Ex Parte Wortz

Patent Trial and Appeal Board

Aug 22, 2018

14551544 (P.T.A.B. Aug. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/551,544 11/24/2014
20995 7590 08/24/2018
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Gary N. Wortz
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.
OMGAO.OOlCl 2787
EXAMINER
BARIA, DINAH N
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
08/24/2018 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):
j ayna.cartee@knobbe.com
efiling@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY N. WORTZ
Appeal2016-007285
Application 14/551,544 1
Technology Center 3700
Before LISAM. GUIJT, BRADLEYB. BAY AT, and
FREDERICK C. LANEY, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Gary N. Wortz (Appellant) seeks our review under 35 U.S.C. § 134(a)
of the Examiner's decision rejecting claims 1-3, 5-10, 12-15, and 18-22,
which are all the pending claims in the application. We have jurisdiction
under 35 U.S.C. § 6(b ). Appellant's counsel appeared for oral hearing on
August 14, 2018.
We AFFIRM-IN-PART.
1 Appellant identifies "Omega Ophthalmics LLC" as the real party in
interest. Appeal Brief ("App. Br.," filed Jan. 21, 2016) 3.
Appeal2016-007285
Application 14/551,544
CLAIMED INVENTION
"The present invention relates to a prosthetic capsular bag." Spec. ,r 1.
Independent claim 1, reproduced below, is illustrative of the subject matter
on appeal.
1. A prosthetic implant device for insertion into a natural
capsular bag of an eye after removal of a cataract, the
natural capsular bag having a volume prior to removal of the
cataract, wherein said prosthetic implant device is adapted to
contain an intraocular lens, said prosthetic implant device
comprising an anterior surface including an opening
configured to remain open in the eye, and a posterior
surface, wherein at least a portion of said posterior surface is
a refractive surface, wherein the refractive surface has a
non-zero diopter optical power and wherein said prosthetic
implant device is configured to mechanically maintain
substantially the volume of the natural capsular bag.
App. Br. 17 (Claims Appendix).
REJECTIONS
I. Claims 19 and 20 are rejected under 35 U.S.C. § 112 (pre-AIA),
first paragraph, as failing to comply with the written description
requirement.
II. Claims 1-3, 5, 7-10, 12-15, 21, and 22 are rejected under
35 U.S.C. § I02(b) as anticipated by Woods (US 2007/0032868
Al, published Feb. 8, 2007).
III. Claims 6 and 18 are rejected under 35 U.S.C. § I03(a) as obvious
over Woods and Tassignon (US 8,663,235 B2, issued Mar. 4,
2014).
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Application 14/551,544
IV. Claims 19 and 20 are rejected under pre-AIA 35 U.S.C. § I03(a) as
being obvious in view Woods and Brady (US 5,702,402, issued
Dec. 30, 1997).
V. Claims 1, 3, 5-9, 14, and 15 are rejected under non-statutory
Double Patenting as being unpatentable over claims 1, 2, 4, 6, 8, 9,
13, 14, and 21-23 of Wortz (US 8,900,300 Bl, issued Dec. 2,
2014).
ANALYSIS
Rejection I
Written Description
The Examiner maintains the rejection under 35 U.S.C. § 112, first
paragraph, on the ground that Appellant's original disclosure fails to provide
adequate written description support for claims 19 and 20 in such a way as
to reasonably convey to one skilled in the art that the inventor had
possession of the claimed invention at the time the application was filed
(Ans. 2). In particular, the Examiner finds the Specification does not
sufficiently support Appellant's amendment2 to independent claim 19, which
recites "'said prosthetic implant device is configured to self-expand to
maintain a volume of the natural capsular bag' ... [because] the term 'self-
expand' has never been mentioned before" (id.). Although the Examiner
acknowledges that paragraph 19 of the originally filed Specification
describes the claimed implant device as
"possess[ing] sufficient elasticity to resume its pre-folded shape once
positioned inside the eye;" however, [the Examiner asserts that]
nowhere in the [S]pecification is it disclosed how the device resumes
2 Amendments to the Claims filed May 1, 2015.
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Application 14/551,544
its pre-folded shape ... [because] the word "elasticity", according to
the Merriam-Webster Dictionary is "the capability of a strained body
to recover its size and shape after deformation" [ and] the expansion
could occur due to external forces (i.e.[,] fluid or mechanical forces)
(Final Act. 3).
