Ex Parte RATHJEN

Patent Trials and Appeals Board

Jun 20, 2019

13869534 - (D) (P.T.A.B. Jun. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/869,534 04/24/2013 CHRISTIAN RATHJEN
22907 7590 06/24/2019
BANNER & WITCOFF, LTD.
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
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.
008371.00005\US 8299
EXAMINER
KONG, QINGTIJN
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
06/24/2019 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):
eofficeaction@bannerwitcoff.com
GPD@bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTIAN RATHJEN
Appeal 2018-006391
Application 13/869,534
Technology Center 3700
Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
WILLIAM A. CAPP, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Christian Rathjen (Appellant) 1 appeals under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting claims 1, 2, 8, 12, 14, and 15. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 The Appeal Brief identifies Ziemer Ophthalmic Systems AG as the real
party in interest. Appeal Br. 2.
Appeal 2018-006391
Application 13/869,534
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is the only independent claim and is
representative of the claimed subject matter.
1. Ophthalmic device for treating eye tissue by means of laser
pulses, comprising:
a base station,
a first light source arranged in the base station and
configured to generate the laser pulses, a light projector for
focused projection of the laser pulses into the eye tissue,
wherein the light projector is movable in relation to the first
light source in such a way that a length of a light-
transmission path from the first light source to the light
projector is changeable, wherein the light projector is
connected to the base station via an arm,
an interferometric measurement system configured to
measure eye structures,
a reflecting optical element, which is movable in
relation to the first light source and provided for preventing
a change in a path length difference, between a
measurement arm and a reference arm of the interferometric
measurement system, as a result of a change in the length
of the light-transmission path, caused by a movement of the
light projector, wherein the reflecting optical element is
arranged in the reference arm, and wherein the reflecting
optical element is arranged in the base station, and
a control module and a movement driver, which
include logic to displace the reflecting optical element in the
base station, for compensating the movement of the light
projector, in such a way that a path length of the reference
arm is adapted in accordance with the change in the length
of the light-transmission path caused by the movement of
the light projector.
REJECTIONS
I. Claim 1 stands rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
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Application 13/869,534
II. Claims 1, 2, 8, 12, and 152 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Kurtz (US 2009/0171327 Al, published July
2, 2009) and Rathjen (US 2010/0049175 Al, published Feb. 25,
2010).
III. Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Kurtz, Rathjen, and Ruiz (US 6,607,527 Bl, issued Aug. 19,
2003).
DISCUSSION
Rejection I-Written Description
The Examiner finds that the disclosure of the present application does
not provide written description support for "a control module and a
movement driver, which include logic," as recited in claim 1. Final Act. 6;
see Appeal Br. 16 (Claims App.). In particular, the Examiner finds that "the
[S]pecification discloses the control module comprises a hardware o[r] logic
module" in the second paragraph, on page 9, and in the last paragraph, on
page 10, but "nowhere has a logic been disclosed as part of the movement
driver." Final Act. 6.
Appellant does not dispute the Examiner's finding that the
Specification does not disclose logic as part of the movement driver. See
Appeal Br. 4-5. However, Appellant asserts that claim 1 "does not recite or
require that each of the control module and movement driver include the
logic. Rather, the claim only requires that the control module and the
movement driver collectively include the logic." Id. at 5. Appellant cites
2 The Examiner addresses claims 8 and 12 in the detailed explanation of the
rejection. Final Act. 10-11.
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Application 13/869,534
lines 15-18, on page 9 of the Specification, as disclosing "that 'the control
module 11 is configured as a programmed software module for controlling a
processor of the ophthalmic device 1 or as a logic module, embodied as a
piece of hardware."' Id. at 5. Thus, Appellant contends that "the
combination of the control module and the movement driver includes the
logic." Id.
