Ex Parte Griffith et al

Patent Trial and Appeal Board

Apr 24, 2017

11203685 (P.T.A.B. Apr. 24, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/203,685 08/12/2005 May Griffith 026322-003310US 7972
83141 7590 04/26/2017
ForSight/NexisVision & KTS - JCN
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
LEVINE, JOSHUA H
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
04/26/2017 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):
ipefiling@kilpatricktownsend.com
KT S Docketing2 @ kilpatrick. foundationip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAY GRIFFITH, DAVID J. CARLSSON, FENGFU LI,
YUWEN LIU, J. CHRISTOPHER MARMO, and
MEHRDAD ASMANRAFAT1
Appeal 2015-005662
Application 11/203,685
Technology Center 3700
Before BRADLEY R. GARRIS, GEORGE C. BEST, and MICHAEL G.
McMANUS, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to35U.S.C. § 134, Appellants appeal from the Examiner’s
rejections under 35 U.S.C. § 103(a) of independent claims 9 and 45 as
unpatentable over Bruns (US 4,581,030, issued Apr. 8, 1986) in view of
Dapper (US 5,487,895, issued Jan. 30, 1996) andNigam (US 2002/0107566
Al, published Aug. 8, 2002) and of remaining dependent claims 10, 12, 14,
1 The Ottawa Health Research Institute, National Research Council of
Canada, and Forsight Labs, LLC are identified as the real parties in interest.
Br. 2.
Appeal 2015-005662
Application 11/203,685
15, 17, 19—23, 25—28, 30-33, 35, 36, 47-49, 51 and 53—58 as unpatentable
over these references alone or in combination with additional prior art. We
have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appellants claim a vision enhancing ophthalmic device comprising
collagen crosslinked with amide bonds (independent claim 9) as well as a
corneal onlay comprising collagen having zero-length bond crosslinking
(independent claim 45).
A copy of representative claim 9, taken from the Claims Appendix of
the Appeal Brief, appears below.
9. A vision enhancing ophthalmic device formed to have an
optical power, wherein the device comprises between about 5% (w/w)
and about 50% (w/w) collagen and is obtained by a process
comprising
a) providing an aqueous solution comprising collagen;
b) cross-linking the collagen with amide bonds; and then
c) curing the cross-linked collagen in a mould;
thereby forming an ophthalmic device sized and shaped with
corrective curvature and having optical clarity and tensile strength
suitable for enhancing vision by implantation in or around the cornea
of an eye.
Appellants’ arguments are focused on the amide bond crosslinking
requirement of the independent claims and repeatedly refer to claim 9
specifically (Br. 4—10). Appellants do not present separate arguments
specifically directed to the dependent claims {id.). Therefore, the dependent
claims will stand or fall with their parent independent claims, of which claim
9 is representative.
We will sustain the Examiner’s § 103 rejections for the reasons
expressed in the Final Action, the Answer, and below.
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Appeal 2015-005662
Application 11/203,685
The Examiner finds that Bruns fails to disclose the amide bond cross-
linking feature of the independent claims (Final Action 3 4) but concludes
that it would have been obvious to effect the desired collagen crosslinking of
Bruns’ corneal prosthesis via amide bonding in view of Dapper {id. at 4).2
Appellants argue that Dapper is from a non-analogous art (Br. 8—9),
stating “[a] person of ordinary skill in the art who wanted to improve a
permanent ophthalmic device according to Bruns would not look to
[Dapper’s] technology that is deliberately constructed to be non-permanent”
{id. at 9).
There is questionable merit in Appellants’ belief that Dapper’s
technology is deliberately constructed to be non-permanent for the reasons
detailed by the Examiner (Ans. 8—9), which reasons are not challenged by
Appellants (i.e., no Reply Brief has been filed). Regardless, art is analogous
to the claimed invention if it is “reasonably pertinent to the particular
problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004). Appellants are involved with the problem of cross-
linking collagen (Spec. 19—20). The Dapper reference is reasonably
pertinent to this problem because the reference discloses crosslinking
collagen (Dapper col. 1,11. 23—36 (cited, e.g., at Final Action 4 and Ans. 9))
using EDC (Dapper col. 4,11. 6—11, col. 5,11. 5—12, col. 6,11. 26—31, 55—63
(cited, e.g., at Final Action 4 and Ans. 9—11)) which produces the claimed
amide bond crosslinking according to Appellants’ Specification (Spec. 19—
20).
2 Because Appellants do not contest the Examiner’s proposed combination
of Bruns and Nigam {see Br. 4—10), we will not address this aspect of the
rejection.
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Appeal 2015-005662
Application 11/203,685
Appellants also contend that “a person of ordinary skill in [] reading
Dapper would not have a reasonable expectation that zero-length cross-
linking could lead to an ophthalmic device of any permanence” (Br. 9).
Appellants provide no evidence in support of this contention. On the
other hand, Bruns expressly teaches “chemically crosslinking the [collagen]
gel. . . with a fixing agent, many of which are known, such as a solution of
formaldehyde and/or glutaraldehyde[;] [hjowever, any other well-known
method for fixing the gel is suitable” (Bruns col. 3,11. 26—33 (cited, e.g., at
Final Action 3 and Ans. 10)).3 This express teaching in combination with
Dapper provides a reasonable expectation that Bruns’ desired crosslinking of
collagen would be successfully achieved using the known EDC agent for
crosslinking collagen disclosed by Dapper.
Appellants also contest the rejection by stating that Dapper’s collagen
substrate provides controlled release of bioactive agents by crosslinking
collagen only at or near the surface whereas an ophthalmic device of the
type claimed would be crosslinked throughout (Br. 7—8).
However, Appellants to not explain why these aspects of Dapper’s
invention undermine the Examiner’s proposed combination of Bruns and
Dapper. In this regard, we emphasize that the Examiner proposes using the
EDC crosslinking agent of Dapper to achieve the crosslinking desired for
Bruns’ corneal prosthesis (i.e., an ophthalmic device of the type claimed by
Appellants). Contrary to Appellants’ implication, the Examiner does not
3 We observe that Appellants, similar to Bruns, disclose crosslinking
collagen “using any smaller polymeric, collagen-reactive agent or molecule”
(Spec. 19:19—20) including glutaraldehyde (id. at 20:13—14).
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Appeal 2015-005662
Application 11/203,685
propose modifying the corneal prosthesis of Bruns so as to possess the
controlled-release and limited-crosslinking features of Dapper.
Finally, Appellants argue “[unexpected benefits are shown for this
invention right in the specification as filed” (Br. 10). According to
Appellants, “[c]ontrary to what would be expected from the prior art, this
application demonstrates that zero-length bonds between collagen fibers are
possible and effective in manufacturing an ophthalmic device” (id.).
The deficiency of this argument is that Appellants do not identify any
evidence showing the subject matter defined by the independent claims
possesses benefits that would not have been expected by one with ordinary
skill in this art. For example, and as previously indicated, Appellants proffer
no evidence that the EDC crosslinker of Dapper would not have been
expected by those skilled in this art to achieve the crosslinking desired for
Bruns’ corneal prosthesis.
For the reasons stated above and given by the Examiner, we sustain
the § 103 rejections advanced in this appeal.
The decision of the Examiner is affirmed.
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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