Ex Parte Stobrawa et al

Patent Trial and Appeal Board

Jun 27, 2018

13145759 (P.T.A.B. Jun. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/145,759 10/05/2011
24113 7590 06/28/2018
PATTERSON THUENTE PEDERSEN, P.A.
80 SOUTH 8TH STREET
4800 IDS CENTER
MINNEAPOLIS, MN 55402-2100
FIRST NAMED INVENTOR
Gregor Stobrawa
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.
3081.322WOUS 7782
EXAMINER
JENNESS, NATHAN JAY
ART UNIT PAPER NUMBER
3762
MAILDATE DELIVERY MODE
06/28/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGOR STOBRA WA, MARK BISCHOFF
and MICHAEL BERGT
Appeal 2016-004596
Application 13/145,759
Technology Center 3700
Before STEVEN D.A. McCARTHY, MICHELLE R. OSINSKI and
PAUL J. KORNICZKY, Administrative Patent Judges.
McCARTHY, Administrative Patent Judge.
DECISION ON APPEAL
1 STATEMENT OF THE CASE
2 The Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
3 decision finally rejecting claims 20-50. A hearing was held in this appeal
4 on April 17, 2018. We have jurisdiction under 35 U.S.C. § 6(b ).
The Appellants identify the real party in interest as Carl Zeiss Meditec
AG. (See "Appeal Brief under 37 C.F.R. § 41.37," dated Sept. 3, 2015, at
2).
Appeal 2016-004596
Application 13/145,759
1 We sustain the rejection of claims 25-50 under 35 U.S.C. § 101 as
2 ineligible for patent protection. 2
3 We do not sustain the rejection of claims 20-24 under 35 U.S.C.
4 § 101 as ineligible for patent protection; or the rejection of those claims
5 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Rathjen (US
6 200710173793 Al, publ. July 26, 2007); Cox (US 2004/0054358 Al, publ.
7 Mar. 18, 2004 ); and Rajan (US 5,891, 131, issued Apr. 6, 1999).
8
9 THE CLAIMED SUBJECT MATTER
10 The appealed claims are directed to the field of refractive surgery, the
11 aim of which is "to selectively alter the cornea so as to influence" the
12 refraction (that is, bending), of light entering the eye, thereby improving
13 focus. (Substitute Specification, dated July 21, 2011 ("Specification" or
14 "Spec."), at 2, 1. 23 - 3, 1. 1 ). According to the Specification:
15 In order now to carry out a correction of defective v1s10n,
16 material is removed from a region within the cornea 5 by means
17 of ... pulsed laser radiation by cutting tissue layers[,] thus
18 isolating the material[,] and then mak[ing] it possible for the
19 material to be removed. The removal of material effects a change
2 The Examiner also provisionally rejected claims 25-50 in the Final
Office Action under 35 U.S.C. § 101 as claiming the same invention as that
of claims 24--38 and 49---60 of co-pending Application 13/145,761. (Final
Office Action, mailed January 8, 2015, at 6). Application 13/145,761 has
since issued as Stobrawa (US 9,050,172 B2, issued June 9, 2015). The
claims of Stobrawa, as issued, are not identical to the claims of Application
13/145,761, as those claims existed as of the date of the Final Office Action.
In the Answer, the Examiner "note[ d] the statutory double patenting
rejection [was] no longer valid; however, there remains potential for an
obviousness-type double patenting rejection." (Examiner's Answer, mailed
January 28, 2016, at 6). We deem the double patenting rejection under
§ 101 withdrawn. We will not address the rejection further in this opinion.
2
Appeal 2016-004596
Application 13/145,759
1 in the volume of the cornea which results in a change in the
2 optical imaging effect of the cornea 5, which change is calculated
3 exactly such that the previously determined defective vision thus
4 is/becomes corrected as much as possible. To isolate the volume
5 to be removed, the focus of the laser radiation 2 is directed
6 towards target points in the cornea 5, generally in an area which
7 is located beneath the epithelium and the Bowman's membrane
8 and above the De[s]cemets's membrane and the endothelium.
9 For this purpose the treatment apparatus 1 has a mechanism for
10 shifting the position of the focus of the laser radiation 2 in the
