Ex Parte Koest et alDownload PDFPatent Trial and Appeal BoardMay 15, 201813463396 (P.T.A.B. May. 15, 2018) Copy Citation 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). Appeal2017-003508 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 2 Appeal2017-003508 Application 13/463,396 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. 3 Appeal2017-003508 Application 13/463,396 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. 4 Appeal2017-003508 Application 13/463,396 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. 5 Appeal2017-003508 Application 13/463,396 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. 6 Appeal2017-003508 Application 13/463,396 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. 7 Appeal2017-003508 Application 13/463,396 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. 8 Appeal2017-003508 Application 13/463,396 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 9 Appeal2017-003508 Application 13/463,396 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. 10 Appeal2017-003508 Application 13/463,396 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 11 Appeal2017-003508 Application 13/463,396 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). 12 Appeal2017-003508 Application 13/463,396 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, 13 Appeal2017-003508 Application 13/463,396 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. 14 Appeal2017-003508 Application 13/463,396 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. 15 Appeal2017-003508 Application 13/463,396 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. 16 Appeal2017-003508 Application 13/463,396 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 17 Appeal2017-003508 Application 13/463,396 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 18 Copy with citationCopy as parenthetical citation