Ex Parte Boyd et al

Patent Trial and Appeal Board

Oct 27, 2014

11512653 (P.T.A.B. Oct. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KAREN BOYD, KAREN FRANCES LINDLEY,
FRANS THEODORUS MAHIEU, and VINCENT BOWMAN
____________________

Appeal 2012-009381
Application 11/512,653
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, BRANDON J. WARNER, and
JAMES J. MAYBERRY, Administrative Patent Judges.

MAYBERRY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
2, 4, 5, 7, 21–26, and 29–31.1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

CLAIMED SUBJECT MATTER
The claims are directed to a contact lens care product. Claim 1,
reproduced below, is illustrative of the claimed subject matter:

1 Appellants identify claims 1, 2, 4, 5, 7, 14–26, and 29–34 as “on appeal.”
Appeal Br. 3. However, claims 14–20 and 32–34 have been withdrawn from
consideration, and thus are not before us for review as part of the instant
appeal. Id.
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1. A lens care product, comprising:
a solution container; and
a lens-cleaning solution contained in the solution
container,
wherein the lens-cleaning solution is capable of cleaning,
disinfecting, and/or rinsing a contact lens in a lens case and
capable of cleaning and lubricating the contact lens directly in
an eye,
wherein the lens-cleaning solution has a viscosity
sufficient low to enable it to be controllably dispensed from the
solution container when subjected to applied hand and/or finger
pressure to the container by an user and sufficiently large to
prolong its staying time in the eye long enough for in-eye
cleaning and lubrication of the contact lens,
wherein the width of the solution container is less than
3/4 of the height and the solution container has a smoothly-
contoured outer surface with no sharp corners or edges, wherein
the front and/or back contour has a bottom flattened oval shape
to provide standing stability on bathroom shelf, where the
container is to contain from about 15 ml to about 150 ml of a
lens care solution,
wherein the solution container includes a main body and
a closure,
wherein the main body includes a solution-containing
chamber formed by a peripheral side wall and a closed bottom
wall, and a top wall enclosing the upper end of the chamber,
wherein the top wall includes an integral upstanding neck
ending with a dropper having a tip in which a dispensing
opening is formed,
wherein the dropper and the integral upstanding neck
forms a continuation of the opening,
wherein the closure is an assembly of an inner dropper
cap and an overcap,
wherein the inner dropper cap comprises a first set of
serrations equally spaced on its external surface while the
overcap comprises a second set of serrations positioned on its
inner surface, wherein the first and second sets of serrations
engage with each other to provide means for semi-permanently
attaching the inner dropper cap and the overcap together,
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wherein the closure is releasably affixed to said container
at the dispensing opening so as to provide a substantially liquid-
impermeable seal for the dispensing opening,
wherein at least one portion of the walls of the chamber
is resiliently deformable to enable it to be squeezed and thereby
force the solution from the chamber through the dispensing
opening into the eye or the lens case.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lohrman et al.2
Sawan et al.3
Evans et al.4
Xia et al.5
US 5,632,420
US 6,030,632
US 6,609,287 B2
US 7,067,479 B2
May 27, 1997
Feb. 29, 2000
Aug. 26, 2003
June 27, 2006
Kokubo
Ostrowski
US 2004/0079766 A1
US 2006/0025718 A1
Apr. 29, 2004
Feb. 2, 2006

REJECTIONS
Claims 1, 2, 4, 5, 7, 21–26, and 29–31 stand rejected under 35 U.S.C.
§ 112 second paragraph as being indefinite. Ans. 4.
Claims 1, 2, 4, and 5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kokubo, Sawan, Evans, and Xia. Id. at 5.
Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kokubo, Sawan, Evans, and Lohrman. Id. at 9.
Claims 22–26 and 29–31 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kokubo, Sawan, Evans, Lohrman, and Ostrowski.
Id. at 10.

2 Hereinafter, “Lohrman.”
3 Hereinafter, “Sawan.”
4 Hereinafter, “Evans.”
5 Hereinafter, “Xia.”
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Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kokubo, Sawan, Evans, Xia, and Lohrman. Id. at 11.

ANALYSIS
Indefiniteness Rejection
Claims 1, 2, 4, 5, 7, 21–26, and 29–31
Independent claims 1 and 21 each recite, in relevant part, “wherein the
front and/or back contour has a bottom flattened oval shape to provide
standing stability on bathroom shelf.” Appeal Br. 13, 15, Claims App. The
Examiner concludes that independent claims 1 and 21 as well as claims 2, 4,
5, 7, 22–26, and 29–31, which depend directly or indirectly from either
claim 1 or claim 21, are indefinite. Ans. 4. The Examiner finds that the
phrase “the front and/or back contour” lacks antecedent basis in claims 1 and
21. Id. at 5. Appellants fail to address this rejection in the present appeal.
Accordingly, we summarily affirm the rejection of claims 1, 2, 4, 5, 7,
21–26, and 29–31 under 35 U.S.C. § 112 second paragraph as being
indefinite. See In re Berger, 279 F.3d 975, 984–85 (Fed. Cir. 2002) (holding
that the Board did not err in sustaining a rejection under 35 U.S.C. § 112,
second paragraph, when the applicant failed to contest the rejection on
appeal); MPEP § 1205.02, 8th ed., Rev. 8, July 2010 (“[I]f a ground of
rejection stated by the examiner is not addressed in the appellant’s brief, that
ground of rejection will be summarily sustained by the Board.”).

