Ex Parte Lipscomb et al

Board of Patent Appeals and Interferences

Sep 26, 2002

08453770 (B.P.A.I. Sep. 26, 2002)

The opinion in support of the decision being entered
today was not written for publication and
is not binding precedent of the Board

Paper No. 25

UNITED STATES PATENT AND TRADEMARK OFFICE

__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte N. THORTON LIPSCOMB
And OMAR M. BUAZZA
___________

Appeal No. 1999-1071
Application No. 08/453,770
___________

ON BRIEF
__________

Before GARRIS, WALTZ and PAWLIKOWSKI, Administrative Patent
Judges.

PAWLIKOWSKI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal from the final rejection of
claims 41-47, 49-58, 60-76, 81-85, 87-94, 97, 98, 100-103, 105,
106, 108-110, 112-120, 122-129, 131-140, 142-158, 163-167, 169-
176, 179, 180, 182-185, 187, 188, 190-192, 194-202, and 204-229.
With respect to the status of the other claims of the present
application, we refer to pages 2 and 3 of appellants’ brief, and
note that these other claims are not under consideration in the
appeal.

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Application 08/453,770

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The subject matter on appeal is represented by process claim
94, and product claims 176 and 207, set forth below:

94. A process for making a plastic eyeglass lens using a
composition comprising a photoinitiator, an aromatic containing
bis(allyl carbonate)-functional monomer, and at least one
polyethylenic-functional monomer containing at least two
ethylenically unsaturated groups selected form acrylyl and
methacrylyl, the process comprising:
placing a lens forming composition into a mold cavity
formed at least in part by a first mold member with a casting
face and a noncasting face, and a second mold member with a
casting face and noncasting face, the composition comprising a
photoinitator, an aromatic containing bis(allyl carbonate)-
functional monomer, and at least one polyethylenic-functional
monomer containing at least two ethylenically unsaturated groups
selected form acrylyl and methacrylyl, and wherein the
composition is curable by exposure to ultraviolet light to form a
substantially clear eyeglass lens in a time period of less than
one hour;

curing the lens forming composition to form a
substantially clear eyeglass lens by exposing the composition to
ultraviolet light for a time period of less than one hour; and
cooling at least a portion of the mold cavity, the
cooling being conducted while the lens forming composition is
curing.

176. An eyeglass lens prepared using the process of
claim 94.
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207. An eyeglass lens prepared using the process of
claim 94 wherein the eyeglass lens is substantially free of
distortions, cracks, patterns, and striations.

The references relied upon by the examiner as evidence of
unpatentability are:

Kaetsu et al. (Kaetsu) 4,138,538 Feb. 6, 1979
Rips 4,252,753 Feb. 24, 1981
Misura et al. (Misura) 4,622,376 Nov. 11, 1986
Matsuo et al. (Matsuo) 4,983,335 Jan. 8, 1991

I. Claims 41, 44-47, 49-58, 60-76, 81-85, 89, 94, 98,
100-103, 105, 117, 118, 120, 123, 126-129, 131-140, 142-158,
163-165, 167, 171, 176, 180, 182-185, 187, 199, 200, 202, 205,
206, 207, 209-211, 213-215, 217-219, 221-224 and 226-229 stand
rejected under 35 U.S.C. § 103 as being unpatentable over Kaetsu
in view of Misura.

II. Claims 41-43, 54, 84, 85, 87, 92, 93, 119, 124, 125,
136, 166, 167, 169, 174, 175, 179, and 201 stand rejected under
35 U.S.C. § 103 as being unpatentable over Kaetsu and Misura as
applied to claims 94, 41 and 117 above, and further in view of
Rips.

III. Claims 65, 66, 67, 68, 88, 90, 91, 103, 106, 108, 110,
112-116, 122, 147-150, 170, 172, 173, 185, 188, 190, 192, 194-
198, 204, 206-226, and 229 stand rejected under 35 U.S.C. §103 as
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being unpatentable over Kaetsu and Misura, as applied to claims
94, 41 above, and further in view of Matsuo.

