Ex Parte Holliday

Patent Trial and Appeal Board

Jan 31, 2013

11373069 (P.T.A.B. Jan. 31, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte KEITH HOLLIDAY
__________

Appeal 2011-000424
Application 11/373,069
Technology Center 3700
__________

Before LORA M. GREEN, JEFFREY N. FREDMAN, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

BONILLA, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims directed to a
method for controlling a pulsed laser, such as used during laser eye surgery.
The Examiner has rejected the claims as indefinite, anticipated, and obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

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STATEMENT OF THE CASE
The Specification describes methods for controlling lasers, such as
used during laser eye surgery (Spec. ¶ [0001]). The Specification discloses
embodiments that “may be suitable for use in procedures in which a pulse
rate of a pulsed laser varies during use, or in which other laser operation
parameters (such as pulse energy) will vary during use” (id. at ¶ [0008]).
By implementing a calibration laser mode in addition to a
standard operating mode, and by accurately characterizing a
relationship or correlation between laser energy pulses and a
laser operation parameter such as the high voltage used to fire
the pulse (V) throughout a range that encompasses a curve in
the correlation, such embodiments may increase the accuracy of
laser pulse energy control.
(Id.)
Claims 1-10 are on appeal. Independent claim 1 is representative:
1. A method for controlling a pulsed laser, the method comprising:
firing the laser to produce a series of laser pulses, each pulse
fired by applying an associated voltage of the laser;
measuring energies of each laser pulse of the series of laser
pulses;
generating a correlation between the measured energies of the
pulses and the associated voltages of the laser, the correlation defining
differing rates of change in pulse energy with changes in voltage;
generating a first laser pulse by applying a first voltage to the
laser;
measuring a first energy of the first pulse;
determining a second voltage for the laser so as to generate a
second pulse with a desired pulse energy using the correlation and the
measured first energy of the first pulse; and
firing the laser by applying the second voltage so as to produce
the second pulse.
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The claims stand rejected as follows:
1

I. Claim 2 under 35 U.S.C. § 112, 2nd paragraph, as being indefinite;
II. Claims 1 and 3 under 35 U.S.C. § 102(b) as anticipated by Ruhl,
Jr. et al. (U.S. Pat. No. 5,282,014, issued Jan. 25, 1994);
III. Claims 5-7 under 35 U.S.C. § 103(a) as obvious over Ruhl;
IV. Claim 2 under 35 U.S.C. § 103(a) as obvious over Ruhl in view of
Suzuki (U.S. Pat. No. 5,097,291, issued Mar. 17, 1992); and
V. Claims 4 and 10 under 35 U.S.C. § 103(a) as obvious over Ruhl in
view of Vogler et al. (U.S. Appl. Publ. No. 2002/0057724 A1,
published May 16, 2002); and
VI. Claim 8 and 9 under 35 U.S.C. § 103(a) as obvious over Ruhl in
view of LaHaye (U.S. Appl. Publ. No. 2005/0021011 A1,
published Jan. 27, 2005).
I.
Claim 2, which depends on claim 1, recites that “the correlation
comprises a quadratic relationship between a pulse energy E and a discharge
high voltage V of the laser of the form E = c1 V
2
+ c2 V + c3 in which c1, c2,
and c3 are constants.” In other words, when generating a correlation
between energies of pulses and associated voltages of the laser as recited in

