Ex Parte Coleman et al

Patent Trials and Appeals Board

Apr 29, 2019

11572061 - (D) (P.T.A.B. Apr. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/572,061 05/05/2008 D. Jackson Coleman
44564 7590 05/01/2019
Bond, Shoeneck & King, PLLC
One Lincoln Center
Syracuse, NY 13202
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
606P085 (3233-03) 3626
EXAMINER
ISABELLA, DAVID J
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
05/01/2019 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte D. JACKSON COLEMAN and ADRIAN GLASSER
Appeal 2018-006157
Application 11/572,061
Technology Center 3700
Before: PHILLIP J. KAUFFMAN, JEREMY M. PLENZLER, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2018-006157
Application 11/572,061
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision to reject claims 1-6, 8, 11, 13, 14, and 74-80. Final Act. 3-6. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
Claims 1 and 11 are independent. Claim 1 is illustrative:
1. An accommodating intraocular lens (IOL) comprising:
a flexible retainer plate consisting of a material annular
region surrounding a central aperture having a diameter;
wherein the annular region has an inner surface defining
the diameter of the central aperture;
characterized by a flexibility that is sufficient to allow a
continuous accommodating movement of the IOL; and
an optical element consisting of a single optical lens
having an anterior surface and a posterior surface, disposed fully
within the aperture, and at least one of one or more flanges on
the anterior surface to prevent posterior displacement and one or
more flanges on the posterior surface to prevent anterior
displacement.
REJECTIONS
1. Claims 1-4, 8, 11, and 74-76 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Eggleston (US 2004/0148022 A 1, published
July 29, 2004).
2. Claims 5, 6, 77, and 78 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Eggleston and Anello (US 5,964,802, issued Oct.
12, 1999).
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Appeal 2018-006157
Application 11/572,061
3. Claims 13, 14, 79, and 80 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Eggeleston and Falotico (US 2003/0060877 Al,
published Mar. 27, 2003).
OPINION
Anticipation
Both independent claim 1 and independent claim 11 recite an
accommodating intraocular lens having a flexible retainer "characterized by
a flexibility that is sufficient to allow a continuous accommodating
movement of the IOL." "Accommodation," in this context, means "[t]he
process by which the refractive power of the [eye] is increased by
contraction of the ciliary muscle, producing an increased thickness and
curvature of the lens." Black's Medical Dictionary (A&C Black Pub. Ltd,
42nd edition 2010) ("Accommodation"). Accommodating intraocular lenses
as of the filing date of the underlying application did not change their
thickness or curvature in response to contraction or relaxation of the ciliary
muscle. Nevertheless, they adjusted their axial position, and thus, focus,
based on contraction or relaxation of the ciliary muscle. Spec. ,-J 9. Thus,
the words "accommodating movement of the IOL" implies movement
induced by physiological causes and not by means of a tool. See Appeal
Br. 7.
Eggleston describes an adjustable ocular implant 100 including a base
annulus 102 having a central circular opening 110; and a bi-convex lens
member 114 having annular threads for securing the lens member in the
central circular opening through the base annulus. Eggleston ,-J,-J 81, 82, Fig.
12A. Eggleston teaches forming the base annulus 102 from a resilient and
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Appeal 2018-006157
Application 11/572,061
somewhat flexible material "for introduction into the eye through an
incision." Eggleston ,i 81. The lens member 114 has an opening 118 for
insertion of a tool to rotate the lens member within the central circular
opening 110 through the base annulus 102. Rotation of the lens member 114
facilitates axial displacement of the lens member within the central circular
opening 110 through the base annulus 102, thereby adjusting the focus of the
lens member. Eggleston ,i 82.
The Examiner finds that Eggleston's base annulus 102 satisfies the
limitations relating to the "flexible retainer plate" recited in claims 1 and 11.
Final Act. 3. In particular, the Examiner correctly finds that Eggleston's
adjustable ocular implant is capable of changing focus after implantation.
Ans. 3 ( citing Eggleston ,i 81 ). Nevertheless, the Examiner has not shown
that Eggleston's implant is capable of changing focus by accommodation,
that is, through physiological processes such as the contraction and
relaxation of the ciliary muscle. Appeal Br. 7-8. Furthermore, Eggleston's
teaching to form the base annulus from a resilient and somewhat flexible
material "for introduction into the eye through an incision" (Eggleston ,i 81)
does not imply that the base annulus is sufficiently flexible to undergo a
different process, namely, accommodation. Therefore, the Examiner has not
shown that Eggleston's base annulus 102 is "characterized by a flexibility
that is sufficient to allow a continuous accommodating movement of the
IOL," as recited in claims 1 and 11. Appeal Br. 8-9. The Examiner has not
shown that Eggleston describes an accommodative IOL satisfying all
limitations of independent claim 1 or independent claim 11.
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Appeal 2018-006157
Application 11/572,061
For at least these reasons, we do not sustain the Examiner's decision
to reject claims 1-4, 8, 11, and 74-76.
Obviousness
With respect to claims 5, 6, 77, and 78, Anello describes an IOL
inluding haptic 2 formed of a flexible material. Haptic 2 has an internally
threaded central aperture 3 for receipt of optic 4. Anello, 5:47-54; Fig. 1.
The astigmatic correction provided by the IOL may be adjusted post-
operatively by using adjustment probe 8 to rotate optic 4 within central
aperture 3 of haptic 2 to adjust the focus of the IOL, in a manner reminiscent
of that described by Eggleston. Anello, 6:1-12. The Examiner cites Anello
as teaching an IOL having an aspherical lens. Final Act. 5 ( citing Anello,
1:47-51). Appellants correctly point out that Anello fails to remedy the
deficiencies in Eggleston's teachings as applied to parent claims 1 and 11.
Appeal Br. 9-10. For at least these reasons, we do not sustain the
Examiner's decision to reject claims 5, 6, 77, and 78.
With respect to claims 13, 14, 79, and 80, Falotico describes a
medicated intravascular stent. Falotico ,-J,-J 75, 79. The Examiner cites
Falotico as describing coating medical devices, including IOLs, with
therapeutic and pharmaceutical agents. Final Act. 6 ( citing Falotico ,-J,-J 68,
70). Appellants correctly point out that Anello fails to remedy the
deficiencies in Eggleston's teachings as applied to parent claims 1 and 11.
Appeal Br. 10. For at least these reasons, we do not sustain the Examiner's
decision to reject claims 13, 14, 79, and 80.
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Application 11/572,061
DECISION
We REVERSE the Examiner's decision to reject claims 1-6, 8, 11,
13, 14, and 74-80.
REVERSED
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