Ex Parte Soye et al

Board of Patent Appeals and Interferences

Feb 27, 2009

11178758 (B.P.A.I. Feb. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL J. SOYE and
XIAOXIAO ZHANG
____________

Appeal 2009-0082
Application 11/178,758
Technology Center 3700
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Decided: 1 February 27, 2009
____________

Before LINDA M. GAUDETTE, MICHAEL P. COLAIANNI, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

1
Appeal 2009-0082
Application 11/178,758

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s rejection of claims 1-7.2 (Examiner’s Answer entered
November 23, 2007, hereinafter “Ans.”). We have jurisdiction pursuant to
35 U.S.C. § 6(b) (2002).
We AFFIRM.
THE INVENTION
Appellants describe an intraocular lens system having a ring-like first
component and a second component having an optical power. Appellants
state that the intraocular lens system is safe, biocompatible, and allows for
the adjustment of refractive power. (Spec. 2, ll. 16-36; Spec. 6, ll. 1-5).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. An intraocular lens system, comprising:
a) a ring-like first component having an inner rim or lip, the
inner rim or lip having a non-circular shape in plan view with a
short axis and a long axis; and
b) a second component having an optical power, the second
component having a plurality of haptics sized to ride on the
inner rim or lip of the first component so that rotation of the
second component causes the second component to move along
the optical axis of the lens system without changing the optical
power of the second component.

THE REJECTION

2 Claims 8-23 have been canceled. (Appeal Brief filed August 21, 2007,
hereinafter “Br.,” 6 and 7).
Appeal 2009-0082
Application 11/178,758

The Examiner rejected claims 1-7 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
The Examiner determined that Appellants’ Specification does not support
rotating the second component causing the second component to move along
the optical axis “without changing the optical power of the second
component.” (Ans. 4). The Examiner found that the material of the second
component is only described as being formed of soft foldable materials, and
that there does not appear to be any structure to prevent deformation and a
corresponding change in optical power, when the second component is
rotated. (Ans. 4).
Appellants argue that claim 1 is fully supported by the Specification,
which discloses that the optic is stable in the plane perpendicular to the
optical axis. (Br. 3). Appellants contend that a stable optic has a stable
optical power. (Br. 3). In addition, Appellants argue that the Declaration of
Xiaoxiao Zhang under 37 C.F.R. §1.132 dated July 27, 2007 (hereinafter,
“the Declaration”) demonstrates that one of ordinary skill in the art
understands optic stability as described in the Specification to include both
positional and optical stability. (Br. 3).

ISSUE
Have Appellants shown that the Examiner reversibly erred in finding
that the claim recitation “without changing the optical power of the second
component” lacks written description support in the Specification?
We answer this question in the negative.

FINDINGS OF FACT
Appeal 2009-0082
Application 11/178,758

The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. The recitation in claim 1 “without changing the optical power of
the second component” was added in the amendment of March 22,
2007. (Response to Office Action of March 7, 2007, dated March
22, 2007).
2. Appellants’ Specification states:
second component 14 is generally circular with an optic
15…Optic 15 tapers from being relatively thick in the middle to
having a relatively thin, or sharp, edge that connects to a
plurality of haptics 24 integrally formed with optic 15….optical
component 14…is made from a soft foldable material such as a
soft acrylic.
(Spec. 4, ll. 30-35).

3. Appellants’ Specification states:
Haptics 24 are connected to optic 15 by connecting
portions 26 that are relatively wide in plan view, but relatively
thin in cross-section. In addition, haptics 24 contain outwardly
projecting tips 32. Such a construction helps to prevent rotation
of the second component 14 within first component 12 and
helps to maintain the stability of optical portion 14 in the plane
perpendicular to optical axis 28, but allows some flexibility
along optical axis 28.
(Spec. 5, ll. 1-6).

4. Appellants’ Specification states:
As best seen in FIG. 10, in a second embodiment of the
present invention, first or base component 12’ has an inner rim
or lip 150 that is slightly elliptical, oval, out-of-round or non-
circular in shape having a short axis 100 and a long axis 102.
This slightly oval or otherwise out of round shape will vary the
amount of compression on haptics 24 of second component 14.
Appeal 2009-0082
Application 11/178,758

Rotation of second component 14 so that haptics 14 [sic,
24] are be aligned [sic] along short axis 100 will cause haptics
14
[sic, 24] to more [sic] compressed than rotation of second
component 14 so that haptics 14 [sic, 24], are be [sic] aligned
along long axis 102, thereby changing the position of 15 along
optical axis 28, and correspondingly varying the effective
refractive power of lens system 10 implanted in an eye.
(Spec. 5, l. 35 – 6, l. 5).

