PATENT OWNER
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`PATENT OWNER
`EXHIBIT 2026
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`EXHIBIT 2026
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`PATENT OWNER
`EXHIBIT 2026
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`EXHIBIT 2026
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`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.
`
`F ING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONF {MATION NO.
`
`11/415,688
`
`05/01/2006
`
`Dimitri Azar
`
`00633—030003/ 00/037
`
`5136
`
`26161
`7590
`04/18/2011
`EISH & RICHARDSON Pf (BO)
`P_()_ BOX 1022
`MINNEAPOLIS, MN 55440-1022
`
`EXAMINER
`MATTHEWS, WILLIAM H
`
`ART UNIT
`
`3774
`
`PAPER NUMBER
`
`NOT *ICATION DATE
`
`DELIVERY MODE
`
`04/-18/-20-1-1
`
`ELEC
`
`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):
`PATDOCTC @ fr. com
`
`PTOL—90A (Rev. 04/07)
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE BOARD OF PATENT APPEALS
`AND INTERFERENCES
`____________
`
`Ex parte DIMITRI AZAR
`____________
`
`Appeal 2009-010272
`Application 11/415,688
`Technology Center 3700
`____________
`
`
`
`Before JOHN C. KERINS, STEVEN D.A. McCARTHY, and
`MICHAEL W. O’NEILL, Administrative Patent Judges.
`
`O’NEILL, Administrative Patent Judge.
`
`
`DECISION ON APPEAL
`
`STATEMENT OF THE CASE
`Dimitri Azar (Appellant) appeals under 35 U.S.C. § 134 from the
`
`Examiner’s decision finally rejecting claims 1-20 under 35 U.S.C. § 112,
`first paragraph, as failing to comply with written description and enablement
`
`
`
`Appeal 2009-010272
`Application 11/415,688
`
`requirements.1 We have jurisdiction under 35 U.S.C. § 6(b). We
`REVERSE.
`
`
`
`The Invention
`The claims on appeal relate to vision prostheses.
`Claim 1, reproduced below, is illustrative of the subject matter on
`appeal.
`
`1. A vision prosthesis comprising:
`an intra-ocular lens system having focal
` length that varies in response to a change
` in an index of refraction, the intra-ocular
` lens system comprising a lens element
` with no moving parts; and
`a controller for causing a change in the focal
` length thereof, the extent of the change
` being dependent on an estimate of a
` distance to an object of regard.
`
`
`
`OPINION
`Written Description Rejection
`In light of the Appellant’s arguments and the Examiner’s position, the
`
`determinative issue for this ground of rejection is whether the Examiner has
`presented sufficient evidence or reasons in order to find that a person having
`ordinary skill in the art would not have recognized that the written
`description of the invention, as filed, provides support for the claims.
`
`The Examiner asserts that the Specification only describes a lens with
`no moving parts as compared to the claims that recite an intraocular lens
`system comprising a lens element with no moving parts. Ans. 3 and see
`
`
`1 The Examiner withdrew the rejection of claims 1-20 under 35 U.S.C.
`§ 112, second paragraph. Ans. 2.
`
`
`
`2
`
`
`
`Appeal 2009-010272
`Application 11/415,688
`
`Ans. 4-5. The Examiner posits that the term “lens element” is broader than
`“lens” and, as such, may be interpreted as lens or any part or element related
`to a lens. Ans. 4. The Examiner further posits that since the Specification
`describes the vision prosthesis as comprising multiple lens element parts
`which move and move relative to one another, it is unclear how a lens
`element may comprise no moving parts. Ans. 4.
`
`The Appellant contends that the Examiner’s interpretation of “lens
`element” is inconsistent with the plain meaning and how a person having
`ordinary skill in the art would understand the claim. App. Br. 4. Appellant
`argues that, when reading the claim limitation directed to the “intra-ocular
`lens system,” the term “lens element” is intended to indicate that the lens is
`an “element” of the “intra-ocular lens system.” Id. Thus, Appellant argues
`that the “lens element” “is simply one of possibly many elements of an intra-
`ocular lens system that happens to be a ‘lens’.” Id. The Appellant counters
`that the Examiner’s position that the “lens element” should be interpreted as
`related or attached to a lens, should not be so, but rather should “simply be
`other elements of claim l’s ‘intra-ocular lens system’.” App. Br. 5. As such,
`Appellant asserts that the proper interpretation for the claimed intra-ocular
`lens system would be a system that could include many other elements,
`some of which may or may not have moving parts, but the system “would
`always include a ‘lens element with no moving parts’.” Id.
`
`We note that there is a strong presumption that an adequate written
`description of the claimed invention is present in the Specification as filed.
`The Examiner has the initial burden of presenting evidence or reasoning to
`explain why persons skilled in the art would not recognize in the original
`disclosure a description of the invention defined by the claims. See In re
`
`
`
`3
`
`
`
`Appeal 2009-010272
`Application 11/415,688
`
`Wertheim, 541 F.2d 257, 263 (CCPA 1976). Claim construction is an
`essential element in determining adequacy of the written description. See
`e.g., MPEP § 2163.
