Ex Parte Dotan et al

Patent Trial and Appeal Board

May 20, 2016

12939860 (P.T.A.B. May. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/939,860 11/04/2010
26211 7590 05/24/2016
FISH & RICHARDSON P,C (NY)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
FIRST NAMED INVENTOR
Gideon Dotan
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.
28102-0008002 6277
EXAMINER
PREBILIC, PAUL B
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
05/24/2016 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):
P ATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GIDEON DOT AN, YOSSI GROSS, and ELI AHARONI
Appeal2014-004784
Application 12/939,860
Technology Center 3700
Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA,
Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Gideon Dotan et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner's Final decision rejecting claims 28-39. 1 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellants' invention "relates to ocular implants generally and more
particularly to intraocular implants." Spec. i-f 3.
1 Claims 1-27 have been cancelled. Br. 2 (filed on December 2, 2013).
Appeal2014-004784
Application 12/939,860
Claim 28, the sole independent claim on appeal, is representative of
the claimed invention and reads as follows:
28. An intraocular implant comprising:
at least one first implantable mirror arranged for
receiving light from a scene;
at least one second implantable mirror receiving light
from said at least one first implantable mirror and arranged for
directing said light to a retina; and
at least one implantable light restrictor, separate from
said at least one first and said at least one second implantable
mirrors, arranged for preventing light received from a scene
from reaching said retina other than via said at least one first
and said at least one second implantable mirrors.
REFERENCES RELIED ON BY THE EXAMINER
Ting
Do tan
Murakami
Portnoy
us 5,044,743
US 6,569,199 Bl
US 7,276,080 B2
EPO 0 242 043 Al
REJECTIONS ON i\.PPEi\L
Sept. 3, 1991
May 27, 2003
Oct. 2, 2007
Oct. 21, 1987
I. Claims 28-33, 35, 38, and 39 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Portnoy and Dotan or Ting.
II. Claims 34, 36, and 37 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Portnoy, Dotan or Ting, and Murakami.
III. Claims 28-39 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Murakami and Dotan or Ting.
ANALYSIS
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Appeal2014-004784
Application 12/939,860
Claims 28-36
Rejections I-III
The Examiner finds that Portnoy discloses most of the limitations of
claim 28 including a first implantable mirror 20 and a second implantable
mirror, namely, the posterior facing surface of reflector 22. Final Act. 3.
The Examiner also finds that "the anterior surface of the posterior facing
reflector (22) acts as implantable light restrictor," because this surface
includes "a layer consisting of metals of platinum, silver, or aluminum." Id.
(citing Portnoy, col. 2, 11. 28-55; Figs. la, lb). Similarly, the Examiner
finds that Murakami discloses most of the limitations of claim 28 including a
first implantable mirror 4 and a second implantable mirror 5. Id. at 6. The
Examiner also finds that "the anterior surface of the reflecting part ( 5) acts
as implantable light restrictor," because this surface "is a layer that reflects
light." Id. (citing Murakami, col. 3, 11. 1--46; Figs. 1-3). Because neither
Portnoy's anterior surface nor Murakami's anterior surface is separate from
the first or second implantable mirrors, the Examiner relies on either Dotan
or Ting as teaching that "it was known to the art to make portions of lens
systems to restrict light passage in order to improve the characteristics of the
vision correction made." Id. at 3, 6 (citing Dotan, col. 1, 11. 48-61 and col.
3, 11. 12-25, and Ting, abstract and claim 17). Based on these teachings, the
Examiner concludes:
it would have been considered prima facie obvious to an
ordinary artisan to make separate light restricting elements in
the [Portnoy (Murakami)] lens system for the same reasons that
Dotan et al[.] or Ting does []or for the reason that it would have
been a mere combination of known elements to yield a
predictable result.
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Appeal2014-004784
Application 12/939,860
Id. at 3, 4, and 6 (citing MPEP 2143).
Appellants argue Rejections I-III together. Br. 5. Appellants assert
that "Dotan or Ting shows that it was known to restrict light from a scene