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Obviousness Rejections over Kokubo, Sawan, Evans, and Xia (claim 1), over
Kokubo, Sawan, Evans, Xia, and Lohrman (claim 7), and over Kokubo,
Sawan, Evans, and Lohrman (claim 21)
“integral upstanding neck”
Independent claims 1 and 21 each require a solution container with a
“top wall [that] includes an integral upstanding neck ending with a dropper
having a tip in which a dispensing opening is formed.” Appeal Br. 13, 15,
Claims App. The Examiner finds that Kokubo discloses this subject matter.
Ans. 6 (citing Kokubo, Figs. 1, 2, and 13A). Appellants disagree. Appeal
Br. 6. Specifically, Appellants argue that the claim term “integral” requires
the dropper and upstanding neck be formed as a one-piece structure. See
Appeal Br. 6; Reply Br. 2. We find this argument unpersuasive.
The Examiner correctly finds that the term “integral” does not
necessarily limit the recited subject matter to a one-piece structure. Ans. 12.
The Examiner finds that “[t]he dropper and upstanding neck of Kokubo are
rigidly secured and hence are integral” as required in the claims under
appeal. Id. The Examiner’s construction is consistent with our reviewing
court’s broadest reasonable interpretation of the term “integral.” See, e.g., In
re Morris, 127 F.3d 1048 (Fed. Cir. 1997) (“[O]ur predecessor court had on
several prior occasions interpreted the term ‘integral’ to cover more tha[n] a
unitary construction.”).
Appellants argue that the Examiner improperly applies the broadest
reasonable interpretation to the rejection because the Specification defines
the term “integral” to require a one-piece article. See Reply Br. 2.
Specifically, Appellants argue that “[t]he term ‘the dropper and the integral
upstanding neck forms a continuation of the opening’ clearly means the
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dropper and the integral upstanding neck form[] [a] one-piece article.” Id.
We find this argument unavailing.
“To act as its own lexicographer, [an applicant] must ‘clearly set forth
a definition of the disputed claim term’ other than its plain and ordinary
meaning.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362,
1365 (Fed. Cir. 2012) (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
1359, 1366 (Fed. Cir. 2002)) (emphasis added). We find that the
Specification language cited by Appellants does not clearly set forth a
definition of the term “integral” that requires the dropper and the integral
upstanding neck form a one-piece structure. Accordingly, the Examiner
properly applies the broadest reasonable construction to the term “integral”
in finding that Kokubo discloses a solution container with a “top wall [that]
includes an integral upstanding neck ending with a dropper having a tip in
which a dispensing opening is formed” as required by the claims under
appeal. See Ans. 6.

“wherein the front and/or back contour has a bottom flattened oval shape”
Independent claims 1 and 21 each require a solution container with a
“front and/or back contour [that] has a bottom flattened oval shape.” Appeal
Br. 13, 15, Claims App. The Examiner finds that “it would have been an
obvious matter of design choice to make the different portions of the
container of whatever form or shape was desired or expedient.” Ans. 8. The
Examiner concludes that “[a] change in form or shape is generally
recognized as being within the level of ordinary skill in the art, absent any
showing of unexpected results.” Id. (citing In re Dailey, 357 F.2d 669
(C.C.P.A. 1966)). Thus, the Examiner finds that the bottom flattened oval
Appeal 2012-009381
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shape of the front or back contour of the solution container does not
distinguish the inventions of claims 1 and 21 over the prior art.
Appellants argue that the Examiner incorrectly interprets the scope of
the claims to require the container to have a flat bottom or an oval-shaped
flat bottom. Reply Br. 3; see also Appeal Br. 8 (arguing that the claim
element requiring a front or back contour of the claimed container to have a
bottom flattened oval shape is distinct from the flat bottomed container of
Sawan). Appellants misunderstand the Examiner’s rejection. The Examiner
relies on a holding of In re Dailey to conclude that the claim limitation of
claims 1 and 21 requiring a front or back contour of the claimed container to
have a bottom flattened oval shape is an obvious design choice. Ans. 8. The
Examiner does not read this claim limitation as requiring the cross-section of
the container to be oval and the bottom flat. See id. at 7–8.
Appellants further argue that the Examiner’s reliance on In re Dailey
is improper, because “the shape and configuration of the elements is [a]
significant feature to provide stability on [a] bathroom shelf.” Reply Br. 3.
Appellants reference their Specification to support this argument. Id. at 4.
Appellants’ Specification states that
one of the front and back sides of a container of the invention
has a bottom-flattened egg contour. Such [a] shape can lower
the gravity center of the container and promote stability on [a]
bathroom shelf. The gravity center of the container is located
preferably in its lower half part.
Spec. 7, ll. 26–29; Reply Br. 4. We find this argument unpersuasive.
Appellants contend that the significant aspect of the bottom flattened
oval shape of the front or back contour of the container is that the shape
moves the center of gravity of the container to the lower half of the
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Application 11/512,653

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container, which promotes stability of the container on a bathroom shelf. Id.
However, as the Examiner finds, Kokubo’s container “has a center of gravity
located in its lower half,” Ans. 7, and Appellants fail to demonstrate how the
recited shape is significant over other shapes that achieve the same stability.6
“Appellants have presented no argument [that] convinces us that the
particular configuration of their container is significant or is anything more
than one of numerous configurations a person of ordinary skill in the art
would find obvious for the purpose of providing” a center of gravity within
the lower half of the container to promote stability on a bathroom shelf. See
In re Dailey, 357 F.2d at 672–73. Cf. In re Gal, 980 F.2d 717, 719 (Fed.
Cir. 1992) (finding that the claimed structure and prior art structure “achieve
different purposes” and, as a result, the claimed structure was not a matter of
design choice).

“forming a continuation of the peripheral wall of the container to provide a
unitary appearance”
Claim 7, which depends from claim 1, and independent claim 21
require a closure that, when closed, “selfalign[s] to the main body of the
container and form[s] a continuation of the peripheral wall of the container
to provide a unitary appearance and to provide aesthetic appeal.” Appeal Br.

6 Also, the claim language at issue recites a “bottom flattened oval shape,”
not a bottom flattened egg shape as disclosed in the specification. The term
“egg shaped” is not necessarily equivalent to “oval shaped,” as the former
implies a shape that lacks reflective symmetry, providing a greater volume
of the shape (and, therefore, mass) below its vertical midpoint. Appellants
fail to reconcile the difference between the Specification and the claim
language.
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Appeal 2012-009381
Application 11/512,653

10
overcap 14 meets the package 12 to form a continuous peripheral wall with a
unitary appearance. See Ans. 13.
Appellants’ reliance on Figure 17 of Lohrman is misplaced. Figure 17
depicts a cross-sectional view of the overcap 14. Lohrman, col. 2, ll. 50–52.
The discontinuity argued by Appellants is positioned at the back of the
container to accommodate the lid when it is in a fully open position. See
Lohrman, Fig. 17. However, as clearly evident from Figure 1 of Lohrman,
the overcap 14 and package 12 form a continuous periphery at the interface
of these two structures at the side of the container. See Lohrman, Fig. 1.
This continuous periphery provides a unitary appearance when the overcap
14 is in place.
For the foregoing reasons, we sustain the Examiner’s rejection of
independent claim 1 under 35 U.S.C. § 103(a) as unpatentable over Kokubo,
Sawan, Evans, and Xia. Appellants do not separately argue the patentability
of dependent claims 2, 4, or 5, which depend directly or indirectly from
independent claim 1. Appeal Br. 6–9. Accordingly, we sustain the
Examiner’s rejection of dependent claims 2, 4, and 5 under 35 U.S.C. §
103(a) as unpatentable over Kokubo, Sawan, Evans, and Xia.
Further, for the foregoing reasons, we sustain the Examiner’s rejection
of independent claim 21 under 35 U.S.C. § 103(a) as unpatentable over
Kokubo, Sawan, Evans, and Lohrman.
Still further, for the foregoing reasons, we sustain the Examiner’s
rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable over Kokubo,
Sawan, Evans, Xia, and Lohrman.

Appeal 2012-009381
Application 11/512,653

11
Obviousness Rejection over Kokubo, Sawan, Evans, Lohrman, and
Ostrowski
Claims 22–26 and 29–31
Appellants do not separately address the rejection of dependent claims
22–26 or 29–31 under 35 U.S.C. § 103(a) as being unpatentable over
Kokubo, Sawan, Evans, Lohrman, and Ostrowski. Appeal Br. 11. Instead,
they argue that these claims depend from independent claim 21, which
Appellants contend is allowable. Id. As detailed above, we sustain the
Examiner’s rejection of claim 21.
Accordingly, for the reasons discussed above in connection with the
rejection of independent claim 21, we sustain the Examiner’s rejection of
claims 22–26 and 29–31 under 35 U.S.C. § 103(a) as being unpatentable
over Kokubo, Sawan, Evans, Lohrman, and Ostrowski.

DECISION
For the above reasons, we affirm the Examiner’s rejection of claims 1,
2, 4, 5, 7, 21–26, and 29–31.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009).

AFFIRMED

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