Ex Parte Pham et al

Board of Patent Appeals and Interferences

Oct 14, 2009

10386839 (B.P.A.I. Oct. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte HAI-MINH PHAM and TUAN ANH NGUYEN
__________

Appeal 2009-005134
Application 10/386,839
Technology Center 3700
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Decided: October 14, 2009
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Before DEMETRA J. MILLS, RICHARD M. LEBOVITZ, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
intraocular lens. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
Appeal 2009-005134
Application 10/386,839

Statement of the Case
Background
“A common and desirable method of treating a cataract eye is to
remove the clouded, natural lens and replace it with an artificial IOL
[intraocular lens] in a surgical procedure known as cataract extraction”
(Spec. 1, ll. 12-14). The Specification teaches that “[o]ne known problem
with extracapsular cataract extraction is posterior capsule opacification
[PCO], or secondary cataract, where proliferation and migration of lens
epithelial cells occur along the posterior capsule behind the IOL posterior
surface which creates an opacification of the capsule along the optical axis”
(Spec. 1, ll. 27-30). According to the Specification, “[w]hile IOLs having a
sharp posterior edge have proven to inhibit PCO compared to IOLs having
rounded edges at the posterior surface-peripheral edge juncture, there still
remains the possibility of LECs migrating along the posterior capsule and
behind the IOL surface” (Spec. 3, ll. 23-26)
The Claims
Claims 1-8, 10-14, and 17 are on appeal. We will focus on claims 1
and 17, which are representative and read as follows:
1. An intraocular lens for implanting in a human eye,
comprising:
(a) a lens optic having: (1) opposite anterior and
posterior optical surfaces, and a posterior optic periphery
disposed outside of the posterior optical surface; and (2) an
optical axis extending through said anterior optical surface
and through said posterior optical surface; and
(b) at least first and second edges formed in a region
of said optic periphery wherein, said second edge is located
radially outwardly of said first edge, said first edge being
sharp and being defined by a first intersection of said
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posterior optical surface and a first peripheral wall, the first
peripheral wall extends in a first direction about an entirety
of the optic periphery and from said first intersection toward
said anterior surface, the posterior optical surface extending
radially inward of the first intersection, and said second edge
is defined by a second intersection of a second peripheral
wall and a third peripheral wall.

17. The intraocular lens of claim 1, wherein said first
peripheral wall lies parallel to said optical axis.

The prior art
The Examiner relies on the following prior art reference to show
unpatentability:
Paul US 6,468,306 B1 Oct. 22, 2002

The issues
A. The Examiner rejected claims 1-8, 10-14, and 17 under 35 U.S.C. §
102(e) as being anticipated by Paul (Ans. 4-5).
B. The Examiner rejected claim 17 under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement
(Ans. 3-4).
A. 35 U.S.C. § 102(e) over Paul
The Examiner finds that “Paul discloses an anterior surface PF, a
posterior surface AF, a thickest portion located between the AF and PF, a
posterior optic periphery 254, and a plurality of sharp curved edges 242.”
(Ans. 4.) The Examiner finds that the first edge of Paul “includes an
intersection between a posterior surface 246 and a peripheral wall 248,
which is parallel to the optical axis” (Ans. 4). The Examiner finds that the
“second edge of Paul includes an intersection between a second peripheral
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wall, which is parallel to the posterior surface and a third peripheral wall,
which is substantially parallel to the optical axis” (Ans. 4).
Appellants contend that “the Examiner has identified an anterior
surface as surface PF of Paul, and a posterior surface as surface AF of Paul.
Such a designation of an anterior surface and a posterior surface is contrary
to the disclosure of Paul” (App. Br. 7). Appellants contend that “[i]f,
contrary to Paul's designation, the posterior surface is taken as surface AF as
the Examiner has suggested . . . . [and] light were to enter surface PF, it
would not be diffused by rounded surface 252 when the light passes through
the lens” (App. Br. 8). Appellants further contend that for “light entering
surface PF, would not be diffused in the manner suggested by Paul. And . . .
the angle of surface would not prevent light from striking edge surface 242;
to the contrary, the angle would expose surface 242 to light entering surface
PF” (App. Br. 8).
In view of these conflicting positions, we frame the anticipation issue
before us as follows:
Have Appellants demonstrated that the Examiner erred in finding that
Paul teaches “at least first and second edges formed in a region” of “a
posterior optic periphery” as required by claim 1?
Findings of Fact (FF)
1. The Specification teaches that a “presently popular and
effective method of preventing PCO is to create a sharp, discontinuous bend
in the posterior capsule wall 16a” (Spec. 6, ll. 17-19).

