Ex Parte Marmo

Board of Patent Appeals and Interferences

Jun 3, 2010

10811690 (B.P.A.I. Jun. 3, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte J. CHRISTOPHER MARMO
____________

Appeal 2009-010061
Application 10/811,690
Technology Center 1700
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Decided: June 3, 2010
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Before ADRIENE LEPIANE HANLON, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 172-178 and 186. (Final Office Action
(“Final”), mailed Dec. 5, 2007, 2), the only claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2009-010061
Application 10/811,690

We REVERSE.
The Examiner maintains (Examiner’s Answer (“Ans.”), mailed Jul.
10, 2008, 4-7), and Appellant requests review of (Appeal Brief (“App. Br.”),
filed Jun. 3, 2008, 4), the following grounds of rejection:
1. claims 172-178 and 186 under 35 U.S.C. § 103(a) as
unpatentable over Hu (US 2001/0044482 A1, pub. Nov. 22, 2001), Gordon
(US 4,123,408, issued Oct. 31, 1978), or Shah (US 4,462,665, issued Jul. 31,
1984), each taken in view of Krezanoski (US 3,954,644, issued May 4,
1976); and
2. claims 172-178 and 186 under 35 U.S.C. § 103(a) as
unpatentable over Tanaka (US 6,008,170, issued Dec. 28, 1999) or Salpekar
(US 6,440,366 B1, issued Aug. 27, 2002), each taken in view of
Krezanoski.1
Claim 172, the sole independent claim, is directed to a package
system which includes a hydrogel contact lens comprising a hydrophilic
polymeric material and a water soluble polymer component (“WSPC”)
wherein the WSPC comprises a polyalkylene glycol.
According to the Specification, this contact lens is produced by
polymerizing at least one hydrophilic monomeric component in the presence
of a WSPC to form a contact lens body comprising a hydrophilic polymeric
material and the WSPC. (Spec. 12:19-24.)
The Appellant discloses that the WSPC is physically immobilized by
the hydrophilic polymeric material in the contact lens body. (Spec. 4:2-4.)

1The Examiner has withdrawn the rejections of claims 172-178 and 186
under 35 U.S.C. § 103(a) as unpatentable over Hu, Gordon, or Shah each
taken in view of Dziabo and as unpatentable over Tanaka or Salpekar each
taken in view Dziabo. (Ans. 3.)
2
Appeal 2009-010061
Application 10/811,690

However, after placing the contact lens in the eye, the WSPC is at least
partially replaced with water in the eye. (Spec. 9:24-29.)
The Appellant discloses that a useful class of WSPC’s include
polyethylene glycols. (Spec. 9:15-16.)
The Specification describes “polyalkylene glycols” as “polyethylene
glycols, polypropylene glycols and the like” (Spec. 6:2-3) and specifically
defines “polyethylene glycols” as “compounds that can be represented by
the following formula:
HO-(CH2-CH2O)n-H
wherein n represents a number such that the molecular weight of the
polyethylene glycol is within the range of from about 300 to about 10,000
and preferably from about 400 to about 2000 or about 5000” (Spec. 9:16-
22).
The Examiner’s obviousness determination is based on findings that
each of the primary references discloses a hydrogel contact lens as claimed.
(See Final 2-3 and Ans. 4 (as to Hu, Gordon, and Shah) and Final 4 and Ans.
6 (as to Tanaka and Salpekar).) In the Appeal Brief, Appellant disagreed
with these findings, contending that the references fail to disclose a contact
lens comprising a polyalkylene glycol. (See, e.g., App. Br., 15 (1st full para.)
and 23.) In the Response to Argument section of the Answer, the Examiner,
for the first time, explicitly identifies the paragraph relied on in each of Hu,
Gordon, and Shah for a teaching of a polyalkylene glycol, i.e., polyethylene
glycol. (Ans. 8.) With respect to Tanaka and Salpekar, the Examiner does
nothing more than generally refer to columns within the references. (See
Ans. 6; see generally, Ans. 7-9.)
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Appeal 2009-010061
Application 10/811,690

In the Reply Brief, Appellant explains, in detail, why the relied upon
paragraph in each of Hu, Gordon, and Shah, as well as the relied upon
sections of Tanaka and Salpekar, fail to provide a teaching or suggestion of a
contact lens comprising a polyalkylene glycol. (See, e.g., Reply Brief (“Rep.
Br.”), filed May 8, 2009, 3-4 (as to Hu), 4-5 (as to Gordon), 5 (as to Shah),
11-12 (as to Tanaka), 12 (as to Salpekar).)
Given the absence of contrary arguments or evidence from the
Examiner, we find Appellant’s arguments persuasive in establishing that the
Examiner’s findings are insufficient to support a prima facie case of
obviousness as to the appealed claims. That is, on this record, the Examiner
has not directed us to any portion of Hu, Gordon, Shah, Tanaka, or Salpekar
that discloses or suggests a hydrogel contact lens comprising a hydrophilic
polymeric material and a WSPC wherein the WSPC comprises a
polyalkylene glycol.
Accordingly, we reverse both grounds of rejection.
REVERSED

tc

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