Ex Parte Davies et al

Patent Trial and Appeal Board

Sep 30, 2016

13321752 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/321,752 01/05/2012
26753 7590 09/30/2016
Andrns Intellectual Property Law, LLP
100 EAST WISCONSIN A VENUE, SUITE 1100
MILWAUKEE, WI 53202
Nathaniel Davies
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.
0124-00150 3556
EXAMINER
NGUYEN, VIX
ART UNIT PAPER NUMBER
3731
MAILDATE DELIVERY MODE
09/30/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NATHANIEL DA VIES and DARIO VECCHI
Appeal2014-009157
Application 13/321,752
Technology Center 3700
Before LINDA E. HORNER, ANNETTE R. REIMERS, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Nathaniel Davies and Dario Vecchi (Appellants) appeal under 35
U.S.C. § 134(a) from the Examiner's decision to reject under 35 U.S.C.
§ 102(b) claims 1, 6, 7, and 15 as anticipated by Feingold (US 5,499,987,
iss. Mar. 19, 1996). Claims 8 and 11-14 have been withdrawn from
consideration. Claims 4, 5, 9, 10, and 16 have been cancelled. We have
1 The Examiner states, "[ c ]laims 2, 3 are objected to as being dependent upon
a rejected base claim, but would be allowable if rewritten in independent form
including all of the limitations of the base claim and any intervening claims."
Ans. 3. Claims 2 and 3 are not before us for review. See also Appeal Br. 5
("Claims 2-3 are not being appealed.").
Appeal2014-009157
Application 13/321,752
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The claimed subject matter "relates to an intraocular lens cartridge."
Spec. 1 :4, Fig. 2.
Claim 1, the sole independent claim on appeal, is representative of
the claimed subject matter and recites:
1. A cartridge adapted to store and to fold a foldable[,]
implantable medical device, the cartridge comprising:
a. a first portion; and
b. a second portion interengaged with the first portion;
wherein the first and second portions are movable relative to one
another from a storage configuration, in which interior surfaces
of the first and second portions define a storage chamber for
storing the medical device in an unfolded state, to an implanting
configuration, in which the interior surfaces of the first and
second portions together define a smooth-bored chamber for
retaining the medical device in a folded state;
wherein the first and second portions are interengaged by
a hinge, pivotably moveable relative to one another about the
hinge; and
wherein the first and second portions each comprise an
arcuate segment of the inner surface that, in the implanting
configuration, respectively define opposite halves of the smooth-
bored chamber; wherein the first portion comprises first and
second spaced plates projecting from an upper side of the arcuate
segment; and wherein the second portion comprises a third plate
projecting centrally from an upper side of the arcuate segment;
wherein the third plate of the second portion is disposed between
the first and second plates of the first portion.
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Appeal2014-009157
Application 13/321,752
ANALYSIS
Independent claim 1 recites, in relevant part, "wherein the second
portion [of the cartridge] comprises a third plate projecting centrally from
an upper side of the arcuate segment; wherein the third plate of the second
portion is disposed between the first and second plates of the first portion."
Appeal Br. 10 (Claims App.). The Examiner finds that Feingold discloses a
second portion 72 that "comprises a third plate 78 projecting centrally from
an upper side of the arcuate segment; wherein the third plate of the second
portion is disposed between the first and second plates of the first
portion[.]" Final Act. 3; see also Ans. 2-3.
Appellants contend that "the part 78 which the Examiner equates to
the 'third plate' neither 'projects centrally from an upper side of the arcuate
segment' nor 'is disposed between the first and second plates of the first
portion'." Reply Br. 3 (emphasis omitted). According to Appellants, "part
78 [of Feingold] is actually one of the arcuate segments that, together with
its opposite pair 74, defines the storage/smooth-bored chamber." Id. at 4
(emphasis omitted); see also Appeal Br. 6 ("This third plate is not the part
78 as referenced by the Examiner; rather, part 78 [of Feingold] is the
arcuate segment of the second portion.").
Feingold discloses that "[t]he movable portion 72 is defined by a
tubular portion 78 and extension 80." Feingold, 8:49-50 (emphasis
omitted), Figs. 16, 16A.
Upon review of Feingold's disclosure, a skilled artisan would not
consider tubular portion 78 of movable portion 72 of Feingold to constitute
a "third plate" as claimed. See In re Cortright, 165 F.3d 1353, 1358 (Fed.
Cir. 1999) ("Although the PTO must give claims their broadest reasonable
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Appeal2014-009157
Application 13/321,752
interpretation, this interpretation must be consistent with the one that those
skilled in the art would reach."). We agree with Appellants that tubular
portion 78 of Feingold "is the arcuate segment of the second portion."
Appeal Br. 6; see also Reply Br. 4.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of claims 1, 6, 7, and 15 as anticipated by Feingold.
DECISION
We REVERSE the decision of the Examiner to reject claims 1, 6, 7,
and 15 as anticipated by Feingold.
REVERSED
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