Ex Parte Odrich et al

Board of Patent Appeals and Interferences

Oct 30, 2008

10600027 (B.P.A.I. Oct. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MARC ODRICH,
KENNETH GREENBERG, JEROME A. LEGERTON,
CHARLES R. MUNNERLYN, and JOHN K. SHIMMICK
__________

Appeal 2008-1260
Application 10/600,027
Technology Center 3700
__________

Decided: October 30, 2008
__________

Before ERIC GRIMES, LORA M. GREEN, and FRANCISCO C. PRATS,
Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants have requested rehearing of the decision entered May 21,
2008 (“Decision”), affirming the rejection of claims 10-15 for obviousness.
The request for rehearing is denied.

Appeal 2008-1260
Application 10/600,027

DISCUSSION
Appellants argue that rehearing is appropriate because briefing was
completed before the Supreme Court rendered its opinion in KSR Int’l Co. v.
Teleflex Inc., 127 S. Ct. 1727 (2007), and because:
1. The Board appears to have misapprehended or
overlooked the scope and content of the prior art, in
particular, differences between the prior art and the
claimed invention. This appears to be a misapprehension
as the Board appears to have agreed with Appellants that
the prior art does not teach each element of the claimed
invention as recited in claim 10 and yet found claims 10-
19 obvious in view of the prior art (e.g., Decision, p. 18-
19).
2. The Board appears to have misapprehended or
overlooked proper application of the KSR decision in
using “common sense” alone to supply a claim element
that is wholly missing from the prior art.
3. The Board appears to have misapprehended or
overlooked what a skilled artisan at the time of the
invention having “common sense” and/or ordinary
creativity would, in fact, have reasonably inferred from
the teachings of the prior art. There is no evidence or
prior art present in the record, and cited by either the
Board or the Examiner, to support modifying the
combination of Frey and Largent to supply a missing
element through inference or “common sense.”
4. The Board appears to have misapprehended or
overlooked the requirement that a conclusion of
obviousness be supported by some articulated reasoning
with some rational underpinning.

(Req. Reh’g 2-3.)
ISSUE 1
Appellants argue that in affirming the Examiner’s obviousness
rejection of claims 10-15 over Frey and Largent our decision
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misapprehended or overlooked the scope and content of the prior art
because, even in combination, those references do not meet the limitation in
claim 10 requiring the system to have a tangible medium with stored
instructions that, if executed, cause the processor to “‘determin[e] the
distribution of laser beam pulses to ablate the first and second regions of the
multifocal ablation shape, wherein the distribution is determined in response
to a signal related to a size of the patient’s pupil’” (Req. Reh’g 3).
We are not persuaded by this argument. In evaluating the Examiner’s
conclusion of obviousness, our decision acknowledged that Frey’s pupil
size-based vision-correcting system differed from claim 10 in that it did “not
have instructions controlling the laser’s pulses such that the cornea is ablated
to achieve a multifocal shape that corrects near and far vision” (Decision
16).
However, in view of Largent’s teaching of the desirability of using
ablative laser energy to reshape a patient’s cornea to have one region shaped
to correct near vision, and another region to correct far vision, we agreed
with the Examiner that one of ordinary skill in the art would have been
prompted to include in Frey’s vision correcting system instructions directing
the processor to determine the distribution of the laser’s pulses so as to
provide separate regions on the cornea to correct near and far vision, in the
manner recited in claim 10 (id.; see also Decision 19). We therefore do not
agree with Appellants that our decision overlooked or misapprehended the
scope and content of the prior art vis-à-vis claim 10.
Seeking to refine their arguments, Appellants submit illustrations A,
B, and, C, and refer to the Specification’s disclosure of the equation used to
adjust the distribution of laser pulses, as evidence of what claim 10
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encompasses, and what the prior art would have suggested to one of ordinary
skill (see Req. Reh’g 4-9). However, those arguments were not submitted in
the briefs filed in this appeal.
As stated in 37 C.F.R. § 41.52(a)(1), “[a]rguments not raised in the
briefs before the Board and evidence not previously relied upon in the brief
and any reply brief(s) are not permitted in the request for rehearing except as
permitted by paragraphs (a)(2) and (a)(3) of this section.” Because
Appellants have not pointed out why the new arguments fall into the
exceptions in 37 C.F.R. § 41.52(a)(2) and (a)(3), we decline to consider
them.
ISSUE 2
Appellants argue that our decision “does not dispute Appellant’s
contention that the combination of Frey and Largent would not teach each
element of claim 10, but instead appears to substitute ‘ordinary creativity
and common sense,’ rather than the teaching in the prior art, to supply the
missing elements” (Req. Reh’g 10 (quoting Decision 19)). Therefore,
Appellants argue, our decision misinterprets or misapprehends the Supreme
Court’s opinion in KSR, because KSR “simply does not support the
proposition that a factfinder need not find precise teachings of claim
elements, either in cited references or elsewhere in the art, when evaluating
whether a claimed invention would be non-obvious” (Req. Reh’g 10).
Rather, Appellants argue, “KSR, including the quoted provision, supports the
more modest proposition that one need not seek out precise teachings when
determining whether there would be a motivation to combine elements that
have already been identified as being known in the prior art” (id.).
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We do not agree with Appellants’ characterization of our decision, nor
do we agree that our decision misapprehended or misapplied KSR in
affirming the Examiner’s obviousness rejection.
We do, however, agree with Appellants that “obviousness requires a
suggestion of all limitations in a claim.” CFMT, Inc. v. Yieldup Intern.
Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (citing In re Royka, 490 F.2d
981, 985 (CCPA 1974)).
We also agree that, while the Supreme Court emphasized a flexible
approach to the obviousness question in KSR, the Court nonetheless
similarly noted that
it can be important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new invention
does . . . because inventions in most, if not all, instances rely
upon building blocks long since uncovered, and claimed
discoveries almost of necessity will be combinations of what, in
some sense, is already known.

