Ex Parte Coleman

Patent Trials and Appeals Board

Apr 29, 2019

13363863 - (D) (P.T.A.B. Apr. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/363,863 02/01/2012 D. Jackson Coleman
44564 7590 05/01/2019
Bond, Shoeneck & King, PLLC
One Lincoln Center
Syracuse, NY 13202
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.
606Pll5 CIP 8824
EXAMINER
TEMPLETON, CHRISTOPHER L
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
05/01/2019 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):
bskpto@bsk.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte D. JACKSON COLEMAN
Appeal2018-008717
Application 13/363,863
Technology Center 3700
Before PHILLIP J. KAUFFMAN, JEREMY M. PLENZLER, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's Decision rejecting claims 1, 2, 10, 13, 14, 16-18, 21, 22, 27, and
28. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2018-008717
Application 13/363,863
CLAIMED SUBJECT MATTER
Claim 1 is independent, with claims 2, 10, 13, 14, 16-18, 21, 22, 27,
and 28 depending ultimately from claim 1. Claim 1 is reproduced below:
1. A movement, flexibility, and removal enhancing device
for use with an in-vivo, accommodating, intra-ocular lens (IOL),
compnsmg:
a retainer plate comprising an anterior surface and an
opposing posterior surface, characterized by a flexibility
sufficient to enable its insertion and removal from a capsular bag
of an aphakic eye, having a form of an open annulus having an
interior diameter between about 4 mm to about 6 mm defined by
an inner edge surface of the anterior surface and the opposing
posterior surface and an external diameter between about 10 mm
to about 15 mm defined by an outer edge surface of the anterior
surface and the opposing posterior surface, wherein the internal
diameter is sized sufficient to act as an aperture stop for an in-
vivo, accommodating IOL that may be used in conjunction with
the enhancing device and further wherein the external diameter
is sufficient to engage a sulcus of the aphakic capsular bag,
further wherein the retainer plate has a surface area sufficient to
utilize an entire vitreo-zonular diaphragm so as to receive a
uniform pressure exerted by a vitreous body on the aphakic
capsular bag so as to support and enhance an axial movement of
the in-vivo, accommodating IOL that may be used in conjunction
with the enhancing device.
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Appeal2018-008717
Application 13/363,863
REJECTIONS
1. Claims 1, 2, 10, 13, 16, 17, and 27 are rejected under 35 U.S.C.
§ 102(e) as being anticipated by Zhang (US 2010/0030331 Al, published
Feb. 4, 2010).
2. Claim 14 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zhang.
3. Claims 18, 21, 22, and 28 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Zhang and Snyder (US 2003/01494 79 A 1,
published Aug. 7, 2003).
OPINION
Appellant argues claims 1, 2, 10, 13, 16, 17, and 27 together. Br. 7-9.
Claims 2, 10, 13, 16, 17, and 27 stand or fall with independent claim 1. See
37 C.F.R. § 41.37(c)(l)(iv). Appellant argues the rejections of the
remaining claims solely on the basis that the Examiner has not overcome
deficiencies in the teachings of Zhang, as applied to claim 1. Br. 9.
Zhang describes intraocular lens ("IOL") system 10 including base
component 12 and optical component 14. Zhang ,i 29, Fig. 9. The Examiner
finds that base component 12 satisfies the limitations of independent
claim 1. See Final Act. 3-4 (referring to ,i 29 of Zhang, which describes the
base component 12). Appellant argues that Zhang fails to describe a
"movement, flexibility, and removal enhancement device for use with an in-
vivo, accommodating, intra-ocular lens," as recited in the preamble of claim
1. More specifically, Appellant points out that Zhang fails to describe the
optical component 14 as an accommodating lens, that is, a lens capable of
adjusting its focal characteristics in response to the action of muscle tissue in
the eye. Br. 8; see also Spec. ,i,i 7, 9 (discussing accommodation).
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Appeal2018-008717
Application 13/363,863
Appellant contends that the Examiner has not proven that Zhang's base
component 12 is a "movement, flexibility, and removal enhancement device
for use with an in-vivo, accommodating, intra-ocular lens," as recited in the
preamble of claim 1, because Zhang fails to describe how the base
component might be used with an accommodating IOL. Br. 8-9.
The contention is not persuasive. The Examiner correctly
characterizes the preamble of claim 1 as a statement of intended use or
purpose rather than a positive limitation on the claimed subject matter.
Ans. 2. That is because the body of the claim, which is delineated by
separate indentation, fully and intrinsically sets forth the complete enhancing
device which is the subject of claim 1, including all of the claim's
limitations. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298,
1305 (Fed. Cir. 1999). In particular, the body of claim 1 defines the
movement enhancing ("further wherein the retainer plate has a surface area
sufficient to utilize an entire vitreo-zonular diaphragm so as to receive a
uniform pressure exerted by a vitreous body on the aphakic capsular bag so
as to support and enhance an axial movement of the in-vivo") and the
flexibility and removal enhancing ("characterized by a flexibility sufficient
to enable its insertion and removal from a capsular bag of the aphakic eye")
properties of the claimed enhancing device. Although the body of claim 1
does refer twice to an accommodating IOL, both references identify the IOL
as an "in-vivo, accommodating IOL that may be used in conjunction with the
enhancing device." (Emphasis added.) Considering the claim as a whole,
the preamble, including the recitation "for use with an in-vivo,
accommodating, intra-ocular lens," is not a positive limitation on the claim.
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Appeal2018-008717
Application 13/363,863
On page 8 of the Appeal Brief, Appellant contends that Zhang's base
component 12 fails to meet one of the limitations in the body of claim 1,
namely:
wherein the retainer plate has a surface area sufficient to utilize
an entire vitreo-zonular diaphragm so as to receive a uniform
pressure exerted by a vitreous body on the aphakic capsular bag
so as to support and enhance an axial movement of the in-vivo,
accommodating IOL that may be used in conjunction with the
enhancing device.
Zhang's base component 12, like the enhancing device depicted in Figures 8
and 9 of the underlying application, is ring-shaped with a round cross-
section. Furthermore, the Examiner correctly finds that the range of outer
diameters described by Zhang overlaps the range of outer diameters recited
in the claim. Final Act. 3; see also Zhang ,i 29 (approximately 8.0 mm to
12.0 mm). The Examiner correctly finds that "the bottom surface is uniform
throughout its circumference." Final Act. 4 (emphasis omitted). On this
basis, the Examiner reasonably infers that Zhang's base component 12 meets
the claim limitation. Id. Appellant does not address this inference, or the
findings underlying the inference, in detail, in the Appeal Brief. 1
Therefore, Appellant has not shown error in the Examiner's finding
that Zhang's base component 12 satisfies each and every limitation in the
body of claim 1. On this basis, the Examiner correctly finds that Zhang
anticipates claim 1 as a whole. We sustain the rejection of claims 1, 2, 10,
13, 16, 17, and 27 under 35 U.S.C. § 102(e) as anticipated by Zhang.
Because Appellant contested the rejections of the remaining claims solely on
the basis of their dependency from independent claim 1, we also sustain the
1 Appellant did not file a Reply Brief.
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Appeal2018-008717
Application 13/363,863
rejection of claim 14 under 35 U.S.C. § 103(a) over Zhang; and the rejection
of claims 18, 21, 22, and 28 under 35 U.S.C. § 103(a) over Zhang and
Snyder.
DECISION
We AFFIRM the Examiner's decision to reject claims 1, 2, 10, 13, 16,
17, and 27 as anticipated under 35 U.S.C. § 102(e); and to reject claims 14,
18, 21, 22, and 28 as unpatentable under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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