Ex Parte Liu

Patent Trials and Appeals Board

Jan 19, 2016

13532838 - (D) (P.T.A.B. Jan. 19, 2016)

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.
13/532,838 06/26/2012 Yue Liu FER-19020.01.01 2730
7609 7590 01/20/2016
RANKIN, HILL & CLARK LLP
23755 Lorain Road - Suite 200
North Olmsted, OH 44070-2224
EXAMINER
PARVINI, PEGAH
ART UNIT PAPER NUMBER
1731
MAIL DATE DELIVERY MODE
01/20/2016 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE
THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte YUE LIU 1
________________

Appeal 2014-000940
Application 13/532,838
Technology Center 1700
________________

Before JEFFREY T. SMITH, MARK NAGUMO, and
JEFFREY W. ABRAHAM, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Yue Liu (“Liu”) timely appeals under 35 U.S.C. § 134(a) from the
Final Rejection2 of claims 1–20, which are all of the pending claims.
We have jurisdiction. 35 U.S.C. § 6. We affirm.

1 The real party in interest is listed as Ferro Corporation. (Appeal Brief,
filed 24 July 2013 (“Br.”), 2.)
2 Office action mailed 27 December 2012 (“Final Rejection”; cited as
“FR”).
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OPINION
A. Introduction3
The subject matter on appeal relates to a method of polishing organic
polymer-based ophthalmic substrates using a dispersion of diatomaceous
earth particles in water, the dispersion having a viscosity of less than
about 200 cP,4 and being applied to the substrate by a polishing pad.
According to the ʼ838 Specification, “the phrase ‘organic polymer-based
ophthalmic substrates’ refers to organic thermosetting or thermoplastic
polymer materials used in the fabrication of eyeglass lenses and other
optometric devices.” (Spec. 4, ¶ 12.) The Specification states that,
“[i]ncluded within this definition are polycarbonate materials such as allyl
diglycol carbonate polymers commonly known as CR-39 and other
thermosetting and thermoplastic organic polymer resins used to fabricate
ophthalmic lenses.” (Id.) The term “high index organic polymer-based
ophthalmic substrates” is defined as referring to “those organic polymer-
based ophthalmic substrates that have an index of refraction greater
than 1.498, which is the index of refraction for the allyl diglycol carbonate
polymer known in the art as CR-39.” (Id.; emphasis added.) The

3 Application 13/532,838, Diatomaceous earth-containing slurry
composition and method for polishing organic polymer-based ophthalmic
substrates using the same, filed 26 June 2012, as a division of 12/824,280,
now abandoned, which was filed 28 June 2010, claiming the benefit of a
provisional application filed 29 June 2009. We cite the Specification as
“Spec.”
4 For comparison, the viscosity of water at 20°C is about 1 cP.
E.g., CRC Handbook of Chemistry and Physics, 49th ed., Absolute viscosity
of water at 20°C, F-34 (1968).
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Specification teaches that “lenses that are fabricated from 1.586 index of
refraction polycarbonate substrates are thinner and lighter in weight than
comparable lenses fabricated from CR-39, and further provide improved
impact resistance.” (Id. at 2, ¶ 7.)
Sole independent claim 1 is representative of the subject matter on
appeal and reads:
A method of polishing an organic polymer-based ophthalmic
substrate comprising:
dispersing a composition comprising particles of
diatomaceous earth in water
to form an aqueous polishing slurry having a viscosity of
less than about 200 cP;
disposing the aqueous polishing slurry between a polishing
pad and the organic polymer-based ophthalmic substrate;
and
polishing the organic polymer-based ophthalmic substrate
with the polishing pad and the aqueous polishing slurry
to remove a surface portion of the organic polymer-
based ophthalmic substrate.
(Claims App., Br. 23; some indentation, paragraphing, and emphasis added.)
The Examiner maintains the following grounds of rejection5, 6:
A. Claims 1–20 stand rejected under 35 U.S.C. § 103(a) in view
of the combined teachings of Ferranti7 [ʼ999] and Henry.8