KSR, 127 S. Ct. at 1741 (emphasis added); see also id. at 1740-41 (requiring
a determination of “whether there was an apparent reason to combine the
known elements in the fashion claimed by the patent at issue”) (emphasis
added).
However, we do not agree with Appellants that our decision
demonstrates a reliance only on common sense to meet the claim limitation
at issue. As noted above, our decision acknowledged that Frey’s pupil
size-based vision-correcting system differed from claim 10 in that it did “not
have instructions controlling the laser’s pulses such that the cornea is ablated
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to achieve a multifocal shape that corrects near and far vision” (Decision
16).
However, because Largent teaches the desirability of using ablative
laser energy to reshape a patient’s cornea so that one region is reshaped to
correct near vision, and another region is reshaped to correct far vision, we
agreed with the Examiner that one of ordinary skill in the art would have
been prompted to include in Frey’s vision-correcting system instructions
directing the processor to determine the distribution of the laser’s pulses so
as to provide separate regions on the cornea to correct near and far vision, in
the manner recited in claim 10 (id.; see also Decision 19).
Thus, rather than relying solely on common sense, our decision to
affirm the Examiner’s conclusion of obviousness relied on the knowledge
imparted to one of ordinary skill by Largent and Frey. We therefore do not
agree with Appellants that our decision reflects a misapprehension of the
KSR opinion, or that our decision uses only common sense to teach or
suggest a claim limitation.
ISSUE 3
Appellants argue that even if one assumes for argument’s sake that a
person of ordinary skill would have sought “to combine the references so as
to employ the pupil matching of Frey to the multi-region ablation shape of
Largent, common sense would simply direct a skilled artisan to adjust the
outer periphery of the ablation region and any accompanying change in
ablation depth, not the inner ablation region” (Req. Reh’g 13). Thus,
Appellants argue, “the idea of first combining the references and then further
modifying the teachings by adjusting inner ablation regions of the Largent
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correction in response to pupil size would not be supported by a common
sense reading of the references” (id. at 14).
Appellants’ arguments do not persuade us that our decision
misapprehended or overlooked any point of fact or law. Claim 10 does not
recite “adjusting inner ablation regions.”
Rather, claim 10 recites a system for treating a cornea of an eye of a
patient to mitigate presbyopia with a multifocal ablation shape. The system
of claim 10 has a laser for making a beam of an ablative light energy, a
processor in electrical communication with the laser, and a tangible medium
coupled to the processor that has stored instructions (Decision 11 (Finding of
Fact (“FF”) 5)).
The limitation in claim 10 at issue requires the stored instructions to
cause the processor to:
determin[e] the distribution of laser beam pulses to ablate
the first and second regions of the multifocal ablation shape,
where the distribution is determined in response to a signal
related to a size of the pupil so as to balance the near vision
correction and the far vision correction of the multifocal
treatment for the patient.

