Ex Parte Coon et al

Patent Trial and Appeal Board

Feb 25, 2019

15123265 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/123,265 09/02/2016 Mark Coon
81693 7590 02/26/2019
Kilyk & Bowersox, P.L.L.C.
400 Holiday Court
Suite 102
Warrenton, VA 20186
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.
Pl 0088WO-US (3038-147) 8327
EXAMINER
COLLINS, RA VEN
ART UNIT PAPER NUMBER
3735
MAIL DATE DELIVERY MODE
02/26/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK COON, MARK HILL, JAMES ZICARI,
LESLIE BURGER, LAUREN POTOKY, ROBERT DA VIS, and
KATHLEEN MYERS
Appeal2019-001544
Application 15/123 ,265
Technology Center 3700
Before STEVEN D.A. McCARTHY, JEREMY M. PLENZLER, and
LISA M. GUIJT, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's Decision rejecting claims 21-34 and 36-39. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
Appeal 2019-001544
Application 15/123,265
CLAIMED SUBJECT MATTER
Claims 21 and 38 are independent. Claims 22-34, 36, and 37 depend
from claim 21, and claim 39 depends from claim 3 8. Claim 21 is
reproduced below:
21. A contact lens package, comprising:
a plurality of sealed contact lens packages arranged m an
array and having perforations in the sealing member at a
location corresponding to adjacent base members, wherein each
sealed contact lens package includes a base member, and a
sealing member coupled to the base member to provide a sealed
cavity, and an unworn contact lens is provided in a contact lens
packaging solution within the sealed cavity;
a wrap comprising at least one panel that comprises a
printing surface that comprises a unique device identifier in
both a human readable form including numbers or letters, or
combinations thereof, and a machine readable form including a
barcode; and
the base member is a thermoplastic material comprising a
cavity and a substantially planar surface surrounding the cavity,
said substantially planar surface providing a sealing surface for
the sealing member; and the wrap includes an adhesive
adhering the wrap to the sealing member; and
wherein the wrap includes a plurality of first panels
corresponding to the number of sealed contact lens packages,
each first panel including a printed surface with the unique
device identifier in both human readable form and machine
readable form.
REJECTIONS
1. Claims 21, 22, 25-33, and 36-39 1 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Abrams (US 5,697,495, issued Dec. 16,
1 Although not specifically listed in the rejection heading, claim 38 is
addressed in the rejection. Final Act. 3.
2
Appeal 2019-001544
Application 15/123,265
1997), Cassidy (US 4,671,453, issued June 9, 1987), Bodet (US 5,060,800,
issued Oct. 29, 1991), and Gies (US 5,900,264, issued May 4, 1999).
2. Claims 23, 24, and 34 are rejected under 35 U.S.C. § 103 as being
unpatentable over Abrams, Cassidy, Bodet, Gies, and Coulter (US
2003/0035868 Al, published Feb. 20, 2003).
OPINION
The Examiner relies on a combination of teachings from Abrams,
Cassidy, and various other references in the rejection of claims 21-34 and
36-39. Final Act. 2-7. Appellant responds that all of the references relied
on, except Abrams, are non-analogous art. See, e.g., Appeal Br. 19-28.
"A reference qualifies as prior art for an obviousness determination
under § 103 only when it is analogous to the claimed invention." In re
Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (citing Innovention Toys, LLC
v. MGA Entm't., Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011), and In re
Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)).
Two separate tests define the scope of analogous art:
( 1) 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.
In re Klein, 647 F.3d at 1348 (quoting In re Bigio, 381 F.3d at 1325).
There is no dispute that Abrams is directed to contact lens packaging,
while the remainder of the cited references are directed to food packaging.
Appellant contends, for example, that Cassidy' s "food container or
packaging is not a 'contact lens package' nor a plurality of contact lens
packages." Appeal Br. 19. Appellant concludes, therefore, that Cassidy "is
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Application 15/123,265
not in the same field of endeavor and those skilled in the art, namely those in
the field of contact lens manufacturing, do not look to such containers or
packaging for any guidance with regard to contact lens packaging." Id. The
Examiner responds that "Appellant[']s argument that Cassidy, Bodet and
Gies are non-analogous art for modification of the outer wrapping of the lens
case has not been found convincing, as these reference are analogous art
since they are in the same fi[el]d of endeavor (i.e. the art of wrapping and
packaging containers)." Ans. 8.
Appellant additionally contends, for example, that Cassidy is not
reasonably pertinent to the particular problem that the present inventors were
trying to solve. Appeal Br. 19. The Examiner does not dispute that
contention in any meaningful way. See Ans. 8 (simply reciting case law on
whether a reference is reasonably pertinent without any application to the
facts before us).
Accordingly, the Examiner's determination that the alleged non-
analogous references are analogous art is based solely on those references
being within the same field of endeavor as the pending application.
"[T]he field of endeavor test ... requires the PTO to determine the
appropriate field of endeavor by reference to explanations of the invention's
subject matter in the patent application, including the embodiments,
function, and structure of the claimed invention." In re Bigio, 381 F.3d at
1325. The problem with the Examiner's determination that the alleged non-
analogous references are within the same field of endeavor as the pending
application is that it is based solely on a conclusion. The Examiner makes
no findings regarding the field of endeavor, and does not even mention
Appellant's Specification, let alone identify any "explanations of the
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Application 15/123,265
invention's subject matter in the patent application, including the
embodiments, function, and structure of the claimed invention," as required
for a determination of the field of endeavor.
Based on the record before us, the Examiner has failed to establish
that the alleged non-analogous references are analogous art. For this reason,
we do not sustain the Examiner's decision to reject claims 21-34 and 36-39.
DECISION
We REVERSE the Examiner's decision to reject claims 21-34 and
36-39.
REVERSED
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