IV. Claims 109 and 191 stand rejected under 35 U.S.C. being
unpatentable over Kaetsu, Misura, Matsuo, and further in view of
Rips.

We note that appellants’ presentation of the above-mentioned
rejections is set forth on page 7 of the brief. We observe that
the identification of which claims are rejected under each
rejection differs from that set forth by the examiner on pages 2,
6, 7, 8, and 9 of the answer. The examiner states that claims
were added in Amendment D, which was entered upon filing of the
appeal brief. (answer, page 2). Possibly, this may be the reason
for some of the conflicting identification of rejected claims.
Because appellants have not raised any issue in connection with
the examiner’s presentation of each rejection, we are using the
examiner’s presentation of each rejection in this appeal.
We further note that the examiner included paragraph 14 on
page 26 of the answer stating that a new ground of rejection has
been set forth. We believe this is an inadvertant error because
(1) this paragraph is in direct conflict with paragraph 12 on
page 10 of the answer which states that the answer does not
contain any new grounds of rejection, and (2) appellants have not
acknowledged any new ground of rejection.
The examiner has withdrawn the 35 U.S.C. § 112 rejection.
The examiner has also withdrawn the 35 U.S.C. § 102(b) or 103(a)
rejection over Kaetsu alone. (answer, page 2).

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Lastly, we have reviewed the supplemental examiner’s answer
in response to appellants’ request for reconsideration filed on
March 3, 2000. We are in agreement with the examiner’s comments
regarding parent case S.N. 07/425,371. As pointed out by the
examiner, the rejections in this appeal rely upon the reference
of Kaetsu (among others), which was not applied in connection
with parent case S.N. 07/425,371.

OPINION
For the reasons set forth in the brief and below, we reverse
each of the above-mentioned rejections.

