Griffin, Richard A.

Patent Trials and Appeals Board

Apr 23, 2020

14126056 - (D) (P.T.A.B. Apr. 23, 2020)

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.
14/126,056 12/13/2013 Richard A. Griffin 78087-400190 5830
27717 7590 04/23/2020
Seyfarth Shaw LLP
233 S. Wacker Drive
Suite 8000
Chicago, IL 60606-6448
EXAMINER
WILKES, ZACHARY W
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
04/23/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentdocket_chi@seyfarth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD A. GRIFFIN
Appeal 2018-004588
Application 14/126,056
Technology Center 2800
Before JACQUELINE WRIGHT BONILLA, Deputy Chief Administrative Patent
Judge, and GEORGIANNA W. BRADEN and MICHELLE N. ANKENBRAND,
Administrative Patent Judges.
BRADEN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 27–30.2 We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as
Visioneering Technologies, Inc. Appeal Br. 1.
2 Claims 1–5, 15–26, and 33–41 are cancelled. Appeal Br. A-1 (Claims
Appendix); Mar. 15, 2016 Amendment 5 .
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CLAIMED SUBJECT MATTER
The claims are directed to a method of treating the progression of
myopia by using a lens that induces an aperture. Spec. ¶¶ 10–11; Appeal Br.
A-1 (Claims Appendix). The lens includes a power distribution having a
central point with distance vision correcting power and a rapidly-increasing
power distribution immediately outside of the central point that creates a
blurred region immediately outside of the clear distance vision area. Spec.
¶ 16. This power distribution causes an induced “aperture” without an
actual physical aperture. Id. ¶ 25. According to the Specification, an
induced aperture with the blurred region immediately outside of the clear
distance vision area produces similar effects to the user as a physical pinhole
without suffering from the loss of light and increased diffraction inherent in
physical pinholes. Id. ¶ 11. One aspect of the claimed invention is
illustrated in Figure 8, reproduced below.

Figure 8, above, shows the distribution of optical power rise as a function of
radial dimension (x) from the apex (or center) of a lens. Spec. ¶ 26.
According to the Specification, “centrally located distance vision region 60
has a power distribution that varies within a power range that is effective
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with the apical power for distance vision correction.” Spec. ¶ 26, Fig. 8.
The Specification states “[t]he distribution power rise initially increases
continuously but slowly with increasing radius to provide an effective area
for distance power needed.” Id. ¶ 26, Fig. 8.
Claim 27, reproduced below, is the only independent claim pending in
the application and is illustrative of the claimed subject matter:
27. A method for treating myopia and myopic progression,
comprising the steps of:
determining a user has myopia;
providing a lens having a central region about an apex of the
lens that yields clear distance vision, and an optical blur
region immediately surrounding the central region that
yields an unfocused optical image; and positioning the
lens on an eye of a user to provide an induced aperture
and an increased depth of focus when used to correct
vision of the user, relative to when the lens is not
positioned on the eye of the user,
wherein the central region includes an optical surface
creating a power distribution that varies smoothly from
an apical power at a central point on the apex designed
for distance correction through increasing power
immediately surrounding the central point to inhibit or
reduce myopic progression in the eye, relative to when
the lens is not positioned on the eye of the user.
Appeal Br. A-1 (Claims Appendix).
As shown above in independent claim 27, Appellant’s claims limit the
invention to providing a lens
wherein the central region [of the lens] includes an optical
surface creating a power distribution that varies smoothly from
an apical power at a central point on the apex designed for
distance correction through increasing power immediately
surrounding the central point to inhibit or reduce myopic
progression in the eye, relative to when the lens is not positioned
on the eye of the user.
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Id. (emphasis added).
REFERENCES
The prior art references relied upon which the Examiner relies are:
Name Reference Date
Roffman et al.
(“Roffman”)
US 5,796,462 Aug. 18, 1998
Griffin
(“Griffin ’814”)
US 6,474,814 B1 Nov. 5, 2002
Griffin (“Griffin
’918”)
US 7,178,918 B2 Feb. 20, 2007
Back et al. (“Back”) US 8,876,287 B2 Nov. 4, 2014
Holden et al.
(“Holden”)
US 2007/0296916 A1 Dec. 27, 2007

