Ex Parte Pynson et al

Patent Trial and Appeal Board

Mar 24, 2013

11025406 (P.T.A.B. Mar. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JOEL PYNSON, BENOIT BESSIERE, and BRIAN D. RATHERT
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Appeal 2010-000872
Application 11/025,406
Technology Center 3700
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Before PHILLIP J. KAUFFMAN, ANNETTE R. REIMERS and
TIMOTHY J. O’HEARN, Administrative Patent Judges.

O’HEARN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1-5 and 13-23 in the above application. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

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THE INVENTION
Appellants’ claimed invention “relates to a device and method for
inserting an intraocular lens (IOL) into an eye wherein the IOL may be
conveniently preloaded in and packaged together with the injector device.”
Spec., para. [0001]. Claim 1 is illustrative of the claimed invention and is
reproduced below.
1. A method of packaging an intraocular lens in a portion of
an intraocular lens injection device comprising the steps of:
a) providing a distal nozzle section;
b) providing a shuttle and positioning the intraocular
lens therein;
c) providing a vial with a cover;
d) releasably connecting said shuttle to said cover and
sealing said shuttle with said intraocular lens therein in said vial.

THE REJECTION
Claims 1-5 and 13-23 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Butts (US 6,387,101 B1; iss. May 14, 2002) in view of Faxe
(US 6,401,915 B1; iss. Jun. 11, 2002).
ANALYSIS
This appeal involves a single ground of rejection. Appellants initially
present arguments treating all rejected claims as a group. Br. 6–9.
Appellants then separately argue groups of claims. Br. 9–12. We first
address the arguments presented for all claims as a group.
Appellants first argue that the Examiner has improperly characterized
Faxe, and that Faxe does not disclose releasably connecting a shuttle to a
cover as claimed. Br. 7. The Examiner notes that “Faxe is relied upon for
its teaching of removing an object from a sealed vial using the vial’s cover
in order to avoid directly contacting that object.” Ans. 6. Further, the
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rejection relies upon a combination of the references for disclosure of the
limitation at issue. See Ans. 3-4. Appellants’ argument is unpersuasive in
that it both does not address the rejection as articulated by the Examiner, and
is an individual attack on the references.1 See In re Merck & Co., Inc., 800
F.2d 1091, 1097 (Fed. Cir. 1986) citing In re Keller, 642 F.2d 413, 425
(CCPA 1981) (one cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references).
Appellants next argue that the Examiner has provided insufficient
motivation to combine the teachings of the references and that Butts teaches
away from the proposed modification. Br. 8-9. According to Appellants,
the Butts reference is not combinable with the teachings of Faxe, and Butts
teaches away from the Examiner’s proposed combination because Butts
teaches the use of an intermediate “tool” for the lens. Id. The Examiner
counters with the observation that it is the concept of sterile handling using
the vial “cover” that is the relevant teaching of the Faxe reference and that
the presence or absence of an intermediate “receiver” (as taught in Butts)
would not detract from that teaching. Ans. 7-8.
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553

1 With regard to claims 4, 13, 15, and 20, Appellants merely recite the
language of the dependent claims but do not present specific arguments for
their patentability over the applied references. See Br. 7-8. Such assertions
do not constitute separate arguments for patentability of these claims
pursuant to 37 C.F.R. § 41.37(c)(1)(vii)(2011). See In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011).
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(Fed. Cir. 1994). A reference does not teach away if it merely expresses a
general preference for an alternative invention from amongst options
available to the ordinarily skilled artisan, and the reference does not discredit
or discourage investigation into the invention claimed. See In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art's mere disclosure of more
than one alternative does not constitute a teaching away from any of these
alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed in the '198 application.”).
Appellants do not explain why the teaching of Faxe relied upon by the
Examiner for the rationale of the proposed combination is incorrect. There is
no persuasive evidence in the record to establish that the cover usage taught
by Faxe could not be made to work successfully in combination with the
Butts device. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(“[a]ttorney’s argument in a brief cannot take the place of evidence.”)
(Citation omitted). Appellants have not persuasively explained why the
Examiner’s reasoning is incorrect, i.e., that the use of a cover for handling
sterile objects, as taught in Faxe, with the lens container (i.e., “lens receiver”
18) of Butts would not have been obvious to one of ordinary skill in the art
in light of the teachings of these references.
Claims 1-3
Appellants separately present an additional argument regarding claims
1-3. Br. 9-10.2 Appellants contend that Butts and Faxe individually do not

2 With regard to claims 2 and 3, Appellants merely recite the language of the
dependent claims but do not present specific arguments for their
patentability over the applied references. See Br. 9-10. Such assertions do
not constitute separate arguments for patentability of these claims pursuant
to 37 C.F.R. § 41.37(c)(1)(vii)(2011), and we therefore select claim 1 as
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disclose releasably connecting a shuttle to a cover as claimed. Br. 9. This
contention seems to be a repetition of Appellants’ earlier argument, i.e., the
Examiner mischaracterized Faxe. See Br. 7-8. As discussed supra,
Appellants’ argument is unpersuasive in that it both does not address the
rejection as articulated by the Examiner, and is an individual attack on the
references.
Claims 4 and 5
Appellants present a separate heading and an additional argument
regarding claims 4 and 5. Br. 10.3 Appellants repeat their characterization
of Faxe, and assert that the proposed combination does not disclose steps b
and d of the method of claim 4. Id. This argument is unpersuasive for the
same reasons that apply to claims 1-3, supra.
Claims 13 and 14
Appellants present a separate heading and argument regarding claims
13 and 14. Br. 11. Regarding claim 13, Appellants reiterate their
description of Faxe. As explained above, such individual attacks on the
references are not persuasive and does not counter the reasoning explained
by the Examiner for combining the teachings of Butts and Faxe. We find
these arguments unavailing for the reasons set forth supra in our analysis of
prior claims. Appellants do not present additional arguments for claim 14

representative of claims 1-3. See In re Lovin, 652 at 1357.
3 With regard to claim 5, Appellants merely recite the language of the
dependent claim but do not present specific arguments for its patentability
over the applied references. See Br. 10. Such assertions do not constitute
separate arguments for patentability of this claim pursuant to 37 C.F.R. §
41.37(c)(1)(vii)(2011), and we therefore select claim 4 as representative of
claims 4 and 5. See In re Lovin, 652 at 1357.
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separate from those presented for claim 13. Id. Accordingly, we likewise
sustain the Examiner’s rejection of claims 13 and 14.
Claims 15-19
Appellants present a separate heading and an additional argument
regarding claims 15-19. Br. 11-12. Regarding claim 15, Appellants reiterate
their description of Faxe and their individual attack on the references.
Appellants do not present additional arguments for claims 16-19 separate
from those presented for claim 15. Id. Accordingly, we likewise sustain the
Examiner’s rejection of claims 15-19.
Claims 20-23
Finally, Appellants present a separate heading and argument regarding
claims 20-23. Br. 12. Regarding claim 20, Appellants reiterate their
description of Faxe and their individual attack on the references. Id.
Appellants do not present additional arguments for claims 21-23 separate
from those presented for claim 20. Id. Accordingly, we likewise sustain the
Examiner’s rejection of claims 20-23.
CONCLUSION
The Examiner articulated adequate reasoning based on rational
underpinnings to support the determination that it would have been obvious
to one of ordinary skill in the art to combine the Butts and Faxe teachings to
arrive at the inventions recited in claims 1-5 and 13-23 of the application.

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DECISION
We AFFIRM the decision of the Examiner to reject claims 1-5 and
13-23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).

AFFIRMED

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