Mark Cole et al.

Patent Trials and Appeals Board

May 6, 2020

13092494 - (D) (P.T.A.B. May. 6, 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.
13/092,494 04/22/2011 Mark S. Cole JSV5556USNP
(27792USO)
6681
33357 7590 05/06/2020
JOHNSON & JOHNSON SURGICAL VISION, INC.
1700 E. ST. ANDREW PLACE
SANTA ANA, CA 92705
EXAMINER
DANG, ANH TIEU
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
05/06/2020 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):
JNJUSPatent@corus.jnj.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARK S. COLE, KEVIN R. SPRINGER, and ROB RANEY
____________

Appeal 2019-005871
Application 13/092,494
Technology Center 3700
____________

Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
MICHAEL L. WOODS, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated Nov. 19, 2018, hereinafter “Final
Act.”) rejecting claims 1, 5, 6, 15–18, and 20–31.2 We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Johnson and Johnson Surgical Vision Inc. is identified as
the real party in interest in Appellant’s Appeal Brief (filed Apr. 18, 2019,
hereinafter “Appeal Br.”). Appeal Br. 3.
2 Claims 2–4, 7–14, and 19 are canceled. Appeal Br. 12, 14.
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SUMMARY OF DECISION
We AFFIRM.

INVENTION
Appellant’s invention is directed to “automating the control of inter-
ocular lens (IOL) temperature prior to and during an IOL implantation
procedure.” Spec. 1, ll. 13–15.
Claims 1 and 15 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A method for regulating a temperature of an intra-
ocular lens (IOL) during an ocular surgical procedure, said
method accomplished using a computing device and
comprising:
receiving desired IOL temperature information;
sensing IOL temperature conditions using a sensor,
wherein said sensing comprises measuring temperature values
associated with a fluid;
comparing at least one of the sensed IOL temperature
conditions measured by the sensor with the desired IOL
temperature, wherein said comparing results in a desired
temperature change;
calculating desired heating levels using said desired
temperature change; and
controlling, via the fluid, heat transfer to the IOL or to
an IOL cartridge or an IOL insertion system containing the
IOL, based on at least one operating parameter associated with
the fluid,
wherein the IOL is maintained substantially at the desired
temperature.

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REJECTIONS

I. The Examiner rejects claims 1, 5, 15–18, 20, 21, 24, 26, 27, and
29–31 under 35 U.S.C. § 103(a) as being unpatentable over
Boukhny,3 Pynson,4 and Appelbaum.5
II. The Examiner rejects claims 6 and 22 under 35 U.S.C. § 103(a)
as being unpatentable over Boukhny, Pynson, Appelbaum, Van
Gent,6 and Alfano,7 as evidenced by Bretton.8
III. The Examiner rejects claim 23 under 35 U.S.C. § 103(a) as
being unpatentable over Boukhny, Pynson, Appelbaum, and
Raney.9
IV. The Examiner rejects claims 25 and 28 under 35 U.S.C.
§ 103(a) as being unpatentable over Boukhny, Pynson,
Appelbaum, and Boukhny ’309.10

ANALYSIS
Rejection I
Appellant does not present arguments for the patentability of claims 5,
5, 15–18, 20, 21, 24, 26, 27, and 29–31 apart from claim 1. See Appeal
Br. 9. Therefore, in accordance with 37 C.F.R. § 41.37(c)(1)(iv), we select

3 Boukhny et al., US 2008/0097461 A1, published Apr. 24, 2008.
4 Pynson, US 2008/0147080 A1, published June 19, 2008.
5 Appelbaum et al., US 6,251,113 B1, issued June 26, 2001.
6 Van Gent, US 4,955,889, issued Sept. 11, 1990.
7 Alfano et al., US 2004/0176752 A1, published Sept. 9, 2004.
8 Bretton, US 5,445,637, issued Aug. 29, 1995.
9 Raney, US 2009/0005712 A1, published Jan. 1, 2009.
10 Boukhny et al., US 2010/0094309 A1, published Apr. 15, 2010.
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claim 1 as the representative claim to decide the appeal of the rejection of
these claims, with claims 5, 15–18, 20, 21, 24, 26, 27, and 29–31 standing or
falling with claim 1.
The Examiner finds Boukhny discloses “a method for regulating
temperature of an intra-ocular lens during an ocular surgical procedure”
including, inter alia, obtaining a desired IOL temperature, sensing an actual
IOL temperature with a sensor, comparing the sensed temperature with the
desired temperature resulting a desired temperature change, based on the
desired temperature change “calculating [a] desired heating level to either
apply heat or not apply heat,” and controlling heat transfer to the IOL to
maintain its temperature at the desired temperature. Final Act. 5 (citing
Boukhny, paras. 74, 80, 82, 93, Fig. 22). The Examiner further finds that
Boukhny does not disclose “that the sensing comprises measuring
temperature values associated with a fluid containing the IOL.” Id.
(emphasis added). Nonetheless, the Examiner finds that Pynson discloses
“an IOL injector disposed inside a container sealed along with a fluid.” Id.
at 6 (citing Pynson, para. 33). Thus, the Examiner determines that
It would have been obvious to one with ordinary skill in the art
at the time of the invention to include a fluid in the chamber
(155) holding the IOL of the device of Boukhny, as taught by
Pynson, in order to hydrate and maintain flexibility of the IOL
prior to insertion.

