Ex Parte Khuray et alDownload PDFPatent Trial and Appeal BoardSep 16, 201512614643 (P.T.A.B. Sep. 16, 2015) Copy Citation 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. 12/614,643 11/09/2009 Aslan Ramazanovich Khuray OR-1678CIP 8988 33055 7590 09/17/2015 Law Offices of John D. Gugliotta, P.E. Esq., LPA P.O. Box 506 Richfield, OH 44286 EXAMINER ALEMAN, SARAH WEBB ART UNIT PAPER NUMBER 3731 MAIL DATE DELIVERY MODE 09/17/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ASLAN RAMAZANOVICH KHURAY and ILYAS AMIROVICH LATYPOV ____________ Appeal 2013-002704 Application 12/614,6431 Technology Center 3700 ____________ Before STEFAN STAICOVICI, ANNETTE R. REIMERS, and THOMAS F. SMEGAL, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Aslan Ramazanovich Khuray and Ilyas Amirovich Latypov (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1–18. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM-IN-PART. 1 According to Appellants, the real party in interest is CJSC MACDEL Technologies JS. Br. 1. Appeal 2013-002704 Application 12/614,643 2 INVENTION Appellants’ invention relates to a tool and a method “for implanting intraocular refractive lens to the anterior chamber of the eye.” Spec., 1–2, ll. 1–3. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A tool for implantation of the refractive lens comprising: a working component consisting of a cannula formed of a biologically inert material, said working component adapted for nontraumatic cornea cut entering a patient's lens and further for fixing and introducing the refractive lens through the cornea cut into the cavity of the eye, wherein said working component forms a linear elongated, hollow tube having a smooth cross section and bent at an angle such as to terminate at a contact end for supporting a surface of the lens in a manner that allows curling of the lens; a handle connected to said working component and having a working end opposite a vacuum end, said handle forming a hollow conduit in fluid communication with said working component; a source of vacuum in fluid communication with said working component through said conduit in said handle; and control means for controlling and limiting said source of vacuum at a sufficient level such as to fix said lens to said contact end. REJECTIONS The following rejections are before us for review: I. The Examiner rejected claims 1–7 under 35 U.S.C. § 112, second paragraph, as being indefinite. II. The Examiner rejected claims 1–3 and 5 under 35 U.S.C. § 102(e) as anticipated by Kaplan (US 2003/0216747 A1, pub. Nov. 20, 2003). Appeal 2013-002704 Application 12/614,643 3 III. The Examiner rejected claims 1, 3, 4, 6, 8, 11, and 13 under 35 U.S.C. § 103(a) as unpatentable over Dykes (US 6,273,894 B1, iss. Aug. 14, 2001) and Phillips (US 4,047,532, iss. Sept. 13, 1977). IV. The Examiner rejected claims 2, 5, 9, 10, and 12 under 35 U.S.C. § 103(a) as unpatentable over Dykes, Phillips, and Kaplan. V. The Examiner rejected claims 7 and 14 under 35 U.S.C. § 103(a) as unpatentable over Dykes, Phillips, and Knight (US 4,170,043, iss. Oct. 9, 1979). VI. The Examiner rejected claims 15 and 16 under 35 U.S.C. § 103(a) as unpatentable over Worst (US 6,770,093 B2, iss. Aug. 3, 2004), Dykes, and Weber (US 6,090,121, iss. July 18, 2000). VII. The Examiner rejected claims 17 and 18 under 35 U.S.C. § 103(a) as unpatentable over Dykes, Phillips, and Langermann (US Re. 34, 998, iss. July 18, 1995). ANALYSIS Rejection I Appellants argue that the Examiner has failed to perform an adequate analysis to show that Appellants’ disclosure would not have enabled a person of ordinary skill in the art to make and use Appellants’ invention without undue experimentation. Br. 12–13. However, as the Examiner correctly responds, Appellants’ arguments “towards enablement do not remedy the rejection under 112, 2nd paragraph for indefiniteness.” Ans. 11. Appeal 2013-002704 Application 12/614,643 4 Accordingly, as Appellants’ arguments are not commensurate with the Examiner’s rejection, we sustain the rejection of claims 1–7 under 35 U.S.C. § 112, second paragraph, as being indefinite. Rejection II Appellants have not presented arguments for the patentability of claims 2 and 3 apart from claim 1. Therefore, in accordance with 37 