Ex Parte Lindsey et al

Board of Patent Appeals and Interferences

May 31, 2007

10124648 (B.P.A.I. May. 31, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________________

Ex parte RAYMIE H. LINDSEY,
JAMES M. SCOTT, and STEPHEN J. VAN NOY
_____________________

Appeal 2007-1199
Application 10/124,6481
Technology Center 3700
_____________________

Decided: May 31, 2007
____________________

Before JAMESON LEE, RICHARD TORCZON and SALLY C. MEDLEY,
Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL
A. Statement of the Case
This is a decision on appeal by an applicant under 35 U.S.C. ' 134(a)
from a rejection of claims 1-15 of Application 10/124,648. We have
jurisdiction under 35 U.S.C. § 6(b).

Reference Relied on by the Examiner
Nigam 5,928,282 Jul. 27, 1999

1 The real party in interest is Alcon, Inc.

Appeal 2007-1199
Application 10/124,648

2
The Rejections on Appeal
The Examiner rejected claims 1-15 under 35 U.S.C. § 102 as
anticipated by Nigam.2
B. Issues
Have the Applicants shown error in the rejection of claims 1-15 as
anticipated by Nigam?
C. Summary of the Decision
The Applicants have not shown error in the rejection of claims 1-15 as
anticipated by Nigam.
D. Findings of Fact (Referenced as FF. ¶ No.)
1. The invention is directed to an anterior chamber phakic lens
made from a foldable, highly biocompatible material that has a very low
haptic compression force and low axial displacement, and which is still
stable in the anterior chamber. (Specification 4: 2-4).
2. According to the Applicants, they have discovered that the
compressive forces of prior art polymethyl methacrylate anterior chamber
lenses are far in excess of what is required for stability. (Specification 4: 26-
27 and 5: 1).
3. Also according to the Applicants, they have discovered that
lenses made from soft material are stable when certain compressive forces
and contact areas are used. (Specification 5: 4-6).
4. Further according to the Applicants, they have discovered that
an intraocular lens having haptics that contact the anterior chamber angle at

2 A previous rejection of claims 7-15 under 35 U.S.C. § 103 as
unpatentable over Nigam and U.S. Patent 5,861,031 has been withdrawn by
the Examiner.

Appeal 2007-1199
Application 10/124,648

3
only four locations, and with a ratio of haptic spread to optic diameter of less
than 1.5, and preferably around 1.3 for a 5.5 mm optic provides sufficient
stability without excessive angle contact. (Specification 5: 17-21).
5. Further still according to the Applicants, they have recognized
that the compressive force of haptics and footplates on haptics need to be
sufficient for the stability of the optical lens but not large enough to cause
irritation or pupil ovaling. (Specification 6: 4-6).
6. Claims 1 and 10 are the only independent claims on appeal.
They read as follows:
1. An intraocular lens, comprising:
a) an optic having a diameter; and
b) at least one pair of footplates, the footplates
being separated by a haptic and attached to the optic by a ramp,
the ramp being wider in a plane in which the optic lays than it is
in a plane perpendicular to the plane of the optic,
wherein the intraocular lens exhibits a force response of
approximately less than 0.5 mN when the intraocular lens is
compressed 1 mm.

10. An intraocular lens, comprising:
a) an optic having a diameter; and
b) a pair of footplates, each of the footplates
being separated by a haptic and attached to the optic by a ramp,
the ramp being wider in a plane in which the optic lays than it is
in a plane perpendicular to the plane of the optic, the optic,
footplates and ramps being made in a single piece entirely from
a soft acrylic,
wherein the intraocular lens exhibits a force response of
approximately less than 0.5 mN when the intraocular lens is
compressed 1 mm.

