Ex Parte Huynh

Board of Patent Appeals and Interferences

Aug 3, 2012

11431727 (B.P.A.I. Aug. 3, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HUONG K. HUYNH
____________

Appeal 2011-008332
Application 11/431,727
Technology Center 3700
____________

Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
ERICA A. FRANKLIN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1 and 2 (App. Br.
4; Reply Br. 4; Ans. 2). We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to an intraocular lens delivery system. Claim
1 is representative and is reproduced in the Claims Appendix of Appellant’s
Brief.

Appeal 2011-008332
Application 11/431,727

2
Claims 1 and 2 stand rejected under the written description provision
of 35 U.S.C. § 112, first paragraph.
Claims 1 and 2 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Bessiere.
1

We affirm.

Written Description:
ISSUE
Does the preponderance of evidence on this record support
Examiner’s conclusion that Appellant’s Specification fails to provide written
descriptive support for the claimed invention?
FACTUAL FINDINGS (FF)
FF 1. Appellant discloses that “[t]he present invention improves upon prior
art by providing a lens delivery system having a cartridge and a handpiece
with a lockout feature. The lockout feature helps to ensure that the
appropriate combination of cartridge and handpiece is used” (Spec. 2: 5-7).
FF 2. Appellant discloses that “[c]artridges and handpieces from the same
manufacturer, but of different sizes, may not be interchangeable. For
example, a handpiece having a relatively large plunger tip may not be
suitable for use with a cartridge having a relatively small bore” (Spec. 1: 34-
37).
FF 3. Appellant discloses that “a need . . . exist[s] for a means to assure
that non-interchangeable cartridges and handpieces are not used
inadvertently” (Spec. 1: 38 – 2: 1).

1
Bessiere et al., US 2007/0050023 A1, issued Mar. 1, 2007.
Appeal 2011-008332
Application 11/431,727

3
FF 4. Appellant’s lens delivery system “generally includes cartridge 12
and handpiece 14,” as illustrated in FIG. 1 and FIG. 2 below:

“FIG. 1 is an enlarged side elevational view of a cartridge that may be used
with [Appellant’s] . . . lens delivery system . . . . FIG. 2 is an enlarged
partial side elevational view of a handpiece that may be used with . . .
[Appellant’s] lens delivery system” (Spec. 2: 18-28).
FF 5. Appellant discloses that “[b]ody 16 . . . contains lockout tabs 20 that
interact with lockout slots 22 in handpiece 14,” wherein
lockout tabs 22 prevent cartridge 12 from fitting within recess
24 in the absence of lockout slots 22. . . . One skilled in the art
will recognize that lockout tabs 20 and lockout slots 22 can
vary in shape and size so as to allow or prevent any cartridge
12/handpiece 14 combination.

(Spec. 2: 37-38 and 3: 6-11.)
Appeal 2011-008332
Application 11/431,727

4
ANALYSIS
During prosecution Appellant amended claims 1 and 2, from those
originally filed, to require the intraocular lens delivery system to comprise,
inter alia, a lockout feature that is
configured to allow the cartridge to be received in the recess if
the bore is sized to fit the plunger to allow the plunger to
advance the intraocular lens and to disallow the cartridge from
being received in the recess of the handpiece if the bore is not
sized to fit the plunger to allow the plunger to push the
intraocular lens through the cartridge.

(See Claims 1 and 2.)
Examiner finds that “[t]he lockout feature disclosed in [Appellant’s]
. . . specification relates only to lockout tabs and slots for allowing or
preventing a cartridge and handpiece combination” (Ans. 3; see also FF 4-
5). Examiner finds that Appellant’s “specification does not disclose the
lockout feature being associated with the bore and plunger being sized to fit
each other and allow or prevent the cartridge to be received in the
handpiece” (Ans. 3-4; Cf. FF 4-5). Accordingly, Examiner concludes that
Appellant’s Specification fails to provide written descriptive support for the
claimed subject matter (Ans. 4).
In response, Appellant presents separate arguments for claims 1 and 2;
we take each in turn.

Claim 1:
We are not persuaded by Appellant’s contention that “[a]ll that is
required by the language of Claim 1 is that the lockout feature be configured
Appeal 2011-008332
Application 11/431,727

5
specifically for cartridge and handpiece combinations so as to allow or
disallow certain combinations” (App. Br. 11; Reply Br. 11-12).
We recognize that the “Background of the Invention” section of
Appellant’s Specification suggests that “a handpiece having a relatively
large plunger tip may not be suitable for use with a cartridge having a
relatively small bore” (FF 2; see App. Br. 11-12). However, as Examiner
explained, Appellant’s “specification does not disclose the lockout feature
being associated with the bore and plunger being sized to fit each other and
allow or prevent the cartridge to be received in the handpiece” (Ans. 3-4; Cf.
FF 4-5).
We also recognize that Appellant’s Specification discloses that
“[o]ne skilled in the art will recognize that lockout tabs 20 and lockout slots
22 can vary in shape and size so as to allow or prevent any cartridge
12/handpiece 14 combination” (FF 5; Cf. App. Br. 11-12; Reply Br. 11).
We disagree, however, with Appellant’s contention that a disclosure that
lockout tabs and slots can vary in size and shape, provides written
descriptive support for “the lockout feature being associated with the bore
and plunger being sized to fit each other and allow or prevent the cartridge
to be received in the handpiece” (Ans. 3-4 (emphasis added)).

Claim 2:
For the foregoing reasons we are also not persuaded by Appellant’s
contentions regarding claim 2 (App. Br. 12-14).
CONCLUSION OF LAW
The preponderance of evidence on this record supports Examiner’s
conclusion that Appellant’s Specification fails to provide written descriptive
Appeal 2011-008332
Application 11/431,727

6
support for the claimed invention. The rejection of claims 1 and 2 under the
written description provision of 35 U.S.C. § 112, first paragraph is affirmed.

Anticipation:
ISSUE
Does the preponderance of evidence on this record support
Examiner’s finding that Bessiere teaches Appellant’s claimed invention?
FACTUAL FINDINGS (FF)
FF 6. Bessiere’s FIG. 1 is reproduced below:

“FIG. 1 is an exploded, side elevational view of a first embodiment of . . .
[Bessiere’s] injector device showing main components of [the] injector
device” (Bessiere 2: ¶ [0016]).
FF 7. Examiner finds that Bessiere teaches an intraocular lens (IOL)
delivery system that comprises, inter alia, “a lockout feature associated with
the cartridge (12d, 14d[)] . . . wherein the lockout feature comprises lockout
tabs (detents 14d) formed on the cartridge and associated lockout slots (12d)
in the recess” (Ans. 4-5).
Appeal 2011-008332
Application 11/431,727

7
FF 8. Examiner finds Bessiere’s device
[I]s configured to disallow a cartridge from being accepted if
the geometry of its bore and lockout tabs does not fit those of
the handpiece. In order for a cartridge to be properly and
fittingly received by the handpiece disclosed by Bessiere the
geometries of the plunger/bore and through-holes/detents must
match.

(Id. at 8.)
FF 9. Examiner finds that if Bessiere’s “plunger (20) is sized to fit the bore
(14a, 16a) to advance the IOL . . . the cartridge will be received by the recess
(12a) of the handpiece[]” (id. at 5).
FF 10. Examiner finds that in Bessiere’s device, “[i]f a cartridge/shuttle
having too small of a bore (14a,16a) to fit over the plunger is inserted in the
recess, it will not be received by the handpiece” (id.).
ANALYSIS
Appellant’s claim 1 requires the intraocular lens delivery system to
comprise, inter alia, a lockout feature that is
configured to allow the cartridge to be received in the recess if
the bore is sized to fit the plunger to allow the plunger to
advance the intraocular lens and to disallow the cartridge from
being received in the recess of the handpiece if the bore is not
sized to fit the plunger to allow the plunger to push the
intraocular lens through the cartridge.

(See Claim 1.) While written in independent form, Appellant’s claim 2
further limits the lockout feature of claim 1 to require the lockout feature to
comprise “lockout tabs formed on the cartridge and associated lockout slots
in the recess” (see Claim 2).
Appeal 2011-008332
Application 11/431,727

8
Examiner finds that Bessiere teaches every element of Appellant’s
claimed invention (FF 6-10). In response, Appellant presents separate
arguments for claims 1 and 2; we take each in turn.

Claim 1:
Appellant contends that Bessiere
fails to explicitly disclose the lockout feature . . . “configured to
allow the cartridge to be received in the recess if the bore is
sized to fit the plunger to allow the plunger to advance the
intraocular lens and to disallow the cartridge from being
received in the recess of the handpiece if the bore is not sized to
fit the plunger to allow the plunger to push the intraocular lens
through the cartridge.”

(App. Br. 14.) As the detents and tabs of Bessiere’s device must be
appropriately sized to fit together, we are not persuaded (FF 8; see also FF
9-10). For the same reasons we are not persuaded by Appellant’s contention
that Bessiere fails to “inherently disclose the recited lockout feature” (App.
Br. 14; see also id. at 15). Since claim 1 does not require the presence of
lockout tabs or slots, we are not persuaded by Appellant’s contention that
elements 12d and 14d of Bessiere’s device are not “lockout features; they
are merely lock-in features to retain the distal section 14 of the injector in
the proximal section 12 of the injector” (App. Br. 14).

Claim 2:
For the foregoing reasons we are also not persuaded by Appellant’s
contention that claim 2 is allowable for the reasons set forth with regard to
claim 1 (App. Br. 15).
Appeal 2011-008332
Application 11/431,727

9
Appellant contends that “[c]laim 2 additionally recites a lockout tab
and lockout slot arrangement” (id.). We agree. As discussed above,
Appellant’s claim 2 requires the lockout feature to comprise “lockout tabs
formed on the cartridge and associated lockout slots in the recess” (see
Claim 2). Notwithstanding Appellant’s contention to the contrary,
Bessiere’s device comprises tabs formed on the cartridge and associated
slots in the recess (FF 6-7). In this regard, we are not persuaded by
Appellant’s semantic argument regarding lock-in versus lock-out (App. Br.
14). Stated differently, Appellant failed to establish, through a
preponderance of evidence on this record, that Bessiere’s tab and slot
arrangement differs from the tab/slot arrangement required by claim 2.
CONCLUSION OF LAW
The preponderance of evidence on this record supports Examiner’s
finding that Bessiere teaches Appellant’s claimed invention. The rejection
of claims 1 and 2 under 35 U.S.C. § 102(e) as being anticipated by Bessiere
is affirmed.

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

cdc