1
We note that Appellant asserts that the Examiner improperly refused to
enter an amendment filed in response to a Final Office Action (App. Br. 4).
The Examiner‟s refusal to enter an amendment after final is a petitionable
matter under 37 C.F.R. § 1.181, and not within the jurisdiction of the Board.
37 C.F.R. § 1.127; In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (citing
In re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971)).
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claim 1, the correlation is a quadratic and determined according to the
equation E = c1V
2
+ c2V + c3, where c1, c2, and c3 are constants.
The Examiner rejects claim 2 as being indefinite, stating that “[i]t is
unclear why the characterization of the relationship between energy and
voltage is of any importance, and how this characterization will impact a
step of the method” (Ans. 4). According to the Examiner, “[f]or instance, if
the relationship were exponential, then the plotted points should be fitted
with an exponential curve,” and “[o]n the other hand, if all of the
relationships between voltage and energy are quadratic, then this limitation
is an inherent component of independent claim 1” (id.).
The definiteness requirement seeks to “ensure that the claims
delineate the scope of the invention using language that adequately notifies
the public of the patentee‟s right to exclude.” Datamize, LLC v. Plumtree
Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005). Here, claim 2
specifies that the generated correlation of claim 1 is a quadratic relationship.
Claim 2 differs from claim 1, which recites a correlation encompassing a
quadratic, linear, or exponential relationship. Thus, we conclude that claim
2 is definite.
II.
The Examiner rejects claims 1 and 3 as anticipated by Ruhl, citing the
reference‟s Summary of Invention, as well as Figures 7 and 8a, and
discussions of those figures (Ans. 5). For example, the Examiner states:
Ruhl further teaches the test procedure comprising firing or
generating a laser pulse (108; Figure 8a) according to a summed
voltage (44), which is the sum of the previously programmed
voltage or output voltage (50) and the peak detector output
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voltage (51). The output voltage (50) is the first voltage, the
summed voltage (44) is the second voltage, which is
determined by identifying a desired change in energy
correlating to the peak detector output voltage (51; Column 10,
Lines 47-49; Column 12, Lines 35-69; Column 13, Lines 1-22).
The pulse is again measured (109). This process is repeated
based on the number of test shots originally set (Column 7,
Lines 10-36; Column 14, Lines 8-14).
(Id.)
The elements of claim 1 at issue are “generating a correlation …
defining differing rates of change in pulse energy with changes in voltage”
and “determining a second voltage for the laser … using the correlation and
the measured first energy of the first pulse” (Claim 1; see also Reply Br. 4).
In this regard, Appellants refer to Figure 7, and state that because “Ruhl
teaches a single average „proportionality‟ and only that single average
proportionality of peak detector voltage to output energy is stored,” the
reference does not anticipate claim 1, and therefore claim 3 (App. Br. 10-
12). Appellants also state that the “average proportionality of peak detector
voltage to output energy „E/V100‟ explicitly used by Ruhl is a single value
and thus is not a correlation having differing rates of change” (Reply Br. 5).
Appellants also argue that the “average proportionality of Ruhl used in
calculating each new voltage during use of the laser is limited to a single
slope, in contrast to the differing rates of the correlation of claim 1” (id.).
Ruhl as a whole, and particularly the portions cited by the Examiner,
indicate that Ruhl does not teach only that a single average proportionality
of peak detector voltage to output energy is stored. For example, the
Summary of the Invention states:
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The present invention is a real time system, in that when
testing is performed on the laser rangefinder under test its
output pulse energy is measured for each shot and compared to
the anticipated average per pulse output energy as previously
computed. When the laser rangefinder under test is fired for the
first test shot the simulated target‟s reflected energy will be
based on the previously computed average output pulse's
energy level. The measured value of that first pulse will
meanwhile be compared to the previously computed average
per pulse energy and the differences between the measure and
anticipated per pulse energies, if any, will be used as a
correction factor to the average power level of the simulated
target‟s reflected energy.
(Ruhl, col. 3, l. 60 – col. 4, l. 5 (emphasis added); see also col. 7, ll. 23-30)
(describing calculating a “correction factor,” and thereafter programing a
converter to deliver a voltage)).
Regarding the flow diagram depicted in Figure 7, Ruhl describes
calculating and storing the following based on measured energies and
applied voltages in a series of 100 laser pulses: “average output energy
„Eavg‟” for 100 pulses (see (87) in Fig. 7), “proportionality of peak detector
