Ex Parte Davis

Patent Trial and Appeal Board

Jan 31, 2018

12794447 (P.T.A.B. Jan. 31, 2018)

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.
12/794,447 06/04/2010 Robert Davis 1128-030.101 8817
79567 7590 02/02/2018
Klein, O'Neill & Singh, LLP
16755 Von Karman Avenue
Suite 275
Irvine, CA 92606
EXAMINER
TAWFIK, SAMEH
ART UNIT PAPER NUMBER
3721
NOTIFICATION DATE DELIVERY MODE
02/02/2018 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):
KOS_Docketing@koslaw.com
GHollrigel@coopervision.com
S Paladini @ coopervision.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT DAVIS
Appeal 2016-001382
Application 12/794,447
Technology Center 3700
Before JAMES P. CALVE, BRANDON J. WARNER, and
BRADLEY B. BAYAT, Administrative Patent Judges.
BAYAT, Administrative Patent Judge.
DECISION ON APPEAL
Robert Davis (Appellant)1 appeals under 35 U.S.C. § 134(a) from the
final rejection of claims 1-21.2 We have jurisdiction under 35 U.S.C. § 6(b).
Appellant’s counsel presented oral arguments via telephone on
January 10, 2018.3
SUMMARY OF DECISION
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Appellant identifies “CooperVision International Holding Company LP” as
the real party in interest. Appeal Brief 1 (“Appeal Br.,” filed July 10, 2015).
2 Claims 22-25 are withdrawn from consideration. Appeal Br. 2.
3 Oral Hearing Transcripts (“Tr.,” conducted Jan. 10, 2018).
Appeal 2016-001382
Application 12/794,447
STATEMENT OF THE CASE
Claimed Subject Matter
Appellant’s “disclosure is directed to methods of producing packaged
contact lenses.” Spec. ^ 1.
Method claims 1 and 21, reproduced below, are the only independent
claims on appeal.
1. A method of producing packaged contact lenses for
private label contact lens companies, comprising:
providing a first stock product for a first private label
contact lens company comprising a plurality of sealed contact
lens blister packages in a carton and a second stock product for
a second private label contact lens company comprising a
plurality of sealed contact lens blister packages in a carton, the
carton of the first stock product and the carton of the second
stock product each comprises an exterior printing surface;
directing the first stock product to a labeling station to
produce a first customer-tailored labeled product for the first
private label contact lens company comprising first printed
customer-specific indicia comprising a first brand specific
information comprising a first brand name, a first product logo,
or combinations thereof directly on the first stock product
exterior printing surface; and
directing the second stock product to the labeling station
to produce a second customer-tailored labeled product for the
second private label contact lens company comprising second
printed customer-specific indicia comprising a second brand
specific information comprising a second brand name, second
product logo, or combinations thereof directly on the second
stock product exterior printing surface;
wherein the first stock product and the second stock
product are the same, the first brand name is different from the
second brand name, and the first product logo is different from
second product logo.
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Application 12/794,447
21. A method of producing packaged contact lenses for
private label contact lens companies, comprising:
providing a first stock product for a first private label
contact lens company and a second stock product for a second
private label contact lens company, the first stock product and
the second stock product each comprises at least one sealed
contact lens package comprising a contact lens located in a
contact lens packaging solution and the at least one sealed
contact lens package located inside a carton comprising an
exterior printing surface;
placing the first stock product in a first carton and the
second stock product in a second carton at a cartoning station
configured to assemble an unassembled contact lens secondary
package into an assembled contact lens secondary package, and
comprising a labeling station configured to print customer-
specific indicia directly on an exterior printing surface of the
assembled contact lens secondary package;
providing first printed customer-specific indicia
comprising a first brand name, a first product logo, or
combinations thereof on the exterior printing surface of the
carton to produce a first customer-tailored labeled product, and
providing second printed customer-specific indicia
comprising a second brand name, a second product logo, or
combinations thereof on the exterior printing surface of the
second carton to produce a second customer-tailored labeled
product;
wherein the printed customer-specific indicia is printed
on the exterior printing surface prior to placing the first stock
product in the first carton and the second stock product in the
second carton, or after placing the first stock product in the first
carton and the second stock product in the second carton, or
both, and
wherein the first stock product and the second stock
product are the same, the first brand name is different from the
second brand name, and the first product logo is different from
second product logo.
Appeal Br. 30-34, Claims Appendix.
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Appeal 2016-001382
Application 12/794,447
REJECTIONS
Claims 1-5 and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Martin (US 5,685,420, iss. Nov. 11, 1997) and Abrams
(US 6,090,471, iss. July 18, 2000).
Claims 6-20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Martin, Abrams, and Official Notice.
Claim 6-20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Martin, Abrams, and Berger (US 6,414,693 Bl, iss. July 2, 2002).
Final Action 2-5 (“Final Act.,” mailed Feb. 18, 2015).
ANAFYSIS
As set forth below, pursuant to our authority under 37 C.F.R.
§ 41.50(b), we enter a new ground of rejection of claims 1-21 under
35 U.S.C. § 112, second paragraph, as being indefinite. In light of this new
rejection, it would be premature to reach the merits of the rejections of
claims 1-21 under 35 U.S.C. § 103(a) at this time.
Before a proper review of the rejections under § 103(a) can be made,
the subject matter encompassed by the claims on appeal must be reasonably
understood without resort to speculation. Because the claims fail to satisfy
the requirements under 35 U.S.C. § 112, second paragraph, we are
constrained to reverse, pro forma, the Examiner’s rejections under 35 U.S.C.
§ 103(a) of claims 1-21. See In re Steele, 305 F.2d 859, 862 (CCPA 1962)
(A prior art rejection cannot be sustained if the hypothetical person of
ordinary skill in the art would have to make speculative assumptions
concerning the meaning of claim language).
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Application 12/794,447
It should be understood that our decision to reverse the rejections of
claims 1-21 under 35 U.S.C. § 103(a) is based solely on the indefiniteness
of the claims, and does not reflect on the merits of the underlying rejection.
New Ground of Rejection—Indefiniteness
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection with respect to claims 1-21 under 35 U.S.C. § 112,
second paragraph, as being indefinite.
Independent claim 1 is directed to a method of producing packaged
contact lenses for private label contact lens companies, comprising, inter
alia, “providing a first stock product. . . comprising a plurality of sealed
contact lens blister packages in a carton and a second stock product. . .
comprising a plurality of sealed contact lens blister packages in a carton.”
Appeal Br. 30, Claims App. Claim 1 further requires “directing the first
stock product to a labeling station to produce a first customer-tailored
labeled product. . . comprising first printed customer-specific indicia
comprising a first brand name, a first product logo, or combination thereof
directly on the first stock product exterior printing surface;” and “directing
the second stock product to the labeling station to produce a second
customer-tailored labeled product. . . comprising second printed customer-
specific indicia comprising a second brand name, a second product logo, or
combination thereof directly on the second stock product exterior printing
surface.” Id. The final limitation of claim 1, which appears central to
Appellant’s argument against the art rejections (see, e.g., Appeal Br. 18),
requires that "the first stock product and the second stock product are the
same, but the first brand name is different from the second brand name, and
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Application 12/794,447
the first product logo is different from second product logo.” Id. (emphasis
added).
In determining whether a claim is definite under 35 U.S.C. § 112,
second paragraph, “[t]he USPTO, in examining an application, is obliged to
test the claims for reasonable precision.” In re Packard, 751 F.3d 1307,
1313 (Fed. Cir. 2014). “[A] claim is indefinite when it contains words or
phrases whose meaning is unclear.” Id. at 1322 (citing MPEP § 2173.05(e)).
During examination, an applicant must “clearly and precisely set out the
metes and bounds of the claimed [subject matter].” Ex parte Miyazaki, 89
USPQ2d 1207, 1211-13 (BPAI 2008) (precedential). An applicant “is in the
best position to resolve the ambiguity in the patent claims, and it is highly
desirable that patent examiners demand that applicants do so in appropriate
circumstances so that the patent can be amended during prosecution rather
than attempting to resolve the ambiguity in litigation.” Halliburton Energy
Servs. v. M-ILLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008). A “claim is
indefinite when it contains words or phrases whose meaning is unclear.” Ex
Parte McAward, No. 2015-006416, 11 (PTAB Aug. 25, 2017) (precedential)
(quoting In re Packard, 751F.3datl314).
It is unclear from the plain language of claim 1 how the first and
second stock products are the same. There is a heavy presumption that
claim terms take on their “plain, ordinary, and accustomed meaning to one
of ordinary skill in the relevant art.” Prima Tek II, L.L.C. v. Polypap,
S.A.R.L., 318 F.3d 1143, 1148 (Fed. Cir. 2003). Appellant’s Specification
does not provide an express definition for the term “same.” Oxford
Dictionary defines the term “same” as “identical; not different.”4 As such,
4 https://en.oxforddictionaries.com/defmition/same (Accessed Jan. 22, 2018)
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Application 12/794,447
claim 1 requires that the recited first and second stock products are identical.
However, the claim also requires that the brand names and logos printed on
the exterior surfaces of the first and second stock products are different.
Because each stock product is comprised of (1) a plurality of sealed contact
lens blister packages (2) in a carton, it is unclear which parts of the first and
second stock products are meant to be identical.
For example, it is not clear whether the blister packages are identical,
the contact lenses inside the blister packages are identical, or the cartons
themselves are identical. It is not clear how the “cartons,” which are part of
the first and second stock products, can be identical when claim 1 also
requires different customer-specific indicia (brand name, product logo) to be
printed on the exterior printing surface of each carton of the first and second
stock product. The claim language includes substantial ambiguity regarding
the scope of the claim. During oral hearing, Appellant acknowledged this
ambiguity with respect to claim 1. See Tr. 18:14-18. Such ambiguity is not
permitted, and renders the claim indefinite, because a person of ordinary
skill in the art would be unable to determine the metes and bounds of the
claim so as to understand how to avoid infringement. See Morton Int 7, Inc.
v. Cardinal Chem. Co., 5 F.3d 1464, 1470 (Fed. Cir. 1993). In light of the
above, claim 1 is “ambiguous, vague, incoherent, opaque, or otherwise
unclear in describing and defining the claimed invention.” Packard, 751
F.3d at 1311.
Accordingly, we enter a New Ground of Rejection of independent
claim 1 as indefinite under 35 U.S.C. § 112, second paragraph, as well as
claims 2-20 dependent therefrom.
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Application 12/794,447
Independent claim 21 suffers from the same deficiencies and lack of
clarity. Claim 21 likewise recites that “the first stock product and the second
product are the same.” However, claim 21 also recites that the first and
second stock products comprise, inter alia, “at least one sealed contact lens
package located inside a carton comprising an exterior printing surface.”
Claim 21 further recites that different customer-specific indicia (brand name,
product logo) are printed “on the exterior printing surface of the carton to
produce a first/second customer-tailored labeled product.”
It is not clear how different customer-specific indicia can be printed
onto the exterior printing surfaces of the cartons of the first and second stock
products and still have the first and second stock products be the same when
the stock products comprise, not only contact lens packages, but also a
carton on which different customer-specific indicia is printed. It appears
that the first and second stock products would not be the same at least
because the exterior surfaces of the first and second stock products include
different customer-specific indicia printed thereon. Claim 21 further recites
printing customer-specific indicia “directly on an exterior printing surface of
the assembled contact lens secondary package.” It is unclear if this
secondary package is the same or a different element than the claimed carton
as well.
Accordingly, we enter a New Ground of Rejection of independent
claim 21 as indefinite under 35 U.S.C. § 112, second paragraph.
DECISION
The Examiner’s prior art rejections of claims 1-21 are reversed pro
forma.
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Appeal 2016-001382
Application 12/794,447
A NEW GROUND OF REJECTION is entered for claims 1-21 as
indefinite under 35 U.S.C. § 112, second paragraph.
Section 41.50(b) provides that “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” Thus,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION,
Appellant must exercise one of the following two options with respect to the
new ground of rejection to avoid termination of the appeal as to the newly
rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same Record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
REVERSED: 37 C.F.R, § 41,501b)
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