REJECTIONS
Claims 27 and 28 stand rejected by the Examiner under 35 U.S.C.
§ 103(a) as being unpatentable over Holden and Griffin ’814. Sept. 6, 2017
Non-Final Office Action (“Non-Final Act.”) 3–4; Appeal Br. 7.
Claim 29 stands rejected by the Examiner under 35 U.S.C. § 103(a) as
being unpatentable over Holden, Griffin ’814, and Roffman. Non-Final Act.
4–5; Appeal Br. 7.
Claim 30 stands rejected by the Examiner under 35 U.S.C. § 103(a) as
being unpatentable over Holden, Griffin ’814, and Back. Non-Final Act. 5;
Appeal Br. 7.
Claims 27 and 28 stand rejected by the Examiner under 35 U.S.C.
§ 103(a) as being unpatentable over Griffin ’918 and Holden. Non-Final
Act. 5–6; Appeal Br. 7.
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Claim 29 stands rejected by the Examiner under 35 U.S.C. § 103(a) as
being unpatentable over Griffin ’918, Holden, and Roffman. Non-Final Act.
6–7; Appeal Br. 7.
Claim 30 stands rejected by the Examiner under 35 U.S.C. § 103(a) as
being unpatentable over Griffin ’918, Holden, and Back. Non-Final Act. 7;
Appeal Br. 7.
ANALYSIS
Claims 27–30 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the Examiner’s combination of Holden and Griffin ’814, alone
or combined with other references. Non-Final Act. 3–5; Appeal Br. 7.
These same claims also stand rejected under 35 U.S.C. § 103(a) as being
obvious over the Examiner’s combination of Griffin ’918 and Holden, alone
or combined with other references. Non-Final Act. 5–7; Appeal Br. 7.
1. Holden and Griffin ’814
a. The Teachings of Holden
In rejecting independent claim 27 under § 103(a), the Examiner relies
on the combined teachings of Holden and Griffin ’814, but specifically relies
on Holden for teaching (1) a method for treating myopic progression, (2) a
“central region,” and (3) an “optical blur region immediately surrounding the
central region that yields an unfocused optical image” as recited by claim 27.
Non-Final Act. 3; Ans. 5. Holden describes techniques related to controlling
the progression of myopia using the relative positioning of optical zones on
a contact lens, which are shown in Figures 1B and 5 reproduced below.
Holden, Title, Abstract, Figs. 1B, 5.
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In Figures 1B and 5 above, Holden provides for large central zone 20,
annular peripheral optical zone 24 surrounding central zone 20, and smooth
transition zone 30 located between optical zones 20 and 24. Id. ¶ 31, Figs.
1B, 5. Holden discloses that smooth transition region 30 does not perform
an optical function. Id. ¶ 31.
The Examiner states that the claims do not specify how much of the
“central region” yields clear vision. Ans. 5. The Examiner further states
that “none of the shape/size of the aperture is claimed, and while Holden
discusses the central region can be matched to the pupil size, Holden does
not limit the size/shape to only such a specification.” Id. at 6–7 (citing
Holden ¶¶ 19, 32, 33). Therefore, the Examiner finds that combining
Holden’s optical region 20 and non-optical region 30 would read on the
claimed “central region,” which is immediately surrounded by an optical
blur region (made of regions 24 and 58). Non-Final Act. 3. The Examiner
finds such a combination entirely consistent with the Specification and the
pending claims. Id.; Ans. 5. Thus, the Examiner concludes that the
combination of regions 20 and 30 equate to the recited limitation “wherein
the central regions includes . . . a power distribution that varies smoothly.”
Ans. 5 (citing Holden ¶¶ 31, 36).
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Appellant disputes the Examiner’s position and argues that Holden
fails to disclose (1) an optical blur region immediately surrounding the
central region, or (2) a central region with an optical surface creating a
power distribution that varies smoothly from an apical power at a central
point on the apex designed for distance correction through increasing power
immediately surrounding the central point to inhibit or reduce myopic
progression in the eye, as required by claim 27. Appeal Br. 9–10. Appellant
specifically argues that Holden’s regions 24 and 58 are “not located
immediately surrounding the alleged central point that yields clear distance
vision (20) and are in fact spaced from the central point (20) by a blend
transition region 30.” Id. at 10 (emphasis omitted). Appellant further argues
that “the power differential in Holden does not change at all surrounding the
central point, and is instead flat for 3.5 mm. The alleged blur region of
Holden is therefore not located ‘immediately surrounding the central
point,’” as claimed. Id. at 11 (citing Holden, Fig. 3).
We agree with Appellant because the claims require “wherein the
central region includes an optical surface creating a power distribution that
varies smoothly from an apical power at a central point on the apex
designed for distance correction through increasing power immediately
surrounding the central point to inhibit or reduce myopic progression in the
eye.” Appeal Br. A-1 (Claims Appendix) (emphasis added). Holden does
not teach or suggest increasing power immediately surrounding a central
point on the apex of a lens. Rather, as shown in Figure 4, reproduced below,
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Holden discloses a flat power differential from the center point of a lens
until 3.5 mm from the center point. Holden ¶¶ 40–41, Fig. 4.3

Figure 4 above illustrates that there is no power change in the central optical
zone immediately surrounding the central point (0.0) of the lens because the
power does not start to increase until the lens reaches the transition zone.
See Holden ¶ 41, Fig. 4. Even if we agree with the Examiner’s
interpretation of the “central region” as including central optical zone 20 and
transition zone 30, such an interpretation would still fail to account for
“increasing power immediately surrounding the central point to inhibit or
reduce myopic progression in the eye” as the claims require. This is because

3 Figure 4 is a graph of relative optical power with respect to lens diameter
for the optical zones of the contact lens of the second lens example disclosed
in Holden. Holden ¶ 28. Holden states that “[t]he principal differences
between the first and second examples lie in the design of the transition
zone 130 and peripheral zone 124 of lens 110.” Id. ¶ 40. Thus, for the
purposes of our analysis, central optical zone 120 in example two is the
same as central optical zone 20 in example one, while transition zone 160
serves the same purpose as transition zone 30, and peripheral optical
zone 124 functions similarly to peripheral optical zone 24. Id. ¶¶ 31–32, 40–
41
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the central region of Holden cannot function as a point. A “point,” under its
plain and ordinary meaning, is “an exact position or location on a plane
surface.” See www.mathopenref.com;4 www.mathsisfun.com;5
www.mathplanet.com;6 see also www.merriam-webster.com (defining
“point” as “a geometric element that has zero dimensions and a location
determinable by an ordered set of coordinates”).7 Holden discloses that “the
diameter of central zone 20 is substantially matched to the normal pupil
size.” Holden ¶ 32. Thus, even if central zone 20 is not exactly the size of a
normal pupil, each of Holden’s disclosures regarding the central zone
indicates it is much larger than a “central point.” See Holden ¶¶ 31, 32, 34,
Figs. 1B, 2B.
b. The Teachings of Griffin ’814
In rejecting independent claim 27 under § 103(a), the Examiner relies
on the combined teachings of Holden and Griffin ’814, but specifically relies
on Griffin ’814 for teaching an induced aperture leans with a “central
region” of distance correction with a varying power distribution that varies
smoothly from an apical power at a central point. Non-Final Act. 3–4; Ans.
8. Griffin ’814 describes a multifocal contact lens for treating presbyopia
that includes an induced aperture created by smoothly increasing power

4 Math Open Reference, https://www.mathopenref.com/point.html (last
visited April 21, 2020).
5 Math is Fun, https://www.mathsisfun.com/definitions/point.html (last
visited April 21, 2020).
6 Math Planet, https://www.mathplanet.com/education/geometry/points,-
lines,-planes-and-angles/an-introduction-to-geometry (last visited April 21,
2020).
7 Merriam-Webster Online Dictionary, https://www. https://www.merriam-
webster.com/point.html (last visited April 21, 2020).
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from a central region outwards. Griffin ’814, Figs. 1–2b, 1:52–58, 5:10–26,
7:15–40. Figure 1 of Griffin ’814 is reproduced below.

