Ex parte Sinofsky

Board of Patent Appeals and Interferences

Dec 21, 1998

07568348 (B.P.A.I. Dec. 21, 1998)

Application for patent filed August 15, 1990. According1
to appellant, the application is a continuation of Application
07/257,760, filed October 14, 1988, now U.S. Patent 4,950,266,
issued August 21, 1990; which is a continuation of Application
07/014,990, filed February 17, 1987, abandoned; which is a
continuation of Application 06/761,188, filed July 31, 1985,
abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 44
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte EDWARD L. SINOFSKY
_____________
Appeal No. 95-0065
Application 07/568,3481
______________
ON BRIEF
_______________
Before CALVERT, COHEN and CRAWFORD, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
Appeal No. 95-0065
Application 07/568,348
References in this decision to appellant's brief are to2
the brief filed on November 29, 1993; to the examiner's answer
are to the answer mailed on February 2, 1995; and to appel-
lant's reply brief are to the reply brief filed on February
25, 1998.
We note that this reference was not listed on page 2 of3
the examiner's answer.
2
DECISION ON APPEAL
This is an appeal from the final rejection of claims
44 to 70. Claims 71 to 76, the other claims remaining in the
application, stand withdrawn from consideration under 37 CFR
§ 1.142(b) as being directed to a nonelected invention.
The claims on appeal are drawn to a system and
method for the removal of biological tissue within a body, and
a copy thereof is included in Appendix A of appellants'
brief.2
The references applied in the final rejection are:
L'Esperance 3,982,541 Sept. 28,
1976
Esterowitz et al. (Esterowitz) 4,321,559 Mar. 23,
1982
Madone et al. (Madone) 4,445,918 May 1,
1984
Takano 4,454,882 June 19,
19843
Sinofsky 4,950,266 Aug. 21,
1990
Appeal No. 95-0065
Application 07/568,348
On page 5, line 11, and page 8, line 4, of the answer,4
this claim is incorrectly identified as "48."
3
Wolbarsht, Interactions between material processing and sur-
gery, ICALEO, 4/L.I.A., vol. 32 (1982)
Horn et al. (Horn), A new "cool" lens capsulotomy laser, Am.
Intra-Ocular Implant Soc. J., vol. 8, pp. 337-342 (Fall 1982)
The claims on appeal are rejected as follows:
(1) Claims 44 to 70 stand rejected under 35 U.S.C. § 103 as
unpatentable over the following combinations of references:
(a) Claims 44, 49, 52 to 54, 57, 62, 64 to 68 and 70,
over Wolbarsht in view of Horn and L'Esperance;
(b) Claims 46 to 48, 50, 56, 59 to 61 and 63, over
Wolbarsht in view of Horn, L'Esperance and Esterowitz;
(c) Claims 45, 55, 58 and 69, over Wolbarsht in view of4
Horn, L'Esperance and Madone;
(d) Claim 51, over Wolbarsht in view of Horn,
L'Esperance and Takano.
Appeal No. 95-0065
Application 07/568,348
4
(2) Claim 54 stands rejected under 35 U.S.C. § 101 as
unpatentable over claim 15 of Sinofsky on the ground of double
patenting.
Rejection (1)(a)
The examiner states the basis of this rejection on
page 4 of the answer as:
Wolbarsht (1982) teaches using wavelengths
which are highly absorbed by the tissue to
be removed and suggest[s] that wavelengths
absorbed by water are desirable. Horn et
al
teach the desirability of avoiding damage
to intervening tissues when applying laser
radiation and discuss the use of an Er:
YLF laser and a pulse width of 10
nanoseconds.
L'Esperance teaches the desirability of
employing an optical fiber to apply laser
radiation. It would have been obvious to
the artisan of ordinary skill to employ an
optical fiber in the device of Wolbarsht
(1982), since this provides more
flexibility of manipulation, as taught by
L'Esperance (see column 3, line 65 - column
4, line 5) and to employ a wavelength in
the range of l.4-2.2 micrometers, since
these are strongly absorbed by water, as
shown by Horn et al (see the first
paragraph under DISCUSSION) and Wolbarsht
(see figure 1 and the last paragraph on the
second page of Wolbarsht); and to employ
Appeal No. 95-0065
Application 07/568,348
5
pulse widths and energy densities capable
of vaporizing tissue such as those
claimed since these are not critical; are
well within the scope of one of ordinary
skill in the art; and are necessary to
remove the tissue, thus producing a device
such as claimed.
The Wolbarsht article is concerned with the use of
lasers in surgery in general, although surgery inside the eye
and plastic surgery are mentioned in the last paragraph on the
fourth page. The article is concerned primarily with the CO2
laser. However, in the last paragraph on the second page,
referred to by the examiner, supra, Wolbarsht states:
To assist in confining the thermal
effects to the surface layer, the laser
wavelength must be matched as closely as
possible to the absorption peak of the
material in question.