voltage „Vi‟ to pulse output energy „Ei‟” for each pulse (see (88) in Fig. 7),
and “average proportionality of peak detector voltage to output energy
„E/V100‟” for 100 pulses (see (89) in Fig. 7) (id. at col. 12, ll. 27-34). As
shown in Figure 8a, Ruhl‟s system uses such calculations “to determine 104
the nominal output energy, „ERnom‟ setting for the laser 27,” and thereafter
“set[s] the nominal driver voltage „Vnom‟ for the laser 27 to allow it to fire at
this simulated nominal (target) reflected energy level „ERnom‟” (id. at col. 9,
ll. 48-61; see also Figure 8a).
As further described in Ruhl regarding Figure 8a:
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The D/A converter 13 is programmed 103 to provide a dc
sum voltage “VD/A” 50 based on the average proportionality of
peak detector voltage to output energy “E/V100” and the average
output energy “Eavg” of the laser rangefinder 1. The program
then calculates 104 the nominal simulate received energy or
energies “ER-nom” from the simulated target or targets specified
in the test parameters….
***
The shot counter „i‟ is initialized 106 and the peak detector
circuit 45 is reset 107. … The laser rangefinder 1 fires and the
output energy “Ei” for that laser pulse “i” is measured 109 by
the energy detector 24, its value is displayed for the operator on
the energy display 14, and the measured energy value is sent to
the computer 6 for storage.
Simultaneous with this measurement, the summed voltage
44 of the peak detector output voltage 51 and the previously
programmed D/A converter output voltage 50 is measured 110
by the DMM 12 and sent to the computer 6 where it is stored.
The summed voltage 44 becomes the energy scaling factor
“Vsi” for shot “i” which modulates the output driver voltage 47
of the pulse generator 9 to take into consideration the pulse to
pulse output variation of the laser rangefinder under test 1.
Ruhl, col. 12, l. 35 - col. 13, 1. 17 (emphasis added).
The above-mentioned teachings in Ruhl, along with other passages
cited by the Examiner and the Examiner‟s factual findings (which we adopt
as our own) establish that Ruhl discloses a system that determines a second
voltage based on a correlation as generated based on changes in energies and
voltages as measured in a series of laser pulses. Thus, the Examiner
establishes anticipation of claim 1 by a preponderance of the evidence.
Appellant‟s arguments, e.g., asserting that “only that single average
proportionality of peak detector voltage to output energy is stored” (App.
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Br. 10), do not persuade us otherwise. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992).
We also note that Appellant‟s arguments regarding a “single slope”
(Reply Br. 5), i.e., a linear relationship, are inapplicable to claim 1, which
does not limit the recited correlation to non-linear relationship, such as a
quadratic relationship.
III.
The Examiner rejects claims 5-7 as obvious over Ruhl. We adopt the
Examiner‟s fact finding and conclusions as our own (Ans. 6-7).
In response to the Examiner‟s rejection, Appellant argues that “Ruhl
describes storing and applying only a single proportionality despite firing a
hundred different pulses (each at its own associated voltage)” (App. Br. 12).
For the reasons discussed above, Appellant‟s position in this regard does not
persuade us in relation to claim 1, and Appellant does not explain how such
an argument applies differently to claims 5-7.
Appellant also argues that the Examiner does not identify a “basis for
modification of the actual disclosure of the cited art by varying the pulse
rate of the Ruhl laser,” or “that varying of the pulse rate could alter the pulse
energy during a very short series of pulses, nor that a multi-rate correlation
be determined, stored and/or applied” (id.). We note that Appellant does not
explain, and the Specification does not clarify, how claims 1, 5, and 6
involve a “pulse rate.” These claims do not recite “pulse rate” or indicate
how the method might take into account a “pulse rate” when generating a
correlation or when determining a second voltage. To the extent that
Appellant means to imply, however, that “changes in voltage” (recited in
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claim 1) correspond to changes in “firing rate,” Ruhl describe changes in
voltages, as discussed above.
Claim 7 recites that “a firing rate of the laser varies while the laser is
in the operating mode.” As noted by the Examiner, Ruhl teaches that
“[d]uring the operating mode, there are various firing rates or programmed
delays” (Ans. 6 (citing Ruhl, col. 12, ll. 41-47)). Appellant does not dispute
this finding.
Appellant further asserts that claim 1, and therefore dependent claims
5-7, require that the second voltage is determined using a “multi-rate
correlation” (App. Br. 12). By referring to a “multi-rate correlation,”
Appellant again implies that claim 1 (and therefore claims 5-7) require
generating a correlation comprising a non-linear relationship, i.e., a
quadratic relationship. As discussed above, claim 1 encompasses generating
a correlation comprising a linear relationship. Consistently, we agree with
the Examiner‟s finding that data points in Appellant‟s exemplary Figure 6 in
the instant Specification, albeit labeled a “quadratic fit,” are best fit by a
linear correlation (Ans. 10; compare Specification‟s Figure 6 to the quadratic
relationship depicted in Figure 2 of Suzuki, discussed below).
For the above-mentioned reasons, we conclude that the Examiner
establishes by a preponderance of the evidence that claims 5-7 are obvious
over Ruhl. Appellant‟s arguments do not persuade us otherwise.
IV.
The Examiner rejects claim 2 as obvious over Ruhl in view of Suzuki
(Ans. 7). As noted by the Examiner, Ruhl does not teach that the correlation
is quadratic (id.). Suzuki describes “an energy amount control device” that
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achieves “high precision by adjustment of the applied voltage even if the
relation between the applied voltage of an energy generating source and the
oscillation energy amount is changed over time” (Suzuki, col. 3, ll. 30-36).
In a relevant embodiment, Suzuki describes that “the relation between the
applied voltage and the energy amount of the emitted pulse under that
applied voltage” is quadratic, citing to Figure 2 (id. at col. 8, ll. 3-31; Fig. 2).
Suzuki also discloses the equation recited in claim 2 (id. at ll. 20-27).
Appellant argues that Suzuki “is concerned with increasing the
voltage to compensate for deteriorating gas over a prolonged period of time”
(App. Br. 13). Even assuming this assertion is factually correct, however,
Appellant does not explain how such a fact undercuts Suzuki‟s teachings of
the correlation recited in claim 2, or how such the fact impacts our analysis
in relation to claims 1 and 2, which do not recite a time frame.
We agree with the Examiner that it would have been obvious to an
ordinary artisan “to fit the data with a quadratic equation because doing so
would result in the closest possible fit to the data obtained by measuring the
pulse energies” (Ans. 7). Suzuki teaches that “the relationship between
voltage and pulse energies can be quadratic,” even if Ruhl does not
expressly mention this fact in relation to its measured energies and voltages
(id.). Notably, notwithstanding Appellant‟s assertions regarding Figure 6 of
the Specification (App. Br. 13), the graph in Figure 6 (0-30,000 V v. mJ)
mirrors the graph depicted in Figure 2 in Suzuki (0-30 KV v. mJ), except
that the correlation in Figure 6 appears more linear and Suzuki‟s Figure 2
clearly depicts a quadratic relationship.
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Appellant also argues that “[n]o relationship between firing rate and
how it impacts energy requirements is contemplated by Suzuki (or any of the
other cited references)” (App. Br. 14). As discussed above regarding claim
1, however, claim 2 does not recite a “firing rate” or designate how the
method involves determining “firing rate.” To the extent that Appellant
means to imply that “changes in voltage” (claim 1) correspond to changes in
“firing rate,” however, both Ruhl and Suzuki describe changes in voltages
(see, e.g., Suzuki, Figure 2; see also Ans. 6 (noting that Ruhl teaches that
“[d]uring the operating mode, there are various firing rates or programmed
delays,” citing Ruhl, col. 12, ll. 41-47).)
Thus, we conclude that the Examiner establishes by a preponderance
of the evidence that claim 2 is obvious over Ruhl in view of Suzuki.
Appellant‟s arguments do not persuade us otherwise.
V.
The Examiner rejects claims 4 and 10 as obvious over Ruhl in view of
Vogler (Ans. 7-8; see also id. at 3 (regarding claim 8)). The Examiner notes
that Ruhl does not teach that “there are damping variations in the voltage
according to a damping factor” (id. at 7). The Examiner finds, however, that
Vogler “teaches certain gas components such as F2 that can be observed
from the decrease in the slope of the laser output energy verses driving
voltage curve” (id. at 8 (citing Vogler ¶¶ [0036]-[0039]; Figures 3a and 3b)).
The Examiner finds that “gas aging and subsequent transmission efficiency
loss in such lasers” as described in Vogler corresponds to dumping
variations in relevant voltages according to a dumping factor (id. at 8). The
Examiner concludes that “incorporation of a known damping factor in the
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determination of the second voltage would have been obvious in order to
accurately calculate the second voltage” in Ruhl‟s method in view of Vogler
(id.).
Claim 4 recites that the method of claim 1 further comprises
“damping variations in the voltage according to a damping factor.” Such
language, which merely references damping variations and a damping factor,
does not designate that claim 4 differs from claim 1. Thus, claim 4 is
obvious over the cited art for the same reasons discussed above regarding
claim 1. Along these lines, Appellant‟s arguments regarding the “variable
slope voltage (pulse energy correlation of claim 1[)]” (App. Br. 15) do not
persuade us otherwise for the reasons already discussed above. Moreover,
claims 4 and 10 do not recite a “short running time” as argued by Appellant
regarding claim 8, and therefore arguments relating to Vogler operating for
“several days” also do not persuade us otherwise (id. at 15-17).
Claim 10 differs from claim 4, however, in that it recites that the
second voltage is calculated “using a damping factor D and a desired change
in energy ΔE” according to the equation:

