Appeal 2007-1199
Application 10/124,648
perpendicular to the optical axis necessarily cannot comprise of a certain
claim feature of the Applicants. Similarly, it has not been demonstrated why
a lens generally softer as a whole cannot still be more stiff in one direction
than another.
The deficiencies in the Applicants’ Appeal Brief are also present in
and shared by the Reply brief, except that in the Reply Brief, the Applicants
specifically assert that nothing in Nigam says anything about the Applicants’
recited force response, i.e., that the lens exhibits a force response of
approximately less than 0.5 mN when the intraocular lens is compressed 1
mm. The argument is belated and not entitled to consideration, as it should
have been presented for the first time in the Appeal Brief, not the Reply
Brief.
In the alternative, even if we do consider the argument, it is without
merit. The argument does not address or rebut the Examiner’s rationale with
regard to the meeting of the claim feature concerning the lens’ reactive
force, i.e., because all the structural features as claimed as well as the
additional disclosed feature of the haptic spread to optic diameter ratio being
less than 1.5 and 1.3 are met by Nigam, Nigam’s lens inherently possesses
the same reactive force property recited by the Applicants. The Examiner
has articulated a reasonable basis of inherency based on structural identity.
When the issue is inherent disclosure and when a prima facie case of
inherency has been established, as here, the Applicants’ simply saying that
the reference does not teach the feature is unpersuasive. The Applicants
have submitted no testimony from any technical witness to establish that
Nigam’s disclosed lens could not have a reactive force that is less that 0.5
mN when the intraocular lens is compressed 1 millimeter. Also, it is not
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