Ex Parte CAMRAS et al

Patent Trial and Appeal Board

Jul 31, 2018

14473228 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/473,228 08/29/2014 LUCINDA J. CAMRAS
20306 7590 07/31/2018
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
32NDFLOOR
CHICAGO, IL 60606
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.
(2820) 18-458 4963
EXAMINER
DEAK, LESLIE R
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
07/31/2018 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 LUCINDA J. CAMRAS, RAND ALLINGHAM,
BRUCE KLITZMAN, and SANJA Y ASRANI
Appeal 2017-010113
Application 14/473,228
Technology Center 3700
Before BRETT C. MARTIN, JEREMY M. PLENZLER, and
ANTHONY KNIGHT, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-010113
Application 14/473,228
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-3, 5-7, 9, 10, 14, 15, 18-25, 27, 28, and 30-34.
Claims 4, 8, 11-13, 16, 17, 26, and 29 were withdrawn from consideration.
See Claims App'x. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
THE INVENTION
Appellants' claims are directed "to an implantable device with a
replaceable resistive component." Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. An apparatus for draining aqueous humor from an eye for
reducing intraocular pressure, the eye having an anterior
chamber and including a cornea, a surrounding marginal limbus
by which the cornea is continuous with a scleral layer and a
conjunctiva! layer, and an exposed ocular surface of the eye and
under eyelids, the draining apparatus comprising:
a tube extending between an inlet end configured to be
disposed at the anterior chamber of the eyeball and an outlet end,
the tube defining a passage for fluid flow between the inlet end
and the outlet end; and
an outlet assembly having an inner surface and an outer
surface and configured to be disposed such that the inner surface
contacts the conjunctiva layer externally of the eyeball, the outlet
assembly comprising
a housing defining a cavity in fluid communication
with the outlet end of the tube and having an aperture
opening into the cavity for allowing egress of aqueous
humor onto the external ocular surface,
a resistive component disposed in the cavity of the
housing between the outlet end of the tube and the
aperture, the resistive component configured for providing
resistance to a flow of aqueous humor for controlling the
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Application 14/473,228
flow through the tube from the anterior chamber of the
eyeball to the external ocular surf ace, and
a pair of tabs projecting outwardly in opposite
directions from the housing, the tabs adapted to be
disposed subconjunctivally for securing the draining
apparatus relative to the eyeball.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Camras
Suson
Bene
Takashima
Camras
us 5,346,464
us 5,626,558
US 2005/0119737 Al
US 2006/0235367 Al
US 2010/0057055 Al
REJECTIONS
The Examiner made the following rejections:
Sept. 13, 1994
May 6, 1997
June 2, 2005
Oct. 19, 2006
Mar. 4, 2010
Claims 1-3, 5-7, 9, 10, 14, 15, 18, 22-24, and 30-34 stand rejected
under 35 U.S.C. § I03(a) as being unpatentable over Camras '464 and
Suson. Ans. 2.
Claims 1-3, 5-7, 9, 10, 14, 15, 18, 27, 28, and 30-34 stand rejected
under 35 U.S.C. § I03(a) as being unpatentable over Camras '055 and
Suson. Ans. 4.
Claims 19-21 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Camras '464, Suson and Takashima. Ans. 5.
Claim 25 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Camras '464, Suson, and Bene. Ans. 6.
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Application 14/473,228
ANALYSIS
Appellants' first argument is that "the Examiner's attempt for making
the purported combination is based on an illegitimate motivation, an invalid
premise and impermissible hindsight bias." Reply Br. 2 ( emphasis
removed), see also App. Br. 12. Appellants further state that because "each
of the configurations of Suson and Cam[]ras I [ Camras '464] sufficiently
provides for securing an implant, there would be no motivation for one of
ordinary skill in the art to consider any additional references for the purpose
of 'securing an implant at both proximal and distal ends, wherein the
securing device may comprise projections that extend away from the
implant."' Id. (emphasis removed). This misstates the Examiner's reason
for the combination. The Examiner merely notes that it is known to provide
tab-like securing mechanisms at both inlet and outlet ends and that such a
tab is a known substitution for sutures alone. Ans. 8. Appellants provide no
explanation as to why such tab-like anchoring on both ends would be
undesirable and essentially state that because the prior art does not teach
tabbed anchors at both ends, any combination of the prior art is invalid.
Such an argument would essentially nullify obviousness. Here, the
Examiner's substitution rationale is a reasonable basis with rational support
for the combination.
Appellants next argue that the Examiner's combination would not
result in the claimed invention because Suson's tabs extend from the tube
and not the housing. Reply Br. 2-3, see also App. Br. 13. The Examiner
states "that the tabs could be placed on either the tube or the outlet assembly
to secure the end of the proposed device." Ans. 9. In other words, when
modifying Camras '464 to include barbs, one of ordinary skill in the art
would understand that because Camras '464 teaches both a tube and a
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Application 14/473,228
housing at the distal end, the tabs of Suson could be placed adjacent the tube
or the housing.
Finally, regarding Suson, Appellants allege that the Examiner has
admitted that Suson is non-analogous art because it fails to include certain
other aspects of the claimed device. See Reply Br. 3, see also App. Br. 13.
Appellants attempt to define the invention entirely too narrowly for the
purposes of non-analagous art. All of the prior art at issue as well as the
claimed invention relate to ocular implants having proximal and distal ends
that need to somehow be anchored to the eye. Regardless of any specific
structure or functionality, the pertinent teachings of the art are how to anchor
such devices to an eye. As such, Appellants arguments do not persuade us
of error in the Examiner's combination of Camras '464 and Suson.
Nonetheless, Appellants' arguments do highlight an issue with the
Examiner's rejection. Despite the Examiner explicitly stating otherwise
(Ans. 7), Appellants insist that the Examiner's rejection proposes relocating
the Camras cross arms to the distal end of the implant (Reply Br. 2). The
Examiner states that "the references teach the desirability of using tabs to
secure an implant at the proximal and distal ends." Ans. 8. We note that
Suson's cross arms, i.e., tabs, are intended to be sutured to the surface of the
eye and not subconjunctivally. See Suson, Fig. 3. Because the Examiner is
not relocating Camras' tabs, which are subconjunctive, and is silent
regarding changing the manner of securing the tabs from that taught in
Suson, we must assume that the Examiner is also using Suson's external
securement of the tabs. The claims, however, require that the tabs be
"adapted to be disposed subconjunctivally." Accordingly, the Examiner's
combination does not result in subconjunctive tabs at the distal end as
claimed. As such, we reverse the Examiner's rejections.
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DECISION
For the above reasons, we REVERSE the Examiner's decision to
reject claims 1-3, 5-7, 9, 10, 14, 15, 18-25, 27, 28, and 30-34.
REVERSED
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