`
`Here, we note that original filed dependent claim 7 further recited that
`the intra-ocular lens system comprised “a first lens element; a second lens
`element moveable relative to the first lens element; and a motor coupled to
`the second lens element for moving the second lens element relative to the
`first lens element.” Spec. 15, lines 18-22. As such, the phrase “lens
`element” was present in the Specification as filed. We note that the second
`lens element is coupled to a motor in order for it to be moved relative to the
`first lens element. See also Spec. 3, lines 13-15. We also note that the
`Specification discloses using a lens filled with nematic liquid-crystal so that
`when an electric or magnetic field is applied the index of refraction of the
`lens varies in response thereto. Spec. 7-8.
`The Examiner has not provided sufficient evidence or persuasive
`reasoning, that given the Specification as originally filed as noted above, the
`claimed “lens element” feature is precluded from having no moving parts to
`counter the Appellant’s argument that the “element” term within the claimed
`“lens element” feature would be intended to indicate that the lens is an
`“element” of the “intra-ocular lens system” and the element would have no
`moving parts. See App. Br. 4-5.
`Moreover, a pending claim is given the broadest reasonable
`construction consistent with the specification and should be read in light of
`the specification as it would be interpreted by a person having of ordinary
`skill in the art. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364
`(Fed. Cir. 2004). Given the Examiner’s interpretation and the Appellant’s
`
`
`
`4
`
`
`
`Appeal 2009-010272
`Application 11/415,688
`
`interpretation, noted above, we conclude that the Appellant’s interpretation
`provides the broadest reasonable interpretation in light of the Specification
`as it would be interpreted by a person having ordinary skill in the art, viz.,
`the lens element claimed is an element of the intra-ocular lens system which
`may include more elements that may or may not have moving parts, but will
`“always include a ‘lens element with no moving parts’.” App. Br. 5.
`Enablement Rejection
`Recently our reviewing court re-established that under its
`jurisprudence that Ҥ 112, first paragraph, contains a written description
`requirement separate from enablement.” Ariad Pharmas., Inc. v. Eli Lilly &
`Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). As such, the Examiner erred in
`integrating the Examiner’s finding of lack of adequate written description
`for the claimed subject matter to the conclusion of lack of enablement of the
`claim recitation of “a lens element with no moving parts.”
`Addressing the Examiner’s other concern with respect to the lack of
`enablement of an index of refraction which changes due to the focal length
`varying while the lens element contains no moving parts, thus it being
`unclear to the Examiner how such a feature is enabled, Ans. 3-4, the
`determinative issue is whether the Examiner established a reasonable basis
`to question the enablement provided for the claimed invention.
`The standard for determining whether the Specification meets the
`enablement requirement was cast in the Supreme Court decision of Minerals
`Separation v. Hyde, 242 U.S. 261, 270 (1916), which postured the question:
`is the experimentation needed to practice the invention undue or
`unreasonable? That standard is still the one to be applied. See In re Wands,
`858 F.2d 731, 737 (Fed. Cir. 1988). While the Wands factors are not
`
`
`
`5
`
`
`
`Appeal 2009-010272
`Application 11/415,688
`
`dispositive, an evaluation using the factors is the strongest manner for the
`Examiner to provide a reasonable basis to establish doubt of the enablement
`of a claimed invention, since the Federal Circuit has adopted the Wands
`factors to evaluate whether a disclosure would require undue
`experimentation, see In re Wands, 858 F.2d at 737 (listing the factors), since
`the Examiner has the initial burden to establish a reasonable basis to
`question the enablement provided for the claimed invention, In re Wright,
`999 F.2d 1557, 1562 (Fed. Cir. 1993), and since, “[w]hether undue
`experimentation is needed is not a single, simple factual determination, but
`rather is a conclusion reached by weighing many factual considerations.” In
`re Wands, 858 F.2d at 737.
`
`Here, the Examiner has failed to provide a cogent explanation as to
`why the scope of protection provided by these claims is not adequately
`enabled by the description of the invention provided in the Appellant’s
`Specification. In particular, the Examiner has failed to sufficiently show
`why the Appellant’s disclosure would require undue experimentation in
`order to make and use the claimed invention. Instead, the Examiner
`provided statements concerning how the index of refraction is to change by
`re-orientation of “directors” of the nematic crystal, and how it is unclear to
`the Examiner how the index could be changed without moving parts. Ans.
`4. However, the Examiner failed to consider the disclosures in question with
`a weighing (any, some, or all) of the following factual considerations: (A)
`The breadth of the claims; (B) The nature of the invention; (C) The state of
`the prior art; (D) The level of one of ordinary skill; (E) The level of
`predictability in the art; (F) The amount of direction provided by the
`inventor; (G) The existence of working examples; and (H) The quantity of
`
`
`
`6
`
`
`
`Appeal 2009-010272
`Application 11/415,688
`
`experimentation needed to make or use the invention based on the content of
`the disclosure. See In re Wands, 858 F.2d at 737. As such, the Examiner
`has failed to show lack of enabling disclosure.
`
`
`CONCLUSION
`In view of the foregoing, we determine that the Examiner failed to
`
`establish the initial burden of presenting evidence or reasoning to explain
`why persons skilled in the art would not recognize in the original disclosure
`a description of the invention defined by the claims and a reasonable
`explanation as to why the scope of protection provided by these claims is not
`adequately enabled by the description of the invention provided in the
`Appellant’s Specification.
`
`
`DECISION
`We reverse the Examiner’s decision to reject claims 1-20 under 35
`
`U.S.C. § 112, first paragraph.
`
`
`REVERSED
`
`7
`
`
`
`Klh
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