Ex Parte Michelson et al

Patent Trial and Appeal Board

Feb 28, 2017

11401761 (P.T.A.B. Feb. 28, 2017)

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.
11/401,761 04/11/2006 David Scott Michelson 510.201 4522
68368 7590 03/02/2017
Barcelo, Harrison & Walker, LLP
2901 W. Coast Hwy
Suite 200
Newport Beach, CA 92663
EXAMINER
NGUYEN, TIN DUC
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
rey@bhiplaw.com
josh@bhiplaw.com
dwalker@bhiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID SCOTT MICHELSON, TOVY SIVAN, and
IDO KILEMNIK
Appeal 2014-008830
Application 11/401,7611
Technology Center 3700
Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
BRUCE T. WIEDER, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35U.S.C. § 134 from the Examiner’
decision rejecting claims 1, 3—17, 19, 20, and 22. We have jurisdiction
the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to the Appellants, “[t]he real party in interest is
Surgery Technologies, LLC.” Appeal Br. 2.
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Appeal 2014-008830
Application 11/401,761
STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1, 9, and 19 are the independent claims on appeal. Claim 9,
reproduced below, is illustrative of the subject matter on appeal.
9. A capsulotomy cutting device for cutting a lens capsule, the
device comprising:
a planar cutting head for cutting the lens capsule, the
planar cutting head sized to fit into intraocular tissue, the planar
cutting head consisting of one blade, the capsulotomy cutting
device not including any other blade, the one blade including at
least two sharp edges in a fixed spatial relationship to each other,
the two sharp edges being on opposite surfaces of the planar
cutting head; and
an oscillation mechanism coupled to the one blade and that
oscillates the one blade at a rate less than 100 Hz;
wherein a shape of the at least two sharp edges is
adjustable within intraocular tissue.
Rejections
Claims 1, 3—11, 14—16, and 19 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Schechter (US 4,911,161, iss. Mar. 27, 1990),
Eibschitz-Tsimhoni (US 6,629,980 Bl, iss. Oct. 7, 2003), and Middleman
(US 5,904,690, iss. May 18, 1999).
Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Schechter, Eibschitz-Tsimhoni, Middleman, and Dileo (US 5,921,999, iss.
July 13, 1999).
Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Schechter, Eibschitz-Tsimhoni, Middleman, and Sakurai
(US 2004/0116952 Al, pub. June 17, 2004).
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Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Schechter, Eibschitz-Tsimhoni, Middleman, and Sorensen (US 5,437,678,
iss. Aug. 1, 1995).
Claims 20 and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schechter, Eibschitz-Tsimhoni, Middleman, and
Van Heugten (US 6,551,326 Bl, iss. Apr. 22, 2003).
ANALYSIS
Claims 1, 3—8, and 11—17
The Appellants argue that the combined teachings of Schechter,
Eibschitz-Tsimhoni, and Middleman lack a teaching of a “pivot,” as required
by independent claim 1. Appeal Br. 7, 9-10. The Appellants’ argument is
persuasive.
At the outset, we note that the Specification lacks an explicit
definition of the term “pivot.” However, the Appellants and the Examiner
provide a definition of the term. Id. at 10; Ans. 2. The Appellants define
“pivot” as “a pin or shaft on which a mechanical part turns.” Appeal Br. 10
(citing Merriam-Webster.com). The Examiner defines “pivot” as “a pin,
point, or short shaft on the end of which something rests and turns, or upon
and about which something rotates or oscillates.” Ans. 2 (citing
Dictionary.com). Both definitions are consistent with the broadest
reasonable interpretation of the term in light of the Specification as
understood by one of ordinary skill in the art.
Turning to the Examiner’s rejection based on the combined teachings
of Schechter, Eibschitz-Tsimhoni, and Middleman, the Examiner relies on
Middleman to teach a “pivot.” Final Act. 3 (citing Middleman Figs. 139—
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Application 11/401,761
141, col. 57,11. 37—65). More specifically, the Examiner finds that
“Middleman . . . teach[es] a medical device for manipulating tissue
comprising a pivot (e.g., a pivot of an [sic] shape memory blade 336).”
Ans. 3. The Examiner explains “that when the shape memory blade 336
extends out of element 310 the shape memory blade is turned or pivoted into
a curved configuration, in which a pivot is a point upon which shape
memory blade 336 tums/pivots as shown in marked-up figure 140 above.”
Id. at 4 (emphasis added). The Examiner’s finding is not adequately
supported by this explanation.
Rather, as pointed out by the Appellants, “the linear translation of the
elastic blade 336 (to extend outward from the housing 310) is [not] a
disclosure of a ‘pivot’ merely because the blade changes into a curved shape
outside the housing where it is unconstrained.” Reply Br. 4. The Appellants
argue persuasively that “changing of shape of. . . blade 336 (to be curved
when unconstrained) is different and distinct from any ‘pivot.’” Id. In other
words, we agree with the Appellants that the Examiner’s application of
Middleman’s disclosure to the claim term “pivot” is not consistent with the
broadest reasonable interpretation of the term in light of the Specification as
understood by one of ordinary skill in the art.
Thus, the rejection of independent claim 1 and dependent claims 3—8,
