Ex Parte Engin et al

Board of Patent Appeals and Interferences

Jul 11, 2012

11584026 (B.P.A.I. Jul. 11, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte EMIN ENGIN, GARY A. RICHARDSON, and
CHRIS E. WAGNER
__________

Appeal 2011-006391
Application 11/584,026
Technology Center 3700
__________

Before TONI R. SCHEINER, ERIC GRIMES, and JACQUELINE
WRIGHT BONILLA, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims relating to
an intraocular lens, which the Examiner has rejected for indefiniteness and
obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
An intraocular lens (IOL) is used to replace the natural crystalline lens
of the eye when the natural lens has been damaged (Spec. 1: 25-32). Some
IOLs are multielement lens systems that allow accommodation, or focusing
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Application 11/584,026

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of the eye on objects at different distances (id. at 2: 2-7). In a two-element
IOL, for example, the lens elements can be connected to each other by
haptics that permit the lens elements to “translate relative to one another to
achieve accommodation” (id. at 2: 12-15).
Claims 1-21 are on appeal. Claim 1 is representative and reads as
follows:
1. A method of loading a multielement IOL into an injector, the IOL
having a plurality of haptics coupling a first lens element and a second lens
element, the haptics extending beyond a periphery of at least one of the first
lens element and the second lens element, the method comprising:
folding at least one of the haptics radially inward while the first lens
element and the second lens element are substantially aligned along the
optical axis; and
loading the IOL as folded into the injector.
I.
The Examiner has rejected claims 1-21 under 35 U.S.C. § 112, second
paragraph, as indefinite (Answer 3). With regard to claims 1, 9, and 15-17,
the Examiner concludes that “it is unclear if the ‘injector’ of claim 1 is the
same as the ‘inserter’ of claims 9 and 15-17” (id. at 4). Appellants argue
that claims 9 and 15-17 were amended to recite “the injector” rather than
“the inserter” (Appeal Br. 10; Reply Br. 1).
We will reverse this rejection as to claims 1 and 15-17 because, as
Appellants point out, the language the Examiner finds indefinite is no longer
part of those claims. See Amendment filed June 4, 2010, pages 3-4.
However, although the first instance of “an inserter” in claim 9 was changed
to “the injector,” the second instance of “inserter” in claim 9 (last word) was
not amended. Since Appellants have not disputed the Examiner’s
conclusion that claim 9’s inserter/injector recitation makes that claim
Appeal 2011-006391
Application 11/584,026

3
indefinite, we affirm the rejection of claim 9 (and dependent claims 10-14)
under 35 U.S.C. § 112, second paragraph.
With regard to claims 18 and 21, the Examiner concludes that “the
recitation ‘within the periphery’ is vague and indefinite since it is unclear to
what the ‘periphery’ is referring” (Answer 4).
Appellants argue that these claims are not indefinite because
“periphery,” as commonly defined and as used in the Specification, means
the outer boundary of an object (Appeal Br. 10).
We agree with Appellants that the phrase “within the periphery” does
not make claims 18 and 21 indefinite. Both of these claims depend from
claim 1, which recites “haptics extending beyond a periphery of at least one
of the first lens element and the second lens element” (claim 1). Thus, read
in the context of claim 1, “within the periphery” as recited claims 18 and 21
refers to the periphery of at least one of the two lens elements. We reverse
the rejection of claims 18 and 21 under 35 U.S.C. § 112, first paragraph.
II.
Issue
The Examiner has rejected claims 1-7 and 18-21 under 35 U.S.C.
§ 103(a) as obvious based on Brown1 and Kalb2 (Answer 4). The Examiner
finds that Brown discloses a method of facilitating the loading of a
multielement IOL into an injector by folding at least one of the haptics (id. at
4-5) but “fails to explicitly disclose the direction of folding the haptics as

1 Brown, Patent Application Publication US 2006/0047340 A1,
Mar. 2, 2006.
2 Kalb, US 4,585,457, Apr. 29, 1986.
Appeal 2011-006391
Application 11/584,026

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inwardly and loading of the IOL as folded into the injector” (id. at 5). The
Examiner finds that “Kalb teaches the insertion of an IOL including a
plurality of haptics (14) wherein prior to insertion into an injector at least
one of the haptics is drawn radially inward toward a lens element” (id.) and
concludes that it would have been obvious “to have drawn the haptic of
Brown inwardly toward a lens body, as taught by Kalb, to reduce the size of
the IOL to enable it to be inserted within the lumen of an injector” (id.).
Appellants contend that “Brown in no way suggests that a dual
element [IOL] should be inserted into an eye using an injector” (Appeal Br.
11). Appellants also contend that Kalb only briefly discusses insertion of its
lens and “Applicants submit that Kalb describes a manner of using a
conventional inserter such as forceps” (id.). Finally, Appellants contend that
“loading and injecting a lens into an eye using an injector is an intricate
process” and a skilled worker would expect that folding a dual-element lens
in a manner suggested in the art for a single-element lens would be unlikely
to be successful (id. at 11-12).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that Brown and Kalb would have
suggested the claimed method and provided a reasonable expectation of
success?
Findings of Fact
1. Brown discloses devices useful in treating an eye (Brown 2, ¶ 50).
2. Brown discloses that the device “may restore and/or maintain the
conformation and/or volume of a lens capsule that has been wholly or partly
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Appeal 2011-006391
Application 11/584,026

