Ex Parte JonesDownload PDFPatent Trial and Appeal BoardFeb 20, 201511952183 (P.T.A.B. Feb. 20, 2015) Copy Citation 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. 11/952,183 12/07/2007 Ross Peter Jones P04608 (6639-000160/US) 9775 7590 02/20/2015 Bausch & Lomb Incorporated One Bausch & Lomb Place Rochester, NY 14604-2701 EXAMINER OSINSKI, BRADLEY JAMES ART UNIT PAPER NUMBER 3763 MAIL DATE DELIVERY MODE 02/20/2015 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROSS PETER JONES ____________ Appeal 2012-004910 Application 11/952,183 Technology Center 3700 ____________ Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and CHRISTOPHER G. PAULRAJ, Administrative Patent Judges. JENKS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal1 under 35 U.S.C. § 134 involving claims directed to a surgical system comprising a trap for capturing signal disruption material. The Examiner rejects the claims as anticipated and obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. 1 Appellant states that the Real Party in Interest is Bausch & Lomb Incorporated. (App. Br. 2.) Appeal 2012-004910 Application 11/952,183 2 STATEMENT OF THE CASE The Specification explains that During ophthalmic surgery. . . the system can experience what is commonly referred to as [postocclusion] surge. Postocclusion surge can cause serious damage to a patient’s eye, such as by rupturing a capsular bag and allowing vitreous to leak from the eye’s posterior into the eye’s anterior chamber or cause irreparable damage to the cornea’s endothelial cells. (Spec. 1–2: ¶ 3.) To avoid developing such a surge, the Specification provides the use of a monitoring device that can measure pressure in the system that includes the use of a trap. (Spec. 6: ¶ 22.) “The trap 80 for filtering materials causing signal disruption to the monitoring device 70 is placed between the surgical handpiece 50 and the monitoring device 70 to remove undesirable materials prior to their contact with the monitoring device 70.” (Spec. 6: ¶ 23.) The Specification explains that the claimed trap “can be distinguished from prior art particle traps where particles are trapped because they are physically too large to fit through a gap. In a particle trap, once a particle is trapped it cannot move further down stream. The present inventive trap allows trapped material to move down stream to the next row once a previous row has become filled.” (Spec. 8: ¶ 27.) Claims 1–9 are on appeal, and can be found in the Appendix of the Appeal Brief (App. Br. 10–11). Claim 1 is representative of the claims on appeal, and reads as follows: 1. A surgical system comprising a source of irrigation fluid; a collection cassette; a handpiece applied to a surgical area for infusing irrigation fluid and for aspirating a biological material; first and second conduits connecting the handpiece to each of the source of irrigation fluid and the collection cassette; Appeal 2012-004910 Application 11/952,183 3 a monitoring device; and a trap, including a housing with an inlet connected to the handpiece and an outlet connected to the cassette through the conduit and a plurality of trapping members placed inside the housing to capture the materials that cause signal disruption to the monitoring device, wherein a pressure required to push the signal disruption materials through gaps between the trapping members, is much greater than a pressure required to push a carrier fluid, carrying the signal disruption materials, through the gaps. Claim 6, the only other independent claim, is limited to a trap for capturing signal disruption material. The Examiner rejects the claims as follows: I. claims 6–9 under 35 U.S.C. § 102(b) as being anticipated by Adachi2 (Ans. 4–5); and II. claims 1–9 under 35 U.S.C. § 103(a) as unpatentable over Easley3 and Kanda4 (Ans. 5–6). I. The Issue: Anticipation by Adachi The Examiner finds that “Adachi discloses a housing 5 having an inlet 2 and outlet, both capable of being connected to a surgical handpiece and collection cassette,” and includes trapping members inside the housing. (Ans. 4.) Does the preponderance of the evidence of record support the Examiner’s finding that Adachi anticipates the claimed trap? 2 Masakazu Adachi et al., US 6,498,007 B1, issued Dec. 24, 2002. 3 James C. Easley, US 6,599,271 B1, issued July 29, 2003. 