Ex Parte DownerDownload PDFPatent Trial and Appeal BoardJul 28, 201611675380 (P.T.A.B. Jul. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111675,380 02/15/2007 26356 7590 08/01/2016 ALCON IP LEGAL 6201 SOUTH FREEWAY FORT WORTH, TX 76134 FIRST NAMED INVENTOR David A. Downer 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. PAT903233-US-NP 6201 EXAMINER TANNER, JOCELIN C ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 08/01/2016 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 following e-mail address( es): patent. docketing@alcon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID A. DOWNER Appeal2014-006278 Application 11/675,380 Technology Center 3700 Before JAMES P. CAL VE, GEORGE R. HOSKINS, and ARTHUR M. PESLAK, Administrative Patent Judges. HOSKINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE David A. Downer ("Appellant") 1 appeals under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1, 5-9, 13-15, and 18-28 in this application. The Board has jurisdiction over the appeal under 35 U.S.C. § 6(b ). We REVERSE. 1 The Appeal Brief identifies Novartis AG as the real party in interest. Appeal Br. 2. Appeal2014-006278 Application 11/675,380 CLAIMED SUBJECT MATTER Claims 1, 6, and 7 are independent. Claim 1 illustrates the subject matter on appeal, and it recites: 1. An intraocular lens delivery system, comprising: a) a cartridge comprising a slot; b) a tubular handpiece having an interior wall; c) a plunger having an attached distally extending plunger rod, the plunger being sized and shaped to reciprocate within the tubular handpiece; and d) a sliding block having a groove, the groove sized and shaped to fit over the plunger rod; wherein forward movement of the sliding block within the slot of the cartridge also causes movement of the plunger rod and plunger, wherein the sliding block is frictionally engaged with the plunger rod so that movement of the sliding block causes movement of the plunger rod; wherein the sliding block is configured to be pushed forward until a button on the sliding block reaches a distal end of the slot configured to limit travel of the sliding block; \~1herein fi1rther fof'l{ard movement of the plunger rod after the sliding block reaches the distal end of the slot is accomplished by pressing on an end cap of the plunger; wherein during the further movement of the plunger rod, the sliding block acts as a stiffener to reduce bending and buckling of the plunger rod. REJECTIONS ON APPEAL Claims 1, 5, 7-9, 14, 15, 18, 23, 25, and 28 2 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Feingold (US 6,056,757, issued May 2, 2000) and Lee (US 6,276,014 Bl, issued Aug. 21, 2001). 2 The Office Action on appeal additionally includes claim 26, but provides no analysis for claim 26 (Final Act. 2--4), and also cites Huang in rejecting claim 26 (id. at 5-6). Thus, we do not include claim 26 in this list. 2 Appeal2014-006278 Application 11/675,380 Claims 6, 20, 21, and 27 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Feingold, Lee, and Binder (US 6,607,537 Bl, issued Aug. 19, 2003). Claims 13, 19, 24, and 26 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Feingold, Lee, and Huang (US 6,163,963, issued Dec. 26, 2000). Claim 22 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Feingold, Lee, Binder, and Huang. ANALYSIS A. Obviousness based on Feingold and Lee In rejecting claim 1, the Examiner finds Feingold discloses a lens delivery system including plunger rod 216 reciprocating within cartridge 213 and tubular handpiece 230. Final Act. 2; see Feingold, Figs. 1-2. The Examiner finds Feingold lacks any structure corresponding to the sliding block of claim 1. Final Act. 2--'3. The Examiner relies on Lee as disclosing a sliding block (i.e. blade holder 71) sized and shaped to fit over a plunger rod (i.e. blade 73) and reciprocating within a tubular handpiece. Id. at 3; see Lee, Fig. 2. The Examiner finds Lee's sliding block 71 includes a groove that frictionally couples sliding block 71 to plunger rod (blade) 73, as well as button 72 manipulated within a slot formed within casing 20, such that button 72 is pushed to move sliding block 71 and plunger rod 73 in and out of casing 20. Final Act. 3. The Examiner determines it would have been obvious to provide Feingold's cartridge 213 with a slot and a sliding block, as taught by Lee, to provide another means to actuate Feingold's plunger rod 216. Id. According to the Examiner: 3 Appeal2014-006278 Application 11/675,380 With this modification, the plunger rod [216] will be coupled to the sliding block and actuation button through a slot within the cartridge [213]. The sliding block is capable of being pushed forward until a button on the sliding block reaches a distal end of the slot to limit travel of the sliding block. By removing the button, further forward movement of the plunger rod [216] after the sliding block reaches the travel limit is accomplished by pressing on an end cap [218] of the plunger [216]. During the forward movement of the plunger rod [216] the sliding block is capable of acting as a stiffener to reduce bending and buckling of the plunger rod [216]. Final Act. 3--4 (emphasis added). Appellant argues Lee does not teach, as recited in claim 1, sliding block 71 being pushed forward until button 72 reaches a distal end of the slot to limit travel of the sliding block, "wherein further forward movement of the plunger rod [blade 73 3] after the sliding block reaches the distal end of the slot is accomplished by pressing