Figure 1 of Griffin ’814, reproduced above, graphs the local optical power
distribution of a lens (the vertical axis) as a function of radial dimension (the
horizontal axis) from the apex of the lens disclosed in Griffin ’814. With
regards to Figure 1, Griffin ’814 further discloses:
From the design level 28, the power distribution 20 rapidly
increases with radius in what is termed an optical step 26. The
rise in the power in the optical step 26 is sufficiently high that,
during distance viewing, the cortical aspect of a user’s vision
system is unable to resolve through the surrounding blur of the
optical step 26. As a result, the user is induced to view distant
objects solely through the distance vision region 22. The
perceived effect is similar to that known to be achieved by small
aperture devices such as pinholes devices. The optical device
having this effect, resulting from the combination of the distance
vision region and surrounding optical step, is referred to here as
an induced effective aperture.
Griffin ’814, 5:36–48.
Based on the above disclosure, the Examiner finds that Griffin ’814
teaches an “induced aperture” as well as “a central region of distance
correction with a varying power that varies smoothing [sic] from an apical
power at a central point.” Non-Final Act. 3–4; Ans. 7–8. Appellant does
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not contest the Examiner’s finding regarding Griffin ’814 and we agree with
that finding.
c. Rationale to Combine the Prior Art and their Optical Mechanisms
According to the Examiner, “[t]he motivation to provide a lens with
such a smoothly varying power from a central point on the apex, as
discussed in [Griffin ’814], includes providing optical power for correcting
vision over a continuous distance range of infinity to near sight distances
([Griffin ’814] col. 3:65-col. 4:2; col. 5:50-55) and ensuring no diffraction
effects in the distance vision region ([Griffin ’814] col. 4:13-16).” Ans. 8.
In other words, the Examiner finds that Griffin ’814 provides the motivation
to combine Holden and Griffin ’814. Id. The Examiner, therefore,
concludes that it would have been obvious to one of ordinary skill in the art
at the time of the invention to combine the teachings of Holden and Griffin
’814. Id.
Appellant contends Griffin ’814 and Holden would not have been
obvious to combine because Griffin ’814 and Holden use vastly different
optical mechanisms, and modifying one lens to operate like the other would
change the principle of operation of each lens. Appeal Br. 15. Appellant
specifically argues that the lens of Holden performs its function using a
peripheral effect, namely, refracting light at a periphery of the lens toward
the retina, while Griffin ’814 (and the claimed invention) involves a central
effect where an induced aperture increases depth of focus and reduces
accommodative lag. Id. According to Appellant, “[m]odifying Holden to
use a central effect would change the principle of operation of Holden from
a peripheral effect to a central effect – virtually the opposite of Holden’s
teachings. The same holds true for modifying [Griffin ’814] to include the
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peripheral effect of Holden.” Id. at 15–16. Appellant concludes that “[t]he
combination of Holden and [Griffin ’814], or conversely [Griffin ’814] and
Holden, is therefore improper.” Id. at 16.
Appellant further contends that a person of ordinary skill in the art
would not have used an induced aperture or the teachings of Griffin ’814 to
treat myopia or to stop the progression of myopia. Appeal Br. 14. To
support its position, Appellant relies on Griffin ’814’s disclosure that
“[c]lear distance vision requires clear optics and the preponderant myopic
population will not tolerate distance blur” such as that the lens in
Griffin ’814 creates. Id. (quoting Griffin ’814, 3:17–26) (emphasis added).
In response to Appellant’s challenge, the Examiner maintains the
findings regarding Holden and Griffin ’814. According to the Examiner,
“correction of myopia is done by providing clear distance vision, which is
exactly what [Griffin ’814] proposes to do. One of ordinary skill in the art
would consider the lens of [Griffin ’814] to be successful for treating
myopia since [Griffin ’814] explicitly states it provides clear distance
vision.” Ans. 9 (citing Griffin ’814, 3:65–4:1, 5:18–20). Regarding
Appellant’s argument that the claimed invention involves a “central effect,”
while Holden is a “peripheral effect,” the Examiner notes such features are
not claimed. Id. at 10. Furthermore, the Examiner finds that “[t]he
combination of Holden in view of [Griffin ’814] would not change the
operation since both Holden and [Griffin ’814] operate in the same manner”
because each lens creates “a central region with clear distance vision and a
blurred region surrounding that to provide a peripheral blurred image.” Id.
Although we agree with the Examiner that the claims do not recite the
mode of operation (peripheral versus central effect), we are persuaded by
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Appellant’s arguments. Specifically, we agree with Appellant that Holden
and Griffin ’814 operate differently, i.e., involve different principles of
operation, because (1) Holden discloses a lens with a clear distance region
over substantially the entire pupil that refracts peripheral rays of light to
provide its intended effect (see Holden ¶ 11), whereas (2) Griffin ’814
