Ex Parte Toop

Board of Patent Appeals and Interferences

Mar 30, 2009

10633209 (B.P.A.I. Mar. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PETER TOOP
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Appeal 2009-0603
Application 10/633,209
Technology Center 3700
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Decided:1 March 30, 2009
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Before WILLIAM F. PATE III, LINDA E. HORNER, and
JOHN C. KERINS, Administrative Patent Judges.

WILLIAM F. PATE III, Administrative Patent Judge.

DECISION ON APPEAL

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).
Appeal 2009-0603
Application 10/633,209

2
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-5 and 7. These
are the only claims remaining in the application. We have jurisdiction over
the appeal under 35 U.S.C. §§ 134 and 6.
The claimed invention is directed to an intraocular lens for a toric
optic wherein the haptics have a proximal part and a distal part with the
thickness of the region of the distal part being greater than the rest of the
haptic.
Claim 1, reproduced below, is further illustrative of the claimed
subject matter.
1. An intraocular lens comprising a toric optic and one or
more haptics, each haptic having a proximal part and a distal
part, wherein the thickness of a region of the distal part of the,
or each, haptic is greater than the rest of the haptic, such that
rotation of the lens is inhibited in use.

REFERENCES
The references of record relied upon by the examiner as evidence of
obviousness are:
Blake US 6,425,917 B1 Jul. 30, 2002
Toop EP 0 962 196 A1 Dec. 8, 1999

REJECTIONS
Claims 1-5 and 7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Toop in view of Blake.

ISSUES
Appellant argues that the Examiner fails to make a prima facie case of
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obviousness due to the fact that Blake is principally intended for placement
in the anterior chamber of the eye rather than in the posterior chamber.
Appellant further argues that Blake does not disclose an advantage or
suggestion of desirability in connection with the haptic having a thicker
distal part. Appellant further argues that one of ordinary skill when viewing
Blake would not recognize that Blake finds it necessary to stabilize or inhibit
rotation with respect to the toric optic. Appellant also argues that one of
ordinary skill would not place the intraocular lens of Blake in the capsular
sac, inasmuch as the capsular sac, when contracting, would lead to twisting
and buckling of the haptic or piercing of the sac.
In the Reply Brief, Appellant continues to argue that Blake is for
placement in the anterior chamber of the eye and that placement of Blake in
the capsular sac would lead to haptic failure of the Blake lens. Finally,
Appellant argues that Blake fails to disclose an advantage in providing a
thicker haptic, and that the thicker distal region of the elastomer-coated
haptic in Blake is merely an incidental effect.
ISSUE
The sole issue for our consideration is whether Appellant has
established that the Examiner erred in rejecting claims 1-5 and 7 under 35
U.S.C. § 103(a).

FINDINGS OF FACT
1. Toop discloses an intraocular lens having an optical region and two
curved haptics. Para. [0009]. The haptics disclosed in Toop are
compressible and are shaped such that during the first stage of compression,
the proximal part of the haptic can be fully compressed and in the second
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stage, the distal part of the haptic is compressed. Para. [0014]. When the
haptics are entirely compressed they form an essentially elliptical form
within the lens or capsule of the eye. Para. [0013]. Toop differs from the
claimed subject matter in that the distal part of the haptic is not thicker than
the proximal part.
2. Blake discloses an intraocular lens with an optic 200 and
compressible haptics to stabilize the position of the optic in the eye. Blake
states that the lens optic 200 can be of any type of lens and specifically
mentions a toric or aspheric lens. See col. 5, ll. 51-57.
3. The invention of Blake is principally directed to a dual
composition haptic with a high modulus portion and a lower modulus
portion, partially or completely covering the high modulus portion of the
haptic. The purpose of the lower modulus material (an elastomer) is to
extend beyond the tip of the haptic to produce a softer contact point for the
eye tissue. See col. 3, ll. 27-30. In another location in the patent, Blake
refers to this contact as a softer atraumatic contact point or lip which rests
against the eye tissue. See col. 4, ll. 63-65; col. 9, l. 67. Thus Blake gives an
express, written advantage of using the elastomer on the distal end of the
haptic. Blake also mentions reducing discomfort as an advantage. See col.
10, l. 4.
4. Blake states that the intraocular lens disclosed in the patent may be
used anteriorly or posteriorly in the eye but is particularly or especially
suited for use in the anterior chamber. See col. 4, ll. 50-54. At col. 5, ll. 1-
23, Blake suggests that the intraocular lens can be capsularly implanted. In
this passage Blake describes how a lens is placed in a capsular sac. Then in
lines 20 and 21, Blake states that the instant lens may be implanted in the
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procedure outlined above. Thus, Blake clearly discloses that, while not
preferred, this intraocular lens could be emplaced in the capsular sac.
5. The elastomeric portion 300 disclosed in Blake can be seen as
thicker at the distal portion than at the proximal portion of the haptic in
Figures 3B, 4C, 5B, 5D, 5F, 5H, 5J, 5L and 7B. One method for placing the
elastomer on the haptic is dip coating. See Example 1 at col. 11, ll. 5 and 6
and col. 11, ll. 9-11. It is our finding that the dip-coated elastomer when
applied on the higher modulus haptic naturally makes the haptic distal end
thicker than the haptic proximal portion.

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, ___,
127 S. Ct. 1727, 1734 (2007). The question of obviousness is resolved on
the basis of underlying factual determinations including (1) the scope and
content of the prior art, (2) any differences between the claimed subject
matter and the prior art, (3) the level of skill in the art, and (4) where in
evidence, so-called secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966). See also KSR, 550 U.S. 398 at ___, 127 S. Ct. at
1734 (“While the sequence of these questions might be reordered in any
particular case, the [Graham] factors continue to define the inquiry that
controls.”).
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“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference .... Rather, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted); see also In re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the
inventions of the references be physically combinable to render obvious the
invention under review.”); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973)
(“Combining the teachings of references does not involve an ability to
combine their specific structures.”).
The law does not require that the references be combined for the
reasons contemplated by the inventor. In re Beattie, 974 F.2d 1309, 1312
(Fed. Cir. 1992), citing In re Kronig, 539 F.2d 1300, 1304 (CCPA 1976)
and In re Lintner, 458 F.2d 1013, 1016 (CCPA 1972). “[A]ny need or
problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements
in the manner claimed.” KSR, 550 U.S. at ___, 127 S. Ct. at 1742
(finding that the Court of Appeals erred in holding that courts and patent
examiners should look only to the problem the patentee was trying to
solve.).

ANALYSIS
Based on our factual findings, we are in agreement with the Examiner
that it would have been obvious to make the distal portion of Toop thicker
than the proximal portion by placing an atraumatic elastomeric coating on
the distal portion for the advantage of providing a gentle contact with the eye
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tissue. This is merely combining prior art elements according to known
methods to yield predictable results. We further agree that by following
Example 1 of the Blake patent and dipping the distal end of the haptic, the
haptic would be thicker than the proximal portion.
Appellant argues that there is no apparent reason to combine the
known elements of Toop and Blake. As noted above, there is ample
motivation and an expectation of success with respect to the elastomeric
coating and the distal end of the haptic.
Appellant argues that Blake is merely for placement in the anterior
chamber of the eye. This is belied by multiple places in the Blake
specification that teach that the toric optic of Blake could be placed in the
posterior section of the eye, and one particular passage of Blake, wherein it
is stated that Blake can be implanted in the capsular sac itself. Finding 4.
Thus, we do not credit Appellant’s argument that Blake is only for anterior
application.
Appellant argues that there is no advantage or suggestion of
desirability given by Blake for a thicker distal part. This argument also is
not credited, as the Examiner has pointed to several express statements in the
Blake patent that refer to gentle or atraumatic contact. Blake also refers to
patient discomfort.
Appellant argues that the present invention solves a problem different
from both Toop and Blake. However, the references in an obviousness
rejection need not be combined for the reasons or purpose of Appellant’s
invention.
Appellant argues that if the haptic of Blake were to be placed in a
capsular sac, then the haptic would fail. There is no evidence that this is the
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case. Furthermore, obviousness does not require bodily incorporation of the
structures of the references. Here, Blake merely teaches that the outer
surface of the haptic should be made thicker for gentler contact with eye
tissue.
Appellant further argues that the reason to combine the cited
references is found in hindsight. This is clearly not the case, inasmuch as
the rationale for combining the references is not for the reason stated in
Appellant’s specification.
In the Reply Brief, Appellant again argues that Blake is intended for
the anterior chamber of the eye. It is our finding that while anterior
placement may be preferred, Blake does suggest and discuss placement of
the haptics of his invention in the posterior portion of the eye and even in the
capsular sac. Appellant argues that when Blake states that it is envisioned
that the lens could be implanted in the posterior chamber, it is clear that
Blake has not done so. An actual reduction to practice is not required of the
Blake reference for it to be a considered a patent-defeating disclosure under
either § 102 or § 103. We further note that Appellant has not argued that the
Blake disclosure is non-enabling and has not even mentioned undue
experimentation. At any rate, this is an individual attack on the reference
where the rejection is based on a combination of references. “Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)).
Appellant again argues that the placement of the haptic in the capsular
sac would cause the haptic to fail. This argument is based on the bodily
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incorporation of the haptic of Blake on the Toop lens. Obviousness does not
require bodily incorporation. It is the teaching of Blake to apply an
atraumatic coating on the haptic. It is this coating which would be applied to
the haptic of Toop.
Appellant describes the thicker elastomer coating of the haptic of
Blake as merely an incidental effect. This is belied by Blake’s repeated
reference to the gentle or atraumatic contact generated by the distal
elastomeric coating.
CONCLUSION
For the foregoing reasons, the Appellant has failed to establish that the
Examiner erred in rejecting claims 1-5 and 7 under 35 U.S.C. § 103(a). The
rejection of these claims 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).
AFFIRMED

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