Ex Parte Vaquero

Patent Trial and Appeal Board

Oct 22, 2012

10813861 (P.T.A.B. Oct. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte EDWARD VAQUERO
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Appeal 2011-013414
Application 10/813,861
Technology Center 3700
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Before ERIC GRIMES, LORA M. GREEN, and ULRIKE W. JENKS,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
injector for an intraocular lens, which the Examiner has rejected as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
The Specification discloses an injector for an intraocular lens (IOL) in
which the tip has several contiguous segments (Spec. 5, ¶ 9). The distal-
most segment (S4) terminates in an open end, has a continuous cross-section,
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and is contiguous with a tapered segment (S3) (id.). S4 and S3 meet at a
transition point (T3) (id.).
The Specification discloses that “[a]t least one but preferably two slots
extend from the second transition point T2 [at the proximal end of tapered
segment S3] to the tip open end face” (id. at 6, ¶ 11). “Since the slots reduce
the hoop strength of the tip along segments S3 and S4, those segments can
spread outwardly under the force exerted by the compressed IOL as it travels
through those segments” (id.). “This spreading action of this portion of the
tip effectively ‘anchors’ the inserted portion (segment S4) of the tip in the
eye until the IOL has completely exited the device” (id.).
Claims 13-15, 18-23, and 25-31 are on appeal. Claim 13, the only
independent claim, is representative and reads as follows:
13. An injector for delivering a foldable IOL into an eye, comprising:
an injector body having a tip comprising a first segment, a second
segment and a third segment, the third segment extending to an open end of
the injector body, the open end being adapted to permit the IOL to exit the
injector into the eye,
at least one slot extending from the open end through the second
segment and the third segment, the third segment connected to the second
segment at a transition point, the transition point characterized by a change
in taper of an outer dimension of the tip.

The Examiner has rejected claims 13-15, 18-23, 25-27, and 29-31
under 35 U.S.C. § 103(a) as obvious based on Clark1 and Brown2 (Answer
3).3 The Examiner has rejected claim 28 under 35 U.S.C. § 103(a) as

1 Clark et al., US 6,491,697 B1, Dec. 10, 2002.
2 Brown et al., 6,010,510, Jan. 4, 2000.
3 The Examiner’s statement of the rejection actually recites claims “13-15,
18-23, 25, 26, and 28-31” (Answer 3); i.e., it includes claim 28, but not
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obvious based on Clark, Brown, and Feingold4 (Answer 7). The same issue
is dispositive for both rejections.
The Examiner finds that Brown discloses an IOL injector that includes
all of the limitations of claim 13 except that it does not disclose that “the
elongate distal portion (105) of the cannula (28) further comprises a second
segment, wherein the second segment [is] connected to the third segment at
the transition point, the transition point characterized by a discrete change in
taper on the outer surface” (Answer 4). The Examiner finds that Brown
discloses an IOL injector comprising a third segment connected to a second
segment “having a taper located on the outer surface and a taper located on
the inner surface of bore 16” (id.). The Examiner finds that “[a]pparently,
the advantage of having a taper on the outer and inner surfaces on the second
segment is for gradually compressing the IOL to fit through a small distal
tip” (id.) and concludes that “[i]t would have been obvious to one of
ordinary skill in the art to modify the shape of the elongate distal portion
(105) of Clark to have a similar shape according to the nozzle (18) as
suggested by Brown so that it too would have the same advantage” (id. at 5).
Appellant argues that the Examiner has not provided a proper
rationale for combining the references because “Clark teaches that the
purpose of slits 121 (i.e., slots) is to permit lateral expansion of a
compressed lens prior to release into the eye (col. 6, lines 35-36). This

claim 27. However, the Examiner’s discussion of the rejection does not
address claim 28, although it addresses claim 27 (id. at 7). Appellants
understood the rejection to apply to claim 27, and argued it accordingly
(Appeal Br. 8-9).
4 Feingold et al., US 5,772,666, June 30, 1998.
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purpose is contrary to the Examiner’s reason for adding a change in taper
where the slit is present (i.e., compressing the IOL to fit though the injector
tip.” (Appeal Br. 7.)
We agree with Appellant that the Examiner has not shown that it
would have been obvious to combine a nozzle having a tapered segment, as
taught by Brown, with the slotted-nozzle IOL taught by Clark.
Clark discloses an IOL “inserter [that] permits the lens to expand prior
to its release into the eye. In this way, the resilient force which works to
expand the compressed lens is dissipated prior to the lens being discharged
from the inserter.” (Clark, col. 2, ll. 47-51.) Clark discloses that its device
includes a cannula, the free end of which “is preferably provided with a pair
of opposed longitudinal slits 121. . . . Slits 121 are wide enough to permit
sides 18a, 18b of optic 14 to extend outward beyond the exterior sides 123
of cannula 28. The slits therefore permit lateral expansion of the lens prior
to its release into the eye.” (Id. at col. 6, ll. 31-36.) “As a result, the natural
resilient force which biases the lens to assume its original uncompressed
shape is dissipated in the controlled environment of the cannula. The lens is
thus not released with any velocity as in many prior art inserters.” (Id. at
col. 6, ll. 37-40.)
Brown discloses a plunger (Brown, col. 2, ll. 2-4) that can be used
with an IOL injector “of any suitable design well-known in the art” (id. at
col. 2, ll. 51-52). Brown’s Figure 4 shows an injector that includes a tapered
segment; although Brown does not describe the reason for the taper, the
Examiner understands it to be “for gradually compressing the IOL to fit
through a small distal tip” (Answer 4).
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Thus, Clark describes slits that are for the purpose of allowing an IOL
to expand, and Brown discloses a tapered segment that the Examiner
understands to be for compressing an IOL. The claims on appeal require a
slot that extends from the open end through the second, tapered, segment.
We agree with Appellant that the Examiner’s combination of these features,
based on Clark and Brown, in the same segment of an IOL injector would
defeat the purpose of one or the other element. The Examiner did not
address this apparent conflict in the Response to Argument section of the
Answer (pages 8-9).
The Examiner’s separate rejection of claim 28 (Answer 7-8) relies on
the same reason for combining Clark and Brown, and therefore suffers from
the same deficiency.
SUMMARY
We reverse the rejection of claims 13-15, 18-23, 25-27, and 29-31 as
obvious based on Clark and Brown, and the rejection of claim 28 as obvious
based on Clark, Brown, and Feingold.

REVERSED

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