Ex Parte Downer

Patent Trial and Appeal Board

Jul 28, 2016

11675380 (P.T.A.B. Jul. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111675,380 02/15/2007
26356 7590 08/01/2016
ALCON
IP LEGAL
6201 SOUTH FREEWAY
FORT WORTH, TX 76134
FIRST NAMED INVENTOR
David A. Downer
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
PAT903233-US-NP 6201
EXAMINER
TANNER, JOCELIN C
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
08/01/2016 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):
patent. docketing@alcon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID A. DOWNER
Appeal2014-006278
Application 11/675,380
Technology Center 3700
Before JAMES P. CAL VE, GEORGE R. HOSKINS, and
ARTHUR M. PESLAK, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
David A. Downer ("Appellant") 1 appeals under 35 U.S.C. § 134 from
the Examiner's decision rejecting claims 1, 5-9, 13-15, and 18-28 in this
application. The Board has jurisdiction over the appeal under 35 U.S.C.
§ 6(b ).
We REVERSE.
1 The Appeal Brief identifies Novartis AG as the real party in interest.
Appeal Br. 2.
Appeal2014-006278
Application 11/675,380
CLAIMED SUBJECT MATTER
Claims 1, 6, and 7 are independent. Claim 1 illustrates the subject
matter on appeal, and it recites:
1. An intraocular lens delivery system, comprising:
a) a cartridge comprising a slot;
b) a tubular handpiece having an interior wall;
c) a plunger having an attached distally extending plunger
rod, the plunger being sized and shaped to reciprocate within the
tubular handpiece; and
d) a sliding block having a groove, the groove sized and
shaped to fit over the plunger rod;
wherein forward movement of the sliding block within the
slot of the cartridge also causes movement of the plunger rod and
plunger, wherein the sliding block is frictionally engaged with
the plunger rod so that movement of the sliding block causes
movement of the plunger rod;
wherein the sliding block is configured to be pushed forward
until a button on the sliding block reaches a distal end of the slot
configured to limit travel of the sliding block;
\~1herein fi1rther fof'l{ard movement of the plunger rod after
the sliding block reaches the distal end of the slot is
accomplished by pressing on an end cap of the plunger;
wherein during the further movement of the plunger rod, the
sliding block acts as a stiffener to reduce bending and buckling
of the plunger rod.
REJECTIONS ON APPEAL
Claims 1, 5, 7-9, 14, 15, 18, 23, 25, and 28 2 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Feingold (US 6,056,757, issued
May 2, 2000) and Lee (US 6,276,014 Bl, issued Aug. 21, 2001).
2 The Office Action on appeal additionally includes claim 26, but provides
no analysis for claim 26 (Final Act. 2--4), and also cites Huang in rejecting
claim 26 (id. at 5-6). Thus, we do not include claim 26 in this list.
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Appeal2014-006278
Application 11/675,380
Claims 6, 20, 21, and 27 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Feingold, Lee, and Binder (US 6,607,537 Bl, issued
Aug. 19, 2003).
Claims 13, 19, 24, and 26 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Feingold, Lee, and Huang (US 6,163,963, issued Dec. 26,
2000).
Claim 22 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Feingold, Lee, Binder, and Huang.
ANALYSIS
A. Obviousness based on Feingold and Lee
In rejecting claim 1, the Examiner finds Feingold discloses a lens
delivery system including plunger rod 216 reciprocating within cartridge 213
and tubular handpiece 230. Final Act. 2; see Feingold, Figs. 1-2. The
Examiner finds Feingold lacks any structure corresponding to the sliding
block of claim 1. Final Act. 2--'3.
The Examiner relies on Lee as disclosing a sliding block (i.e. blade
holder 71) sized and shaped to fit over a plunger rod (i.e. blade 73) and
reciprocating within a tubular handpiece. Id. at 3; see Lee, Fig. 2. The
Examiner finds Lee's sliding block 71 includes a groove that frictionally
couples sliding block 71 to plunger rod (blade) 73, as well as button 72
manipulated within a slot formed within casing 20, such that button 72 is
pushed to move sliding block 71 and plunger rod 73 in and out of casing 20.
Final Act. 3. The Examiner determines it would have been obvious to
provide Feingold's cartridge 213 with a slot and a sliding block, as taught by
Lee, to provide another means to actuate Feingold's plunger rod 216. Id.
According to the Examiner:
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Application 11/675,380
With this modification, the plunger rod [216] will be
coupled to the sliding block and actuation button through a slot
within the cartridge [213]. The sliding block is capable of being
pushed forward until a button on the sliding block reaches a distal
end of the slot to limit travel of the sliding block. By removing
the button, further forward movement of the plunger rod [216]
after the sliding block reaches the travel limit is accomplished by
pressing on an end cap [218] of the plunger [216]. During the
forward movement of the plunger rod [216] the sliding block is
capable of acting as a stiffener to reduce bending and buckling
of the plunger rod [216].
Final Act. 3--4 (emphasis added).
Appellant argues Lee does not teach, as recited in claim 1, sliding
block 71 being pushed forward until button 72 reaches a distal end of the
slot to limit travel of the sliding block, "wherein further forward movement
of the plunger rod [blade 73 3] after the sliding block reaches the distal end of
the slot is accomplished by pressing on an end cap of the plunger." Appeal
