Ex Parte Davies et alDownload PDFPatent Trial and Appeal BoardSep 30, 201613321752 (P.T.A.B. Sep. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/321,752 01/05/2012 26753 7590 09/30/2016 Andrns Intellectual Property Law, LLP 100 EAST WISCONSIN A VENUE, SUITE 1100 MILWAUKEE, WI 53202 Nathaniel Davies 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. 0124-00150 3556 EXAMINER NGUYEN, VIX ART UNIT PAPER NUMBER 3731 MAILDATE DELIVERY MODE 09/30/2016 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 NATHANIEL DA VIES and DARIO VECCHI Appeal2014-009157 Application 13/321,752 Technology Center 3700 Before LINDA E. HORNER, ANNETTE R. REIMERS, and JEFFREY A. STEPHENS, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 Nathaniel Davies and Dario Vecchi (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner's decision to reject under 35 U.S.C. § 102(b) claims 1, 6, 7, and 15 as anticipated by Feingold (US 5,499,987, iss. Mar. 19, 1996). Claims 8 and 11-14 have been withdrawn from consideration. Claims 4, 5, 9, 10, and 16 have been cancelled. We have 1 The Examiner states, "[ c ]laims 2, 3 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims." Ans. 3. Claims 2 and 3 are not before us for review. See also Appeal Br. 5 ("Claims 2-3 are not being appealed."). Appeal2014-009157 Application 13/321,752 jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER The claimed subject matter "relates to an intraocular lens cartridge." Spec. 1 :4, Fig. 2. Claim 1, the sole independent claim on appeal, is representative of the claimed subject matter and recites: 1. A cartridge adapted to store and to fold a foldable[,] implantable medical device, the cartridge comprising: a. a first portion; and b. a second portion interengaged with the first portion; wherein the first and second portions are movable relative to one another from a storage configuration, in which interior surfaces of the first and second portions define a storage chamber for storing the medical device in an unfolded state, to an implanting configuration, in which the interior surfaces of the first and second portions together define a smooth-bored chamber for retaining the medical device in a folded state; wherein the first and second portions are interengaged by a hinge, pivotably moveable relative to one another about the hinge; and wherein the first and second portions each comprise an arcuate segment of the inner surface that, in the implanting configuration, respectively define opposite halves of the smooth- bored chamber; wherein the first portion comprises first and second spaced plates projecting from an upper side of the arcuate segment; and wherein the second portion comprises a third plate projecting centrally from an upper side of the arcuate segment; wherein the third plate of the second portion is disposed between the first and second plates of the first portion. 2 Appeal2014-009157 Application 13/321,752 ANALYSIS Independent claim 1 recites, in relevant part, "wherein the second portion [of the cartridge] comprises a third plate projecting centrally from an upper side of the arcuate segment; wherein the third plate of the second portion is disposed between the first and second plates of the first portion." Appeal Br. 10 (Claims App.). The Examiner finds that Feingold discloses a second portion 72 that "comprises a third plate 78 projecting centrally from an upper side of the arcuate segment; wherein the third plate of the second portion is disposed between the first and second plates of the first portion[.]" Final Act. 3; see also Ans. 2-3. Appellants contend that "the part 78 which the Examiner equates to the 'third plate' neither 'projects centrally from an upper side of the arcuate segment' nor 'is disposed between the first and second plates of the first portion'." Reply Br. 3 (emphasis omitted). According to Appellants, "part 78 [of Feingold] is actually one of the arcuate segments that, together with its opposite pair 74, defines the storage/smooth-bored chamber." Id. at 4 (emphasis omitted); see also Appeal Br. 6 ("This third plate is not the part 78 as referenced by the Examiner; rather, part 78 [of Feingold] is the arcuate segment of the second portion."). Feingold discloses that "[t]he movable portion 72 is defined by a tubular portion 78 and extension 80." Feingold, 8:49-50 (emphasis omitted), Figs. 16, 16A. Upon review of Feingold's disclosure, a skilled artisan would not consider tubular portion 78 of movable portion 72 of Feingold to constitute a "third plate" as claimed. See In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999) ("Although the PTO must give claims their broadest reasonable 3 Appeal2014-009157 Application 13/321,752 interpretation, this interpretation must be consistent with the one that those skilled in the art would reach."). We agree with Appellants that tubular portion 78 of Feingold "is the arcuate segment of the second portion." Appeal Br. 6; see also Reply Br. 4. Accordingly, for the foregoing reasons, we do not sustain the Examiner's rejection of claims 1, 6, 7, and 15 as anticipated by Feingold. DECISION We REVERSE the decision of the Examiner to reject claims 1, 6, 7, and 15 as anticipated by Feingold. REVERSED 4 Copy with citationCopy as parenthetical citation