Id. According to the Examiner, in the method of Boukhny, as modified by
Pynson, it would have been obvious to a skilled artisan “to measure
temperature values of the fluid containing the IOL using the sensor . . . and
heat the IOL via the fluid . . . [because] the IOL is suspended in the fluid and
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the fluid would be in direct contact with both the heating element and the
sensor and the IOL.” Id.
The Examiner further finds that the combined teachings of Boukhny
and Pynson do not specifically teach employing “an operating room
personnel input parameter associated with the fluid” to control heat transfer
to the IOL via the fluid. Id. Thus, the Examiner turns to Appelbaum to
disclose controlling a microsurgical instrument based on an operating
parameter input by operating room personnel. Id. (citing Appelbaum,
Abstract, col. 1, ll. 60–67, col. 2, ll. 1–67). Hence, the Examiner concludes
that
[I]t would have been within the level of one with ordinary skill
in the art at the time of the invention to [further] modify the
controller of Boukhny[, as modified by Pynson,] to be able to
receive input parameters by an operating room personnel, such
that the heat transfer to the IOL can be controlled based on an
operating room personnel input parameter associated with the
fluid in addition to the pre-set conditions . . . in order to allow
the surgeon to manually provide and program input parameters
relating to the desired temperature range of the IOL to suit the
surgeon’s needs, since broadly replacing . . . automatic means
with manual activity which accomplishes the same result would
be within the level of one of ordinary skill in the art.

Id. at 6–7.
As Appellant correctly notes, Boukhny discloses regulating the
temperature of an IOL located within chamber 155 (of cartridge 150 of an
injector) heated by heater 505 located above and below chamber 155.
Appeal Br. 5 (citing Boukhny, para. 43, Fig. 5); Reply Br. 2–3.11 Appellant
is also correct that Pynson discloses IOL injector 100 including

11 Appellant’s Reply Brief, filed July 30, 2019.
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container 150 for storing hydrophilic IOL 180 in a fluid, prior to it being
injected via cartridge 122, wherein cartridge 122 does not contain a fluid and
container 150 is not heated. Appeal Br. 6–7 (citing Pynson, paras. 26, 33,
Fig. 1); Reply Br. 3–4. Thus, according to Appellant, because Pynson does
not disclose that its “container [150] could be used in a device similar to the
Boukhny device,” and the Examiner fails to adequately explain such a
modification, “it would not be obvious to include fluid in the cartridge of the
device of Boukhny, in view of Pynson, and . . . heat the fluid containing the
IOL until it is in the desired temperature range.” Appeal Br. 7; Reply Br. 6.
Hence, Appellant contends that because “it is not obvious to include fluid in
the cartridge of the device of Boukhny . . . it therefore follows that it
would not be obvious to measure temperature values associated with fluid
containing the IOL.” Appeal Br. 7–8; Reply Br. 6.
We are not persuaded by Appellant’s arguments because such
arguments do not address the Examiner’s rejection. Obviousness does not
require that all of the features of the secondary reference be bodily
incorporated into the primary reference. In re Keller, 642 F.2d 413, 425
(CCPA 1981). The artisan is not compelled to blindly follow the teaching of
one prior art reference over the other without the exercise of independent
judgment. Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889, 221
(Fed. Cir. 1984). In this case, the Examiner is not modifying Boukhny’s
device to include the particular structure of Pynson’s container 150 for
storing hydrophilic IOL 180 in a fluid. See Final Act. 5–6. Rather, the
Examiner relies on Pynson’s disclosure “that is was known in the art at the
time of the invention to surround an IOL with a fluid in order to hydrate the
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IOL.” Ans. 3.12 Appellant does not adequately explain why a person of
ordinary skill in the art would not provide fluid to Boukhny’s temperature
controlled chamber 155 to store a hydrophilic IOL prior to injection, as
taught Pynson. The Examiner is correct that even though Pynson’s
disclosure is limited to a hydrophilic IOL, as Boukhny’s device is not
limited to a specific type of IOL, if a skilled artisan would employ
Boukhny’s device to inject a hydrophilic IOL the skilled artisan would
“make the modification of the device of Boukhny . . . to contain a fluid
within the chamber 155 of Boukhny holding the IOL, such that a hydrophilic
IOL can be maintained within the chamber and properly hydrated prior to
delivery, as taught by Pynson.” Ans. 3–4. After all, “[a] person of ordinary
skill is also a person of ordinary creativity, not an automaton.” KSR Int’l.
Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Hence, the Examiner’s
modification of Boukhny’s device to include a fluid in chamber 155 in order
to hydrate an IOL, as taught by Pynson, constitutes an improvement as it
allows Boukhny’s temperature regulating method to be employed with a
hydrophilic IOL where “the heating element of Boukhny would . . . heat the
fluid containing the IOL to further transfer heat to the IOL until it is in
the desired temperature range.” Ans. 4.
Furthermore, that Boukhny does not specifically disclose the type of
IOL injected (see Reply Br. 5), and that Pynson’s container 150 is not heated
(see Appeal Br. 7) and cartridge 122 does not contain fluid (see id. at 6) is
not persuasive because Appellant cannot show nonobviousness by attacking
Boukhny and Pynson individually when the rejection as articulated by the