4 Hidenori Kanda et al., US 6,780,166 B2, Aug. 24, 2004. App App Find below colum (Ada that 63.) nylo suita aceta 62.) eal 2012-0 lication 11 ings of Fa 1. A , “outline n.” (Ada A polycarb cellulose physiolo inner cap line is se (3) at the chi, col. 9 2. “T is capable “Polystyr n, polytrifl ble as adso te is a par [C]ellulo adsorben 04910 /952,183 ct (FF) dachi discl s the struc chi, col. 5 s shown in onate colu acetate b gical salin (4), outer cured onto blood inl , l. 66 to c he term ‘a of adsorbi ene, cellul uoro-ethy rbent carr ticularly p se acetate t carrier. osed an ap tural com , ll. 50–52 FIG. 1, th mn (Adac eads (adso e (9). The cap (5) an the colum et (1). ol. 10, l. 5 dsorbent c ng cells on ose acetate lene and p iers accor referred ad is a partic Preferably 4 heresis sy ponents of .) e G-l colu olumn (8) rbent carri column co d O-ring n by a no .) arrier’ is u to its surf , nylon, fo olyethylen ding to the sorbent ca ularly pref , a cellulo stem. Fig a leucocy mn compr ) which is ers (7)) ba ntents are (6). The b zzle cap (2 sed herein ace.” (Ad r example e terephth present in rrier.” (A erred mat se acetate . 1, reprod te apheres ises a filled with thed in sealed by lood supp ) and pac to denote achi, col. 5 , 6-nylon alate are p vention. C dachi, col erial for th adsorbent uced is ly king a materia , ll. 61– or 11- articularly ellulose . 6, ll. 58– e l Appeal 2012-004910 Application 11/952,183 5 carrier may take the form of beads, for example having a diameter of in the range from about 0.1-10 mm, for example, from 0.2 to 5.0 mm, for example from 0.5 to 4.0 mm, for example from 1.0 to 3.0 mm, for example 2.0 mm. (Adachi, col. 7, ll. 18–24.) 3. With respect to the absorbent carrier Adachi disclosed No particular limitation is imposed on the choice of shape and size of the adsorbent carrier. It is, however, preferable that the adsorbent carrier has a size distinguishable from blood cells and a shape having a large contact area with the blood to be brought into contact therewith, to permit efficient contact. For example, the adsorbent carrier may take the form of beads having a diameter of about 0.1-10 mm. (Adachi, col. 6, l. 63 to col. 7, l. 2.) 4. The Examiner finds that “[i]n any packed column, the pressure to push signal disruption materials through gaps between beads will be greater than the pressure required to push the carrier fluid through the gaps.” (Ans. 4.) 5. The Examiner finds that “the device is capable of trapping viscoelastic materials, either based on size exclusion or affinity binding.” (Ans. 5.) Principle of Law “[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). Functional recitations in an apparatus claim are given weight in that the corresponding prior art structures must possess the capability of performing the recited function. See Intel Corp. v. U.S. Int’l Trade Comm’n, 946 F.2d 821, 832 (Fed. Cir. 1991). See also In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Appeal 2012-004910 Application 11/952,183 6 Analysis Claim 6 Appellant contends that Adachi does not disclose each and every element as claimed (Reply Br. 2). Specifically, “[t]here is no explanation or support given to the Examiner’s assertion that Adachi teaches the claimed housing with an inlet and an outlet.” (App. Br. 6.) We are not persuaded by Appellant’s contention and agree with the Examiner finding that Adachi’s Fig. 1 disclosed a housing, which is made of a polycarbonate column, having an inlet (1) and an outlet (11). (FF 1.) We recognize that the figures of a patent may not always be relied upon for specific values, but such figures can be relied upon for relative information regarding the placement of components. See, e.g., In re Skvorecz, 580 F.3d 1262, 1270 (Fed. Cir. 2009) (“A person skilled in the mechanical arts would understand the specification including the drawings as showing the offsets and the lateral displacement of each wire leg.”). As further support for the Examiner’s finding that the filter assembly disclosed in Adachi contains not only an inlet but also an outlet, we look to Adachi’s explanation that in order to determine “[t]he number of cells of a particular leucocyte type trapped by the carrier in the column is calculated by subtracting the appropriate leucocyte count in the blood at the column outlet from the corresponding leucocyte count in the blood at the column