Ex Parte Mahadevan et al

Patent Trial and Appeal Board

May 30, 2013

11872578 (P.T.A.B. May. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte SHIVKUMAR MAHADEVAN, AMIT KHANOLKAR,
OSMAN RATHORE, YONGCHENG LI, CRAIG W. WALKER,
and THOMAS R. ROONEY
__________

Appeal 2011-011349
Application 11/872,578
Technology Center 1600
__________

Before DONALD E. ADAMS, ERIC GRIMES, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to articles
comprising antimicrobial particles. The Examiner has rejected the claims as
anticipated. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
The Specification discloses medical articles comprising particles of an
antimicrobial metal salt (Spec. 4:16-19), where the particles are of a small
size, “mak[ing] the articles of the present invention particularly useful for
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applications where clarity is desired” (id. at 8:4-5), such as contact lenses
(id. at 7:14-18).
Claims 1-11 and 13-20 are on appeal. Claim 1, the only independent
claim, reads as follows:
1. An article formed from at least one polymer, the polymer
comprising, distributed homogeneously throughout, antimicrobial metal salt
particles having a particle size of less than about 200 nm, wherein said
article displays at least about 0.5 log reduction of at least one of
Pseudomonas aeruginosa and s aureus and a haze value of less than about
100% at about 70 microns thickness compared to a CSI lens.

Issue
The Examiner has rejected all of the claims on appeal under 35 U.S.C.
§ 102(b) as anticipated by Andersson.
1
The Examiner finds that Andersson
discloses “antimicrobial hydrogel lens[es] which contain a metal salt” and
meet all the limitations of claim 1 (Answer 5). As evidence that Andersson
discloses homogeneous distribution of metal salt particles, the Examiner
cites the method disclosed in Andersson’s paragraph [0047] (id. at 6).
Appellants contend that Andersson does not disclose methods that
“produce contact lenses wherein the metal salt is both less than 200nm in
diameter and homogeneously distributed throughout the lens” (Appeal Br.
3).
The issue presented is: Does the evidence of record support the
Examiner’s finding that Andersson discloses polymer-containing contact
lenses that incorporate metal salts that are both less than 200 nm in diameter
and homogeneously distributed throughout the lens?

1
Andersson et al., US 2004/0150788 A1, Aug. 5, 2004.
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Findings of Fact
1. Andersson discloses “an antimicrobial lens comprising … a metal
salt” (Andersson 1, ¶ 0027).
2. Andersson discloses that “[p]referably, the lenses of the invention
exhibit a reduction of viable bacteria or other microbe of at least about 0.25
log, more preferably at least about 0.5 log, most preferably at least about 1.0
log” (id.).
3. Andersson discloses that its lenses “have a percent haze that is less
than about 200%, preferably less than about 150% and more preferably less
than about 100% … compar[ed] to a CSI Thin Lens®” (id. at 2, ¶ 0031).
4. Andersson discloses that the “term lens includes … soft contact
lenses [and] hard contact lenses” (id. at 2, ¶ 0030). “Hard contact lenses are
made from polymers” (id. at 2, ¶ 0033).
5. Andersson discloses that “it is preferred that the diameter of the
metal salt particles is less than about ten microns (10 µm), more preferably
less than about 5 µm, most preferably equal to or less than about 200 nm”
(id. at 2, ¶ 0028).
6. Andersson discloses “a method of producing an antimicrobial lens
comprising … a metal salt wherein the method comprises … mixing the
metal salt with a lens formulation and curing the lens formulation/metal salt
mixture to form a lens” (id. at 4, ¶ 0047).
Analysis
Andersson discloses articles made from polymers (FF 4) comprising
metal salt particles (FF 1), preferably having a diameter of 200 nm or less
(FF 5). Andersson also discloses that its articles exhibit at least about 0.5
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log reduction in bacteria (FF 2) and a percent haze less than 100% compared
to a CSI lens (FF 3).
Appellants argue, however, that Andersson does not disclose a
method for incorporating a metal salt into contact lenses that produces
“contact lenses wherein the metal salt is both less than 200nm in diameter
and homogeneously distributed throughout the lens” (Appeal Br. 3).
Appellants argue that the method of Andersson’s paragraph [0047] “does not
produce lenses having particles of the recited size,” because Andersson’s
Examples 1-11 and 33, which had homogeneously distributed silver metal,
had particle sizes of 1-44 µm (1,000 to 44,000 nm) (id. at 4). Appellants
also argue that Andersson discloses embodiments in which “the salt is
precipitated in the lens after the lens is formed” (id.) but the Specification
provides a comparative example showing that this method does not result in
a homogeneous distribution of metal salt particles (id. at 5).
These arguments are not persuasive. The Examiner finds (Answer 8),
and Appellants do not dispute, that the method described in Andersson’s
paragraph [0047], in which metal particles are added to the polymer mixture
prior to curing, produces polymer articles with homogeneously distributed
metal particles. Thus, Andersson discloses a method of making articles with
homogeneously distributed metal particles, and discloses that the metal
particles are most preferably less than 200 nm. It therefore describes
polymer articles with a homogenous distribution of metal particles having a
size of 200 nm or less.
Although Andersson might not exemplify an article with both the
required particle size and homogenous distribution, “anticipation does not
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require actual performance of suggestions in a disclosure. Rather,
anticipation only requires that those suggestions be enabled to one of skill in
the art.” Impax Labs., Inc. v. Aventis Pharms. Inc., 468 F.3d 1366, 1382
(Fed. Cir. 2006). Likewise, Andersson’s disclosure of a method that may
not result in homogeneous distribution (precipitation of salt in the lens after
it is formed) does not detract from its disclosure of a method that does result
in homogeneous distribution of the metal salt in the lens.
Thus, we affirm the rejection of claim 1 as anticipated by Andersson.
Claims 2-11 and 13-20 have not been argued separately and therefore fall
with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
Conclusion of Law
The evidence of record supports the Examiner’s finding that
Andersson discloses polymer-containing contact lenses that incorporate
metal salts that are both less than 200 nm in diameter and homogeneously
distributed throughout the lens.
SUMMARY
We affirm the rejection of claims 1-11 and 13-20 under 35 U.S.C.
§ 102(b).
TIME PERIOD FOR RESPONSE
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
cdc