Ravi Nallakrishnan

Patent Trials and Appeals Board

Jun 23, 2021

2020006657 (P.T.A.B. Jun. 23, 2021)

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.
12/543,399 08/18/2009 Ravi Nallakrishnan 10951P00260US 7255
32116 7590 06/23/2021
WOOD, PHILLIPS, KATZ, CLARK & MORTIMER
500 W. MADISON STREET
SUITE 1130
CHICAGO, IL 60661
EXAMINER
SCHWIKER, KATHERINE H
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
06/23/2021 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):
docketing@woodphillips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAVI NALLAKRISHNAN
Appeal 2020-006657
Application 12/543,399
Technology Center 3700
Before DANIEL S. SONG, EDWARD A. BROWN, and
LEE L. STEPINA, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 1–8 and 16–25. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). The Appellant identifies the real party in interest as ART,
Limited. Appeal Br. 1.
Appeal 2020-006657
Application 12/543,399

2
CLAIMED SUBJECT MATTER
The claims are directed to an injector for an intraocular lens. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An intraocular lens injector device configured to inject an
intraocular lens, the intraocular lens injector device comprising:
a hollow injector body having a distal end, a proximal end,
and an interior surface defining a central passage through the
injector body;
a plunger sized and shaped to fit into the injector body
central passage and defining a central axis therethrough, the
plunger having a proximal handle portion for being engaged by
a user and an operative distal tip portion, the plunger having a
barrel portion with proximal/trailing and distal/leading ends and
formed intermediate the handle portion and the tip portion, the
barrel portion sized and shaped to move along at least a portion
of the central passage, the barrel portion having an exterior
surface, the plunger having a range of movement relative to the
injector body between fully extended and retracted positions,
wherein the barrel portion is radially enlarged relative to
portions of the plunger at the leading and trailing ends of the
barrel portion; and
a sleeve made from an elastomeric material and sized and
shaped to fit around the barrel portion, the sleeve having a sleeve
interior surface for contacting the barrel portion exterior surface,
the sleeve having an exterior surface for contacting the injector
body interior surface for damping movement of the plunger
through the central passage, the sleeve having a sleeve thickness
between the sleeve interior and exterior surfaces in a direction
radial to the central axis, the sleeve being movable with the
plunger with respect to the injector body,
the injector configured so that the sleeve is blocked by
spaced, axially oppositely facing surfaces on the plunger so as to
thereby be maintained in a same axial position on the barrel
portion as the plunger moves between the fully extended and
retracted positions,
wherein the sleeve has an axial dimension that is greater
than the thickness of the sleeve,
Appeal 2020-006657
Application 12/543,399

3
wherein the barrel portion has a guide pin fixedly formed
thereon and projecting radially outwardly from the barrel
portion,
wherein the guide pin defines one of the axially oppositely
facing surfaces on the plunger.
Appeal Br. 27–28 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Holmes US 4,880,000 Nov. 14, 1989
D’Amico US 5,222,947 June 29, 1993
Feingold US 5,772,666 June 30, 1998
Figueroa US 5,873,879 Feb. 23, 1999
Lee US 2006/0258977 Al Nov. 16, 2006
Lin WO 2008/019430 Al Feb. 21, 2008
REJECTIONS
1. Claims 5, 16, and 21 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Final Act. 4.
2. Claims 1, 2, 6, 8, 19, 20, 23, and 25 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Figueroa in view of Lin and Lee.
Final Act. 5.
3. Claim 7 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Figueroa in view of Lin, Lee, and Feingold. Final Act.
12.
4. Claims 1–4, 6, 8, 17, 18, 20, 22, 24, and 25 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Figueroa in view of Lin,
D’Amico, and Holmes. Final Act. 13.
Appeal 2020-006657
Application 12/543,399

4
5. Claim 7 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Figueroa in view of Lin, D’Amico, Holmes, and Feingold.
Final Act. 24.
OPINION
Rejection 1: Indefiniteness
The Examiner rejects claims 5, 16, and 21 as being indefinite. Final
Act. 4. The Appellant does not submit any arguments directed to this
rejection, and instead, merely notes that these claims have been indicated by
the Examiner to contain allowable subject matter, and are allowable upon
addressing the issues raised by the Examiner. Appeal Br. 2; see also Ans. 3.
Accordingly, this rejection is summarily affirmed.

Rejection 2: Figueroa in view of Lin and Lee
The Examiner rejects claims 1, 2, 6, 8, 19, 20, 23, and 25 as being
unpatentable over Figueroa in view of Lin and Lee. Final Act. 5. As to
independent claim 1, the Examiner finds that Figueroa discloses an
intraocular lens injector device substantially as claimed, including, inter
alia, a “barrel portion [that] is radially enlarged relative to portions of the
plunger 18 at the leading and trailing ends of the barrel portion.” Final Act.
6–7 (citing annotated Fig. 3 of Figueroa). The Examiner also substitutes the
O-ring 120 of Figueroa with the seal 3 of Lin to satisfy the limitations
pertaining to the sleeve. Final Act. 8–9 (citing annotated Figure 11 of Lin).
The Examiner concedes that “Figueroa as modified is silent regarding
wherein said barrel portion has a guide pin fixedly formed thereon and
projecting radially outwardly from the barrel portion, wherein the guide pin
Appeal 2020-006657
Application 12/543,399

5
defines one of the axially oppositely facing surfaces on the plunger.” Final
Act. 10. To remedy this deficiency, the Examiner finds that Lee discloses:
[a] plunger 60 having a barrel portion that is radially enlarged
and is an axially oppositely facing surface . . . for maintaining
the posit[i]on of a seal 72 . . . wherein said barrel portion has a
guide pin 68 fixedly formed thereon and projecting radially
outwardly from the barrel portion . . . wherein the guide pin 68
defines one of the axially oppositely facing surfaces on the
plunger 60.
Final Act. 10–11 (citing Lee ¶ 43 and annotated Figure 3 of Lee). Based on
these findings, the Examiner concludes that it would have been obvious to
one of ordinary skill in the art:
to have the enlarged portion of the barrel po[r]tion have a guide
pin fixedly formed thereon and projecting radially outwardly
from the barrel portion such that the guide pin defines one of
the axially oppositely facing surfaces on the plunger . . . for the
purpose of being able to lock the plunger in a specific location
and being able to limit distal/proximal movement to prevent
accidental withdraw.
Final Act. 11–12 (citing Lee ¶ 45).
The Appellant disagrees and argues, inter alia, that the guide pin 68
“does not radially coincide with the ‘seal 72’ in Lee so as to define an axial
abutment to any corresponding sleeve.” Appeal Br. 13. Thus, according to
the Appellant, even if Lee’s pin 68 is incorporated into the device of
Figueroa, “it would perform no axial locating/blocking function in
association with any corresponding sleeve,” and instead, would only guide
the plunger. Appeal Br. 13; see also Reply Br. 4–5 (“The pin 68 in Lee is
not in axial overlapping relationship with the allegedly corresponding seal
72 and thus could not perform any axial blocking function with respect to
the sleeve 72.”). We agree with the Appellant for the reasons argued.
Appeal 2020-006657
Application 12/543,399

6
The Examiner rebuts that the claim language “does not require direct
abutment between the pin and the sleeve as argued by [A]ppellant. The pin
68 of Lee extends radially outward relative to the sleeve and is immediately
adjacent to the sleeve. Therefore, it would be capable of blocking any
movement of the sleeve towards the pin.” Ans. 9. We do not agree because
claim 1 recites that “the sleeve is blocked by spaced, axially oppositely
facing surfaces,” and that “the guide pin defines one of the axially oppositely
facing surfaces on the plunger,” such that the guide pin itself blocks the
sleeve. Appeal Br. 27–28 (Claims App.). In contrast to the claim language,
Lee discloses that projection 68 relied upon by the Examiner projects from
the piston proximal end 66 to be received in a groove 34 of the piston inner
wall 50, but the projection does not contact the sealing ring 72 so as to
disclose, or otherwise suggest, that it blocks the sealing ring to maintain its
axial position. Lee ¶¶ 43–44; Figs 1, 3, 6.
The Examiner further responds that “the pin 68 of Lee is directly on
and part of a surface that directly contacts and blocks seal 72, therefore the
pin forms part of the surface blocking movement of the seal.” Ans. 9.
However, this response is unpersuasive because, as discussed above, the
claim requires the pin itself to define an axially oppositely facing surface
that blocks the sleeve. The pin of Lee, which merely extends from another
component having a surface that blocks the sleeve, is insufficient to establish
that the pin blocks the sleeve. Ans. 9.
In addition to the above, the Appellant also argues that because of the
non-circular cross-section and the keyed configuration of Figueroa, “the
need for a discrete pin such as in Lee to control relative turning movement
Appeal 2020-006657
Application 12/543,399

