Novartis AG

Patent Trials and Appeals Board

Mar 27, 2020

14976070 - (D) (P.T.A.B. Mar. 27, 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.
14/976,070 12/21/2015 Michael F. Mattes PAT056411-US-NP 8182
26356 7590 03/27/2020
ALCON INC.
c/o Alcon Research LLC
IP LEGAL
6201 SOUTH FREEWAY
FORT WORTH, TX 76134
EXAMINER
LOPEZ, LESLIE ANN
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
03/27/2020 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):
alcon_pair@firsttofile.com
patent.docketing@alcon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL F. MATTES, MARK A. ZIELKE,
JONATHAN McCANN, RICHARD D. LINTERN, and
SAMUEL POLLOCK
Appeal 2019-004839
Application 14/976,070
Technology Center 3700

Before KEVIN F. TURNER, JAMES P. CALVE, and
LEE L. STEPINA, Administrative Patent Judges.

STEPINA, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, and 4–25. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

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 Novartis AG.
Appeal Br. 2.
Appeal 2019-004839
Application 14/976,070
2
CLAIMED SUBJECT MATTER
The claims are directed to bio-compatible packaging for
optoelectronic devices. Appeal Br. 2; see Spec. ¶ 1.
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. An optoelectronic device, comprising:
an optoelectronic assembly including
an electronic module;
an optoelectronic module comprising an electroactive
intra-ocular lens (IOL) configured to receive the control signals
from the electric module and to adjust an optical characteristic
of the electroactive IOL in response to the control signal;
a power source, configured to energize the electronic
module and the optoelectronic module; and
an electronic interconnect to provide electronic couplings
between the electronic module, the optoelectronic module, and
the power source; and
a bio-compatible packaging, having a transparent front
window and a transparent back window, the bio-compatible
packaging configured
to enable light to enter the optoelectronic device through
the front window, propagate through the optoelectronic module,
and leave the optoelectronic device through the back window;
and
to hermetically seal the optoelectronic assembly;
wherein the electronic module, the optoelectronic module,
and the power source are hermetically sealed within the bio-
compatible packaging.
Appeal Br. 9 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner is:
Appeal 2019-004839
Application 14/976,070
3
Name Reference Date
Blum ’128 US 2006/0095128 A1 May 4, 2006
Blum ’863 US 2009/0033863 A1 Feb. 5, 2009
Blum ’516 US 2013/0211516 A1 Aug. 15, 2013

The evidence relied upon by Appellant is:
Name Reference Date
Blum ’940 US 7,926,940 B2 Apr. 19, 2011

REJECTIONS
I. Claims 1, 2, 4–22, 24, and 25 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Blum ’516 and Blum ’863.
II. Claim 23 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Blum ’516, Blum ’863, and Blum ’128.

OPINION
Rejection I–Blum ’516 and Blum ’863
Appellant argues for the patentability of the claims subject to the first
ground of rejection, i.e., claims 1, 2, 4–22, 24, and 25, as a group. Appeal
Br. 3–7. We select claim 1 as representative of the group, and claims 2, 4–
22, 24, and 25 stand or fall with claim 1.
The Examiner finds that Blum ’516 discloses many of the elements
recited in claim 1, including an electronic module, an optoelectronic module
(including an electroactive intra-ocular lens (hereinafter, “IOL”)), and a
power source. Final Act. 6–7. With regard to the IOL, the Examiner finds
that Blum ’516 discloses this in the form of liquid crystal elements (“LC
elements”) discussed in paragraphs 10, 25, 29, and 57 of Blum ’516.
Appeal 2019-004839
Application 14/976,070
4
However, the Examiner finds that Blum ’516 does not disclose that
the above-noted elements in Blum ’516 are hermetically sealed within bio-
compatible packaging. Id. at 7. To address this deficiency in Blum ’516,
the Examiner turns to Blum ’863, which, the Examiner finds, discloses “an
intraocular lens having hermetically sealed electronic components.” Id.
(citing Blum ’863 ¶ 91). The Examiner reasons that it would have been
obvious to modify Blum such that all electronic components, including the
electronic module, the optoelectronic module, and the power source, are
hermetically sealed, as taught by Blum ’863, to prevent leaching. Id. (citing
Blum ’863 ¶ 91).
Appellant argues the Examiner erred in finding that Blum ’516
discloses an IOL. Appeal Br. 5. Specifically, Appellant alleges that the
Examiner relies on electro-active cell 160 of Blum ’516, but this
“‘electroactive element’ is not a lens—rather, it is a component of an
apodization mask or dynamic aperture ‘spaced apart from but in optical
communication with an intraocular lens[.]’” Id. (quoting Blum ’940,
Abstract).2 In support of the argument that electro-active cell 160 is not a
lens, Appellant also asserts that Blum ’516 discloses a component different
from electro-active cell 160 as being a lens. Id. (citing Blum ’516 ¶ 38).
Again referring to paragraph 57 of Blum ’516, the Examiner replies
that Blum teaches the liquid crystal material is used to diffract, refract,
and/or attenuate incident light in response to signals from a processor, and
“[a]s the cited electroactive intra-ocular lens (IOL) is the liquid crystal

