Ex Parte Vaquero

Patent Trial and Appeal BoardOct 22, 2012

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

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte EDWARD VAQUERO __________ Appeal 2011-013414 Application 10/813,861 Technology Center 3700 __________ 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, Appeal 2011-013414 Application 10/813,861 2 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 Appeal 2011-013414 Application 10/813,861 3 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. Appeal 2011-013414 Application 10/813,861 4 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). Appeal 2011-013414 Application 10/813,861 5 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 lp