Ex Parte Graney et alDownload PDFBoard of Patent Appeals and InterferencesFeb 24, 201110954322 (B.P.A.I. Feb. 24, 2011) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte ANITA M. GRANEY, GRAHAM W. BIDDLE, THOMAS LODADIO and WILLIAM J. APPLETON ________________ Appeal 2010-003255 Application 10/954,322 Technology Center 1700 ________________ Before ADRIENE LEPIANE HANLON, CHUNG K. PAK and TERRY J. OWENS, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-4, 6-10 and 12-32. Claims 44-75, which are all of the 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2010-003255 Application 10/954,322 other pending claims, stand withdrawn from consideration by the Examiner. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim an intraocular lens injecting molding apparatus. Claim 1 is illustrative: 1. Apparatus for injection molding an intraocular lens having first and second optics, said apparatus comprising: a) a first optic cavity for forming said first optic; b) a second optic cavity for forming said second optic; c) a first sub-runner in fluid communication with said first optic cavity; d) a second sub-runner in fluid communication with said second optic cavity; and e) one more haptic cavities extending between and in fluid communication with said first and second optic cavities, said one or more haptic cavities configured to form one or more haptics extending between and interconnecting said first and second optics, respectively. The References Saito 6,210,610 B1 Apr. 3, 2001 Kyburz 7,217,112 B2 May 15, 2007 (filed May 27, 2003) The Rejections The claims stand rejected as follows: claims 1-4, 6-10, 12 and 16-19 under 35 U.S.C. § 102(e) over Kyburz, claims 13-15 under 35 U.S.C. § 103 over Kyburz, and claims 20-22 and 24-32 under 35 U.S.C. § 103 over Kyburz in view of Saito.2 2 Claim 23 is not rejected. A rejection of claims 1-4, 6-10 and 12-29 under 35 U.S.C. § 103 over Richardson (US 2006/0001186 A1) in view of Saito is withdrawn in the Examiner’s Answer (Ans. 3). 2 Appeal 2010-003255 Application 10/954,322 OPINION We reverse the rejections. Issue Have the Appellants indicated reversible error in the Examiner’s determination that Kyburz discloses first and second sub-runners? Findings of Fact and Analysis The Examiner has the initial burden of establishing a prima facie case of anticipation by pointing out where all of the claim limitations appear, either expressly or inherently, in a single reference. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1255-56 (Fed. Cir. 1989); In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986). Kyburz discloses an intraocular lens injection molding apparatus comprising first and second optic cavities (lens cavities 34, 36) in fluid communication with three haptic cavities (38, 40, 42) (col. 2, ll. 30-38). The Examiner argues that the unnumbered horizontal piece on the right side of Kyburz’s Figure 6A is Kyburz’s material flow gate 30 (col. 2, ll. 30-34), and that the curved structure between that piece and the lens cavities (34, 36) corresponds to first and second sub-runners (Ans. 11-13). The Appellants argue that Kyburz discloses at column 3, lines 12-18 that Figures 6A and 6B show different haptic cavity shapes and connection locations, and that in view of that disclosure the curved structure relied upon by the Examiner as being first and second sub-runners appears instead to be a haptic cavity (Br. 6). Kyburz discloses that “the haptic cavities 38, 40, 42 could have an accordion cross-sectional shape 82” (col. 3, ll. 16-18). The accordion 3 Appeal 2010-003255 Application 10/954,322 shaped structure in Figure 6B which Kyburz discloses is a haptic cavity corresponds to the curved structure in Figure 6A relied upon by the Examiner as being first and second sub-runners (Ans. 13). Thus, Kyburz indicates that the Examiner erred in considering that haptic cavity to be two sub-runners. In further response to the Appellants’ argument the Examiner relies upon Kyburz’s Figure 4 which, the Examiner argues, shows a primary runner (vertical dotted lines) and first and second sub-runners which are associated with mold cavities 54 and 56 and branch off in the horizontal dotted line region from the primary runner (Ans. 14-15). Kyburz discloses that “in FIG. 4, the material flow gate 30 is formed by a groove 76 in one of the blocks 44” (col. 3, ll. 6-8). Thus, even if, as argued by the Examiner, the vertical dotted portion of Kyburz’s Fig. 4 can be considered a primary runner, Kyburz discloses only one sub-runner (groove 76), not two sub-runners as required by the Appellants’ claims. The Examiner argues that Kyburz’s disclosures that “[a] molding material 84 is flowed through gate 30 into any one or more of the one mold core cavities” (col. 3, ll. 20-22) and that “[t]he material flow gate 30 can also be in communication with multiple mold core cavities, including the haptic cavities 38, 40, 42” (col. 2, ll. 34-36) indicate that Kyburz’s apparatus is capable of defining first and second sub-runners (Ans. 4, 11-12). The Appellants argue that Kyburz discloses only a single flow gate (30) in communication with either a single cavity (lens cavity 36; Fig. 3A) or multiple cavities (lens cavity 36 and haptic cavity 38; Fig. 3B), and does not disclose first and second sub-runners (Br. 5-6; Reply Br. 5). 4 Appeal 2010-003255 Application 10/954,322 In response to that argument the Examiner relies upon the Examiner’s interpretation of Kyburz’s Figure 6A discussed above (Ans. 11-12). As pointed out above, Kyburz indicates that the Examiner’s interpretation of that figure is incorrect. With respect to the rejections under 35 U.S.C. § 103 the Examiner does not argue that first and second sub-runners would have been prima facie obvious to one of ordinary skill in the art over the applied references (Ans. 7-9). Conclusion The Appellants have indicated reversible error in the Examiner’s determination that Kyburz discloses first and second sub-runners. DECISION/ORDER The rejections of claims 1-4, 6-10, 12 and 16-19 under 35 U.S.C. § 102(e) over Kyburz, claims 13-15 under 35 U.S.C. § 103 over Kyburz, and claims 20-22 and 24-32 under 35 U.S.C. § 103 over Kyburz in view of Saito are reversed. It is ordered that the Examiner’s decision is reversed. REVERSED tc Bausch & Lomb Incorporated One Bausch & Lomb Place Rochester NY 14604-2701 5 Copy with citationCopy as parenthetical citation