2019005643 (P.T.A.B. Aug. 4, 2020)

Garth Webb

Patent Trials and Appeals BoardAug 4, 2020

2019005643 (P.T.A.B. Aug. 4, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/076,102 11/08/2013 Garth T. Webb V187 0023/BMG 6241 720 7590 08/04/2020 OYEN, WIGGS, GREEN & MUTALA LLP 480 - THE STATION 601 WEST CORDOVA STREET VANCOUVER, BRITISH COLUMBIA V6B 1G1 CANADA EXAMINER BLANCO, JAVIER G ART UNIT PAPER NUMBER 3774 NOTIFICATION DATE DELIVERY MODE 08/04/2020 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): mail@patentable.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte GARTH T. WEBB __________ Appeal 2019-005643 Application 14/076,102 Technology Center 3700 __________ Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2019-005643 Application 14/076,102 2 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 3, 4, 58, 59, 62, 64, and 67.2, 3 Claims 1, 2, 5–8, and 26–32 have been canceled and claims 9–25, 33–57, 60, 61, 63, 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Garth T. Webb. Appeal Brief (“Appeal Br.”) 3, filed Jan. 10, 2019. 2 The following rejections are not appealed: (1) claims 3, 4, 58, 59, 62, 64, and 67 on the ground of non-statutory obviousness-type double patenting (Appeal Br. 14; see also Final Office Action (“Final Act.”) 10, dated Jan. 11, 2018); and (2) claim 64 under 35 U.S.C. § 112, second paragraph, as indefinite (Appeal Br. 13; Reply Br. (“Reply Br.”) 2, filed July 12, 2019; see also Final Act. 8). Accordingly, these rejections are not before us for review. Additionally, Appellant indicates that all rejections of claim 67 are not appealed. Reply Brief 2; see also Final Act. 5–14. More specifically, Appellant states that “the rejection[s] of claim 67 [are] not under appeal,” and then lists thereafter the rejections of claim 67 under 35 U.S.C. § 112, first paragraph; 35 U.S.C. § 112, second paragraph; and 35 U.S.C. § 102(b). See Reply Br. 2. Accordingly, we understand that “all rejections” of claim 67 are not before us for review. We summarily affirm rejections that are not contested. In re Berger, 279 F.3d 975 (Fed. Cir. 2002) (Affirming the Board’s affirmance of an uncontested rejection, holding that the appellant had waived the right to contest the rejection by not presenting arguments on appeal to the Board); Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (“the applicant can waive appeal of a ground of rejection”). 3 The following rejections have been withdrawn: (1) independent claim 58 (including dependent claims 3, 4, 59, 62, 64, and 67) under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement; and (2) claim 58 (but only in regard to the issue of not reciting a structural relationship) and claim 62 under 35 U.S.C. § 112, second paragraph, as indefinite. Examiner’s Answer (“Ans.”) 13, dated May 14, 2019; see also Final Act. 5–9. Appeal 2019-005643 Application 14/076,102 3 65, 66, and 68–70 have been withdrawn from consideration. See Final Act. 1 (Office Action Summary). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and designate the affirmance of the indefiniteness rejection of claims 3, 4, 58, 59, 62, 64, and 67 under 35 U.S.C. § 112, second paragraph, as a NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b). CLAIMED SUBJECT MATTER The claimed subject matter “relates to the field of intra ocular implants.” Spec. ¶ 2.4 Claim 58 is independent. Claim 58 is representative of the claimed subject matter and recites: 58. An inflatable intraocular lens/lens retainer (26, 28, 48) for implantation into the intra-capsular space (10) of a lens capsule (12, 14) of an aphakic eye having an intraocular lens within a lens compartment (34, 56) and lens support (36, 38, 50, 60) installed within the intra-capsular space (10), said inflatable intraocular retainer (26) comprising: i) an expandable intraocular retainer body (26, 28, 48) of deformable material, having an anterior surface (41) and a posterior surface (42) and providing a central transparent optical zone, ii) means (30, 32, 49) for expanding said retainer body (26, 28, 48) with ambient intraocular fluid; iii) characterized in that said expandable intraocular retainer body (26, 28, 48) is sized when expanded to bear directly or indirectly against the inner surface of said lens capsule (12, 14); forming pressure contact zones to transfer zonular tension to actuate the lens support (36, 38, 4 Specification (“Spec.”), filed Nov. 8, 2013. Appeal 2019-005643 Application 14/076,102 4 50, 60) to reduce the depth (A, B) of the lens compartment (34, 56). REJECTIONS5, 6 I. Claims 3, 4, 58, 59, 62, 64, and 67 stand rejected under 35 U.S.C. § 112, second paragraph, as indefinite.7 II. Claims 3, 4, 58, 59, 62, and 64 stand rejected under 35 U.S.C. § 102(b) as anticipated by Gross (US 2005/0251253 A1, published Nov. 10, 2005). II. Claims 58, 62, and 64 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Pallikaris (US 6,786,927 B2, issued Sept. 7, 2004) and Gross. 5 The Specification is objected to under 37 C.F.R. § 1.75(d)(1) for failing to provide proper antecedent support for the claimed subject matter, and the drawings are objected to under 37 C.F.R. § 1.83(a) for not showing every feature of the invention specified in the claims. See Final Act. 3–5. However, these objections are not within the jurisdiction of the Board. See 37 C.F.R. § 1.181. 6 For brevity’s sake, the rejections that are summarily affirmed, as discussed in footnote 2 above, are listed in the Summary Table of the “CONCLUSION” section below but are not listed in the “REJECTION” section above. 7 We understand dependent claims 3, 4, 59, 62, 64, and 67 to be rejected as indefinite by virtue of their dependency from claim 58. Appeal 2019-005643 Application 14/076,102 5 ANALYSIS Rejection I – Indefiniteness The Examiner finds that independent claim 58 is indefinite because “the inner surface of said lens capsule” and “the depth of the lens compartment” lack antecedent basis. Final Act. 8. As to the limitation “the inner surface of said lens capsule,” we agree with Appellant that “the Examiner is in error” because “it is implicit in the nature of a lens capsule that it has an inner and an outer surface, which would be clear to the person skilled in the art.” Appeal Br. 12. Stated differently, as the lens capsule of a human eye naturally has an inner surface, there is no need to provide antecedent basis for the recited “inner surface of said lens capsule.” However, as to the limitation “the depth of the lens compartment,” we do not agree with Appellant’s contention. Here, Appellant contends that the term “depth of the lens compartment” is a term which is defined by letters A and B as shown in the description and Figures 3, 4 and 5 of the drawings. Those skilled in the art would therefore understand what is meant by the term when the claim is read in light of the specification. Appeal Br. 13; see also Reply Br. 2. Although the lens capsule of a human eye naturally has many depths, it is unclear which depth is being referenced. We note that with respect to Figures 3 and 4,8 the Specification merely discloses that: (1) “[t]he depth A of lens compartment 34 varies as the zonular tension changes, thereby actuating compatible intra ocular lens 8 Although Appellant refers to Figure 5 in the argument, nothing is described in the Specification in regard to depth “B” that is identified in Figure 5-a. See Spec., passim. Appeal 2019-005643 Application 14/076,102 6 implants” (Spec. ¶ 25); (2) “[e]lastic forces within compatible ocular lens implants press the inflatable intra occular retainer [sic.] against the posterior lens capsule 14, thereby increasing the depth B of lens compartment 56” (id. at ¶ 26); and (3) “[c]onversely, zonular tension from zonules 55 compresses the intra-capsular space and pushes the inflatable lens capsule forward toward the anterior lens capsule 12, reducing the depth B of lens compartment 56 to compress a compatible ocular lens implant” (id.). Nothing in the Specification informs a skilled reader how depth A and depth B in relation to Figures 3–5 respectively, are measured. Thus, a skilled artisan would not understand what is meant by “the depth of the lens compartment.” In summary, and based on the record presented, we are not persuaded the Examiner erred in rejecting independent claim 58 as indefinite. Accordingly, we sustain the Examiner’s rejection of claim 58 and claims 3, 4, 59, 62, 64, and 67 depending therefrom. As our reasoning differs from or supplements the Examiner’s reasoning, we designate our affirmance as a new ground of rejection under 37 C.F.R. § 41.50(b). Rejection II – Anticipation by Gross Appellant does not offer arguments in favor of dependent claims 3, 4, 59, 62, and 64 separate from those presented for independent claim 58. Appeal Br. 14–15. We select claim 58 as the representative claim, and claims 3, 4, 59, 62, and 64 stand or fall with claim 58. 