a
reason for excluding another light redirecting structure being formed on the
substrate or for excluding the substrate from being a portion of a larger lens
structure. In Santarus, the negative limitation at issue-the exclusion of the
compound sucralfate-was adequately supported because the excluded
compound was already described in the specification as a less advantageous
alternative and its disadvantages were listed. Id. 1351. By contrast, here,
Appellants fail to provide sufficient evidence that the Specification discloses
any embodiment excluding or even discouraging formation of other light
redirecting structures on the substrate or the substrate from being a portion
of a larger lens structure.
Rather, the portion of Appellants' Specification relied upon by
Appellants for support only describes use of the substrate as an attachment to
a conventional eyeglass lens. Spec. 8, 11. 3-7 (which states, "Figures 8-10
show an alternate lens 100 which may be implemented by forming ...
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Fresnel ridges 102 on a thin flat substrate such as a flexible plastic substrate
that may be held onto the outer surface of a conventional eyeglass lens 104
by adhesive or by simple friction/static charge."). Accordingly, Appellants'
Specification, rather than providing a reason to exclude other light
redirecting structures or a larger lens structure from the substrate, indicates
that the substrate may only be used with a conventional eyeglass lens. The
Examiner interprets the conventional eyeglass lens to act as both another
light redirecting structure, and as a larger lens structure, with respect to the
substrate. Accordingly, we find there is no written support for the
limitations "no other light redirecting structure being formed on the
substrate" and "the substrate not being a portion of a larger lens structure."
Referring now to the first negative limitation recited in claim 17, the
"substrate defining a center, a perimeter, and no material beyond the
perimeter," we find that Figure 8 does provide adequate support for the
limitation. The term "perimeter" refers to the outside boundary or edge of a
surface. Because, as shown in Figure 8, adding material to the substrate
"beyond the perimeter" would merely extend the perimeter further outward,
we determine adding material beyond the perimeter of the substrate is not
possible. Appellants' Specification therefore provides a reason to exclude
material beyond the perimeter of the substrate, as approved in Santarus, to
support Appellants' proposed narrowing. Thus, even though this negative
limitation was made by amendment (see Amendment filed Oct. 29, 2013)
and was not expressly supported by the Specification, we find Figure 8
provides a reason to exclude material beyond the perimeter, thereby
providing support.
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In summary, we find Appellants argument persuasive and we do not
agree with the Examiner that the first negative limitation of independent
claim 17 - "the substrate not being a portion of a larger lens structure"-
lacks written description. However, we find Appellants fail to establish the
Specification provides disclosure as to why no other light redirecting
structure would be formed on the substrate or why the substrate would not
be a portion of a larger lens structure. Appellants, thus, fail to establish that
the Specification discloses the last two negative limitations that were added
to independent claim 1 7: "no other light redirecting structure being formed
on the substrate" and "the substrate not being a portion of a larger lens
structure."
Accordingly, the Examiner did not err in rejecting claim 17, and the
rejection under§ 112, first paragraph is sustained. The rejection of
independent claim 20, which is not argued separately, is sustained for similar
reasons. Dependent claims 19 and 21-25 fall with their respective
independent claims.
35 U.S.C. § 103: Claims 17 and 19-25
After review of Appellants' arguments and the Examiner's findings
and reasoning, we determine that Appellants have not identified error in the
Examiner's rejection of claim 17. Accordingly, we affirm the rejection for
reasons set forth by the Examiner in the Final Office Action and the Answer.
See Final Act. 6; Ans. 7-8. We add the following for emphasis.
Appellants argue that the combination of Kohn and Metz fails to teach
or suggest "such that light entering the lens is diverted into a hollow ring-
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shaped pattern of light exiting the lens," as recited in claim 1 7, because the
disputed limitations are not "mere 'intended use.'" Reply Br. 3.
We agree with the Examiner's finding that the combination of Kohn
and Metz teaches all of the disputed features.
"[A]pparatus claims cover what a device is, not what a device does."
Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990). See also Paragon Solutions, LLC v. Timex Corp., 566 F .3d
1075, 1091 (Fed. Cir. 2009) ("Absent an express limitation to the contrary,
any use of a device that meets all of the limitations of an apparatus claim
written in structural terms infringes that apparatus claim") and Roberts v.
Ryer, 91 U.S. 150, 157 (1875) ("The inventor of a machine is entitled to the
benefit of all the uses to which it can be put, no matter whether he had
conceived the idea of the use or not.").
Here, Appellants provide insufficient evidence to substantiate why the
claimed invention is structurally different than the cited combination but
instead focus on what the claimed lens does.
Appellants further argue that "both of the Metz lenses have the
shallowest slopes in the center, opposite to what Claim 17 requires." App.
Br. 6. We find Appellants arguments unpersuasive because the Examiner
relies on Kohn rather than Metz to suggest the claimed Fresnel structures;
therefore, the arguments are not responsive to the rejection. Ans. 9. See
Nat'! Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1336-37
(Fed. Cir. 2004) (rejecting argument directed at the wrong prior art).
Appellants additionally argue "one of skill in the art would be led
away from modifying Kohn to meet the present claims because doing so
would render Kohn unfit for its intended purpose, meriting reversal of the
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Application 13/782,332
rejection under Jn re Gordon, 733 F.2d 900 (Fed. Cir. 1984)." Appeal Br. 6.
Specifically, Appellants argue that modifying the optics of Kohn to spread
light "such that light entering the lens is diverted into a hollow ring-shaped
pattern of light exiting the lens," as recited in claim 17, "would defeat the
purpose of Kohn to correct the distortions so that the patient 'sees' a normal
orthogonal Amsler grid including in the center of his field of view." Appeal
Br. 5---6 (citing Kohn i-f 4 7).
Appellants' reliance on In re Gordon is not persuasive. In Gordon,
the Court of Appeals for the Federal Circuit determined that the modification
of the reference ("French") proposed by the Board would render French
inoperable for its intended purpose. See Gordon at 902. In this appeal, the
Examiner suggests "modify[ing] Kohn to use plural Fresnel ridges as taught
in Metz". Final Act. 6. Appellants' arguments, however, fail to provide
sufficient evidence to demonstrate that modifying Kohn' s structure to use
plural Fresnel ridges as taught in Metz would necessarily produce only a
hollow ring-shaped light pattern, thereby defeating the purpose of Kohn.
Thus, we agree with the Examiner's conclusion that the proposed
combination would not defeat the purpose of Kohn. Ans. 8.
Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection
of claim 1 7.
We also sustain the Examiner's 35 U.S.C. § 103(a) rejection of
independent claim 20, which Appellants argue are patentable for similarly
unpersuasive reasons. App. Br. 5; Reply Br. 4.
Appellants do not make any other substantive argument regarding the
rejection of dependent claims 19 and 21-25. App. Br. 4--5. Therefore, we
likewise sustain the rejections of these claims under 35 U.S.C. § 103(a).
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DECISION
We affirm the Examiner's decision rejecting claims 17 and 19-25
under 35 U.S.C. § 112(a).
We affirm the Examiner's decision rejecting claims 17 and 19-25
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)(l )(iv).
AFFIRMED
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