11404200 (B.P.A.I. Jul. 24, 2009)

Ex Parte Newman

Board of Patent Appeals and InterferencesJul 24, 2009

11404200 (B.P.A.I. Jul. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte STEPHEN D. NEWMAN __________ Appeal 2008-5922 Application 11/404,200 Technology Center 3700 __________ Decided:1July 24, 2009 __________ Before ERIC GRIMES, MELANIE L. McCOLLUM, and JEFFREY N. FREDMAN, Administrative Patent Judges. McCOLLUM, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant has requested rehearing on the Decision entered March 25, 2009. This Decision affirmed the rejection of claims 1 and 40 under 35 U.S.C. § 102(b) or § 103(a). We deny the request for rehearing. 1 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 STATEMENT OF THE CASE The Examiner rejected claims 1 and 40 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). In affirming this rejection, we found that the Examiner has set forth a prima facie case that Cummings inherently discloses a package that deforms the contact lens and that Appellant has not provided sufficient evidence to rebut the prima facie case (Decision 8-10). Appellant contends that the Decision erred in construing the prior art and in applying the evidentiary burden (Req. Reh’g 3). ISSUE Has Appellant shown that we misapprehended or overlooked any point in rendering the Decision? ANALYSIS Appellant argues that “the evidence of record clearly demonstrated that the packaging taught by Cummings does not deform the contact lens contained therein” (Req. Reh’g 5). We do not agree. To be clear, our opinion is not that the sponges are not compressed or that the contact lens surfaces are not in conforming contiguous contact with the reactive layers on the sponges. In addition, if a convex sponge is brought together with a flat sponge, which appears to be depicted in Cummings Figures 5A-C,2 we agree that the flat sponge could be 2 We note, however, that the depiction in Figures 5A and B of sponge 40 being flat is inconsistent with the description of sponges 34 and 40 as having cooperating convex and concave surfaces (Cummings, col. 4, ll. 44-54). 2 Appeal 2008-5922 Application 11/404,200 compressed to form a concave surface that would conform to a convex surface of a contact lens, which appears to be depicted in Cummings Figure 5C. However, Cummings Figure 5C depicts a cross-sectional view (Cummings, col. 3, ll. 21-23). It does not depict the shape of the contact lens along the length of sponges 34 and 40. Because sponges 34 and 40 are not convex or concave along their length (Cummings, Fig. 4), it is our position that, due to the shape and flexibility of a soft contact lens, the Examiner has set forth a prima facie case that the soft contact lens would be deformed along the length of sponges 34 and 40, even if the contact lens is not deformed at the cross-section depicted in Cummings Figure 5C. Appellant relies on various disclosures in Cummings to support his position that “the sponges are compressed into the shape of the soft contact lens” (Req. Reh’g 5). We considered these disclosures in rendering our Decision (see, for example, FF 5 & 7-9 of the Decision). However, for the reasons stated in the Decision, we do not agree that these disclosures show that the contact lens has not been deformed. In particular, we do not agree that the disclosure that “it is desirable that the reactive layer conforms to the surface of the lens” (Cummings, col. 5, ll. 32-34) means that the contact lens does not also conform to the shape of the sponges and therefore the reactive layers thereon. In addition, Appellant argues that the evidentiary burden has been misplaced (Req. Reh’g 8). We do not agree. The Federal Circuit has clearly held: [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 3 Appeal 2008-5922 Application 11/404,200 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). In the present case, we believe that the Examiner has set forth an adequate reason to believe that Cummings discloses a device that would inherently deform a soft contact lens. Thus, we do not agree that it is misplacing the evidentiary burden to require Appellant to prove that this device would not necessarily deform a soft contact lens. CONCLUSION Appellant has not shown that we misapprehended or overlooked any point in rendering the Decision. We therefore deny the request for rehearing. REHEARING DENIED Ssc: RADER, FISHMAN & GRAUER PLLC 10653 SOUTH RIVER FRONT PARKWAY SUITE 150 SOUTH JORDAN, UT 84095 4