Ex Parte Peyman

Board of Patent Appeals and Interferences

Nov 2, 2011

11189044 (B.P.A.I. Nov. 2, 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.
11/189,044 07/25/2005 Gholam A. Peyman 27648-00006-US 1237
30678 7590 11/02/2011
CONNOLLY BOVE LODGE & HUTZ LLP
1875 EYE STREET, N.W.
SUITE 1100
WASHINGTON, DC 20006
EXAMINER
SHAY, DAVID M
ART UNIT PAPER NUMBER
3769
MAIL DATE DELIVERY MODE
11/02/2011 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 GHOLAM A. PEYMAN
________________
Appeal 2010-001850
Application 11/189,044
Technology Center 3700
________________
Before STEVEN D.A. McCARTHY, CHARLES N. GREENHUT and
MICHAEL L. HOELTER, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
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STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a), from a final
rejection of claims 1, 3-22 and 24. Claims 2, 23, 25 and 26 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
The Claimed Subject Matter
The claimed subject matter is directed to removing the lens of an eye
while leaving the capsular bag substantially intact and injecting a synthetic
material, which includes loose monomers, into the capsular bag as a
replacement for the removed lens and also placing biodendrimers within the
bag. The claimed subject matter also requires exposing portions of the
artificial lens to an energy source to alter the refractive properties of the
artificial lens. Independent claim 1 is illustrative of the claims on appeal and
is reproduced below:
1. A method of replacing a natural lens in an eye, comprising the
steps of:
removing at least a portion of the natural lens while leaving the
capsular bag substantially intact;
injecting a synthetic material into the capsular bag to form an
artificial lens including loose monomers;
placing biodendrimer within the capsular bag; and
selectively exposing portions of the artificial lens to an energy
source to alter the refractive properties of the artificial lens to change
its volume to a predetermined volume to correct a predetermined
refractive error when exposed to an energy source.
References Relied on by the Examiner
Peyman US 4,685,921 Aug. 11, 1987
Nordan US 5,326,348 Jul. 5, 1994
Hodd US 6,399,734 B1 Jun. 4, 2002
Holmen US 6,533,769 B2 Mar. 18, 2003
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Grinstaff1 US 2004/0086479 A1 May 6, 2004
The Rejections on Appeal2
1. Claim 1 is rejected as being anticipated under 35 U.S.C. § 102(b or e)
in view of Grinstaff (Ans. 3).
2. Claims 1 and 3-6 are rejected as being unpatentable in view of Hodd
or Grinstaff in combination with Holmen under 35 U.S.C. § 103(a) (Ans. 4).
3. Claims 1-11, 16, 18-22 and 24 are rejected as being unpatentable in
view of Hodd, Grinstaff and Holmen under 35 U.S.C. § 103(a) (Ans. 4).
4. Claims 12-15 are rejected as being unpatentable in view of Hodd,
Grinstaff, Holmen and Peyman ('921) under 35 U.S.C. § 103(a) (Ans. 5).
5. Claim 17 is rejected as being unpatentable in view of Hodd, Grinstaff,
Holmen and Nordan under 35 U.S.C. § 103(a) (Ans. 5).
6. Claims 1, 3-22 and 24 are provisionally rejected under the judicially
created doctrine of obviousness-type double patenting as being unpatentable
over claims 1-34 of copending Application No. 09/958,826 in view of
Grinstaff (Ans. 6).
ISSUE
Does Grinstaff disclose a method of injecting both biodendrimer and
synthetic material including loose monomers into the eye’s capsular bag to
1 The Examiner initially identified Grinstaff as Publication No.
2004/0131582 but a correction was made in the Office Communication
mailed Mar. 6, 2009. Appellant addresses the correct reference.
2 The Examiner has withdrawn the provisional rejection of claims 1, 3-22
and 24 under the judicially created doctrine of obviousness-type double
patenting as being unpatentable over claims 1-38 of copending Application
No. 10/993,169 in view of Grinstaff (Ans. 2).
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form an artificial lens and then exposing the artificial lens to an energy
source?