The disposition of this rejection turns on the proper construction for
the terminology "a control module and a movement driver, which include
logic" in claim 1. The Examiner maintains that the recitation in question
"does not positively reflect that the combination of the control module and
the movement driver together include logic" and that a person of ordinary
skill in the art would understand the recitation to mean that "both the control
module and the movement driver include logic." Ans. 8. To the extent that
the Examiner finds that the recitation in question requires both that the
control module includes logic and that the movement driver includes logic,
we do not agree with the Examiner.
Claim 1 recites, in the last clause thereof, a combination of two
elements, namely, "a control module and a movement driver," and then
further defines this combination of the control module and the movement
driver as including a third element, namely, "logic." Appeal Br. 16 (Claims
App.). Claim 1 does not specify which of the two elements, the control
module or the movement driver, includes the logic, nor does claim 1 recite
that the control module and the movement driver each include logic. Rather,
the last clause of claim 1 recites "a control module and a movement driver,
which include logic." Thus, an apparatus comprising a control module and a
movement driver, with logic included in the control module, the movement
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Application 13/869,534
driver, or both, would satisfy this limitation of claim 1. As Appellant points
out, the Specification discloses an apparatus comprising control module 11
and movement driver 33, and further discloses an example in which "control
module 11 is configured as a programmed software module for controlling a
processor of the ophthalmic device 1 or as a logic module embodied as a
piece of hardware." Spec. 9: 11-18. In other words, the Specification
describes an example comprising a control module and a movement driver,
and further including logic in the control module. Thus, the Specification
provides written description support for the limitation in question.
Accordingly, we do not sustain the rejection of claim 1 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
Rejections II and III-Obviousness
The Examiner finds that Kurtz's Figure 13 embodiment discloses an
ophthalmic system comprising, inter alia, a reflecting optical element (return
mirror 6230) "arranged in a reference arm that is arranged in the base
station," a light projector (movable objective lens 7100) that is movable
along a light path way, and a control module and a movement driver ( control
system 6100) to displace the light projector. Final Act. 7-8. However, the
Examiner finds that Kurtz's Figure 13 embodiment lacks, in pertinent part,
the control module and the movement driver including logic to displace the
mirror to compensate for the movement of the light projector so that a path
length of the reference arm is adapted in accordance with the change in the
length of the light transmission path caused by movement of the light
projector. See id. at 8.
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The Examiner finds that Kurtz discloses, in Figure 14, controlling
return mirror 6230 to move with the light projector (movable objective
lens 7100) to effect the same amount of change in the optical path length,
thereby providing automatic compensation for optical path-length difference
due to the movement of the light projector. Id. at 9. The Examiner
determines it would have been obvious to a person of ordinary skill in the art
to modify Kurtz by separating return mirror 6230 from movable objective
lens 7100 and duplicating the movement driver for moving lens 7100 by
providing a movement driver to move only return mirror 6230, and
rearranging return mirror 6230 to a suitable position in the OCT imaging
subsystem (i.e., the base unit), as illustrated in Kurtz's Figure 13
embodiment, "because doing so facilitate[s] convenient maintenance." Id.
at 9. According to the Examiner, locating the movable reflecting element
(mirror 6230) and the movement driver into the OCT imaging subsystem of
Figure 13 "can facilitate the maintenance of the conventional layout of
[Figure] 13 with benefit of no-additional need of computational
compensation" and "[ s Juch modification is predictable and obvious to one of
ordinary skill in the art." Id. at 5.
Appellant asserts that the Examiner has employed impermissible
hindsight to reconstruct Appellant's claimed invention. Appeal Br. 6.
Further, Appellant points out that Figures 13 and 14 of Kurtz are different
embodiments having different principles of operation and contends that the
Examiner "has not provided reasons why the proposed modifications would
allow for more convenient maintenance of the OCT imaging subsystem and,
thus, the rationale [ for the proposed modification] is inadequate." Appeal
Br. 9. Appellant argues that "there is no reason to believe that having the
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Application 13/869,534
movable mirror in the objective lens 7100 would make the OCT imaging
subsystem any less convenient to maintain than having the movable mirror
in the OCT imaging subsystem." Id.
