Ex Parte Moravec et al

Board of Patent Appeals and Interferences

Nov 19, 2004

09854419 (B.P.A.I. Nov. 19, 2004)

1We note that appellants’ brief repeatedly refers to the binder
component as being composed of a “polyether” urethane. We presume
that appellants meant to refer to “polyester” urethanes as recited in
the claims, and that the references to polyether urethanes were made
in error.
The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte THOMAS J. MORAVEC, MARTIN L. HAGE,
and
EDWARD A. TRAVNICEK
_____________
Appeal No. 2004-2352
Application No. 09/854,419
______________
ON BRIEF
_______________
Before CAROFF, GARRIS, and OWENS, Administrative Patent Judges.
CAROFF, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner’s final
rejection of claims 1, 3-10, 13-17 and 19.
The appealed claims relate to a multilayer photochromic
element which includes a photochromic layer having a polyester
urethane binder component.1
Appeal No. 2004-2352
Application No. 09/854,419
2
Appellants stipulate on page 9 of their brief that all of
the appealed claims stand or fall with the patentability of claim
1. Accordingly, we shall limit our consideration to claim
1 which reads as follows:
1. A laminable photochromic element comprising a
photochromic layer comprising a polyester urethane binder
and a photochromic compound, the photochromic layer adhered
to one surface of a polymeric layer comprising a
polycarbonate resin or a polysulfone resin, wherein the
photochromic layer is sandwiched between two polymeric
layers, each of the two polymeric layers comprising a
polymer selected from the group consisting of polycarbonate
and polysulfone resins.
The prior art references relied upon by the examiner are:
Bhalakia et al. (Bhalakia) 5,757,459 May 26, 1998
Ormsby et al. (Ormsby) 4,889,413 Dec. 26, 1989
Rosthauser et al. (Rosthauser) 6,107,395 Aug. 22, 2000
Additionally, the following reference has been cited by the
appellants:
Bowles et al. (Bowles) 6,187,444 B1 Feb. 13, 2001
All of the appealed claims stand rejected under 35 U.S.C.
§ 103 for obviousness in view of Bhalakia taken in combination
with either Ormsby or Rosthauser.
We have carefully considered the issues in this case in
light of the evidentiary record and the opposing positions taken
by the appellants and the examiner on appeal. Having done so, we
conclude that the examiner has established a prima facie case of
Appeal No. 2004-2352
Application No. 09/854,419
3
obviousness which is not outweighed by the evidence of
nonobviousness adduced by the appellants. Accordingly, we shall
affirm the rejections at issue.
Since we are in substantial agreement with the examiner’s
position, as set forth in the examiner’s answer, we adopt that
position as our own. Indeed, the answer includes an
exceptionally thorough and cogent analysis and treatment of the
issues on appeal. For that reason, we offer the following
remarks for purposes of emphasis.
As the examiner indicates, Ormsby and Rosthauser evidence
the conventionality of using polyester urethanes as the binder
component for photochromic compounds used, as in Bhalakia, in
multilayer optical elements to form ophthalmic lenses. Ormsby
even suggests that polyurethane binders can, in general, be
expected to provide enhanced fatigue resistance to photochromic
articles (Ormsby: col. 2, ll. 10-17). Thus, the obviousness of
using a polyester urethane as the binder in the photochromic
layer of Bhalakia is manifest.
With regard to the prima facie case of obviousness, we are
mindful that the appellants have cited Bowles for the proposition
that problems associated with the application of polarizing
layers to a lens blank do not obtain when the focus is upon
Appeal No. 2004-2352
Application No. 09/854,419
4
application of photochromic layers. However, we agree with the
examiner that the collective teachings of the references applied
against appellants’ claims suggest a “laminable” photochromic
element, as claimed. Therefore, whatever problems may exist when
applying a polarizing layer are of no moment when considering the
application of a photochromic layer.
Appellants rely upon the comparative data presented on pages
21-24 of their specification to demonstrate the superior
performance obtained by using a polyester urethane as a binder
component for a photochromic material as compared to use of a
polyether urethane. In our opinion, the evidence relied upon by
appellants does not overcome the prima facie case of obviousness
for the following reasons:
First of all, the appellants do not aver, nor have they
otherwise established, that the results they have presented in
their specification would have been unexpected. Attorney
argument to that effect in the brief is no substitute for
objective evidence lacking in the record.
Second, we agree with the examiner that the evidence relied
upon by the appellants is not commensurate with their claims
which are of broader scope. In this regard, we note that the
comparative testing conducted by the appellants apparently
Appeal No. 2004-2352
Application No. 09/854,419
5
involved a comparison between a single polyester urethane and a
single polyether urethane; whereas claim 1 is not limited to any
particular polyester urethane.
Moreover, all of appellants’ data relate to a single mixture
of two photochromic dyes (CR49 and CR59); whereas appellants’
claims are not limited to any particular photochromic compound or
mixture. In this regard, we note that there are apparently a
wide variety of known photochromic compounds, both organic and
inorganic (Bhalakia: col. 7, ll. 52-67; instant specification:
page 3, ll. 1-4).
Additionally, besides the fact that appellants’ data is
limited to the testing of just one polyester and one polyether
urethane, appellants have not identified the tested polymers in
terms of their chemical structure. Thus, it cannot be determined
from the data presented whether the tested polyester and
polyether urethane are comparable in terms of molecular weight,
functional group content, and extent of crosslinking. Also, it
is not clear whether the tested polyester and polyether urethane
are comparable to those identified in Ormsby or Rosthauser.
Appeal No. 2004-2352
Application No. 09/854,419
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For the foregoing reasons, and for the reasons set forth in
the examiner’s answer, the decision of the examiner is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
MARC L. CAROFF )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
BRADLEY R. GARRIS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
TERRY J. OWENS )
Administrative Patent Judge )
MLC/hh
Appeal No. 2004-2352
Application No. 09/854,419
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