Appeal No. 2005-1117
Application 10/078,043
Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950 (Fed. Cir. 1999), and Continental Can
Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991) (brief,
pages 5-6). Appellants point out that Eckhouse teaches the use of electromagnetic radiation for
the treatment of skin disorders and for several invasive procedures, but not the treatment of acute
otitis media or treatment proximate to the tympanic membrane, and argue that the reference thus
does not inherently teach all of the elements of claim 11 (id., pages 6-7).
In response, the examiner submits that while a functional limitation must be considered,
“there is nothing in the [subject limitation of claim 1] which implies any structure beyond a
delivery member which may be located near a plant,” arguing that “the Eckhouse delivery
member, which is located near skin, may inherently be located adjacent a plant” and pointing to
col. 8, ll. 46-55, of Eckhouse where “a lightweight delivery unit held in the desired location by
the physician” is taught (answer, pages 3-4). The examiner argues that “[s]uch a hand-held unit
is clearly capable of being located adjacent skin tissue, an ear (including the tympanic
membrane) or a plant” (id., page 4). The examiner points out that appellants have “failed to
establish why the Eckhouse devise is structurally incapable of being placed proximate a plant or
parts thereof” (id.).
With respect to claim 11, the examiner submits that “the handheld probe of Eckhouse,
which is placed at various locations on the skin to treat reasonably small areas, is inherently
capable of being located in proximity to a patient’s ear (i.e., in proximity to a tympanic
membrane),” and that the “claims fail to set forth any distinguishing features or elements which
would require the device to be located at a position (e.g., within the inner ear) not reachable by
any well-known hand held probe such as taught by Eckhouse” (id.). The examiner further
submits that while Eckhouse does not disclose treating acute otitis media or a device proximate
to the tympanic membrane, the reference teaches a device that “includes a light source which
provides the exact same wavelength and energy ranges for treating tissue” and “is inherently
capable of being located adjacent an ear and, therefore, in proximity to a tympanic membrane”
(id., pages 4-5). The examiner points out that appellants have “failed to establish why the
Eckhouse devise would be incapable of being located in proximity to a tympanic membrane of
an animal” (id., page 5).
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