Mark Cole et al.Download PDFPatent Trials and Appeals BoardMay 6, 202013092494 - (D) (P.T.A.B. May. 6, 2020) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/092,494 04/22/2011 Mark S. Cole JSV5556USNP (27792USO) 6681 33357 7590 05/06/2020 JOHNSON & JOHNSON SURGICAL VISION, INC. 1700 E. ST. ANDREW PLACE SANTA ANA, CA 92705 EXAMINER DANG, ANH TIEU ART UNIT PAPER NUMBER 3771 NOTIFICATION DATE DELIVERY MODE 05/06/2020 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): JNJUSPatent@corus.jnj.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MARK S. COLE, KEVIN R. SPRINGER, and ROB RANEY ____________ Appeal 2019-005871 Application 13/092,494 Technology Center 3700 ____________ Before STEFAN STAICOVICI, WILLIAM A. CAPP, and MICHAEL L. WOODS, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE. Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision in the Final Office Action (dated Nov. 19, 2018, hereinafter “Final Act.”) rejecting claims 1, 5, 6, 15–18, and 20–31.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Johnson and Johnson Surgical Vision Inc. is identified as the real party in interest in Appellant’s Appeal Brief (filed Apr. 18, 2019, hereinafter “Appeal Br.”). Appeal Br. 3. 2 Claims 2–4, 7–14, and 19 are canceled. Appeal Br. 12, 14. Appeal 2019-005871 Application 13/092,494 2 SUMMARY OF DECISION We AFFIRM. INVENTION Appellant’s invention is directed to “automating the control of inter- ocular lens (IOL) temperature prior to and during an IOL implantation procedure.” Spec. 1, ll. 13–15. Claims 1 and 15 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A method for regulating a temperature of an intra- ocular lens (IOL) during an ocular surgical procedure, said method accomplished using a computing device and comprising: receiving desired IOL temperature information; sensing IOL temperature conditions using a sensor, wherein said sensing comprises measuring temperature values associated with a fluid; comparing at least one of the sensed IOL temperature conditions measured by the sensor with the desired IOL temperature, wherein said comparing results in a desired temperature change; calculating desired heating levels using said desired temperature change; and controlling, via the fluid, heat transfer to the IOL or to an IOL cartridge or an IOL insertion system containing the IOL, based on at least one operating parameter associated with the fluid, wherein the IOL is maintained substantially at the desired temperature. Appeal 2019-005871 Application 13/092,494 3 REJECTIONS I. The Examiner rejects claims 1, 5, 15–18, 20, 21, 24, 26, 27, and 29–31 under 35 U.S.C. § 103(a) as being unpatentable over Boukhny,3 Pynson,4 and Appelbaum.5 II. The Examiner rejects claims 6 and 22 under 35 U.S.C. § 103(a) as being unpatentable over Boukhny, Pynson, Appelbaum, Van Gent,6 and Alfano,7 as evidenced by Bretton.8 III. The Examiner rejects claim 23 under 35 U.S.C. § 103(a) as being unpatentable over Boukhny, Pynson, Appelbaum, and Raney.9 IV. The Examiner rejects claims 25 and 28 under 35 U.S.C. § 103(a) as being unpatentable over Boukhny, Pynson, Appelbaum, and Boukhny ’309.10 ANALYSIS Rejection I Appellant does not present arguments for the patentability of claims 5, 5, 15–18, 20, 21, 24, 26, 27, and 29–31 apart from claim 1. See Appeal Br. 9. Therefore, in accordance with 37 C.F.R. § 41.37(c)(1)(iv), we select 3 Boukhny et al., US 2008/0097461 A1, published Apr. 24, 2008. 4 Pynson, US 2008/0147080 A1, published June 19, 2008. 5 Appelbaum et al., US 6,251,113 B1, issued June 26, 2001. 6 Van Gent, US 4,955,889, issued Sept. 11, 1990. 7 Alfano et al., US 2004/0176752 A1, published Sept. 9, 2004. 8 Bretton, US 5,445,637, issued Aug. 29, 1995. 9 Raney, US 2009/0005712 A1, published Jan. 1, 2009. 10 Boukhny et al., US 2010/0094309 A1, published Apr. 15, 2010. Appeal 2019-005871 Application 13/092,494 4 claim 1 as the representative claim to decide the appeal of the rejection of these claims, with claims 5, 15–18, 20, 21, 24, 26, 27, and 29–31 standing or falling with claim 1. The Examiner finds Boukhny discloses “a method for regulating temperature of an intra-ocular lens during an ocular surgical procedure” including, inter alia, obtaining a desired IOL temperature, sensing an actual IOL temperature with a sensor, comparing the sensed temperature with the desired temperature resulting a desired temperature change, based on the desired temperature change “calculating [a] desired heating level to either apply heat or not apply heat,” and controlling heat transfer to the IOL to maintain its temperature at the desired temperature. Final Act. 5 (citing Boukhny, paras. 