Ex Parte Graney et al

Board of Patent Appeals and Interferences

Feb 24, 2011

10954322 (B.P.A.I. Feb. 24, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ANITA M. GRANEY, GRAHAM W. BIDDLE,
THOMAS LODADIO and WILLIAM J. APPLETON
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Appeal 2010-003255
Application 10/954,322
Technology Center 1700
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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other pending claims, stand withdrawn from consideration by the Examiner.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).
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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
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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).
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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
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