Ex Parte Rathert

Patent Trial and Appeal Board

May 20, 2013

11847398 (P.T.A.B. May. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD

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Ex parte BRIAN D. RATHERT
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Appeal 2011-002792
Application 11/847,398
Technology Center 3700
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Before STEFAN STAICOVICI, BENJAMIN D. M. WOOD, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Brian D. Rathert (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision finally rejecting under 35 U.S.C. § 103(a) claims 1 and
3-6 as unpatentable over Thomas (US 4,009,777, issued Mar. 1, 1977), Poler
(US 4,257,521, issued Mar. 24, 1981), and Bernhardt (US 4,346,833, issued
Aug. 31, 1982); claim 2 as unpatentable over Thomas, Poler, Bernhardt, and
Pemberton (US 5,415,316, issued May 16, 1995); and claims 7 and 8 as
unpatentable over Thomas, Poler, Bernhardt, and Blake (US 6,280,449 B1,
issued Aug. 28, 2001). We have jurisdiction over this appeal under 35
U.S.C. § 6(b).

INVENTION
Appellant’s invention relates to “containers for holding intraocular
lenses (IOLs).” Spec. 1, l. 3 and fig. 1.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. An intraocular lens package, comprising:
a container comprising a first surface, containing a liquid
inside;
a holder, comprising a second surface and a handle with a
gripping surface;
an intraocular lens held inside said container by said
holder; and
a lid stock adhered to said first surface and said second
surface, so as to form a first liquid barrier with said container
and a second liquid barrier with said holder, whereby the
gripping surface is protected from the liquid.

SUMMARY OF DECISION
We AFFIRM-IN-PART.
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ANALYSIS
Claims 1, 3, 5, and 6
Appellant argues that, “the Examiner provided no rationale for the
modification of Thomas in view of Bernhardt other than to point to the
construction of the proposed modification.” Br. 7. As such, according to
Appellant, “the modifications are based purely on hindsight after viewing
the subject invention.” Id. Furthermore, Appellant points out that while the
configuration of Bernhardt’s device is “related to re-sealability, resealing is
not a concern with a sterile product such as an implantable medical device,”
as taught by Poler. Br. 8.
We do not agree with Appellant’s hindsight contention because the
Examiner has provided a reason (“replacing the lid stock and container
arrangement of Thomas with the arrangement of Bernhardt”) with rational
underpinning (“in order to provide a sealed connection between the lid stock
and the device while allowing the device to open and close”). See Ans. 6; In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness
grounds [require] some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness”) (cited with
approval in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007)). Appellant’s conclusory assertion that “the Examiner provided no
rationale” ignores and fails to point out the error in the rationale provided by
the Examiner, namely, “to provide a sealed connection between the lid stock
and the device while allowing the device to open and close.” See Ans. 6.
Given that Bernhardt discloses sealing a lid to a container that allows
opening and closing of the container, the Examiner’s reasoning has a
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rational underpinning. See Bernhardt, col. 3, l. 48 through col. 4, l. 3 and
col. 4, l. 37-44.
Lastly, Appellant’s contention that resealing is not a concern with
IOLs is unconvincing because it fails to address the proposed rejection.
Appellant’s argument presumes that modifying the lid and container of
Thomas and Poler with Bernhardt’s device results in a resealable container,
and thus, that re-sealability is the only reason for the Examiner’s proposed
modification. This is not the case. The Examiner’s proposed modification
results in a sealed container that subsequently can be opened and closed, but
not necessarily resealed as Appellant appears to argue. Appellant has not
provided any persuasive evidence or reasoning as to why the ability to re-
close the container as taught by Bernhardt would not provide a reason with
rational underpinning to modify Thomas.
In conclusion, for the foregoing reasons, we sustain the rejection of
claim 1 under 35 U.S.C. § 103(a) as unpatentable over Thomas, Poler, and
Bernhardt.
Appellant does not make any other substantive arguments with respect
to the rejection of dependent claim 3, 5, and 6. See Br. 7-8. Thus, we
likewise sustain the rejection of dependent claims 3, 5, and 6 over the
combined teachings of Thomas, Poler, and Bernhardt.

Claim 4
Dependent claim 4 adds the limitation that, “the container and holder
are configured such [that] the liquid can contact the lid stock.” Br., Claims
App’x. The Examiner found that:
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The liquid (Thomas col. 3: 33-35) in the device of Thomas in
view of Poler and Bernhardt can be configured in such a
manner that the user through operating the device can allow the
liquid to contact the lid stock (Thomas 12 as modified by
Bernhardt), as in appellant's device with liquid (120 in
appellant's figure 1 ) where the user is able to operate the device
in a manner that allows the liquid to contact the lid stock (140
in appellant's figure 1).

Ans. 8-9.
At the outset, we note that Appellant’s Specification describes gap
175 between holder 130 and container 110 that permits liquid from the
container to contact lid stock 140. Spec. 5, ll. 4-5 and fig. 4. In contrast, in
Bernhardt, film 13 forms a first seal area 31, a second seal area 32, and a
third seal area 33 and skirt 21 of cover 12 is frictionally interfit with portion
24 of container 11’s wall 15. See Bernhardt, col. 3, l. 48 through col. 4, l. 3
and fig. 3. We thus agree with Appellant that when modifying the lid and
container of Thomas and Poler with Bernhardt’s device the sealing areas and
the frictional interfit would not be configured so as to permit liquid from
container 11 to reach lid 12. Br. 8. The Examiner has not adequately
explained how the structure of the device of Thomas, Poler, and Bernhardt is
so configured that during use “the liquid can contact the lid stock,” as called
for by claim 4. Hence, for these reasons, we do not sustain the rejection of
claim 4 under 35 U.S.C. § 103(a) as unpatentable over Thomas, Poler, and
Bernhardt.

Claims 2, 7, and 8
Appellant does not make any other substantive arguments separate
from the arguments presented above with respect to the rejection of
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independent claim 1 over the combined teachings of Thomas, Poler, and
Bernhardt. See Br. 8-9. As such, for the reasons set forth supra, we
likewise sustain the rejections under 35 U.S.C. § 103(a) of claim 2 as
unpatentable over Thomas, Poler, Bernhardt, and Pemberton and of claims 7
and 8 as unpatentable over Thomas, Poler, Bernhardt, and Blake.

SUMMARY
The decision of the Examiner is affirmed as to claims 1-3 and
5-8 and reversed as to claim 4.
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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