Ex Parte Koest et al

Patent Trial and Appeal Board

May 15, 2018

13463396 (P.T.A.B. May. 15, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/463,396 05/03/2012
26710 7590 05/17/2018
QUARLES & BRADYLLP
Attn: IP Docket
411 E. WISCONSIN A VENUE
SUITE 2350
MILWAUKEE, WI 53202-4426
FIRST NAMED INVENTOR
Gert Koest
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.
129569.00118 2225
EXAMINER
KREMER, MATTHEW
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
05/17/2018 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):
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERT KOEST and ANDREAS STEINMUELLER
Appeal2017-003508
Application 13/463,396 1
Technology Center 3700
Before DONALD E. ADAMS, DEVON ZASTROW NEWMAN, and
DAVID COTTA, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 1, 2, 4, 6, 8-14,
and 16 (Final Act. 1). Examiner entered rejections under 35 U.S.C. § 112,
second paragraph, the written description provision of 35 U.S.C. § 112, first
paragraph, 35 U.S.C. § 103(a) and obviousness-type double patenting. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify "Oculus Optikgeraete GmbH" as the real party in
interest (App. Br. 2).
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Application 13/463,396
STATEMENT OF THE CASE
Appellants' disclosure
relates to an ophthahnological analysis method for measuring
an intraocular pressure in an eye using an analysis system, and
to an analysis system of this type formed of an actuation device
with which a cornea of the eye is deformed contactlessly, a puff
of air being applied to the eye using the actuation device to
deform the cornea, formed of a monitoring system with which
the deformation of the cornea is monitored and recorded,
sectional images of the undeformed and deformed cornea being
recorded using the monitoring system, and formed of an
analysis device with which the intraocular pressure is derived
from the sectional images of the cornea.
(Spec. ,r 3.) Claims 1, 6, 10, and 11 are representative and reproduced
below:
1. An ophthalmological analysis method for measuring an
intraocular pressure in an eye, said method comprising:
recording at least one sectional image of an undeformed
cornea of the eye;
applying a puff of air to the undeformed cornea of the
eye to deform the cornea and offset the entire eye along an
optical axis;
recording at least one sectional image of the deformed
cornea;
deriving the offset of the entire eye along the optical axis
from a comparison of a position of the eye in the at least one
sectional image of the deformed cornea relative to [[the]]~
position of the eye in the at least one sectional image of the
undeformed cornea;
correcting the at least one sectional image of the
deformed cornea by the offset; and
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deriving the intraocular pressure from the sectional
images of the deformed and undeformed cornea as corrected for
the offset of the entire eye along the optical axis.
(App. Br. 2 22 (alteration original).)
6. The analysis method according to claim 1, in which an offset
of an ocular fundus is measured to determine the offset of the
entire eye along the optical axis.
(App. Br. 23.)
10. The analysis method according to claim 1, in which a pump
pressure for producing the puff of air progresses in [[the]]~
form of a bell curve in relation to a duration thereof.
(Id. (alteration original).)
(Id.)
11. The analysis method according to claim 10, in which
maximum pump pressure for producing the puff of air is
identical in previous and subsequent measurements.
The claims stand rejected as follows:
Claim 11 stands rejected under 35 U.S.C. § 112(b ).
Claims 1, 2, 4, 6, 8-14, and 16 stand rejected under the written
description provision of 35 U.S.C. § 112(a).
Claims 1, 2, 4, 9, 13, and 14 stand rejected under 35 U.S.C. § I03(a)
as unpatentable over the combination ofKoest '367, 3 Iijima, 4 and either of
Macvicar5 or Suzuki. 6
2 The Claims Appendix of Appellants' Brief is not paginated. Therefore, we
refer to page numbers of the Claims Appendix as if it were numbered
consecutively following page 21 of Appellants' Brief.
3 Koest, US 2006/0241367 Al, published Oct. 26, 2006.
4 Iijima, US 6,053,867, issued Apr. 25, 2000.
5 Macvicaretal., US 5,215,095, issued June 1, 1993.
6 Suzuki, US 2005/0280776 Al, published Dec. 22, 2005.
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Claims 1, 2, 4, 9, 13, 14, and 16 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over the combination ofKoest '367, Iijima,
Appellants' Admitted Prior Art, and either of Macvicar or Suzuki.