Appellant argues that the rejection is improper because no verbatim
support for the term "self-expand" is required, and paragraph 19 of the
Specification describes the device as "'possess[ing] sufficient elasticity to
resume its prefolded shape once positioned in the eye'" (App. Br. 11 ).
According to Appellant, "[i]f something has the ability to resume its
prefolded shape, then external forces are not necessary to cause the
expansion. And, whether the expansion could occur due to external forces is
irrelevant-it is about whether the device's expansion could occur on its
own without external forces" (id. at 12). We are persuaded by Appellant's
arguments.
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is
assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v. F aulding
Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as
originally filed, need not literally describe the claimed subject matter
(i.e., using the same terms or in haec verba) in order to satisfy the written
description requirement. But the Specification must convey with reasonable
clarity to those skilled in the art that, as of the filing date, Appellant was in
possession of the claimed invention. See id. Here, although the
Specification does not explicitly refer to the term "self-expand," a person of
ordinary skill in the art reviewing the Specification would have known that
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Application 14/551,544
Appellant was in possession of the claimed subject matter as of the filing
date. The Specification discloses that Appellant's prosthetic implant device
is folded into a smaller shape to fit through a small incision, and is made of
materials with sufficient elasticity (similar or identical to those used in
foldable intraocular lenses) to resume its pre-folded shape once positioned in
the eye. Spec. ,r,r 19--20. As such, the Specification makes clear to a skilled
artisan that Appellant's device has sufficient elasticity to self-expand and
resume its pre-folded shape upon placement in the eye, without external
forces. Accordingly, we do not sustain the rejection under 35 U.S.C. § 112,
first paragraph.
Rejection II
Anticipation
Independent claim 1 recites, in part, a prosthetic implant device for
insertion into a natural capsular bag of an eye, wherein said prosthetic
implant device is "adapted to contain an intraocular lens [(IOL)]." App. Br.
17 (Claims App'x).
In rejecting this disputed limitation, the Examiner finds Woods's
"prosthetic implant device (56), illustrated in Figures 3 and 4, is adapted to
contain an intraocular lens (it is to be noted, that though it is not specifically
disclosed that the implantable device contains an intraocular lens, it is
structured so it is capable of doing so, and therefore meets the claim
language of 'adapted to contain')." Final Act. 4--5.
Alleging error in the rejection, Appellant contests the Examiner's
interpretation of the claim language and argues that "the Specification makes
clear that Appellant's device is designed or constructed to be used in a
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Application 14/551,544
particular way, namely to contain an IOL." App. Br. 9 ( citing Spec. ,r,r 5, 25,
31).
In response to Appellant's argument, the Examiner asserts that
the device of Woods has a structure that is made/ designed to
and configured to be able to contain an intraocular lens.
Examiner believes that in the instant case, in order to meet the
claim language of "adapted to" (i.e.[,] "said prosthetic implant
device is adapted to contain an intraocular lens"), the prior art
just needs to teach a physical structure that can contain an
intraocular lens; the prior art does not need to specifically
teach/show the intraocular lens or explain how the device
would function with the intraocular lens.
Ans. 10 ( emphasis added). We are persuaded of Examiner error.
"The phrase 'adapted to' generally means 'made to,' 'designed to,' or
'configured to,' though it can also be used more broadly to mean 'capable
of or 'suitable for."' In re Man Machine Interface Techs. LLC, 822 F.3d
1282, 1286 (Fed. Cir. 2016) (citing In re Giannelli, 739 F.3d 1375, 1379
(Fed. Cir. 2014). Here, the Specification describes
Appellant's device is "adapted to contain an intraocular lens"
and helps to "identify and control the position of the IOL" and
"provides centration of the IOL" because the "IOL 28 will be in
physical contact with the peripheral internal surface of the PPL-
C 10, which maintains the centered position of the IOL 28
within the PPL-C 10 and also within the visual axis 15."
