Ex Parte Mordaunt et alDownload PDFPatent Trial and Appeal BoardMay 8, 201811726991 (P.T.A.B. May. 8, 2018) Copy Citation 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 Copy with citationCopy as parenthetical citation