I. The Rejections

The critical issue before us is whether the combination of
Kaetsu in view of Masura sets forth a prima facie case of
obviousness. In making this determination, we focus on the
crucial aspect of appellants’ invention wherein the composition
is curable by exposure to ultraviolet light to form a
substantially clear eyeglass lens in a time period of less than
one hour.
The examiner’s basic position is that it would have been
obvious to modify the compositions in the method of Kaetsu to
include the aromatic bis(allyl carbonate) monomer and the
tri(meth)acrylate monomer as taught by Misura. (answer, page 6).
The examiner states that substitution of an aromatic
bis(allylcarbonate) monomer of Misura in place of an aliphatic
bis(ally)carbonate monomer of Kaetsu “would have been expected to
be light polymerizable in less than one hour because the
polymerizable allylcarbonate functionality is the same and in
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analogous (meth)acrylate functional compositions”. (answer, page
5).
Appellants argue that Misura relates to a thermal curing
process rather a curing process by UV light. Appellants argue
that Misura’s composition does not include a photoinitiator, and
is not curable to form a substantially clear eyeglass lens by
exposure to UV light. Appellants argue that one having ordinary
skill in the art would not look to a thermally curable
composition to prepare a composition to be cured by exposure to
UV light to form a substantially clear eyeglass lens in less than
one hour. (brief, page 14).
The examiner rebuts and states that substitution of an
aromatic bis(allycarbonate), as taught by Misura, for the
aliphatic bis(allylcarbonate) monomer disclosed in Kaetsu “would
not be expected to affect the photopolymerizability of the
compositions disclosed by Kaetsu”. The examiner further states
that the compositions disclosed by Misura, as thermally curable,
and by Kaetsu, as being photocurable, are analogous because the
components of the disclosed compositions are analogous
(bis(allycarbonate monomers, poly(meth)acrylate monomers, peroxy
initiators, such as benzoyl peroxide), and are disclosed by
patentees as being useful for forming lenses. The examiner states
that “[f]or these reasons, the disclosures of the two references
are considered to be analogous”. (answer, page 11).
We note that beyond looking to the prior art to determine if
it suggests doing what the inventor has done, one must also
consider if the art provides the required expectation of
succeeding in that endeavor. In re Dow Chem., 837 F.2d 469, 473,
5 USPQ2d 1529, 1532 (Fed. Cir. 1988) (“Both the suggestion and
the expectation of success must be founded in the prior art, and
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not in applicant’s disclosure.”). “Obviousness does not require
absolute predictability but a reasonable expectation of success
is necessary.” In re Clinton, 527 F.2d 1226, 1228, 188 USPQ 365,
367 (CCPA 1976). See also In re O’Farrell, 853 F.2d 894, 903, 7
USPQ2d 1673, 1681 (Fed. Cir. 1988).
Here, the examiner does not rely upon any specific teachings
in the combination of references to support both the suggestion
and the expectation of success that the substitution as stated by
the examiner would provide for a lens forming composition that
forms into a substantially clear eyeglass lens by exposing the
composition to ultraviolet light for a time period of less than
one hour. Rather, the examiner concludes that substitution of
the aromatic bis(allylcarbonate) monomer of Misura in place of
the aliphatic bis(ally)carbonate monomer of Kaetsu “would have
been expected to be light polymerizable in less than one hour
because the polymerizable allylcarbonate functionality is the
same and in analogous (meth)acrylate functional compositions”.
[emphasis added] (answer, page 5). The examiner’s conclusion of
obviousness, therefore, is not based upon the suggestion and the
expectation of success founded in the prior art, but rather is
based upon the examiner’s determination that the references are
“analogous”. This is not a correct application of the law.
We therefore determine that the examiner has not set forth a
prima facie case of obviousness.
We need not discuss appellants’ rebuttal evidence in
connection with the Declaration by Dr. Buazza (Exhibit A in
appellant’s brief) in view of the determination that a prima
facie case has not be made.
Because the other rejections each involve the combination of
Kaetsu in view of Misura, and because the additional references
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in these rejections do not cure the deficiencies discussed in
connection with the combination of Kaetsu in view of Misura, we
need not discuss the additional references, and also reverse
these rejections.

II. Other Issues
We importantly note that the claims on appeal include
product-by-process claims.
We observe that the examiner states on page 5 of the answer
that the end product would be expected to exhibit the same
properties. We have also reviewed the prosecution history.
Upon this review, we are uncertain as to whether
patentablity of the product-by-process claims has been carefully
considered in view of the following law, and strongly recommend
that upon return of this application to the jurisdiction of the
examiner, such an evaluation should be undertaken.
When evaluating patentability at the patent office level, if
the claimed composition reads on a prior art composition, then it
will properly draw a rejection of unpatentability, even if
produced by a different process. In re Thorpe, 777 F.2d 695,
697, 227 USPQ 964, 965-66 (Fed. Cir. 1985); In re Hirao, 535 F.2d
67, 69, 190 USPQ 15, 17, (CCPA 1976). In this regard, the
examiner should consider whether to reject the product-by-process
claims under 35 USC § 103 over an art reference such as Misura.
So, for example, if Misura suggests a composition having the same
compounds as claimed by appellants, then Misura would suggest the
product, absent evidence from appellants that the claimed
composition materially differs form the prior art composition.
In re Marosi, 710 F.2d 799, 802, 218 USPQ 289, 292-93 (Fed. Cir.
1983).
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We therefore recommend that this issue be considered in
light of the above-mentioned case law.

III. Conclusion

Each rejection of record is reversed.

REVERSED

BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
)
THOMAS A. WALTZ ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
Beverly A. Pawlikowski )
Administrative Patent Judge )

BAP/cam

Appeal No. 1999-1071
Application 08/453,770

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Eric Meyertons
Coley, Rose, and Tayon
P.O. Box 3267
Houston, TX 77253-3267