from reaching a retina via a lens system," but that "[ n ]either Dotan nor Ting
show or suggest utilizing a light restrictor in conjunction with an
implantable mirror." Br. 6. Appellants thus argue that because none of
references "shows or suggests an intraocular implant including at least one
light restrictor that is arranged to prevent light received from a scene from
reaching the retina other than via the at least one first and the at least one
second implantable mirrors," the references do "not show or suggest the
intraocular implant of the present invention as recited in claim 28." Id.
In the Answer, the Examiner states that Dotan and Ting were not used
to show a light restrictor with implantable mirrors, "but rather, to show that
it was known to utilize light restrictors in similar implantable lens systems
within that implantable lens art." Ans. 6. In view of this, the Examiner
characterizes Appellants' arguments as using "a piecemeal analysis of the
references by arguing the references individually instead of the combination
of teachings as they are set forth in the rejection," and states that it is
improper to attack "references individually where the rejections are based on
combinations of references." Id. (citing, In re Keller, 642 F.2d 413, 208
USPQ 871(CCPA1981); In re Merck & Co., 800 F.2d 1091, 231
USPQ 375 (Fed. Cir. 1986)).
We are not persuaded by Appellants' arguments. The Examiner's
proposed combination does not rely on Dotan or Ting for the implantable
mirrors. Ans. 6. Instead, the proposed combination relies on Dotan or Ting
for a separate light restrictor. The use of the light restrictors disclosed by
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Appeal2014-004784
Application 12/939,860
Dotan or Ting and Portnoy or Murakami (see Final Act. 3, 6) in a system
with lenses (or a system with mirrors) does not change the basic nature of
the devices, namely, to restrict light passage outside a defined optical path,
but to allow light along that optical path, nor do Appellants persuasively
argue this point. See Dotan, col. 1, 11. 50-54; see also Ting, Abstract. Each
of Dotan, Ting, Portnoy, and Murakami relates to a telescopic system
inserted into the human eye for purposes of improving vision (see
Abstracts), and the Examiner has set forth an adequate rationale for
providing a light restrictor separate from the first and second implantable
mirrors (Final Act. 3--4 ). We agree with the Examiner that one cannot show
nonobviousness "by attacking references individually" where the rejections
are based on combinations of references. See Ans. 6. Thus, we do not agree
that the decision by the Examiner to reject claim 28 is in error. Appellants
do not make separate arguments for any of dependent claims 29-36. See Br.
7.
Claims 37-39
Claims 37, 38, and 39 each recite, inter alia, the following limitation:
"at least one of said at least one first mirror or said at least one second mirror
has non-zero optical power."
Appellants argue that "[ n ]one of the prior art cited by the Examiner
shows or suggests an intraocular implant including, inter alia, at least one of
at least one first mirror or said at least one second mirror having non-zero
optical power as recited in each of claims 37-39." Br. 8.
We cannot agree that none of the references have a mirror having non-
zero optical power. Both Portnoy and Murakami relate to intraocular lenses
that form reflecting telescopic systems for magnifying an image. See
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Appeal2014-004784
Application 12/939,860
Portnoy, Abstract, and Murakami, Abstract; see also Final Act. 3 (citing
Portnoy, col. 2, 11. 28-55; Figs. la, lb) and id. at 6 (citing Murakami, col. 3,
11. 1--46; Figs. 1-3). Appellants do not explain persuasively how the curved
mirrors of these telescopic systems would not have a non-zero optical
power, particularly in view of the magnifying function for which they were
designed. For these reasons, we sustain the Examiner's rejection of claims
37-39 as unpatentable over Portnoy, Murakami, Dotan, and Ting.
DECISION
The decision of the Examiner to reject claims 28-33, 35, 38, and 39 as
unpatentable over Portnoy and Dotan or Ting is affirmed.
The decision of the Examiner to reject claims 34, 36, and 37 as
unpatentable over Portnoy, Dotan or Ting, and Murakami is affirmed.
The decision of the Examiner to reject claims 28-39 as unpatentable
over Murakami and Dotan or Ting is affirmed.
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).
AFFIRMED
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