ESSILOR INTERNATIONAL (COMPAGNIE GENERALE D'OPTIQUE) et al.

Patent Trials and Appeals Board

Apr 22, 2021

2020002803 (P.T.A.B. Apr. 22, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/287,079 10/06/2016 Reto STROBEL 0579-1371-1 8245
466 7590 04/22/2021
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD
11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
PADGETT, MARIANNE L
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
04/22/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
pair_nixon@firsttofile.com
ptomail@nixonvan.com
yandtpair@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RETO STROBEL, STEPHAN SCHOLZE,
GERALD FOURNAND, and NARENDRA BORGHARKAR
Appeal 2020-002803
Application 15/287,079
Technology Center 1700
Before JEFFREY B. ROBERTSON, CHRISTOPHER C. KENNEDY, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–16. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 In our Decision, we refer to the Specification (“Spec.”) of Application
15/287,079 filed Oct. 6, 2016; the Final Office Action dated Mar. 25, 2019
(“Final Act.”); the Appeal Brief filed Sept. 23, 2019 (“Appeal Br.”); the
Examiner’s Answer dated Dec. 16, 2019 (“Ans.”); and the Reply Brief filed
Feb. 18, 2020 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real parties in interest as ESSILOR
INTERNATIONAL and SATISLOH AG. Appeal Br. 3.
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Application 15/287,079

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CLAIMED SUBJECT MATTER
The invention relates to machines for coating an optical article such as
an ophthalmic lens with an anti-soiling coating composition, and to
associated methods of using the machine. Spec. 1, ll. 6–8. Ophthalmic
substrates are said to require addition of coatings such as anti-abrasive, anti-
reflective, and anti-soiling coatings. Id. 1, ll. 14–17. An anti-soiling coating
more resistant to contamination by organic impurities and more easily
cleaned is applied over an anti-reflective coating. Id. 1, ll. 17–20.
Claim 8, reproduced below, illustrates the claimed subject matter:
8. A method for recoating an optical article with an anti-
soiling coating composition, the method comprising the
following steps in order:
selecting the optical article having an initial outermost
anti-soiling coating;
loading the optical article into a vacuum chamber of a
machine for coating;
loading the anti-soiling coating composition into the
vacuum chamber;
starting operation of a vacuum pump of the machine by
connecting the vacuum pump to the vacuum chamber to
evacuate an interior space of the vacuum chamber to cause the
vacuum pump to suck gases from the vacuum chamber;
carrying out a vacuum plasma treatment with a plasma
generator and controlling the plasma generator to remove the
initial outermost anti-soiling coating of the optical article;
disconnecting the vacuum pump from the vacuum
chamber so that the vacuum pump is not able to suck gases
from the vacuum chamber;
reconnecting the vacuum pump to the vacuum chamber
to evacuate the vacuum chamber, for a predetermined amount
of time, until a vacuum chamber pressure reaches a required
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pressure for evaporation, the vacuum chamber pressure being
monitored by a pressure sensor;
disconnecting the vacuum pump from the vacuum
chamber after the vacuum chamber pressure reaches the
required pressure for evaporation;
carrying out a vacuum evaporation treatment with an
evaporation device by heating the anti-soiling coating
composition such that the anti-soiling coating composition is
evaporated in the vacuum chamber to recoat the optical article
with the anti-soiling coating composition; and
unloading the optical article from the vacuum chamber.
Appeal Br. 30–31 (Claims Appx.).
REFERENCES
The Examiner relies on the following prior art in rejecting the claims:
Name Reference Date
Hashimoto et al.
(“Hashimoto”)
US 4,759,948 July 26, 1988
Martin et al. (“Martin”) US 2005/0008784 A1 Jan. 13, 2005
Polinsky et al.
(“Polinsky”)
US 2005/0106891 A1 May 19, 2005
Dussarrat et al.
(“Dussarrat”)
US 7,192,626 B2 Mar. 20, 2007
Fournand US 2007/0104891 A1 May 10, 2007
Singh US 2008/0171147 A1 July 17, 2008
Kirkpatrick et al.
(“Kirkpatrick”)
US 2009/0098186 A1 Apr. 16, 2009
Kogura et al.
(“Kogura”)
US 2010/0083898 A1 Apr. 8, 2010
Fournand
(“Fournand ’684”)
US 8,945,684 B2 Feb. 3, 2015
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REJECTIONS
The Examiner maintains the following rejections:
A. Claim 8 under 35 U.S.C. § 103(a) over Fournand in view of
Martin and Singh, and optionally Kirkpatrick or Kogura or Polinsky or
Dussarrat;
B. Claims 1, 2, 5–7, 10, and 11 under 35 U.S.C. § 103(a) over
Fournand in view of Martin and Singh, and optionally Kirkpatrick or Kogura
or Polinsky or Dussarrat, and further in view of Hashimoto, and optionally
Kirkpatrick;
C. Claim 12 under 35 U.S.C. § 103(a) over Fournand in view of
Martin, Singh, and Hashimoto, and optionally Kirkpatrick or Kogura or
Polinsky or Dussarrat, and further in view of Kogura or Polinsky or
Dussarrat;
D. Claims 3, 4, 9, and 13–16 under 35 U.S.C. § 103(a) over
Fournand in view of Martin, Singh, and Hashimoto, and optionally
Kirkpatrick or Kogura or Polinsky or Dussarrat, and further in view of
Singh, and optionally Kirkpatrick or Kogura or Polinsky or Dussarrat; and
E. Claims 1–16 as unpatentable on the ground of nonstatutory
double patenting over claims 1–18, 20–28, and 30–38 of Fournand ’684 in
view of Martin, Singh, and Hashimoto, and further in view of Kogura or
Polinsky or Dussarrat. Ans. 3–4.