2 Blum ’516 incorporates Blum ’940 by reference, stating, “[f]or example,
electro-active elements can be used as shutters that provide dynamically
variable optical power as disclosed in U.S. Pat. No. 7,926,940 to Blum et al.,
which is incorporated herein by reference in its entirety.” Blum ’516 ¶ 5.
Appeal 2019-004839
Application 14/976,070
5
material, it is clearly an intraocular lens.” Ans. 3 (emphasis added). As for
the possible disclosure in Blum ’516 of an element other than electro-active
cell 160 being a lens, the Examiner finds that the possible existence of
additional optical components, i.e., lenses, does not mean that electro-active
cell 160 is not also a lens. Id.
In reply, Appellant contends that the Examiner’s interpretation of the
term “lens” is unreasonably broad. Reply Br. 2. In this regard, Appellant
states, “a puddle of water may refract light, a compact disc may diffract
light, a cloud may attenuate light––yet none of these things constitutes a
‘lens’ to a person of ordinary skill in the art.” Id.
We do not agree with Appellant’s argument that Blum ’516 fails to
disclose an IOL as claimed. The Examiner’s finding that liquid crystal
elements in Blum ’516 form part of the IOL is supported by a preponderance
of the evidence. Blum ’516 describes conventional IOLs as lenses that focus
retinal images of far objects but have a fixed focal length that cannot mimic
the eye’s natural accommodation response. Blum ’516 ¶ 5. “Fortunately,
ophthalmic devices with electro-active elements, such as liquid crystal cells,
can be used to provide variable optical power as a substitute for the
accommodation of a[] damaged or removed crystalline lens.” Id. Further,
Blum ’516’s electro-active cell 160 is described as diffracting, refracting,
and/or attenuating light. See Blum ’516 ¶ 57.
As pointed out by Appellant (see Appeal Br. 5 n.1), another reference,
Blum ’940, describes that an aperture or mask can be provided by an electro-
active element “and may be used in an ophthalmic device that that is spaced
apart from but in optical communication with an intraocular lens” (Blum
’940, Abstract (emphasis added)). Appellant contends that this disclosure in
Blum ’940 requires electro-active cell 160 of Blum ’516 to be spaced apart
Appeal 2019-004839
Application 14/976,070
6
from any lens disclosed by Blum ’516. See Appeal Br. 5. However, Blum
’940 also discloses that, in an alternative embodiment, “[t]he electro-active
element may be embedded within or attached to a surface of an ophthalmic
lens to form an electroactive lens.” Blum ’940, 5:47–49 (emphasis added).
Thus, to the extent that Blum ’940 describes electro-active cell 160 in Blum
’516, Blum ’940 fails to support Appellant’s contention that electro-active
cell 160 is spaced apart from the lens in Blum ’516.
Moreover, Appellant’s evidence, Blum ’940, undermines Appellant’s
contention that the broadest reasonable interpretation of the term “lens,” in
light of the Specification, excludes electro-active cell 160.3 For example,
Blum ’940 states, “[a] ‘lens’ is any device or portion of a device that causes
light to converge or diverge (i.e., a lens is capable of focusing light). A lens
may be refractive or diffractive, or a combination thereof.” Blum ’940,
5:56–59. Accordingly, as pointed out by the Examiner (Final Act. 6; Ans.
3), paragraph 57 of Blum ’516 supports a finding that electro-active cell 160
qualifies as a lens under the broadest reasonable interpretation of this term in
light of the Specification. See Spec. ¶¶ 23 (optical power of electroactive
IOLs can be adjusted), 24 (same). Additionally, paragraph 5 of Blum ’516
refers to Blum ’940 after stating that electro-active elements, such as liquid
crystal cells, can provide variable optical power (variable focal length).
Thus, Blum ’516 refers to Blum ’940 in the context of electro-active

