Ex Parte Caffey et al

Patent Trial and Appeal BoardAug 18, 2017

13473012 (P.T.A.B. Aug. 18, 2017)

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. 13/473,012 05/16/2012 Sean Caffey 1CO-OO1/7307092001 5378 23517 7590 08/22/2017 MORGAN, LEWIS & BOCKIUS LLP (BO) 1111 PENNSYLVANIA AVENUE, N.W. WASHINGTON, DC 20004 EXAMINER SZPIRA, JULIE ANN ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 08/22/2017 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): kcatalano@morganlewis.com patents @ morganlewis.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SEAN CAFFEY, CHARLES DEBOER, MARK HUMAYUN, and YU-CHONG TAI Appeal 2015-008293 Application 13/473,0121 Technology Center 3700 Before MURRIEL E. CRAWFORD, CYNTHIA L. MURPHY, and ROBERT J. SILVERMAN, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’ decision rejecting claims 1—8 and 23—25. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 According to the Appeal Brief (page 2), ICo, Inc. is the real party in interest. Appeal 2015-008293 Application 13/473,012 ILLUSTRATIVE CLAIM 1. A console for filling an accommodative liquid lens following implantation thereof in a patient to achieve emmetropia for the patient, the console comprising: a reservoir for receiving a lens-filling fluid; a port for receiving a needle-and-tubing set; a pump for driving fluid from the reservoir to the port; and circuitry for controlling the pump to adjust a fill level of the lens via the needle-and-tubing set, wherein (i) the needle is configured to be removably received within the implanted lens, (ii) the circuitry is responsive to signals indicative of at least one of optical imagery feedback indicating the optical positioning and optical performance of the implanted lens, ultrasound imagery indicative of geometry and lens power, a pressure inside the lens, or a volume of fluid in the lens and is configured to fill the lens to a level providing emmetropia for the patient based on the signals. CITED REFERENCES The Examiner relies upon the following references Saishin et al. (hereinafter “Saishin”) US 2001/0049532 Al Dec. 6, 2001 Esch US 2004/0190153 Al Sept. 30, 2004 Edwards et al. (hereinafter “Edwards”) US 2008/0114372 Al May 15,2008 Peyman US 2007/0142909 Al June 21, 2007 Hildebrand et al. US 8,447,086 B2 (hereinafter “Hildebrand”) May 21, 2013 2 Appeal 2015-008293 Application 13/473,012 REJECTIONS2 I. Claims 1, 4, 24, and 25 are rejected under 35 U.S.C. § 103(a) as unpatentable over Peyman and Esch.3 II. Claims 5—8 are rejected under 35 U.S.C. § 103(a) as unpatentable over Peyman, Esch, and Hildebrand. III. Claims 2 and 3 are rejected under 35 U.S.C. § 103(a) as unpatentable over Peyman, Esch, and Edwards. IV. Claim 23 is rejected under 35 U.S.C. § 103(a) as unpatentable over Peyman, Esch, and Saishin. FINDINGS OF FACT The findings of fact relied upon, which are supported by a preponderance of the evidence, appear in the following Analysis. ANALYSIS The Appellants argue that the Examiner erred in rejecting independent claim 1, because, among other reasons, the cited Peyman reference fails to teach the recited “needle” that “is configured to be removably received within the implanted lens.” See Appeal Br. 8; see also Reply Br. 4—5. According to the Appellants, the structure identified by the Examiner — tube 52 of Peyman’s Figure 5 — is not “removable,” but is “connected permanently to Peyman’s internal fill-control system.” Appeal Br. 8. 2 In addition to Rejections I—IV, herein, the Final Office Action (pages 5—6) rejects claims 15, 16, and 18 under 35 U.S.C. § 103(a) as unpatentable over Edwards and Deacon (US 4,822,360, iss. Apr. 18, 1989). This rejection is withdrawn. See Answer 2. 3 We regard as inadvertent the inclusion of canceled claim 9 in Rejection I. See Final Office Action 2. 3 Appeal 2015-008293 Application 13/473,012 The Examiner maintains that “[t]he tube and needle set are not disclosed as being integrally formed with the lens, and thus, during assembly of the device, the needle and tubing set would have to be assembled to the lens, and as such, it was removably received within the port.” Answer 3. The Appellant’s argument is persuasive of error. As an initial matter, claim 1 requires the “needle” to be “configured to be removably received within the implanted lens” — not within the recited “port.” Moreover, as the Appellants point out, Peyman discloses a fluidic system that continuously controls accommodation of the focal length of an implanted lens in real-time during ordinary use. See Appeal Br. 6—8 (citing Peyman || 28—29). Thus, the tube 52 in Peyman’s system is not “removably received within the implanted lens” in the manner claimed, which concerns a surgical tool and procedure for establishing a particular lens condition during surgery or post operative adjustments. See Spec., p. 3,11. 15—21, p. 6,11. 24—27, p. 15,1. 25— p. 16,1. 3. The Examiner has not identified sufficient evidentiary support for the finding that Peyman’s tube must be “removabl[e],” because it is “not disclosed as being integrally formed with the lens” or because it “would have to be assembled to the lens.” Answer 3. Not being characterized as “integrally formed with the lens” does not imply that tube 52 is “removabl[e],” as claimed. Further, structures are not necessarily, or inherently, “removably” connected (in the sense of claim 1), simply because they can be assembled. Therefore, we do not sustain the rejection of independent claim 1 — and, for like reasons, dependent claims 2—8 and 23—25 — under 35 U.S.C. § 103(a). 4 Appeal 2015-008293 Application 13/473,012 DECISION We REVERSE the Examiner’s decision rejecting claims 1—8 and 23—25 under 35 U.S.C. § 103(a). REVERSED 5