Ex Parte MentakDownload PDFBoard of Patent Appeals and InterferencesAug 29, 201111494911 (B.P.A.I. Aug. 29, 2011) 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. 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 Application 11/494,911 2 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. Appeal 2009-012685 Application 11/494,911 3 (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. Appeal 2009-012685 Application 11/494,911 4 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 Appeal 2009-012685 Application 11/494,911 5 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 Appeal 2009-012685 Application 11/494,911 6 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. Appeal 2009-012685 Application 11/494,911 7 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 Copy with citationCopy as parenthetical citation