7. Citing Figures 10-12 of Nigam, the Examiner determined that
Nigam discloses an intraocular lens comprising an optic (22) having a
Appeal 2007-1199
Application 10/124,648

4
diameter and at least one pair of footplates (32B) separated by a haptic (26B)
and attached to the optic (22) by a ramp (44). (Answer 3: 16-18).
8. The Examiner determined that the ramp of Nigam’s Figure 10
is wider in the optic plane than it is in a plane perpendicular to the optic
plane. (Answer 3-4).
9. The Examiner determined that the ratio of haptic spread to optic
diameter for the lens shown in Nigam’s Figure 10 is less than 1.5 and 1.3.
(Answer 4: 8-9).
10. The Examiner determined that Nigam’s lens is made of soft
acrylic, silicones, or hydrogels. (Answer 4: 5-6).
11. With regard to the force response claim limitation, the
Examiner concluded that Nigam’s lens will react in the same manner as does
the Applicants’ claimed lens because the two have a common structure and
use the same material. (Answer 4: 3-6 and 9-10).
E. Principles of law
For determining patentability over prior art, the name of the game is
the claim. In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523, 1529
(Fed. Cir. 1998).
To establish anticipation under 35 U.S.C. § 102, each and every
element in a claim, arranged as is recited in the claim, must be found in a
single prior art reference. Karsten Mfg. Corp. v. Cleveland Golf Co., 242
F.3d 1376, 1383, 58 USPQ2d 1286, 1291 (Fed. Cir. 2001). Anticipation can
be found when a claim limitation is inherent or otherwise implicit in the
relevant reference. Standard Havens Products, Inc. v. Gencor Industries,
Inc., 953 F.2d 1360, 1369, 21 USPQ2d 1321, 1328 (Fed. Cir. 1991). For
establishing inherency, that which is missing in the express description must
Appeal 2007-1199
Application 10/124,648

5
necessarily be present. Continental Can Co. USA, Inc. v. Monsanto Co., 948
F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991). Once a prima
facie case of anticipation by inherency has been established, however, the
burden shifts to the Applicants to prove that the subject matter shown in the
prior art does not possess the characteristics relied on by the Examiner. In re
King, 801 F.2d 1324, 1327, 231 USPQ 136, 138 (Fed. Cir. 1986). The
Patent and Trademark Office is not equipped to prove any assertion by way
of conducting experiments. In re King, 801 F.2d at 1327, 231 USPQ at 139.
F. Analysis
In an appeal such as this, the Applicants have a burden to demonstrate
error or errors in the Examiner’s findings of which feature or features of
each claim is met by an anticipatory reference and how. We are not here to
conduct examination anew, based on the Applicants’ mere general assertion
that Nigam does not disclose all the features of the claimed invention.
With regard to the Applicants’ Appeal Brief, none of the Examiner’s
specific findings and determinations with regard to where each claim
limitation is found in and disclosed by Nigam is controverted individually by
the Applicants, including (1) the finding that Nigam discloses an intraocular
lens comprising an optic having a diameter, (2) the finding that Nigam’s lens
has at least one pair of footplates which are separated by a haptic and
attached to the optic by a ramp, (3) the finding that the ramp in Nigam is
wider in a plane in which the optic lays than it is in a plane perpendicular to
the plane of the optic, (4) the finding that Nigam’s lens is made of soft
acrylic, silicones, or hydrogels, (5) the finding that for Nigam’s lens the ratio
of haptic spread to optic diameter is less than 1.5 and also 1.3, as is preferred
by the Applicants, and even (6) the finding that Nigam’s lens will inherently
Appeal 2007-1199
Application 10/124,648

6
have the same reactive force as is recited in Applicants’ claims 1 and 10
because the same structure and material is used.
What the Applicants do argue in the Appeal Brief, is this (Appeal Br.:
5):
Contrary to the Examiner’s position, nothing in the
Nigam ‘282 references teaches nor suggests an intraocular lens
having at least one pair of footplates, the footplates being
separated by a haptic and attached to the optic by a ramp, the
ramp being wider in a plane in which the optic lays than it is in
a plane perpendicular to the plane of the optic.

