Ex parte Koomruian

Board of Patent Appeals and Interferences

May 6, 1999

08698743 (B.P.A.I. May. 6, 1999)

Application for patent filed August 16, 1996.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte CHARLES KOOMRUIAN, JR.
__________
Appeal No. 98-2655
Application 08/698,7431
___________
ON BRIEF
___________
Before ABRAMS, FRANKFORT, and STAAB, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's refusal
to allow claims 1 and 4 through 6 as amended subsequent to the
final rejection in a paper filed December 1, 1997 (Paper No.
9). Claims 1 and 4 through 6 are all of the claims remaining
Appeal No. 98-2655
Application 08/698,743
2
in this application, claims 2, 3 and 7 through 12 having been
canceled.
Appellant’s invention relates to a container device for
disinfecting and storing contact lenses wherein the cap of the
container includes at least one aperture to serve as a vent
and a gas-permeable, liquid-impermeable membrane fixed to the
internal surface of the cap and positioned so as to cover any
aperture therein. Independent claim 1 is representative of
the subject matter on appeal and a copy of that claim may be
found in Appendix A of appellant’s brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Dubois et al. (Dubois) 4,136,796 Jan. 30,
1979
Su et al. (Su) 4,889,693 Dec. 26,
1989
Iba et al. (Iba) 5,143,104 Sep. 1,
1992

Claims 1, 4 and 6 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Iba in view of Dubois. According to
the examiner
Appeal No. 98-2655
Application 08/698,743
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“Iba ‘104 discloses an apparatus for storing
and cleaning contact lenses comprising a container
(12) including an open end, a lens holding means
(18, 20, 22), a cap (14) for sealably covering the
open end of the container having at least one vent
hole (26) and a gas-permeable, liquid-impermeable
membrane (16) having an internal void (36) which
fixed [sic] to the internal surface of the cap and
positioned to cover all apertures. Iba ‘104 also
discloses all the other limitations of the claims
except for the gas-permeable, liquid-impermeable
membrane being welded to the internal surface of the
cap so that the membrane can’t become dislodged,
allowing the cap to leak at the vent holes. Dubois
‘796 discloses a container (10) comprising a body
(12) and a top closure (16) having a vented closure
(20) to permit the venting of gasses within the
container and avoid pressure buildup while
preventing any liquid from discharging from the
container. The closure includes a gas-permeable,
liquid-impermeable membrane (54) attached to the
plug (42) in any number of ways including by hot
welding (column 2, lines 57-68 and column 3, lines
1-3, and Figures 1, 4 and 5). It would have been
obvious to one having skill in the art in view of
Dubois ‘796 to modify the apparatus of Iba ‘104 so
the membrane is more securely attached to the
internal surface of the cap by any conventional
method such as welding to prevent the membrane from
falling off the cap and allowing undesired leakage”
(answer, pages 4-5).
Claim 5 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Iba and Dubois as applied to claim 1 above,
and further in view of Su.
Appeal No. 98-2655
Application 08/698,743
4
Rather than reiterate the examiner's full statement of
the above-noted rejections and the conflicting viewpoints
advanced by the examiner and appellant regarding those
rejections, we make reference to the examiner's answer (Paper
No. 12, mailed
March 10, 1998) for the examiner's complete reasoning in
support of the rejections, and to appellant’s brief (Paper No.
11, filed February 5, 1998) and reply brief (Paper No. 13,
filed
April 13, 1998) for appellant’s arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant’s specification and claims,
to the applied prior art references, and to the respective
positions articulated by appellant and the examiner. As a
consequence of our review we have reached the determinations
which follow.
Appeal No. 98-2655
Application 08/698,743
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Looking to the examiner's prior art rejection of appealed
claims 1, 4 and 6 under 35 U.S.C. § 103, as appellant has on
pages 2 and 3 of the reply brief, we note that the examiner’s
findings (answer, pages 4-5) with regard to Iba are factually
incorrect, in that Iba does not disclose, teach or suggest a
“gas-permeable, liquid-impermeable membrane” like that
required in claim 1 on appeal. Instead, Iba discloses a
resilient gasket (16) that includes “H” shaped slits or
perforations (34) therein, which slits define vent openings
when subjected to a level of gas pressure sufficient to
deflect the flaps (35) thereof. Moreover, at column 4, lines
41-45, of Iba, it is noted that any liquid that leaks or is
forced through the flaps during venting, will be contained
within the recess defined by peripheral edge or shoulder (30),
thus clearly demonstrating that the gasket (16) is not
“liquid-impermeable.”
Accordingly, even if it would have been obvious to one of
ordinary skill in the art at the time of appellant’s invention
(based on Dubois) to weld or glue the membrane (16) of Iba to
the internal surface of the cap so as to more securely hold
Appeal No. 98-2655
Application 08/698,743
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the gasket to the cap and thereby prevent the gasket from
falling off the cap and allowing undesired leakage, as is
urged by the examiner in the answer, such a combination of the
applied references would not result in the device as set forth
in appellant’s independent claim 1 on appeal, since the
combination would still lack a “gas-permeable, liquid-
impermeable membrane.” For that reason, we will not sustain
the examiner’s rejection of claims 1, 4 and 6 on appeal under
35 U.S.C. § 103.
With regard to the examiner's rejection of claim 5 under
35 U.S.C. § 103 based on Iba, Dubois and Su, we share
appellant’s view as expressed on pages 4-5 of the reply brief,
that the examiner’s proposed combination of these patents
would likewise not have suggested appellant’s presently
claimed invention to the ordinarily skilled worker. In fact,
it appears that Su (col. 1) teaches away from utilizing a gas-
permeable, liquid-impermeable membrane in a vented lens
disinfecting appliance because of clogging of the membrane
pores during repeated uses of such a
Appeal No. 98-2655
Application 08/698,743
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structure. Thus, the examiner’s rejection of claim 5 under
35 U.S.C. § 103 will likewise not be sustained.
As is apparent from the foregoing, the decision of the
examiner rejecting claims 1, 4, 5 and 6 of the present
application is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Appeal No. 98-2655
Application 08/698,743
8
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