discloses a lens with an induced aperture created at a center point of the eye
that increases depth of focus and reduces accommodative lag (see
Griffin ’814, Figs. 2a, 2b). “If the proposed modification or combination of
the prior art would change the principle of operation of the prior art
invention being modified, then the teachings of the references are not
sufficient to render the claims prima facie obvious.” MPEP § 2143.01(VI)
(citing In re Ratti, 270 F.2d 810, 813 (CCPA 1959)).
The Examiner proposes replacing Holden’s central region with
Griffin ’814’s “induced aperture” and “a central region of distance
correction with a varying power that varies smoothing [sic] from an apical
power at a central point.” Non-Final Act. 3–4. But we agree with Appellant
that modifying Holden so that power varies smoothly from the central point
outward would change the basic principle under which Holden was designed
to operate (i.e., it would no longer work by using refracted peripheral rays of
light). Ratti, 270 F.2d at 813. We agree, therefore, that the Examiner’s
proposed modification of Holden with the teachings of Griffin ’814 would
change the principle of operation of Holden.
Additionally, we find that how the lenses operate informs whether a
person of ordinary skill in the art would have looked to combine the specific
teachings. We do not agree with the Examiner that a person of ordinary skill
in the art would have had reason to combine the disparate teachings of
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Holden with those of Griffin ’814 when the references involve such different
principles of operation. To find otherwise would risk the use of
impermissible hindsight analysis. See In re McLaughlin, 443 F.2d 1392,
1395 (CCPA 1971) (“Any judgment on obviousness is in a sense necessarily
a reconstruction based upon hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill [in the
art] at the time the claimed invention was made and does not include
knowledge gleaned only from applicant’s disclosure, such a reconstruction is
proper.” (emphasis added)); MPEP § 2142 (“impermissible hindsight must
be avoided and the legal conclusion must be reached on the basis of the facts
gleaned from the prior art”).
For these reasons, we reverse the Examiner’s obviousness rejection of
claim 27 under 35 U.S.C. § 103(a) as unpatentable over Holden and
Griffin ’814.
The Examiner similarly relies on the combination of Holden and
Griffin ’814 regarding the same limitations when rejecting claim 28, which
depends directly from claim 27. Non-Final Act. 4; Ans. 14. For the same
reasons discussed above regarding claim 27, we reverse the Examiner’s
obviousness rejection of claim 28 under 35 U.S.C. § 103(a) as unpatentable
over Holden and Griffin ’814.
2. Holden, Griffin ’814, and Roffman
Claim 29 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Holden, Griffin ’814, and Roffman. Non-Final Act. 4–5;
Appeal Br. 7; Ans. 14. Claim 29 indirectly depends from independent claim
27 and additionally recites “wherein the depth of focus is within +0.25 to
+1.00 diopters.” Appeal Br. A-1 (Claims Appendix).
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Roffman is directed to aspheric toric lens designs. Roffman, Title,
Abstract. The Examiner relies on Roffman for its teachings related to lenses
that provide an increased depth of focus at +0.25 to +1.00 diopters. Non-
Final Act. 4–5 (citing Roffman 4:40–42).
Because Roffman does not remedy the deficiencies of Holden and
Griffin ’814, we reverse the Examiner’s obviousness rejection of claim 29
under 35 U.S.C. § 103(a) as unpatentable over Holden, Griffin ’814, and
Roffman for the same reasons described above.
3. Holden, Griffin ’814, and Back
Claim 30 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Holden, Griffin ’814, and Back. Non-Final Act. 5;
Appeal Br. 7; Ans. 14. Claim 30 indirectly depends from independent claim
27 and additionally recites, “wherein the user has a reduction in
accommodative lag of about +0.25 to about +1.00 diopters relative to when
the lens is not positioned on the eye of the use.” Appeal Br. A-1 (Claims
Appendix).
Back is directed to reducing accommodative error in contact lenses.
Back, Title, Abstract. The Examiner relies on Back for its teachings related
to using ophthalmic lenses for reducing accommodative lag of at least
+0.250 to about +1.000. Non-Final Act. 5 (citing Back 7:29–40, 12:60–67).
Because Back does not remedy the deficiencies of Holden and Griffin ’814,
we reverse the Examiner’s obviousness rejection of claim 30 under 35
U.S.C. § 103(a) as unpatentable over Holden, Griffin ’814, and Back for the
same reasons described above.
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4. Griffin ’918 and Holden
The Examiner’s second rejection of independent claim 27 under
§ 103(a) relies on the combined teachings of Griffin ’918 and Holden. The
Examiner cites to Griffin ’918 for almost all of the elements recited in claim
27. Non-Final Act. 6; Ans. 11–12. Griffin ’918 describes an ophthalmic
lens with an induced aperture. Griffin ’918, Title, Abstract. The reference
discloses a lens having a central region about an apex of the lens and an
optical blur region immediately surrounding a central region that yields an
unfocused optical image. Griffin ’918 6:10–15, Figs. 1–26, 27. The lens of
Griffin ’918 is shown in Figure 2a, while the power distribution of the lens is
charted in Figure 2b. Figures 2a–b are reproduced below.