37 C.F.R. § 41.37(c)(1)(iv). The Examiner finds that Gross discloses an inflatable intraocular lens/lens retainer having all the limitations of claim 58, including an Appeal 2019-005643 Application 14/076,102 7 expandable intra ocular retainer body (tensing element 40, inflatable and deflatable member 42, inflatable and deflatable member 74, or tensing element 76). Final Act. 11–12 (citing Gross Figs. 1–3, 6–11). The Examiner also finds that Gross discloses a lens support (“anterior wall and/or posterior wall of” inflatable and deflatable member 74). Id. at 12. Appellant contends that Gross’ corresponding lens support (“anterior wall and/or posterior wall of” inflatable and deflatable member 74) and expandable intra ocular retainer body (inflatable and deflatable member 74) are not distinct elements; whereas, Appellant’s “lens support 36, 38, and expandable intraocular retainer body (26, 28) as claimed are distinct elements.” Appeal Br. 14. In the Reply Brief, Appellant argues that the Specification discloses that “[p]osterior lens support 36 is a diaphragm that stretches across the front surface of inflatable intra ocular retainer[] 26 and anterior lens support 38 is an annular diaphragm that stretches across the front surface of inflatable intra ocular retainer[] 28.” Reply Br. 3 (citing Spec. ¶ 25). Appellant further points out that claim 58 recites different drawing reference numbers in parenthesis for the recited “lens support” and “expandable intraocular retainer body,” and thus, each element should be construed as “distinct” from the other element. Id. As an initial matter, although the recitation of drawing reference numbers in parentheses after a claim limitation is common in European patent practice, such is not the case of US patent practice. Nonetheless, drawing reference numbers that are recited in the parentheses do not confer patentable weight. See MPEP 608.01 (“The use of reference characters is to be considered as having no effect on the scope of the claims.”). Thus, Appellant’s intimation that the recited “lens support” and “expandable Appeal 2019-005643 Application 14/076,102 8 intraocular retainer body” are distinct by virtue of the different drawing reference numbers that are recited in parenthesis thereafter, is unavailing. The fact that the Specification discloses that anterior lens supports 36 and 38 stretch across the front surface of inflatable intra ocular retainers 26 and 28, respectively, does not mean that the lens supports are separate or unattached from the inflatable intra ocular retainers. The Examiner correctly notes that “none of (i) the particular structure, (ii) the metes and bounds, and (iii) particular location of said ‘lens support’ are defined in the claim language.” Final Act. 12; see also Ans. 15. The Examiner also correctly responds that contrary to Appellant’s contention, Appellant’s Figure 3 appears to show that posterior lens supports 36 and 38 are a part of the inflatable intra ocular retainers 26 and 28, respectively. Ans. 14. Thus, we decline Appellant’s invitation to construe the recited “expandable intraocular retainer body” as a “distinct” element from the recited “lens support.” Further, we note that the “lens support” is not positively recited in claim 58 as a limitation of the inflatable intraocular lens/lens retainer. That is, claim 58 does not require that the inflatable intraocular retainer lens/lens retainer comprises or does not comprise a lens support. As such, none of Appellant’s contentions apprise us of Examiner error. For these reasons, we sustain the Examiner’s rejection of claims 3, 4, 58, 59, 62, and 64 as anticipated by Gross. Rejection III – Obviousness over Pallikaris and Gross Appellant does not offer arguments in favor of dependent claims 62 and 64 separate from those presented for independent claim 58. Appeal Br. Appeal 2019-005643 Application 14/076,102 9 15–16. We select claim 58 as the representative claim, and claims 62 and 64 stand or fall with claim 58. 37 C.F.R. § 41.37(c)(1)(iv). The Examiner finds that Pallikaris discloses an inflatable intraocular lens/lens retainer having most of the limitations of claim 58, including an expandable intra ocular retainer body (sack 4). Final Act. 14–16 (citing Pallikaris Figs. 2–4). The Examiner also finds that Pallikaris discloses a lens support (axial face 7, outer side 6, or haptics 8 of sack 4). Id.9 Appellant contends that this rejection is deficient for the same reasons discussed supra in Rejection II, namely that Pallikaris’ corresponding lens support (axial face 7, outer side 6, or haptics 8 of sack 4) and expandable intra ocular retainer body (sack 4) are not distinct elements; whereas, Appellant’s recited “lens support” and “expandable intraocular retainer body” are “distinct elements.” See Appeal Br. 16; Reply 4. This contention is unpersuasive for the reasons discussed supra. More specifically, we do not construe claim 58 as requiring the “expandable intraocular retainer body” as being “distinct” from the “lens support.” Appellant also contends that in Pallikaris’ Figures 3 and 4, “the lens compartment of Pallikaris, as interpreted by the Examiner, has no defined depth A as claimed, since the compartment in which the lens is located is open on one side.” Appeal Br. 16; see also Reply Br. 5. As discussed above in Rejection I, the Specification fails to disclose how depth A is measured and thus, it is unclear what is meant by “the depth 9 The