Specification at least in [0005], [0025], and [0031].
Reply Br. 2; see also App. Br. 9. The Specification describes how an
IOL is contained within the device to be in physical contact with the
peripheral internal surface of the device, which maintains the centered
position of the IOL within the device to achieve "the best visual
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Application 14/551,544
performance." Spec. ,r 31. As such, the "adapted to" phrase as used
in the claim and described in the Specification is assigned the
narrower meaning because Appellant's device is made or designed to
contain and hold within an IOL. Based on the language in the
Specification, we disagree with the Examiner's broad interpretation,
and we construe "adapted to contain an intraocular lens" to mean
"designed to or made to contain an intraocular lens." PPC
Broadband, Inc. v. Corning Optical Commc 'ns RF, LLC, No. 2015-
1364, 2016 WL 692369, at *5 (Fed. Cir. 2016) ("Above all, the
broadest reasonable interpretation must be reasonable in light of the
claims and specification.").
In view of our construction, we find that Woods fails to
anticipate independent claim 1 because Woods fails to disclose
expressly or inherently a device "adapted to contain an intraocular
lens. " 3 Contrary to the Examiner's assertion, we find no explicit
disclosure in Woods that device 56 is either "designed to" or "capable
3 "A determination that a claim is anticipated under 35 U.S.C. § 102(b)
involves two analytical steps. First, the Board must interpret the claim
language, where necessary. Because the PTO is entitled to give claims their
broadest reasonable interpretation, our review of the Board's claim
construction is limited to determining whether it was reasonable. In re
Morris, 127 F.3d 1048, 1055 (Fed. Cir. 1997). Secondly, the Board must
compare the construed claim to a prior art reference and make factual
findings that 'each and every limitation is found either expressly or
inherently in [that] single prior art reference."' In re Crish, 393 F.3d 1253,
1256 (Fed. Cir. 2004).
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Application 14/551,544
of' containing an IOL. Figures 3 and 4 of Woods, on which the
Examiner relies, merely show body 68 of device 56 "essentially flush
with optic 62." Woods ,r 28. The Examiner has not cited, and we do
not find, any disclosure in Woods that device 56 is capable of
containing optic 62 within it.
Furthermore, the Examiner's assertion that "Woods teaches a
structure that can contain an intraocular lens, and there is nothing in
the disclosure of Woods, or in the physical structure of the device
itself, that would stop it from containing an intraocular lens" (Ans. 10)
is insufficient to support a finding that Woods inherently describes the
claimed subject matter. "Inherent anticipation requires that the
missing descriptive material is 'necessarily present,' not merely
probably or possibly present, in the prior art." Trintec Indus., Inc. v.
Top-US.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002) (quoting In
re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citation omitted)).
In other words, the mere fact the device 56 of Woods includes a cavity
7 4 that can possibly contain an optic is insufficient to establish
inherency. In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) ("'The
mere fact that a certain thing may result from a given set of
circumstances is not sufficient."' ( citation omitted)).
In view of the foregoing, we do not sustain the anticipation
rejection of independent claim 1. The Examiner's anticipation
rejection of the remaining claims relies on the same erroneous
interpretation and finding as to the "adapted to" phrase discussed
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Application 14/551,544
above. See Final Act. 5-8. As such, we do not sustain the rejection of
claims 2, 3, 5, 7-10, 12-15, 21, and 22 for the same reasons.
Rejections III & IV
Obviousness
For the same reasons, we also do not sustain the obviousness
rejections of claims 6 and 18-20 because the Examiner relies on the
same interpretation and finding in Woods in rejecting these claims.
See Final Act. 9-11.
Rejection V
Non-Statutory Double Patenting
Appellant has not contested the rejection of claims 1, 3, 5-9, 14, and
15 under obviousness-type double patenting in the Briefs before us. See
App. Br. 7. Thus, we summarily sustain this rejection.
DECISION
The rejection under 35 U.S.C. § 112, first paragraph, is reversed.
The rejection under 35 U.S.C. § 102(b) is reversed.
The rejections under 35 U.S.C. § 103(a) are reversed.
The obviousness-type double patenting rejection is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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