Ex Parte Menz et al

Board of Patent Appeals and Interferences

Nov 30, 2006

10477069 (B.P.A.I. Nov. 30, 2006)

33The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DIRK HENNING MENZ, JOACHIM DRESP,
and HANS HOERAUF
__________

Appeal No. 2006-3179
Application No. 10/477,069
__________

ON BRIEF
__________

Before ADAMS, GRIMES, and LEBOVITZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL

This appeal involves claims to methods for passivating the surface of intraocular
lens using a fluoroalkyl silane of a defined formula. The Examiner has rejected the
claims as obvious. We have jurisdiction under 35 U.S.C. § 134. We affirm.

Background
Intraocular lens (“IOL”) are used to replace the natural lens of the eye when it
does not function properly as a result of mechanical damage or medical conditions,
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such as cataracts. Mänsson,1 column 1, line 11-19. Many of the materials utilized to
produce intraocular lens contain reactive groups at their surface which can adversely
interact with biological materials upon lens implantation. Specification, page 1.
Furthermore, silicone oil can adhere to intraocular lens during silicone oil tamponade,
impeding its removal. Id., page 2. To counteract “undesired depositions,” the instant
application provides a method of modifying the lens body surface with a fluoroalkyl
silane of a defined formula. Id., pages 2 and 4.
Discussion
Claim construction
Claims 1-10, all the pending claims in this application, are on appeal. The claims
are rejected under four different grounds of obviousness which are summarized on
pages 2-3 of the Brief. Within each grouping, the claims stand or fall together because
separate reasons for patentability were not presented.
Claim 1 is the only independent claim on appeal. It reads as follows:
1. A method for the passivation of the surface of an intraocular lens,
the surface of which comprises Brönsted sites, characterized in that the
intraocular lens is dipped into a solution of a fluoroalkyl silane of the
general formula
RF - (CH2)n - Si - (O-R)3

wherein the residue R is selected from the group of H, CH3, C2H5, C3H7,
and the fluoroalkyl residue RF is selected from the series CF3(CF2)m, with
m=3 to 11 and n=0 to 4, whereby the Brönsted sites on the surface are
deactivated by formation of Si-O-bonds.

Passivation is not defined in the specification, but as with any term recited in a
claim, we adopt “the broadest reasonable meaning of the words in their ordinary usage

1 Mänsson et al., U.S. Pat. No. 5,429,838, issued Jul. 4, 1995 (of record)

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Application No. 10/477,069

as they would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be afforded by the
written description contained in the applicant's specification.” In re Morris, 127 F.3d
1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Crish, 393 F.3d 1253, 1256,
73 USPQ2d 1364, 1367 (Fed. Cir. 2004). According to its dictionary definition,2
“passivate” means “to make inactive or less reactive.” This definition is consistent with
the specification which describes the claimed process as inactivating the Brönsted sites
located at the lens body surface and also with the body of the claim. Specification,
page 4. Brönsted sites are defined in the application to include COOH and OH groups.
Id., page 3, ¶¶ 5 and 6; page 5, ¶ 1. Thus, the claimed subject matter is drawn to a
method of making the surface of a lens less chemically reactive by exposing it (“dipped
into”) to a solution of a fluoroalkyl silane which deactivates the Brönsted sites.
Obviousness
Gupta in view of Ogawa
Claims 1, 3, 5, and 7-9 stand rejected under § 103(a) as obvious over Gupta3 in
view Ogawa.4
Gupta teaches the modification of the outermost surface of an acrylic optical lens
to produce a surface which is biologically inert and which has “low glare, soil resistance,
UV absorbance, and cytotoxic and anti-bacterial properties.” Gupta, page 3, lines 30-
32. Carboxyl groups present on the acrylic polymer chains of the len’s surface are
modified in a “surface modifying step” by the addition of “a chemical group selected

2 Webster’s New Collegiate Dictionary 838 (1976)
3 Gupta, EP 348 462 B1, published May 18, 1994
4 Ogawa, U.S. Pat. No. 6,060,123, issued May 9, 2000