74, 80, 82, 93, Fig. 22). The Examiner further finds that Boukhny does not disclose “that the sensing comprises measuring temperature values associated with a fluid containing the IOL.” Id. (emphasis added). Nonetheless, the Examiner finds that Pynson discloses “an IOL injector disposed inside a container sealed along with a fluid.” Id. at 6 (citing Pynson, para. 33). Thus, the Examiner determines that It would have been obvious to one with ordinary skill in the art at the time of the invention to include a fluid in the chamber (155) holding the IOL of the device of Boukhny, as taught by Pynson, in order to hydrate and maintain flexibility of the IOL prior to insertion. Id. According to the Examiner, in the method of Boukhny, as modified by Pynson, it would have been obvious to a skilled artisan “to measure temperature values of the fluid containing the IOL using the sensor . . . and heat the IOL via the fluid . . . [because] the IOL is suspended in the fluid and Appeal 2019-005871 Application 13/092,494 5 the fluid would be in direct contact with both the heating element and the sensor and the IOL.” Id. The Examiner further finds that the combined teachings of Boukhny and Pynson do not specifically teach employing “an operating room personnel input parameter associated with the fluid” to control heat transfer to the IOL via the fluid. Id. Thus, the Examiner turns to Appelbaum to disclose controlling a microsurgical instrument based on an operating parameter input by operating room personnel. Id. (citing Appelbaum, Abstract, col. 1, ll. 60–67, col. 2, ll. 1–67). Hence, the Examiner concludes that [I]t would have been within the level of one with ordinary skill in the art at the time of the invention to [further] modify the controller of Boukhny[, as modified by Pynson,] to be able to receive input parameters by an operating room personnel, such that the heat transfer to the IOL can be controlled based on an operating room personnel input parameter associated with the fluid in addition to the pre-set conditions . . . in order to allow the surgeon to manually provide and program input parameters relating to the desired temperature range of the IOL to suit the surgeon’s needs, since broadly replacing . . . automatic means with manual activity which accomplishes the same result would be within the level of one of ordinary skill in the art. Id. at 6–7. As Appellant correctly notes, Boukhny discloses regulating the temperature of an IOL located within chamber 155 (of cartridge 150 of an injector) heated by heater 505 located above and below chamber 155. Appeal Br. 5 (citing Boukhny, para. 43, Fig. 5); Reply Br. 2–3.11 Appellant is also correct that Pynson discloses IOL injector 100 including 11 Appellant’s Reply Brief, filed July 30, 2019. Appeal 2019-005871 Application 13/092,494 6 container 150 for storing hydrophilic IOL 180 in a fluid, prior to it being injected via cartridge 122, wherein cartridge 122 does not contain a fluid and container 150 is not heated. Appeal Br. 6–7 (citing Pynson, paras. 26, 33, Fig. 1); Reply Br. 3–4. Thus, according to Appellant, because Pynson does not disclose that its “container [150] could be used in a device similar to the Boukhny device,” and the Examiner fails to adequately explain such a modification, “it would not be obvious to include fluid in the cartridge of the device of Boukhny, in view of Pynson, and . . . heat the fluid containing the IOL until it is in the desired temperature range.” Appeal Br. 7; Reply Br. 6. Hence, Appellant contends that because “it is not obvious to include fluid in the cartridge of the device of Boukhny . . . it therefore follows that it would not be obvious to measure temperature values associated with fluid containing the IOL.” Appeal Br. 7–8; Reply Br. 6. We are not persuaded by Appellant’s arguments because such arguments do not address the Examiner’s rejection. Obviousness does not require that all of the features of the secondary reference be bodily incorporated into the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981). The artisan is not compelled to blindly follow the teaching of one prior art reference over the other without the exercise of independent judgment. Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889, 221 (Fed. Cir. 1984). In this case, the Examiner is not modifying Boukhny’s device to include the particular structure of Pynson’s container 150 for storing hydrophilic IOL 180 in a fluid. See Final Act. 5–6. Rather, the Examiner relies on Pynson’s disclosure “that is was known in the art at the time of the invention to surround an IOL with a fluid in order to hydrate the Appeal 2019-005871 Application 13/092,494 7 IOL.” Ans. 3.12 Appellant does not adequately explain why a person of ordinary skill in the art would not provide fluid to Boukhny’s temperature controlled chamber 155 to store a hydrophilic IOL prior to injection, as taught Pynson. The Examiner is correct that even though Pynson’s disclosure is limited to a hydrophilic IOL, as Boukhny’s device is not limited to a specific type of IOL, if a skilled artisan would employ Boukhny’s device to inject a hydrophilic IOL the skilled artisan would “make the modification of the device of Boukhny . . . to contain a fluid within the chamber 155 of Boukhny holding the IOL, such that a hydrophilic IOL can be maintained within the chamber and properly hydrated prior to delivery, as taught