Ex Parte Azar

Board of Patent Appeals and Interferences

Apr 14, 2011

11415688 (B.P.A.I. Apr. 14, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DIMITRI AZAR
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Appeal 2009-010272
Application 11/415,688
Technology Center 3700
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Before JOHN C. KERINS, STEVEN D.A. McCARTHY, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Dimitri Azar (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision finally rejecting claims 1-20 under 35 U.S.C. § 112,
first paragraph, as failing to comply with written description and enablement
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requirements.1 We have jurisdiction under 35 U.S.C. § 6(b). We
REVERSE.
The Invention
The claims on appeal relate to vision prostheses.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A vision prosthesis comprising:
an intra-ocular lens system having focal
length that varies in response to a change
in an index of refraction, the intra-ocular
lens system comprising a lens element
with no moving parts; and
a controller for causing a change in the focal
length thereof, the extent of the change
being dependent on an estimate of a
distance to an object of regard.

OPINION
Written Description Rejection
In light of the Appellant’s arguments and the Examiner’s position, the
determinative issue for this ground of rejection is whether the Examiner has
presented sufficient evidence or reasons in order to find that a person having
ordinary skill in the art would not have recognized that the written
description of the invention, as filed, provides support for the claims.
The Examiner asserts that the Specification only describes a lens with
no moving parts as compared to the claims that recite an intraocular lens
system comprising a lens element with no moving parts. Ans. 3 and see

1 The Examiner withdrew the rejection of claims 1-20 under 35 U.S.C.
§ 112, second paragraph. Ans. 2.
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Ans. 4-5. The Examiner posits that the term “lens element” is broader than
“lens” and, as such, may be interpreted as lens or any part or element related
to a lens. Ans. 4. The Examiner further posits that since the Specification
describes the vision prosthesis as comprising multiple lens element parts
which move and move relative to one another, it is unclear how a lens
element may comprise no moving parts. Ans. 4.
The Appellant contends that the Examiner’s interpretation of “lens
element” is inconsistent with the plain meaning and how a person having
ordinary skill in the art would understand the claim. App. Br. 4. Appellant
argues that, when reading the claim limitation directed to the “intra-ocular
lens system,” the term “lens element” is intended to indicate that the lens is
an “element” of the “intra-ocular lens system.” Id. Thus, Appellant argues
that the “lens element” “is simply one of possibly many elements of an intra-
ocular lens system that happens to be a ‘lens’.” Id. The Appellant counters
that the Examiner’s position that the “lens element” should be interpreted as
related or attached to a lens, should not be so, but rather should “simply be
other elements of claim l’s ‘intra-ocular lens system’.” App. Br. 5. As such,
Appellant asserts that the proper interpretation for the claimed intra-ocular
lens system would be a system that could include many other elements,
some of which may or may not have moving parts, but the system “would
always include a ‘lens element with no moving parts’.” Id.
We note that there is a strong presumption that an adequate written
description of the claimed invention is present in the Specification as filed.
The Examiner has the initial burden of presenting evidence or reasoning to
explain why persons skilled in the art would not recognize in the original
disclosure a description of the invention defined by the claims. See In re
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Wertheim, 541 F.2d 257, 263 (CCPA 1976). Claim construction is an
essential element in determining adequacy of the written description. See
e.g., MPEP § 2163.
Here, we note that original filed dependent claim 7 further recited that
the intra-ocular lens system comprised “a first lens element; a second lens
element moveable relative to the first lens element; and a motor coupled to
the second lens element for moving the second lens element relative to the
first lens element.” Spec. 15, lines 18-22. As such, the phrase “lens
element” was present in the Specification as filed. We note that the second
lens element is coupled to a motor in order for it to be moved relative to the
first lens element. See also Spec. 3, lines 13-15. We also note that the
Specification discloses using a lens filled with nematic liquid-crystal so that
when an electric or magnetic field is applied the index of refraction of the
lens varies in response thereto. Spec. 7-8.
The Examiner has not provided sufficient evidence or persuasive
reasoning, that given the Specification as originally filed as noted above, the
claimed “lens element” feature is precluded from having no moving parts to
counter the Appellant’s argument that the “element” term within the claimed
“lens element” feature would be intended to indicate that the lens is an
“element” of the “intra-ocular lens system” and the element would have no
moving parts. See App. Br. 4-5.
Moreover, a pending claim is given the broadest reasonable
construction consistent with the specification and should be read in light of
the specification as it would be interpreted by a person having of ordinary
skill in the art. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004). Given the Examiner’s interpretation and the Appellant’s
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interpretation, noted above, we conclude that the Appellant’s interpretation
provides the broadest reasonable interpretation in light of the Specification
as it would be interpreted by a person having ordinary skill in the art, viz.,
the lens element claimed is an element of the intra-ocular lens system which
may include more elements that may or may not have moving parts, but will
“always include a ‘lens element with no moving parts’.” App. Br. 5.
Enablement Rejection
Recently our reviewing court re-established that under its
jurisprudence that Ҥ 112, first paragraph, contains a written description
requirement separate from enablement.” Ariad Pharmas., Inc. v. Eli Lilly &
Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). As such, the Examiner erred in
integrating the Examiner’s finding of lack of adequate written description
for the claimed subject matter to the conclusion of lack of enablement of the
claim recitation of “a lens element with no moving parts.”
Addressing the Examiner’s other concern with respect to the lack of
enablement of an index of refraction which changes due to the focal length
varying while the lens element contains no moving parts, thus it being
unclear to the Examiner how such a feature is enabled, Ans. 3-4, the
determinative issue is whether the Examiner established a reasonable basis
to question the enablement provided for the claimed invention.
The standard for determining whether the Specification meets the
enablement requirement was cast in the Supreme Court decision of Minerals
Separation v. Hyde, 242 U.S. 261, 270 (1916), which postured the question:
is the experimentation needed to practice the invention undue or
unreasonable? That standard is still the one to be applied. See In re Wands,
858 F.2d 731, 737 (Fed. Cir. 1988). While the Wands factors are not
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dispositive, an evaluation using the factors is the strongest manner for the
Examiner to provide a reasonable basis to establish doubt of the enablement
of a claimed invention, since the Federal Circuit has adopted the Wands
factors to evaluate whether a disclosure would require undue
experimentation, see In re Wands, 858 F.2d at 737 (listing the factors), since
the Examiner has the initial burden to establish a reasonable basis to
question the enablement provided for the claimed invention, In re Wright,
999 F.2d 1557, 1562 (Fed. Cir. 1993), and since, “[w]hether undue
experimentation is needed is not a single, simple factual determination, but
rather is a conclusion reached by weighing many factual considerations.” In
re Wands, 858 F.2d at 737.
Here, the Examiner has failed to provide a cogent explanation as to
why the scope of protection provided by these claims is not adequately
enabled by the description of the invention provided in the Appellant’s
Specification. In particular, the Examiner has failed to sufficiently show
why the Appellant’s disclosure would require undue experimentation in
order to make and use the claimed invention. Instead, the Examiner
provided statements concerning how the index of refraction is to change by
re-orientation of “directors” of the nematic crystal, and how it is unclear to
the Examiner how the index could be changed without moving parts. Ans.
4. However, the Examiner failed to consider the disclosures in question with
a weighing (any, some, or all) of the following factual considerations: (A)
The breadth of the claims; (B) The nature of the invention; (C) The state of
the prior art; (D) The level of one of ordinary skill; (E) The level of
predictability in the art; (F) The amount of direction provided by the
inventor; (G) The existence of working examples; and (H) The quantity of
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experimentation needed to make or use the invention based on the content of
the disclosure. See In re Wands, 858 F.2d at 737. As such, the Examiner
has failed to show lack of enabling disclosure.

CONCLUSION
In view of the foregoing, we determine that the Examiner failed to
establish the initial burden of presenting evidence or reasoning to explain
why persons skilled in the art would not recognize in the original disclosure
a description of the invention defined by the claims and a reasonable
explanation as to why the scope of protection provided by these claims is not
adequately enabled by the description of the invention provided in the
Appellant’s Specification.

DECISION
We reverse the Examiner’s decision to reject claims 1-20 under 35
U.S.C. § 112, first paragraph.

REVERSED

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