Junzhong LiangDownload PDFPatent Trials and Appeals BoardMar 3, 202012935287 - (D) (P.T.A.B. Mar. 3, 2020) Copy Citation 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). 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