on an end cap of the plunger." Appeal Br. 7 (emphasis removed). Appellant asserts Lee's sliding block 71 "does not allow movement of a plunger rod [blade 73] once the thumb piece 72 reaches a distal end of a slot." Id. (emphasis added). Appellant similarly contends "Lee does not teach independent movement of the blade [73] relative to the thumb piece [71, 72]." Id. (emphasis removed). Based on these considerations, Appellant contends the cited prior art fails to teach a sliding block moving a plunger rod, and then allowing the plunger rod to 3 Appellant does not concede Lee's blade 73 may be considered a "plunger rod" as claimed. Appeal Br. 7 ("the thumb piece 72 of Lee does not move a plunger rod"). Given our decision that the Examiner errs in another fashion, we need not consider whether the Examiner additionally errs in that particular finding. 4 Appeal2014-006278 Application 11/675,380 slide relative to the sliding block when the sliding block reaches a distal end of a slot to limit travel of the sliding block, as recited in claim 1. Id. at 7-8. In response, the Examiner determines: "[A ]s taught by Lee, the system of Feingold would be capable of providing forward movement the length of the slot," and "[ w ]hen the end cap [218] of the plunger [216] of Feingold is pushed,further forward movement would be provided." Ans. 10 (emphasis added). We are persuaded of Examiner error. Lee's sliding block 71 frictionally engages plunger rod (blade) 73 via engaging piece 713 of sliding block 71 being received within one of two recesses 732 and 734 of plunger rod 73. Lee, Fig. 2, 2:20-33. This engagement is sufficiently secure that plunger rod (blade) 73 "may be used for cutting." Id. at 2:25-27. A person of ordinary skill in the art would understand that when further travel of Lee's sliding block 71 is limited by a distal end of a slot within Feingold's cartridge 213, Lee's disclosed engagement between sliding block and plunger rod would prevent the "further forward movement" of Feingold' s plunger rod 216 recited in claim 1, even if one were to press on end cap 218 of plunger rod 216. Lee's sliding block 71 would have to be modified to re- configure the engagement between sliding block and plunger rod to allow the recited further forward movement. The Examiner's rejection does not provide any findings or reasoning to establish the obviousness of making such a modification to Lee's sliding block when added to Feingold. The Examiner refers to "removing the button [72]" from Lee's sliding block 71 to accomplish the claimed "further forward movement" of the plunger rod. Final Act. 3--4. However, Lee does not disclose any such removal of button 72 from sliding block 71, and it is not clear how such 5 Appeal2014-006278 Application 11/675,380 removal could be accomplished short of a complete disassembly of Lee's entire device. Moreover, the Examiner's reasoning ignores the claim requirement that the further forward movement of the plunger rod occurs "after the sliding block reaches the distal end of the slot," wherein the distal end is "configured to limit travel of the sliding block" in the forward direction. Appeal Br. 14 (Claims App.) (emphasis added). It is the interaction between Lee's button 72 and the surrounding casing 30, 40 that limits further travel of sliding block 71, and removal of button 72 would free up sliding block 71 for further forward travel. Thus, the Examiner's proposed removal of button 72 would not result in the claimed invention, which requires that the forward movement of the sliding block be limited at the distal end of the slot. For the foregoing reasons, we conclude the Examiner errs in determining claim 1 would have been obvious over Feingold and Lee. The final three limitations of independent claim 7 are substantially the same as the final three limitations of claim 1. The Examiner's consideration of claim 7, and of claims 5, 8, 9, 14, 15, 18, 23, 25, and 28-which depend from either claim 1 or claim 7----does not correct the deficiencies noted above. Final Act. 2--4. Thus, we do not sustain the rejection of claims 1, 5, 7-9, 14, 15, 18, 23, 25, and 28 as unpatentable over Feingold and Lee. B. Obviousness based on Feingold, Lee, and Binder The final three limitations of independent claim 6 are substantially the same as the final three limitations of claim 1. The Examiner's consideration of claim 6, and its dependent claims 20, 21, and 27, in view of Feingold, Lee, and Binder, does not correct the deficiencies noted above. Final Act. 4--5. 6 Appeal2014-006278 Application 11/675,380 Thus, we do not sustain the rejection of claims 6, 20, 21, and 27 as unpatentable over Feingold, Lee, and Binder. C. Obviousness based on Feingold, Lee, and Huang The Examiner's consideration of claims 13, 19, 24, and 26, each depending from independent claim 1 or independent claim 7, in view of Feingold, Lee, and Huang, does not correct the deficiencies noted above. Final Act. 5-6. Thus, we do not sustain the rejection of claims 13, 19, 24, and 26 as unpatentable over Feingold, Lee, and Huang. D. Obviousness based on Feingold, Lee, Binder, and Huang The Examiner's consideration of claim 22, which depends from independent claim 6, does not correct the deficiencies noted above. Final Act. 6-7. Thus, we do not sustain the rejection of claim 22 as unpatentable over Feingold, Lee, Binder, and Huang. DECISION The Examiner's decision to reject claims 1, 5-9, 13-15, and 18-28 is not sustained. REVERSED 7 Copy with citationCopy as parenthetical citation