Claims 6 and 8 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination ofKoest '367, Iijima, Kohayakawa, 7 and
either of Macvicar or Suzuki, with or without Appellants' Admitted Prior
Art.
Claims 10-12 stand rejected under 35 U.S.C. § I03(a) as unpatentable
over the combination of Koest '367, Iijima, Luce, 8 and either of Macvicar or
Suzuki, with or without Appellants' Admitted Prior Art.
Claims 1, 2, 4, 9, 10, 13, 14, and 16 stand rejected under the judicially
created doctrine of obviousness-type double patenting as being unpatentable
over the claims of Steinmueller9 in view of Iijima, Suzuki, and Appellants'
Admitted Prior Art.
Claims 6 and 8 stand rejected under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over the claims of
Steinmueller in view of Iijima, Suzuki, Kohayakawa, and Appellants'
Admitted Prior Art.
Claims 10-12 stand rejected under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over the claims of
Steinmueller in view of Iijima, Suzuki, Luce, and Appellants' Admitted
Prior Art.
7 Kohayakawa, US 2003/0025875 Al, published Feb. 6, 2003.
8 Luce, US 2007/0055122 Al, published Mar. 8, 2007.
9 Steinmueller, US 8,551,013 B2, issued Oct. 8, 2013.
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Claims 1, 2, 4, 9, 10, 13, 14, and 16 stand rejected under the judicially
created doctrine of obviousness-type double patenting as being unpatentable
over the claims ofKoest '014 10 in view of Iijima, Suzuki, and Appellants'
Admitted Prior Art.
Claims 6 and 8 stand rejected under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over the claims of
Koest '014 in view of Iijima, Suzuki, Kohayakawa, and Appellants'
Admitted Prior Art.
Claims 10-12 stand rejected under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over the claims of
Koest '014 in view of Iijima, Suzuki, Luce, and Appellants' Admitted Prior
Art.
Claims 1, 2, 4, 9, 10, 13, 14, and 16 stand rejected under the judicially
created doctrine of obviousness-type double patenting as being unpatentable
over the claims of Koest '823 11 in view of Iijima, Suzuki, and Appellants'
Admitted Prior Art.
Claims 6 and 8 stand rejected under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over the claims of
Koest '823 in view of Iijima, Suzuki, Kohayakawa, and Appellants'
Admitted Prior Art.
1° Koest et al., US 8,551,014 B2, issued Oct. 8, 2013.
11 Koest et al., US 8,556,823 B2, issued Oct. 15, 2013.
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Definiteness:
ISSUE
Does the preponderance of evidence support Examiner's conclusion
that the phrase "in which a maximum pump pressure for producing the puff
of air is identical in previous and subsequent measurements," as set forth in
Appellants' claim 11, is indefinite?
ANALYSIS
Appellants' claim 11 is reproduced above.
Examiner finds that the phrase "in which a maximum pump pressure
for producing the puff of air is identical in previous and subsequent
measurements," as recited in Appellants' claim 11, is indefinite because "it
is not clear if the previous and subsequent measurements are part of the
claimed method and what steps are involved in such measurements" (Ans.
4 ). We agree.
Appellants' claim 11 depends ultimately from Appellants' claims 1
and 10, reproduced above. Appellants' claim 1 does not make reference to
previous or subsequent measurements, a pump, or pump pressure. In
addition, although Appellants' claim 10 makes reference to a pump pressure
for producing the puff of air and defines that pressure as progressing in the
form of a bell curve in relation to a duration thereof, Appellants' claim 10
also does not make reference to previous or subsequent measurements.
Thus, we agree with Examiner's conclusion that Appellants' reference to
previous and subsequent measurements in claim 11 is unclear.
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In response, Appellants contend that "they are happy to amend the[]
claim[] to clarify the language" (App. Br. 20; see also Reply Br. 12 5).
CONCLUSION
The preponderance of evidence supports Examiner's conclusion that
the phrase "in which a maximum pump pressure for producing the puff of air
is identical in previous and subsequent measurements," as set forth in
Appellants' claim 11, is indefinite. The rejection of claim 11 under 3 5
U.S.C. § 112(b) is affirmed.
