Ex Parte Boukhny et al

Board of Patent Appeals and Interferences

Aug 8, 2012

11584996 (B.P.A.I. Aug. 8, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MIKHAIL BOUKHNY,
JAMES CHON, DAVID DOWNER, and STEVE VAN NOY
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Appeal 2011-005666
Application 11/584,996
Technology Center 3700
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Before TONI R. SCHEINER, MELANIE L. McCOLLUM, and
ERICA A. FRANKLIN, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
intraocular lens delivery system. The Examiner has rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Claims 1-29 are pending and on appeal (App. Br. 4 & 15-18).
Claims 1, 8, and 29 are representative and read as follows:
1. An intraocular lens delivery system comprising:
an injector body;
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a plunger slidably movable within the injector body;
a nozzle portion on a distal end of the injector body, the nozzle
portion having a hollow interior adapted for receiving an intraocular lens;
a heater integrated with the intraocular lens delivery system adapted to
heat the intraocular lens while the intraocular lens is external to an eye; and
a display on the injector body operable to display a visible indication
to deliver the intraocular lens into the eye while the intraocular lens is
external to the eye when the heater has heated the intraocular lens to a
predetermined temperature range.
8. The intraocular lens delivery system of claim 1 further comprising
a controller for regulating the temperature of the intraocular lens.
29. A device for delivering an intraocular lens into an eye
comprising:
an injector body;
a plunger slidably movable within the injector body;
a nozzle portion located near a distal end of the injector body, the
nozzle portion having a hollow interior capable of holding an intraocular
lens;
a heater located near the intraocular lens and adapted to heat the
intraocular lens while the intraocular lens is external to an eye;
a power source for providing power to the heater;
a controller for controlling the operation of the heater and for
generating a signal to deliver the intraocular lens; and
an interface between the heater and the controller;
wherein the controller is adapted to regulate the temperature of the
intraocular lens and to generate a signal to deliver the intraocular lens into
the eye while the intraocular lens is external to the eye in response to the
temperature of the intraocular lens having been regulated such that the
intraocular lens has been heated to a predetermined temperature range.
Claims 1-7, 11-22, and 26-28 stand rejected under 35 U.S.C. § 103(a)
as obvious over Van Gent (US 4,955,889, Sep. 11, 1990) in view of
Callahan et al. (US 2003/0033013 A1, Feb. 13, 2003) (Ans. 4).
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Claims 8-10, 23-25, and 29 stand rejected under 35 U.S.C. § 103(a) as
obvious over Van Gent in view of Callahan and Ludin et al. (US 6,193,683
B1, Feb. 27, 2001) (Ans. 6).
I
The Examiner finds:
Van Gent discloses an intraocular lens delivery system
comprising: . . . an injector body (22) and a polymer plunger
. . . slidably movable within the injector body[;] . . . a polymer
nozzle portion . . . on a distal end of the injector body . . . , the
nozzle portion . . . having a hollow interior . . . adapted for
receiving an intraocular lens . . . ; a heater (44) integrated with
the intraocular lens delivery system . . . and adapted to heat the
intraocular lens . . . ; a display on the injector body operable to
display a visible indication when the heater has heated the
intraocular lens to a predetermined temperature range ( . . .
where the shape change of part 44 is the “display” since it is a
visual indication of the heater heating the lens to a
predetermined temperature range), and a power source (50) for
providing power to the heater.
(Ans. 4-5.)
The Examiner relies on Callahan for teaching “heating . . . a lens prior
to insertion of the device within the eye” (id. at 5). The Examiner concludes
that it would have been obvious “to heat the lens prior to inserting the lens
into the eye to allow for the lens to deform to a small diameter configuration
to minimize the delivery profile of the lens, and thus reduce the size of the
corneal incision” (id.).
Issue
Does the evidence support the Examiner’s conclusion that Van Gent
teaches or suggests a display “operable to display a visible indication to
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deliver the intraocular lens into the eye while the intraocular lens is external
to the eye”?
Findings of Fact
1. Van Gent discloses an apparatus for inserting an intraocular
lens (IOL) into an eye (Van Gent, col. 5, ll. 54-56).
2. In particular, Van Gent discloses that the apparatus includes a
carrying element 44 designed “to hold IOL 12 in the desired . . .
configuration prior to releasing IOL 12 into eye 14” (id. at col. 7, ll. 1-7).
3. In addition, Van Gent discloses:
The shape memory alloy from which carrying element 44 is
made is such that at the temperature within the eye 14, the
carrying chamber 44 reverts to its original shape and opens up,
i.e., side flaps 46 and 48 separate, to allow IOL 12 to be
separated or released from carrying element 44. A heating
system 50 may optionally be included to heat carrying
element 44 to a temperature equal to or greater than the
transition temperature of carrying element 44.
(Id. at col. 7, ll. 12-20.)
Analysis
The Examiner considers the shape change of carrying element 44 to
be the display (Ans. 4). We conclude that Appellants have not adequately
explained why the Examiner’s position is in error.
Although we agree with Appellants that it would not have been
obvious to insert Van Gent’s apparatus in the eye after the shape change
(App. Br. 16), claim 1 is directed to an apparatus. We agree with the
Examiner that Van Gent’s apparatus is capable of being inserted in the eye
after the shape change and is therefore capable of providing a visible
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indication to deliver the intraocular lens into the eye while the intraocular
lens is external to the eye (Ans. 7).
Conclusion
The evidence supports the Examiner’s conclusion that Van Gent
teaches or suggests a display “operable to display a visible indication to
deliver the intraocular lens into the eye while the intraocular lens is external
to the eye.” We therefore affirm the obviousness rejection of claim 1.
Claims 2-7, 11-22, and 26-28 have not been argued separately and therefore
fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
II
In rejecting claims 8 and 29, inter alia, the Examiner additionally
relies on Ludin for teaching “a power level controller . . . , an interface (32)
between the heater (28) and the controller (38), wherein the interface
provides feedback to the controller . . . so that the controller can operate the
heater to maintain the intraocular lens within a desired temperature range”
(Ans. 6). The Examiner concludes that it would have been obvious “to
provide the invention of Van Gent and Callahan with a controller as taught
by Ludin” (id.).
With regard to claim 8, the issue raised by Appellants is the same as
for claim 1. Therefore, we affirm the obviousness rejection of claim 8 for
the reasons discussed above. Claims 9, 10, and 23-25 have not been argued
separately and therefore fall with claim 8. 37 C.F.R. § 41.37(c)(1)(vii).
With regard to claim 29, Appellants additionally argue that “the
controller described in Ludin is only shown as controlling a heater, not
generating any signal to deliver an intraocular lens” (App. Br. 17).
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However, the Examiner finds that “[o]perating the heater via the controller
automatically generates the signal to deliver the lens once the heat reaches a
predetermined range” (Ans. 7). Thus, the Examiner’s position is that the
combination would result in a controller that is adapted to regulate the
temperature and to thereby generate a signal. Appellants have not
adequately explained why the Examiner’s position is in error. Therefore, we
also affirm the obviousness rejection of claim 29.
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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