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2. The Specification teaches that “IOL 32 is seen to include a
central optic portion 34 having opposite anterior and posterior surfaces 34a
and 34b, respectively. When implanted within the eye, anterior optic surface
34a faces the cornea 18 and posterior optic surface 34b faces the retina 20”
(Spec. 6, ll. 21-24).
3. Figure 4b of the Specification is reproduced below:

“Figure 4b is a cross-sectional view of the inventive IOL” (Spec. 4, l. 27).
4. The Specification teaches that “[a]n IOL includes a central
optic portion 24a which simulates the extracted natural lens by directing and
focusing light upon the retina” (Spec. 5, ll. 26-28).
5. Paul teaches that “the terms anterior and posterior are used in
their conventional sense; anterior refers to the front side of the eye, while
posterior refers to the rear side. A number of surfaces of the intraocular lens
. . . are denoted either ‘anteriorly-facing’ or ‘posteriorly-facing’ to indicate
their orientation with respect to the optical axis of the lens” (Paul, col. 6, ll.
20-26).
6. Paul teaches that “FIG. 18 illustrates the peripheral edge of an
optic 240 having a saw-tooth or baffled edge surface 242. The edge surface
242 is generally aligned to face the anterior side of the optic 240 and
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includes multiple tooth facets or surfaces 244a and 244b defining peaks 246
and troughs 248” (Paul, col. 13, ll. 7-11).
7. Figure 18 of Paul is reproduced below:

“FIG. 18 is an elevational view of a peripheral edge region of an IOL . . .
having a baffle structure disposed along an anteriorly-facing surface” (Paul,
col. 5, ll. 27-29).
Principles of Law
“A rejection for anticipation under section 102 requires that each and
every limitation of the claimed invention be disclosed in a single prior art
reference.” In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994); see
Karsten Manufacturing Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383
(Fed. Cir. 2001) (“Invalidity on the ground of ‘anticipation’ requires lack of
novelty of the invention as claimed. … that is, all of the elements and
limitations of the claim must be shown in a single prior reference, arranged
as in the claim.”).