7
of the plunger and injector body around an axis is lacking.” Appeal Br. 14.
According to the Appellant:
since the components (barrel and plunger) in Figueroa are
keyed against relative turning by surfaces that are non-
cylindrical in shape, it would not be possible to incorporate
Lee’s “lock” feature, which requires that the barrel and plunger
be capable of being relatively turned around the lengthwise axis
of the device, without a very substantial reconstruction.
Reply Br. 5.
We find this line of argument also persuasive. The reason articulated
by the Examiner for providing a pin on the device of Figueroa is “for the
purpose of being able to lock the plunger in a specific location and being
able to limit distal/proximal movement to prevent accidental withdraw.”
Final Act. 12; see also Ans. 10 (explaining that Lee’s pin provides the
benefit of “allow[ing] the plunger to be locked in an axial location to prevent
forward and backward movement and thus premature deployment.”).
However, the device of Figueroa is non-circular in cross-section, and
its plunger 18 is also keyed to the base member 20 via the provision of the
extending flange 35 that fits within groove 34 of the base member 20.
Figueroa, col. 3, ll. 29–44; Figs. 3, 4, 13. Both of these features of Figueroa
prevent rotation of the plunger relative to the base member. It is unclear to
us, nor has the Examiner sufficiently established, why a person of ordinary
skill in the art would have sought to provide a pin on a non-rotatable plunger
that is already axially guided, and we further agree with the Appellant that
substantial reconstruction would be required to the device of Figueroa in
order for it to allow for rotation of the plunger and to provide the
functionality explained by the Examiner.
Appeal 2020-006657
Application 12/543,399

8
Therefore, in view of the above considerations, we reverse the
Examiner’s rejection of independent claim 1. The Appellant’s arguments
and the Examiner’s responses directed to whether Figueroa discloses a
radially enlarged barrel portion, whether Figueroa discloses a sleeve, and
whether the mid-length location of the seal undermines the Examiner’s
reasoning, are all moot. Appeal Br. 10–13; Ans. 4–6, 8–9; Reply Br. 2–5.
We also reverse this rejection as to claims 2, 6, 8, 19, and 20 that ultimately
depend from claim 1. The Appellant’s further arguments directed to various
dependent claims, and the Examiner’s responses thereto, are also moot.
Appeal Br. 14–17; Ans. 11; Reply Br. 6.
The Appellant relies on the same arguments proffered relative to
independent claim 1 in support of patentability of independent claims 23 and
25, which recite similar limitations to those addressed above. Appeal Br.
16–17. Accordingly, we reverse the rejection of independent claims 23 and
25 as well.

Rejection 3: Figueroa in view of Lin, Lee, and Feingold
Claim 7 depends from claim 1, and the Examiner’s application of
Feingold does not remedy the deficiency of the combination of Figueroa,
Lin, and Lee addressed above. Final Act. 12–13. Accordingly, we reverse
this rejection, and the Appellant’s arguments and the Examiner’s response
thereto, are moot. Appeal Br. 18; Ans. 12–13.

Rejection 4: Figueroa in view of Lin, D’Amico, and Holmes
The Examiner rejects claims 1–4, 6, 8, 17, 18, 20, 22, 24, and 25 as
being unpatentable over Figueroa in view of Lin, D’Amico, and Holmes.
Appeal 2020-006657
Application 12/543,399

9
Final Act. 13. This rejection of claim 1 is similar to Rejection 2 discussed
above, but the Examiner relies on D’Amico for disclosing a plunger with a
barrel portion 30 that has a fixedly formed and radially outwardly projecting
guide pin 68. Final Act. 19–20. The Examiner also relies on Holmes for
disclosing screws 56, 58, 60, finding that the screws are pins that define an
axially oppositely facing surface that blocks the relative movement between
the piston 34 (i.e., a sleeve) and the stylet 30 (i.e., a barrel). Final Act. 21
(citing Holmes, col. 4, ll. 25–29). Based on the above findings, the
Examiner concludes that it would have been obvious to one of ordinary skill
in the art to have further modified Figueroa in view of D’Amico and Holmes
to provide a pin through the sleeve as claimed “for the purpose of being able
to lock the plunger in a specific location and being able to limit
distal/proximal movement to prevent accidental withdraw.” Final Act. 20
(citing D’Amico, col. 3, ll. 17–53); see also Ans. 13–14.
The Appellant disagrees and relies on arguments that are substantively
the same as those submitted with respect to Rejection 2. Appeal Br. 18. In
that regard, the Appellant argues, inter alia, that “as noted previously,
Figueroa shows a keyed injector body and plunger which obviate the need
for any type of separate guide structure, such as a guide pin,” and that “there
is no reason that one skilled in the art would incorporate a pin such as
D’Amico’s into Figueroa.” Appeal Br. 19. The Appellant again argues that:
[Because] Figueroa’s plunger and barrel are keyed against
relative turning around the lengthwise axis of the device[] . . .
any “lock” feature would involve a substantial redesign of
Figueroa that would require a reconfiguration of the barrel and
plunger so that they might turn, one within the other, around the
lengthwise axis.
Reply Br. 6.
Appeal 2020-006657
Application 12/543,399