Written Description:
ISSUE
Does the preponderance of evidence on this record support
Examiner's finding that Appellants' Specification fails to provide written
descriptive support for the claimed invention?
ANALYSIS
Examiner finds that Appellants'
[S]pecification fails to provide the algorithm (e.g., the
necessary steps and/or flowcharts) that performs the claimed
function of "deriving the intraocular pressure from the sectional
images of the deformed and undeformed cornea as corrected for
the offset of the entire eye along the optical axis" in sufficient
detail such that one of ordinary skill can reasonably conclude
that the inventor invented the claimed subject matter.
(Ans. 3--4.) We agree.
12 The Reply Brief is not paginated. Therefore, all reference to page
numbers of the Reply Brief refer to page numbers as if the Reply Brief were
numbered consecutively beginning with the first page.
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Appellants contend that "[ t ]he steps used to evaluate intraocular
pressure are ... well known in the art, ... described in ... the background
section" of their Specification, and are disclosed by Iijima (App. Br. 18). In
addition, Appellants contend that their Specification provides written
descriptive support for their claimed invention, because their claims are not
written in means plus function format (see Reply Br. 4 ). We are not
persuaded.
Although it appears that the general steps for measuring intraocular
pressure in an eye are known in the art, as discussed in further detail below,
Appellants' claimed invention is not limited to what is known in the art. To
the contrary, Appellants' claimed invention requires the derivation of an
offset of the entire eye along the optical axis in response to the application of
a puff of air to an undeformed cornea and the use of this derived offset value
to correct at least one sectional image of a deformed cornea (see App. Br.
22; cf id. at 10-16 (Appellants' contend that the prior art relied upon by
Examiner fails to disclose this aspect of Appellants' claimed invention).
Appellants fail to direct our attention to an evidentiary basis in the prior art
or a portion of their Specification that provides written descriptive support
for this requirement of Appellants' claimed invention.
CONCLUSION
The preponderance of evidence on this record supports Examiner's
finding that Appellants' Specification fails to provide written descriptive
support for the claimed invention. The rejection of claim 1 under the written
description provision of 35 U.S.C. § 112, first paragraph, is affirmed.
Claims 2, 4, 6, 8-14, and 16 are not separately argued and fall with claim 1.
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Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
ANALYSIS
Appellants' claim 1 is reproduced above. Appellants' claims 2, 4, 6,
8-14, and 16 depend directly or indirectly from Appellants' claim 1.
Appellants disclose that "a non-contact tonometer is used" "to
measure an intraocular pressure in an eye" (Spec. ,r 4). In practice, a non-
contact tonometer applies a puff of air to an eye under examination, wherein
the strength of the puff of air is
selected in such a way that the cornea of the eye is pressed
inwards, forming a concave surface shape. Before maximum
deformation of the cornea is achieved, and before the cornea
folds inwardly towards the ocular lens, the cornea briefly forms
a planar surface which is called the "first applanation point".
Following maximum deflection of the cornea and once it has
folded back into the original state, the cornea passes through a
second, identical applanation point. [Thus,] [i]t is [] possible to
establish an intraocular pressure by relating a pressure of the
puff of air to a temporal progression of applanation of the
cornea. The measured values established using the non-contact
tonometer are compared with comparative measured values
established using a relatively accurately measuring applanation
tonometer or contact tonometer so that an internal eye pressure
approximated to the actual intraocular pressure can be derived
as a result.
(Id.) Appellants discovered, however, that the "force ... applied to the
cornea of the eye as a result of the application of the puff of air [] causes a
movement of the entire eye" (id. ,r 11 ). As Appellants explain, this
movement of the entire eye resulting from the puff of air is not accounted for
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in prior art "non-contact tonometer measurements" and "leads to
falsification of the measured values" (id.). Thus, Appellants' claimed
method of measuring an intraocular pressure in an eye, as set forth in
Appellants' claim 1, corrects for the movement in the entire eye as a result
of the application of a puff of air to the eye (see id.; see also App. Br. 23).