5 Examiner’s Answer mailed 30 August 2013 (“Ans.”).
6 The Examiner has withdrawn six rejections under § 103 in view of various
combinations of Foster (U.S. Patent No. 5,137,541 (1992), Knapp (U.S.
Patent No. 5,846,649 (1998)), and Henry (U.S. Patent No. 5,641,345
(1997)). (FR 4–12; Ans. 7, ll. 1–6.)
7 Steven A. Ferranti, Slurry composition and method for polishing organic
polymer-based ophthalmic substrates, U.S. Patent Application Publication
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B. Claims 1, 2, 4–9, and 14 stand rejected under obviousness-
type double patenting in view of claims 1–9 and 11 of
Ferranti9 [ʼ044] combined with Henry.
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
We find that Liu raises arguments for patentability based only on
limitations recited in sole independent claim 1. Accordingly, all claims
stand or fall with claim 1.
Briefly, the Examiner finds that Ferranti10 teaches that aqueous
dispersions of abrasives, including “alumina, zirconia, silica, titania, or a
combination thereof and water” are useful for polishing organic polymer-
based ophthalmic substrates having an index of refraction n, where n is
greater than 1.498, i.e., n > 1.498. (FR 12; Ans. 2.) The Examiner finds
further that “Ferranti may not expressly disclose the use of diatomaceous
earth” in the polishing composition. (FR 13; Ans. 3.) The Examiner finds
that Henry teaches that abrasive materials such as diatomaceous earth, and
mixtures with silicas, aluminum oxides, etc., are useful as polishing
compounds for compact discs made from polycarbonate. (FR 13; Ans., para.

2006/0228999 A1 (2006); issued 13 November 2007, as U.S. Patent
No. 7,294,044 B2.
8 Daniel J. Henry, Composition and method for refinishing compact disks,
U.S. Patent No. 5,641,345 (1997).
9 Steven A. Ferranti, Slurry composition and method for polishing organic
polymer-based ophthalmic substrates, U.S. Patent 7,294,044 B2 (2007).
10 We refer to the published application and the issued patent as “Ferranti,”
as the disclosures are for present purposes substantially the same.
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bridging 3–4.) The Examiner also takes Official Notice that “diatomaceous
earth comprises of a large portion of silica and a small portion of alumina.”
(FR 14; Ans. 4.) In the Examiner‘s words, “[t]hus, once alumina and silica
are desired for the polishing slurry of Ferranti, the addition of a component
having both compounds would be well within the scope of a skilled artisan.”
(FR 14; Ans. 4.) On this basis, the Examiner rejects claims 1–20 as obvious.
Liu argues that because polycarbonate can be used for a myriad of
non-ophthalmic purposes (including tamper resistant packaging, beverage
containers, etc.), “polycarbonate is only an organic polymer-based
ophthalmic substrate when used as such.” (Br. 13, ll. 28–29.) Moreover,
Liu urges, because Henry is concerned only with polishing scratches out of
compact disks, “which require less precision in surface quality in polishing
in order to properly function [than ophthalmic substrates]” (id. at 14, ll. 15–
16), the use for ophthalmic substrates would not have been suggested.
Furthermore, according to Liu, the chemical-mechanical polishing taught by
Henry, with the use of a solvent for the polycarbonate, “is simply not used
with ophthalmic substrates . . . . ” (Id. at l. 28.)
Liu also argues that because Ferranti teaches a preference for calcined
alumina (to maximize the removal rate), the routineer would have thought
that diatomaceous earth, comprising mostly silica with some alumina and a
very minor component of another oxide, would produce worse, not better
results than alumina. (Br. 20, ll. 15–19.) In Liu’s view, the results reported
in Table 1 of the Specification stand as evidence of “unexpected and
improved results compared to higher amounts of alumina for polishing
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ophthalmic substrates.” (Id. at 20–21.) In the Reply11, Liu urges that Henry
is non-analogous art, and that “when evaluating Henry through the lens of
the instant specification, the proper evaluation for determining
analogousness should focus on the use of the substrate being polished
(ophthalmic substrate), rather than only on the composition of the substrate
(being made of polycarbonate).” (Reply 6, 2d para.)
Liu’s arguments are not persuasive of harmful error in the prima facie
case of obviousness. The use of similar materials for similar purposes based
on properties disclosed as making the materials useful for those purposes is a
classical instance of prima facie obviousness. Hotchkiss v. Greenwood,
52 U.S. 248, 265 (1850) (“the knob of clay was simply the substitution of
one [known] material for another [wood].”) As for any “preferences” taught
by Ferranti, it is well-settled that all of the teachings of a reference should be
considered, and that the teachings are not limited to the preferred or most-
preferred embodiments. See, e.g., In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004) (“The prior art’s mere disclosure of more than one alternative
does not constitute a teaching away from any of these alternatives because
such disclosure does not criticize, discredit, or otherwise discourage the
solution claimed in the . . . application . . . . [M]ere disclosure of alternative
designs does not teach away.”) “For obviousness under § 103, all that is
required is a reasonable expectation of success.” In re O’Farrell, 853 F.2d
894, 904 (Fed. Cir. 1988). Liu’s arguments regarding the intended use of the
substrates have little weight when the teachings of similar abrasive materials
by both Ferranti and Henry are considered. Henry’s teachings of abrasive

