Junzhong Liang

Patent Trials and Appeals Board

Mar 3, 2020

12935287 - (D) (P.T.A.B. Mar. 3, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/935,287 09/29/2010 Junzhong Liang SIFIP002US 3193
67362 7590 03/03/2020
MLO
12707 High Bluff Drive, Suite 200
San Diego, CA 92130
EXAMINER
LOPEZ, LESLIE ANN
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
03/03/2020 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):
MLOPAIR@mlo-ip.com
eofficeaction@appcoll.com
heather@mlo-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUNZHONG LIANG
Appeal 2018-008431
Application 12/935,287
Technology Center 3700
Before ANNETTE R. REIMERS, JAMES A. WORTH, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–6, and 12–26. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as S.I.F.I. Medtech
S.r.l. Appeal Br. 3.
Appeal 2018-008431
Application 12/935,287
2
CLAIMED SUBJECT MATTER
Appellant’s invention is directed to refractive correction of human
eyes. Spec. 1:5–6. Claims 1, 12, and 25 are independent. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A corneal implant device for surgical implantation
between layers and in an optic zone of a cornea of an eye for
treatment of presbyopia, comprising:
a solid transparent optic having a diameter of equal or less
than 6 mm, wherein the device is configured with a central
optical section of diameter 1.5 mm to 4.0 mm such that, when
implanted in the eye, spherical aberration or a distribution of
spherical aberrations is created in a central area of a pupil,
wherein the central area of the pupil has a diameter of between
1.5 mm and 4.0 mm and has negligible spherical aberration
without the device;
wherein the device is configured to have a circular shape
with a radial distance expressed by r, and wherein the device is
further configured to have a thickness profile in the central
optical section that is expressed at least in part by r4 to allow
creation of the spherical aberration or the distribution of
spherical aberrations.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Grendahl
Christie
US 4,795,462
US 5,089,024

Jan. 3, 1989
Feb. 18, 1992

REJECTIONS
1) The Examiner rejected claims 1, 3–6, 12–16, 25, and 26 under 35
U.S.C. § 102(b) as anticipated by Christie.
Appeal 2018-008431
Application 12/935,287
3
2) The Examiner rejected claims 17–24 under 35 U.S.C. § 103(a) as
unpatentable over Christie and Grendahl.
OPINION
Anticipation by Christie
Appellant argues claims 1, 3–6, 12–16, 25, and 26 as a group. Appeal
Br. 6–11. Pursuant to 37 C.F.R. § 41.37 (c)(1)(iv), we select claim 1 as
representative and claims 3–6, 12–16, 25, and 26 stand or fall with claim 1.
The Examiner finds that Christie discloses all the limitations of claim
1 including that Christie’s lens is manufactured aspherically in order to
correct for spherical aberrations so that when implanted in the eye spherical
aberrations are created in the central area of the pupil. Final Act. 3–4.
Appellant contends that Christie’s lens does not “cause a spherical
aberration in the eye when the lens is implanted” but rather Christie’s lens
“eliminate[s] spherical aberration when applied to the eye.” Appeal Br. 7
(citing Christie 4:27–29). According to Appellant, “[t]he purpose of the lens
in Christie is, thus, the opposite of the function of the lens in claim 1.” Id.
Appellant further argues that “Christie’s lens is designed to introduce
spherical aberration at the pupil periphery” but “cannot introduce spherical
aberration in the central pupil of the eye because a natural eye’s pupil is free
from spherical aberration.” Id. at 8 (citing Christie 4:22–29).
The Examiner responds that Appellant’s Specification discloses that
lenses aspherically manufactured will introduce spherical aberrations. Ans.
3 (citing Spec. pp. 14–15). In addition, the Examiner responds that the
limitation in claim 1 that the device creates “spherical aberration . . . in a
central area of the pupil” is “a recitation of the intended use of the claimed
invention.” Id. at 2. Further, the Examiner asserts that because Christie’s
Appeal 2018-008431
Application 12/935,287
4
lens is “aspherical and therefore creates spherical aberrations” that “it will
inherently generate such changes in the path of the light . . . due to the shape
of the lens creating the spherical aberrations, thereby meeting the claimed
limitation argued by the Appellant.” Id. at 3–4. In the Reply Brief,
Appellant repeats substantially the same arguments from the Appeal Brief
and still relies only on Christie at column 4, lines 22–29 in support of its
argument. See, e.g., Reply Br. 3. For the following reasons, we sustain the
rejection of claim 1.
The Federal Circuit directs that “[i]t is well settled that the recitation
of a new intended use for an old product does not make a claim to that old
product patentable. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)
(citing In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)). Although a patent
applicant “is free to recite features of an apparatus either structurally or
functionally . . . choosing to define an element functionally, i.e., by what it
does, carries with it a risk.” Id. at 1478 (citing In re Swinehart, 439 F.2d
210, 212 (CCPA 1971). In addition, if
the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty . . .
may, in fact, be an inherent characteristic of the prior art, it
possesses the authority to require the applicant to prove that the
subject matter shown . . . in the prior art does not possess the
characteristic relied on.
Id. (quoting In re Swinehart, 439 F.2d at 213).
In this case, Appellant does not dispute the Examiner’s findings that
Christie discloses the structural aspects of claim 1. Compare Final Act. 3–4,
with Appeal Br. 6–11. Rather, Appellant’s argument is focused solely on the
functional limitation discussed above which the Examiner finds is an
inherent characteristic of Christie’s lens. The Examiner points to evidence
Appeal 2018-008431
Application 12/935,287
5
from the Specification and Christie sufficient to support the inherency
finding. Thus, pursuant to In re Schreiber, we analyze whether Appellant’s
evidence suffices to show that Christie’s lens does not inherently function as
claimed. Appellant’s arguments that Christie’s lens is designed to induce
spherical aberration in the periphery of the pupil only and cannot induce
spherical aberration in the central area of the pupil as required by claim 1 is
largely unsupported attorney argument. See Appeal Br. 7–8. The only
evidence cited in support of this argument is column 4 lines 22 to 29 of
Christie. That portion of Christie provides “[t]he cross-section of the lens
can, alternatively, be plano-convex . . . bi-convex . . . or concave convex”
and “the lens may be manufactured aspherically, in order to correct for
spherical or other aberrations.” Christie, 4:22–29. This portion of Christie
does not support Appellant’s attorney argument that the spherical aberrations
introduced by Christie’s lens are limited solely to the periphery of the pupil
or that Christie’s lens cannot introduce spherical aberrations to the central
area of the pupil. Consequently, we are not persuaded by Appellant’s
arguments and evidence and sustain the rejection of claim 1. Claims 3–6,
12–16, 25, and 26 fall with claim 1.
Obviousness over Christie and Grendahl
Appellant contends that the obviousness rejection of independent
claim 17, which recites a functional limitation substantially similar to the
limitation in claim 1 discussed above, is erroneous because “Grendahl does
not cure the deficiencies of Christie.” Appeal Br. 11. Because we are not
persuaded by Appellant’s arguments regarding Christie as discussed above,
we also sustain the rejection of claim 17 and claims 18–24 depending
therefrom.

Appeal 2018-008431
Application 12/935,287
6
CONCLUSION
The Examiner’s rejection is AFFIRMED.
More specifically,
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–6, 12–
16, 25, 26
102 Christie 1, 3–6, 12–
16, 25, 26

17–24 103 Christie, Grendahl 17–24
Overall
Outcome:
1, 3–6, 12–
26

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED