Ex Parte Bothe et alDownload PDFPatent Trials and Appeals BoardMay 23, 201914638105 - (D) (P.T.A.B. May. 23, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/638,105 03/04/2015 31781 7590 05/28/2019 ALCON RESEARCH, LTD. PA TENT DEPARTMENT 11460 JOHNS CREEK PARKWAY JOHNS CREEK, GA 30097-1556 FIRST NAMED INVENTOR Harald Bothe 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 ATTORNEY DOCKET NO. CONFIRMATION NO. PAT056125-US-NP 1089 EXAMINER BURKHART, ELIZABETH A ART UNIT PAPER NUMBER 1715 NOTIFICATION DATE DELIVERY MODE 05/28/2019 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): patent. docketing@alcon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HARALD BOTHE, MICHAEL TRETTER, and PETER HAGMANN1 Appeal2018-007159 Application 14/63 8,105 Technology Center 1700 Before JEFFREY T. SMITH, MERRELL C. CASHION, JR., and JANEE. INGLESE, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Novartis AG is the Appellant and the real party in interest. (App. Br. 2). Appeal2018-007159 Application 14/63 8,105 The subject matter on appeal relates to a method for producing silicon hydro gel contact lenses comprising the step of washing the first and second molding surfaces of the reusable mold with a water-based solution containing from about 0.01 % to about 10% by weight of a linear alkyl (propylene glycol)n either surfactant wherein the linear alkyl group has 2 to 5 carbon atoms and n is the integer 1, 2 or 3. Spec. 7, and 16-17. Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 1. A method for producing silicone hydrogel contact lenses, comprising the steps of: (1) providing a reusable mold for making soft contact lenses, wherein the mold has a first mold half with a first molding surface defining the anterior surface of a contact lens and a second mold half with a second molding surface defining the posterior surface of the contact lens, wherein said first and second mold halves are configured to receive each other such that a cavity is formed between said first and second molding surfaces; (2) introduce a fluid polymerizable composition into the cavity, wherein the fluid polymerizable composition comprises at least one silicone-containing lens-forming material selected from the group consisting of a siloxane- containing vinylic monomer, a polysiloxane-containing vinylic monomer, a polysiloxane-containing macromer, a polysiloxane-containing crosslinker, an actinically- crosslinkable silicone-containing prepolymer, and a mixture thereof; (3) irradiating, under a spatial limitation of actinic radiation, the fluid composition in the mold for a time period of about 200 seconds or less, so as to form a silicone hydrogel contact lens, wherein the formed silicone hydrogel contact lens comprises an anterior surface defined by the first molding surface, an opposite posterior surface defined by the second molding surface, 2 Appeal2018-007159 Application 14/63 8,105 and a lens edge defined by the spatial limitation of actinic radiation; ( 4) opening the mold and removing the formed silicone hydrogel contact lens from the mold; ( 5) removing the silicone-containing lens forming material and other components of the fluid composition left behind on the first and second molding surfaces of the mold by washing the first and second molding surfaces of the reusable mold with a water-based solution containing from about 0.01 % to about 10% by weight of a solvo-surfactant, wherein the solvo-surfactant is an alkyl (propylene glycol)n ether wherein alkyl is a linear alkyl group having 2 to 5 carbon atoms and n is the integer 1, 2 or 3; and (6) repeating the steps (2) to (5). Appellant requests review of the rejection from the Examiner's Final Office Action under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Samuel et al. (US 2012/0139138 Al, published June 7, 2012) in view of Huang et al. (US 2012/0088861 Al, published April 12, 2012) in view of Blair (US 7,390,368 Bl, published June 24, 2008). Final Act. 3; App. Br. 3. OPINION Claim 12 After review of the respective positions Appellant provides in the Briefs and the Examiner provides in the Final Action and the Answer, we affirm the Examiner's prior art rejection of claims 1-16 under 35 U.S.C. 2 Appellant presents arguments only for independent claim 1. See App. Br. 2-11. Accordingly, we limit our discussion to this claim as representative of the subject matter claimed. Claims 2-16 stand or fall with independent claim 1. 3 Appeal2018-007159 Application 14/63 8,105 § 103(a) for essentially the reasons the Examiner presents. We add the following. Independent claim 1 is directed to a method for producing silicon hydro gel contact lenses comprising the step of washing the reusable molds with 0.01 % to about 10% by weight of alkyl (propylene glycol)n ether, the linear alkyl group having 2 to 5 carbon atoms and n is 1, 2 or 3. We refer to the Examiner's Final Action for a complete statement of the rejection of independent claim 1. Final Act. 3-4. Briefly, the Examiner finds Samuel discloses the claimed method steps 1-6 except step 5 utilizes a water-based solution containing 0.01 % to 2.5% by weight of a silicone surfactant to wash the glass molds. Final Act. 3; Samuel ,-J,-J 33 and 40. The Examiner also finds Samuel discloses also that aqueous solutions of IP A are useful for washing the glass molds. Ans. 5; Samuel Ex. 2 and ,-J 95. The Examiner finds Samuel does not disclose washing the reusable molds with 0.01 % to about 10% by weight of alkyl (propylene glycol)n ether, the linear alkyl group having 2 to 5 carbon atoms and n is 1, 2 or 3. Final Act. 3. The Examiner finds Huang discloses that compatible fluids such as water, aqueous solutions or a combination thereof can be used to wash reusuable molds for forming silicon hydro gel contact lenses. Final Act. 3; Huang ,-J 192. The Examiner finds Blair discloses a water-based cleaner containing 4% by weight propylene glycol n-butyl ether (n=l, alkyl has 4 carbon atoms) cleans glass better than an aqueous solution of IP A. Final Act. 3; Ans. 5; Blair col. 2, 11. 5-10, 45-65. The Examiner determines that it would have been obvious to use the 4% by weight propylene glycol n-butyl ether as suggested by Blair as a suitable alternative to the water-based solution of Samuel because it has better cleaning abilities for glass than aqueous IP A 4 Appeal2018-007159 Application 14/63 8,105 solutions. Final Act. 3-4; Ans. 6. Appellant argues that Blair is unrelated as Blair discloses the aqueous solution to clean fiber optic connector end faces. App. Br. 8. According to Appellant, the Examiner does not provide sufficient rationale that explains why a person skilled in the art would combine the references while having a reasonable expectation of success. App. Br. 9. Appellant further argues that the Examiner simply picked and chose the elements using impermissible hindsight reconstruction. App. Br. 9-11. We are unpersuaded of reversible error. We agree with the Examiner's determination that Blair is analogous. Two criteria are relevant in determining whether prior art is analogous: "(l) whether the art is from the same field of endeavor, regardless of the problem addressed[;] and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved." Comaper Corp. v. Antee, Inc., 596 F.3d 1343, 1351 (Fed. Cir. 2010) (quoting In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992)). Whether a reference in the prior art is "analogous" is a fact question. In re Clay, 966 F.2d at 658. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010). ("The Supreme Court's decision in KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007), directs us to construe the scope of analogous art broadly, stating that 'familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle.' Id. at 402 ( emphasis added).") Id. ( citation omitted). In the instant case, the reusable molds substrate to be cleaned in the present invention and Samuel are both formed from glass or quartz. Spec. 5; 5 Appeal2018-007159 Application 14/63 8,105 Samuel ,i 40. Appellant argues Blair has nothing to do with a method for washing reusable molds with a water-based system because Blair describes aqueous solutions to clean fiber optic connectors end faces. App. Br. 8. However, Blair's teachings are relevant to cleaning a glass medium and the molds of the present invention are also made of glass. Spec. 5. Even if Blair and the instant application could have been considered to have been from different fields of endeavor, Blair is reasonably pertinent to the particular problem with which Appellant is involved. That is, both Blair and the instant application involve the cleaning of articles made of glass with aqueous-based cleaning solutions. Furthermore, Samuel discloses silicon surfactant and IP A are suitable for washing glass molds. Samuel ,i,i 40 and 95. Blair describes aqueous base solutions containing 4% by weight propylene glycol n-butyl ether provide improved cleaning over IP A solutions. Blair col. 2, 11. 45-65. Consequently, Blair is reasonably pertinent to the problem of cleaning glass articles. Appellant's further arguments are also unpersuasive of reversible error. Samuel and Huang establish various aqueous solutions, including IPA, to wash reusable molds formed from glass are known. Samuel ,i,i 33, 40, and 95; Huang ,i 192. Blair discloses that water-based solutions containing propylene glycol ethers were widely known for cleaning glass and that a water-based solution containing 4% by weight propylene glycol n- butyl ether cleans better than an aqueous IP A solution. Blair col. 1, 11. 48- 50; col. 2, 11. 45-65. Blair discloses glass cleaners comprising 4% by weight propylene glycol n-butyl ether is an improvement over cleaners comprising IPA. Blair col. 2, 11. 45-65. One skilled in the art would have reasonably expected that glass cleaners comprising 4% by weight propylene glycol n- 6 Appeal2018-007159 Application 14/63 8,105 butyl ether would have been suitable for cleaning the glass molds described by Samuel. "For obviousness under§ 103, all that is required is a reasonable expectation of success." In re O 'Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988). A person of ordinary skill in the art cleaning materials made from glass would have looked to recognized glass cleaners. Accordingly, we sustain the Examiner's prior art rejection of claims 1-16 under 35 U.S.C. § 103(a) for the reasons presented by the Examiner and given above. ORDER The Examiner's prior art rejection of claims 1-16 under 35 U.S.C. § 103(a) is affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation