Ex Parte Newman

Board of Patent Appeals and Interferences

Mar 25, 2009

11404200 (B.P.A.I. Mar. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte STEPHEN D. NEWMAN
__________

Appeal 2008-59221
Application 11/404,200
Technology Center 3700
__________

Decided:2 March 25, 2009
__________

Before ERIC GRIMES, MELANIE L. McCOLLUM, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL

1 Oral Hearing held March 17, 2009.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-5922
Application 11/404,200

This is an appeal under 35 U.S.C. § 134 involving claims to a contact
lens package. The Examiner has rejected the claims as anticipated or
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.
STATEMENT OF THE CASE
The Specification states that “[c]onventional contact lens packages are
typically stiff and preformed with a profiled recess to house the lens therein.
The preformed recess in the known packages is intended to ensure that the
lens shape is maintained and is not deformed by the package.”
(Spec. ¶ [0012].) The Specification discloses a contact lens package that
“does not maintain the lens in an equilibrated position, but instead holds the
lens in a flattened or compressed state” (id.).
Claims 1, 2, 13, 23, 40, 197, and 199-207 are pending and on appeal.
We will focus on claims 1 and 40, which read as follows:
1. A contact lens package manufactured with a contact lens
therein, wherein the contact lens package deforms the contact lens.
40. The package of claim 1, wherein said deformed contact lens is
compressed within said contact lens package.
Claims 1 and 40 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Cummings (US 6,138,312, Oct. 31, 2000) or under 35 U.S.C.
§ 103(a) as obvious over Cummings in view of Yavitz (US 6,364,098 B2,
Apr. 2, 2002) (Ans. 4).
Claims 1, 2, 13, 23, 40, 197, 206, and 207 stand rejected under 35
U.S.C. § 102(b) as anticipated by Skinner (US 3,369,656, Feb. 20, 1968) or
under 35 U.S.C. § 103(a) as obvious over Skinner in view of Yavitz
(Ans. 5).
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Claim 199 stands rejected under 35 U.S.C. § 103(a) as obvious over
Skinner in view of Official Notice (Ans. 5).
Claims 200-205 stand rejected under 35 U.S.C. § 103(a) as obvious
over Skinner in view of Martin (US 5,620,087, Apr. 15, 1997) (Ans. 6).
PRINCIPLES OF LAW
“Inherency . . . may not be established by probabilities or possibilities.
The mere fact that a certain thing may result from a given set of
circumstances is not sufficient.” In re Oelrich, 666 F.2d 578, 581 (CCPA
1981) (quoting Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939)).
However, it
is elementary that the mere recitation of a newly discovered
function or property, inherently possessed by things in the prior
art, does not cause a claim drawn to those things to distinguish
over the prior art. Additionally, where the Patent Office has
reason to believe that a functional limitation asserted to be
critical for establishing novelty in the claimed subject matter
may, in fact, be an inherent characteristic of the prior art, it
possesses the authority to require the applicant to prove that the
subject matter shown to be in the prior art does not possess the
characteristic relied on.
In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977) (quoting In re Swinehart,
439 F.2d 210, 212-13 (CCPA 1971)). “Attorney’s argument in a brief
cannot take the place of evidence.” In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974).
CUMMINGS
The Examiner relies on Cummings for disclosing “a contact lens
package (10, 12, 14) with a contact lens (48) therein[, t]he package
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Application 11/404,200

comprising two chambers (16, 18) with each chamber having a sponge (34,
38, 40) therein” (Ans. 4). The Examiner finds:
Cummings further discloses that when the first and second body
sections come together, the sponges are slightly compressed to
provide a conforming contiguous contact between the surfaces
of the contact lens and the respective contacting reactive layer
surfaces (38). Therefore, the contact lens must be deformed
when the first and second body sections come together.
(Id. at 7.)
The Examiner also finds that “Cummings discloses a method of using
the package (Figures 5-16) which is considered equivalent to the term
manufactured as claimed” (id. at 4). In the alternative, the Examiner relies
on Yavitz for showing “a contact lens package (10) manufactured with a
contact lens (22) therein” (id.). The Examiner finds:
To the extent that Cummings fails to show the package being
manufactured with the contact lens, . . . [i]t would have been
obvious to one having ordinary skill in the art in view of Yavitz
to modify the package of Cummings so the package is
manufactured with the contact lens to keep the contact lens in a
moist and hydrated condition.
(Id.)
Appellant argues that Cummings does not teach or suggest that the
contact lens package deforms, and in particular compresses, the contact lens
(App. Br. 7-9; Reply Br. 2-6).
Issues
Did the Examiner err in concluding that Cummings teaches or
suggests that the contact lens package deforms, and in particular compresses,
the contact lens?
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Application 11/404,200

Findings of Fact
1. Cummings states that “soft contact lenses while being worn
may collect contaminants from the eye and its environment” (Cummings,
col. 1, ll. 40-41).
2. Cummings also states that “various apparatus and methods have
been developed for cleaning and hydrating soft contact lenses” (id. at col. 1,
ll. 57-58).
3. Cummings discloses “a contact lens cleaning apparatus for
cleaning contact lenses” (id. at col. 2, ll. 45-46).
4. Cummings Figure 4 is reproduced below:

Figure 4 depicts a contact lens treatment apparatus “showing the lens
containers thereof open for receiving a pair of conventional soft contact
lenses for treatment” (id. at col. 3, ll. 24-27). Figures 5A-5C depict cross-
sectional views of the contact lens treatment apparatus in Figure 4 (id. at
col. 3, ll. 28-34).
5. Cummings states:
As shown in FIG. 4, a sponge 34 is positioned in chamber 16,
preferably with an exposed surface 36 projecting through the
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open end of the chamber. A thin layer of reactive material 38
covers surface 36 to provide for cleaning one of the optical
surfaces of the lens. Cooperating sponge 40 is positioned in
chamber 18, preferably in a recessed manner leaving an
exposed portion 42 of chamber 18. A thin layer of reactive
material 38 similarly covers sponge 40 to provide for cleaning
the other optical surface of the lens.
(Id. at col. 4, ll. 24-32.)
6. Cummings also states:
Referring to FIGS. 5A-5C, sponge 34 is seen to comprise a
relatively thick and porous material dimensioned to fit snugly
within chamber 16 and formed with a generally concave [sic,
convex] surface over which a thin reactive layer of a reactive
material 38 is provided to form a concave [sic, convex] lens
engaging surface. Similarly, sponge 40 is seen to comprise a
relatively thick and porous material dimensioned to fit snugly
within chamber 18 and formed with a generally convex [sic,
concave] surface over which a thin reactive layer of a reactive
material 38 is provided to form a cooperating convex [sic,
concave] lens engaging surface.
(Id. at col. 4, ll. 44-54.)
7. In addition, Cummings states:
During use, the user removes his contact lenses 48 and places
them on the reactive layer 38 of the first body section 30
(FIG. 5A). The second body section 28 is then folded over the
first body section 30 along hinged portion 32 as shown in
FIG. 5B. As shown in FIG. 5C, when the apparatus 10 is
closed the reactive surfaces 38 of the first and second body
sections are brought into contiguous engagement of the optical
surfaces of the lens 48. The exposed surface 36 of sponge 34 is
preferably dimensioned slightly oversized with respect to the
exposed portion 42 of chamber 18, so that as the second and
first body sections come together the layers are slightly
compressed to provide a conforming contiguous contact
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Application 11/404,200