7
14. Kalb discloses that insertion of its device “may be accomplished
through a minimal insertion” (id. at col. 1, ll. 59-60).
Analysis
Brown discloses a multielement IOL with haptics that couple the two
lens elements together and extend beyond a periphery of the lens elements.
Brown also discloses that the haptics can be folded and that the IOL can be
placed in the eye using an injector. Kalb discloses folding the haptics of an
IOL radially inward in order to reduce its size, and placing the folded IOL
into an injector (“inserting probe 30”), to allow its placement through an
incision of minimal size. We agree with the Examiner that these disclosures
would have made it obvious to a skilled worker to fold the haptics of
Brown’s multielement IOL radially inward and to load the folded IOL into
an injector, as required by claim 1.
Appellants argue that “Brown in no way suggests that a dual element
should be inserted into an eye using an injector” (Appeal Br. 11). However,
Brown expressly suggests inserting “devices of the present invention” (FF 9)
into the eye by techniques that are known in the art including injection.
Appellants have provided no persuasive reason to conclude that this
suggestion would not have been understood to apply to Brown’s multielement
embodiments.
Appellants also argue that “Kalb only briefly discusses insertion of the
lens described therein (col. 5, lines 40-53). Kalb states that the haptics may
be retracted prior to insertion into an incision in an eye (col. 5, lines 45-49).
While it is not stated explicitly, the Applicants submit that Kalb describes a
manner of using a conventional inserter such as forceps.” (Appeal Br. 11.)
Appeal 2011-006391
Application 11/584,026

8
This argument is also unpersuasive because, as set out above, Kalb
expressly suggests placement of its IOL by putting the folded IOL into “the
lumen of inserting probe 30” (FF 12). Appellants have provided no
persuasive reason to conclude that a skilled worker would not have
understood this to describe use of an injector. Appellants’ citations to
column 5 of Kalb do not help their argument, since the Kalb reference has
only four columns.
Finally, Appellants argue that
loading and injecting a lens into an eye using an injector is an
intricate process, with adverse consequences if the lens is
damaged or poorly aligned upon insertion into an eye. One of
ordinary skill in the art would understand that, simply, folding a
lens in a manner suggested in one reference for use with a
single-element lens of a particular construction and applying the
process to a dual-element lens of another construction and then
further loading the folded dual-element lens into an injector
where the lens is to be put under much greater stresses would
be very unlikely to be successful.
(Appeal Br. 11-12.)
This argument is also unpersuasive because both Brown and Kalb
disclose that their IOLs are adapted to be rolled or folded in order to reduce
their size (see FFs 4, 7, 11, 12). Both references also describe placement of
their IOLs using an injector (see FFs 8, 9, 12). Appellants have pointed to
no evidence to support their position that the method of folding the prior art
IOLs would have been considered critical. “Attorney’s argument in a brief
cannot take the place of evidence,” In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974), and Appellants’ unsupported argument does not persuade us
that a skilled worker would not have reasonably expected to be successful in
combining the references’ teachings.
Appeal 2011-006391
Application 11/584,026

9
With regard to claims 4, 6, 18, and 21, Appellants refer to the
limitation added in each of those claims, and then simply assert for each
limitation that “[n]either Brown nor Kalb recites such a step” (Appeal Br.
12). Such arguments do not meet the requirements of 37 C.F.R.
§ 41.37(c)(1)(vii). See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(“[T]he Board [has] reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art.”). Claims 2-7 and 18-21 fall with claim 1.
The Examiner has also rejected the other claims on appeal as obvious
based on Brown and Kalb, further combined with Brady3 (claims 8-11, 15,
and 16; Answer 6), Glick ‘6924 (claims 12 and 13; Answer 7), Glick ‘7025
(claim 14; Answer 8), or Figueroa6 (claim 17; Answer 9). Appellants have
waived the opportunity to present additional arguments with respect to these
rejections (Appeal Br. 12-13). We therefore affirm them for the reasons set
out in the Answer and as discussed above.
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that
Brown and Kalb would have suggested the claimed method and provided a
reasonable expectation of success.

3 Brady et al., US 5,653,753, Aug. 5, 1997.
4 Glick et al., US 6,616,692 B1, Sept. 9, 2003.
5 Glick et al., Patent Application Publication US 2006/0238702 A1, Oct. 26,
2006.
6 Figueroa et al., US 6,336,932 B1, Jan. 8, 2002.
Appeal 2011-006391
Application 11/584,026

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SUMMARY
We reverse the rejection under 35 U.S.C. § 112, second paragraph,
with respect to claims 1-8 and 15-21, but affirm it with respect to claims
9-14. We affirm all of the obviousness rejections on appeal.
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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