10
Thus, this rejection raises one of the two dispositive issues already
addressed above relative to Rejection 2. As discussed, we agree with the
Appellant that the Examiner has not sufficiently established why a person of
ordinary skill in the art would have sought to provide a pin on a non-
rotatable plunger, and further agree that substantial reconstruction would be
required to the device of Figueroa in order to allow for rotation of the
plunger and to provide the functionality explained by the Examiner.
Accordingly, we reverse this rejection of independent claim 1. The
Appellant’s additional arguments and the Examiner’s responses directed to
whether Holmes discloses a radially enlarged barrel portion or a sleeve, and
whether the screws of Holmes function to retain a sleeve relative a barrel,2
are all moot. Appeal Br. 19–21; Ans. 14; Reply Br. 6–7. We also reverse
this rejection as to claims 2–4, 6, 8, 17, 18, 20, and 22 that ultimately depend
from claim 1, and the Appellant’s further arguments directed to various
dependent claims, and the Examiner’s responses thereto, are also moot.
Appeal Br. 21–24; Ans. 15–16. The Appellant relies on the same arguments
proffered relative to independent claim 1 in support of patentability of

2 Although the following is moot, we note that both the Appellant and the
Examiner mischaracterize the teachings of Holmes. The Appellant is
incorrect in asserting that “[t]he pin 56 does not extend into the stylet 30 and
is responsible for connecting the external actuator 54 to the piston/‘sleeve’.”
Reply Br. 8; see also Appeal Br. 20–21. Holmes specifically discloses that
screw 56 connects actuator 54 to piston 34 “to provide a means for driving
piston 34 and stylet 30 back and forth within hollow barrel 12 and for
holding stylet 30 within piston 34.” Holmes col. 4, ll. 25–29 (emphasis
added); see also Fig. 2 (showing contact of screw 56 to stylet 30 through
piston 34). However, the Examiner is incorrect in finding that all three
screws 56, 58, and 50 engage the stylet through the piston. Only screw 56
performs such function.
Appeal 2020-006657
Application 12/543,399

11
independent claims 24 and 25, which recite similar limitations. Appeal Br.
25. Accordingly, we reverse this rejection of independent claims 24 and 25
as well.

Rejection 5: Figueroa in view of Lin, D’Amico, Holmes, and Feingold
Claim 7 depends from claim 1, and the Examiner’s application of
Feingold does not remedy the deficiency of the combination of Figueroa,
Lin, D’Amico, and Holmes. Final Act. 24–25. Accordingly, we reverse this
rejection as well.

CONCLUSION
The Examiner’s rejections are affirmed in part. More specifically, the
indefiniteness rejection of claims 5, 16, 21 is affirmed, but the remaining
prior art rejections are reversed.

DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
5, 16, 21 112 Indefiniteness 5, 16, 21
1, 2, 6, 8,
19, 20,
23, 25
103(a) Figueroa, Lin, Lee 1, 2, 6, 8,
19, 20, 23,
25
7 103(a) Figueroa, Lin, Lee,
Feingold
7
1–4, 6, 8,
17, 18,
20, 22,
24, 25
103(a) Figueroa Lin,
D’Amico, Holmes
1–4, 6, 8,
17, 18, 20,
22, 24, 25
Appeal 2020-006657
Application 12/543,399

12
7 103(a) Figueroa Lin,
D’Amico, Holmes,
Feingold
7
Overall
Outcome
5, 16, 21 1–4, 6–8,
17–20, 22–
25

TIME PERIOD FOR RESPONSE
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).
AFFIRMED IN PART