between the optical surfaces of the lenses and the respective
contacting reactive layer surfaces.
(Id. at col. 4, l. 55, to col. 5, l. 1.)
8. Cummings also states:
[S]ponges 34 and 40 are preferably moistened with an
ophthalmologically compatible solution. When contact lens 48
is inserted in the apparatus for cleaning . . . , and the apparatus
is subsequently folded over by the user . . . , the accompanying
compression of sponges 34 and 40 causes solution absorbed
therein to flow around the ends of the reactive layers 38 and
around over and under lens 48, providing a fluid layer between
the optical surfaces of the lenses and the contiguous contacting
surfaces of reactive layers 38, respectively.
(Id. at col. 5, ll. 5-15.)
9. In addition, Cummings states that, for optimum migration of
contaminants from the lens to the reactive layer, “it is desirable that the
reactive layer conforms to the surface of the lens. To this end reactive
layers 38 are preferably thin and flexible, and deformable by their associated
compressible sponge layers 34 and 40 to the optical surfaces of the lens.”
(Id. at col. 5, ll. 33-37.) “The reactive layer may be formed from a highly
porous non-abrasive relatively polymeric material” (id. at col. 5, ll. 66-67).
10. Cummings also states that the “compressible sponge layers 34
and 40 are preferably formed from a highly porous absorbent material which
accepts and retains moisture within its porous structure” (id. at col. 5, ll. 53-
55). “Inert foraminous materials such as reticulated foams and papers are
preferred materials for this purpose” (id. at col. 5, ll. 57-59).
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Analysis
As depicted in Figure 4, sponge 34 has a convex surface (Findings of
Fact (FF) 4 & 6). However, at least along the length of the rectangular
sponge, this surface would not have the same shape as the smaller circular
concave surface of a soft contact lens. Therefore, we agree that the
Examiner has set forth a prima facie case that, when the apparatus is closed,
the soft contact lens must be deformed (Ans. 7).
Appellant argues, however, that “Figs. 5 and 6 of Cummings do not
show any deformation of the lens. Moreover, the Examiner is obviously
unable to point to any portion of Cummings in which Cummings actually
teaches or suggests that the lens is deformed.” (App. Br. 7.) Appellant also
argues that “it is incorrect that the sponges of Cummings are inherently
deforming the contact lens. . . . The Office Action utterly fails to provide any
reasonable basis for concluding that the sponges and packaging taught by
Cummings inherently deform the packaged lens as claimed.” (Id. at 8.)
We are not persuaded. We recognize that Figures 5 and 6 do not
clearly show any deformation and that the Examiner has not pointed to any
specific teaching in Cummings that the contact lens is deformed. However,
due to the shape of the sponges and the flexibility of soft contact lenses, we
agree that the Examiner has set forth a prima facie case that lens deformation
would be inherent.
[W]here the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.
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In re Best, 562 F.2d at 1254-55.
In addition, Appellant argues:
[W]hen the sponges of Cummings are positioned with a contact
lens there between, the sponges, and particularly the reactive
layers (38) of the sponges, are compressed and conform to the
uncompressed surface of the contact lens. Particularly, as
illustrated in FIGS. 5C and 13 of Cummings, the shape of the
lens is maintained, while the compressible sponge layers,
including the reactive layers, are compressed. In fact, the
Specification of Cummings[, particularly at column 4, line 64,
to column 5, line 1, column 5, lines 33-36, and column 5,
line 53,] goes to great length to describe how the sponges are
compressed and conform to the lens, rather than deforming the
lens.
(Reply Br. 2-3.)
We are not persuaded. As noted by Appellant (Reply Br. 3),
Cummings states the sponges are compressible (FF 10). However, the
sponges are compressed because the “exposed surface 36 of sponge 34 is
preferably dimensioned slightly oversized with respect to the exposed
portion 42 of chamber 18” (FF 7), which, upon closing the apparatus, would
cause the sponges to compress each other. Cummings does not state that the
soft contact lens causes the sponges to be compressed into the shape of the
soft contact lens.
As additionally noted by Appellant (Reply Br. 3), Cummings states
that “it is desirable that the reactive layer conforms to the surface of the lens.
To this end reactive layers 38 are preferably thin and flexible, and
deformable by their associated compressible sponge layers 34 and 40 to the
optical surfaces of the lens.” (FF 9 (emphasis added).) Cummings does not,
however, state that the reactive layer is deformed by the soft contact lens or
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that the soft contact lens is not also deformed. Thus, Appellant has not
provided persuasive evidence that the soft contact lens would not be
deformed. “Attorney’s argument in a brief cannot take the place of
evidence.” In re Pearson, 494 F.2d at 1405.
With regard to claim 40, Appellant argues that “Cummings does not
anywhere teach or suggest that the lens is . . . compressed by the package”
(App. Br. 9). We are unpersuaded. Instead, due to shape of Cummings’
sponges 34 and 40 and the flexibility of soft contact lenses, we conclude that
the Examiner has set forth a prima facie case that the lens would be
compressed by Cummings’ apparatus. In addition, Appellant has not
provided persuasive evidence that the soft contact lens would not be
compressed.
Conclusion
Appellant has not shown that the Examiner erred in concluding that
Cummings teaches or suggests that the contact lens package deforms, and in
particular compresses, the contact lens. We therefore affirm the rejection of
claims 1 and 40 over Cummings, alone or in view of Yavitz.
SKINNER
The Examiner relies on Skinner for disclosing “a contact lens package
(Figure 9) with a contact lens (25) therein[, t]he package comprising two flat
sheets (14, 15) with absorbent pads (16c, 16d) to form a chamber for holding
the contact lens” (Ans. 5). The Examiner argues that “the contact lens is
deformed to some extent” (id. at 9).
The Examiner relies on Yavitz as discussed above (id. at 5). The
Examiner finds:
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To the extent that Skinner fails to show the package being
manufactured with the contact lens, . . . [i]t would have been
obvious to one having ordinary skill in the art in view of Yavitz
to modify the package of Skinner so the package is
manufactured with the contact lens to keep the contact lens in a
moist and hydrated condition.
(Id.) The Examiner does not rely on Yavitz for disclosing deformation of
the contact lens (id. at 5 & 9).
Appellant argues that “the Skinner reference is dated January 3, 1966.
As one of skill in the art would know, contact lens[es] at that time were hard
lenses exclusively.” (App. Br. 10.) In particular, Appellant argues:
Materials for use in soft contact lenses were being developed
prior to the date of the Skinner reference, but the first
commercially available soft contact lenses were not fully
developed and commercially introduced until 1971 by Bausch
& Lomb, five years after the filing of Skinner. Thus, it is
inescapable that the teaching of Skinner only contemplated
traditional, hard contact lenses.
(Reply Br. 7.)
In addition, Appellant argues “it would be impossible for one of skill
in the art to conclude that the Skinner reference could teach or suggest
packaging that deforms a hard contact lens. Deforming a hard contact lens
means breaking the lens.” (App. Br. 10.)
Issue
Did the Examiner err in concluding that Skinner teaches or suggests
that the contact lens package deforms the contact lens?
Findings of Fact
11. Skinner discloses a “lens container utilized for storing contact
lenses of the type worn adjacent the pupil of the human eyeball. The
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container is fabricated with a pair of external, flexible, liquid impervious
sheets, and a soft internal fabric soaked with a solution suitable for treating
contact lenses.” (Skinner, col. 1, ll. 12-18.)
12. Skinner discloses that “the container [is] flat so that it is easily
and conveniently stored in a pocket” (id. at col. 1, ll. 48-50).
13. Skinner Figure 9 is reproduced below:

Figure 9 depicts an “arrangement where two [absorbent] pads 16c and 16d
are enclosed in the container” and the contact “lens 25 is placed between the
pads which offers the lens a maximum amount of protection” (id. at col. 4,
ll. 50-56).
14. Skinner does not state that the contact lens is a soft contact lens.
15. Skinner was filed on January 3, 1966, and issued on
February 20, 1968.
16. The Examiner has not provided evidence that soft contact
lenses were available at the time Skinner was filed.
Analysis
Claim 1 recites that the contact lens package deforms the contact lens.
We agree with Appellant that the Examiner has not set forth a prima facie
case that Skinner teaches or suggests a package that deforms a contact lens.
The Examiner argues that “Skinner does not disclose the contact lens
package is used for a hard contact lens” (Ans. 9). Nevertheless, the
Examiner has not set forth a prima facie case that Skinner teaches or
suggests inserting a soft contact lens in its container. “‘Inherency . . . may
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Application 11/404,200

not be established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not sufficient.’”
In re Oelrich, 666 F.2d at 581.
In addition, we agree with Appellant that the Examiner has not set
forth a prima facie case that a hard contact lens would be deformed by
Skinner’s container. In particular, the Examiner has not adequately
explained why inserting a hard contact lens between two absorbent pads,
which are between flexible sheets, would cause a relatively rigid hard
contact lens to deform.
The Examiner argues that, in Skinner’s Figure 9, “the distance
between the two absorbent pads is less than the height of the contact lens
which indicates the contact lens is deformed to some extent” (Ans. 9). The
Examiner also argues that “if deforming a hard contact lens means breaking
the lens as argued by the Appellant then Skinner would not disclose the
contact lens package [is] formed from the flexible materials and can be
conveniently stored in a pocket of a user” (id.). We do not agree that these
arguments demonstrate that the contact lens is deformed.
In particular, we agree that the distance between the two absorbent
pads in Figure 9 is, at least in places, less than the height of the contact lens
(FF 13). However, we do not agree that this indicates that the contact lens is
deformed. In fact, Figure 9 depicts the contact lens being thicker than the
shortest distance between the absorbent pads (FF 13), suggesting that either
the absorbent pads are compressed or, although this is not shown in Figure 9,
the overall thickness of the container is thicker at the site of the contact lens.
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In addition, we agree that Skinner discloses that the container is
formed of flexible materials and can be stored in the pocket of a user (FF 11-
12). However, we do not agree that this indicates that the contact lens is
deformed. First, Skinner does not appear to explicitly teach that the
container should be stored in a user’s pocket after a contact lens is inserted.
In addition, even though Skinner’s container is flexible, the Examiner has
not shown that putting a contact lens container containing a hard contact lens
in a pocket would cause the contact lens to be deformed (or broken).
Conclusion
The Examiner has not set forth a prima facie case that Skinner’s
contact lens package deforms the contact lens. We therefore reverse the
rejections over Skinner, alone or in view of Yavitz, of claim 1 and of
claims 2, 13, 23, 40, 197, 206, and 207, which depend from claim 1.
Claims 199-205 are rejected as obvious over Skinner in view of either
Official Notice or Martin. Claims 199-205 depend from claim 1. The
Examiner relies on Official Notice and Martin to disclose features in
dependent claims, but does not rely on either Official Notice or Martin to
make up for the deficiencies in Skinner discussed above (Ans. 5-6 & 10-11).
Thus, we conclude that the Examiner has not set forth a prima facie case that
claims 199-205 would have been obvious. We therefore reverse the
obviousness rejections of these claims.
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Application 11/404,200

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-IN-PART

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