11 cornea 5.
12 (Spec. 24, 1. 22 - 25, 1. 9 & Fig. 1 ). Because this technique requires a high
13 degree of accuracy, the cornea typically is pressed against a curved contact
14 glass to immobilize the cornea during surgery. (See Spec. 6, 11. 6-9; see also
15 id. 36, 11. 12-19).
16 A control apparatus 12, depicted schematically in Figure 4 of the
1 7 underlying application, controls, among other functions, the position and
18 movement of the focal point of the laser radiation within and across the
19 cornea. (Spec. 26, 11. 15-17). "The control apparatus 12 operates according
20 to predetermined control data which predetermine the target points for
21 shifting the focus" of the laser radiation. (Spec. 27, 11. 1 & 2). The control
22 data, in tum, derives from the geometry or, equivalently, the refractive
23 power, of the cornea before surgery; and from the desired geometry or
24 refractive power of the cornea after surgery. (See generally Spec. 27, 1. 10 -
25 33, 1. 5 & Fig. 10). The Specification also teaches that the control data must
26 be corrected or adjusted to account for the distortion of the cornea when
27 pressed against the contact surface during the surgical procedure. (See Spec.
28 36, 1. 12 - 37, 1. 8, citing Muhlhoff (US 2007 /0293851 Al, publ. Dec. 20,
29 2007)).
3
Appeal 2016-004596
Application 13/145,759
1 Claims 20, 22, 24--26, 31, 32, 38 and 39 are independent. Claims 20,
2 25 and 26 recite:
3 20. A method for generating control data that control a
4 laser for surgical correction of defective vision of an eye of a
5 patient, wherein prior to application of the laser to a cornea is
6 brought from an undeformed state to a deformed state by
7 pressing a front surface of the cornea against a contact surface;
8 the method comprising:
9 a) predetermining a correction surface by application
10 of a control unit, which correction surface relates to the cornea
11 in the undeformed state and is to be produced for correction of
12 defective vision as a cut surface of the cornea;
13 b) selecting several points lying in the correction
14 surface or in an approximation surface derived therefrom by
15 application of the control unit, the several points being a subset
16 of points lying in the correction surface or the approximation
17 surface derived therefrom;
18 c) generating transformed points by transforming by
19 application of the control unit, coordinates of the selected points
20 into coordinates of the same points for the cornea in the deformed
21 state to compensate for the deformed state of the cornea during
22 operation of the laser;
23 d) generating an interpolation surface by interpolating
24 between the transformed points by application of the control unit;
25 and
26 e) selecting target points lying on the interpolation
27 surface by application of the control unit; and
28
29 data.
t) using the target points for generating the control
30 25. A device, the device including a control unit that
31 generates control data, the control data controlling a laser for
32 surgical correction of defective vision of an eye of a patient,
33 wherein:
4
Appeal 2016-004596
Application 13/145,759
1 the control data are adapted to control the laser
2 which cuts cornea tissue by irradiating laser radiation into the
3 cornea of the eye and wherein the control unit is operably
4 coupled to the laser,
5 the control unit generates the control data such that
6 the laser, during operation according to the control data, emits
7 the laser radiation such that a volume in the cornea is isolated,
8 the removal of which volume from the cornea effects a desired
9 correction of the defective vision, and
10 to determine the control data, the control unit
11 calculates a radius of curvature Rev* of the cornea reduced by
12 the volume further wherein
13 the radius of curvature Rev* is locally varying and
14 satisfies the following equation:
15 Rev*(r,cp) = 1 I ( (1/ Rev(r,cp)) + BeoR(r,cp)/ (nc-1)) + F,
16 wherein Rev(r,