Thus, as a result of Appellants' claimed method, "[ a ]n error source, which
was not previously taken into account when measuring the intraocular
pressure by means of a non-contact tonometer, can ... be eliminated
effectively, and a much improved level of measurement accuracy is
achieved" (id.).
The method for measuring an intraocular pressure in an eye set forth
in Appellants' claim 1 comprises, inter alia, the following steps:
( 1) recording at least one sectional image of an undeformed cornea of an
eye; (2) applying a puff of air to an undeformed cornea of the eye to (a)
deform the cornea and (b) offset the entire eye along an optical axis; (3)
recording at least one sectional image of the deformed cornea; (4) deriving
the offset of the entire eye along the optical axis; ( 5) correcting the at least
one sectional image of the deformed cornea by the offset; and (6) deriving
the intraocular pressure from the sectional images of the deformed and
undeformed cornea as corrected for the offset of the entire eye along the
optical axis (see App. Br. 22).
Examiner's factual findings and reasoning are set forth on pages 5-26
and 46-60 of the Answer.
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Examiner finds that Koest '367 discloses a method for measuring an
intraocular pressure in an eye that comprises, inter alia, the steps of:
(i) recording at least one sectional image of an undeformed cornea of an eye;
(ii) applying a puff of air to the undeformed cornea of the eye to deform the
cornea; (iii) recording at least one sectional image of the deformed cornea;
and (iv) deriving the intraocular pressure from the sectional images of the
deformed and undeformed cornea (Ans. 5; see generally Koest '367 4: left
column, 11. 7-18).
According to Examiner, Iijima discloses that the application of "a puff
of air to [an] undeformed cornea of the eye," as set forth in Koest, will
"cause [a] patient to involuntarily move" (Ans. 5 (citing Iijima 1: 17-30 and
8:59-9:29)). We are not persuaded.
Iijima "relates to a noncontact tonometer for measuring the intraocular
pressure of a subject's eye" (Iijima 1 :6-7). According to Iijima,
corneal thickness is not uniform over the entire cornea and
different sections of the cornea have different corneal
thicknesses, respectively. Since the air pulse is applied to the
cornea a little time after the measurement of the corneal
thickness, it is possible that a section of the cornea to which the
air pulse is applied differs greatly from a section of the same
where the corneal thickness is measured due to a small
involuntary movement of the eye during the interval between a
puffing operation for applying an air pulse to the eye and a
corneal thickness measuring operation for measuring corneal
thickness. In such a case, incorrect data on the intraocular
pressure will be obtained if the measured intraocular pressure is
corrected by the measured corneal thickness.
(Iijima 1: 17-30 ( emphasis added); see also id. at 9: 17-28 ( disclosing
involuntary movement of the eye between the corneal thickness
measurement step and the application of an air puff to the eye).) Thus, "an
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object of [Iijima's invention was] ... to provide a noncontact tonometer
capable of applying an air pulse to a section of the cornea substantially
coinciding with a section of the cornea where the corneal thickness is
measured" (id. at 1 :33-37). Because Iijima discloses that "small involuntary
movement of the eye" occurs prior to the application of an air puff to the
eye, Iijima fails to support Examiner's assertion that the application of "a
puff of air to [an] undeformed cornea of the eye," as set forth in Koe st, will
"cause [a] patient to involuntarily move" and "offset the entire eye along an
optical axis by this movement." (Ans. 5; cf Reply Br. 2-3; App. Br. 11
("Iijima does not teach or suggest that the air puff causes the patient to
move")). Therefore, we are not persuaded by Examiner's unsupported
assertions regarding movement of a patient's eye in response to the
application of a puff of air (see, e.g., Ans. 6 (Examiner's "103 analysis [is]
based on the motion suggested by Iij ima[' s] indicat[ ion] [that] the patient
will move"); cf App. Br. 12 ("neither Iijima, nor any reference [relied upon
by Examiner], suggests that patient movement causes the eye to move along
the optical axis into, and therefore relative to, the eye socket, or suggests any
way to correct for that movement")).
