Appeal No. 2005-1315 Παγε 7
Application No. 09/972,533
1 and 45, we do not interpret “expanding means” as a recitation under 35 U.S.C. § 112,
sixth paragraph.2
Fisher and Smith each disclose an implant of material which is biocompatible
with the tissue of the eye and which is surgically implanted into a pocket created in the
sclera of the eye. Further, the Fisher and Smith implants both comprise wedge shapes,
thus forming a ridge member associated with a base member. While the Fisher and
Smith implants are both disclosed for use in facilitating drainage of fluid from the
anterior region of the eye through the sclera and are not specifically disclosed for scleral
expansion, both of these inserts appear reasonably capable, without structural
modification, of causing scleral expansion. In fact, the placement of the Fisher and
Smith implants in a scleral pocket will necessarily displace scleral tissue, thereby
causing scleral expansion. Accordingly, the functional language of claims 1 and 45
does not in this instance serve to patentably distinguish over the implants of Fisher and
Smith. See, e.g., In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 230-31
2 The sixth paragraph of 35 U.S.C. § 112, by its very own terms, deals only with elements
expressed as a means or step for performing a specified function without the recital of structure,
material, or acts in support thereof.
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007