The absorption spectrum of water, as given
in Figure 1, shows a peak near 2.8 µm,
although the absorption is certainly
sufficiently high at 10.6 µm to be adequate
to make the CO 2
laser work for tissue cutting. However,
for the maximum absorption in the shortest
tissue
distance, a laser in the range from 2.7 to
3.1 µm would seem to offer some advantage.
Appeal No. 95-0065
Application 07/568,348
Stedman's Medical Dictionary (24th Ed., 1982) defines5
"capsulotomy" as "[i]ncision through a capsule, specifically,
the capsule of the lens in the extracapsular cataract
operation."
6
The accompanying Figure 1, like appellant's Fig. 1, plots the
absorption in water versus various wavelengths. Two peaks
appear to be shown in the wavelength range claimed by
appellant: one at about 1.4 µm, the other at about 1.9 µm.
Both peaks are less than the absorption shown for a CO laser2
(10.6 µm), and considerably less than the maximum absorption
shown at the peak disclosed by Wolbarsht as being "near 2.8
µm."
The Horn article concerns the use of a laser for use
in ophthalmology, specifically, for capsulotomy. Horn5
discloses that a wavelength better suited for lens capsulotomy
is an infrared laser operating in the 1200-1300 nm (1.2 to 1.3
µm) wavelength region. The laser may be a frequency-doubled
neodymium-YAG laser; also (page 338, second column):
A second generation laser, the erbium
yttrium lithium fluoride (erbium-YLF)
laser,
has recently been developed. It produces
short pulses at a wavelength of 1228 nm,
and is lightweight and compact.
Appeal No. 95-0065
Application 07/568,348
7
In the first paragraph under "DISCUSSION" on page 340, to
which the examiner refers, supra, Horn discloses the desirable
characteristics of a laser used for lens capsulotomies, as
follows:
The new "cool" lens capsulotomy laser
described in this report was developed to
operate at a previously untried wavelength
region: 1200-1290 nm. This region is well
suited for lens capsulotomies, having high
corneal and anterior segment transmission,
high intraocular lens transmission, low
ocular media transmission and retinal
absorption, and relatively high water
absorption.
L'Esperance discloses apparatus for performing
surgery on the eye, using a CO laser. In a variation shown2
in Fig. 4, L'Esperance discloses that the laser beam may be
transmitted to the probe at the distal end through a fiber
optics bundle 62. However, in that case L'Esperance states
that "[w]hen using bundle 62 the laser 22 should be some type
other than carbon dioxide such as argon" (col. 4, lines 2 to
4).
Appeal No. 95-0065
Application 07/568,348
8
We have carefully considered the record in light of
the arguments presented in appellant's brief and reply brief,
and in the examiner's answer. We conclude that, although the
references
applied by the examiner are certainly relevant to the use of a
laser to remove biological tissue, they do not make out a case
of prima facie obviousness with regard to the subject matter
claimed by appellant.
Although wavelengths in the claimed range of 1.4 to
2.2 µm are shown by Wolbarsht's Fig. 1 as having some
absorption in water, their absorption is not shown as being as
high as either the CO laser (10.6 µm) discussed by Wolbarsht2
or the 2.7 to 3.1 µm range disclosed by him as having maximum
absorption and therefore "seem[ing] to offer some advantage."
In view of Wolbarsht's teaching of using lasers with high
absorption in water, we do not consider that one of ordinary
skill would find therein any suggestion or motivation to use
lasers, such as lasers in the claimed 1.4 to 2.2 µm range,
whose wavelengths are disclosed as not having as high an
Appeal No. 95-0065
Application 07/568,348
9
absorption as the wavelengths of the CO laser or of lasers in2
the 2.7 to 3.1 µm range.
The Horn article, as the examiner points out, does
disclose the use of an erbium-YLF laser, which is one of the
lasers disclosed by appellant as useable in his invention.
However, Horn's only reference to this laser is on page 338
(quoted supra), and there he stated that it produces short
pulses
at a wavelength of 1.228 µm, which is outside of appellant's
claimed range.
In the paragraph on page 340 which is quoted above,
Horn discloses certain criteria for a lens capsulotomy laser,
including, inter alia, high corneal transmission, low ocular
media transmission, and low retinal absorption. Figs 3b and
3c on the same page show that a wavelength of 1.4 or 1.5 µm
would meet the latter two criteria. On the other hand,
however, Fig. 3a shows that at Horn's recommended wavelengths
of 1.20 to 1.29 µm (1200 to 1290 nm), the corneal
transmission is in the 90% region, while at wavelengths of
1.4 to 2.2 µm corneal transmission is lower, with a peak of
Appeal No. 95-0065
Application 07/568,348
10
about 70% at around 1.6 µm, falling to zero at 1.9 µm. Here
again, as with the Wolbarsht reference, it is not apparent to
us what suggestion there would be in Horn for one of ordinary
skill in the art to ignore Horn's teaching that the corneal
transmission should be high and use wavelengths of 1.4 to 2.2
µm, none of which, as shown in Horn's Fig. 3a, has a corneal
transmittance as high as the transmittance for the 1.20 to
1.29 µm range recommended by Horn.