The embodiments of Figures 13 and 14 of Kurtz disclose two different
approaches for compensating for the change in the optical path length caused
by movement of objective lens 7100 relative to patient interface 3300, one of
which compensates for movement of objective lens 7100 by additional
computation in the OCT system when generating a 3D image and the other
of which rigidly attaches return mirror 6230 to moveable objective lens 7100
for movement therewith to obviate the need for additional computation. See
Kurtz ,i,i 231, 232. In the embodiment of Figure 13, return mirror 6230 is
located within the OCT imaging subsystem, and does not move with
objective lens 7100. Thus, in the embodiment of Figure 13, movement of
objective lens 7100 by control system 6100 results in differences between
the reference arm and the signal arm of the OCT. Id. ,i 231. Kurtz provides
control module 7200 in the OCT system to apply an algorithm, when
assembling a 3D image from the OCT data, to compensate for differences
between the reference arm and the signal arm caused by the movement of
objective lens 7100. Id. In the Figure 14 embodiment, Kurtz arranges return
mirror 6230 such that it is rigidly attached to movable objective lens 7100 so
the signal arm and the reference arm undergo the same amount of change in
the optical path length when objective lens 7100 moves, thereby
automatically compensating for path-length differences without the need for
a computational compensation, as used in the Figure 13 embodiment. Id.
,i 232; compare id., Fig. 13 (illustrating return mirror 6230 within the OCT
imaging subsystem and OCT control computation 7200), with id., Fig. 14
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(illustrating return mirror 6230 arranged with moveable objective lens 7100
and omitting OCT control computation 7200).
It is not apparent, and the Examiner does not cogently explain, how
modifying Kurtz by providing return mirror 6230 in the OCT imaging
subsystem, as shown in Figure 13, and providing a separate movement
driver to move return mirror 6230 to compensate for any path-length
differences caused by movement of objective lens 7100, would facilitate
convenient maintenance. Duplicating the drivers would make the apparatus
more complicated than either the embodiment of Figure 14 of Kurtz or the
embodiment of Figure 13 of Kurtz. Further, it is not clear that such an
arrangement would obviate the need for additional computation in order to
control the movement of return mirror 6230 to compensate appropriately for
movement of objective lens 7100. Based on the record before us, if a person
of ordinary skill in the art wanted to obviate the need for compensating
computation, Kurtz would have instructed such a person to mount return
mirror 6230 for movement with objective lens 7100, as shown in Figure 14,
thereby automatically compensating for any path-length changes caused by
movement of lens 7100 without requiring multiple movement drivers. If on
the other hand, the skilled artisan wanted to mount return mirror 6230 away
from lens 7100, and in the OCT imaging subsystem, Kurtz would have
instructed such an artisan to compensate for the movement of lens 7100 in
the computation of the 3D image. Absent impermissible hindsight
reconstruction based on Appellant's teaching to do so in the underlying
disclosure of the present application, it is not apparent why a person having
ordinary skill in the art would have been prompted to modify Kurtz as the
Examiner proposes.
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For the above reasons, we agree with Appellant that the Examiner's
articulated reason for the proposed modification lacks rational underpinnings
and appears to be predicated on impermissible hindsight reconstruction. See
Appeal Br. 6, 9. The Examiner's application of Rathjen and Ruiz does not
make up for this deficiency in the Examiner's reasoning. See Final Act. 8,
12. Accordingly, we do not sustain either the rejection of claims 1, 2, 8, 12,
and 15 as unpatentable over Kurtz and Rathjen or the rejection of claim 14
as unpatentable over Kurtz, Rathjen, and Ruiz.
DECISION
The Examiner's decision rejecting claim 1 under 35 U.S.C. § 112,
first paragraph, is REVERSED.
The Examiner's decision rejecting claims 1, 2, 8, 12, 14, and 15 under
35 U.S.C. § 103(a) is REVERSED.
REVERSED
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