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from a perfluoroalkyl group, an alkyl group (CH2)xCH3 where x=2 to 12, a siloxyl group,
cyclohexyl, a UV absorber or a cytotoxic polypeptide, the chemical group being bonded
to the surface of the lens body by a sillyl ester.” Id., page 4, lines 24-27. “A typical
reagent for the surface modifying step comprises a molecule incorporating a reactive
silane group and a group whose presence is desired on the acrylic surface. Hence, the
typical reagent may have a formula R1-X-R2, where R1 is a silane group, R2 is a group
whose presence is desired on the surface, and X is a joining group, which may or may
not be needed.” Id., page 5, lines 31-34. Examples are shown in Table 1, which
includes a silane/perfluoroalkyl combination.
Ogawa teaches a method of covalently bonding an alkoxysilane surface active
agent to a substrate surface to improve its surface properties. Ogawa, column 1, lines
10-18. The process “allows practical reaction rates and does not generate hydrochloric
acid.” Id., column 2, lines 6-9. The surface active agents disclosed in the Ogawa
patent include silane surface active agents that contain fluoroalkyl groups (the same
generic structure described in Gupta). Id., column 5, lines 46-55. Specific examples
are described by Gupta which fall within the claimed fluoroalkyl silane general formula.
Id., column 9, line 59; column 11, lines 36, 37, and 47-50. The method is described as
“applicable for various uses and materials,” including 19 different classes of specifically
mentioned articles of manufacture and materials. Id., columns 7-9.
The Examiner states that it would have been obvious to the person of ordinary
skill in the art to have utilized Ogawa’s silane surface reagent in Gupta’s process to coat
intraocular lens for the benefit of achieving a practical reaction rate. Answer, page 6.

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He explains:
Ogawa teaches a method analogous to the one taught by Gupta that achieves
the surface modification explicitly desired by Gupta (i.e., the formation of a
substrate having a siloxane capped with a fluoroalkyl layer, the siloxane bonded
to the substrate surface through Si-O bonds). The method of Ogawa comprises
dipping the substrate (which has active carboxyl and/or hydroxyl groups thereon)
into a solution of the applicant’s specifically claimed fluoroalkyl silane (see Col. 5,
lines 46 - 61, Col.11, lines 5 - 60, and Col.12, lines 18 -40).

Answer, page 12.
Appellants challenge the rejection on several grounds. They argue that there
would have been no motivation to have replaced “the type of coating components used
in Gupta by a chemically totally different group of compounds” as taught in Ogawa.
Brief, page 6, ¶ 4. They contend the differences included the presence of an amide
linker in Gupta, which was missing from Ogawa, and a two-component system, rather
than the one-component system described by Ogawa. Id., page 5; page 6, ¶¶ 1 and 2.
Furthermore, Appellants argue that the references are from different fields of endeavor
and therefore not properly combinable. Id., page 5, ¶ 4.
“When patentability turns on the question of obviousness, the search for and
analysis of the prior art includes evidence relevant to the finding of whether there is a
teaching, motivation, or suggestion to select and combine the references relied on as
evidence of obviousness.” In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433
(Fed. Cir. 2002). A suggestion, teaching, or motivation to combine the relevant prior art
teachings does not have to be found explicitly in the prior art. “[T]he teaching,
motivation, or suggestion may be implicit from the prior art as a whole, rather than
expressly stated in the references. The test for an implicit showing is what the
combined teachings, knowledge of one of ordinary skill in the art, and the nature of the

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problem to be solved as a whole would have suggested to those of ordinary skill in the
art.” In re Kahn, 441 F.3d 977, 987-988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).
We begin our analysis with the observation that the nature of the problem
addressed by Gupta, Ogawa, and the claimed subject matter are the same. Gupta
describes his “invention” as the modification of a lens body surface “to possess a
desired characteristic.” Gupta, page 3, lines 30-33. Similarly, Ogawa’s patent is
directed to processes for modifying substrate surfaces with active agents that confer
desirable surface properties. Ogawa, column 5, lines 46-52; column 6, lines 57-60.
Claim 1 is also a method of modifying surfaces, particularly by inactivating Bronstëd
bases on the surface of an intraocular lens body.
In addition to addressing the same general problem, both Gupta and Ogawa are
also engaging the same basic technology to solve it, i.e., the application of bifunctional
silane/perfluoroalkyl reagents to the substrate surface. The Gupta patent identifies two
chemical functionalities present in its surface modifying reagent which are used to
achieve the surface properties desired for an artificial optical lens: a reactive silane
group and a second functional group that acts to modify the lens’s surface properties.
Gupta, page 5. This structure is generically described in Gupta by the formula “R1-X-
R2,” where R1 is the silane group, R2 is the second functional group, and X is the joining
group. Id., page 5, lines 31-37. In particular, Gupta teaches that the combination of a
trialkyamino silane (R1) and perfluoroalkyl (R2) confer biological inertness and low glare
to the lens body, depending on the surface thickness. Id., page 6, Table 1. The
perfluoroalkyl group derivative is covalently joined to a silane group. The silane group
is used to attach the perfluoroalkyl to the lens surface because it is a “versatile” reagent

