Ex Parte Braun et al

Patent Trial and Appeal Board

Feb 28, 2017

12969894 (P.T.A.B. Feb. 28, 2017)

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.
12/969,894 12/16/2010 Matthias Braun PAT053923-US-NP 5100
31781 7590 03/02/2017
ALCON RESEARCH, LTD.
PATENT DEPARTMENT
11460 JOHNS CREEK PARKWAY
JOHNS CREEK, GA 30097-1556
EXAMINER
HAUTH, GALEN H
ART UNIT PAPER NUMBER
1742
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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 MATTHIAS BRAUN,
AXEL HEINRICH, and PETER HAGMANN
Appeal 2015-008054
Application 12/969,894
Technology Center 1700
Before ADRIENE LEPIANE HANLON, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
March 27, 2014 decision rejecting claims 1—15 (“Non-Final Act.”). We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Novartis AG (Br. 3).
Appeal 2015-008054
Application 12/969,894
CLAIMED SUBJECT MATTER
Appellants’ invention is directed to a process for dispensing a
flowable material which includes a volatile solvent into a mold (Abstract).
In particular, the invention is directed to a method for making ophthalmic
lenses, such as contact lenses {id.). The flowable material is dispensed into
the mold in a local gas atmosphere which comprises the volatile solvent in
gas form to substantially prevent the volatile solvent from evaporating from
the flowable material {id.). Details of the claimed invention may be seen in
claim 1, which is reproduced below from the Claims Appendix of the
Appeal Brief {emphasis in italics)'.
1. A process for dispensing a flowable ophthalmic lens forming
material comprising volatile solvent into a mold, the process
comprising the steps of:
- providing a mold;
- providing a dispenser;
- arranging the mold underneath the dispenser; and
- dispensing the flowable material comprising volatile
solvent into the mold, the step of dispensing being
performed in a local gas atmosphere comprising the
volatile solvent in vapor or gas form, substantially
preventing volatile solvent from evaporating from the
flowable material.
REJECTIONS
I. Claims 1—11 and 13—15 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ajello2 in view of Ludwig.3
2 Ajello et al., US 5,922,249, issued July 13, 1999.
3 Ludwig et al., US 2007/0280988 Al, published December 6, 2007.
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Application 12/969,894
II. Claim 12 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ajello and Ludwig, and further in view of Osipo.4
DISCUSSION
Appellants only argue the rejection of claim 1 over Ajello and
Ludwig, and specifically note that claim 12 (the subject of Rejection II) is
not separately argued (Br. 4). Accordingly, our discussion will focus on the
rejection of claim 1.
The Examiner finds that Ajello teaches a method for dispensing
ophthalmic lens forming material comprising a volatile solvent into a mold
(Final Act. 3, citing Ajello, Abstract, 6:55—65). The Examiner further finds
that Ajello discloses arranging the mold under the dispenser, and dispensing
the flowable material into the mold under a “local” atmosphere which may
contain partial pressures of solvent (Final Act. 3, citing Ajello, 7:45—60,
11:25—45, and 12:3—55). The Examiner also finds that the process of Ajello
is directed towards control of the atmosphere around the polymerizable
composition (Ans. 5—6, citing Ajello, FIG. 1, 7:40-60), and that Ajello
recognizes that a person of ordinary skill in the art was aware that loss of
volatile solvent from the polymerizable composition can create processing
problems (Ans. 6).
The Examiner finds that Ludwig teaches that it was known in the art
of injection molding to injection mold within a saturated atmosphere of a
solvent for a given material to minimize vaporization of that solvent. The
Examiner concludes that “[i]t would have been obvious ... to include a
4 Osipo et al., US 5,271,874, issued December 21, 1993.
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Application 12/969,894
saturation amount of solvent in the atmosphere of Ajello to prevent
additional solvent evaporation as taught by Ludwig” (Final Act. 3).
Appellants dispute a number of the Examiner’s findings. First,
Appellants contend that Ajello does not teach “dispensing a flowable
material comprising a volatile solvent into a mold under a local atmosphere
such that the volatile solvent is prevented from evaporating during the
dispensing” (Br. 5, citing Ajello 11:25—60 and 12:3—55, which were also
cited by the Examiner in the Final Action). Appellants maintain that Ajello
discloses that the flowable material (described in Ajello as the
“polymerizable composition”) should be deoxygenated, and that the molds
should also be deoxygenated, while during polymerization (which occurs
after the flowable material has been dispensed into the molds) a low oxygen
atmosphere should also be used {id.) In other words, Appellants argue that
Ajello does not disclose the step of dispensing the flowable material in a
local gas atmosphere which comprises the volatile solvent.
In response, the Examiner agrees that that “Ajello does not explicitly
teach any particular atmosphere during the specific dispensing step,” but
finds that Ajello teaches controlling the atmospheric conditions of the
polymerizable compositions before dispensing and during the
polymerization step (Ans. 5—6, citing Ajello FIG. 1, 7:40-60). Moreover,
the Examiner finds that Ajello teaches that it was known that polymerizable
compositions were “sensitive” to the loss of volatile solvent (Ans. 6; Ajello,
7:41—45). Appellants have not demonstrated reversible error in this finding.
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
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Application 12/969,894
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988).
In this instance, the Examiner has adequately established why a
person of ordinary skill in the art would have combined Ludwig with Ajello
to arrive at the claimed invention. Based on the arguments and evidence of
record, Appellants have not demonstrated reversible error in this
determination.
It follows that we affirm the rejections.
CONCLUSION
We AFFIRM the rejection of claims 1—11 and 13—15 under 35 U.S.C.
§ 103(a) as being unpatentable over Ajello in view of Ludwig.
We AFFIRM the rejection of claim 12 is rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ajello and Ludwig, and further in view of Osipo.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See
37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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