Appeal No. 2005-1315 Παγε 2
Application No. 09/972,533
This is a decision on the appellant’s request for rehearing (filed November 4,
2005) under 37 CFR § 41.52 of our decision mailed August 31, 2005 (hereinafter
“earlier decision”). In our earlier decision, we affirmed the examiner’s rejection of claims
39, 40, 49 and 50 under 35 U.S.C. § 112, second paragraph, as being indefinite, and
the examiner’s rejections of claims 1, 36-41 and 45-51 under 35 U.S.C. § 102(b) as
being anticipated by Fisher and by Smith. The appellant’s request is directed solely to
the affirmance of the anticipation rejections and does not request reconsideration of the
affirmance of the indefiniteness rejection.
The basis of the appellant’s request is that the statement of this panel, on page 7
of our earlier decision, that “the placement of the Fisher and Smith implants in a scleral
pocket will necessarily displace scleral tissue, thereby causing scleral expansion”
assumes that the scleral pocket or tunnel receiving the Fisher or Smith implant is
smaller than the implant, rather than formed to have a size corresponding to the
implant, and neither Fisher nor Smith supports such a conclusion. Even assuming,
arguendo, the appellant is correct that the Fisher and Smith implants surgically
implanted according to the particular methods disclosed by Fisher and Smith would not
necessarily displace scleral tissue and cause scleral expansion, the appellant’s
argument overlooks the fact that the claims at issue (claims 1, 36-41 and 45-51) are
directed not to a method of implantation but rather to a prosthesis. As pointed out in our
earlier decision, the Fisher and Smith implants both appear reasonably capable, without
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