11, and 14—16 as unpatentable over Schechter, Eibschitz-Tsimhoni, and
Middleman is not sustained.
Claims 12, 13, and 17 depend from directly from independent claim 1.
Appeal Br., Claims App. The rejections of these claims rely on the rejection
of independent claim 1, as discussed above, and the teachings of Dileo,
Sakurai, or Sorensen. See Final Act. 10-11. These rejections fail to add a
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Application 11/401,761
finding or reasoning that remedies the Examiner’s errant finding as
described above. As such, we do not sustain the rejections of: claim 12 as
unpatentable over Schechter, Eibschitz-Tsimhoni, Middleman, and Dileo;
claim 13 as unpatentable over Schechter, Eibschitz-Tsimhoni, Middleman,
and Sakurai; and claim 17 as unpatentable over Schechter, Eibschitz-
Tsimhoni, Middleman, and Sorensen.
Claims 9, 10, and 19
The Appellants argue claims 9, 10, and 19 as a group. Appeal Br. 4.
We select claim 9 as the representative claim from the group. See 37 C.F.R.
§ 41.37(c)(l)(iv).
The Appellants point out that independent claim 9 recites, in-part, “a
shape of the at least two sharp edges is adjustable within intraocular tissue”
and that the Examiner relies on Middleman to teach the aforementioned
limitation of claim 9. Appeal Br. 10; see Final Act. 6 (citing Middleman,
Figs. 139—141, col. 57,11. 37—65). The Appellants argue that the cited
portions of Middleman teach elastic structures that “do not pertain to a
planar cutting head as required by claim[] 9 , and so would not so modify
the Schechter reference in combination.” Appeal Br. 10. The Appellants
assert that in certain embodiments in the Appellants’ Specification the
location of the flexibility of planar cutting head is critical. Id. at 10—11. The
Appellants support this assertion by pointing to examples in the
Specification (e.g., “[ojptionally, cutting head 102 is relatively rigid in the
cutting direction, while being relatively flexible in a direction allowing
adjustment of the planar shape of the cutting head”). See id. (quoting
Spec. 8,11. 14—16). And, based primarily on the foregoing assertion, the
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Appellants also argue that Middleman’s teachings of elastic structures
“would [not] be ‘capable of being used as claimed.’” Appeal Br. 11
(quoting Final Act. 9).
The Appellants’ argument is not persuasive because it is not
commensurate with the scope of claim 9. For example, claim 9 does not
require flexibility or adjustability of the shape of the planar cutting head as
described in the Specification at page 8, lines 14—16. Additionally, the
Examiner adequately explains how Middleman’s blade 336 is adjustable in
shape and how the combined teachings of Schechter, Eibschitz-Tsimhoni,
and Middleman result in the subject matter of claim 9. See Final Act. 6;
Ans. 4—5.
Thus, the rejection of claims 9, 10, and 19 as unpatentable over
Schechter, Eibschitz-Tsimhoni, and Middleman is sustained.
Claims 20 and 22
The Appellants argue that claims 20 and 22, which depend directly
from independent claim 19, are allowable for the same reasons as claim 19.
See Appeal Br. 13—14. For the reasons discussed above, the Appellants’
argument is not persuasive.
The Appellants separately argue the rejection of claim 20.2 Id. at 14.
Claim 20 recites, in-part, “the first cutting edge has a larger diameter than
the incision through which the cutting head is inserted.” Id. at Claims App.
The Examiner appears to find that Van Heugten’s disclosure of a super
elastic rod (e.g., super-elastic rod inner member 11), which is made of
2 The Appellants do not separately argue the rejection of claim 22.
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nitinol, corresponds to the aforementioned limitation of claim 20. Final
Act. 12 (citing Van Heugten, Figs. 3B, 3C, col. 2,11. 55—65).
The Appellants argue that although Van Heugten’s rod 11 includes a
circular loop section it does not include a cutting edge. Appeal Br. 14.
Rather, Van Heugten’s cutting edge is blade 14 and it “do[es] not have a
larger diameter than the incision through which the cutting head is inserted.”
See id. The Appellants’ argument is persuasive. Moreover, we note that
Van Heugten’s blade (i.e., cutting edge) is not made of nitinol. Van
Heugten, col. 3,11. 6—9.
For the reasons discussed above, we sustain the rejection of claim 22
and do not sustain the rejection of claim 20 as unpatentable over Schechter,
Eibschitz-Tsimhoni, Middleman, and Van Heugten.
DECISION
We REVERSE the Examiner’s rejections under 35 U.S.C. § 103(a) of:
claims 1, 3—8, 11, and 14—16 as unpatentable over Schechter,
Eibschitz-Tsimhoni, and Middleman; claim 12 as unpatentable over
Schechter, Eibschitz-Tsimhoni, Middleman, and Dileo;
claim 12 as unpatentable over Schechter, Eibschitz-Tsimhoni,
Middleman, and Dileo;
claim 13 as unpatentable over Schechter, Eibschitz-Tsimhoni,
Middleman, and Sakurai;
claim 17 as unpatentable over Schechter, Eibschitz-Tsimhoni,
Middleman, and Sorensen; and
claim 20 as unpatentable over Schechter, Eibschitz-Tsimhoni,
Middleman, and Van Heugten.
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We AFFIRM the Examiner’s rejections under 35 U.S.C. § 103(a) of:
claims 9, 10, and 19 as unpatentable over Schechter, Eibschitz-
Tsimhoni, and Middleman; and
claim 22 as unpatentable over Schechter, Eibschitz-Tsimhoni,
Middleman, and Van Heugten.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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