Ex Parte Schossau

Board of Patent Appeals and Interferences

Nov 9, 2007

10268307 (B.P.A.I. Nov. 9, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte TOM M. SCHOSSAU
__________

Appeal 2007-3862
Application 10/268,307
Technology Center 3700
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Decided: November 9, 2007
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Before TONI R. SCHEINER, ERIC GRIMES, and RICHARD M.
LEBOVITZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the Examiner’s final rejection of
claims 82-110. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

STATEMENT OF THE CASE
The claims are directed to a keratome knife for corneal surgery. The
knife has multiple wedge-shaped sharply pointed blade tips. The knife can
be utilized by an eye surgeon to cut an incision into the cornea prior to
inserting an intraocular lens (Specification 3-4). According to the
Specification, multiple wedge-shaped blade tips produce self-sealing corneal
incisions (Specification 5). The Specification states that the advantage of a
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self-sealing incision is that it “shortens the [surgical] process significantly,
which . . . results in less trauma to the eye and streamlines the entire
procedure” (Specification 5).
Claims 82-110, which are all the pending claims, are appealed
(Appeal Br. 4). Appellant seeks review of the following rejections:
Claims 82-110 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Yolles (U.S. Pat. No. 2,647,310, Aug. 4, 1953) (Answer 4-5);
Claims 91-108 stand rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement (Answer 3);
Claims 91-108 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite (Answer 4).
For the rejection under § 102, we select claim 82 as representative of
the appealed claims; for the rejections under § 112, first and second
paragraphs, we select claim 91 and 100 as representative. Claims 82, 91,
and 100 read as follows:
82. A keratome knife for use by a surgeon to cut into a cornea of an
eyeball of a living being, said keratome knife having multiple wedge-shaped
sharply pointed blade tips rigidly affixed to one another for simultaneously
making small incisions that are connected together in one surgical stroke,
each wedge-shaped blade tip having a pair of non-serrated blade edges
configured to make self-sealing corneal incisions as said surgeon cuts into
the cornea of said keratome knife.

91. A keratome knife for use by a surgeon to cut into a cornea of an
eyeball of a living being, said keratome knife consisting of two multiple
wedge-shaped sharply pointed blade tips rigidly affixed to one another for
simultaneously making small incisions that are connected together in one
surgical stroke, each wedge-shaped blade tip having a pair of non-serrated
blade edges meeting at a frontal keratome knife portion and configured to
make self-sealing corneal incisions as said surgeon cuts into the cornea of
said eyeball with said keratome knife.
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100. A keratome knife for use by a surgeon to cut into a cornea of an
eyeball of a living being, said keratome knife consisting of two or three
multiple wedge-shaped sharply pointed blade tips rigidly affixed to one
another for simultaneously making small self-sealing incisions that are
connected together in one surgical stroke, each wedge-shaped sharply
pointed blade tip having a pair of non-serrated blade edges meeting at a
frontal keratome knife portion and configured to make self-sealing corneal
self-sealing incisions as said surgeon cuts into the cornea of said eyeball
with said keratome knife, and wherein each wedge-shaped sharply blade tip
points anteriorly and has said pair of blade edges diverging from a distal
forward end of said keratome knife.

REJECTION UNDER § 102
Claims 82-110 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Yolles.
Findings of Fact
The Yolles patent
1. Yolles describes a spoon for cutting into foods, fruits, and melons
(Yolles, at col. 1, ll. 1-4). The “spoon is well adapted for use in eating
grapefruit” (Yolles, at col. 1, l. 50 to col. 2, l. 1). The spoon can be used for
removing sections of the fruit (Yolles, at col. 2, ll. 25-27).
2. The spoon is provided with multiple “entrance tines” that are “slender
and elongated for puncturing purposes” (Yolles, at col. 1, ll. 31-32).
3. “The tines 3 are angular in shape and have their lower edges sharp as
indicated by the numerals 3a and 3b for cutting purposes” (Yolles, at col. 2,
ll. 17-20 and Figs. 1-2). The tines “aid in the inserting and initial cutting” of
the food (Yolles, at col. 2, ll. 11-13).
4. The tines are shown in Fig. 2 of Yolles as being tapered to form a wedge
(see Yolles, Fig. 2).
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Analysis
Yolles describes a grapefruit spoon having multiple entrance tines that
are wedged-shaped and sharpened at their edges for cutting purposes
(Findings of Fact (“FF”) 1-4). The Examiner contends that the sharpened
wedge-shaped entrance tines satisfy the limitations recited in claim 82 of
“multiple wedge-shaped pointed blade tips,” each tip having “a pair of non-
serrated blade edges” and thus finds that Yolles anticipates the claim (see
Answer 5, 7). Appellant contends that Yolles’ grapefruit spoon is not a
“keratome knife” (Reply Br. 4) and does not comprise non-serrated blade
tips which are “configured to make self-sealing corneal incisions” as recited
in claim 82 (Appeal Br. 17).
We begin with claim interpretation because until a claim’s scope is
properly understood it cannot be determined whether the claim is anticipated
by the prior art. Here, the claim is directed to a keratome knife “for use . . .
to cut into a cornea of an eyeball.” The knife is “configured to make self-
sealing corneal incisions.”
A keratome is a surgical knife utilized by eye surgeons to perform
corrective surgery on the cornea, such as inserting an intraocular lens into
the eye, removing a cataract, and relieving intraocular pressure
(Specification 1-3). The structure and design of keratomes to accomplish
these purposes were known in the prior art (see Specification 2-3, 7, and 13-
14). For example, the Specification describes prior art surgical keratomes in
which blade width, taper, and thickness were varied to make a corneal
incision with the desired characteristics (Specification 1-3). Persons of
ordinary skill in the art would thus understand that a “keratome knife” as
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recited in claim 82 is a special type of knife whose structure and design is
adapted to corneal surgery.
According to the Specification, wedge-shaped blade tips having non-
serrated blade edges – as recited for the keratome knife of claim 82 –
produce self-sealing incisions (Specification 5). The Specification explains
how this works:
The IOL injector system employs novel keratome knives
having multiple blade tips that create a wide incision by
simultaneously making a set of several small incisions that are
connected together in one stroke. The fact that each blade tip
has only a limited depth to cut a flap means the resulting wide
incision can be created without the need to penetrate deeply into
the cornea, as would be necessary with a single-point blade of
the desired width.
(Specification 5). On pages 12-13 of the Specification, the characteristics of
the blade configuration utilized to produce the self-sealing incisions are
described. These characteristics involve the spacing between the multiple
blade tips, sharpness of the blade tips, blade taper, and blade curvature
(Specification 12-13 (see numbered paragraphs (3) through (7)). Thus, we
find that persons of ordinary skill in the art, upon reading the Specification,
would understand the limitation “configured to make self-sealing corneal
incisions” to mean the structural characteristics described on pages 12-13 of
the Specification.
In the context of the Specification, we interpret the claimed limitation
that the knife have “blade edges [ ] configured to make self-sealing corneal
incisions” to require the knife to have a particular structure which, when
used by eye surgeons to cut into the eye, produces self-sealing incisions.
The Examiner infers from the similarity between the description of
Yolles’ tines and the claimed blade edges that Yolles’ grapefruit spoon
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would inherently be capable of making self-sealing incisions into the cornea.
However, when inherency is the basis for an anticipation rejection, it is the
Examiner’s burden to provide sound basis for believing that the device of
the prior art is the same as Appellant’s device. See In re Spada, 911 F.2d
705, 708 (Fed. Cir. 1990). Here, the Examiner has made no findings that
Yolles’ spoon has a structure that would enable it to be used to cut the
cornea in such a way that self-sealing incisions are made – as is required by
the limitations of claim 82. It is not sufficient that Yolles shows the entrance
tines to be wedge-shaped (FF 4) – as recited in claim 82 – and describes
them to be sharp for cutting purposes (FF 3) – as would be the “sharply
pointed blade” of claim 82 – because the claim limitation that the blades are
“configured to make self-sealing corneal incisions” imposes additional
specific structural requirements on the blades (see supra; Specification 12-
13) that make them useful for cutting into eyes. Because the purpose of
Yolles’ grapefruit spoon – to puncture (FF 2) and to cut out sections of a
fruit (FF 1) – is so far afield from the purpose of the claimed keratome, we
conclude that the Examiner’s burden is not discharged by merely pointing,
as the Examiner did, to parallels between the language used by Yolles to
describe the spoon tines and the language used in claim 82 to define the
claimed keratome knife.
Claims are to be given their broadest reasonable interpretation during
patent prosecution as they would be understood by persons of skill in the art
in light of the specification. The purpose of giving claims their broadest
reasonable interpretation is to reduce “the possibility that claims, . . . will be
given broader scope than is justified” by the prior art. In re Bigio, 381 F.3d
1320, 1324 (Fed. Cir. 2004) (internal citations omitted). In this case, there is
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no danger that the scope of claim 82 unjustifiably encroaches on the prior art
because the grapefruit spoon as taught by Yolles is not a keratome knife and
there is no evidence in the record that it could be used as one. The rejection
of claims 82-110 is reversed.

REJECTIONS UNDER § 112, FIRST AND SECOND PARAGRAPH
Claims 91-108 stand rejected under 35 U.S.C. § 112, first and second
paragraph.
The Examiner contends that the recitations in claim 91 of “two
multiple wedge-shaped sharply pointed blades” and in claim 100 of “two or
three multiple wedged-shaped sharply pointed blades” are not described in
the Specification (Answer 3-4). The Examiner states that these “limitations
indicate that there are more than one multiple wedge-shaped sharply pointed
blades. However the specification and the drawings disclose either two
wedge-shaped sharply pointed blades or three wedge-shaped sharply pointed
blades or multiple wedge-shaped sharply pointed blades, not ‘two or three
multiple-wedge shaped sharply pointed blades[’]” (Answer 4). The claims
are rejected under § 112, second paragraph, for this same reason (Answer 4).
We will not sustain these rejections. Appellant states in the Appeal
Brief that term “multiple” in claims 91 and 100 was redundant to the
statement that there are “two” and “two or three” wedge-shaped blades, and
was not intended to cover multiple sharply pointed blades (Appeal Br. 14).
We find this explanation to be consistent with the written description of the
Specification. The Examiner recognizes this as a mistake (Answer 6), yet
did not permit Appellant to amend the claims after the Final Rejection in
order to eliminate these issues from consideration in this appeal (see
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Amendment filed Aug. 15, 2006; Advisory action dated Oct. 2, 2006). In
our opinion, this was an error since the Examiner acknowledges the mistake
and therefore should have allowed Appellant the opportunity to correct it.
Nonetheless, to the extent that the Examiner interprets the phrase to
mean two or three wedged-shaped blade tips having multiple pointed blades
(Answer 4-5), we find this to be an unreasonable interpretation of the claims
as they would be understood by persons of skill in the art in the context of
the Specification. The rejections of claims 91-108 under 35 U.S.C. § 112,
first and second paragraph, are reversed.

REVERSED

lbg

ROBERT NATHANS
36 STAG DRIVE
BILLERICA, MA 01821
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