Ex Parte Nigam

Board of Patent Appeals and Interferences

Jan 5, 2011

11422815 (B.P.A.I. Jan. 5, 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.
11/422,815 06/07/2006 Alok Nigam 10547-701.302 4755
66854 7590 01/05/2011
SHAY GLENN LLP
2755 CAMPUS DRIVE
SUITE 210
SAN MATEO, CA 94403
EXAMINER
KRAMER, DEAN J
ART UNIT PAPER NUMBER
3652
MAIL DATE DELIVERY MODE
01/05/2011 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 ALOK NIGAM
____________________

Appeal 2009-002552
Application 11/422,815
Technology Center 3600
____________________

Before STEFAN STAICOVICI, KEN B. BARRETT, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-002552
Application 11/422,815

2
STATEMENT OF THE CASE
Alok Nigam (Appellant) seeks our review under 35 U.S.C. § 134 of
the final rejection of claims 1-3, 7, 9 and 12. Claims 4-6 and 8 are objected
to, and claims 13-19 and 23 are allowed (Ans. 2). Claims 10, 11 and 20-22
have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Appellant’s claimed invention is directed to a cornea implant
packaging and handling system including a storage bottle and an implant
applicator tool (Spec. 3: paras. [0008] and [0009]).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A packaging and handling system, comprising:
a storage container having a fluid contained in said
container; and
an implant applicator tool for implanting a corneal
implant contained in said container, said applicator tool
comprising:
an applicator first end, and an applicator second
end,
said applicator second end having a concave
surface contoured to hold an implant for application of the
implant to the eye; and a retaining member, said retaining
member adapted to detachably engage to said applicator second
end surface so as to define an enclosure to retain an implant.

Appeal 2009-002552
Application 11/422,815

3
THE REJECTION
The following rejection2 by the Examiner is before us for review:
Claims 1-3, 7, 93 and 12 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Speshyock (US 3,343,657, issued Sep. 26, 1967).

ISSUE
The issue before us is whether the Examiner erred in finding that
Speshyock describes an implant applicator tool as claimed (App. Br. 3).

ANALYSIS
Appellant contends that Speshyock is directed to an apparatus for
storing a contact lens and not a corneal implant (App. Br. 3).
The Examiner found that the claims do not positively recite a corneal
implant and that the claim language “for implanting a corneal implant”
(claim 1, reproduced supra) is directed to the intended use of the claimed
tool (Ans. 4).
The Examiner found that Speshyock is “at least capable of placing or
applying a lens on an eye” (Ans. 3) and proffered an explanation with
reference to Figure 12 of Speshyock (Ans. 4).
Appellant contends that the Examiner’s statement that Speshyock is
“at least capable of placing or applying a lens on an eye” is pure speculation

2 The obviousness-type double patenting rejection of claims 1-8, 12-19 and
23 has been withdrawn by the Examiner (Ans. 2).
3 Claim 9 is a multiple dependent claim, which depends on claim 1 (9/1),
and also on objected claim 8 (9/8) (see Ans. 2). As claims 9/1 and 9/8 are
not argued separately, reference will only be made to claim 9.
Appeal 2009-002552
Application 11/422,815

4
since a user would have to attempt to force a wrong surface of the lens into
contact with the eye (App. Br. 4).
We agree with the Examiner that the claims do not positively recite a
corneal implant (Ans. 4). Claim 1 calls for, inter alia, “an implant applicator
tool for implanting a corneal implant contained in said container.” We
conclude that the phrase “for implanting a corneal implant” is a functional
statement directed to the intended use of the claimed tool.
“A patent applicant is free to recite features of an apparatus either
structurally or functionally.” In re Schreiber, 128 F.3d 1473, 1478 (Fed.
Cir. 1997) (citing In re Swinehart, 439 F.2d 210, 212 (CCPA 1971)
(“[T]here is nothing intrinsically wrong with [defining something by what it
does rather than what it is] in drafting patent claims.”). “Yet, choosing to
define an element functionally, i.e., by what it does, carries with it a risk.”
Id.
[W]here the Patent Office has reason to believe
that a functional limitation asserted to be critical
for establishing novelty in the claimed subject
matter may, in fact, be an inherent characteristic of
the prior art, it possesses the authority to require
the applicant to prove that the subject matter
shown to be in the prior art does not possess the
characteristic relied on.
Swinehart, 439 F.2d at 213.
“[W]hen the PTO shows sound basis for believing that the products of
the applicant and the prior art are the same, the applicant has the burden of
showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
Things which may be done are not required to be done in the claims.
Therefore, intended use statements cannot be regarded as structural
limitations and are not positive limitations in a claim drawn to structure.
Appeal 2009-002552
Application 11/422,815

5
Intended use statements cannot be relied on to distinguish a claim from the
prior art. In re Collier, 397 F.2d 1003, 1006 (CCPA 1968).
We agree with the Examiner that in Speshyock, when the cap 14 is
resting on the table, as shown in Figure 12, the concave shape 3 is capable of
supporting a concave lens L such that the concave side of the lens L which
is to attach to a user’s eye is facing upwardly, and that in such a position, the
Speshyock tool is capable of being moved to a position to apply a lens L to a
user’s eye (Ans. 4).
Appellant’s contention as to why Speshyock is not “at least capable of
placing or applying a lens on an eye” does not refer to the explanation
proffered by the Examiner. Thus, we find that Appellant’s burden has not
been met.
Appellant contends that Speshyock does not describe an applicator
tool as called for in claim 1, a handle for an applicator tool as called for in
claim 2, an applicator tool having an arcuate second end as called for in
claim 3, a retaining member on the applicator tool having engagement tabs
or an applicator tool having tab engagement slots as called for in claim 7, an
applicator tool having an alignment notch as called for in claim 9 and an
applicator tool having a plurality of openings as called for in claim 12 (App.
Br. 3-4).
We find that the Examiner’s findings as to how Speshyock’s
elements describe the claimed invention are reasonable and sound, and adopt
them all as our own (Ans. 3-5). In particular, in Speshyock, cap 14, stud 13
and tray 2 combine to form an applicator tool having a concave (arcuate)
second end 3; cap 14 is a handle, tray 2 is a retaining member on the
applicator tool 14, 13, 2 having a tab portion (projecting lug) 8 detachably
Appeal 2009-002552
Application 11/422,815

6
engageable with a tab engagement slot (notch) 9, and openings 17 in the
second end of the applicator tool 14, 13, 2 (see Ans. 3-4, and Speshyock,
Figs. 2, 12).
We affirm the rejection of claims 1-3, 7, 9 and 12.

CONCLUSION
The Examiner has not erred in finding that Speshyock describes an
implant applicator tool as claimed.

DECISION
The decision of the Examiner to reject claims 1-3, 7, 9 and 12 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

mls

SHAY GLENN LLP
2755 CAMPUS DRIVE
SUITE 210
SAN MATEO, CA 94403