11 Reply Brief filed 28 October 2013 (“Reply”).
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materials similar to those taught by Ferranti would have suggested that the
additional materials, such as diatomaceous earth, would have been useful as
abrasives in the processes taught by Ferranti for polishing ophthalmic plastic
substrates. Liu’s arguments that the routineer would have limited Henry’s
teachings to the organic-solvent assisted compositions, to the exclusion of
other polishing compositions such as those described by Ferranti, are not
supported by the weight of the evidence of record.
Liu’s arguments regarding the necessity of solvents in the polishing
compositions taught by Henry are misplaced because the rejection does not
depend on the wholesale incorporation of those polishing compositions into
the compositions taught by Ferranti. Rather, to the extent the Examiner may
have made such arguments, we understand that the reason was to point out
the scope of claims, which recite “aqueous compositions,” and which do not,
on the present record, exclude organic solvents. In any event, the central
point of the obviousness of using a composition that comprises silica and
alumina—both materials disclosed by Ferranti as being useful for polishing
ophthalmic substrates, remains undisturbed.
We turn now to the evidence proffered as supporting unexpected
results. The Examiner discounted the evidence (Table 1 from page 11 of the
Specification) as not being commensurate with the range of amounts of
abrasive encompassed by claim 1. (Ans. 10). It is well-settled that the
evidence of unexpected results must be commensurate, reasonably, with the
scope of the claimed subject matter. See, e.g., In re Harris, 409 F.3d 1339,
1344 (Fed. Cir. 2005) (evidence of secondary considerations must be
“commensurate in scope with the degree of protection sought by the claimed
subject matter. . . . Even assuming that the results were unexpected, Harris
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needed to show results covering the scope of the claimed range.
Alternatively Harris needed to narrow the claims.”) (citation omitted).
In the present case, claim 1 does not limit the absolute or relative
amount of diatomaceous earth that must be present in the slurry, except
perhaps by the requirement that the viscosity of the slurry be less than
200 cP. Particularly in view of the disclosure that “[t]he slurry compositions
. . . can further comprise, in addition to particles of diatomaceous earth,
other conventional abrasive particles utilized in polishing high index organic
polymer-based ophthalmic substrates” (Spec. 5 ¶ 16), the claims cover
methods of polishing ophthalmic substrates containing even minor amounts
of diatomaceous earth. Liu has not explained why a person having ordinary
skill in the art would have accepted a showing of 40% diatomaceous earth
with 60% calcined aluminum oxide (Spec. 12, Table 2) as showing
unexpected results for smaller amounts of diatomaceous earth, e.g., 1 weight
percent or less diatomaceous earth in the presence of 60% alumina.
Finally, because Liu has not offered any separate rebuttal to the
obviousness-type double patenting rejection, the obviousness-double
patenting rejection, which is over the claims of Ferranti, and is thus subject
to substantially the same evidence and arguments, is summarily affirmed.
C. Order
It is ORDERED that the rejection of claims 1–20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED