Ex Parte Mentak

Board of Patent Appeals and Interferences

Aug 29, 2011

11494911 (B.P.A.I. Aug. 29, 2011)

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.
11/494,911 07/28/2006 Khalid Mentak 042445.40050 2169
45159 7590 08/29/2011
SQUIRE, SANDERS & DEMPSEY (US) LLP
275 BATTERY STREET, SUITE 2600
SAN FRANCISCO, CA 94111-3356
EXAMINER
WANG, CHUN CHENG
ART UNIT PAPER NUMBER
1763
MAIL DATE DELIVERY MODE
08/29/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte KHALID MENTAK
__________

Appeal 2009-012685
Application 11/494,911
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
PETER F. KRATZ, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134 from an Examiner’s final
rejection of claims 1-6 and 9-18.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Claims 7 and 8 are also pending but have been objected to as being dependent
upon a rejected base claim. Final Office Action dated March 21, 2008, at 6.
Appeal 2009-012685
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The subject matter on appeal relates to a method of manufacturing an
intraocular lens using a terpolymer comprising two hydrophobic monomers and
one hydrophilic monomer.2 Claim 1, reproduced below, is illustrative.
1. A method of manufacturing an intraocular lens comprising:
providing a rigid copolymer comprising:
a first monomer comprising an aryl acrylate or an aryl
methacrylate;
a second monomer comprising an aromatic ring comprising a
substituent having one ethylenic unsaturation, provided that the
second monomer is not an aryl acryate or aryl methacrylate; and,
a third monomer comprising one ethylenic unsaturation that, if
polymerized into a homopolymer, forms a high water content
hydrogel;
optionally, a cross-linking agent;
machining the rigid copolymer into a rigid intraocular lens having
desired dimensions; and,
hydrating the rigid intraocular lens to form a foldable intraocular lens,
wherein:
the foldable intraocular lens has an equilibrium water
concentration of from about 1.5 wt % to about 10 wt% and a
refractive index greater than about 1.50.
App. Br., Claims Appendix.
The following Examiner’s rejections are before us on appeal:
(1) Claims 1-3, 6, 9, 10, and 12-18 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Stoy.3

2 The first and second monomers recited in claim 1 are hydrophobic and the third
monomer recited in claim 1 is hydrophilic. Appeal Brief dated October 20, 2008
(“App. Br.”), at 6.
3 US 4,731,079 issued March 15, 1988.
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(2) Claims 1-6 and 9-18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Vanderbilt.4
The sole issue on appeal is: Did the Examiner reversibly err in concluding
that the terpolymer recited in claim 1 would have been obvious to one of ordinary
skill in the art in view of the teachings of each of Stoy and Vanderbilt?
For the reasons set forth in the Examiner’s Answer dated December 11,
2008 (“Ans.”), we answer this question in the negative. We add the following for
emphasis.
B. DISCUSSION
Stoy and Vanderbilt each disclose an intraocular lens comprising a
polymeric material. The Appellant does not dispute that the polymeric materials
disclosed in Stoy and Vanderbilt are comprised of monomers that correspond to
the Appellant’s first, second, and third monomers. Instead, the Appellant argues
that the copolymers disclosed in Stoy and Vanderbilt are comprised of two
monomers rather than three monomers (i.e., a terpolymer) as claimed.5 For
support, the Appellant directs us to several portions of Vanderbilt, including the
following disclosure:
The novel hydrogel materials of the present invention are copolymers
comprising only two principal monomeric components: a high
refractive index monomer and a hydrophilic monomer.
App. Br. 10; Vanderbilt, col. 4, ll. 6-10.
However, Vanderbilt also discloses:

4 US 6,329,485 B1 issued December 11, 2001.
5 The Appellant points out that the claimed copolymer contains a fourth monomer
when the optional cross-linking moiety is included. App. Br. 4.
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The subject hydrogel materials are synthesized by polymerizing
one or more of the above-described hydrophilic monomers with one
or more high refractive index monomers . . . .
Vanderbilt, col. 10, ll. 53-56. The Appellant indicates that this disclosure in
Vanderbilt “suggests that more than two monomers might be used.” App. Br. 10.
Nonetheless, the Appellant dismisses the disclosure as “ubiquitous and . . . ill-
considered patent-drafter’s all encompassing language.” App. Br. 10.
It is well-established that “all disclosures of the prior art, including
unpreferred embodiments, must be considered.” In re Lamberti, 545 F.2d 747, 750
(CCPA 1976). Based on the teachings of Vanderbilt, one of ordinary skill in the
art would have understood that the disclosed hydrogel materials are comprised of
two principal components, i.e., a high refractive index monomer and a hydrophilic
monomer. However, one of ordinary skill in the art would have also understood
that both of these components may be comprised of more than one monomer.
Vanderbilt, col. 10, ll. 53-56. Thus, it is reasonable to conclude that Vanderbilt
teaches that the disclosed hydrogel materials may be comprised of two high
refractive index monomers (i.e., hydrophilic monomers) as recited in claim 1.
As for Stoy, the Appellant directs our attention to the following disclosure in
Stoy: “The polymeric material is a copolymer derived from at least two co-
monomers, wherein at least one of the comonomers is hydrophilic and the other
may be hydrophobic.” App. Br. 5; Stoy, col. 4, ll. 62-65 (emphasis added). The
Appellant argues:
[This sentence] can logically be interpreted only one way: the other
monomers can, but need not necessarily, be hydrophobic. There is
absolutely nothing in the above passage to encourage one of skill in
the art to do anything more than possibly consider including a
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hydrophobic monomer, much less two, as required in the current
invention.
App. Br. 6.
The Appellant also directs our attention to column 9, lines 1-18 of Stoy
which lists a group of hydrophobic monomers and a group of hydrophilic
monomers wherein the members of each group are listed in the alternative. The
Appellant argues that the use of the alternative (i.e., “or”) in each of these lists
indicates that “Stoy contemplates nothing more than using one hydrophobic
monomer from the first group of monomers and one hydrophilic monomer from
the second group to achieve its desired end.” App. Br. 7.
The Appellant’s argument is not supported by the record on appeal. Stoy
expressly discloses that a “particularly preferred co-polymer is a combination of at
least two co-monomers composed of the following: A first monomer component
which when polymerized forms a hydrophobic polymer . . . and, a second
monomer component which when polymerized forms a hydrophilic polymer or
hydrogel.” Stoy, col. 8, ll. 22-28 (emphasis added). Moreover, Stoy claims 3, 6,
and 7 recite:
3. A lens in accordance with claim 1 wherein the polymer is a co-
polymer derived from at least two co-monomers.
6. A lens in accordance with claim 3 wherein at least one of the
co-monomers is hydrophobic.
7. A lens in accordance with claim 6 wherein at least one of the
co-monomers is hydrophilic.
Stoy, col. 17, ll. 41-43 and 48-51 (emphasis added).
Thus, it is reasonable to conclude that Stoy teaches that the disclosed
polymeric material may be comprised of more than one hydrophobic polymer, and
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more specifically, may be comprised of two hydrophobic polymers as recited in
claim 1.
Finally, the Appellant argues that Stoy does not “provide any guidance to the
skilled artisan as to how to arrive at such a specific combination [of monomers as
recited in claim 1] from the vast milieu of possible monomers.” App. Br. 6.
Similarly, the Appellant argues that the possible combinations of high refractive
index monomers and hydrophilic monomers disclosed in Vanderbilt are
“astronomical,” and thus, one of ordinary skill in the art would not have been led to
the three types of monomers recited in claim 1. Reply Br. 5.6
The Appellant’s arguments are not persuasive of reversible error. Armed
with the understanding that Stoy and Vanderbilt both teach a polymeric material
comprising two hydrophobic monomers and a hydrophilic monomer, the claimed
terpolymer would have been obvious to one of ordinary skill in the art.7 See Merck
& Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (prior art
disclosure of a multitude of effective combinations does not render any particular
formulation less obvious, especially where the claimed composition is used for the
identical purpose taught by the prior art).
For the reasons set forth above and in the Examiner’s Answer dated
December 11, 2008, the § 103(a) rejections on appeal will be affirmed.
C. DECISION
The decision of the Examiner is affirmed.

6 Reply Brief dated February 9, 2009.
7 As pointed out above, there is no dispute that Stoy and Vanderbilt both disclose
monomers that correspond to the Appellant’s first, second, and third monomers.
See App. Br. 8; see also Ans. 3-4, 6, 9.
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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

sld