Ex Parte Altmann

Patent Trial and Appeal Board

Mar 27, 2013

11935506 (P.T.A.B. Mar. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte GRIFFITH E. ALTMANN
__________

Appeal 2012-001325
Application 11/935,506
Technology Center 3700
__________

Before LORA M. GREEN, FRANCISCO C. PRATS, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-13. We have jurisdiction under 35 U.S.C.
§ 6(b).
Appeal 2012-001325
Application 11/935,506

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STATEMENT OF THE CASE
Claims 1 and 6 are the independent claims on appeal, and read as
follows:
1. A multi-element ophthalmic lens (OL), comprising:
an anterior lens element comprising a light-adjustable material
responsive to light of a first wavelength; and
a posterior lens element comprising a light blocker capable of
blocking light of the first wavelength, the anterior lens element and the
posterior lens element being separated by a gap.

6. A method of implanting a multi-element OL, comprising:
implanting a first lens element comprising a light-adjustable material
responsive to light of a first wavelength; and
implanting a second lens element posterior to the first lens element,
the second lens element comprising a light blocker capable of blocking light
of the first wavelength.

The following grounds of rejection are before us for review:
I. Claims 1-8, 10, 11, and 13 stand rejected under 35 U.S.C. § 103(a)
as being rendered obvious by the combination of Nishi
1
and
Grubbs
2
(Ans. 4). As Appellant only separately argues
independent claims 1 and 6, the dependent claims stand or fall with
the independent claim on which they depend. 37 C.F.R.
§ 41.37(c)(1)(vii).
II. Claims 9 and 12 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Nishi and Grubbs as
further combined with Blake
3
(Ans. 6).

1
Nishi et al., US 2006/0271186 A1, published Nov. 30, 2006.
2
Grubbs et al., US 2007/0055369 A1, published Mar. 8, 2007.
3
Blake et al., US 2005/0246019 A1, published Nov. 3, 2005.
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Application 11/935,506

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We affirm.

ANALYSIS
The Examiner rejects claims 1 and 6 over the combination of Nishi
and Grubbs (Ans. 4).
The Examiner finds that Nishi discloses a multi-element intraocular
lens that comprises
an anterior lens element comprising a light-adjustable material
responsive to light of a first wavelength (paragraph 108); and a
posterior lens element (102) with a[n] accommodation material
located between the anterior and posterior lens elements
capable of comprising a light blocker capable of blocking light
of the first wavelength (paragraph 69), the anterior lens element
and the posterior lens element being separated by a gap (Fig. 5).

(Id.)
The Examiner notes that Nishi does not disclose that the posterior lens
element contains a light blocker (id.).
The Examiner finds that Grubbs teaches “an intraocular lens in the
same field of endeavor, wherein a light-adjustable lens comprises a light
blocker material for the purpose of improving UV protection (abstract and
Fig. 2 item 202)” (id. at 4-5).
According to Grubbs, while the optical characteristics of an
intraocular lens may be altered by exposure to sources of energy, such as
UV light (Grubbs, p. 1 ¶4), the UV “can potentially cause damage to the
interior of the eye” (id. at ¶8). Grubbs is thus drawn to “light adjustable
optical elements with improved UV and/or blue light protection,” wherein
the “protective layer is placed on at least one surface of the elements”
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Application 11/935,506

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(Grubbs, p. 1, ¶4). Grubbs teaches that the blocking zone may be an integral
part of the optical element, or it may be a layer that is added after
manufacture (id. at ¶12).
The Examiner concludes that as Nishi teaches that the accommodation
material has a light blocker, it would have been obvious to modify the
posterior lens of Nishi to contain a light blocker “in order to improve UV
protection” (Ans. 5).
Appellant argues that Nishi places the UV blocker, not on the
posterior lens element, but in the accommodation material that is located
between the anterior lens element and the posterior lens element (App. Br.
5). Appellant argues further that Grubbs applies the UV-blocker to the
posterior surface of a light adjustable optic, asserting that if one were to
modify the lens of Nishi in view of Grubbs, one would apply the UV-
blocker the posterior surface of the anterior, light-adjustable optic of Nishi
(id. at 5-6).
Appellant thus asserts that the only rationale for providing a UV-
blocker on the posterior lens is provided by Appellant’s own disclosure, and
is thus impermissible hindsight (id. at 6).
Appellant’s arguments are not convincing. The Supreme Court has
emphasized that “the [obviousness] analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l v. Teleflex Inc., 550 U.S.
398, 418 (2007). “If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. (Id.) Under the correct
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Application 11/935,506

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obviousness analysis, “any need or problem known in the field of endeavor
at the time of invention and addressed by the patent can provide a reason for
combining the elements in the manner claimed.” Id. at 420.
Here, we agree with the Examiner that the combination of Nishi and
Grubbs renders claim 1 obvious. As taught by Grubbs, the UV light used to
adjust a light adjustable intraocular lens may harm the interior of the eye.
Thus, the ordinary artisan would understand that it would be advantageous
to place a light blocker between the light adjustable lens and the interior of
the eye.
As found by the Examiner, Nishi teaches a dual lens intraocular lens
system, wherein there is an accommodation material between the two lens
elements. While Nishi teaches that the light blocker may be incorporated
into the accommodation material (Nishi, p. 6, ¶69), Grubbs teaches that the
blocking zone may be an integral part of the optical element, or it may be a
layer that is added after manufacture. Thus, the ordinary artisan would have
understood that the blocking layer could be integrated or coated onto the
posterior lens element of the intraocular lens system of Nishi, as it would
protect the interior of the eye from UV-radiation when UV light is used to
adjust the optical properties of the anterior lens element.
We thus affirm the rejection of claim 1.
Appellant argues as to claim 6 that the claim requires that the second
lens element comprise a light blocker, and is thus also not rendered obvious
by the combination of Nishi and Grubbs (App. Br. 6-7). That argument is
not convincing for the reasons set forth above, and we also affirm the
rejection of claim 6.
Appeal 2012-001325
Application 11/935,506

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Claims 2-5, 7, 8, 10, 11, and 13 fall with claims 1 and 6.
As to the rejection of claims 9 and 12 over the combination of Nishi,
Grubbs, and Blake, Appellant reiterates the arguments made with respect to
claim 1. Those arguments are not found to be convincing for the reasons set
forth with respect to claim 1.

SUMMARY
We affirm the rejection of claims 1-8, 10, 11, and 13 under 35 U.S.C.
§ 103(a) as being rendered obvious by the combination of Nishi and Grubbs.
We also affirm the rejection of claims 9 and 12 under 35 U.S.C. § 103(a) as
being rendered obvious by the combination of Nishi and Grubbs as further
combined with Blake.

TIME PERIOD FOR RESPONSE
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

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