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Analysis
We begin by interpreting the claims. Claim 1 requires an intraocular
lens with “at least first and second edges formed in a region of said optic
periphery” where the antecedent basis for the “said optic periphery” is “a
posterior optic periphery” (Claim 1). The use of the antecedent signal “said”
requires that the edges are formed in the posterior optic periphery of the lens
optic. This interpretation is confirmed by part (b) of the claim, which states
that the edge is “defined by a first intersection of said posterior optical
surface and a first peripheral wall” (Claim 1).
Appellants’ Specification clearly supports a distinction between the
anterior and posterior sides of the optic lens, noting that the “anterior optic
surface 34a faces the cornea 18 and posterior optic surface 34b faces the
retina 20” (Spec. 6, ll. 22-24; FF 2). This interpretation is also consistent
with the teachings of Paul, who notes that “the terms anterior and posterior
are used in their conventional sense; anterior refers to the front side of the
eye, while posterior refers to the rear side” (Paul, col. 6, ll. 20-22; FF 5).
Thus, the only reasonable interpretation of Claim 1, consistent with
both the Specification and the prior art Paul reference, is that there is a
distinction between the anterior and posterior optic surfaces of a lens and
that the claim requires the edges to be formed in the lens’s posterior optic
periphery (see FF 1-5).
Comparing the embodiment of Figure 18 of Paul (FF 7), relied upon
for the anticipation rejection, with claim 1 as it would be understood by the
skilled worker in the context of the Specification, it is clear that the formed
edges in Figure 18 of Paul are located on the anterior surface of the optic
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lens (FF 1-7). Figure 18 expressly identifies the side with the edges as
“AF”, which is an abbreviation meaning anterior face (FF 7).
Consequently, Paul does not anticipate the claimed invention, because
the edges are not formed on a posterior face, as required by claim 1.
We are not persuaded by the Examiner’s argument that “labeling a
surface as anterior and posterior has no effect on the structure and that the
terms are merely dependent upon the perspective of an individual” (Ans. 5).
While this argument is sometimes appropriate, in the instant case the
anterior and posterior faces serve different purposes which would not have
been considered by the ordinary skilled worker to be interchangeable, since
the anterior face is directed towards the cornea and the posterior face
towards the retina (FF 2). In order for the optical lens to function correctly,
the optical axis and orientation must be maintained or light entering the lens
will not be properly focused on the retina (FF 4). Therefore, in this
particular situation, the labeling of anterior and posterior has structural
effects on the optic lens, differentiating these sides structurally, rather than
simply functionally.
Conclusion of Law
Appellants have demonstrated that the Examiner erred in finding that
Paul teaches “at least first and second edges formed in a region” of “a
posterior optic periphery” as required by claim 1.
B. 35 U.S.C. § 112, first paragraph, written description
The Examiner finds that “[l]ine 1 of claim 17 requires that the first
peripheral wall lies parallel to said optical axis. However the [S]pecification
only says that the walls are parallel to each other and ‘substantially’ parallel
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to the optical axis” (Ans. 3). The Examiner finds that “it is clear from
figures 5-7 that this is not true. The wall is about 20 degrees off the same as
that of Paul” (Ans. 3-4).
Appellants argue that “[o]ne of ordinary skill in the art would
understand that the term ‘substantially parallel’ as recited in the
[S]pecification means that which is parallel as well as that which deviates
from parallel to some small degree. Accordingly, a claim reciting
substantially parallel supports a claim of parallel” (App. Br. 9).
In view of these conflicting positions, we frame the written
description issue before us as follows:
Have Appellants demonstrated that the Examiner erred in finding that
the Specification lacks descriptive support for a lens “wherein said first
peripheral wall lies parallel to said optical axis” as required by claim 17?
Findings of Fact
8. The Specification teaches that “the peripheral wall surfaces P1,
P3, P5 extend along spaced, parallel planes which extend substantially
parallel to the optical axis OA of the IOL optic” (Spec. 9, ll. 12-13).
Principles of Law
It is the Examiner's “initial burden [to] present [ ] evidence or reasons
why persons skilled in the art would not recognize in the disclosure a
description of the invention defined by the claims.” In re Wertheim, 541
F.2d 257, 263 (CCPA 1976).
To satisfy the written description requirement, the inventor must
“convey with reasonable clarity to those skilled in the art that, as of the filing
date sought, he or she was in possession of the invention.” Vas-Cath Inc. v.
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Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). “One shows that one is
‘in possession’ of the invention by describing the invention, with all its
claimed limitations.” Lockwood v. American Airlines, Inc., 107 F.3d 1565,
1572 (Fed. Cir. 1997).
“Although [the inventor] does not have to describe exactly the subject
matter claimed … the description must clearly allow persons of ordinary
skill in the art to recognize that [the inventor] invented what is claimed.” In
re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989).
Analysis
This is a situation where the word “parallel” is used ipsis verbis in the
Specification (FF 8), even though ipsis verbis support is not required.
Fujikawa v. Wattanasin, 93 F.3d 1559, 1570 (Fed. Cir. 1996). We think
Appellant has the better argument here, since any person of ordinary skill
would recognize that one embodiment of “substantially parallel” is
“parallel” itself.
We find unpersuasive the Examiner’s argument that “the phrase
substantially parallel does not necessarily include the condition of parallel”
(Ans. 6). Without a negative exclusion in claim 17 or the Specification
which would suggest that “substantially parallel” does not encompass
“parallel”, the ordinary and routine understanding of “substantially” is that
the word encompasses the exact element claimed and some variation about
the exact element claimed.
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Conclusion of Law
Appellants have demonstrated that the Examiner erred in finding that
the Specification lacks descriptive support for a lens “wherein said
peripheral wall lies parallel to said optical axis” as required by claim 17.
SUMMARY
In summary, we reverse the rejection of claims 1-8, 10-14, and 17
under 35 U.S.C. § 102(e) as being anticipated by Paul.
We reverse the rejection of claim 17 under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement.
REVERSED

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