by Pynson.” Ans. 3–4. After all, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Hence, the Examiner’s modification of Boukhny’s device to include a fluid in chamber 155 in order to hydrate an IOL, as taught by Pynson, constitutes an improvement as it allows Boukhny’s temperature regulating method to be employed with a hydrophilic IOL where “the heating element of Boukhny would . . . heat the fluid containing the IOL to further transfer heat to the IOL until it is in the desired temperature range.” Ans. 4. Furthermore, that Boukhny does not specifically disclose the type of IOL injected (see Reply Br. 5), and that Pynson’s container 150 is not heated (see Appeal Br. 7) and cartridge 122 does not contain fluid (see id. at 6) is not persuasive because Appellant cannot show nonobviousness by attacking Boukhny and Pynson individually when the rejection as articulated by the 12 Examiner’s Answer, dated May 31, 2019. Appeal 2019-005871 Application 13/092,494 8 Examiner is based on a combination of Boukhny and Pynson. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Nonobviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. [Each reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole.”). Appellant further argues that because “Boukhny merely discloses using feedback to determine whether or not to continue heating the IOL,” Boukhny does not disclose “how much heat is required,” and, thus, Boukhny fails to disclose the “comparing” and “calculating” steps of claim 1. Appeal Br. 8. We are not persuaded by Appellant’s arguments. The Examiner is correct that claim 1 “do[es] not require calculating a set amount of heat required to heat the IOL.” Ans. 5. Limitations not appearing in the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). In particular, we agree with the Examiner that the limitations of “comparing” and “calculating” are sufficiently broad to encompass Boukhny’s disclosure of “determining whether to increase the temperature of the IOL or [to] maintain the temperature of the IOL” based on “a first level of heating the IOL and a second level to not heat the IOL,” respectively. Ans. 5. In particular, Boukhny discloses comparing the actual IOL temperature with a desired IOL temperature, and if the IOL has not reached the IOL desired temperature, determining to continue heating of the IOL (first heating level) and if it has reached the IOL desired temperature determining to maintain the desired IOL temperature (second heating level). Boukhny, para. 93, Fig. 22. Appellant does not set forth adequate reasoning Appeal 2019-005871 Application 13/092,494 9 or established contrary factual findings undermining the Examiner’s position. Lastly, Appellant argues that “Appelbaum is completely silent with respect to an operating parameter associated with a fluid.” Appeal Br. 9 (emphasis added); see also Reply Br. 7. We are not persuaded by Appellant’s argument because Appellant is once more arguing the disclosures of Boukhny, Pynson, and Appelbaum individually, whereas the rejection is based on a combination of Boukhny, Pynson, and Appelbaum. As correctly noted by the Examiner, because the combination of Boukhny and Pynson discloses an IOL suspended in a fluid in contact with a heating element and a sensor, a skilled artisan would readily understand that the fluid is heated via the heating element and the fluid temperature is measured via the sensor. Ans. 5–6. As the Examiner relies on Appelbaum “to teach further modifying the controller of Boukhny [and Pynson] to be able to receive input parameters . . . [from] an operating room personnel,” the skilled artisan would have readily acknowledged that the combination of Boukhny, Pynson, and Appelbaum discloses “heat transfer to the IOL . . . [is] based on an operating room personnel input parameter associated with the fluid in addition to the pre-set conditions.” Id. at 6; see also Boukhny, para. 80 (“The desired temperature can be preset at the factory.”). Appellant does not set forth adequate reasoning or established contrary factual findings undermining the Examiner’s position. In conclusion, for the foregoing reasons, we sustain the rejection under 35 U.S.C. § 103(a) of independent claim 1 as unpatentable over Boukhny, Pynson, and Appelbaum. Claims 5, 15–18, 20, 21, 24, 26, 27, and 29–31 fall with claim 1. Appeal 2019-005871 Application 13/092,494 10 Rejections II–IV The Examiner relies on the arguments discussed supra, which we did not find persuasive. See Appeal Br. 9–11. Therefore, for the same reasons discussed above, we also sustain Rejections II–IV. CONCLUSION Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1, 5, 15–18, 20, 21, 24, 26, 27, 29–31 103(a) Boukhny, Pynson, Appelbaum 1, 5, 15–18, 20, 21, 24, 26, 27, 29–31 6, 22 103(a) Boukhny, Pynson, Appelbaum, Van Gent, Alfano, Bretton 6, 22 23 103(a) Boukhny, Pynson, Appelbaum, Raney 23 25, 28 103(a) Boukhny, Pynson, Appelbaum, Boukhny ’309 25, 28 Overall Outcome 1, 5, 6, 15–18, 20–31 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation