Appeal No. 2005-1024 Page 4
Application No. 10/156,291
expand and soften with the uptake of aqueous humor in the eye to fill the posterior
capsule of the posterior chamber. According to Koeniger, the resultant lens is “made of
soft material, HEMA, with a water uptake of 45%, 55%, or 70%, whichever is best suited
to the comfort of the patient” (column 1, lines 44-46).
Koeniger’s lens is therefore made by a different process than the lenses recited
in appellants’ claims 26-28. To the extent that the examiner’s comments in the last
paragraph on page 7 of the answer imply that a lens machined from a plastic blank
which had itself been molded is a lens made by the same process as those recited in
claims 26-28, we do not agree. While a lens which undergoes some degree of post-
molding processing, such as polishing and grinding to perfect surfaces or edges, can
reasonably still be considered a molded lens molded from a soft material, a lens such
as that of Koeniger which is cut and shaped into the lens shape from a hard and dry
plastic blank is not a molded lens molded from a soft material as one of ordinary skill in
the art would understand that terminology, regardless of whether that blank was itself
formed by a molding process.2
Appellants’ claims 26-28, which recite a “molded soft intraocular lens molded
from a soft, bio-compatible material,” are product-by-process claims. The patentability
of a product does not depend on its method of production. If the product in a product-
by-process claim is the same as or obvious from a product of the prior art, the claim is
2 We note, in this regard, that Koeniger does not disclose that the HEMA plastic which is cut and
shaped was itself molded and the examiner has not provided any evidence to support such an
assumption.
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