12854645 (P.T.A.B. Mar. 30, 2016)

Ex Parte Brown

Patent Trial and Appeal BoardMar 30, 2016

12854645 (P.T.A.B. Mar. 30, 2016)

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. 12/854,645 08/11/2010 David C. Brown 02.1003.27 8222 62763 7590 03/30/2016 Tod T. Tumey Tumey LLP P.O. BOX 22188 HOUSTON, TX 77227-2188 EXAMINER PREBILIC, PAUL B ART UNIT PAPER NUMBER 3774 MAIL DATE DELIVERY MODE 03/30/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte DAVID C. BROWN ________________ Appeal 2014-000192 Application 12/854,645 Technology Center 3700 ________________ Before LYNNE H. BROWNE, JILL D. HILL, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE David C. Brown (“Appellant”) appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claim 26. Claims 35 and 37 are allowed. Claims 1–20, 24, 25, 28–30, and 32–34 are withdrawn.1 Claims 21–23, 27, 31, and 36 are cancelled.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 See Non-Final Action dated Apr. 12, 2012. 2 See Amendments dated Aug. 2, 2012 and Nov. 20, 2012. Appeal 2014-000192 Application 12/854,645 2 CLAIMED SUBJECT MATTER Sole independent claim 26, reproduced below, is representative of the subject matter on appeal. 26. A device to be placed in an anterior capsule opening of an eye, the anterior capsule opening having a periphery, comprising: a ring and a membrane therewithin, the ring being adapted to form a sealing area between the ring and a surface of the anterior capsule, the sealing area configured for fluid communication with a conduit extending outside the capsule; and the ring having a flow channel, said flow channel having a port connected thereto whereby when the ring contacts the posterior surface of the anterior capsule of the eye, reduced pressure may be applied in the flow channel which pulls a portion of the anterior capsule into the flow channel thereby securing the membrane. THE REJECTION3 Claim 26 stands rejected under 35 U.S.C. § 102(b) as anticipated by Neilson (WO 03/022,191 A1; pub. Mar. 20, 2003). ANALYSIS The Examiner finds that Neilson teaches, inter alia, ring 12 having flow channel 18. Final Act. 4. The Examiner reasons that because suction ring 12 has the same structure and function as that claimed device, “it inherently is capable of pulling a portion of the anterior capsule into the flow channel if a strong enough vacuum [is] applied thereto.” Id. at 4. 3 The rejection of claim 26 on the ground of nonstatutory obviousness-type double patenting has been withdrawn. See Adv. Act. 1; Final Act. 3. Appeal 2014-000192 Application 12/854,645 3 Appellant argues that Neilson’s device “is not directed to a sealing membrane for an opening created in the anterior portion of the lens capsule nor can it be placed within the lens capsule,” as recited in claim 26. Appellant explains that Neilson’s “[s]uction ring 12 is positioned on the exterior surface of the lens capsule, not within the lens capsule,” and “[d]istal portion 11a of sleeve 11 remains external to the cornea 14.” Appeal Br. 6. Appellant submits that Neilson’s device is not inherently capable of pulling a portion of the anterior capsule into the flow channel to secure the membrane when the ring contacts the posterior surface of the anterior capsule and reduced pressure is applied, as required by claim 26, “as it includes tubular portions 11b and 17 which extend through the cornea and sealing ring 18 would have to be turned upside down.” Appeal Br. 7; see Reply Br. 2.4 The Examiner responds that “posterior and anterior orientations are not fixed by definition and any part of the eye could be called an anterior or posterior portion,” and further that “Neilson’s device could be reorientated such that it would suction the bottom [(or posterior)] surface of the capsular bag where the lens [has] been removed.” Ans. 6. We are persuaded by Appellant’s argument. Here, Appellant has met the burden of showing that the prior art structures do not possess the functionality required by claim 26 as an inherent characteristic. In particular, we do not agree with the Examiner that the claimed “posterior surface of the anterior capsule of the eye” may be interpreted as an anterior surface, and we agree with Appellant that the distal portion of the sleeve in Neilson prevents the ring from contacting a posterior surface of the anterior 4 Appellant’s Reply Brief omits page numbers; we refer to pages 1 and 2. Appeal 2014-000192 Application 12/854,645 4 capsule of the eye, as required by claim 26. Accordingly, we do not sustain the rejection of claim 26 as anticipated by Neilson. DECISION We REVERSE the Examiner’s rejection of claim 26. REVERSED