inlet.” (Adachi, col. 6, ll. 9–13 (emphasis added.) Here, Adachi measures cell numbers in sample flow going into the column and cell number in the sample flow coming out of the column. Accordingly, we are not persuaded by Appellant’s contention that Adachi does not disclose inlet and an outlet. Appeal 2012-004910 Application 11/952,183 7 Appellant contends that “there is no teaching that the Adachi beads would adhere to signal disruption material and thereby act as trapping members as claimed.” (App. Br. 7.) We are not persuaded. The Specification provides that “signal disruption material includes viscoelastic or other materials and tissue that may interfere with the monitoring device 70.” (Spec. 7: ¶ 25.) Under the broadest reasonable interpretation in light of the Specification, signal disruption material can include “tissue,” which would encompass cells such as leukocytes. The Adachi column contains an “adsorbent carrier,” in other words, a material that is capable of adsorbing leukocytes onto its surface (FF 2). Specifically, Adachi disclosed calculating the number of cells trapped by the column (see Adachi, col. 6, ll. 9–13). We agree with the Examiner that “the device need only be capable of capturing said materials, which the filters do via size exclusion so as to not clog the device.” (Ans. 7.) Appellant contends that the “unsupported assertion that ‘in any packed column, the pressure to push signal disruption material through gaps between beads will be greater than the pressure required to push the carrier fluid through the gaps.’” (App. Br. 7.) We are not persuaded. Here, the Examiner asserts that “the pressure to push signal disruption materials through gaps between beads will be greater than the pressure required to push the carrier fluid through the gaps” (FF 4). The carrier fluid in Adachi’s column is blood plasma, which the skilled artisan would recognize is less dense than the blood cells that are identified as the signal disruption materials. We discern no error with the Examiner’s finding that moving the blood plasma, as a carrier fluid, through Appeal 2012-004910 Application 11/952,183 8 gaps within the column will inherently require less pressure than moving the denser materials such as cells through the adsorbent carrier in Adachi. The Examiner has provided a sufficient “basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990). Appellant has not sufficiently rebutted the Examiner’s prima facie showing of inherency. See In re Schreiber, 128 F.3d at 1478 (once Examiner made a prima facie showing of inherency, “the burden shifted to [appellant] to show that the prior art structure did not inherently possess the functionally defined limitations of his claimed apparatus”); In re Swinehart, 439 F.2d 210, 212 (CCPA 1971) (“where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on”) Accordingly, we affirm the rejection of claim 6. Claims 7 and 8 The Examiner takes the position that “figure 1 shows a plurality of rows with a plurality of trapping members.” (Ans. 5.) The Examiner finds that [T]he beads are generally spherical such that they will always fit together in a certain way. Meaning if there are 4 beads in a single plane, one stacked on top will not stay directly on top of one of the 4 beads, but will instead fill the gap between the 4 beads. The spherical structures will always order themselves in Appeal 2012-004910 Application 11/952,183 9 the same manner, and thus may be considered to have regular order. (Ans. 9–10.) Appellant contends that “Adachi does not teach the claimed array” citing a dictionary definition in support (App. Br. 8.) Specifically, Appellant contends that there is no support in Adachi for the Examiner’s assertion that the beads are “‘generally spherical.’” (Reply Br. 3.) We find that Appellant has the better position with regard to these claims. Patent drawings are not necessarily intended to show accurate relative dimensions and “arguments based on mere measurement of the drawings [are] of little value.” In re Chitayat, 408 F.2d 475, 478 (CCPA 1969). Here, the Examiner is relying on the Fig. 1 (FF 1) to show support for a plurality of trapping members. Although Adachi’s disclosure does not define shape or size, it does require “a shape having a large contact area with the blood to be brought into contact therewith.” (FF 3.) We agree with Appellant’s position that this disclosure teaches against the particles being spherical because spheres tend to have the lowest surface area to volume ratio compared to other shapes. Accordingly, we reverse the rejection of claims 7 and 8 that requires the trapping members to be in the form of an array. Claim 9 Appellant contends that “[t]here is no teaching to suggest that signal disruption materials can be adhered to the beads of Adachi.” (App. Br. 6.) We are not persuaded. The Examiner finds that Adachi’s “device is capable of trapping viscoelastic materials, either based on size exclusion or affinity binding.” (Ans. 5.) Appeal 2012-004910 Application 11/952,183 10 Applicant argues that there is no indication that Adachi can absorb signal disruption material in a carrier fluid as claimed. However, there is a difference between trapping and absorbing. Applicant has only claimed trapping, not absorption. The beads of Adachi have a finite space between them together form a tortuous pathway for any fluid flowing between them, further trapping solids. (Ans. 8–9.) The Adachi column contains an “adsorbent carrier” that is material that is capable of adsorbing cells onto its surface (FF 2). Adachi disclosed calculating the number of cells trapped by the column (see Adachi, col. 6, ll. 9–13). According to the Specification, “signal disruption material includes viscoelastic or other materials and tissue that may interfere with the monitoring device 70.” (Spec. 7: ¶ 25.) Because Adachi disclosed trapping leukocytes onto the column, we agree with the Examiner’s position that Adachi’s column is capable of “trapping viscoelastic materials, either based on size exclusion or affinity binding.” (Ans. 5.) Accordingly, we affirm the rejection of claim 9. II. The Issue: Obviousness over Easley and Kanda The Examiner finds Easley disclosed an irrigation device as claimed (Ans. 5) and looks to Kanda for the added pressure sensor (Ans. 6.) Does the preponderance of evidence of record support the Examiner’s conclusion that the combination of Easley and Kanda renders the claims obvious? Findings of Fact 6. Easley disclosed A cateract is the lens of the eye after it has become App App (Eas trapp The some throu eal 2012-0 lication 11 cloudy. many ye phacoem Phacoem ultrason break up multi-fu conventi for aspir evacuate Irrigatio ley col. 1, 7. Th ing memb The figu Examiner only thro gh both w 8. Th [A] pres through small en a pressu fluids th lower vi 04910 /952,183 Surgery to ars. Curre ulsificatio ulsificatio ic needle th or emulsi nction ultr onally inc ation and i the lens a n replaces ll. 20–31; e Examin ers. re above s finds that ugh filter hile solid e Examin sure requir the filter m ough to fit re to push at would b scosity tha remove c nt practice n, replacin n utilizes at is vibra fy the cata asound ha ludes an u rrigation o nd other v the volum Ans. 5.) er finds Ea hows the E “some of t 43, but som being carr er finds th ed to push ust also b through th a carrier fl e encounte n solids en 11 ataracts ha is to rem g the lens a tube, usu ted at ultr ract. The ndpiece. T ltrasonic m f the eye. itreous ma e removed sley’s Fig xaminer’ he air will e air (the ied will be at the signa e great eno e filter ho uid alone red in pha countered s been per ove the ca with an ar ally referr asonic freq needle is d he handpi otor and f Aspiratio terial from by aspira . 3 shows s annotated pass only middle ar filtered o l disruptio ugh to cu les is muc through th coemulsif in phacoe formed fo taract by tificial on ed to as an uencies to riven by a ece luid chann n is used t the eye. tion. a plurality Fig. 3 of through fi row) will p ut.” (Ans. n material t it up into h greater t e gaps sin ication ha mulsificat r e. els o of Easley. lter 42, ass 7.) bits han ce ve a ion. Appeal 2012-004910 Application 11/952,183 12 (Ans. 5.) 9. Kanda disclosed the use of a pressure sensor with a phacoemulsification apparatus. “When it is detected by the pressure sensor 15 that the maximum vacuum pressure of 40 kPa has been reached, the control unit 10 stops the rotation of the pump 7, thereby maintaining the vacuum pressure within the aspiration tube 6 at the maximum vacuum pressure.” (Kanda col. 5, ll. 26–30.) 10. The Specification provides that a “[t]he monitoring device 70 measures physical or chemical parameters, such as pressure, liquid flow rate and gas flow rate, within the surgical system to generate a signal or information necessary to control the system properly.” (Spec. 6: ¶ 22.) Principle of Law The KSR Court noted that a combination of old elements has been held to be obvious when “[t]he two [elements] in combination did no more than they would in separate, sequential operation.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (citing Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)). Analysis Claims 1, 4, 5, 6, and 9 Appellant recognizes that “Easley may disclose two filters, [however,] those filters cannot be said to be a plurality of trapping members with gaps between the trapping members as required by claims 1 and 6.” (App. Br. 4.) “Kanda only discloses a pressure sensor that is not effected by the materials being aspirated.” (Id.) Appeal 2012-004910 Application 11/952,183 13 We adopt the Examiner’s findings, reasoning and response as set out in the Answer. We provide the following additional comment with respect to Appellant’s arguments. We are not persuaded by Appellant’s contention that the filters disclosed in Easley are not a plurality of trapping members. A “plurality” is interpreted as requiring a minimum of two trapping members, but can include many more members. Here, the Examiner is relying on Easley’s phacoemulsification apparatus containing a trap to teach the structural requirements of the claim. (Ans. 5; FF 6–7.) We agree with the Examiner’s position that Easley’s trap contains two trapping members that are aligned in the directions of fluid flow, and are positioned such that the two trapping members overlap at least partially in the direction of flow. (FF 7.) Accordingly, we agree with the Examiner’s position that Easley’s trap contains the plurality of trapping members. (FF 7.) We also find no error with the Examiner’s finding that it would require greater pressure to trap the disruption material into the holes of the trapping member than it would be to push carrier fluid through the trapping member. (FF 8.) We are also not persuaded by Appellant’s contention that Kanda’s pressure sensor is not affected by the disruption material. The law does not require that the teachings of the reference be combined for the reason or advantage contemplated by the inventor, as long as some suggestion to combine the elements is provided by the prior art as a whole. In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); In re Kronig, 539 F.2d 1300, 1304 (CCPA 1976). Here, the Examiner adds the pressure sensor to the device of Easley for the purpose of adding “more control over the pressure in the system.” (Ans. 6; see FF 9–10.) We find no error with the Examiner’s Appeal 2012-004910 Application 11/952,183 14 reason for combing the references to include a pressure sensor in the device of Easley. Accordingly, we affirm the rejection of claim 1 as being obvious over Easley and Kanda. As Appellant does not argue the claims separately, claims 4, 5, 6, and 9 fall with claim 1. 37 C.F.R. § 41.37 (c)(1). Claims 2, 3, 7, and 8 The Examiner finds that the “the filters are arranged in two rows in an aspiration flow direction and each filter has a plurality of pores. The filters and their pores each comprise trapping members.” (Ans. 6.) Appellant argues that the filters in Easley are “not arrayed in two or more rows along the aspiration flow direction with each row having at least two trapping members.” (App. Br. 4.) We find that Appellant has the better position with regard to these claims. The Examiner has not provided sufficient factual support to arrive at a conclusion that the filters disclosed in Easley contain pores in the form of an array. Accordingly, we reverse the rejection that relies on Easley for teaching trapping members in the form of an array. SUMMARY We affirm the rejection of claims 6 and 9 under 35 U.S.C. § 102(b) over Adachi. We reverse the rejection of claims 7 and 8 under 35 U.S.C. § 102(b) over Adachi. We affirm the rejection of claims 1, 4, 5, 6, and 9 under 35 U.S.C. § 103(a) as unpatentable over Easley and Kanda. Appeal 2012-004910 Application 11/952,183 15 We reverse the rejection of claims 2, 3, 7, and 8 under 35 U.S.C. § 103(a) as unpatentable over Easley and Kanda. 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 cdc Copy with citationCopy as parenthetical citation