Examiner's reliance on Macvicar's disclosure "that patient movement
and respiratory movement may cause subsequent images to be misaligned
and [that] it is known to correct the misalignment by geometrically
transforming or spatially translating the position or orientation of the images
so that they become align[ ed]" fails to make up for the failure of the
combination of Koest '367 and Iijima to suggest movement of the eye in
response to the application of a puff of air to the eye (see Ans. 5).
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For the foregoing reasons, we are not persuaded by Examiner's
conclusion that the combination ofKoest '367, Iijima, and Macvicar makes
obvious Appellants' claimed invention (see id.).
Suzuki "relates to a perimeter for examining a state of a visual field of
a patient's eye" (Suzuki ,r 1). Examiner finds that "Suzuki teaches that any
positional displacement should be compensated for during a comparison of
images of temporally different measurements ... , which would naturally
lead to more accurate results" (Ans. 14 (citing Suzuki ,r 38)). Examiner,
however, failed to establish that Suzuki makes up for the deficiencies in the
combination of Koest '367, Iijima, and Suzuki. Therefore, for the foregoing
reasons, we are not persuaded by Examiner's conclusion that the
combination of Koest '367, Iijima, and Suzuki makes obvious Appellants'
claimed invention (see Ans. 14).
We are not persuaded by Examiner's reliance on the statement of
Appellants' invention, as set forth in Appellants' Specification (see, e.g.,
Ans. 9--11 and 18-19). According to Examiner,
[ e ]ven though [] Appellant[ s] assert[] that they discovered that
[a patient's eye moves in response to the application of a puff of
air to the eye] ... , it does not change the fact that such
movement did occur before the Appellant's [sic] discovery
and/ or before the time of invention.
(Ans. 10; see id. (Appellants admit "that it is inherent that the entire eye
moves in the eye socket when using prior art non-contact tonometers").)
Based on Appellants' disclosure of eye movement in response to a puff of
air, which, according to Appellants', was unrecognized in the art at the time
of Appellants' claimed invention, Examiner finds that a person of ordinary
skill in the art would have arrived at Appellants' inventive contribution to
the field through routine experimentation (see Ans. 10-11 ). Examiner,
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however, failed to adequately explain how a person of ordinary skill in this
art would have corrected for movement of the eye in response to the
application of a puff of air, even if it inherently occurred, if such a person
did not know that such movement occurred prior to Appellants' disclosure.
Thus, we agree with Appellants' contention that Examiner's conclusion of
obviousness is based in hindsight (see App. Br. 15).
"To imbue one of ordinary skill in the art with knowledge of
the invention ... , when no prior art reference or references of
record convey or suggest that knowledge, is to fall victim to the
insidious effect of a hindsight syndrome wherein that which
only the inventor taught is used against its teacher."
W.L. Gore &Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1552 (Fed. Cir.
1983).
Examiner's reliance on Kohayakawa to teach "that the ocular fundus
is a suitable point of reference for determining alignment issues" (see, e.g.,
Ans. 22-23) and Luce to teach the use of pump pressure, in a non-contact
tonometer method, that "progresses in the form of a Gaussian bell curve"
and the adjustment of pump pressure "based on desired accuracy of the
ocular measurements" (see, e.g., Ans. 25), fails to make up for the
deficiencies in the combination of Koest '367, Iijima, and either of Macvicar
or Suzuki with or without Appellants' Admitted Prior Art discussed above.
CONCLUSION
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness.
The rejection of claims 1, 2, 4, 9, 13, and 14 under 35 U.S.C. § 103(a)
as unpatentable over the combination of Koest '367, Iijima, and Macvicar or
Suzuki is reversed.
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The rejection of claims 1, 2, 4, 9, 13, 14, and 16 under 35 U.S.C.
§ 103(a) as unpatentable over the combination ofKoest '367, Iijima,
Appellants' Admitted Prior Art, and either of Macvicar or Suzuki is
reversed.
The rejection of claims 6 and 8 under 35 U.S.C. § 103(a) as
unpatentable over the combination ofKoest '367, Iijima, Kohayakawa, and
either of Macvicar or Suzuki, with or without Appellants' Admitted Prior
Art is reversed.
The rejection of claims 10-12 under 35 U.S.C. § 103(a) as
unpatentable over the combination ofKoest '367, Iijima, Luce, and either of
Macvicar or Suzuki, with or without Appellants' Admitted Prior Art is
reversed.
Obviousness-type Double Patenting:
The obviousness-type double patenting rejections over the claims of either of
Koest '014 or Koest '823 in combination with Iijima, Suzuki, Appellants'
Admitted Prior art, with or without either of Kohayakawa or Luce:
ISSUE
Should the obviousness-type double patenting rejections over the
claims of either of Koest '014 or Koest '823 in combination with Iijima,
Suzuki, Appellants' Admitted Prior art, with or without either of
Kohayakawa or Luce be summarily affirmed by the Board?
ANALYSIS
Appellants do not address these rejections. Therefore they are
summarily affirmed. See Manual of Patent Examining Procedure§ 1205.
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CONCLUSION
The obviousness-type double patenting rejections over the claims of
either of Koest '014 or Koest '823 in combination with Iijima, Suzuki,
Appellants' Admitted Prior art, with or without either of Kohayakawa or
Luce should be summarily affirmed by the Board.
The rejection of claim 1 under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over the claims of
Koest '014 in view of Iijima, Suzuki, and Appellants' Admitted Prior Art is
affirmed. Claims 2, 4, 9, 10, 13, 14, and 16 are not separately argued and
fall with claim 1.
The rejection of claim 6 under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over the claims of
Koest '014 in view oflijima, Suzuki, Appellants' Admitted Prior Art, and
Kohayakawa is affirmed. Claim 8 is not separately argued and falls with
claim 6.
The rejection of claim 10 under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over the claims of
Koest '014 in view of Iijima, Suzuki, Appellants' Admitted Prior Art and
Luce is affirmed. Claims 11 and 12 are not separately argued and fall with
claim 10.
The rejection of claim 1 under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over the claims of
Koest '823 in view of Iijima, Suzuki, and Appellants' Admitted Prior Art is
affirmed. Claims 2, 4, 9, 10, 13, 14, and 16 are not separately argued and
fall with claim 1.
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The rejection of claim 6 under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over the claims of
Koest '823 in view of Iijima, Suzuki, Appellants' Admitted Prior Art, and
Kohayakawa is affirmed. Claim 8 is not separately argued and falls with
claim 6.
The obviousness-type double patenting rejections over the claims of
Steinmueller in combination with Iijima, Suzuki, Appellants 'Admitted Prior
art, with or without either of Kohayakawa or Luce:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness-type double patenting?
ANALYSIS
Examiner finds that the method of Steinmueller's claim 1 comprises,
inter alia, the steps of:
(i) recording at least one sectional image of an undeformed cornea of an eye;
(ii) applying a puff of air to the undeformed cornea of the eye to deform the
cornea; and (iii) recording at least on sectional image of the deformed cornea
(Ans. 28).
According to Examiner, the application of "a puff of air to [an]
undeformed cornea of the eye," as set forth in Steinmueller, will "cause [a]
patient to involuntarily move" (Ans. 5 (citing Iijima 1: 17-30 and 8: 59-
9:29)). For the reasons set forth with respect to the obviousness rejections,
we are not persuaded.
Further, for the reasons set forth above with respect to the obviousness
rejections, we find that Examiner failed to establish an evidentiary basis on
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this record to support a conclusion that any of Suzuki, Kohayaka, Luce, or
Appellants' Admitted Prior Art, alone or in combination, make up for the
foregoing deficiency in the combination of Steinmueller and Iijima ( cf Ans.
28-34; see generally Reply Br. 5-6).
CONCLUSION
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness-type double patenting.
The rejection of claims 1, 2, 4, 9, 10, 13, 14, and 16 under the
judicially created doctrine of obviousness-type double patenting as being
unpatentable over the claims of Steinmueller in view of Iijima, Suzuki, and
Appellants' Admitted Prior Art is reversed.
The rejection of claims 6 and 8 under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over the claims of
Steinmueller in view of Iijima, Suzuki, Appellants' Admitted Prior Art, and
Kohayakawa is reversed.
The rejection of claims 10-12 under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over the claims of
Steinmueller in view of Iijima, Suzuki, Appellants' Admitted Prior Art and
Luce is reversed.
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
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