As shown in Figure 2b above, lens 30 includes central region 32 with power
distribution 32a corresponding to the distance vision region 22, and optical
step 26. Griffin ’918, 10:50–53. The focal power in the central region rises
steeply in optical step 26 to create an induced aperture. Id. at10:55–57. The
maximum power reached is the specifically required near vision power 34.
Id. at 10:57–58. Griffin ’918 teaches positioning the lens on an eye of a user
to provide an induced aperture and an increased depth of focus when used to
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correct vision of the user relative to when the lens is not used. Id. at 4:15–
24, 5:54–67, 6:15–21, Figs. 1–14b.
The only elements recited in claim 27 that the Examiner does not find
in Griffin ’918 are “determining a user has myopia” and “to inhibit or reduce
myopic progression in the eye.” Ans. 12; Non-Final Act. 6 (citing Holden
¶¶ 2, 11, Figs. 5, 6 for those elements). As discussed above, Holden
describes techniques related to controlling the progression of myopia using
the relative positioning of optical zones on a contact lens. Holden ¶ 31,
Figs. 1B, 5.
The Examiner finds that the combined teachings of Griffin ’918 and
Holden would have rendered the claim invention obvious to a person of
ordinary skill in the art. Ans. 12; Non-Final Act. 6. According to the
Examiner,
[t]he motivation to combine [Griffin ’918] and Holden
comes from the art of Holden. Holden teaches lenses having a
clear central region and blurred (out of focus) peripheral regions
are well known in the art for the purpose of introducing blurring
to the retina such that the eye is mitigated from elongating and
thus prevents myopia progression (Holden para. [0005], [0011]).
Ans. 12.
Appellant again contends Griffin ’918 and Holden would not
have been obvious to combine and presents the same arguments for
reversal of this rejection that Appellant presents in connection with
the Examiner’s rejection of claim 27 over Holden and Griffin ’918, as
discussed above. See Appeal Br. 14–16
In response to Appellant’s challenge, the Examiner maintains
the findings regarding Griffin ’918 and Holden. According to the
Examiner,
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[t]he motivation to combine the teachings comes
from the art of Holden who teaches lenses having a clear
central region and blurred (out of focus) peripheral regions
are well known in the art for the purpose of introducing
blurring to the retina such that the eye is mitigated from
elongating and thus prevents myopia progression.