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OPINION
Obviousness rejection
Of relevance to our Decision, all of the pending claims require, inter
alia, selecting an optical article having an initial outermost anti-soiling
coating, carrying out a vacuum plasma treatment to remove the initial
outermost anti-soiling coating, and subsequently carrying out a vacuum
evaporation treatment to recoat the optical article. See Appeal Br. 27–37.
The Examiner finds that the claims under review reasonably may be
considered to represent detailed operating procedures for processing
previously disclosed in Fournand, but where Fournand’s plasma pre-treating
with an anti-soiling coating is substituted with removal of a previously
applied anti-soiling coating, as disclosed in Martin. Ans. 4–5. The
Examiner relies on Fournand as the primary reference. Final Act. 4–15. For
each of the claims the Examiner finds that the combination of Fournand and
Singh teach the vacuum evaporation treatment as claimed. Id. at 5–10. The
Examiner acknowledges that Fournand in view of Singh do not teach
depositing an anti-soiling coating on an optical article that has not yet been
coated with an anti-soiling coating or a vacuum plasma treatment removing
a previously present anti-soiling coating. Id. at 11. The Examiner relies on
Martin for these disclosures. Id. According to the Examiner, “given the
plasma teachings of these 2 references [Fournand and Martin]; [sic] it
would’ve been a matter of routine experimentation & optimization to
determine the effective plasma parameters for effectively & sufficiently
removing a defective anti-soiling coating & activating the underlying surface
for subsequent vacuum deposition of the new anti-soiling coating.” Id. at
13.
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Appellant argues that one of ordinary skill in the art would not have
been led to combine the teachings of Fournand, Singh, and Martin. Appeal
Br. 20; Reply Br. 4, 6–7. Appellant argues that Martin teaches away from
using a vapor deposition to recoat anti-soiling coatings. Appeal Br. 21
(citing Martin ¶¶ 34, 52).
“[A] patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art.” KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418
(2007). Nor will mere conclusory statements sustain an obviousness
rejection; “instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” In re
Kahn, 441 F.3d 977, 988 (Fed, Cir. 2006). The Examiner must provide an
adequate reason for a person of ordinary skill in the art at the time the
invention to have modified the reference or combination of references to
arrive at the claimed invention. See KSR, 550 U.S. at 418 (“[I]t can be
important to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.”). In the absence of such an explanation, the
rejection must be reversed. Kahn, 441 F.3d at 988; In re Rouffet, 149 F.3d
1350, 1358 (Fed. Cir. 1998) (“hindsight” is inferred when the specific
understanding or principal within the knowledge of one of ordinary skill in
the art leading to the modification of the prior art in order to arrive at
appellant’s claimed invention has not been explained).
We agree with Appellant that the Examiner fails to provide a reason to
combine Fournand and Martin. The Examiner’s position is that one would
start with Fournand and Martin in hand, and then apply routine
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experimentation and optimization. However, such reasoning says no more
than that a skilled artisan, once presented with the two references, would
have understood that they could be combined. “And that is not enough: it
does not imply a motivation to pick out those two references and
combine them to arrive at the claimed invention.” PersonalWeb Techs.,
LLC, v. Apple, Inc., 848 F.3d 987, 993 (Fed. Cir. 2017); see also Belden Inc.
v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness
concerns whether a skilled artisan not only could have made but would
have been motivated to make the combinations or modifications of prior art
to arrive at the claimed invention.”).
Although a closer call than the lack of motivation issue, we agree with
Appellant that Martin teaches away from recoating an optical lens by
vacuum vapor deposition of an anti-soiling coating. See Appeal Br. 21.
Teaching away requires that a reference “criticize, discredit, or otherwise
discourage the solution claimed” by Appellant. In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004). “A reference may be said to teach away when a
person of ordinary skill, upon reading the reference, would be discouraged
from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant.” In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). When references teach away
from the claimed combination, it is improper to combine them in an
obviousness rejection. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983).
Martin teaches that the durability of anti-soiling coatings applied by
vapor deposition to dry rub abrasion is relatively poor, and oil repellency
may be less than desired. Martin ¶ 34. Martin identifies “suitable”
application techniques for anti-soiling coating as including, but not being
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limited to, spraying, casting, rolling, or immersing. Id. ¶ 52. One of
ordinary skill in the art reading Martin would be discouraged from choosing
the claimed vapor evaporation deposition and would choose a technique
other the claimed vacuum evaporation deposition to apply an anti-soiling
coating.
On the record before us, we are constrained to reverse the obviousness
rejection.
Nonstatutory double patenting rejection
The Examiner rejects claims 1–16 on the ground of nonstatutory
double patenting as being unpatentable over claims 1–18, 20–28, and 30–38
of Fournand ’684 “in view of Martin . . . & Singh . . . , plus considering
Hashimoto . . . for claims 1–2, 5–7 & 10–11 above, and further in view of
Kogura . . . or Polinsky . . . or Dussarrat . . . for claims 3–4, 9 12.” Final
Act. 23. The Examiner acknowledges that Fournand ’684 does not disclose,
inter alia, using vacuum plasma pretreatment for removing a previously
present anti-soiling coating, such that the subsequently deposited anti-soiling
coating is replacing the initial coating. Id. at 24. As in the obviousness
rejection, the Examiner relies on Martin for this teaching.
For the reasons discussed above in relation to the obviousness
rejection, we do not sustain the nonstatutory double patenting rejection of
the claims.
CONCLUSION
The Examiner’s decision to reject claims 1–16 is reversed.
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
8 103(a) Fournand, Martin,
Singh, Kirkpatrick,
Kogura, Polinsky,
Dussarrat
8
1, 2 5–7,
10, 11
103(a) Fournand, Martin,
Singh, Kirkpatrick,
Kogura, Polinsky,
Dussarrat, Hashimoto
1, 2 5–7, 10,
11
12 103(a) Fournand, Martin,
Singh, Hashimoto,
Kirkpatrick, Kogura,
Polinsky, Dussarrat
12
3, 4, 9,
13–16
103(a) Fournand, Martin,
Singh, Hashimoto,
Kirkpatrick, Kogura,
Polinsky, Dussarrat
3, 4, 9, 13–
16
1–16 Nonstatutory double
patenting over
Fournand ’684 in
view of Martin,
Singh, Hashimoto,
Kogura, Polinsky,
Dussarrat
1–16
Overall
Outcome
1–16
REVERSED