Ex Parte Johnson et al

Patent Trial and Appeal Board

Feb 9, 2016

12165159 (P.T.A.B. Feb. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/837,692 07/16/2010
27777 7590 03/03/2016
BERNARD F PLANTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
FIRST NAMED INVENTOR
Leslie A. Voss
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.
VTN5256USNP 4714
EXAMINER
MARKOFF, ALEXANDER
ART UNIT PAPER NUMBER
1711
NOTIFICATION DATE DELIVERY MODE
03/03/2016 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):
jnjuspatent@corus.jnj.com
lhowd@its.jnj.com
pairjnj@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LESLIE A. VOSS, CATIE A. MORLEY,
and DWIGHT ABOUHALKAH1
Appeal2014-000549
Application 12/837,692
Technology Center 1700
Before CHUNG K. PAK, MARK NAGUMO, and GEORGE C. BEST,
Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner's decision2 rejecting claims 1-10, which are all of the claims pending in
the above-identified application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 The real party in interest is said to be Johnson & Johnson Vision Care, Inc.
Appeal Brief filed April 24, 2013 ("App. Br.") at 1.
2 Final Action entered November 28, 2012 ("Final Act.") at 3-6 and the
Examiner's Answer entered July 30, 2013 2012 ("Ans.") at 2-5.
Appeal2014-000549
Application 12/837,692
STATEMENT OF THE CASE
The subject matter of the claims on appeal is directed to "packages for
[housing] ophthalmic lenses[, such as contact lenses,] and maintenance solutions as
well as methods for using the same." Spec. 1, 11. 5-6 and 2, 11. 21-24. The
packages comprise a bowl and a cover, with the bowl being sized to contain an
ophthalmic lens and maintenance solution and the cover having a closed receptacle
for housing maintenance solution. Spec. 2, 11. 10-15 and 3, 13-14. The cover
"may be made of any thermoplastic material" and "can be formed in the
appropriate shapes by injection molding, thermoforming, transfer molding, skin
packaging, blow molding, coinjection molding, film extrusion, blow-fill-seal
manufacturing or film co extrusion and the like." Spec. 3, 11. 14-19. Details of the
appealed subject matter are recited in illustrative claims 1, 3, 4, and 6, which are
reproduced below from the Claims Appendix of the Appeal Brief:
1. A package for housing an ophthalmic lens and maintenance
solutions therefore comprising a bowl and a cover
wherein
said bowl is sized to contain an ophthalmic lens and maintenance
solution and comprises an opening[,]
said cover comprises a portion of maintenance solution and a
sealably closed receptacle sized to contain said portion of
maintenance solution[,]
wherein said cover and said bowl are removably coupled to each
other.
3. The package of claim 1 wherein said portion of maintenance
solution is about 2 mL to about 30 mL.
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Appeal2014-000549
Application 12/837,692
4. The package of claim 1 wherein said cover is made from a
material comprising one or more members of group consisting of
polypropylene, polyethylene, polycarbonate, or polystyrene.
6. A method of cleaning an ophthalmic lens comprising
placing an ophthalmic lens in a package comprising a bowl and a
cover wherein
said bowl is sized to contain an ophthalmic lens and maintenance
solution and comprises an opening[,]
said cover comprises a portion of maintenance solution and a
sealably closed receptacle sized to contain said portion of
maintenance solution[,]
wherein said cover and said bowl are removably coupled to each
other. [sic]
depositing maintenance solution from said cover into said bowl and
placing the ophthalmic lens in said bowl.
App. Br. 8 (emphasis added).
The Examiner has maintained, and Appellants seek review of~ the following
grounds of rejection:
1. Claims 1, 2, 6, and 7 under 35 U.S.C. § 102(b) as anticipated by
Scruggs (US 7,328,787 Bl issued Feb. 12, 2008 ("Scruggs"));
2. Claims 1, 2, 6, and 7 under 35 U.S.C. § 102(b) as anticipated by
Mangers (WO 95/34231 published Dec. 21, 1995 ("Mangers"));
3. Claims 1-10 under 35 U.S.C. § 102(b) as anticipated by Mahieu et al.
(US 2005/0087455 Al published Apr. 28, 2005 ("Mahieu");
4. Claims 3 and 8 under 35 U.S.C. § 103(a) as unpatentable over any one
of Scruggs and Mangers; and
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Appeal2014-000549
Application 12/837,692
5. Claims 4, 5, 9, and 10 under 35 U.S.C. § 103(a) as unpatentable over
any one of Scruggs and Mangers in view ofMahieu. Final Act. 3-6; Ans. 2-5;
App. Br. 3.
DISCUSSION
Having considered the evidence on this appeal record in light of the
arguments advanced by Appellants, we affirm the Examiner's rejections of claims
1, 2, 6, and 7 under 35 U.S.C. § 102(b) as anticipated by Scruggs, claims 1, 2, 6,
and 7 under 35 U.S.C. § 102(b) as anticipated by Mangers, claims 3 and 8 under 35
U.S.C. § 103(a) as unpatentable over any one of Scruggs and Mangers, and claims
4, 5, 9, and 10 under 35 U.S.C. § 103(a) as unpatentable over any one of Scruggs
and Mangers in view of Mahieu for the reasons set forth in the Final Action and
the Answer. However, we reverse the Examiner's rejection of claims 1-10 under
35 U.S.C. § 102(b) as anticipated by Mahieu for the reasons set forth in the Appeal
Brief. We add the following primarily for emphasis.
I. Claims 1, 2, 6, and 7 under 35 U.S.C. § 102(b) Based on Scruggs or
Mangers
Appellants argue common limitations in independent claims 1 and 6 and do
not separately argue the limitations in claims 2 and 7. App. Br. 4-5. Therefore, we
select claim 1 as representative, and decide the propriety of these § 102 rejections
based on claim 1 alone. 37 C.F.R. § 41.37(c)(l)(iv) (2012).
As evidence of anticipation of the subject matter recited in claims 1, 2, 6,
and 7 under 35 U.S.C. § 102(b ), the Examiner relies upon the disclosure of either
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Appeal2014-000549
Application 12/837,692
Scruggs or Mangers. Ans. 2-3. Figure 1 of Scruggs, which is relied upon by the
Examiner, is reproduced below:
/
:(e~!tt;
FlG.1
Figure 1 shows cover 56 that includes dispenser 46 with a lens cup 62 for sealing a
wetting solution in dispenser 46. Scruggs, col. 3, 11. 42-54. Cover 56 is removably
coupled to compartment 32 having central hole 3 8 defining central storage area 42
for receiving and storing contact lenses. Scruggs, col. 3, 11. 12--41. Cover 56 and
compartment 32 are also removably coupled to compartment 4 having central hole
8 defining storage area 14 for housing contact lens 16 and absorbent pad 12,
which, in tum, is removably coupled to compartment 6 having central hole 22
defining an area for receiving and storing contact lens 30 and absorbent pad 26.
Scruggs, col. 2, 1. 40-col. 3, 1. 11.
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Appeal2014-000549
Application 12/837,692
Figures A 1, A2, A 11, and A 12 of Mangers, which are relied upon by the
Examiner, are reproduced below:
r-\
:r~---~--"·-; ---·-
~------- s
Figures Al, A2, Al 1, and Al2 illustrate bottle 1, 32 containing maintenance liquid
whose bottom equipped with attachment device 3 or 34 (e.g., groove or screw
thread) and closing surface 4 is removably coupled to lens carrier 5, 31 having
attachment device 6 or 3 7 (groove or screw thread) and cup 7 a and 7b for storing
contact lens and the maintenance liquid. Mangers, pp. 4-6. Bottle 1 has nozzle 8
closed with cap 10. Mangers, p. 4.
The Examiner identifies either Scruggs' compartment 32, 4, or 6 defining
space 42, 14, or 28 for storing or housing a contact lens as corresponding to the
recited bowl having an opening and Scruggs' cover 56 having dispenser 46 with
lens cup 62 to prevent leakage of a wetting solution in dispenser 46 with or without
compartment 32 as corresponding to the recited cover comprising a sealably closed
receptacle containing a portion of maintenance solution. Ans. 2-3. Similarly, the
Examiner identifies Mangers' lens carrier 5 or 31 having cups 7a and 7b for storing
contact lenses and maintenance solution as corresponding to the recited bowl
having an opening and Mangers' bottle 1 or 32 containing maintenance solution
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Appeal2014-000549
Application 12/837,692
with cap 10 as the recited cover comprising a sealably closed receptacle containing
a portion of maintenance solution. Ans. 3. In other words, the Examiner finds that
either Scruggs or Mangers describes every element of the package recited in claims
1, 2, 6, and 7 within the meaning of 35 U.S.C. § 102(b). Id.
Appellants appear to argue that Scruggs or Mangers does not discloses the
claimed package having a "cover [that] comprises a portion of maintenance
solution and a sealably closed receptacle sized to contain the portion of
maintenance solution." App. Br. 4. However, as indicated supra, Scruggs' cover
56 having dispenser 46 with lens cup 62 to prevent leakage of a wetting solution in
dispenser 46 (with or without compartment 32) functions as a cover for the central
opening of compartment 32 or compartment 4 for housing or storing contact lenses
and Manger's bottle containing the maintenance liquid functions as a cover for
openings of a lens carrier for housing or storing contact lenses. Neither the claims
nor the Specification excludes the cover having a dispenser taught by Scruggs or
the bottle cover taught by Mangers as the recited cover. See, e.g., claim 1; Spec. 3,
11. 14-19. The Examiner also finds, and Appellants do not dispute, that Scruggs'
lens cup 62 or Mangers' bottle cap 10 corresponds to a removable tab for sealing
the maintenance liquid, as recited in claim 2. Compare Ans. 2-3 with App. Br. 4.
Stated differently, the cover taught by Scruggs or Mangers has "a sealably closed
receptacle" as recited in claim 1. There is no dispute that Scruggs describes a
dispenser (part of the cover) comprising a wetting solution, i.e., a "maintenance
solution."
Accordingly, we find that Appellants have not identified any reversible error
in the Examiner's rejections of claims 1, 2, 6, and 7 under 35 U.S.C. §102(b) as
anticipated by Scruggs or Mangers.
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Appeal2014-000549
Application 12/837,692
IL Claims 1-10 under 35 U.S.C. § 102(b) Based on Mahieu
As evidence of anticipation of the subject matter recited in claims 1-10
under 35 U.S.C. § 102(b), the Examiner relies upon the disclosure ofMahieu.
Ans. 3. The Examiner finds that Mahieu discloses a devices comprising "a bowl
(readable on the receptacles 12) and a cover (readable on part 16), which
comprises a receptacle/bottle (readable on part 14) with a maintenance solution
removable tab (readable on the part 18)." Id. at 4; Mahieu Fig. 1.
However, Mahieu teaches that item 12 is a lens case which includes main
body 60 defining a pair of separate and discrete wells (e.g., cavities or reservoirs
for contact lenses) 62 (corresponding to the recited bowl with an opening) and two
caps 64 that are removably attached to wells 62 at their open ends to provide a
substantially liquid-impermeable seal. Mahieu, ,-i 66. Mahieu's caps 64, which
function as covers for the open ends of the wells (bowl), do not have a sealably
closed receptacle containing a portion of maintenance solution as required by
claims 1 and 6. Id. Mahieu's hollow body 16 and container 14 relied upon by the
Examiner as the recited cover are used to provide a docking chamber 56 for lens
case 12 and are not used as a cover for the open ends of wells 62 in lens case 12.
Id. at ,-i 68. Thus, as correctly explained by Appellants, Mahieu does not teach a
cover comprising a sealably closed receptacle containing a portion of maintenance
solution as required by claims 1-10. App. Br. 5.
Accordingly, we find reversible error in the Examiner's rejection of claims
1-10 under 35 U.S.C. § 102(b) as anticipated by Mahieu.
III. Claims 3 and 8 under 35 U.S.C. § 103(a) Based on Scruggs or Mangers
Appellants argue claims 3 and 8 as a group. App. Br. 4-5. Therefore, we
select claim 3 as representative, and decide the propriety of this§ 103(a) rejection
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Appeal2014-000549
Application 12/837,692
based on claim 3 alone. 37 C.F.R. § 41.37(c)(l)(iv). Claims 3 requires that the
sealably closed receptacle recited in claim l must be capable of containing about
2 mL to about 30 mL.
As evidence of obviousness of the subject matter recited in claim 3 under 35
U.S.C. § 103(a), the Examiner relies upon the disclosure of either Scruggs or
Mangers. Ans. 4, 14. In addition to the findings above, the Examiner further finds
that the amount of the solution included in the dispenser taught by Scruggs or the
bottle cover taught by Mangers is dependent on the application requirement or the
purpose taught by either Scruggs or Mangers. Id at 5, 14-15.
Based on these findings, the Examiner concludes that one of ordinary skill in
the art would have been led to optimize the size of Scruggs' dispenser forming part
of its cover or Mangers' bottle cover through routine experimentation so that
Scruggs' dispenser or Mangers' bottle is capable of holding a sufficient amount of
a wetting or maintenance solution, including the claimed amount of solution, for
the purpose stated by Scruggs or tvfangers. Id. at 5.
Rather than specifically contesting the Examiner's conclusion above,
Appellants again argue that Scruggs or Mangers does not disclose the cover of the
package recited in claims 1 and 6. App. Br. 6. As such, there is no reason to
conduct routine experimentation on a cover in Scruggs or Mangers. Id. However,
as indicated supra, Scruggs and Mangers disclose either a cover having a dispenser
(a sealably closed receptacle) or a cover in the form of a bottle (a sealably closed
receptacle), as required by claims 1 and 6. Thus, we find Appellants' argument
unpersuasive.
Accordingly, we find that Appellants have not identified any reversible error
in the Examiner's rejection of claims 3 and 8 under 35 U.S.C. § 103(a) as
unpatentable over Scruggs or Mangers.
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Appeal2014-000549
Application 12/837,692
IV. Claims 4, 5, 9, and 10 under 35 U.S.C. § 103(a) Based on Either Scruggs
and Mahieu or Mangers and Mahieu
Appellants argue claims 4, 5, 9, and 10 and 8 as a group. App. Br. 4-5.
Therefore, we select claim 4 as representative, and decide the propriety of this
§ 102 rejection based on claim 4 alone. 37 C.F.R. § 41.37(c)(l)(iv). Claims 4
requires that the cover be made of at least one material selected from
polypropylene, polyethylene, polycarbonate, or polystyrene.
As evidence of obviousness of the subject matter recited in claim 4 under 35
U.S.C. § 103(a), the Examiner relies upon the combined disclosures of either
Scruggs and Mahieu or Mangers and Mahieu. As indicated supra, both Scruggs
and Mangers disclose a package comprising a bowl having an opening and either a
cover having a dispenser (a sealably closed receptacle) or a cover in the form of a
bottle (a sealably closed receptacle), as required by claims 1 and 6. The Examiner
acknowledges that Scruggs or Mangers does not disclose the material recited in
claim 4 for making its cover. Ans. 5.
To remedy this deficiency, the Examiner further relies upon the disclosure of
Mahieu. Id. The Examiner finds, and Appellants do not dispute, that Mahieu
teaches using the material recited in claim 4 to construct a device useful cleaning
and storing lenses, including receptacles for lenses and solutions. Compare Ans. 5
with App. Br. 6; see also Mahieu ,-i,-i 49, 67.
Based on these findings, the Examiner concludes that one of ordinary skill in
the art would have been led to the material taught by Mahieu to construct the
device of the type disclosed in Scruggs or Mangers. Ans. 5.
Appellants only argue that Mahieu does not teach the cover recited in claims
1 and 6. App. Br. 6. In so arguing, Appellants ignore the collective teachings of
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Application 12/837,692
either Scruggs and Mahieu or Mangers and Mahieu. Id. As indicated supra,
Scruggs or Managers teaches a device for cleaning and storing lenses, including
the cover recited in claims 1 and 6. As also indicated supra, there is no dispute
that Mahieu teaches the material recited in claim 4 for constructing a device for
cleaning and storing lenses, including receptacles for lenses and solutions. On this
record, Appellants do not explain why one of ordinary skill in the art would not
have been led to use the material useful for making a device for storing and
cleaning lenses, as taught by Mahieu, to construct the device of the type (inclusive
of the cover) taught by Scruggs or Mangers.
Accordingly, we find that Appellants have not identified any reversible error
in the Examiner's rejection of claims 4, 5, 9, and 10 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of either Scruggs and Mahieu or
Mangers and Mahieu.
ORDER
Upon consideration of the record, and for the reasons given, it is
ORDERED that the decision of the Examiner to reject Claims 1, 2, 6, and 7
under 35 U.S.C. § 102(b) as anticipated by either Scruggs or Mangers is
AFFIRMED;
FURTHER 0 RD ERED that the decision of the Examiner to reject claims 1-
10 under 35 U.S.C. § 102(b) as anticipated by Mahieu is REVERSED;
FURTHER ORDERED that the decision of the Examiner to reject Claims 3
and 8 under 35 U.S.C. § 103(a) as unpatentable over Scruggs or Mangers is
AFFIRMED;
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Application 12/837,692
FURTHER ORDERED that the decision of the Examiner to reject claims 4,
5, 9, and 10 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings
of either Scruggs and Mahieu or Mangers and Mahieu is AFFIRMED; and,
FURTHER ORDERED that 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
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