Ex Parte Mordaunt et al

Patent Trial and Appeal Board

May 8, 2018

11726991 (P.T.A.B. May. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111726,991 03/22/2007
150005 7590 05/10/2018
DENTONS US LLP - San Francisco
P.O. Box 061080
Wacker Drive Station, Willis Tower
Chicago, IL 60606
FIRST NAMED INVENTOR
David H. Mordaunt
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.
15589000-012101 9989
EXAMINER
JENNESS, NATHAN JAY
ART UNIT PAPER NUMBER
3769
NOTIFICATION DATE DELIVERY MODE
05/10/2018 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):
patents.us@dentons.com
dentons_PAIR@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID H. MORDAUNT and DANE. ANDERSEN
Appeal2016-004443
Application 11/726,991
Technology Center 3700
Before PHILIP J. HOFFMANN, BRADLEYB. BAY AT, and
AMEE A. SHAH, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's rejection of claims 1--4, 6-13, and 15-21. We have jurisdiction
under 35 U.S.C. § 6(b ). Appellants appeared for an oral hearing before the
Board on April 26, 2018.
We REVERSE.
According to Appellants, the "invention relates to photothermal
treatment of retinal tissue using fiber-optic-based endophotocoagulation
1 According to Appellants, the real party in interest is Topcon Medical
Laser Systems, Inc. Appeal Br. 2.
Appeal2016-004443
Application 11/726,991
probes." Spec. i-f 2. Claim 1 is the sole independent claim on appeal.
Below, we reproduce claim 1 as representative of the appealed claims.
1. A photomedical system for treating ophthalmic
target tissue, comprising:
a light source for generating a beam of light;
a plurality of optical fibers each having an input end and
an output end;
a mirror configured to selectively and telecentrically
deflect the light beam into the input ends of the optical fibers,
one optical fiber input end at a time;
a probe having a tip configured for insertion into the eye;
and
an optical element disposed adjacent the output ends of
the plurality of optical fibers,
wherein the output ends of the optical fibers
terminate at the distal end of the probe tip,
wherein the distal end of the probe tip is
configured to sequentially project spaced apart spots of the light
beam from the output ends in response to selective deflection
by the mirror of the light beam into the input ends of all of the
optical fibers, and
wherein the optical element is configured to
deflect at least one of the projected spots of the light beam
directly onto ophthalmic target tissue within the eye.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
I. claims 1-3, 7-13, and 16-21 under U.S.C. § 103(a) as
unpatentable over Kittrell et al. (US 2002/0045811 Al, pub.
Apr. 18, 2002) (hereinafter "Kittrell") and Angeley et al.
2
Appeal2016-004443
Application 11/726,991
(US 2003/0220633 Al, pub. Nov. 27, 2003) (hereinafter
"Angeley");
II. claim 4 under U.S.C. § 103(a) as unpatentable over Kittrell,
Angeley, and Blumenkranz et al. (US 2006/0195076 Al, pub.
Aug. 31, 2006) (hereinafter "Blumenkranz");
III. claim 6 under U.S.C. § 103(a) as unpatentable over Kittrell,
Angeley, and Ren et al. (US 5,688,264, iss. Nov. 18, 1997)
(hereinafter "Ren");
IV. claim 15 under U.S.C. § 103(a) as unpatentable over Kittrell,
Angeley, and Shimmick et al. (US 6,004,313, iss. Dec. 21,
1999) (hereinafter "Shimmick")
V. claims 1-3, 6-13, and 16-21 under U.S.C. § 103(a) as
unpatentable over Ren, Kittrell, Angeley, and Baker et al.
(US 5,261,904, iss. Nov. 16, 1993) (hereinafter "Baker");
VI. claim 4 under U.S.C. § 103(a) as unpatentable over Ren,
Kittrell, Angeley, Baker, and Blumenkranz; and
VII. claim 15 under U.S.C. § 103(a) as unpatentable over Ren,
Kittrell, Angeley, Baker, and Shimmick.
ANALYSIS
Rejection I
Appellants argue that the obviousness rejection of claims 1-3, 7-13,
and 16-21 based on Kittrell and Angeley is in error because, among other
reasons, "Kittrell does not disclose a probe having a tip configured for
insertion into the eye." Appeal Br. 5 (emphasis omitted). Based on our
review of the record, including the Appeal Brief and Reply Brief, and the
3
Appeal2016-004443
Application 11/726,991
Final Office Action and Examiner's Answer, we agree with Appellants.
Thus, we do not sustain the rejection.
As Appellants point out, with reference to independent claim 1, from
which claims 2, 3, 7-13, and 16-21 depend,
[as the] claim itself makes clear, in both the preamble and twice
in the body of the claim, ... the claim is directed to an eye probe.
Specifically, claim 1 recites "[a] photomedical system for
treating ophthalmic target tissue," "a probe having a tip
configured for insertion into the eye," and that "the optical
element is configured to deflect at least one of the projected spots
of the light beam directly onto ophthalmic target tissue within the
eye."
Appeal Br. 6 (emphases omitted).
In response, the Examiner determines that "[i]f the prior art structure
