Ex Parte Trese et al

Board of Patent Appeals and Interferences

Jan 7, 2005

09820159 (B.P.A.I. Jan. 7, 2005)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.

Paper No. 22

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MICHAEL T. TRESE
and
GEORGE A. WILLIAMS
__________

Appeal No. 2004-2249
Application No. 09/820,159
___________

ON BRIEF
___________

Before WALTZ, DELMENDO, and JEFFREY T. SMITH, Administrative
Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal under 35 U.S.C. § 134
(2004) from the examiner’s final rejection of claims 1, 2, 5,
and 6 in the above-identified application. Claims 3 and 4, the
only other pending claims, stand “objected to as being dependent
upon a rejected base claim” but indicated as “allowable if
rewritten in independent form including all of the limitations
Appeal No. 2004-2249
Application No. 09/820,159

2
of the base claim and any intervening claims.”1 (Examiner’s
answer mailed Oct. 21, 2003, paper 17, page 2.)
The subject matter on appeal relates to a “method for
creating a separation of posterior cortical vitreous in an eye
from an eye retina.” According to the appellants, “[c]ertain
diseases and/or conditions of the eye, such as diabetes, cystoid
macular edema or trauma, produce a vitreoretinal traction on the
surface of the retina,” which, if continued, “may lead to breaks
in the retinal surface and, in severe cases, to retinal
detachment.” (Specification, page 1, lines 9-12.) The
appellants further explain that “[t]he introduction of plasmin
into the vitreous humor creates a separation of the posterior
cortical vitreous and the retina thus minimizing or eliminating
the vitreoretinal traction.” (Id. at page 1, lines 21-23.) The
appellants also disclose that “if additional plasmin is
necessary to create the desired separation between the vitreous
16 and the retina 14, a portion of the aqueous humor 16 may be
removed from the anterior chamber 32 [sic] by paracentesis to
eliminate excessive intraocular pressure.” (Id. at page 3,

1 The final rejection under 35 U.S.C. § 112, ¶1 (lack of
written description), of claims 3 and 4 has been expressly
withdrawn. (Answer at 5.)

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Application No. 09/820,159

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lines 19-23; Figure 1.) Further details of this appealed
subject matter are recited in representative claims 1 and 6
reproduced below:
1. A method for creating a separation of
posterior cortical vitreous in an eye from an eye
retina consisting of the steps [sic] of introducing
plasmin into the vitreous humor so as to create a
separation of the cortical vitreous from the retina
without removal of the vitreous humor from the eye.

6. The method as defined in claim 1 wherein said
introducing step further [sic] consists of the step of
using a sustained release device to introduce plasmin
into the vitreous humor of the eye.

The examiner relies on the following prior art references
as evidence of unpatentability:
Zaffaroni et al. 4,135,514 Jan. 23, 1979
(Zaffaroni)

Trese et al. 5,304,118 Apr. 19, 1994
(Trese)

Claims 1 and 5 on appeal stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Trese. (Answer at 3.) In addition,
claim 2 on appeal stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Trese. (Id. at 3-4.) Further, claim 6 on
appeal stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Trese in view of Zaffaroni. (Id. at 3.)
We affirm these rejections. Because we are in complete
agreement with the examiner’s factual findings and legal
Appeal No. 2004-2249
Application No. 09/820,159

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conclusions, we adopt them as our own and add the following
comments for emphasis.2
As discussed above, appealed claim 1 is directed to a
“method for creating a separation of posterior cortical vitreous
in an eye from an eye retina” consisting of the recited step.
Trese discloses a method for performing a vitrectomy on an eye.
(column 1, lines 7-10.) According to Trese, “[o]ne difficulty
in performing a vitrectomy is that the vitreous exhibits a
relatively strong adhesion to the retina of the eye” and thus
“[m]echanical removal of the vitreous from the retina of the eye
can result in scarring, tearing and other damage to the retina.”
(Column 1, lines 24-28.) To overcome this problem, Trese
teaches the introduction of human plasmin into the vitreous in
order to induce posterior vitreous detachment (i.e., detach the
vitreous from the retina) prior to removing the vitreous from
the eye. (Column 1, lines 37-52; column 2, lines 3-12.)

2 The appellants submit that claim 6 stands or falls
separately from claim 1 and provides reasonably specific
arguments in support thereof. (Appeal brief filed on Sep. 29,
2003, paper 16, pp. 4 and 7.) We note, however, that the
appellants rely on the same arguments for the patentability of
appealed claim 2 and 5 as they do for appealed claim 1.
Accordingly, we confine our discussion to representative claims
1 and 6. 37 CFR § 1.192(c)(7) (2003)(effective Apr. 21, 1995).
Appeal No. 2004-2249
Application No. 09/820,159

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Under these circumstances, we share the examiner’s view
that Trese describes each and every limitation of the invention
recited in appealed claim 1.
Relying on the claim language “consisting of,” the
appellants argue that Trese is not anticipatory because the
reference teaches that removal of vitreous from the eye is an
essential part of the disclosed procedure. (Appeal brief at 6;
see also reply brief filed on Dec. 19, 2003, paper 18, page 2.)
We, like the examiner (answer at 4-5), find this argument
unpersuasive. While it is true that Trese teaches a method for
performing a vitrectomy involving a step of introducing plasmin
followed by a step of removing vitreous, the reference
undeniably describes a method for separating posterior vitreous
from the retina consisting of only one step - a step of
introducing plasmin into the vitreous. (Column 2, lines 4-12.)
Trese’s procedure for separating posterior vitreous from the
retina consisting of only one step (i.e., a step of introducing
human plasmin into the vitreous) is the very same method for
creating a separation of posterior cortical vitreous in an eye
from an eye retina as recited in appealed claim 1. Moreover, we
note that even the present specification discloses that a
portion of the vitreous may be removed after introduction of the
Appeal No. 2004-2249
Application No. 09/820,159

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plasmin to eliminate intraocular pressure. (Specification, page
3, lines 16-23.)
With respect to appealed claim 6, the appellants contend
that “[t]he Trese et al./Zaffaroni et al. combination is
defective and lacking a motivation to combine...” (Appeal brief
at 7-8.) Specifically, the appellants urge that a “slow
sustained release of plasmin only makes sense in the context of
the present invention where the vitreous is left in place
following plasmin action to create a separation” and that
“Trese...teaches the need for a quick complete surgical
procedure.” (Id. at 8.) We cannot agree.
While Trese states that separation of the vitreous from the
retina occurs “after a relatively short period, for example five
to sixty minutes” (column 2, lines 7-12), the reference also
teaches that the plasmin may be introduced into the
“vitreous...by any conventional means...” (column 2, lines 4-7).
Zaffaroni, which the present specification describes as teaching
a sustained released intraocular device suitable for use in the
claimed invention (page 4, lines 6-10), teaches such a
conventional means for delivery. In particular, Zaffaroni
discloses an ocular drug delivery device 10 positioned in
immediate contact with an eyeball 29 for osmotically
Appeal No. 2004-2249
Application No. 09/820,159

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administering a beneficial drug to eye 29 at an osmotically
metered dosage rate. (See, e.g., Column 10, lines 45-49; Figure
5.) Given the collective teachings of Trese and Zaffaroni, we
agree with the examiner’s determination (answer at 3) that one
of ordinary skill in the art would have found in the prior art
the requisite motivation, suggestion, or teaching to combine
Zaffaroni with Trese. In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d
1438, 1442 (Fed. Cir. 1991)(citing In re Dow Chemical Co., 837
F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988)).
For these reasons and those set forth in the answer, we
affirm the examiner’s rejections under: (i) 35 U.S.C. § 102(b)
of appealed claims 1 and 5 as anticipated by Trese; (ii) 35
U.S.C. § 103(a) of appealed claim 2 as unpatentable over Trese;
and (iii) 35 U.S.C. § 103(a) of appealed claim 6 as unpatentable
over Trese in view of Zaffaroni.
The decision of the examiner is affirmed.

Appeal No. 2004-2249
Application No. 09/820,159

8
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED

Thomas A. Waltz )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Romulo H. Delmendo )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
Jeffrey T. Smith )
Administrative Patent Judge )

RHD/kis
Appeal No. 2004-2249
Application No. 09/820,159

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