Ex Parte Seiler et al

Patent Trial and Appeal Board

Jul 11, 2018

13454468 (P.T.A.B. Jul. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/454,468 04/24/2012
26356 7590 07/13/2018
ALCON
IP LEGAL
6201 SOUTH FREEWAY
FORT WORTH, TX 76134
FIRST NAMED INVENTOR
Theo Seiler
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.
PAT904147-US-NP 5009
EXAMINER
NGANGA, BONIFACE N
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
07/13/2018 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):
patent. docketing@alcon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THEO SEILER, KA TRIN SKERL,
and JORG KLENKE 1
Appeal2017-002385
Application 13/454,468
Technology Center 3700
Before ERIC B. GRIMES, ULRIKE W. JENKS, and DAVID COTT A,
Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of refractive correction of the eye, which have been rejected as obvious. We
have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
STATEMENT OF THE CASE
"Refractive surgery uses lasers to reshape the cornea to correct
refractive defects of the eye. According to some techniques, ... a
femtosecond laser makes incisions in the cornea to create a lenticule. The
1 Appellants identify the Real Party in Interest as WaveLight GmbH.
Appeal Br. 2.
Appeal2017-002385
Application 13/454,468
lenticule is removed to reshape the cornea." Spec. 1 :8-13. The
Specification's Figure 3 is reproduced below:
Fig. 3
Figure 3 shows "a cross-section of creating the lenticule 110." Id. at
6:15-16. Specifically, "[t]he anterior incision 114 forms the anterior side of
the lenticule 110, and the posterior incision 116 forms the posterior side of
the lenticule 11 O." Id. at 6:28-30. A "channel ... may facilitate removal of
the lenticule 110. For example, an anterior channel 118 may be used to
separate the anterior side of the lenticule 110 from the surrounding tissue,
and/or a posterior channel 120 may be used to separate the posterior side of
the lenticule 110 from the surrounding tissue." Id. at 7:3-7.
Claims 8-10, 12-14, and 25-31 are on appeal. Claim 8 is the only
independent claim and reads as follows ( emphasis added):
8. A method for refractive correction, the method comprising:
controlling, by one or more controllable components of a laser device,
a focus of pulsed laser radiation to create a lenticule in an eye, the pulsed
laser radiation having a plurality of ultrashort pulses;
creating a straight posterior channel having a length between 1 to 5
millimeters with the pulsed laser radiation;
creating a posterior incision with the pulsed laser radiation to form a
posterior side of the lenticule, the posterior channel substantially tangential
to the posterior incision to facilitate separation of the posterior side of the
lenticule from the eye;
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Application 13/454,468
creating a straight anterior channel having a length between 1 to 5
millimeters with the pulsed laser radiation;
creating an anterior incision with the pulsed laser radiation to form an
anterior side of a lenticule, the anterior channel substantially tangential to
the anterior incision to facilitate separation of the anterior side of the
lenticule from the eye, the anterior channel disconnected from the posterior
side of the lenticule, the posterior channel disconnected from the anterior
side of the lenticle [ sic, lenticule?];
creating the anterior incision and the posterior incision yielding a
refractive profile for refractive correction; and
creating one of the anterior channel or the posterior channel with the
same width at each end and create the other of the anterior channel or the
posterior channel with different widths at each end.
The claims stand rejected as follows:
Claims 8-10, 12-14, 26, and 31 under 35 U.S.C. § I03(a) as obvious
based on Russmann2 and Frey3 (Final Action4 5);
Claim 25 under 35 U.S.C. § I03(a) as obvious based on Russmann,
Frey, and Bendett5 (Final Action 11 );
Claims 27 and 28 under 35 U.S.C. § I03(a) as obvious based on
Russmann, Frey, and Kurtz6 (Final Action 11 ); and
Claims 29 and 30 under 35 U.S.C. § I03(a) as obvious based on
Russmann, Frey, and Vogler7 (Final Action 12).
2 Russmann et al., US 2008/0275433 Al, published Nov. 6, 2008.
3 Frey et al., US 2011/0160710 Al, published June 30, 2011.
4 Office Action mailed April 7, 2016.
5 Bendett et al., US 7,351,241 B2, issued Apr. 1, 2008.
6 Kurtz et al., US 2003/0212387 Al, published Nov. 13, 2003.
7 Vogler, US 2010/0262128 Al, published Oct. 14, 2010.
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Appeal2017-002385
Application 13/454,468
DISCUSSION
The Examiner has rejected all of the claims on appeal 8 as obvious
based on Russmann and Frey, by themselves or combined with one of
Bendett, Kurtz, or Vogler. The same issue is dispositive for all of the
rejections.
The Examiner finds that Russmann discloses most of the limitations
of claim 8 (Final Action 5-7) but "does not appear to explicitly disclose
wherein the posterior channel being substantially tangential to the posterior
incision and the anterior channel being substantially tangential to the
anterior incision" (id. at 7). The Examiner finds that "Frey teaches that it is
known and preferred in the art to create opening cuts such that the angle of
the cut with respect to the surface of the eye is very shallow, and more
preferably less than about 30 degrees (i-f 0024-0025) for the purpose of
inserting instruments and/or materials into and from the eye." Id.
The Examiner concludes that it would have been obvious "to modify
the controller of Russmann to create channels or opening cuts that are
shallow as taught by Frey, since Frey states in [0024] that channels or
opening cuts having very shallow angles of less than 30 degrees are suitable
and preferred for the insertion and/ or removal of material into and out of the
eye." Id. at 8. The Examiner states that
it is presumed that the said incisions would be tangential to the
anterior and posterior cuts for the following reasons: 1) Frey
specifies angles that are very similar as the angles specified in
8 Claim 32 is also pending but none of the rejections on appeal includes
claim 32. See Final Action 2 and 5-13. In view of the decision in this
appeal, however, the status of claim 32 as rejected or allowable is moot.
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Appeal2017-002385
Application 13/454,468
Id.
the instant specification (see [0033] of printed publication); 2)
the incisions in Russmann as modified by Frey extend from the
anterior surface of the eye to a lenticule defined in the same
area of the cornea (similar to instant application), and applying
opening channels/incisions with dimensions as suggested by
Frey, would result with very similar if not the same incisions as
the instant application. It is therefore presumed that the
incisions in modified Russmann would be substantially
tangential.
Appellants argue, among other things, that Russmann does not teach
or suggest posterior and anterior channels that are tangential to, respectively,
posterior and anterior incisions, and "Frey does not remedy this defect."
Appeal Br. 15. Specifically, Appellants argue that "Frey discloses an
opening cut that is shallow with respect to the surface of the eye, not to
another incision." Id.
We agree with Appellants that the Examiner has not shown that the
cited references support a prima facie case of obviousness. The Examiner
has acknowledged that Russmann does not teach a method of refractive
correction in which a posterior channel and an anterior channel are created
that are tangential to, respectively, posterior and anterior incisions that form
a lenticule. Ans. 7. The Examiner cites Frey as evidence that this limitation
would have been obvious to a person of ordinary skill in the art. Id. at 7-8.
However, Frey is directed to "methods ... relating to the removal of
the natural crystalline lens and replacement of that lens with lens
replacement material" in cataract surgery. Frey ,r 21. Frey's invention,
specifically, "relate[ s] to methods ... for providing self sealing incisions to
the eye which incisions may be used as a way to insert instruments into the
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Appeal2017-002385
Application 13/454,468
eye and to remove material from the eye, and to provide increased healing of
these particular incisions." Id.
Frey's Figure 1 is reproduced below:
( i
5 4
FIG-. l
Figure 1 shows "an example of a self-sealing pattern and resultant
incision of [Frey's] invention." Id. ,r 25. The figure shows the cornea 1,
with an incision created by laser shot pattern 4. Id. "[S]hot pattern 4 . ..
when delivered to the eye results in an incision of the same shape. The
incision has two sides 5 and 6. When viewed along the anterior to posterior
axis of the incision, axis arrow 7, it is seen that the incision loops back on
top of itself." Id.
"This would be an example of a tongue and groove type of pattern."
Id. Frey states that "the angle of the cut with respect to the swface of the
eye at the anterior point or opening of the cut resulting from pattern 4 is
very shallow, i.e., it is less than 90 degrees, preferably less than about 45
degrees and more preferably less than about 30 degrees." Id. ( emphasis
added).
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Appeal2017-002385
Application 13/454,468
Thus, Frey teaches a method of making a tongue-and-groove, self-
sealing incision through the cornea in order to provide increased healing
after removal and replacement of the natural lens in cataract surgery. In the
claimed method, however, a portion of the cornea (the lenticule) is separated
from the rest of the cornea via incisions, and channels are formed to
facilitate removal of the lenticule in order to perform refractive correction.
Claim 8, and therefore all of the other claims on appeal, require that
the channels are tangential to the incisions that form the lenticule, whereas
Frey's method specifies that its incision is tangential to the surface of the
eye, not to another incision. We do not agree with the Examiner's reasoning
(Final Action 8) that a person of ordinary skill in the art would have found it
obvious, based on Frey, to modify Russmann's method in the manner recited
in the claims. We therefore reverse the rejection under 35 U.S.C. § I03(a)
based on Russmann and Frey. The other rejections also depend on the
combination of Russmann and Frey, and are therefore reversed for the same
reason.
SUMMARY
We reverse all of the rejections on appeal.
REVERSED
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