12 Examiner’s Answer, dated May 31, 2019.
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Examiner is based on a combination of Boukhny and Pynson. See In re
Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Nonobviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references. [Each
reference] must be read, not in isolation, but for what it fairly teaches in
combination with the prior art as a whole.”).
Appellant further argues that because “Boukhny merely discloses
using feedback to determine whether or not to continue heating the IOL,”
Boukhny does not disclose “how much heat is required,” and, thus, Boukhny
fails to disclose the “comparing” and “calculating” steps of claim 1. Appeal
Br. 8.
We are not persuaded by Appellant’s arguments. The Examiner is
correct that claim 1 “do[es] not require calculating a set amount of heat
required to heat the IOL.” Ans. 5. Limitations not appearing in the claims
cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348
(CCPA 1982). In particular, we agree with the Examiner that the limitations
of “comparing” and “calculating” are sufficiently broad to encompass
Boukhny’s disclosure of “determining whether to increase the temperature
of the IOL or [to] maintain the temperature of the IOL” based on “a first
level of heating the IOL and a second level to not heat the IOL,”
respectively. Ans. 5. In particular, Boukhny discloses comparing the actual
IOL temperature with a desired IOL temperature, and if the IOL has not
reached the IOL desired temperature, determining to continue heating of the
IOL (first heating level) and if it has reached the IOL desired temperature
determining to maintain the desired IOL temperature (second heating level).
Boukhny, para. 93, Fig. 22. Appellant does not set forth adequate reasoning
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or established contrary factual findings undermining the Examiner’s
position.
Lastly, Appellant argues that “Appelbaum is completely silent with
respect to an operating parameter associated with a fluid.” Appeal Br. 9
(emphasis added); see also Reply Br. 7. We are not persuaded by
Appellant’s argument because Appellant is once more arguing the
disclosures of Boukhny, Pynson, and Appelbaum individually, whereas the
rejection is based on a combination of Boukhny, Pynson, and Appelbaum.
As correctly noted by the Examiner, because the combination of Boukhny
and Pynson discloses an IOL suspended in a fluid in contact with a heating
element and a sensor, a skilled artisan would readily understand that the
fluid is heated via the heating element and the fluid temperature is measured
via the sensor. Ans. 5–6. As the Examiner relies on Appelbaum “to teach
further modifying the controller of Boukhny [and Pynson] to be able to
receive input parameters . . . [from] an operating room personnel,” the
skilled artisan would have readily acknowledged that the combination of
Boukhny, Pynson, and Appelbaum discloses “heat transfer to the IOL . . .
[is] based on an operating room personnel input parameter associated with
the fluid in addition to the pre-set conditions.” Id. at 6; see also Boukhny,
para. 80 (“The desired temperature can be preset at the factory.”). Appellant
does not set forth adequate reasoning or established contrary factual findings
undermining the Examiner’s position.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of independent claim 1 as unpatentable over
Boukhny, Pynson, and Appelbaum. Claims 5, 15–18, 20, 21, 24, 26, 27, and
29–31 fall with claim 1.
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Rejections II–IV
The Examiner relies on the arguments discussed supra, which we did
not find persuasive. See Appeal Br. 9–11. Therefore, for the same reasons
discussed above, we also sustain Rejections II–IV.

CONCLUSION

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1, 5, 15–18,
20, 21, 24,
26, 27,
29–31
103(a) Boukhny, Pynson,
Appelbaum
1, 5, 15–18,
20, 21, 24,
26, 27,
29–31

6, 22 103(a) Boukhny, Pynson,
Appelbaum, Van
Gent, Alfano,
Bretton
6, 22
23 103(a) Boukhny, Pynson,
Appelbaum,
Raney
23
25, 28 103(a) Boukhny, Pynson,
Appelbaum,
Boukhny ’309
25, 28
Overall
Outcome
1, 5, 6,
15–18, 20–31

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).

AFFIRMED