is capable of performing the intended use, then it meets the claim."
Answer 3. The Examiner further determines that
Id.
Kittrell teaches the outer diameter of the probe tip may have an
outer diameter of 3 millimeters ... [,] which is suitably sized for
insertion into the eye. The skilled artisan would consider the
probe tip taught by Kittrell for other medical applications,
including eye surgery, based on its size relative the anatomy of
the eye.
Although the Examiner applies a broad meaning to the phrase
"configured to" to mean "capable of' (see Answer 3), we find that the
ordinary and customary meaning of this phrase, especially in light of
Appellants' Specification, supports a narrower meaning for this phrase to
require that the probe and device are designed to the particular use, purpose,
or situation. See Aspec Eyewear, Inc. v. Marchan Eyewear, Inc., 672
F.3d 1335, 1349 (Fed. Cir. 2012) (The phrase "adapted to" construed
4
Appeal2016-004443
Application 11/726,991
narrowly to mean "configured to," as opposed to "capable of' or "having the
capacity of'); Boston Scientific Corp. v. Cordis Corp., 2006 WL 3782840
(N.D. CA. 2006) ("A widely accepted dictionary definition of the word
'configure' means '[t]o design, arrange, set up, or shape with a view to
specific applications or uses.' American Heritage Dictionary 386 (4th
ed. 2000)."). The Examiner's explanation that "[t]he skilled artisan would
consider the probe tip taught by Kittrell for other medical applications,
including eye surgery" fails to establish that Kittrell' s device is designed to
be inserted into the eye.
Rejections II-IV
The Examiner rejects claims 4, 6, and 15, each of which depends from
claim 1, based on the determination that Kittrell' s device need only be, and
is, capable of being inserted into an eye. See, e.g., Final Action 8-10. Thus,
we do not sustain Rejections II-IV for the same reasons we do not sustain
Rejection I.
Rejection V
Appellants argue that the obviousness rejection of claims 1-3, 6-13,
and 16-21 based on Ren, Kittrell, Angeley, and Baker is in error because
there is no reason "to modify Ren to include an optical element as taught by
Kittrell or Baker." Appeal Br. 17. Based on our review of the record, we
agree with Appellants. Thus, we do not sustain the rejection.
Specifically, Appellants argue that
the laser catheter described in Kittrell is intended for removing
plaque from an artery. The catheter in Baker is also intended for
the removal of plaque from obstructed blood vessels. . . . Given
that the girth of Ren' s ophthalmic probe is, for practical reasons,
based on the size of the human eye, and further given that Ren's
ophthalmic probe must already house optical fibers, one of
5
Appeal2016-004443
Application 11/726,991
ordinary skill in the art would not have looked to the optical
elements of an arterial probe to modify Ren.
Appeal Br. 17 (citation omitted).
In response,
[t]he Examiner disagrees[,] as both Kittrell and Baker teach the
concept of controlling the location and divergence of the beams
emitted from the optical fibers to generate a desired treatment
pattern. This concept is applicable to all optical systems in which
laser intensity is controlled to provide a desired laser light dosage
and is desir[]able in both arterial and op[h ]thalmic probes.
Answer 9.
It is well settled that "[r]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." See KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). In this case, even assuming that the Examiner
adequately supports the findings that "Kittrell and Baker teach the concept
of controlling the location and divergence of the beams emitted from the
optical fibers to generate a desired treatment pattern," these references
discuss removal of plaque from an artery. Conversely, the Examiner does
not establish that "controlling the location and divergence of the beams
emitted from the optical fibers to generate a desired treatment pattern"
would have been useful or desirable in Ren's laser system for performing
retinal reattachment surgery in an eye. Thus, the Examiner does not
sufficiently articulate a reasoning with the required rational underpinning to
establish that it would have been obvious to use an optical element from an
arterial-plague-removing device in a device for performing eye surgery.
6
Appeal2016-004443
Application 11/726,991
Rejections VI and VII
The Examiner rejects claims 6 and 15, each of which depends from
claim 1, based on the determination that it would have been obvious to use
Kittrell's or Baker's optical element in Ren's device. See, e.g., Final
Action 15-16. Thus, we do not sustain Rejections VI and VII for the same
reasons we do not sustain Rejection V.
DECISION
We REVERSE the Examiner's obviousness rejections of claims 1--4,
6-13, and 15-21.
REVERSED
7