3 Appellant does not set forth an interpretation of the term “lens.” See
Appeal Br. The Summary of the Claimed Subject Matter refers to
paragraphs 19, 20, 22–26, 32–35, 38, 39, 42, 44, 49, and 50 as providing
written description support for the recited IOL. See Appeal Br. 3. The
Examiner’s implicit interpretation of the term lens is consistent with these
paragraphs, and Appellant does not attempt to identify any particular
disparity.
Appeal 2019-004839
Application 14/976,070
7
elements used as lenses. Accordingly, a preponderance of the evidences
supports the Examiner’s finding that Blum ’516 discloses an IOL.
Appellant next argues that the Examiner’s proposed combination of
the teachings of Blum ’516 and Blum ’863 fails to meet all the requirements
of claim 1 because Blum ’863 discloses overcoating only components of an
IOL, not an IOL itself. Appeal Br. 6 (citing Blum ’863 ¶ 59). Therefore,
according to Appellant, “neither [Blum ’516] nor [Blum ’863] discloses or
suggests—alone or in combination—a hermetically sealed electroactive
intraocular lens as recited in claim 1.” Id. at 7.
The Examiner responds by referring to paragraphs 47 and 59 and
Figure 2A of Blum ’863, which, the Examiner finds, teach that an electronic
IOL (and its components) are hermetically sealed. Ans. 4.
Blum ’863 defines an IOL, stating, “[a]s used herein, an intraocular
lens (IOL) is a lens (having optical power) that is inserted or implanted in
the eye. Figures 2A and 2B of Blum ’863 depict substrate(s) 210 and
electro-active element 200. Figure 2A of Blum ’863 is “an exploded cross-
sectional side view of an embodiment of an electro-active element having a
dynamic aperture.” Blum ’863 ¶ 25. Figure 2B of Blum ’863 is “a
collapsed cross-sectional side view of the electro-active element of [Figure
2A].” Id. ¶ 26. Paragraph 59 of Blum ’863 states, “[a]n electro-active
element 200 may comprise two optical substrates 210 or may be bound by
two optical substrates.” Blum ’863 further states, “[t]he substrates may
provide an optical power or the substrates may have no optical power.”
Paragraph 47 of Blum ’863 states, “[a]n electro-active element is a device
with an optical property that is alterable with the application of electrical
energy. The alterable optical property may be, for example, optical power,
focal length . . . opacity, or a combination of the above.” Thus, the electro-
Appeal 2019-004839
Application 14/976,070
8
active element disclosed by Blum ’863 meets the broadest reasonable
interpretation of an IOL consistent with the Specification and its description
that the claimed IOL has an adjustable optical power. Spec. ¶¶ 23, 24.
Blum ’863 states, “[t]he substrates of the inventive lens or optic may
be coated with materials that are biocompatible with anatomical objects in
the eye,” and “[t]he substrates and the various electronics that are affixed to
or embedded within the substrates may optionally be over-coated to be
hermetically sealed to prevent or retard leaching.” Blum ’863 ¶ 91
(emphasis added). Thus, contrary to Appellant’s argument, Blum ’863
discloses that its over-coating covers more than discrete substrates. See
Blum ’863, Figs. 2A, 2B. Blum ’863 further states, “[a]dditionally, the
substrates may be designed to encapsulate the various electronics such that
they are buried within the substrates.” Id. (emphasis added). Thus, Blum
’863 discloses that the substrates themselves encapsulate various other
components. Consequently, a preponderance of the evidence supports the
Examiner’s finding that Blum ’863 discloses an IOL and that the IOL is
hermetically sealed.
Based on the alleged deficiency in the disclosure of Blum ’863
discussed above, Appellant argues, “it is unsurprising that the Final Office
Action fails to provide a rationale or evidence to support modifying [Blum
’516] and [Blum ’863] to yield the claimed invention.” Appeal Br. 7. This
argument is unavailing because (i) we do not agree that Blum ’863 is
deficient in disclosing an IOL that is hermetically sealed, and (ii) the
Examiner’s reasoning for the proposed combination of the teachings of
Blum ’516 and Blum ’863, regarding preventing leaching, is supported by
Blum ’863’s explicit disclosure. See Blum ’863 ¶ 91.
Appeal 2019-004839
Application 14/976,070
9
Appellant next asserts that Blum ’516 and Blum ’863 teach away
from the arrangement recited in claim 1 “by suggesting only other
arrangements.” Appeal Br. 6–7. Appellant does not identify any portion of
either reference that teaches away from the claimed arrangement, e.g., by
criticizing, disparaging, or discouraging pursuit of the claimed arrangement.
Rather, Appellant’s contention on this point appears to be based on the
unpersuasive contention, discussed above, that Blum ’516 and Blum ’863 do
not disclose a lens in accordance with the Examiner’s findings. See id. at 6.
We have considered all of Appellant’s arguments in support of the
patentability of claim 1, but find them unavailing. Accordingly, we sustain
the rejection of claim 1. Dependent claims 2, 4–22, 24, and 25 fall with
claim 1.
Rejection II–Blum ’516, Blum ’863, and Blum ’128
Appellant does not make arguments for the patentability of claim 23
aside from those discussed above regarding claim 1. See Appeal Br. 7.
Accordingly, for the same reasons, we sustain the rejection of claim 23.

CONCLUSION
The Examiner’s rejections are affirmed.

Appeal 2019-004839
Application 14/976,070
10
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–22,
24, 25
103 Blum ’516, Blum ’863 1, 2, 4–22,
24, 25

23 103 Blum ’516, Blum ’863,
Blum ’128
23
Overall
Outcome
1, 2, 4–25

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