Has the Examiner established that one of ordinary skill in the art at the
time of the invention would have had reason to inject both biodendrimer and
synthetic material including loose monomers into the capsular bag of an eye
to form an artificial lens and then exposing the artificial lens to an energy
source when it was known to employ dendritic polymeric compositions in
medical treatments which include endocapsular lens replacement?
ANALYSIS
The rejection of claim 1 under 35 U.S.C. § 102(b or e) as being
anticipated by Grinstaff
Independent method claim 1 requires the steps of injecting a
“synthetic material into the capsular bag to form an artificial lens including
loose monomers” and “placing biodendrimer within the capsular bag.” The
Examiner states that claim 1 is “clearly anticipated by Grinstaff” but does
not identify where any of the various steps specified in claim 1 can be found
in Grinstaff (Ans. 3). The Examiner’s rationale for the rejection of the
above cited steps is because Appellant “defines synthetic material quite
broadly in the originally filed disclosure”3 and that this definition does not
3 “The synthetic material 38 is preferably a mixture that includes
biodendrimer and an un-polymerized material; however, the synthetic
material 38 can be any suitable material. Preferably, the un-polymerized
material is an un-polymerized silicone based material; however, the material
can be any suitable un-polymerized material….Further, the synthetic
material 38 is preferably a mixture of approximately 50% biodendrimer and
approximately 50% an up-polymerized material; however, the synthetic
material 38 can have any suitable percentage of biodendrimer, un-
polymerized material or other material.” (Spec. ¶ [0041]) (italics added).
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preclude “considering a portion of the crosslinked biodendrimer to be the
‘biodendrimer’ with the remaining portion thereof along with the unredacted
monomers to be the ‘synthetic material’” (Ans. 6-7 referencing Spec. ¶
[0041]). Appellant contends that “the Grinstaff application does not disclose
or render obvious a method that includes placing both biodendrimer and
synthetic material including loose monomers into the capsular bag” because
the “Grinstaff application merely teaches mixing dendrone and PEG
dialdehyde for preparation of an endocapsular lens” (Br. 8).
Grinstaff states that his “patent describes the synthesis,
characterization, and use of novel dendrimers and dendritic macromolecules
called ‘biodendrimers or biodendritic macromolecules’ composed of such
biocompatible or natural metabolite monomers such as but not limited to
glycerol” (Grinstaff ¶ [0004]). Grinstaff further identifies his invention as
generally “in the area of using dendritic polymeric gels, gel-cell, gel-drug
compositions in medical treatments,” including endocapsular lens
replacement (Grinstaff ¶¶ [0010], [0013] and [0035]). The Examiner’s
rationale is that Grinstaff’s biodendrimer can be separated into both the
claimed “biodendrimer” component and the claimed “synthetic material”
component (Ans. 7). The Examiner does not identify where Grinstaff
expressly teaches that the biodendrimer can be separated as suggested nor
does the Examiner identify where Grinstaff inherently teaches that such
separation can be done.
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987). Every element and limitation of the claimed invention
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must be found in a single prior art reference, arranged as in the claim.
Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
2001).
As the Examiner points out, Appellants do describe an embodiment in
which the synthetic material may “include” a biodendrimer (Ans. 6, quoting
Spec. ¶ [0041]). However, the language used in the portion of the
Specification cited by the Examiner contrasts with the language of the
claims. When read in light of the Specification, which describes
embodiments in which the biodendrimer is a component of the synthetic
material (e.g., Spec. ¶ [0041]) and embodiments in which they are two
separate materials (e.g., Spec. ¶¶ [0052]-[0056]), even when applying the
broadest reasonable interpretation, one of ordinary skill in the art would
understand the two separate steps recited in claim 1 to refer to the latter.
Thus, based on the record presented, we are not persuaded by the Examiner
that Grinstaff teaches both the claimed steps of injecting a “synthetic
material into the capsular bag to form an artificial lens including loose
monomers” and “placing biodendrimer within the capsular bag” since the
Examiner identifies the claimed biodendrimer as being both the
biodendrimer component and the synthetic material component (See Ans. 7;
App. Br. 8).
Claim 1 further requires the step of “selectively exposing portions of
the artificial lens to an energy source.” The Examiner does not identify any
disclosure in Grinstaff that teaches such exposure. Instead, the Examiner
states that “the selectively exposed portions of the lens could easily be
selected to be the entire lens” and that “the practitioner would desire to
expand the lens to a predetermined volume, such as a volume that would
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fully expand the capsular bag, lest flaccidity or wrinkles completely
compromise the usefulness of the lens as an optical element” (Ans. 7).
Appellant contends that there “is clearly no disclosure or suggestion of the
method step of altering the refractive properties of a lens to change its
volume to a predetermined volume in the Grinstaff application” (Br. 9).
The Examiner addresses what a practitioner would desire however, it
has long been settled that claims must be distinguished from the prior art in
terms of structure rather than function (or desire). See In re Schreiber, 128
F.3d 1473, 1477 (Fed. Cir. 1997). The recited step requires exposure “to an
energy source” and the Examiner has not identified where Grinstaff
discloses this energy source nor the exposure of this energy source to an
artificial lens as claimed.
In view of the above and based on the record presented, we are not
persuaded that claim 1 is “clearly anticipated by Grinstaff” as the Examiner
states (Ans. 3). We reverse the anticipation rejection of claim 1.
The rejection of claims 1 and 3-6 as being unpatentable in view of
Hodd or Grinstaff in combination with Holmen under 35 U.S.C. § 103(a)
Appellant argues claims 1 and 3-6 together (Br. 9). We select claim 1
for review. The Examiner states that “Hodd et al and Grinstaff et al teach a
method as claimed except for any discussion of the precise location of the
portion of the capsular bag that is removed,” such precise location being a
reference to dependent claim 3 (Ans. 4). Appellant contends that “[a]s with
the Grinstaff application, the Hodd patent does not disclose or render
obvious altering the refractive properties of a lens to change its volume” and
that Holman does not overcome these deficiencies (Br. 9). Appellant also
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repeats its arguments regarding the placement of both biodendrimer and a
synthetic material into the capsular bag (Br. 9-10).
The Examiner does not provide any additional arguments, other than
for the reasons “as set forth above,” that the combined teachings of Hodd
and Holmen, or of Grinstaff and Holmen, satisfy the base rejection. This
base rejection was not deemed persuasive above. As no new reasons are
provided by the Examiner that address the deficiencies stated above, we
reverse the Examiner’s obviousness rejection of claim 1. We likewise
reverse the rejection of claims 3-6.
The rejection of claims 1, 3-114, 16, 18-22 and 24 as being
unpatentable in view of Hodd, Grinstaff and Holmen under 35 U.S.C.
§ 103(a)
Appellant separately argues independent claims 1, 22 and 24 (Br. 11).
We address each claim below with dependent claims 3-11, 16 and 18-21
standing or falling with their parent claim.
Claim 1
The Examiner states that Hodd teaches the method claimed “except
for any discussion of the precise location of the portion of the capsular bag
that is removed” and that Hodd also does not teach “the specific recitation
that the dendrimer be a biodendrimer” (Ans. 4). Holmen is relied upon for
teaching the precise location of the portion of the capsular bag that is
removed (i.e., see dependent claim 3) (Ans. 4). Otherwise, the Examiner
relies on the reasons and rationale “set forth above” in maintaining the
rejection of claim 1 (Ans. 8). Appellant again reiterates that “the cited prior
art does not disclose, teach or suggest placing both biodendrimer and
4 The Examiner mistakenly referenced claims 1-11 but claim 2 was
previously cancelled in Appellant’s Amendment mailed Oct. 2, 2006.
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synthetic material including loose monomers into the capsular bag” and
exposing the artificial lens to an energy source as claimed. (Br. 11).
Because the deficiencies with Grinstaff discussed above are not cured by
either Hodd or Holman, we reverse the Examiner’s rejection of claim 1.
Claim 22
Claim 22 requires the coating of at least a portion “of an external
surface of a capsular bag” with a synthetic substance and “wherein the
synthetic substance includes biodendrimer and an unpolymerized material
positioned having loose monomers and a polymerization initiator”. Claim
22 also requires that the synthetic material be “exposed to an energy source.”
The Examiner states “that while the references do not set forth this specific
application ipsis verbis, that such is still fairly taught within the four corners
of the references” and that “one of ordinary skill in the art would have
understood that the materials of Grinstaff et al were suitable for external
sealing of the hole in the capsular bag required to replace the lens therein"
(Ans. 8-9). Appellant reiterates the contentions previously asserted and the
Examiner presents no further reasons that might address the deficiencies
stated above. Accordingly, we reverse the rejection of claim 22.
Claim 24
Claim 24 requires that the “flexible capsule is multifocal”. The
Examiner does not indicate how Grinstaff, Hodd or Holman teach a
multifocal capsule. Appellant contends that “these references do not
disclose, teach or suggest a multifocal lens” (Br. 12). Appellant also
reiterates the contention made above that the cited art does not teach
exposing the artificial lens to an energy source as claimed. As the Examiner
does not address the multifocal lens requirement of this claim and does not
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disclose where the cited art teaches exposing the lens to an energy source
supra, we are not persuaded by the Examiner’s rationales and instead
reverse the Examiner’s rejection of claim 24.
The rejection of claims 12-15 as being unpatentable in view of Hodd,
Grinstaff, Holmen and Peyman under 35 U.S.C. § 103(a)
Claims 12-15 are indirectly dependent on claim 1 and are argued
together (Br. 12). The Examiner’s citation to Peyman does not address the
deficiencies in the Examiner’s rationales discussed supra. Appellant again
states that the cited art does not disclose “placing both biodendrimer and
synthetic material including loose monomers into the capsular bag” and
exposing the artificial lens to an energy source (Br. 12). For the reasons
started above, we reverse the rejection of claims 12-15.
The rejection of claim 17 as being unpatentable in view of Hodd,
Grinstaff, Holmen and Nordan under 35 U.S.C. § 103(a)
Claim 17 depends, indirectly, from claim 1 and further requires
“forming a multifocal lens.” The Examiner relies on the combination of
Hodd, Grinstaff and Holmen for the base rejection and relies on Nordan for
teaching “the desirability of inserting a multifocal lens” (Ans. 5). Appellant
disputes that the cited art teaches “that the lens is multifocal” and reiterates
the contention that none of the cited references teach or suggest exposing the
claimed unpolymerized material “to an energy source” (Br. 12-13). The
Examiner’s reference to Nordan does not cure the deficiencies discussed
supra regarding such exposure and accordingly, we reverse the rejection of
claim 17.
The provisional rejection of claims 1, 3-22 and 24 under the judicially
created doctrine of obviousness-type double patenting as being unpatentable
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over claims 1-34 of copending Application No. 09/958,826 in view of
Grinstaff
The Examiner identifies the copending application number as
09/958,826 when the application number set forth in Appellant’s terminal
disclaimer is 10/958,826 (see Evidence Appendix). Application No.
10/958,826 has become abandoned since the filing of this terminal
disclaimer which renders this rejection by the Examiner moot.
CONCLUSIONS OF LAW
Grinstaff does not disclose a method of injecting both biodendrimer
and synthetic material including loose monomers into the eye’s capsular bag
to form an artificial lens and then exposing the artificial lens to an energy
source.
The Examiner has not established that one of ordinary skill in the art
at the time of the invention would have had reason to inject both
biodendrimer and synthetic material including loose monomers into the
capsular bag of an eye to form an artificial lens and then exposing the
artificial lens to an energy source when it was known to employ dendritic
polymeric compositions in medical treatments which include endocapsular
lens replacement.
DECISION
The Examiner’s rejection of claim 1 as being anticipated under 35
U.S.C. § 102(b) in view of Grinstaff is reversed.
The Examiner’s rejections of claims 1, 3-22 and 24 as being
unpatentable under 35 U.S.C. § 103(a) are reversed.
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The Examiner’s provisional obviousness-type double patenting
rejection is moot.
REVERSED
MP