Ans. 13 (citing Holden ¶¶ 5, 11). The Examiner also finds that
Appellant’s remarks concerning “central effect” and “peripheral
effect” are not persuasive because the Examiner states that “each of
[Griffin ’918], Holden, and the claimed invention are directed to both
effects - a central clear distance vision region and a peripheral blurred
region.” Id.
We do not agree with the Examiner for multiple reasons. First, we do
not agree with the Examiner that the claimed invention is directed to a
central clear distance vision region and a peripheral blurred region. Rather,
we find that the claimed invention uses a central effect similar to
Griffin ’918. Second, we find that Holden discloses a lens with a clear
distance region over substantially the entire pupil and it refracts peripheral
rays of light to provide its intended effect (see Holden ¶ 11), whereas
Griffin ’918 discloses the use of an induced aperture located at a center point
of the eye that increases depth of focus and reduces accommodative lag (see
Griffin ’918, Figs. 2a, 2b). Any attempt to modify the teachings of
Griffin ’918 to use Holden’s refracted peripheral rays of light would change
the basic principle under which Griffin ’918 works (i.e., it would no longer
work by varying power smoothly from the center of the lens outward).
Ratti, 270 F.2d at 813. We, therefore, conclude that the Examiner’s
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proposed modification of Griffin ’814 with the teachings of Holden is
inappropriate.
Additionally, we find that how the lenses operate informs whether a
person of ordinary skill in the art would have looked to combine the specific
teachings. Here, as we explain above, the Examiner’s rejection appears to
be based on impermissible hindsight.
For these reasons, we reverse the Examiner’s obviousness rejection of
claim 27 under 35 U.S.C. § 103(a) as unpatentable over Griffin ’918 and
Holden.
The Examiner similarly relies on the combination of Griffin ’918 and
Holden regarding the same limitations when rejecting claim 28, which
depends directly from claim 27. Non-Final Act. 6; Ans. 14. For the same
reasons discussed above regarding claim 27, we reverse the Examiner’s
obviousness rejection of claim 28 under 35 U.S.C. § 103(a) as unpatentable
over Griffin ’918 and Holden.
5. Griffin ’918, Holden, and Roffman
Claim 29 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Griffin ’918, Holden, and Roffman. Non-Final Act. 6–7;
Appeal Br. 7; Ans. 14. The Examiner relies on Roffman for its teachings
related to lenses that provide an increased depth of focus at +0.25 to +1.00
diopters. Non-Final Act. 6–7 (citing Roffman 4:40–42).
Because Roffman does not remedy the deficiencies of Griffin ’918
and Holden, we reverse the Examiner’s obviousness rejection of claim 29
under 35 U.S.C. § 103(a) as unpatentable over Griffin ’918, Holden, and
Roffman for the same reasons described above.
Appeal 2018-004588
Application 14/126,056

20
6. Griffin ’918, Holden, and Back
Claim 30 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Griffin ’918, Holden, and Back. Non-Final Act. 7;
Appeal Br. 7; Ans. 14. The Examiner relies on Back for its teachings related
to using ophthalmic lenses for reducing accommodative lag of at least
+0.250 to about +1.000. Non-Final Act. 7 (citing Back 7:29–40, 12:60–67).
Because Back does not remedy the deficiencies of Griffin ’918 and Holden,
we reverse the Examiner’s obviousness rejection of claim 30 under 35
U.S.C. § 103(a) as unpatentable over Griffin ’918, Holden, and Back for the
same reasons described above.
CONCLUSION
The Examiner’s rejections of pending claims 27–30 under
35 U.S.C. § 103(a) are REVERSED.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
27, 28 103(a) Holden, Griffin ’814 27, 28
29 103(a) Griffin ’814, Holden,
Roffman
29
30 103(a) Griffin ’814, Holden,
Back
30
27, 28 103(a) Griffin ’918, Holden 27, 28
29 103(a) Griffin ’918, Holden,
Roffman
29
30 103(a) Griffin ’918, Holden,
Back
30
Overall
Outcome
27–30

REVERSED