Appeal No. 2005-1024 Page 6
Application No. 10/156,291
with Koeniger’s process appears to be a substantially identical product to the lens of
claims 26-28. To rebut such assertion, appellants submitted a declaration of Stephen
Zou (attached to the brief as Appendix B), whose expertise in the field of intraocular
lenses has not been questioned by the examiner, stating an opinion that a molded lens
and a machined lens are inherently different lenses and offering reasons for that opinion
(paragraph 5). Specifically, according to the Zou declaration, even after polishing, a
machined lens would have various visible marks on its optical surface where the lathe
or other cutting tool cut into the lens material. Consequently, on the basis of a simple
visual inspection with an optical microscope, one of ordinary skill in the art would be
able to differentiate a lens similar to that disclosed by Koeniger from a molded soft
intraocular lens molded from a soft bio-compatible material, as defined in claims 26-28.
With the Zou declaration, appellants have, in our opinion, met their burden to
show that the Koeniger lens is not the same as that recited in claims 26-28. The
examiner questions the probative value of the Zou declaration because (1) no actual
samples of machined or molded lenses were tested and compared, (2) the declaration
constitutes opinion evidence and (3) Mr. Zou was employed by the assignee of the
present application and thus has a vested interest therein. As to the first two points,
although factual evidence, such as actual testing of samples, is generally preferable to
opinion testimony, such testimony is entitled to consideration and some weight. As to
the third point, while a declaration of a person with an interest in the case may be less
persuasive than that of a disinterested person, it cannot be disregarded for this reason
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007