Ex Parte Lee et al

Patent Trial and Appeal Board

Oct 30, 2018

14811095 (P.T.A.B. Oct. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/811,095 07/28/2015
31781 7590 11/01/2018
ALCON RESEARCH, LTD.
PA TENT DEPARTMENT
11460 JOHNS CREEK PARKWAY
JOHNS CREEK, GA 30097-1556
FIRST NAMED INVENTOR
Chea Beng Lee
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.
PAT055372-US-DIV 7228
EXAMINER
IMPINK, MOLLIE LLEWELLYN
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
11/01/2018 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):
patent. docketing@alcon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHEA BENG LEE, JIA PENG TANG,
CHZE CHOW NG, and LONG YENG LIM 1
Appeal2018-001984
Application 14/811,095
Technology Center 3700
Before JAMES P. CALVE, BRETT C. MARTIN, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Office Action
finally rejecting claims 20-22 and 24--27. Appeal Br. 4. Claims 1-19 and
23 are cancelled. See id. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Novartis AG is identified as the real party in interest and also is the
applicant pursuant to 37 C.F.R. § 1.46. Appeal Br. 4.
Appeal2018-001984
Application 14/811,095
CLAIMED SUBJECT MATTER
Claim 20, the sole independent claim, is reproduced below.
20. A plastic container for storing a hydrogel contact lens in
a liquid, the container comprising:
a cavity and a flat flange that horizontally extends in a plane around
the perimeter of the cavity, wherein the flange having a sealing area
surrounding circumferentially and adjacently about of the cavity,
wherein the sealing area having a micro-texture pattern, wherein the
micro-texture pattern comprises a step height rough surface, wherein
the step height rough surface has a sectional height gradually higher
from the outer edge of the cavity toward the inner edge of the cavity
or has a sectional height gradually higher from the inner edge of the
cavity toward the outer edge of the cavity.
REJECTIONS
Claims 24--27 are rejected under 35 U.S.C. § 112, second paragraph,
for indefiniteness.
Claims 20, 22, and 24--27 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Jux (US 6,474,465 Bl, iss. Nov. 5, 2002) and Lim (US
2006/0172104 Al, pub. Aug. 3, 2006).
Claims 20 and 21 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Jux and Akazawa (US 5,316,603, iss. May 31, 1994).
ANALYSIS
Claims 24-27 For Indefiniteness
The Examiner determines claims 24--27 are indefinite because they
depend from claim 23, which was cancelled. Final Act. 3. Appellants do
not present arguments for this rejection. See Appeal Br. 5-12; Reply Br. 1
(indicating willingness to amend claims 24--27 to depend from claim 20).
Thus, we summarily sustain this rejection.
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Appeal2018-001984
Application 14/811,095
Claims 20, 22, and 24-27 Unpatentable Over Jux and Lim
Appellants argue claims 20, 22, and 24--27 as a group. Appeal Br. 8-
10. We select claim 20 as representative, with claims 22 and 24--27 standing
or falling with claim 20. See 37 C.F.R. § 4I.37(c)(l)(iv).
Claim 20 is directed to a container for storing a contact lens in liquid.
Appellants' Figures 1 and 2, which are reproduced below, show soft lens L
placed in sterile solution S in cavity C with cover layer D releasably sealed
to flange 1 of the blister pack at sealing zone 2, which extends along the
circumference of cavity C. Spec. 6:21-26.
Fig. 1 (above left) shows base portion B with cavity C formed therein
with flat flange 1 surrounding cavity C and sealing zone 2 extending around
the circumference of cavity C. Id. Fig. 2 (above right) is a plan view of the
container showing main chamber 11 of cavity C sized to accommodate lens
L with adjoining secondary cavity 12. Main cavity 11 and secondary cavity
12 together have an asymmetrical drop-shaped contour 14. Sealing zone 2 is
located around the perimeter of this asymmetrical drop-shaped contour 14 of
cavity C. Id. at 8:18-9:13.
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Appeal2018-001984
Application 14/811,095
Appellants disclose that seal quality is a critical parameter, and seal
leakage occurs when the water beads splatter onto the sealing area as a lens
is placed in the container. Id. at 3:36-4:13. Appellants discovered that a
surface micro-texture pattern on sealing zone 2 causes small water beads to
be displaced away from the seal area to improve contact and sealing between
the cover and bowl. Id. at 4:20-23. Appellants' Figure 5 is reproduced
below to depict a "step height rough surface" micro-texture of a sealing area.
Fig. 5
Figure 5 illustrates a step height rough surface, which comprises step
height 81 and rough surface 82. Step height 81 refers to a sealing area that is
raised above flat flange plane 1. Rough surface 82 refers to the surface of
the raised sealing area having a rough texture. Spec. 10:16-21.
The Examiner finds that Jux teaches a plastic container for storing a
contact lens in a liquid, as recited in claim 20, with cavity C surrounded by
flat flange 1 and circumferentially surrounded by stepped sealing area 2 that
is adjacent thereto. Final Act. 4. The Examiner relies on Lim to teach a step
height rough surface micro-texture pattern having a sectional height that is
gradually higher from the outer edge of the cavity toward the inner edge of
the cavity and gradually higher from the inner edge of the cavity toward the
outer edge of the cavity as shown in Figure 1 of Lim. Id. at 4--5.
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Appeal2018-001984
Application 14/811,095
The Examiner determines it would have been obvious to modify the
stepped seal area 2 of Jux to include a micro pattern of Lim to remove all
trapped air, rapidly increase adhesion, and improve the smoothness of the
sealed surface as Lim teaches. Id. at 5 (citing Lim ,r,r 20, 37)).
Appellants reproduce Figure 1 of Lim (Appeal Br. 9) and argue that
It is clear[] and ambiguous[] that Lim do[es] not disclose
"the step height rough surface has a sectional height gradually
higher from the outer edge of the cavity toward the inner edge
of the cavity or has a sectional height gradually higher from the
inner edge of the cavity toward the outer edge of the cavity" as
recited in the claim 1 of the present application.
Furthermore, there is no "articulated reasoning with some
rational underpinning to support the Examiner's legal
conclusion of obviousness" (KSR, 127 S. Ct. at 1741).
The Examiner has not adequately explained why one
skilled in the art looks at what the teaching of Jux (US
64 7 4465) would combine it with the disclosure of Lim et al.
(US 2006/0172104).
Id. at 10. These arguments are not persuasive because they fail to explain
why the Examiner erred in finding that Lim discloses "a step height rough
surface" as claimed or in determining that a skilled artisan would have been
motivated to modify the stepped sealing area of Jux to have a step height
rough surface micro pattern as taught by Lim.
In this regard, the Board's Rules of Practice require that arguments in
an Appeal Brief shall contain the following:
(iv) Argument. The arguments of appellant with respect to each
ground of rejection, and the basis therefor, with citations of the
statutes, regulations, authorities, and parts of the Record relied
on. The arguments shall explain why the examiner erred as to
each ground of rejection contested by appellant.
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Appeal2018-001984
Application 14/811,095
37 C.F.R. § 4I.37(c)(l)(iv); see In re Jung, 637 F.3d 1356, 1365 (Fed. Cir.
2011) ("Moreover, even assuming that the examiner had failed to make a
prima facie case, the Board would not have erred in framing the issue as one
of 'reversible error." ... [I]t has long been the Board's practice to require an
applicant to identify the alleged error in the examiner's rejections").
The Rules also state that "[a] statement which merely points out what
a claim recites will not be considered an argument for separate patentability
of the claim." 37 C.F.R. § 4I.37(c)(l)(iv). This rule governs arguments for
the separate patentability of claims subject to the same ground of rejection;
however, its guidance is pertinent to arguments for any rejected claim. See
In re Lovin, 652 F.3d 1349, 1356 (Fed. Cir. 2011).
Here, the Examiner explains why Lim teaches "a step height rough
surface" having "a sectional height gradually higher from the outer edge of
the cavity toward the inner edge of the cavity." The Examiner interprets
"sectional height" to mean "the height of a section of the rough surface"
rather than the entire surface between the inner and outer edges of the cavity.
Final Act. 4. The Examiner interprets this limitation and the term "toward"
according to their plain meaning to mean the height of a section (rather than
the whole length of a step height rough surface) is gradually higher. Ans. 4.
Notably, claim 20 does not require the step height rough surface to have a
height that is gradually higher/lower along its entire length extending from
the outer edge of the cavity to (v. toward) the inner edge of the cavity2
2 We also note that describing the step height rough surface as extending
from an outer edge of the cavity to an inner edge of the cavity is problematic
if the micro-texture surface is part of sealing area 2. In such case, the micro-
texture surface may extend from an inner edge of sealing area 2 (adjacent to
contour 14) to an outer edge of sealing area 2 opposite thereto. See Fig. 2.
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Appeal2018-001984
Application 14/811,095
Appellants' mere assertion that Lim does not disclose this limitation
(see Appeal Br. 10), without more, does not constitute effective argument
because it does not explain why the Examiner's rejection is in error. We do
not know if Appellants disagree with the Examiner's claim interpretation or
the Examiner's findings regarding Lim's disclosure, both, or another basis.
The Examiner's detailed findings explain why individual channels of Lim in
Figure 1 teach "a step height rough surface." See Final Act. 4--5; Ans. 5.
Similarly, arguing that there is no articulated reasoning with a rational
underpinning (Appeal Br. 10) does not address the Examiner's rationale,
which is based on express teachings of Lim. See Final Act. 5; see also In re
Cree, Inc., 818 F.3d 694,702 n.3 (Fed. Cir. 2016) (hindsight argument is of
no moment where the Examiner provides a sufficient, non-hindsight reason
to combine the references); Appeal Br. 10 ("It appears the Examiner used
hindsight reconstruction to render the claimed invention obvious.").
Appellants also assert that Figure 5 of their disclosure discloses the
claimed step height rough surface. Appeal Br. 8. This argument supports
the Examiner's interpretation of "sectional height" because Figure 5 shows a
series of step heights that gradually go higher for a section, then drop, and
then go higher gradually for another section, then drop again, and repeat.
Accordingly, we sustain the rejection of claims 20, 22, and 24--27.
Claims 20 and 21 Unpatentable over Jux and Akazawa
For similar reasons, we sustain the rejection of claims 20 and 21 over
Jux and Akazawa because Appellants reproduce Figure 3 of Akazawa and
argue that Akazawa does not teach a step height rough surface without ever
explaining why the Examiner erred in finding that Akazawa does teach this
feature, or in combining this feature with Jux. See Appeal Br. 10-12.
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Appeal2018-001984
Application 14/811,095
Drawing Objection
Disputes over drawing objections are generally resolved by petition to
the Director and are not within the jurisdiction of the Board. Ex Parte Frye,
94 USPQ2d 1072, *7 (BP AI 2010) (precedential) (Examiner's objections to
the drawings and refusal to enter drawing amendments are reviewable by
petition under 3 7 C.F .R. § 1.181; the line of demarcation between matters
that are appealable to the Board and matters that are petitionable to the
Director should be observed carefully); In re Berger, 279 F.3d 975, 984
(Fed. Cir. 2002) (discussing petitionable and appealable matters).
As Appellants correctly note, an exception to this general rule exists
when an objection involves new matter that affects the claims and requires
their rejection on this ground. Appeal Br. 6 (citing MPEP 608.04(C)). In
this case, however, the Examiner's objection to the submission of new
Figures 6A and 6B to illustrate the claimed "step height rough surface"
(Final Act. 2) because the drawings introduce new matter (Ans. 3) is not
related to, and did not require, a rejection of the claims on that basis.
The Examiner did not reject the claims for lack of written description
of the "step height rough surface" with a "sectional height gradually higher
from the outer edge of the cavity toward the inner edge of the cavity" and
vice versa. The Examiner objects to Figures 6A and 6B because "the length
of the sectional height is more specific in the drawing than the description of
the sectional height that is disclosed." Ans. 3. The Examiner thus finds the
claimed "step height rough surface" to be supported by the Specification's
written description, but considers the drawing changes to go beyond that
written description. This drawing objection therefore is an informal matter
that is reviewable by way of a petition under 3 7 C.F .R. § 1.181.
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Appeal2018-001984
Application 14/811,095
DECISION
We affirm the rejections of claims 20-22 and 24--27.
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).
AFFIRMED
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