Br. 7 (emphasis removed). Appellant asserts Lee's sliding block 71 "does
not allow movement of a plunger rod [blade 73] once the thumb piece 72
reaches a distal end of a slot." Id. (emphasis added). Appellant similarly
contends "Lee does not teach independent movement of the blade [73]
relative to the thumb piece [71, 72]." Id. (emphasis removed). Based on
these considerations, Appellant contends the cited prior art fails to teach a
sliding block moving a plunger rod, and then allowing the plunger rod to
3 Appellant does not concede Lee's blade 73 may be considered a "plunger
rod" as claimed. Appeal Br. 7 ("the thumb piece 72 of Lee does not move a
plunger rod"). Given our decision that the Examiner errs in another fashion,
we need not consider whether the Examiner additionally errs in that
particular finding.
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Appeal2014-006278
Application 11/675,380
slide relative to the sliding block when the sliding block reaches a distal end
of a slot to limit travel of the sliding block, as recited in claim 1. Id. at 7-8.
In response, the Examiner determines: "[A ]s taught by Lee, the
system of Feingold would be capable of providing forward movement the
length of the slot," and "[ w ]hen the end cap [218] of the plunger [216] of
Feingold is pushed,further forward movement would be provided." Ans. 10
(emphasis added).
We are persuaded of Examiner error. Lee's sliding block 71
frictionally engages plunger rod (blade) 73 via engaging piece 713 of sliding
block 71 being received within one of two recesses 732 and 734 of plunger
rod 73. Lee, Fig. 2, 2:20-33. This engagement is sufficiently secure that
plunger rod (blade) 73 "may be used for cutting." Id. at 2:25-27. A person
of ordinary skill in the art would understand that when further travel of Lee's
sliding block 71 is limited by a distal end of a slot within Feingold's
cartridge 213, Lee's disclosed engagement between sliding block and
plunger rod would prevent the "further forward movement" of Feingold' s
plunger rod 216 recited in claim 1, even if one were to press on end cap 218
of plunger rod 216. Lee's sliding block 71 would have to be modified to re-
configure the engagement between sliding block and plunger rod to allow
the recited further forward movement. The Examiner's rejection does not
provide any findings or reasoning to establish the obviousness of making
such a modification to Lee's sliding block when added to Feingold.
The Examiner refers to "removing the button [72]" from Lee's sliding
block 71 to accomplish the claimed "further forward movement" of the
plunger rod. Final Act. 3--4. However, Lee does not disclose any such
removal of button 72 from sliding block 71, and it is not clear how such
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Appeal2014-006278
Application 11/675,380
removal could be accomplished short of a complete disassembly of Lee's
entire device. Moreover, the Examiner's reasoning ignores the claim
requirement that the further forward movement of the plunger rod occurs
"after the sliding block reaches the distal end of the slot," wherein the distal
end is "configured to limit travel of the sliding block" in the forward
direction. Appeal Br. 14 (Claims App.) (emphasis added). It is the
interaction between Lee's button 72 and the surrounding casing 30, 40 that
limits further travel of sliding block 71, and removal of button 72 would free
up sliding block 71 for further forward travel. Thus, the Examiner's
proposed removal of button 72 would not result in the claimed invention,
which requires that the forward movement of the sliding block be limited at
the distal end of the slot.
For the foregoing reasons, we conclude the Examiner errs in
determining claim 1 would have been obvious over Feingold and Lee. The
final three limitations of independent claim 7 are substantially the same as
the final three limitations of claim 1. The Examiner's consideration of
claim 7, and of claims 5, 8, 9, 14, 15, 18, 23, 25, and 28-which depend
from either claim 1 or claim 7----does not correct the deficiencies noted
above. Final Act. 2--4. Thus, we do not sustain the rejection of claims 1, 5,
7-9, 14, 15, 18, 23, 25, and 28 as unpatentable over Feingold and Lee.
B. Obviousness based on Feingold, Lee, and Binder
The final three limitations of independent claim 6 are substantially the
same as the final three limitations of claim 1. The Examiner's consideration
of claim 6, and its dependent claims 20, 21, and 27, in view of Feingold, Lee,
and Binder, does not correct the deficiencies noted above. Final Act. 4--5.
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Application 11/675,380
Thus, we do not sustain the rejection of claims 6, 20, 21, and 27 as
unpatentable over Feingold, Lee, and Binder.
C. Obviousness based on Feingold, Lee, and Huang
The Examiner's consideration of claims 13, 19, 24, and 26, each
depending from independent claim 1 or independent claim 7, in view of
Feingold, Lee, and Huang, does not correct the deficiencies noted above.
Final Act. 5-6. Thus, we do not sustain the rejection of claims 13, 19, 24, and
26 as unpatentable over Feingold, Lee, and Huang.
D. Obviousness based on Feingold, Lee, Binder, and Huang
The Examiner's consideration of claim 22, which depends from
independent claim 6, does not correct the deficiencies noted above. Final
Act. 6-7. Thus, we do not sustain the rejection of claim 22 as unpatentable
over Feingold, Lee, Binder, and Huang.
DECISION
The Examiner's decision to reject claims 1, 5-9, 13-15, and 18-28 is
not sustained.
REVERSED
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