Ex Parte Cumming

Patent Trial and Appeal Board

Jun 21, 2018

15082960 (P.T.A.B. Jun. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/082,960 03/28/2016 James Stuart Cumming
30764 7590 06/25/2018
SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
12275 EL CAMINO REAL, SUITE 200
SAN DIEGO, CA 92130
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.
50DT-229850 1446
EXAMINER
MATTHEWS, WILLIAM H
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
06/25/2018 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):
DOCKETING@SHEPPARDMULLIN.COM
SheppardMullin_Pair@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES STUART CUMMING
Appeal2017-006135
Application 15/082,960
Technology Center 3700
Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and
RYAN H. FLAX, Administrative Patent Judges.
MILLS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for anticipation and obviousness-type double patenting. We have
jurisdiction under 35 U.S.C. § 6(b ).
We Affirm.
Appeal2017-006135
Application 15/082,960
STATEMENT OF CASE
The following claim is selected as representative of all appealed
claims.
1. An intraocular lens configured for implantation in the capsular
bag of an eye of a patient comprising:
a lens optic coupled to at least one haptic; and
a torsion bar contiguous with and positioned between the lens
optic and the at least one haptic such that it can rotate to position the
optic in a posterior location along the axis of the eye.
Cited References
Cumming '866
Cumming '544
Cumming '545
Cumming ' 10 1
Grounds of Rejection
Pub. No. 2009/0005866 Al
Pat. No. 9,295,544 B2
Pat. No. 9,295,545 B2
Pat. No. 9,358,101 B2
Jan. 1, 2009
Mar. 29, 2016
Mar. 29, 2016
Jun. 7,2016
1. Claims 1-10 are rejected under pre-AIA 35 U.S.C. 102(b) as
anticipated by Cumming '866.
2. Claims 1-10 are rejected on the ground of nonstatutory double
patenting as being unpatentable over claims 1-9 of Cumming '544.
3. Claims 1-10 are rejected on the ground of nonstatutory double
patenting as being unpatentable over claims 1-20 of Cumming
'545.
4. Claims 1-10 are rejected on the ground of nonstatutory double
patenting as being unpatentable over claims 1-11 of Cumming
'101.
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Application 15/082,960
FINDINGS OF FACT
The Examiner's findings of fact are set forth in the Answer at pages
2-8. The following facts are highlighted.
1. Figures 1 and 2 of the Specification are reproduced below.
Figure 1 shows a top plan view of an IOL (intraocular lens)
according to at least one embodiment of the Specification with
transversely directed connecting portions/torsion bars 364
connecting the optic to the haptics 300. Spec. i-fi-131, 32. Figure 2
illustrates a portion of an IOL according to another embodiment
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Application 15/082,960
with generally longitudinally directed torsion bars connecting the
optic to the haptics. Spec. i-fi-131, 32.
2. The Specification discloses that, in an alternate embodiment, "each
haptic 300 can be connected to the optic 200 by a single
connecting portion 364." Spec. i1 46.
3. According to the Specification, "The connecting portions 3 64
couple the optic 200 to the haptic 300. Likewise, in various
embodiments, the connecting portions 364 may not include a hinge
feature, for example, between the optic 200 or appendage 362 and
the haptic 300 about which portions of the connecting portion bend
like a hinge." Spec. i1 48, italicized emphasis added.
4. According to the Specification, a "frame 330 may be embedded
within the haptic 300. The frame 330 may be formed of polyimide,
prolene, polymethylmethanylate (PMMA), titanium, or similar
material." Spec. i1 41 (italicized emphasis added).
5. Figure 1 of Cumming '866 is reproduced below.
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Application 15/082,960
F I.G 1
Figure 1 shows an IOL 1 having flexible extending
portions/haptics 4, optic 2, hinges 10. Cumming '866 i-f 22.
6. Figures 4, 5, and 6 of Cumming '866 are reproduced below.
Figures 4, 5, and 6 show alternative forms of the haptics of
Cumming '866. The haptics can be with or without hinges 10 on
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Application 15/082,960
either or both haptics. Hinges 10 are illustrated on the upper
haptics in FIGS. 4, 5 and 6. Cumming '866 i-f 30.
7. Cumming '866 discloses that
Hinges 10 are provided between the haptics 4 and the outer
periphery of the optic 2, and it is particularly desirable to have a
wide elastic base 12 to the hinge to allow the optic 2 to move
forward more by stretching of the thin and wide hinge base in
the longitudinal axis of the lens with the increase in vitreous
cavity pressure. The wide hinge base in the longitudinal axis of
the lens allows more anterior movement ...
Cumming '866 i-f 24.
8. Cumming '866 discloses that, preferably "the optic and plate
haptics are silicone and the loops 6 are polyimide." Cumming '866
i-f 26, italicized emphasis added.
PRINCIPLES OF LAW
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F .2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
In order for a prior art reference to serve as an anticipatory reference,
it must disclose every limitation of the claimed invention, either explicitly or
inherently. See In re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997).
We give claims on appeal their broadest reasonable interpretation.
Cuozzo Speed Technolgies, LLC v. Lee, 136 S. Ct. 2131, 2144 (June 20,
2016); In re American Academy of Science Tech Center, 367 F.3d 1359,
1364 (Fed. Cir. 2004).
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Appeal2017-006135
Application 15/082,960
Anticipation Rejection
The Examiner finds that Cumming '866 teaches each element
claimed. In particular, the Examiner finds that
Cumming discloses an accommodating IOL comprising optic 2,
haptics 4/6/8, and deformable torsion bar 10 defined by an elongate
slot traversing the haptic and of dimensions recited in claims 2-5. See
figures and paragraphs [0006]-[0015], [0021 ]-[0032]. Cumming
describes the posterior/central movement of haptics and
stretching/deformation of torsion bars in response to vitreous pressure
changes to provide anterior and posterior movement of an optic as
desired (para [0006]-[0014]).
Ans. 2.
Appellant contends that, "[t]he Cumming reference has no torsion bar.
The Examiner states that the hinge 10 of Cumming is a 'deformable torsion
bar' which is 'defined by an elongate slot' in his rejection of claims 1, 2 and
5-6, but there is no slot recited in claims 1-3 and it is a serious
misdescription of a hinge to characterize it as a 'torsion bar'." App. Br. 5.
The issue is whether Cumming '866 teaches an intraocular lens
having a torsion bar, as claimed.
ANALYSIS
We agree with the Examiner's fact finding, statement of the rejection
and responses to Appellant's arguments as set forth in the Answer. We find
that the Examiner has provided evidence to support a prima facie case of
obviousness. We provide the following additional comment to the
Examiner's argument set forth in the Final Rejection and Answer.
Appellant argues that Cumming '866 lacks a "torsion bar" because the
ordinary language-meaning of a "torsion bar" is a bar that can be twisted and
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Application 15/082,960
Appellant's specification demonstrates a contrast between the claims and the
disclosure of Cumming '866. App. Br. 5.
The Examiner disagrees
because the claims merely recite the torsion bar is a structure
positioned between the optic and haptic such that it can rotate.
Furthermore, paragraph [0043] [of the Specification] defines a torsion
bar (or connecting member 364) broadly as being "capable of
stretching, bending, and/or potentially rotating" as well as "may twist
or rotate". The specification at paragraphs [0055-0060] further
broaden the meaning or scope of terms and phrases by stating
equivalents and "all possible meanings supported by the specification
and by the word" are included. Therefore the structure required by
the claims is not a structure that necessarily twists. Examiner asserts
the claims require a structure that is flexible in nature to be capable of
rotating, and the term "torsion bar" is nominally recited without
sufficient functional or structural limitations to require a twisting
under a particular set of conditions.
In Cumming, the thin structure 10 shown in Figure 3 is
described as elastic, flexible and capable of stretching and bending to
enhance anterior and posterior movement of the optic during ciliary
muscle contraction. Structure 10 is also formed of the same materials
(e.g. silicone) and within the range of dimensions disclosed by
Appellant's specification, and would thus be capable of stretching,
deforming, and rotating due to its elastic rubber band properties
(Cumming paragraph [0024],[0031].
Ans. 3--4.
We find that the Examiner has the better argument. Cumming '866
includes flexible extending portions 4 having hinges 10. FF 1, 2. The
hinges of Cumming '866 are capable of stretching or bending, consistent
with the definition of "torsion bar" in the Specification. FF 3. Both the
haptics of Appellant's Specification and Cumming '866 can be made of the
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Application 15/082,960
same material, polyimide, having the same stretching and bending
characteristics and, so, can satisfy the torsion bar as claimed. FF 4, 8.
Appellant has not rebutted the Examiner's prima facie case of anticipation
by a preponderance of the evidence. The anticipation rejection is affirmed.
Obviousness-type Double Patenting Rejections
Appellant does not argue the obviousness-type double patenting
rejections on the merits in the Brief or Reply Brief. Arguments not made are
waived. The obviousness-type double patenting rejections are summarily
affirmed.
CONCLUSION OF LAW
The cited references respectively support the Examiner's anticipation
and double patenting rejections, which are affirmed for the reasons of
record. All pending, rejected claims were argued and fall with claim 1.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 )(iv )(2015).
AFFIRMED
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