C.F.R. § 41.37(c)(1)(iv) (2014), we select claim 1 as the representative claim to decide the appeal of the rejection of these claims, with claims 2 and 3 standing or falling with claim 1. Independent claim 1 requires, inter alia, “a handle connected to said working component and having a working end opposite a vacuum end, said handle forming a hollow conduit in fluid communication with said working component.” Br. 26. Appellants argue that, “the Kaplan reference is non[-]analogous art.” Br. 14. However, “the question whether a reference is analogous art is irrelevant to whether that reference anticipates.” In re Schreiber, 128 F.3d 1473, 1478 (Fed.Cir.1997). Therefore, Appellants’ argument is unpersuasive. Appellants also argue that Kaplan fails to teach a handle, 2 as called for by claim 1. Br. 14. We do not agree with Appellants’ position because as the Examiner correctly finds, Kaplan teaches a hollow, tubular cannula 14 and a hollow handle 16 that is connected to the cannula 14 and to a plunger 2 An ordinary and customary definition of the term “handle” is “a part that is designed especially to be grasped by the hand.” Merriam Webster’s Collegiate Dictionary (10th ed. 1997). Appeal 2013-002704 Application 12/614,643 5 for providing vacuum to cannula 14. See Final Act. 6; see also Kaplan ¶ 27 and Fig. 1. Accordingly, we agree with the Examiner that Kaplan’s hand piece 40 with conduit 16 forms together a handle structure that can be gripped by an operator. See Ans. 12. Appellants have not persuasively shown error in the Examiner’s findings. Accordingly, for the foregoing reasons, we sustain the rejection under 35 U.S.C. § 102(b) of claim 1, and claims 2 and 3, falling with claim 1, as anticipated by Kaplan. With respect to the rejection of claim 5, Appellants rely on the arguments presented supra regarding the rejection of independent claim 1. See Br. 15. Therefore, for the same reasons, we also sustain the anticipation rejection of claim 5. Rejection III Claims 1 and 3 After reiterating the Examiner’s rejection, Appellants argue that “the device as described in Dykes is intended for implanting a haptic element of an already implanted intraocular lens, whereas the present invention is intended for implanting an intraocular lens into the eye through an incision in the cornea of a person’s eye.” Br. 15–16. “A patent applicant is free to recite features of an apparatus either structurally or functionally . . . Yet, choosing to define an element functionally, i.e., by what it does, carries with it a risk.” In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (internal citation omitted). Here, the Examiner is correct that Dykes’s “device is capable of implanting a refractive lens in the eye and [is] supplied with a source of vacuum to fix a Appeal 2013-002704 Application 12/614,643 6 lens to the contact end of the cannula.” Ans. 12 (citing Dykes, col. 3, ll. 5– 35 and col. 4, ll. 60–67). Appellants do not persuasively explain why Dykes’s device, as modified by Phillips, despite its structural similarity to the claimed apparatus, lacks the capability to perform the intended use or function of the claimed tool, namely, to implant an intraocular lens into the eye through an incision in the cornea of a person’s eye, or is unsuitable for such a use. See Schreiber at 1477-78 (once the Examiner finds that the prior art structure would be capable of performing all of the functions claimed, the burden shifts to the applicant to show this this is not the case.). Accordingly, we agree with the Examiner that Dykes’s device is capable of performing the claimed function. In conclusion, for the foregoing reasons, we sustain the rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over Dykes and Phillips. Regarding claim 3, Appellants do not present any other substantive arguments. See Br. 15–18. Accordingly, for the same reasons, we also sustain the rejection of claim 3 over the combined teachings of Dykes and Phillips. Claims 6 and 13 Each of claims 6 and 13 adds the limitation of “a crimp seal formed at said vacuum end of said handle.” Br. 27 and 29. The Examiner finds that the term “crimp seal” is “broad enough to encompass the structure disclosed by Dykes, which includes a sealing structure at the proximal end of the handle near element (36) and a spring (48) that urges piston (42) towards the sealing proximal end (36).” Final Act. 8. According to the Examiner, because a tight fit exists between Appeal 2013-002704 Application 12/614,643 7 Dykes’s flange 36 and plunger 42, flange 36 “is capable of providing a seal with the plunger.” Ans. 13 (citing Dykes, Fig. 10). In response, Appellants argue that, “the term crimp seal 15 as defined by the present [S]pecification is clearly distinct from the supposed sealing structure disclosed in Dykes” because Dykes merely discloses a plunger (42) that is slidable within the syringe, but there is no sealing structure disclosed other than this plunger.” Br. 16. Although we appreciate the Examiner’s position that a tight seal exists between Dykes’s flange 36 and plunger 42, this does not mean that flange 36 and plunger 42 form a “crimp seal.” The Examiner’s interpretation of the phrase “crimp seal” as merely covering a “tight fit,” in effect renders meaningless the term “crimp.” Claims are construed with an eye toward giving effect to all terms in the claim. Bicon Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006). An ordinary and customary meaning of the term “crimp” is “a bend or crease formed in something.” Merriam Webster’s Collegiate Dictionary (10th Ed. 1997). In this case, we could not find any portion in Dykes and the Examiner has not pointed to any portion that discloses a bend or crease formed in either Dykes’s flange 36 or plunger 42 to form a “crimp seal.” Accordingly, we do not sustain the rejection of claims 6 and 13 under 35 U.S.C. § 103(a) as unpatentable over Dykes and Phillips. Claims 4 and 11 Each of claims 4 and 11 recites, “said source of vacuum can be any system that provides necessary vacuum for the purpose of fixing said lens between 100-600 mmHg.” Br. 27 and 29. Appeal 2013-002704 Application 12/614,643 8 The Examiner determines that because Phillips discloses a vacuum pressure of 10-20 inches of mercury, which corresponds to 254-507 mmHg, “it would have been obvious to one of ordinary skill in the art to configure the Dykes device to have the capability of operating at a vacuum pressure of 254-507 mmHg.” Final Act. 9. According to the Examiner, “[a]s long as the prior art is capable of being manipulated to cause a vacuum pressure between 100-600 mmHg, it meets the requirements.” Id. at 8. After reiterating the Examiner’s rejection, Appellants argue that the Examiner is taking Official Notice of Dykes’s capability to achieve the claimed vacuum pressure. Br. 17. We are not persuaded by Appellants’ arguments because the arguments are not commensurate with the Examiner’s rejection. The Examiner is not taking Official Notice of the functionality of Dykes’s device, but rather is modifying the device of Dykes to achieve a vacuum pressure of 254-507 mmHg, as taught by Phillips. Moreover, because both Dykes and Phillips disclose devices that retain implants using vacuum, the Examiner is on solid ground to conclude that Dykes’s device is capable of being manipulated to various vacuum pressures,” as taught by Phillips. Final Act. 9; see also Dykes, Abstract; Phillips, Abstract. We thus agree with the Examiner that Appellants’ “argument fails to overcome the obviousness rejection.” Ans. 13. In conclusion, for the foregoing reasons, we sustain the rejection of claims 4 and 11 under 35 U.S.C. § 103(a) as unpatentable over Dykes and Phillips. Appeal 2013-002704 Application 12/614,643 9 Claim 8 Independent claim 8 requires, inter alia, “a contact end of said working component forming an oval-shaped oval shape with minor axis 0.6 – 0.9 mm and a major axis between 1.5 – 2.5 mm.” Br. 28. The Examiner finds that Phillips discloses that contact end 20 of a cannula for vacuum-assisted intraocular lens delivery has an oval shape. Final Act. 9 (citing Phillips, Fig. 4). After reiterating the Examiner’s rejection, Appellants argue that, “Phillips does not teach an oval shaped cannula, but rather a suction head (30)” and a “radially extending lip (66) which aids in grasping the lens.” Br. 18. According to Appellants, because Phillips discloses a lip 66 having a diameter of 4 to 8 mm, Phillips’ tool “is intended to implant a hard lens with a large cornea incision of 9mm” and thus, “is outside the capability of use in refractive surgery of the present invention.” Id. We are not persuaded by Appellants’ arguments because as the Examiner correctly states, “[c]laim 8 merely requires that the ‘contact end of said working component forming an oval shape… .’” Ans. 13. Limitations not appearing in the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). We thus agree with the Examiner that “the prior art is not required to teach a cannula with an oval shape cross section over its length,” but merely a cannula end having an oval shape, which is the shape of Phillips’ cannula end 30. See Ans. 13. We further disagree with Appellants’ argument, because Appellants cannot show nonobviousness by attacking Dykes and Phillips individually when the rejection as articulated by the Examiner is based on a combination of Dykes and Phillips. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 Appeal 2013-002704 Application 12/614,643 10 (Fed. Cir. 1986). Obviousness does not require that all of the features of the secondary reference be bodily incorporated into the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981). In this case, the Examiner is not proposing to provide the dimensions of Phillips’ lip 66 to the cannula end of the device of Dykes, but rather “to modify the shape of the distal end of the Dykes cannula to have an oval shape . . . to obtain the predictable result of forming a cannula for delivery of an IOL.” Final Act. 9. Moreover, the Examiner is correct that providing a major axis of 1.5–2.5 mm and a minor axis of 0.6–0.9 mm to the oval-shaped contact end of the cannula of Dykes, as modified by Phillips, would have been obvious to a person of ordinary skill in the art “in order to provide a device capable of fitting into an incision in the eye” because Dykes specifically discloses that a typical incision is 1.8–2.5 mm wide and the cannula tip should be sized to fit within the incision. Id. (citing Dykes, col. 1, ll. 13–16 and col. 5, ll. 45–46). Appellants have not persuasively shown error in the Examiner’s findings or reasoning. Accordingly, for the foregoing reasons, we likewise sustain the rejection of claim 8 over the combined teachings of Dykes and Phillips. Rejection IV and VI With respect to rejection IV, after reiterating the Examiner’s rejection, Appellants argue that, because the tools of Dykes, Phillips, and Appellants’ claimed invention are for different use, the teachings Dykes, Phillips, and Kaplan cannot be combined. See Br. 19–20. Appellants make a similar argument with respect to Rejection VI, namely, that Worst’s tool is used for a different purpose than Appellants’ claimed tool. See id. at 21–22. Appeal 2013-002704 Application 12/614,643 11 We are not persuaded by Appellants’ argument because Appellants do not persuasively explain why Dykes’s device, as modified by Phillips and Kaplan, or the device of Worst, as modified by Dykes and Phillips, lacks the capability to perform the intended use or function of the claimed tool, namely, to implant an intraocular lens into the eye through an incision in the cornea of a person’s eye, or is unsuitable for such a use. Merely because the tool of Worst is used for the anterior chamber of the eye, rather than the posterior chamber (see Br. 21), is not persuasive because as stated by our reviewing court in In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998), “the name of the game is the claim.” Independent claim 15 merely requires “introducing the refractive lens through the cornea cut into the chamber of the eye.” Br. 29. As such, Appellants’ arguments are not commensurate with the Examiner’s rejection to make the cannula of Dykes, as modified by Phillips, from stainless steel to provide the “cannula with optimum strength for its intended purpose.” Ans. 14. In a similar manner, Appellants’ arguments are not commensurate with the Examiner’s rejection to modify the working end of Worst’s cannula 508 to have an oval shape, as taught by Dykes “so that it is capable of being inserted into a typical incision size as disclosed by Dykes.” Ans. 15; see also Dykes, col. 1, ll. 13–16. Appellants’ arguments are also not commensurate with the Examiner’s rejection to make the cannula of Worst’s device, as modified by Dykes, from stainless steel LDPE, as taught by Weber, “to obtain the predictable result of forming a surgical cannula.” Final Act. 12 (citing Weber, col. 7, ll. 51–66). Appellants do not persuasively show error in the Examiner’s findings or reasoning. Appeal 2013-002704 Application 12/614,643 12 Hence, for the foregoing reasons, we sustain the rejections under 35 U.S.C. § 103(a) of claims 2, 5, 9, 10, and 12 as unpatentable over Dykes, Phillips, and Kaplan and claims 15 and 16 as unpatentable over Worst, Dykes, and Weber. Rejection V Appellants merely reiterate the Examiner’s rejection without setting forth substantive arguments. Br. 20. Accordingly, we summarily affirm the rejection of claims 7 and 14 under 35 U.S.C. § 103(a) as unpatentable over Dykes, Phillips, and Knight. Rejection VII Appellants argue that, “[t]here is no suggestion as to the desirability of any modification of the references to describe the present invention.” Br. 23. According to Appellants, because “the disclosures within the cited references fails to cite every element of the claimed invention,” the Examiner’s conclusion of obviousness is based on impermissible hindsight. Id. at 23–24. We are not persuaded by Appellants’ arguments because although the Examiner has made specific findings, Appellant fails to specifically state which limitations of claims 17 and 18 are not disclosed by the combined teachings of Dykes, Phillips, and Langermann. See Final Act. 13 (citing Dykes, col. 7, ll. 8–9 and Figs. 1–7; Phillips, col. 3; and Langermann, col. 4, ll. 10–50 and col. 9, ll. 4–25). Furthermore, Appellants’ arguments appear to be holding the Examiner to the old teaching, suggestion, or motivation (“TSM”) standard Appeal 2013-002704 Application 12/614,643 13 where there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings; such a standard is not required. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007) (“We begin by rejecting the rigid [application and requirement of a TSM to combine known elements in order to show obviousness]”). In this case, the Examiner has provided a reasoning with rational underpinning to modify the intraocular lens implantation process of Dykes, as modified by Phillips, to include the initial process steps of Langermann, because such steps are well known “for preparing an eye for surgical procedure.” See Ans. 15; In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds [require] some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”) (cited with approval in KSR, 550 U.S. at 418). Appellants have not persuasively shown error in the Examiner’s reasoning. In conclusion, we sustain the rejection of claims 17 and 183 under 35 U.S.C. § 103(a) as unpatentable over Dykes, Phillips, and Langermann. SUMMARY The Examiner’s decision to reject claims 1–7 under 35 U.S.C. § 112, second paragraph, as being indefinite, is affirmed. 3 Should there be further prosecution of this application (including any review for allowance), the Examiner may wish to review claim 18 for compliance under 35 U.S.C. § 112, second paragraph, because claim 18, by virtue of its dependency from claim 16, recites both a method and a tool for implantation of a refractive lens. Appeal 2013-002704 Application 12/614,643 14 The Examiner’s decision to reject claims 1–3 and 5 under 35 U.S.C. § 102(e) as anticipated by Kaplan is affirmed. The Examiner’s decision to reject claims 1, 3, 4, 6, 8, 11, and 13 under 35 U.S.C. § 103(a) as unpatentable over Dykes and Phillips is affirmed as to claims 1, 3, 4, 8, and 11 and reversed as to claims 6 and 13. The Examiner’s decision to reject claims 2, 5, 9, 10, and 12 under 35 U.S.C. § 103(a) as unpatentable over Dykes, Phillips, and Kaplan is affirmed. The Examiner’s decision to reject claims 7 and 14 under 35 U.S.C. § 103(a) as unpatentable over Dykes, Phillips, and Knight is affirmed. The Examiner’s decision to reject claims 15 and 16 under 35 U.S.C. § 103(a) as unpatentable over Worst, Dykes, and Weber is affirmed. The Examiner’s decision to reject claims 17 and 18 under 35 U.S.C. § 103(a) as unpatentable over Dykes, Phillips, and Langermann 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)(1)(iv). AFFIRMED-IN-PART mp Copy with citationCopy as parenthetical citation