It is uncertain whether the conclusory assertion applies to each claim feature
individually or all three in combination. More importantly, however, the
Applicants do not address and discuss the Examiner’s explanation in support
of the finding that the named features are disclosed in Nigam’s intraocular
lens. The question of what is wrong with the Examiner’s rationale and
analysis remains unanswered.
The Applicants generally argue that Nigam teaches away from the
claimed invention by disclosing that its lens is stiffer along the optical axis
than in the plane perpendicular to the optical axis. Even assuming that the
allegation regarding relative stiffness in Nigam’s lens is true, it has not been
established or explained which feature of the claimed invention is at odds
with and cannot possibly coexist with the alleged stiffness characteristic of
Nigam. The Applicants’ approach is misplaced. For determining
patentability over prior art, the name of the game is the claim. In re Hiniker
Co., 150 F.3d at 1369, 47 USPQ2d at 1529, not some other feature the
relationship of which to any claim feature has not been sufficiently
established. No testimony of any technical witness has been submitted to
the effect that a lens which is stiffer along the optical axis than in a plane
Comment [S1]: Should there be a “,”
after claim and not a “.”?
Appeal 2007-1199
Application 10/124,648

7
perpendicular to the optical axis necessarily cannot comprise of a certain
claim feature of the Applicants. Similarly, it has not been demonstrated why
a lens generally softer as a whole cannot still be more stiff in one direction
than another.
The deficiencies in the Applicants’ Appeal Brief are also present in
and shared by the Reply brief, except that in the Reply Brief, the Applicants
specifically assert that nothing in Nigam says anything about the Applicants’
recited force response, i.e., that the lens exhibits a force response of
approximately less than 0.5 mN when the intraocular lens is compressed 1
mm. The argument is belated and not entitled to consideration, as it should
have been presented for the first time in the Appeal Brief, not the Reply
Brief.
In the alternative, even if we do consider the argument, it is without
merit. The argument does not address or rebut the Examiner’s rationale with
regard to the meeting of the claim feature concerning the lens’ reactive
force, i.e., because all the structural features as claimed as well as the
additional disclosed feature of the haptic spread to optic diameter ratio being
less than 1.5 and 1.3 are met by Nigam, Nigam’s lens inherently possesses
the same reactive force property recited by the Applicants. The Examiner
has articulated a reasonable basis of inherency based on structural identity.
When the issue is inherent disclosure and when a prima facie case of
inherency has been established, as here, the Applicants’ simply saying that
the reference does not teach the feature is unpersuasive. The Applicants
have submitted no testimony from any technical witness to establish that
Nigam’s disclosed lens could not have a reactive force that is less that 0.5
mN when the intraocular lens is compressed 1 millimeter. Also, it is not
Appeal 2007-1199
Application 10/124,648

8
apparent and it has not been articulated by the Applicants what structural
feature disclosed in their Specification as necessary to achieve the lower
reactive force is not embodied in Nigam’s lens. According to the
Specification, although it is not claimed, the ratio of haptic spread to optic
diameter should be less than 1.5 and 1.3. The Examiner determined that
Nigam’s lens exhibits such a ratio and that determination has not been
specifically challenged by the Applicants. When a prima facie case of
anticipation has been established based on inherency, the burden shifts to the
Applicants to prove that the subject matter in the prior art does not possess
the characteristics relied on. In re King, 801 F.2d at 1327, 231 USPQ at
138.
As for the merits of the dependent claims, it is noted that the
Applicants represent that the dependent claims are not separately patentable.
Conclusion
The rejection of claims 1-15 under 35 U.S.C. § 102(b) as anticipated
by Nigam is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR 1.136(a).
AFFIRMED

LP

Appeal 2007-1199
Application 10/124,648

9
ALCON
IP LEGAL, TB4-8
6201 SOUTH FREEWAY
FORT WORTH TX 76134