As we articulated in our decision, Frey’s system includes a processor
that meets the structural limitations of claim 10, as well as the limitation
requiring the distribution of the corrective laser pulses to be determined in
response to a signal related to a size of the pupil (see Decision 12-13 (FF 6-
9)). Because Largent teaches the desirability of using ablative laser energy
to reshape a patient’s cornea so that one region is shaped to correct near
vision, and another region to correct far vision, we agreed with the Examiner
that one of ordinary skill in the art would have been prompted to include in
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Frey’s pupil size-based vision-correcting system instructions directing the
processor to determine the distribution of the laser’s pulses so as to provide
separate regions on the cornea to correct near and far vision (see Decision
16, 19). We therefore do not agree with Appellants that our decision
misapprehended any point of law or fact with respect to this issue.
Appellants again seek to refine the arguments made in the briefs
regarding the scope of claim 10 by referring to newly submitted illustrations
B and C, and by referring to the Specification’s disclosure of the parameters
used to adjust the distribution of laser pulses (see Req. Reh’g 13-15).
However, as discussed above, those arguments were not submitted in the
briefs filed in this appeal. Because Appellants have not pointed out why the
new arguments fall into either exception (a)(2) or (a)(3) of 37 C.F.R. §
41.52(a)(1), we decline to consider them.
ISSUE 4
Appellants argue:
[T]he Board appears to have either misapprehended or
overlooked the requirement that, in order to establish a prima
facie case of obviousness, the Examiner must set forth some
articulated reasoning or logical rationale supporting a proposed
combination of prior art and the resulting conclusion of
obviousness. Such a requirement is clearly expressed in the
recent KSR decision.

(Req. Reh’g 16.)
Specifically, Appellants take issue with our statement that “Appellants
do not point to, nor do we see, any evidence that Frey’s system would not
have been adaptable to Largent’s process” (id. at 17 (quoting Decision 20)).
Appellants urge that this comment improperly “place[s] the burden of
proving non-obviousness upon Applicant” (Req. Reh’g 17).
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We are not persuaded by these arguments. We note that “‘rejections
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.’” KSR, 127 S.
Ct. at 1741 (quoting In re Kahn, 441 F.3d 977, 988, (Fed. Cir. 2006)
(emphasis added).
In the instant case, however, the Examiner explicitly stated that one of
ordinary skill would have considered it obvious to use Frey’s device on a
presbyopic subject,
since this condition is correctable with laser sculpture as taught
by Largent, or to employ the pupil scaling device of Frey in the
presbyopia treating system of Largent, since this would reduce
the halo effect and improve night vision, as taught by Frey, thus
producing a device such as claimed.

(Decision 10-11 (quoting Ans. 4)). We therefore do not agree with
Appellants that the Examiner failed to adequately state the rationale
underlying the obviousness conclusion.
As to the comment on page 20 of the decision, Appellants have taken
the statement out of context. As the decision points out, Appellants argued
that Largent’s ablation process “would not easily be adaptable for scaling of
the outer periphery of the ablation shape, as taught by Frey” (Decision 20
(quoting App. Br. 14)). Thus, the statement that “Appellants do not point to,
nor do we see, any evidence that Frey’s system would not have been
adaptable to Largent’s process” (Decision 20) merely points out that
Appellants had not explained where one could find evidence supporting the
assertion regarding the lack of adaptability of Largent’s process to Frey’s
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system. We therefore do not agree with Appellants that the decision
improperly placed the burden of showing non-obviousness on Appellants.

SUMMARY
Appellants’ arguments do not persuade us that our decision affirming
the Examiner’s obviousness rejection of claims 10-15 has misapprehended
or overlooked any point of fact or law. We therefore decline to modify our
original decision entered May 21, 2008.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REHEARING DENIED

cdc

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