Examiner relies on the teachings of Gross for limitations other than those discussed above. More particularly, the Examiner relies on Gross for using ambient intraocular fluid to expand the expandable intra ocular retainer body of Pallikaris. See Final Act. 16. Appeal 2019-005643 Application 14/076,102 10 of the lens compartment” as recited in claim 58. As such, claim 58 does not preclude the Examiner from interpreting any particular depth of any particular portion of a lens compartment within Pallikaris’ crystalline lens capsule 2 as the recited “depth.” See Pallikaris Figs 3–4; see also Ans. 16– 17 (in which the Examiner annotates Pallikaris’ Figures 2 and 3 to identify “the depth of the lens compartment”). Appellant next argues that it would not have been obvious to a skilled artisan to modify the device of Pallikaris because the purpose of Pallikaris is to “increase ocular elasticity” rather than improving “accommodation between the ciliary muscle actions of the eye.” Appeal Br. 16 (citing Pallikaris 7:8–10). According to Appellant, the focal length of Pallikaris’ device is not modified by zonular tension, but rather “a single optical focus for the eye is obtained by adding or subtracting material from sack 4” and thus, Pallikaris’ device “cannot serve to form pressure contact zones to transfer zonular tension to actuate the lens support to reduce the depth of the lens compartment.” Id. (citing Pallikaris 6:46–51). We first note that claim 58 does not preclude increasing “ocular elasticity” and claim 58 does not require “accommodation between the ciliary muscle actions of the eye.” See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments fail from the outset because . . . they are not based on limitations appearing in the claims.”). Further, Pallikaris’ disclosure that optical focus for the eye is obtained by “adding or subtracting material from sack 4” does not mean that optical focus cannot also be achieved by changing the focal length of Pallikaris’ device by zonular tension. “Attorney’s argument in a brief cannot take the place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Appeal 2019-005643 Application 14/076,102 11 In addition, the Examiner relies on Gross for using ambient intraocular fluid to expand the expandable intra ocular retainer body of Pallikaris. See Final Act. 16. Appellant does not explain why the Examiner’s proffered modification lacks articulated reasoning or rational underpinnings as to expansion via ambient intraocular fluid. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Moreover, the Examiner correctly responds that as Pallikaris’ intraocular retainer body, when expanded, would bear directly or indirectly against the inner surface of crystalline lens capsule 2, it would also transfer tension and reduce the depth of the lens compartment within the crystalline lens capsule 2. See Ans. 17. To be complete, we note that in the Reply Brief, Appellant appears to argue that a lens compartment must have a space that is unoccupied by another element at all times. Reply Br. 5 (citing Spec. ¶ 25). To the extent that Appellant is indeed making such an argument, we note the Specification does not disclose––and claim 58 does not require––such a lens compartment that has unoccupied space at all times. See Spec., passim; see also Appeal Br. 18 (Claims App.). Thus, none of Appellant’s contentions apprise us of Examiner error. For these reasons, we sustain the Examiner’s rejection of claims 58, 62, and 64 as unpatentable over Pallikaris and Gross. Appeal 2019-005643 Application 14/076,102 12 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed10 Reversed New Ground 3, 4, 58, 59, 62, 64, 67 Obviousness- type Double Patenting 3, 4, 58, 59, 62, 64, 67 67 112, first paragraph Written Description 67 3, 4, 58, 59, 62, 64, 67 112, second paragraph Indefiniteness 64, 67 3, 4, 58, 59, 62, 64, 67 3, 4, 58, 59, 62, 64, 67 102(b) Gross 3, 4, 58, 59, 62, 64, 67 58, 62, 64 103(a) Pallikaris, Gross 58, 62, 64 Overall Outcome 3, 4, 58, 59, 62, 64, 67 3, 4, 58, 59, 62, 64, 67 FINALITY OF DECISION This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: 10 As indicated above at footnotes 2 and 6, the following rejections are summarily affirmed: (1) claims 3, 4, 58, 59, 62, 64, and 67 on the ground of non-statutory obviousness-type double patenting; (2) claims 64 and 67 under 35 U.S.C. § 112, second paragraph, as indefinite; (3) claim 67 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement; and (4) claim 67 under 35 U.S.C. § 102(b) as anticipated by Gross. Appeal 2019-005643 Application 14/076,102 13 When the Board enters such a non-final decision, the Appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure§ 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED; 37 C.F.R. § 41.50(b)