`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 223 [3-1450
`www.m‘ptoigov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`90/009,541
`
`07/24/2009
`
`.
`
`6,482,199
`
`8179
`
`,
`JOSEPH NEEV
`Y-BEAM TECHNOLOGIES, INC.
`20321 LAKE FOREST DRIVE
`SUITE D-6
`
`LAKE FOREST, CA 92630
`
`DATE MAILED: 08/]3/2009
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PTO—90C (Rev. 10/03)
`
`Alcon Research, Ltd.
`Exhibit 1005 - Page 1
`
`Alcon Research, Ltd.
`Exhibit 1005 - Page 1
`
`

`

` nu,
`
`t ’1
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Commissionerfor Patents
`United States Patent and Trademark Office
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`..............
`SCOTT CATLIN
`ABBOTT MEDICAL OPTICS INC.
`
`1700 EAST ST. ANDREW PLACE
`
`SANTA ANA, CA 92705
`
`Alexandria, 019223?:1: 2553
`mmogov
`
`N‘A‘LED
`
`I 3 2909
`
`AUG
`CENTRAL REEXAMINATION UNIT
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/009 541.
`
`PATENT NO. 6 482 199.
`
`ART UNIT 3993.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex parte reexamination proceeding (37 CFR 1.550(f)).
`
`Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
`reply has passed, no submission on behalf of the ex parte reexamination requester will be
`acknowledged or considered (37 CFR 1.550(9)).
`
`PTOL-465 (Rev.07-04)
`
`Alcon Research, Ltd.
`Exhibit 1005 - Page 2
`
`Alcon Research, Ltd.
`Exhibit 1005 - Page 2
`
`

`

`Control No.
`
`90/009,541
`Examiner
`
`
`
`Patent Under Reexamination
`
`
`
`
`
`6,482,199
`Art Unit
`
`JEANNE M. CLARK
`
`3993
`
`
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address--
`
`
` The request for ex parte reexamination filed 24 July 2009 has been considered and a determination has
`
`been made. An identification of the claims, the references relied upon, and the rationale supporting the
`determination are attached.
`
`Attachments: a)l:l PTO-892,
`
`MK] PTO/SB/O8,
`
`C)Ij Other:
`
`1. CI The request for ex parte reexamination is GRANTED.
`
`RESPONSE TIMES ARE SET AS FOLLOWS:
`
`
`
`
`
`Order Granting / Denying Request For
`Ex Parte Reexamination
`
`
`
`
`
`
`
`
`(37 CFR 1.530 (b)). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`For Patent Owner's Statement (Optional): TWO MONTHS from the mailing date of this communication
`
`
`
`
`
`For Requester’s Reply (optional): TWO MONTHS from the date of service of any timely filed
`Patent Owner's Statement (37 CFR 1.535). NO EXTENSION OF THIS TIME PERIOD IS PERMITTED.
`If Patent Owner does not file a timely statement under 37 CFR 1.530(b), then no reply by requester
`is permitted.
`
`
`
`
`
`
`
`
`
`2. X The request for ex parte reexamination is DENIED.
`
`
`This decision is not appealable (35 U.S.C. 303(c)). Requester may seek review by petitionto the
`Commissioner under 37 CFR 1.181 within ONE MONTH from the mailing date of this communication (37
`CFR 1.515(0)). EXTENSION OF TIME TO FILE SUCH A PETITION UNDER 37 CFR1.181 ARE
`AVAILABLE ONLY BY PETITION TO SUSPEND OR WAIVE THE REGULATIONS UNDER
`37 CFR 1.183.
`
`In due course, a refund‘under 37 CFR 1.26 ( c ) will be made to requester:
`
`a) {Z by Treasury check or,
`
`
`
`b) [:1 by credit to Deposit Account No.
`
`, or
`
`
`
`c) [I by credit to a credit card account, unless otherwise notified (35 U.S.C. 303(c)).
`
`
`
`
`ifthird aart
`cc2Reouester
`US. Patent and Trademark Office
`
`PTOL-471 (Rev. 08-06)
`
`re-uester
`
`Office Action in Ex Parte Reexamination
`
`Part of Paper No. -
`
`
`
`Alcon Research, Ltd.
`Exhibit 1005 - Page 3
`
`Alcon Research, Ltd.
`Exhibit 1005 - Page 3
`
`

`

`Application/Control Number: 90/009,541
`
`Art Unit: 3993
`
`Page 2
`
`DECISION ON REQUEST
`
`No substantial new question of patentability is raised by the request for reexamination
`
`and prior art cited therein for the reasons set forth below.
`
`REASONS
`
`A third party requested reexamination of claims 1 and 2 of U.S. Patent No. 6,482,199
`
`(hereinafter “the ‘199 patent) based upon U.S. Patent No. 4,907,586 to Bille et a1. ("Bille”) and
`
`U.S. Patent No. 5,720,894 to Neev et a1. (“Neev ‘894”).
`
`Brief Summary of the Prior Examination Proceeding
`
`In application 09/632,199, which issued as the ‘ 199 patent, the examiner rejected claims
`
`35-38 and 55-66 as being anticipated by U.S. Patent No. 5,720,894 to Neev et a1. (“Neev ‘894”)
`
`and claim 35 under obviousness double patenting over claim 1 of Neev ‘894. Application claims
`
`35 and 36 issued as patent claims 1 and 2 in‘the ‘ 199 patent. See the Office action dated January
`
`2, 2002. The patent applicant responded by presenting arguments why the claims were
`
`patentability distinguishable over Neev ‘894. No claim amendments were made. See the
`
`response dated April 12, 2002. In response, the examiner allowed claims 35-38 and 55-66 and
`
`stated in his reason for allowance for independent claim 35 that:
`
`“The applicant has successfully overcome erstwhile rejections. Concerning
`independent claim 35, the examiner concedes that Neev et al. neglects to explicitly
`disclose allowing interaction energy transients to substantially decay so that material
`modification is effected as stated in limitation c. Instead, the Neev patent discloses the
`generation and subsequent decay ofplasma. As a result, the previous double patenting
`rejection has also been obviated.”
`
`Alcon Research, Ltd.
`Exhibit 1005 - Page 4
`
`Alcon Research, Ltd.
`Exhibit 1005 - Page 4
`
`

`

`Application/Control Number: 90/009,541
`
`Art Unit: 3993
`
`Page 3
`
`Furthermore, US. Patent No. 4,907,586 to Bille et al. ("Bille”) was cited in an information
`
`disclosure statement in the prosecution of the 90/632,199 application and is also discussed in the
`
`specification of the ‘199 patent.
`
`A Substantial New Question of Patentability Analysis
`
`A substantial new question of patentability (SNQ) is a requirement in order for a request for a
`
`reexamination proceeding to be granted. As stated in MPEP 2242:
`
`A "substantial new question of patentability" is EM raised by prior art presented in a
`reexamination request if the Office has previously considered (in an earlier
`examination of the patent) the same question of patentability as to a patent claim
`favorable to the patent owner based on the same prior art patents or printed
`publications. In re Recreative Technologies, 83 F.3d 1394, 38 USPQ2d 1776 (Fed.
`Cir. 1996).
`’
`
`For reasons set forth below, the examiner finds that the instant request raises essentially the same
`
`questions of patentability that were already considered in the prior examination proceeding.
`
`Accordingly, the instant request for reexamination of claims 1 and 2 is denied.
`
`1. Applying “Old Art” as the Sole Basis for a New Request for Reexamination
`
`All the references, which are the basis for the substantial new question of patentability,
`
`had been considered in a previous examination proceeding. Accordingly, the references
`
`are considered “old art” for the determination of whether a new substantial question of
`
`patentability exist in the instant request for reexamination.
`
`Alcon Research, Ltd.
`Exhibit 1005 - Page 5
`
`Alcon Research, Ltd.
`Exhibit 1005 - Page 5
`
`

`

`Application/Control Number: 90/009,541
`
`Art Unit: 3993
`
`Page 4
`
`35 U.S.C. 303(a) provides for ex parte reexamination (emphasis added):
`
`“Within three months following the filing of a request for reexamination under the
`provisions of section 302 of this title, the Director will determine whether a substantial
`new question of patentability affecting any claim of the patent concerned is raised by
`the request, with or without consideration of other patents or printed publications. . ..The
`existence of a substantial new question of patentability is not precluded by the fact
`that a patent or printed publication was previously cited by or to the Office or
`considered by the Office.”
`
`The reexamination statute makes it clear that a SNQ can be raised by patents and printed
`
`publications “previously cited by or to the Office or considered by the Office.” This provision
`
`was added for both ex parte and inter partes reexamination via the Patent and Trademark Office
`
`Authorization Act of 2002.]
`
`Therefore, for any reexamination ordered on or after November 2, 2002, the effective
`
`date of the statutory revision, reliance on previously cited/considered art, i.e., "old art,"
`
`does not necessarily preclude the existence of a substantial new question of patentability
`
`(SNQ) that is based exclusively on that old art. Rather, determinations on whether a SNQ
`
`exists in such an instance shall be based upon a fact-specific inquiry done on a case-by-
`
`case basis.
`
`2. The Determination of a SNQ
`
`Looking to the legislative history for the original reexamination statutez, Congress stated:
`
`“Section I provides for a system of administrative reexamination of patents within the
`patent office. This new procedure will permit any party to petition the patent office to
`review the efficacy of a patent, subsequent to its issuance, on the basis of new
`
`' See § 13105, part (a), of the Patent and Trademark Office Authorization Act of 2002, enacted in Public Law 107-
`273, let Century Department of Justice Appropriations Authorization Act, 1 16 Stat. 1758 (2002).
`2 Public Law 96-517, enacted on December 12, 1980.
`
`Alcon Research, Ltd.
`Exhibit 1005 - Page 6
`
`Alcon Research, Ltd.
`Exhibit 1005 - Page 6
`
`

`

`Application/Control Number: 90/009,541
`
`Art Unit: 3993
`
`Page 5
`
`information about preexisting technology which may have escaped review at the
`time of the initial examination of the patent application. H.R. Rep. No. 96-1307,
`96th Cong, 2d Sess. 3(1980), reprinted in 1980 U.S.C.C.A.N. 6460, 6461, 6462.”
`[Emphasis added]
`
`Reexamination is limited to review of new information about preexisting technology which may
`
`have escaped review at the time of the initial examination of the patent application.
`It was not
`designed for harassment of a patent owner by review of old information about preexisting
`
`technology, even if a third party feels the Office’s conclusion based on that old information was
`
`erroneous. The reexamination legislative history nowhere provides for review of such old
`
`information, each time a court clarifies or re-interprets a standard or a point of law that affects
`
`the patentability determination. If it did, the reexamination process would be unwieldy, because
`
`case law is constantly evolving.
`
`Looking further at the legislative history for the original reexamination statute, Congress stated:
`
`“Subsection 303(a) requires the Commissioner to determine if a "substantial new
`question of patentability" is raised in connection with any claims of the patent against
`which a patent or printed publication is cited and to order reexamination upon a positive
`determination. . .. This ‘substantial new question’ requirement would protect patentees
`from having to respond to, or participate in unjustified reexaminations. Further, it
`would act to bar reconsideration of any argument already decided by the Office,
`whether during the original examination or an earlier reexamination. ” Id. at 7, reprinted
`in 1980 U.S.C.C.A.N. at 6465, 6466. [Emphasis added]
`
`For example, reconsideration of an argument that the examiner improperly applied, or did not
`
`apply, either 35 U.S.C. 102 or 35 U.S.C. 103 in a rejection over a reference or combination of
`
`references that was identical to the reference or reference combination previously applied by the
`
`examiner, whether during the original examination or an earlier reexamination, was barred.
`
`Similarly, the reexamination statute bars reconsideration of any “argument” as to obviousness of
`
`Alcon Research, Ltd.
`Exhibit 1005 - Page 7
`
`Alcon Research, Ltd.
`Exhibit 1005 - Page 7
`
`

`

`Application/Control Number: 90/009,541
`
`Art Unit: 3993
`
`Page 6
`
`old art that has already been decided by the Office, despite the fact that a standard for
`
`patentability may have. been clarified or modified by virtue of a post-patent court decision.
`
`The examiner has thoroughly reviewed the instant request for reexamination and has determined
`
`that the request does not present any new information or technical teaching about the cited
`
`references that was not present in the prior examination for the reasons stated below.
`
`3. The Neev ‘894 Reference
`
`As stated above in the summary of the prior examination, the Neev ‘894 reference was
`
`applied to patent claims 1 and 2 (application claims 35 and 36) under both anticipation and
`
`obviousness double patenting. In the request for reexamination, the request is applying the Neev
`
`‘894 reference under anticipation, obviousness (combined with Bille), and obviousness double
`
`patenting. Therefore, the application of the teachings of Neev ‘894 (see, e. g., pages 13-16 of the
`
`request) is substantially identical to the application of Neev ‘894 in the prior examination. As
`
`, stated above, the third party requester relies on the request to give “new light” to this “old art”
`
`reference. Accordingly, under this fact-specific inquiry, a SNQ only exists if the request sheds
`
`“new light” on Neev ‘894.
`
`Looking at the request, pages 13-16 allege to set forth a substantial new question of
`
`patentability for the Neev ‘894 reference to support the anticipation, obviousness, and
`
`obviousness double patenting proposed rejections. The request alleges that the examiner in the
`
`prior prosecution did not accord the claim limitation pertaining to the “interaction energy
`
`transients” the proper breath in his interpretation, and therefore, withdrew the rejection based on
`
`Alcon Research, Ltd.
`Exhibit 1005 - Page 8
`
`Alcon Research, Ltd.
`Exhibit 1005 - Page 8
`
`

`

`Application/Control Number: 90/009,541
`
`Page 7
`
`Art Unit: 3993
`
`Neev ‘894 and allowed patent claim 1. See, e.g., page 13 of the request. see also pages 18-21 of
`
`the request, which explains the requester’s interpretation of this claim limitation. Because of this
`
`allegedly overly narrow interpretation, the requester believes that the examiner in the prior
`
`prosecution had withdrawn the rejection based on anticipation and obviousness double patenting
`
`in error. As stated above, the legislative history of the reexamination statutes are clear that
`
`reconsideration of an argument that the examiner improperly applied either 35 U.S.C. 102 or 35
`
`U.S.C. 103 in a rejection over a reference that was identical to the reference previously applied
`
`by the examiner in the original examination is barred.
`
`The request also states that the examiner in the prior prosecution “... was apparently
`
`unaware of the extensive similarity between the technology disclosed in the Neev '894 patent and
`
`that taught by the application for the '199 patent." The request, however, does not provide any
`
`evidence that shows that the examiner did not fully appreciate the teachings of Neev '894. The
`
`prior examination record, on the contrary, provides evidence that the examiner did appreciate the
`
`relevant teachings of Neev '894 as the examiner applied Neev '894 against numerous claims
`
`under two grounds of rejection.
`
`Furthermore, the request fails to clearly and explicitly point to any new technical teaching
`
`presented by Neev that was not considered in the prior examination. For example, the examiner
`
`allowed patent claim 1 because Neev did not teach interaction energy transients to substantially
`
`decay so that material modification is effected as stated in limitation c of patent claim 1. The
`
`request relies upon the doctrine of inherency to supply this missing teaching. See, e.g., pages 14
`
`and 33-34 of the request. The request, however, fails to provide any evidence to support the
`
`statements that Neev inherently discloses this claim limitation.
`
`Alcon Research, Ltd.
`Exhibit 1005 - Page 9
`
`Alcon Research, Ltd.
`Exhibit 1005 - Page 9
`
`

`

`Application/Control Number: 90/009,541
`
`Art Unit: 3993
`
`Page 8
`
`Therefore, the request fails to clearly establish a substantial new question of patentability
`
`that would support the proposed rejections based on Neev ‘894. In other words, the request fails
`
`to present the teachings of Neev ‘894 in a new light. Therefore, the teachings of Neev ‘894
`
`presented in the request are cumulative to the teachings of Neev ‘894 considered in the prior
`
`examination, and are not important to a reasonable examiner in deciding the patentability of
`
`claims 1 and 2 in the ‘ 199 patent.
`
`4. The Bille Reference
`
`As stated above in the summary of the prior examination, Bille was cited in an information
`
`disclosure statement in the prosecution of the 90/632,199 application and is also discussed in the
`
`specification of the ‘199 patent. As stated above, the third party requester relies on the request to
`
`give “new light” to this “old art” reference. Accordingly, under this fact-specific inquiry, a SNQ
`
`only exists if the request sheds “new light” on Bille.
`
`Looking at the request, pages 10-12 allege to set forth a substantial new question of
`
`patentability for Bille to support the anticipation and obviousness proposed rejections. The
`
`request alleges that the examiner in the prior prosecution did not recognize the relevance of Bille.
`
`See page 10 of the request. The request goes on to explain how the discussion of Bille in the
`
`specification of the ‘ 199 does not apply the limitations in claim 1 of the ‘199 patent. See page 11
`of the request. The request also states that “the profound relevance” of Bille as applied to claims
`
`1 and 2 of the ‘ 199 patent is “. .. further masked by differences in units used on key variable.”
`
`See pages 11-12 of the request. While claim 1 does contain the limitation that the deposited
`
`volumetric power density is greater than the threshold power density, it is unclear how this
`
`Alcon Research, Ltd.
`Exhibit 1005 - Page 10
`
`Alcon Research, Ltd.
`Exhibit 1005 - Page 10
`
`

`

`Application/Control Number: 90/009,541
`
`Art Unit: 3993
`
`Page 9
`
`teaching in Billie, as explained by the request, is presenting a new, non-cumulative technical
`
`teaching. The prior examination record provides evidence that Neev ‘894 taught this claim
`
`limitation from the prior rejection based on Neev ‘894. The notice of allowance does not state
`
`that Neev did not teach this claim limitation. Therefore, it appears that this teaching of Bille is
`
`cumulative to the teachings of Neev ‘894. In other words, what the request does not state is a
`
`new, non-cumulative technical teaching by Bille as applied to the limitations of claims 1 and 2 of
`
`the ‘ 199 patent.
`
`In addition, the request also seems to rely upon the broader interpretation of the limitation
`
`pertaining to the “interaction energy transients” in claim 1 as establishing a SNQ in the same
`
`manner as discussed above with Neev ‘894. See, e.g., page 26 of the request. See also pages 18-
`
`21 of the request, which explains the requester’s interpretation of this claim limitation.
`
`Providing a new claim interpretation does not set forth a new, non-cumulative technical teaching
`
`in the Bille reference. Also, the request seemingly relies upon the doctrine of inherency to
`
`supply this missing teaching. See, e.g., page 12 of the request. The request, however, fails to
`
`provide any evidence to support the statements that Bille inherently discloses this claim
`
`limitation.
`
`Therefore, the request fails to clearly establish a substantial new question of patentability
`
`that would support the proposed rejections based on Bille. In other words, the request fails to
`
`present the teachings of Bille in a new light. The teachings of Bille are cumulative to the
`
`teachings of Neev ‘894 considered in the prior examination, and are not important to a
`
`reasonable examiner in deciding the patentability of claims 1 and 2 in the ‘ 199 patent.
`
`Alcon Research, Ltd.
`Exhibit 1005 - Page 11
`
`Alcon Research, Ltd.
`Exhibit 1005 - Page 11
`
`

`

`Application/Control Number: 90/009,541
`
`Page 10
`
`Art Unit: 3993
`
`Conclusion
`
`The references set forth in the request have been considered both alone and in
`
`combination. For the reasons set forth above, they fail to raise an SNQ as to any one of claims 1
`
`and 2 of the ‘ 199 patent. Accordingly, the request for reexamination is DENIED.
`
`The requester is advised that review of this decision may be sought by way of a petition filed
`
`under 37 CFR 1.515(c) within a month of the mailing date of this communication. See
`
`MPEP 2248 for more information.
`
`All correspondence relating to this ex parte reexamination proceeding should be directed:
`
`By EFS:
`
`Registered users may submit via the electronic filing system EFS-Web, at
`https://sportal.uspto.gov/authenticate/authenticateuserlocalepfhtml.
`
`By Mail to: Mail Stop Ex Parte Reexam
`Central Reexamination Unit
`
`Commissioner for Patents
`
`United States Patent & Trademark Office
`
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`.By FAX to: (571) 273-9900
`Central Reexamination Unit
`
`By hand:
`
`Customer Service Window
`Randolph Building -
`401 Dulany Street
`Alexandria, VA 22314
`
`For EFS-Web transmissions, 37 CFR 1.8(a)(1)(i) (C) and (ii) states that correspondence
`
`(except
`
`for a request
`
`for
`
`reexamination and a corrected or
`
`replacement
`
`request
`
`for
`
`reexamination) will be considered timely filed if (a) it is transmitted via the Office’s electronic
`
`filing system in accordance with 37 CFR 1.6(a)(4), and (b) includes a certificate of transmission
`
`for each piece of correspondence stating the date of transmission, which is prior to the expiration
`
`Alcon Research, Ltd.
`Exhibit 1005 - Page 12
`
`Alcon Research, Ltd.
`Exhibit 1005 - Page 12
`
`

`

`Application/Control Number: 90/009,541
`
`Art Unit: 3993
`
`of the set period of time in the Office action.
`
`Page 11
`
`Any inquiry concerning this communication or earlier communications from the Examiner, or as
`to the status of this proceeding, should be directed to the Central Reexamination Unit at
`telephone number (571) 272-7705.
`
`Signed:
`
`/Jeanne M Clark/
`
`Jeanne M. Clark
`
`CRU Examiner
`
`GAU 3993
`
`(571) 272-7714
`
`Conferee:
`\VDZ—g
`Conferee: Ag
`
`Alcon Research, Ltd.
`Exhibit 1005 - Page 13
`
`Alcon Research, Ltd.
`Exhibit 1005 - Page 13
`
`