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that “may be derivatized to incorporate many different R2 groups.” Id., page 5, line 35.
The perfluoroalkyl group is used to confer biological inertness, reduced glare, and “soil
resistance.” Id., page 7, lines 45-47.
Ogawa’s compounds have both functional groups described by Gupta. At column
5, lines 46-55, Ogawa describes a preferred surface active reagent which contains
silane and fluoroalkyl (“fluorocarbon”) functionalities. Like Gupta, Ogawa also teaches
to use a fluorocarbon group when “dirt repellency” is desired. Ogawa, column 5, line
49. Six of the 24 fluoroalkyl silane compounds disclosed by Ogawa also meet the
requirements for the claimed “fluoroalkyl silane” of claim 1. Id., column 11, lines 36,
47-49, and 51-52.
There is no express statement to expand Gupta’s coating reagents to the
chemically-related structures described by Ogawa, but the fact that Gupta’s surface
active reagent is generically described (e.g., page 5, line 33) shows an intent to capture
more than just the specific compounds disclosed in his application. In view of the
parallels between the two processes, which include structurally-similar compounds
being utilized to achieve the same goal of substrate surface modification, the skilled
worker would have logically looked to Ogawa to choose surface modifying reagents.
Answer, page 12. The skilled worker would have recognized that Ogawa’s compounds
have both functional groups required by Gupta’s formula, and therefore would have
expected them to be useful in Gupta’s process, providing also the motivation to have
used them.
Appellants argue that “Ogawa refers to a completely different field of art and
seeks to deal with issues that are not seen as problems in Appellants’ claimed field of

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art.” Brief, page 5, ¶ 4. They have defined the problem and field of endeavor too
narrowly. As discussed earlier, both Ogawa and Gupta are addressing the same
problem – improving substrate surface properties – and are engaging the same
technology – surface active agents which include compounds having silane and
perfluoroalkyl groups. In In re Dillon, 919 F.2d 688, 693, 16 USPQ2d 1897, 1901
(Fed. Cir. 1990), the court held that prior art references describing hydraulic fluids and
fuel combustion, respectively, were “within the field of the inventor’s endeavor” since
each utilized structurally-related compounds for similar purposes.
Significantly, Ogawa teaches a process for coating surfaces with compounds
which fall within Gupta’s scope. Ogawa describes 19 different classes of objects and
materials that can be coated in accordance with his method. Id., columns 7-9. Acrylate
is also disclosed (column 9, lines 9-10) – the same material that Gupta’s lenses are
constructed from – but these materials are described for automobile parts and other
commercial, non-medical uses. Ogawa does not include intraocular lens in his list, but
the broad disclosure of objects and materials would have reasonably suggested to the
person of ordinary skill in the art that Ogawa’s teachings are generally useful for coating
surfaces. As indicated in the “Background of the Invention,” Ogawa stated the field of
use broadly. “The surface of the substrate such as plastic, metal, ceramics, fiber,
woods, concrete, paint or the like have been treated for improved use in a variety of
fields.” Id., column 1, lines 22-24.
The purpose of surface treatment described by Ogawa is to provide water, oil,
and dirt repellency. Id., column 5, lines 49-51. Appellants identify silicone oil
adherence during silicone oil tamponade of the eye as a known problem that affects

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intraocular lenses. Specification, page 2, lines 1-3. Thus, the skilled worker, who would
have been aware of this problem, would have seen Ogawa’s teaching as a solution to it
(i.e., an oil repellant surface), providing the incentive to combine this reference with
Gupta.
Appellants argue that “there is no mention [in Ogawa] of medical device
applications.” Brief, page 5, ¶ 4. We do not agree. Ogawa discloses surgical knives
and needles (including acupuncture, syringe, and surgical needles), which are medical
devices. Id., column 7, lines 60-64. Culture dishes are also disclosed (column 8, line
7), which would be in contact with biological materials (e.g., cells and tissue culture
media), and therefore relevant to the claimed intraocular lens which are also placed in a
biological milieu. Appellants in their patent application state that “[t]he protection of
intraocular lenses against the sticking of substances originating from biological liquids,
as well as medical adjuvants has been a demand in ophthalmology for some time.”
Specification, page 1. Having stated the problem in this way, Ogawa’s teaching of
surface coated culture dishes would be recognized as addressing the same need
identified by Appellants, i.e., to create a surface repellant to biological materials. This
also provides adequate motivation to have combined Ogawa with Gupta. In fact, the
efficacy of the coating was tested in Appellants’ application by “cell culture experiments”
in which the number of cells adhering to coated and uncoated lens was measured.
Id., pages 8-9.
Appellants contend that “Gupta teaches the use of an at least two-component
solution comprising a mixture of an amino functional silane reagent and a perfluoralkyl
carboxylic acid (see fig, 4 of Gupta) … Two of … [the] possible reaction products … do

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not lead to capping of the surface with fluoroalkyl groups.” (Underlining removed.)
Brief, page 5, ¶ 1.
We do not agree with Appellants’ characterization of the solution as a “mixture.”
Gupta shows very clearly that silane and perfluoralkyl are chemically reacted to form a
single molecule. See Gupta, Fig. 3a showing that the perfluoroalkyl acid and silane
(“Z-6020”) are subjected to reflux prior to application by immersion of the device.
Id., page 8, lines 3-7. Fig. 4 shows that the resulting “reaction product” contains three
possible different molecules, not mixtures.
In regard to Appellants’ description of “capping of the surface,” this is apparently
a reference to the structure which would be achieved using the claimed reagent to coat
the lens surface. However, this structure is not missing from Gupta. Fig. 3b of Gupta
contains an illustration of a coated lens body with an inner silane layer and an
outermost “fluoroalkyl layer.” The latter tops the lens’ body surface, and thus could be
described as “capping” it.
Special importance has been placed by Appellants on the amide bond described
in certain preferred embodiments disclosed by Gupta. Brief, page 6. Appellants state
that Gupta “would instruct one” to use “a reagent mixture which results in amide,
siloxane and secondary amine coated surfaces (which are said to all contribute to the
biological inertness of the surface, see Gupta page 8, lines 13 - 15)” and thus would not
be motivated to replace it with Ogawa’s reagents which lack this linkage. Id., page 6, ¶
1. Notwithstanding Gupta’s statement about the “contribution” of the amide bond, Fig. 1
attributes the biological inertness to a “thin” layer of fluorocarbon. Its thickness is

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described in Table 1 (page 6) of Gupta to be “50-100 A.”5 Such thicknesses can be
achieved using Ogawa’s compounds. See Ogawa, Example 2, line 4, reporting a
thickness of 5 nm or 50 angstrom units, and Example 4, line 59, with a thickness of
7 nm or 70 angstrom units. Consequently, we do not find Appellants’ argument to be
persuasive.
In sum, we conclude that the Examiner has provided adequate evidence to
establish a case of prima facie obviousness of claim 1. Claims 3, 5, and 7-9 were not
argued separately, and thus fall with claim 1. This rejection is affirmed.

Gupta, Ogawa, and Mansson
Claim 2 stands rejected under 35 U.S.C. § 103(a) as obvious over Gupta in view
of Ogawa, and further in view of Mänsson. Claim 2 reads as follows:
2. The method according to claim 1, characterized in that the intraocular
lens is a silicone lens.

Claim 2 is drawn to a method of passivating the surface of an intraocular lens
that is fabricated from silicone. The Examiner argues that, in view of Mänsson’s
teaching that intraocular lenses can be produced from silicone, it would have been
obvious to have surface-modified them for the same reasons Gupta teaches for acrylic-
based lens. Answer, page 7, § 3.
Appellants challenge the rejection, arguing that Mänsson does not describe “the
use of passivated lens surfaces to avoid contamination of the lens surface by proteins.”
Brief, ¶ spanning pages 8-9.

5 “A” is being used to represent “angstrom unit,” which is equal to 10 nm.

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We agree with the Examiner’s argument. Gupta establishes a general need to
improve the surface properties of lens to ensure they are compatible with biological use.
Gupta, page 2, lines 5-16. This requirement is dictated by the environment into which
the lens is placed, not the material which comprises the lens. Appellants have not
established that a silicone lens would not have been reasonably expected to require
surface modification. Accordingly, this rejection is affirmed for the reasons set forth by
the Examiner.

Gupta, Ogawa, Milligan, and Gasmena
Claims 4 and 10 stands rejected under 35 U.S.C. § 103(a) as obvious over
Gupta in view of Ogawa, and further in view of Milligan6 and Gasmena.7 Claim 4 reads
as follows:
4. The method according to claim 1, characterized in that the solution is
acidified and comprises between 0.5% by weight and 2% by weight of the
fluoroalkyl silane.
Claims 4 and 10 require that the coating solution is “acidified” and contains a
specific weight percent of the claimed fluoroalkyl silane. The Examiner provides a well-
reasoned statement to support the rejection which do not find necessary to repeat here.
Answer, page 8. Appellants argue that Milligan is from a “divergent art,” and
consequently, motivation is lacking to have combined the references. Brief, page 9.
“Two criteria have evolved for determining whether prior art is analogous:
(1) whether the art is from the same field of endeavor, regardless of the problem
addressed, and (2) if the reference is not within the field of the inventor's endeavor,

6 Milligan, U.S. Pat. No. 5,663,215, issued Sept. 2, 1997
7 Gasmena, U.S. Pat. No. 5,417,744, issued May 23, 1995

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whether the reference still is reasonably pertinent to the particular problem with which
the inventor is involved.” In re Clay, 966 F.2d 656, 658-59, 23 USPQ.2d 1058, 1060
(Fed. Cir. 1992). The Examiner argues that both “Milligan and Gasmena both are
directed to the protective coatings art. As such, this is within the field of endevor [sic]
[of] the primary reference.” Answer, page 13. We do not find any flaw in this reasoning,
and Appellants have not identified a specific deficiency in it. Accordingly, this rejection
is affirmed.
Gupta, Ogawa, and Bechetoille
Claim 6 stands rejected under 35 U.S.C. § 103(a) as obvious over Gupta in view
of Ogawa, and further in view of Bechetoille.8 Claim 6 reads as follows:
6. The method according to claim 1, characterized in that the fluorine
content in the surface of the intraocular lens after the immersion treatment
is between 2% by weight and 15% by weight.

The Examiner states that “[i]t would have been obvious to one of ordinary skill in
the art to perform the surface-modification process of the combination of Gupta and
Ogawa to produce an IOL with a surface fluorine weight percent of 15% because
Bechetoille et al. teaches that such a fluorine content is sufficient to impart the
properties required by an IOL.” Answer, page 10.
Appellants urge that “Bechetoille … refers to a totally different kind of fluorination
of the lens surface both chemically and structurally such that the fluorine content values
… could not be compared to those cited in claim 6.” Brief, page 10. However,
Appellants do not describe the nature of this difference. In this regard, Bechetoille
teaches adding F, CF, CF2, and CF3 groups to the lens surface. Bechetoille (English

8 Bechetoille et al. (Bechetoille), EP 487 418 B1 (English translation from French)

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translation), page 7. CF2 and CF3 are also added to the lens surface by the claimed
method. Accordingly, we agree with the Examiner that Bechetoille’s teaching about the
final fluorine content would have been considered relevant by a person of ordinary skill
in the art to the combination of Gupta and Ogawa because the end results are the
same, i.e., attachment of fluorine atoms to the surface. Appellants have not identified
any deficiency in the Examiner’s argument that it would have been obvious to have
used Gupta in view Ogawa to achieve a fluorine content in the recited range. For the
foregoing reasons, the rejection of claim 6 is affirmed.

Summary
The rejections of the claims over prior art are affirmed.

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Time Period for Response
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).

AFFIRMED

Donald E. Adams )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Eric Grimes )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Richard M. Lebovitz )
Administrative Patent Judge )

RL/dm

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