Ex Parte Newsome, M.D.

Board of Patent Appeals and Interferences

Apr 11, 2006

09634054 (B.P.A.I. Apr. 11, 2006)

The 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for publication and is not binding precedent of the Board.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 DAVID A. NEWSOME
____________

Appeal No. 2006-0824
Application No. 09/634,054
____________

ON BRIEF
____________

Before OWENS, GROSS and LEVY, Administrative Patent Judges.
OWENS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal is from a rejection of claims 27-29 and 31.
Claims 1-26, 32 and 33 have been canceled. Claims 30 and 34-36
have been allowed.

Appeal No. 2006-0824
Application No. 09/634,054

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THE INVENTION
The appellant claims an apparatus for performing
electrophoresis on a patient’s eye, having a light-activated power
source. Claim 27 is illustrative:
27. An apparatus for performing electrophoresis on a
patient’s eye comprising:

a) a composite contact lens structure that comprises an
outer shell having a concave surface and a convex
surface;

b) a disposable lens member that removably fits the shell at
the concavity; and

c) the convex portion of the shell carrying an electrode for
transmitting electrical current to the shell and lens
member;

a light-activated power source for providing electricity to
the electrode.
THE REFERENCE
Beck 6,319,240 Nov. 20, 2001
(filed May 25, 1999)
THE REJECTION
Claims 27-29 and 31 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Beck in view of the appellant’s admitted
prior art.

Appeal No. 2006-0824
Application No. 09/634,054

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OPINION
We reverse the aforementioned rejection. We need to address
only the sole independent claim, i.e., claim 27.
It is undisputed that Beck discloses each element of claim 27
except the light-activated power source. Beck discloses that
“[t]he subsequent discussion contained herein will be directed to
the various configurations and embodiments of iontophoretic
apparatus 20 which may be used in cooperation with various power
supplies and/or dose controllers” (col. 5, lines 25-29). For the
light-activated power source the examiner relies (answer, page 4)
upon the following disclosure in the appellant’s specification:
“Photovoltaic contact lens 141 includes thereon or therein a
flexible light-activated iontophoretic power source 120 (dilation
enhancer power supply - commercially available)” (page 7,
lines 20-22).
The mere fact that light-activated power supplies were
commercially available is not sufficient to establish a prima facie
case of obviousness. The examiner must provide evidence which
would have fairly suggested, to one of ordinary skill in the art, a
Appeal No. 2006-0824
Application No. 09/634,054

4
light-activated power source in the context of an electrophoresis
apparatus, and the examiner has not done so.
The examiner argues that the appellant has not disclosed any
criticality to using a light-activated power source (answer,
page 5). It is the examiner who has the initial burden of
establishing a prima facie case of obviousness, see In re Piasecki,
745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); In re
Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976), and
the examiner has not met that burden by at least providing prior
art that would have fairly suggested, to one of ordinary skill in
the art, a light-activated power source in the context of an
electrophoresis apparatus.
We therefore reverse the examiner’s rejection.
Appeal No. 2006-0824
Application No. 09/634,054

5
DECISION
The rejection of claims 27-29 and 31 under 35 U.S.C. § 103
over Beck in view of the appellant’s admitted prior art is
reversed.
REVERSED

TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ANITA PELLMAN GROSS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )

TJO/ki
Comment [jvn1]: Type address
Appeal No. 2006-0824
Application No. 09/634,054

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