Tarek Hassan et al.

Patent Trials and Appeals Board

Nov 27, 2020

2019006895 (P.T.A.B. Nov. 27, 2020)

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.
14/452,681 08/06/2014 Tarek Hassan TSA-10302/29 1026
131270 7590 11/27/2020
BELZER PC
ATTN: John G. Posa
2905 Bull St.
Savannah, GA 31405
EXAMINER
UTT, ETHAN A
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
11/27/2020 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):
231patents@gmail.com
johnposa@gmail.com
jposa@belzerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte TAREK HASSAN and TUSHAR M. RANCHOD1
_____________

Appeal 2019-0068952
Application 14/452,681
Technology Center 1700
______________

Before LINDA M. GAUDETTE, DONNA M. PRAISS, and
JOHN A. EVANS, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE

This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s Non-Final Rejection of Claims 1, 6–11, and 21–23. Appeal Br.
22–23 (Claims App.). We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42. The Appeal Brief identifies co-inventors, Drs. Tarek
Hassan and Tushar M. Ranchod, as the real parties in interest. Appeal Br. 1.
2 A telephonic Oral Hearing was conducted November 19, 2020. A
transcript will be made of Record.
Appeal 2019-006895
Application 14/542,681
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INVENTION
The claims relate to an intraocular medical device wherein a base
material of a distal surface is patterned such that the distal surface becomes
superhydrophobic, superoleophobic, or both. See Claim 1. Claim 1,
reproduced below, is the sole independent claim and is illustrative of the
invention.
1. A medical instrument adapted for use with an intraocular
procedure, comprising:
a proximal portion configured for grasping by a user;
a distal portion including an elongated shaft terminating
in a distal tip adapted for use in conjunction with an intraocular
procedure;
wherein the distal portion is made from a base material
having a surface adapted for contact with biological intraocular
vitreous material; and
wherein the surface of the distal portion of the instrument
includes micrometer- or nanometer-sized structures or patterns
made only from the base material, causing the distal portion of
the instrument to become superhydrophobic, superoleophobic,
or both, thereby causing the distal portion of the instrument to
repel the vitreous material during the intraocular procedure.
Claims App.

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PRIOR ART
Name3 Reference Date
Extrand US 2004/0208791 A1 Oct. 21, 2004
Luloh US 2009/0234274 A1 Sept. 17, 2009
Corcosteugi US 2011/0015669 A1 Jan. 20, 2011
Linsi US 2012/0191120 A1 July 26, 2012
Hatton WO 2011/094344 A1 Aug. 4, 2011
Aizenberg WO 2012/012441 A1 Jan. 26, 2012

REJECTIONS4 AT ISSUE5
1. Claims 1, 6, 9–11, and 21 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Linsi and Hatton. Final Act. 5–9.
2. Claim 7 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Linsi, Hatton, and Aizenberg. Final Act. 9.
3. Claim 8 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Linsi, Hatton, and Extrand. Final Act. 9–10.
4. Claims 1, 6, 9–11, and 22 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Luloh and Hatton. Final Act. 10–13.

3 All citations herein to the references are by reference to the first named
inventor/author only.
4 The present application was examined under the first inventor to file
provisions of the AIA. Final Act. 2.
5 Throughout this Decision, we refer to the Appeal Brief (“Appeal Br.”) filed
May 28, 2019, the Reply Brief (“Reply Br.”) filed September 6, 2019, the
Final Office Action (“Final Act.”) mailed November 26, 2018, the
Examiner’s Answer mailed July 8, 2019, and the Specification (“Spec.”)
filed September 13, 2018.
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Application 14/542,681
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5. Claim 7 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Luloh, Hatton, and Aizenberg. Final Act. 13–14.
6. Claim 8 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Luloh, Hatton, and Extrand. Final Act. 14.
7. Claims 1, 6, 9–11, and 23 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Corcosteugi and Hatton. Final Act. 14–18.
8. Claim 7 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Corcosteugi, Hatton, and Aizenberg. Final Act. 18.
9. Claim 8 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Corcosteugi, Hatton, and Extrand. Final Act. 18–19.
ANALYSIS
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejection, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have persuaded us of reversible error in
the Examiner’s rejections.

CLAIMS 1, 6–11, AND 21–23: OBVIOUSNESS OVER HATTON AND THE
REMAINING CITED ART.
Appellant contends it is inappropriate to combine “Hatton, which is
used in combination with all rejections of Appellants’ claims,” with the
remaining art. Reply Br. 4 (“Indeed, apart from the fact that the prior art
seeks to solve entirely different problems, it is Appellants’ position that the
Examiner’s primary Hatton reference teaches away from Appellants’
invention.”).
Claim 1, the sole independent claim, recites, inter alia:
wherein the surface of the distal portion of the instrument
includes micrometer- or nanometer-sized structures or patterns
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made only from the base material, causing the distal portion of
the instrument to become superhydrophobic, superoleophobic,
or both.
Claim 1.
The Examiner finds Linsi teaches a medical instrument adapted for
intraocular use, but is silent as to the distal surface of the instrument. Final
Act. 5–6. The Examiner similarly cites Luloh and Corcosteugi. Final Act
10, 14. The Examiner finds Hatton teaches medical instruments wherein a
distal surface comprises a base material patterned to become
superhydrophobic. Final Act. 6 (citing Hatton ¶¶ 70, 108, 130).
Appellant does not contest that the prior art collectively teaches the
separate elements of the claimed invention. Rather, Appellant “disagrees it
would have been obvious to modify the distal portion of the medical
instrument Linsi with the teachings of Hatton to arrive at Appellants’
inventions.” Appeal Br. 3. Appellant argues the claimed “surfaces must be
superhydrophobic, superoleophobic, or both.” Id. at 4 (citing Claim 1).
Appellant argues, in contrast, Hatton teaches the relative hydrophobicity or
hydrophilicity of a surface is immaterial. Id. (citing Hatton ¶ 9):
In another aspect, the treated surface contains raised structures
that physically exclude microorganisms from the substrate
subsurface by providing raised structures having a interstructure
spacing of less than about the length and/or transverse diameter
of the microorganism contained in the contaminated liquid.
The raised structures can be superhydrophobic, hydrophobic or
hydrophilic.
Hatton ¶ 9.
The Examiner “acknowledges portions of Hatton’s disclosure relate to
hydrophilic surfaces,” but, the Examiner finds, “Hatton nonetheless
describes superhydrophobic surfaces for purposes of providing sterility . . .
so as to physically exclude microorganisms.” Ans. 19.
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Appellant refers to the Declaration of Dr. Jonathan L. Prenner,6 to
argue excluding microorganisms is not relevant to the invention. According
to Dr. Prenner:
Linsi appreciates the delicacy of ophthalmic microsurgical
procedures, and mentions that “cutting, removal, or other
manipulation of the vitreous must be done with great care to
avoid traction on the retina, the separation of the retina from the
choroid, a retinal tear, or, in the worst case, cutting and removal
of the retina itself.”
Prenner Dec. ¶ 2 (quoting Linsi ¶ 2). Dr. Prenner further Declares: “Hatton
describes methods of making and using substrates having raised structures to
inhibit adhesion of microorganisms. Prenner Dec. ¶ 2 (quoting Hatton,
Abstract). Dr. Prenner notes sterility of the instrument is the Examiner’s
motivation to combine Hatton:
[t]he structures Hatton discloses provide or enhance the sterility
of the instrument. For example, Hatton describes sterility with
respect to reducing the adhesion of microorganisms,
particularly viruses, bacteria, and fungal spores on the base
material by physically excluding the microorganisms from the
main surface of the base material. . . . Hatton discloses sterility
is a highly useful and desired function for surgical instruments
in order to eliminate, or at least minimize, the chance of
introducing the infectious microorganism.
Prenner Dec. ¶ 8 (quoting Office Action dated April 16, 2018, p. 5).
Hatton discloses the nature of the treated surface is immaterial and
may be hydrophilic. Hatton ¶ 9. A hydrophilic surface is diametrically

6 Declaration of Dr. Jonathan L. Prenner, Clinical Professor and Chairman of
the Department of Ophthalmology, Rutgers Robert Woods Johnson Medical
School, member of the Executive Committee of the American Society of
Retina Specialists, Assistant Editor of RETINA, the Journal of Retinal and
Vitreous Diseases (of Record, filed September 13, 2018).
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opposed to the claimed superhydrophobic surface. Even if the Examiner is
able to articulate a suggestion to combine the references, it is impermissible
to pick and choose elements from the prior art while using the application as
a template. See In re Fine, 837 F.2d 1071 (Fed. Cir. 1988). To reconstruct
the invention by such selective extraction constitutes impermissible
hindsight. In re Gorman, 933 F.2d 982 (Fed. Cir. 1991).
Because each ground of rejection relies upon Hatton, we decline to
sustain the rejections of Claims 1, 6–11, and 21–23.

CONCLUSION

Claim(s)
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
1, 6, 9–11,
21 103 Linsi, Hatton 1, 6, 9–11, 21
7 103 Linsi, Hatton, Aizenberg 7
8 103 Linsi, Hatton, Extrand 8
1, 6, 9–11,
22 103 Luloh, Hatton 1, 6, 9–11, 22
7 103 Luloh, Hatton, Aizenberg 7
8 103 Luloh, Hatton, Extrand 8
1, 6, 9–11,
23 103 Corcosteugi, Hatton 1, 6, 9–11, 23
7 103 Corcosteugi, Hatton, Aizenberg 7
8 103 Corcosteugi, Hatton, Extrand 8
Overall
Outcome
1, 6–11, 21–
23
REVERSED