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`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.0. Box I450
`Alexandria. Virginia 223l3-l450
`www.uspto.gov
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`APPLICATION NO.
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`FILING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`CONFIRMATION NO.
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`90/009,625
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`I 0/2 8/2009
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`'
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`6482 I 99
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`459763
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`4434
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`27683
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`7590
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`08/02/2010
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`HAYNES AND BOONE, LLP
`IP Section
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`2323 Victory Avenue
`Suite 700
`Dallas, TX 75219
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`EXAMINER
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`‘ART UNIT
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`PAPER NUMBER
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`DATE MAILED: 08/02/2010
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`Please find below and/or attached an Office communication concerning th
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`is application or proceeding.
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`PTO-90C (Rev. 10/03)
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`Alcon Research, Ltd.
`Exhibit 1009 - Page 1
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`Alcon Research, Ltd.
`Exhibit 1009 - Page 1
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`

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`UNITED STATES PATENT AND TRADENLARK OFFICE
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`
`
`Commissionerfor Patents
`United States Patent and Trademark Office
`P.0. Box 1 450
`Alexandria, VA 22313—1450
`vwwvusprotgov
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`DO NOT USE IN PALM PRINTER
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`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
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`’
`
`~
`- Scott Catlin
`Abbott Medical Optics, Inc.
`1700 East St. Andrew Place
`Santa Ana, CA 92705
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`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
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`REEXAMINATION CONTROL NO. 90/009 625.
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`PATENT NO. 6482199.
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`ARTUNIT 3993.
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`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(0).
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`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 pante reexamination requester will be
`acknowledged or considered (37 CFR 1.550(9)).
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`PTOL—465 (Rev.07-04)
`'
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`Alcon Research, Ltd.
`Exhibit 1009 - Page 2
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`Alcon Research, Ltd.
`Exhibit 1009 - Page 2
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`

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`Control No.
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`Patent Under Reexamination
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`Notice of Intent to Issue
`Ex Parte Reexamination Certificate
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`-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address --
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`1. [Z Prosecution on the merits is (or remains) closed in this ex parte reexamination proceeding. This proceeding is
`subject to reopening at the initiative of the Office or upon petition. Cf. 37 CFR 1.313(a). A Certificate will be
`issued in view of
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`Examiner
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`Art Unit—--
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`(a) E Patent owner's communication(s) filed: 14 June 2010.
`(b) E] Patent owner's late response filed:
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`(c) [3 Patent owner's failure to file an appropriate response to the Office action mailed:
`(d) [:l Patent owner’s failure to timely file an Appeal Brief (37 CFR 41.31).
`(e) C] Other:
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`.
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`Status of Ex Parte Reexamination:
`(f) Change in the Specification: D Yes X No
`(9) Change in the Drawing(s):
`[I Yes [XI No
`(h) Status of the Claim(s):
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`(1) Patent claim(s) confirmed:
`(2) Patent claim(s) amended (including dependent on amended claim(s)): fl
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`(3) Patent claim(s) cancelled:
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`(4) Newly presented claim(s) patentable: 17-86.
`(5) Newly presented cancelled claims:
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`2. [2| Note the attached statement of reasons for patentability and/or confirmation. Any comments considered
`necessary by patent owner regarding reasons for patentability and/or confirmation must be submitted promptly
`to avoid processing delays. Such submission(s) should be labeled: “Comments On Statement of Reasons for
`Patentability and/or Confirmation.“
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`3. CI Note attached NOTICE OF REFERENCES CITED (PTO-892).
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`4. [3 Note attached LIST OF REFERENCES CITED (PTO/SB/08).
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`5. I] The drawing correction request filed on
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`is: E] approved
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`I:I disapproved.
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`6. El Acknowledgment is made of the priority claim under 35 U,.S.C. § 119(a)-(d) or (f).
`a)l:| All
`b)I:I Some*
`c)|:] None
`of the certified copies have
`[I been received.
`[I not been received
`[:I been filedIn Application No.
`[:1 been filed in reexamination Co—ntrol No.
`C] been received by the International BureauIn PCT Application No.
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`* Certified copies not received: +
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`7. I] Note attached Examiner’s Amendment.
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`8. E Note attached Interview Summary (PTO-474).
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`to one u o? 5» BJILCV 'm QmAMW-lnv 91E Other: E-AJM s 5‘— ti.
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`A“.
`1\3o\ \5
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`cc: Rc-uester ifthird O .
`US. Patent and Trademark Office
`PTOL—469 (Rev.08-06)
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`Notice of Intent to Issue Ex Parte Reexamination Certificate
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`Part of Paper No -----
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`Alcon Research, Ltd.
`Exhibit 1009 - Page 3
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`Alcon Research, Ltd.
`Exhibit 1009 - Page 3
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`

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`Application/Control Number: 90/009,625
`Art Unit: 3993
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`'
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`'
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`Page 2
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`Claims Patentable
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`Claims 1-4 are patentable as amended. Newly added claims 17-86 are
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`patentable.
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`STATEMENT OF REASONS FOR PATENTABILITY AND/OR CONFIRMATION
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`The following is an examiner's statement of reasons for patentability and/or
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`confirmation of the claims found patentable in'this reexamination proceeding:
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`The prior art does not teach or fairly suggest the invention as recited in claims 1-
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`4 of US. patent No. 6,482,199, and claims 17-86 that were added during the instant
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`reexamination proceeding. Specifically, amended independent claim 1 and newly filed
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`independent claims 79-86 include the limitation of preparing the target region of the
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`target material by spatially or temporally varying at least one of an absorption
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`characteristic of the material or a scattering characteristic of the material at the target
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`region. The applied references of Bille, Niemz, Juhasz and Jacques do not teach this
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`feature (see, e.g., pages 27-31 and 32-35 of the response filed June 14, 2010). To
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`further support his arguments, patent owner has provided a declaration from Thomas E.
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`Milner (see, e.g., pages 7-11 of the declaration). The examiner agrees with patent
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`I owner’s arguments and the declaration is persuasive. Accordingly, it is agreed that
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`claims 1—4 and newly filed claims 17-86of US. Patent No. 6,482,199 are
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`patentable/confirmed.
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`Alcon Research, Ltd.
`Exhibit 1009 - Page 4
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`Alcon Research, Ltd.
`Exhibit 1009 - Page 4
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`

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`Application/Control Number: 90/009,625
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`Page 3
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`Art Unit: 3993
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`Any comments considered necessary by PATENT OWNER regarding the above
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`statement must be submitted promptly to avoid processing delays. Such submission by
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`the patent owner should be labeled: "Comments on Statement of Reasons for
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`Patehtability and/or Confirmation" and will be placed in the reexamination file.
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`Scope of Reexamination
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`Since requester did not request reexamination of claims 3—16 and did not assert
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`the existence of a substantial new question of patentabilityl (SNQP) for such claims
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`(see 35 U.S.C. § 311(b)(2); see also 37 CFR 1.915b and 1.923), such claims will not be
`reexamined. This matter was squarely addressed in Sony Computer Entertainment
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`America Inc., etal. v. Jon W Dudas, Civil Action No. 1:05CV1447 (E.D.Va. May 22,
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`2006), Slip Copy, 2006 WL 1472462.
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`(Not Reported in F.Supp.2d.) The District Court
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`upheld the Office's discretion to not reexamine claims in an inter partes reexamination
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`proceeding other than those claims for which reexamination had specifically been
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`requested. The Court stated:
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`To be sure, a'party may seek, and the PTO may grant, inter
`partes review of each and every claim of a patent. Moreover,
`while the PTO in its diScretion may review claims for which inter
`partes review was not requested, nothing in the statute compels
`it to do so. To ensure that the PTO considers a claim for inter
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`the party seeking
`requires that
`.partes review, § 311(b)(2)
`reexamination demonstrate why the PTO should reexamine
`each and 'every claim for which it seeks review. Here,
`it
`is
`undisputed that Sony did not seek review of every claim under
`the '213 and '333 patents. Accordingly, Sony cannot now claim
`that the PTO wrongly failed to reexamine claims for which Sony
`never requested review, and its argument that AIPA compels a
`contrary result is unpersuasive.
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`Alcon Research, Ltd.
`Exhibit 1009 - Page 5
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`Alcon Research, Ltd.
`Exhibit 1009 - Page 5
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`

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`Application/Control Number: 90/009,625
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`Page 4
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`Art Unit: 3993
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`(Slip copy at page 9.)
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`The Sony decisio’n’s reasoning and statutory interpretation. apply analogously to
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`ex parte reexamination, as the same relevant statutory language applies to both inter
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`partes and ex parte reexamination. 35 U.S.C. § 302 provides that the ex parte
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`reexamination “request must set forth the pertinency and manner of applying cited prior
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`art to every claim for which reexamination is reguested” (emphasis added), and 35
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`' U.S.C. § 303 provides that “the Director will determine whether a substantial new
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`question of patentability affecting any claim of the patent concerned is raised by the
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`Legu_es_t...” (Emphasis added). These provisions are analogous to the language of 35
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`U.S.C. § 311(b)(2) and 35 U.S.C. § 312 applied and construed in Sony, and would be
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`construed in the same manner. As the Director can decline to reexamine non-
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`requested claims in an inter partes reexamination proceeding, the Director can likewise
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`do so in ex parte reexamination proceeding. S_ee_ Notice of Clarification of Office Policy
`To Exercise Discretion in Reexamining Fewer Than All the Patent Claims (signed Oct.
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`5, 2006) 1311 0G 197 (Oct. 31, 2006). S_eegg MPEP § 2240, Rev. 5, Aug. 2006.
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`Therefore, claims 3-16 were not reexamined in this ex partes reexamination
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`proceeding.
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`Please mail any communications to:
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`Conclusion
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`Attn: Mail Stop “Ex Parte Reexam”
`Central Reexamination Unit
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`Commissioner for Patents
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`PO. Box 1450
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`Alcon Research, Ltd.
`Exhibit 1009 - Page 6
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`Alcon Research, Ltd.
`Exhibit 1009 - Page 6
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`

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`Application/Control Number: 90/009,625
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`Page 5
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`Art Unit: 3993
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`Alexandria, VA 22313-1450
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`Please FAX any communications to:
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`(571) 273-9900
`Central Reexamination Unit
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`Please hand—deliver any communications to:
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`Customer Service Window
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`, Attn: Central Reexamination Unit
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`Randolph Building, Lobby Level
`401 Dulaney Street
`Alexandria, VA 22314
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`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.
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`Signed:
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`/Beverly M. Flanagan/
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`Beverly M. Flanagan
`CRU Examiner
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`GAU 3993
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`(571) 272—4766
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`Conferee /J RJ/
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`Conferee ££
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`Alcon Research, Ltd.
`Exhibit 1009 - Page 7
`
`Alcon Research, Ltd.
`Exhibit 1009 - Page 7
`
`