Ex Parte Matsuzawa et al

Patent Trial and Appeal Board

Dec 27, 2012

10152930 (P.T.A.B. Dec. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte YASUO MATSUZAWA, LYNN COOK WINTERTON,
and MICHAEL NELSON WILDE
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Appeal 2010-000969
Application 10/152,9301
Technology Center 2800
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Before MARC S. HOFF, ANDREW J. DILLON, and JOHN A. EVANS,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1, 3, 5-7, 9, 11, 13-15, 17, and 20-22.2 We have jurisdiction under 35
U.S.C. § 6(b).
We affirm-in-part.
Appellants’ invention is a basket for ophthalmic lenses.

1 The real party in interest is Novartis AG.
2 Claims 2, 4, 8, 10, 12, 16, 18, 19, and 23-25 have been cancelled.
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Claim 1 is exemplary of the claims on appeal:
1. A basket for holding an ophthalmic lens, the basket having a lattice
structure, wherein said basket comprises a first and a second mating
members, said first and second mating members having an ophthalmic lens
contacting side and an ophthalmic lens non-contacting side, said first and
second mating members forming a cavity when mated for receiving said
ophthalmic lens, said cavity inhibiting inversion or rolling over of said
ophthalmic lens when emplaced therein, wherein said ophthalmic lens
contacting side of said lattice has sharp edges available for said ophthalmic
lens to contact, and further wherein said sharp edges are thin lines radiating
from the centers of said first and second mating members and wherein there
are through-holes in the centers of said first and second mating members.
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Sibley US 5,101,967 Apr. 7, 1992
Ohta EP 0 476 937 B1 Aug. 23, 1995
LaRuffa US 6,347,870 B1 Feb. 19, 2002
Claims 1, 3, 5-7, 9, 11, and 13-15 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Sibley in view of Ohta.
Claims 17 and 20-22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sibley in view of Ohta and LaRuffa.

ISSUES
Appellants argue that the Examiner erred in rejecting independent
claims 1 and 9 because spokes 23 of Sibley do not correspond to the claimed
“sharp edges” to support contact lenses (App. Br. 5). Appellants contend that
the square cross-sectional shape of Sibley’s spokes cannot constitute a sharp
edge, or “thin lines” (id.), because one of ordinary skill would interpret a
“sharp edge” as presenting a cross-sectional shape wherein one edge is
thinner than the remainder of the object (App. Br. 6).
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Appellants further argue that it would not have been obvious to
modify Sibley, which teaches a single through-hole, in view of Ohta, which
also teaches a single through-hole, in order to obtain a device having
through-holes in first and second mating members (App. Br. 7-8).
With respect to claims 3 and 11, Appellants argue that the claimed
dimension of the sharp edges (“1/10 mm or less”) presents a complete
difference in kind, not merely dimension, in comparison to the cited prior art
(App. Br. 7).
With respect to independent claim 17, Appellants argue that one of
ordinary skill in the art would not have been motivated to modify Sibley and
Ohta, each of which is concerned with a single pair of contact lenses, to
employ a stacked tray assembly such as taught by LaRuffa (App. Br. 9-10).
Appellants’ contentions present us with the following issues:
1. Do spokes 23 of Sibley correspond to the claimed “sharp edges”
constituting “thin lines radiating from the centers”?
2. Do the combined teachings of Sibley and Ohta teach or fairly
suggest through-holes in the centers of first and second mating members?
3. Do the combined teachings of Sibley and Ohta teach or fairly
suggest thin lines having a thickness of about 1/10 mm or less?
4. Would one of ordinary skill in the art have been motivated to
modify Sibley and Ohta to use the stacked tray assembly of LaRuffa?

PRINCIPLE OF LAW
The Examiner’s articulated reasoning in the rejection must possess a
rational underpinning to support the legal conclusion of obviousness. In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
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ANALYSIS
CLAIMS 1, 5-7, 9, AND 13-15
Appellants’ argument that Sibley does not teach that spoke 23 has
“sharp edges,” “wherein the sharp edges are thin lines radiating from the
centers of said first and second mating members” is not persuasive to
establish that the Examiner erred. Appellants’ contention that one of skill in
the art would know that a sharp edge “must normally present a cross-
sectional shape wherein one edge is thinner than the remainder of the object”
(App. Br. 6) lacks evidentiary support. We find no special definition of
“sharp edge” in Appellants’ Specification. We agree with the Examiner’s
findings that, absent some special definition, “sharp” is a relative term, and
that a flat surface (as in Sibley) may represent a sharp surface (Ans. 13). We
further agree that independent claims 1 and 9 contain no shape limitations on
the “sharp edges” or “very sharp edges” recited (Ans. 13).
We are also unpersuaded of error by the argument that the
combination of Sibley and Ohta does not teach or suggest through-holes in
the centers of the first and second mating members (App. Br. 8). Appellants’
position is that since neither Sibley nor Ohta teaches more than one through-
hole individually, their combination could not fairly suggest a basket having
two through-holes (id.). We do not agree with Appellants. Instead, we agree
with the Examiner that Ohta’s top basket member with center through-hole
may be combined with Sibley’s bottom basket member with center through-
hole (Ans. 14). We find that the Examiner’s stated rationale, “to decrease the
cleaning time for the lenses by applying cleaning liquid to both sides of the
lenses simultaneously” (Ans. 15), possesses a rational underpinning, and
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thus supports the legal conclusion of obviousness. See Kahn, 441 F.3d at
988.
We conclude that the Examiner did not err in rejecting claims 1, 5-7,
9, and 13-15 under § 103 as being unpatentable over Sibley in view of Ohta.
We will sustain the Examiner’s rejection.
CLAIMS 17 AND 20-22
We are not persuaded by Appellants’ argument that one of ordinary
skill in the art would not have been motivated to combine Sibley and Ohta
with LaRuffa (App. Br. 9-10). The Examiner states that it would have been
obvious to modify the single-pair lens baskets of Sibley or Ohta in view of
LaRuffa – which teaches a plurality of baskets – because it would be
“advantageous in a household with multiple people living together to clean
multiple contact lenses at the same time to conserve time and reduce the
cleaning fluid used by the household” (Ans. 15). We find that the
Examiner’s stated rationale possesses a rational underpinning to support the
legal conclusion of obviousness. See Kahn, 441 F.3d at 988.
CLAIMS 3 AND 11
In contrast to independent claims 1 and 9, dependent claims 3 and 11
each recite that “each of the thin lines have a thickness of about 1/10 mm or
less.” Appellants’ Specification expresses a desire for baskets to hold
ophthalmic lenses in place with a small percentage of solid surface for a lens
to contact. Appellants disclose that lenses “may tend to stick to the solid
surface of baskets,” which tends to “prevent the lens from being treated
uniformly during a washing, extracting, coating, or drying process” (Spec.
2), and that an unwanted chemical coating may form on solid surfaces and
then adhere onto a lens (Spec. 2-3). We find that Appellants have therefore
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disclosed the criticality of minimizing the thickness of basket lens supports
to the greatest extent possible.
Consequently, we agree with Appellants that the Examiner’s reliance
on Gardner v. TEC Sys., Inc., 725 F.2d 1338 (Fed. Cir. 1984), is misplaced
(see App. Br. 7; Ans. 7). We agree with Appellants that a device having the
claimed dimensions, i.e. thin lines having a thickness of about 1/10 mm or
less, would perform differently than the prior art, in that it would avoid
nonuniform treatment of the lens and would avoid unwanted chemical
coating(s).
We conclude that the Examiner erred in rejecting claims 3 and 11 as
being unpatentable over Sibley in view of Ohta. We will not sustain the §
103 rejection.

CONCLUSIONS
1. Spokes 23 of Sibley correspond to the claimed “sharp edges”
constituting “thin lines radiating from the centers.”
2. The combined teachings of Sibley and Ohta fairly suggest through-
holes in the centers of first and second mating members.
3. The combined teachings of Sibley and Ohta do not teach or fairly
suggest thin lines having a thickness of about 1/10 mm or less.
4. One of ordinary skill in the art would have been motivated to
modify Sibley and Ohta to use the stacked tray assembly of LaRuffa.

ORDER
The Examiner’s rejection of claims 1, 5-7, 9, 13-15, 17, and 20-22 is
affirmed. The Examiner’s rejection of claims 3 and 11 is reversed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R.§ 1.136(a)(1)(iv) (2010).

AFFIRMED-IN-PART

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