On page 15 of the answer, the examiner argues that
appellant has simply discovered an optimum value for a known
process, citing In re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA
1955). We do not consider this argument to be well taken, for
in the present case appellant did not discover the optimum
wavelength from a broad range of wavelengths taught by the
prior art, but rather used wavelengths which are outside the
ranges
suggested by Wolbarsht or Horn, and in fact, as discussed
above, might be considered to be contrary to the suggestions
of the references. Thus, unlike Aller, appellant did not
Appeal No. 95-0065
Application 07/568,348
11
simply discover the optimum or working ranges from general
conditions disclosed in the prior art.
In our view, one of ordinary skill in the art
considering Wolbarsht, Horn and L'Esperance would at most
derive therefrom a suggestion to use wavelengths in the 1.2 to
1.3 µm range (as disclosed by Horn) rather than the 2.7 to 3.1
µm or 10.6 µm wavelengths disclosed by Wolbarsht, and we find
no suggestion in the combination of these three references to
use wavelengths in appellant's claimed 1.4 to 2.2 µm range.
Rejection (1)(a) will therefore not be sustained.
Rejections (1)(b)(c) and (d)
These rejections likewise will not be sustained,
since the additional references applied therein do not
overcome the above-discussed deficiencies in the basic
combination of Wolbarsht, Horn and L'Esperance.
Rejection (2)
The examiner takes the position that claim 54 is
unpatentable under 35 U.S.C. § 101 over claim 15 of Sinofsky
Appeal No. 95-0065
Application 07/568,348
Since the disclosures of the patent and the instant6
application are the same, there is no difference between claim
54 and claim 15 as to the coverage of the recited means-plus-
function elements.
12
(appellant's prior patent) on the ground of "same invention"
type double patenting.
Claim 54 reads (underlining added):
54. A system for the removal of biological tissue
within a body comprising:
a laser energy source including means for operating
said laser energy source in a pulsed mode with an output
wavelength in a range of 1.4 - 2.2 micrometers and for
operating said laser energy source at an energy level of at
least about one joule per pulse for a surgical site of the
order of 1.5 millimeters in diameter to remove biological
tissue within the body;
an optical fiber for conducting laser energy from
said laser energy source from a proximal end of said fiber to
a surgical site at a distal end of said optical fiber; and
means for directing an output of said laser source
to the proximal end of said optical fiber.
Claim 15 differs from claim 54 only in that (1) instead of the
first underlined portion, claim 15 recites "artherosclerotic
plaque"; and (2) claim 15 omits the second underlined
portion.6
Appeal No. 95-0065
Application 07/568,348
13
Appellant, on page 44 of the brief, cites the test
for "same invention" double patenting set forth in In re
Vogel, 422 F.2d 438, 441, 164 USPQ 619, 622 (CCPA 1970), i.e.:
A good test, and probably the only
objective test, for "same invention," is
whether one of the claims could be
literally infringed without literally
infringing the other. If it could be,
the claims do not define identically the
same invention.
See also In re Hallman, 655 F.2d 212, 216, 210 USPQ 609, 611-
12 (CCPA 1981). Appellant contends that there is no "same
invention" double patenting here, because claim 15 would not
be infringed if the invention claimed in claim 54 were used to
remove bodily tissue other than artherosclerotic plaque.
We do not agree. The claimed subject matter here is
a system, not a method of use. The recitation of a new use
for an old product does not make a claim to that product
patentable. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d
1429, 1431 (Fed. Cir. 1997); La Bounty Mfg. Inc. v. ITC, 958
F.2d 1066, 1075, 22 USPQ2d 1025, 1032 (Fed. Cir. 1992).
Claims 54 and 15 are drawn to the same invention because one
Appeal No. 95-0065
Application 07/568,348
14
could not construct a system or structure on which claim 54
would read but claim 15 would not read, and vice versa. Cf.
In re Knohl, 386 F.2d 476, 480, 155 USPQ 586, 590 (CCPA 1967).
Appellant argues (brief, page 46)
that the recitation "to remove biological tissue within the
body" is more than a statement of intended use because it
"defines the character of the radiation being emitted by the
laser energy
source," but, as the examiner indicates on page 28 of the
answer,
appellant does not state "in what way this would provide some
sort of distinguishing structural relation."
Rejection (2) will accordingly be sustained.
Conclusion
The examiner's decision to reject claims 44 to 70
under 35 U.S.C. § 103 is reversed, and to reject claim 54
under 35 U.S.C. § 101 is affirmed.
Appeal No. 95-0065
Application 07/568,348
15
No time period for taking any subsequent action in
con- nection with this appeal may be extended under 37 CFR §
1.136(a).
AFFIRMED-IN-PART
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
IRWIN CHARLES COHEN ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
psb
Appeal No. 95-0065
Application 07/568,348
16
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