where “generating a correlation comprises identifying constants cl and c2.”
The Examiner does not indicate where Vogler or any other cited reference
discloses or suggests calculating a second voltage using the equation recited
in claim 10 (Ans. 7-8, 12). Thus, we conclude that the Examiner fails to
establish by a preponderance of the evidence that claim 10 is obvious over
Ruhl in view of Vogler.
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VI.
The Examiner rejects claims 8 and 9 as obvious over Ruhl in view of
LaHaye (Ans. 8-9). Claim 8 is directed to operating the laser in an operating
mode “for less than about 10 minutes.” Claim 9 recites that “the target
surface is disposed on a corneal tissue” and “the laser is operated in the
calibration mode prior to treatment of each of a plurality of patients.”
The Examiner finds that although Ruhl does not teach the time that
the laser remains in operating mode, “it is well known [in] the art to
expeditiously perform [corneal] surgeries to reduce risk of unwanted damage
to ophthalmic tissue” (Ans. 8-9). In addition, although the Examiner finds
that Ruhl does not teach the use of the method to treat the cornea, the
Examiner finds that LaHaye “teaches a method and apparatus for monitoring
laser surgery exemplified in an ophthalmic laser surgery system (Abstract),”
as well as “using the controlled pulses on the cornea of a patient (Paragraph
[0016]), and calibrating the laser prior to treating a patient (Paragraph
[0036])” (id. at 9).
Appellant argues that “LaHaye does not provide a method for
controlling a laser by determining voltages from a correlation,” or teach
determining a second voltage (App. Br. 17). Thus, according to Appellant,
“any combination of LaHaye with Ruhl would indicate that no adjustment
for variation of pulses rate would be required during a laser eye surgery
treatment” (id. at 18). In addition, Appellant again argues that “if the Ruhl
system were implemented, it would include only a single stored
proportionality despite firing different pulses” and “Ruhl does not teach
varying the pulse rate of the laser” (id.).
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We adopt the factual findings and conclusion of the Examiner as our
own (Ans. 8-9). We conclude that it would have been obvious to conduct
the method of Ruhl when performing corneal laser surgery. For the reasons
stated by the Examiner, we also conclude that elements recited in claims 8
and 9 would have been obvious to an ordinary artisan in this field. We note
that Appellant‟s assertions regarding this rejection correspond to the same
arguments addressed above regarding claim 1. Appellant does not explain
why/how elements recited in claims 8 and 9 change the analysis as applied
to claim 1. In addition, Appellants‟ assertion that LaHaye fails to teach
determining voltages from a correlation or determining a second voltage
does not persuade us that the Examiner fails to establish by a preponderance
of the evidence that Ruhl teaches these elements and that it would have been
obvious to apply the Ruhl method in the context of corneal surgery, as
suggested by LaHaye.
SUMMARY
We reverse the rejection of claim 2 as being indefinite. We affirm the
rejection of claims 1 and 3 as anticipated by Ruhl, as well as the obvious
rejection of claims 5-7 over Ruhl. We also affirm the rejections of claim 2,
claim 4, and claims 8, and 9 over Ruhl in view of Suzuki, Vogler, or
LaHaye, respectively. We reverse the rejection of claim 10 over Ruhl in
view Vogler.

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART

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