Ex parte LAI

Board of Patent Appeals and Interferences

May 13, 1999

08051033 (B.P.A.I. May. 13, 1999)

Application for patent filed April 20, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte SHUI T. LAI
__________
Appeal No. 98-2187
Application 08/051,0331
___________
ON BRIEF
___________
Before CALVERT, FRANKFORT and BAHR, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's
rejection of claims 62 and 64 through 98, which are all of the
claims remaining in the application. Claims 1 through 61 and
63 have been canceled.
Appeal No. 98-2187
Application 08/051,033
2
Appellant’s invention relates to a method of providing
controlled ablation of organic material, particularly,
ablation of eye tissue, with a laser by 1) generating laser
pulses having an energy density of less than 5FJ/(10Fm)² and a
duration in a range of about 0.01 picoseconds to less than 1
picosecond; and 2) applying said laser pulses to ablate the
organic material. Independent claim 62 is representative of
the subject matter on appeal and a copy of that claim may be
found in Appendix A of appellant’s brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
L’Esperance, Jr. (L’Esperance) 4,538,608 Sep. 3,
1985
Baron 4,712,543 Dec. 15,
1987
Menger 4,791,927 Dec. 20,
1988
Bille et al. (Bille) 4,907,586 Mar. 13,
1990
Lin 5,144,630 Sep. 1,
1992
Claims 62, 64 through 67, 70 through 77, 79, 80, 84
through 93 and 95 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Lin in view of Bille.
Appeal No. 98-2187
Application 08/051,033
Given that claim 69 depends from claim 98, we understand this rejection to be2
more correctly based on Lin, Bille and Baron as applied to claim 98, further in view of
Menger.
3
Claim 68 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Lin and Bille as applied to claim 62 above,
and further in view of Menger.
Claims 78, 81 through 83 and 94 stand rejected under
35 U.S.C. § 103 as being unpatentable over Lin and Bille as
applied above, and further in view of L’Esperance.
Claims 96 through 98 stand rejected under 35 U.S.C. § 103
as being unpatentable over Lin and Bille as applied above, and
further in view of Baron.
Claim 69 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Lin and Bille as applied above, and further
in view of Menger.2
Appeal No. 98-2187
Application 08/051,033
4
Rather than reiterate the examiner's full statement of
the above-noted rejections and the conflicting viewpoints
advanced by the examiner and appellant regarding those
rejections, we make reference to the examiner's answer (Paper
No. 25, mailed
November 10, 1997) for the examiner's complete reasoning in
support of the rejections, and to appellant’s brief (Paper No.
24, filed June 23, 1997) for appellant’s arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant’s specification and claims,
to the applied prior art references, and to the respective
positions articulated by appellant and the examiner. As a
consequence of our review we have reached the determinations
which follow.
Looking first to the examiner's rejection of appealed
claims 62, 64 through 67, 70 through 77, 79, 80, 84 through 93
and 95 under 35 U.S.C. § 103 as being unpatentable over Lin in
Appeal No. 98-2187
Application 08/051,033
5
view of Bille, we note that while Lin (col. 7, lines 39-48)
discloses laser pulses used in optical microsurgery that are
less than 1 picosecond (i.e., of subpicosecond duration), and
Bille teaches laser pulses of “approximately one (1)
picosecond” (col. 4, lines 57-58), neither of these references
teaches or fairly suggests ablation of organic material (e.g.,
ablation of eye tissue) with a laser by generating laser
pulses having an energy density of less than 5FJ/(10Fm)² and a
duration in a range of about 0.01 picoseconds to less than 1
picosecond. In our opinion, the examiner’s finding (answer,
pages 3-4) with regard to Bille’s teaching of ablation of
tissue, ablation of eye tissue and the use of power densities
in the ranges claimed, is in error. As for Lin, this
reference expressly notes that for short pulses in the range
of subpicosecond to a few picoseconds in duration, and high
repetition, “very high beam densities can be achieved” (col.
7, lines 44-45).
Like appellant (brief, page 6), we have determined that
Bille, at least generally, teaches energy densities that are
higher than the “less than 5FJ/(10Fm)²” set forth in
Appeal No. 98-2187
Application 08/051,033
6
appellant’s independent claims 62, 79 and 90 on appeal. As
for the examiner’s calculations on page 6 of the answer, which
the examiner purports show energy densities in the claimed
range, we note that such calculations have not accounted for
the effects of the wavelength variation indicated in column 9,
lines 17-21, of Bille and have entirely disregarded the
duration of the pulses that would be necessary to actually
cause ablation of tissue in a focal spot that is 70 microns in
diameter (see, for example, Bille, Col. 7, lines 13-17). In
our opinion, a laser pulse applied to a 70 micron diameter
focal spot at an energy density of 0.2599FJ/100Fm² (as
calculated by the examiner) and for a duration of less than 1
picosecond would not cause ablation of organic material, but
would require a much longer pulse duration to cause ablation,
if at all. Likewise, the examiner has not convinced us that
the calculated energy density of 0.2FJ/100Fm² applied for a
duration of less than 1 picosecond would be capable of being
useful for tissue ablation, as is required in each of the
claims before us on appeal.
Appeal No. 98-2187
Application 08/051,033
7
Thus, after considering the combined teachings of the
applied references, it is our determination that the examiner
has not established a prima facie case of obviousness with
regard to appellant’s claimed methods of providing controlled
ablation of organic material (claim 62), eye tissue (claim
79), or, more specifically, cornea tissue (claim 90). For
that reason, we will not sustain the examiner’s rejection of
claims 62, 64 through 67, 70 through 77, 79, 80, 84 through 93
and 95 under 35 U.S.C. § 103 as being unpatentable over Lin in
view of Bille.
With regard to the examiner's other rejections on appeal,
we have reviewed the teachings of L’Esperance, Baron and
Menger relied upon by the examiner, but find nothing therein
which alters our view with regard to the basic combination of
Lin and Bille. Therefore, the examiner’s rejections of
dependent claims 68, 69, 78, 81 through 83, 94 and 96 through
98 will likewise not be sustained.
Appeal No. 98-2187
Application 08/051,033
8
As is apparent from the foregoing, the decision of the
examiner rejecting claims 62 and 64 through 98 of the present
application is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
)
CHARLES E. FRANKFORT ) BOARD OF PATENT
Administrative Patent Judge )
) APPEALS AND
)
) INTERFERENCES
)
JENNIFER BAHR )
Administrative Patent Judge )
Appeal No. 98-2187
Application 08/051,033
9
LLB/kis
Bruce W. Greenhaus
BAKER, MAXHAM, JESTER & MEADOR
Symphony Towers
750 “B” Street
Suite 3100
San Diego, CA 92101