5. The Declaration states:
Modern intraocular lenses are made from soft materials
such as soft acrylics. These materials have a very high
refractive index, on the order of 1.56, which allows the optic to
be extremely thin. While thin lenses are implanted in an eye
through a small incision more easily, a thin optic made from a
soft material is easily deformed.
(Declaration of Xiaoxiao Zhang, ¶ 11).

6. The Declaration states:
Based on my education and experience, in the context of
the present patent application, one skilled in the art will
understand “stability” to mean both positional and optical
stability.
(Declaration of Xiaoxiao Zhang, ¶ 14).

PRINCIPLES OF LAW
As explained in University of California v. Eli Lilly and Co., 119 F.3d
1559, 1566 (Fed. Cir. 1997),
[t]o fulfill the written description requirement, a patent
specification must describe an invention and do so in sufficient
detail that one skilled in the art can clearly conclude that "the
inventor invented the claimed invention." Lockwood v.
American Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d
Appeal 2009-0082
Application 11/178,758

1961, 1966 (1997); In re Gosteli, 872 F.2d 1008, 1012, 10
USPQ2d 1614, 1618 (Fed. Cir. 1989) ("[T]he description must
clearly allow persons of ordinary skill in the art to recognize
that [the inventor] invented what is claimed."). Thus, an
applicant complies with the written description requirement "by
describing the invention, with all its claimed limitations, not
that which makes it obvious," and by using "such descriptive
means as words, structures, figures, diagrams, formulas, etc.,
that set forth the claimed invention." Lockwood, 107 F.3d at
1572, 41 USPQ2d at 1966.

In other words, the disclosure must convey with reasonable clarity to
those skilled in the art that the inventor was in possession of the invention.
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991).
Compliance with the written description requirement is a question of fact.
Id., at 1563.

ANALYSIS
Appellants do not separately argue the claims. Accordingly, we
confine our discussion to appealed claim 1, which is representative of the
arguments made by Appellants pursuant to 37 C.F.R. § 41.37(c)(1)(vii).
Appellants contend that the Specification fully supports the language
of claim 1, by disclosing that the optic may move along the optical axis, but
is stable in the plane perpendicular to the optical axis. (Br. 3; FF 3).
However, claim 1 recites in absolute terms that no change in the optical
power of the second component is permitted during rotation. Appellants’
second component includes both the optic and haptics, which are integrally
formed from a soft, foldable material. (See Ans. 4; FF 2). Appellants’
Specification discloses that during rotation of the second component, an
amount of compression is exerted on the haptics. (FF 4). We agree with the
Appeal 2009-0082
Application 11/178,758

Examiner that the Specification does not describe which elements of
the optical component deform or do not deform upon rotation of the second
component. (Ans. 5-7). Appellants have failed to provide sufficient
persuasive evidence that the soft, foldable material of the optic, which
is part of the second component, is not altered to any degree as a result of the
force exerted on the second component. (See Ans. 7). The Examiner’s
position is also consistent with the Declaration, which acknowledges that the
optic is easily deformed. (FF 6).
In addition, the Specification does not support Appellants’ statement
that “stability” includes optical stability to where absolutely no change in the
optical power of the second component occurs during rotation. The
Specification only states that the structure of the lens system “helps to
maintain the stability” of the second component in the plane perpendicular to
the optical axis. (See FF 3). However, as the second component rotates, the
position of the optic in the plane perpendicular to the optical axis changes.
(See FF 4). Thus, although the Declaration states that “stability” includes
optical stability in the perpendicular plane (FF 6), we agree with the
Examiner that the Specification refers to the positional stability of the
second component, when the second component is positioned within the first
component. (See Ans. 6).
Therefore, the Specification does not convey with reasonable clarity
to those skilled in the art that the Appellants were in possession of an
intraocular lens system where the second component is rotated “without
changing the optical power of the second component.”

Appeal 2009-0082
Application 11/178,758

CONCLUSION
Appellants have failed to demonstrate that the Examiner reversibly
erred in finding that the claim recitation “without changing the optical power
of the second component” lacks written description support in the
Specification.

ORDER
We affirm the Examiner’s decision rejecting claims 1-7 under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
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

PL initial:
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