Ex Parte Peck et al

Patent Trials and Appeals Board

May 23, 2019

14594558 - (D) (P.T.A.B. May. 23, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/594,558 01/12/2015
27777 7590 05/28/2019
JOSEPH F. SHIRTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
FIRST NAMED INVENTOR
James M. Peck
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
VTN0632USCNT1 4792
EXAMINER
V ARGOT, MATHIEU D
ART UNIT PAPER NUMBER
1742
NOTIFICATION DATE DELIVERY MODE
05/28/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
jnjuspatent@corus.jnj.com
lhowd@its.jnj.com
pairjnj@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES M. PECK, DHARMESH DUBEY,
MICHAEL G. TOKARSKI, QIANG ZHANG, YUFU LI, and
STEVEN C. ARNOLD
Appeal2018-006125
Application 14/594,558
Technology Center 1700
Before KAREN M. HASTINGS, RAEL YNN P. GUEST, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 27, 32-36, and 39 under 35 U.S.C. § 103(a) as unpatentable over
the combined prior art of Alvarez (US 2003/0130144 Al, pub. July 10,
2003), Kindt-Larsen (US 5,849,209, issued Dec. 15, 1998), and Lipscomb
(US 2002/0046958 Al, pub. April 25, 2002). We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 Appellant is the Applicant, Johnson & Johnson Vision Care, Inc., which is
also stated to be the real party in interest (Appeal Br. 1 ).
Appeal2018-006125
Application 14/594,558
CLAIMED SUBJECT MATTER
Claim 27, reproduced below, is illustrative of the claimed subject
matter:
27. A method of reducing the adherence of a soft contact lens made from
silicone elastomers or silicone hydrogels to its consumer packaging,
compnsmg:
storing said soft contact lens in a solution in a package comprising a
molded base, wherein said molded base comprises an additive contained in
said molded base in a ratio of about 0.25 to about 10 percent by weight,
wherein said additive is PVP;
and further comprising a cavity formed in said molded base wherein
said cavity comprises an inner surface, wherein said inner surface has a
roughness capable of reducing the adhesion of the lens to the inner surface
as compared to a smooth inner surface.
Claims Appendix (Appeal Br. 5).
OPINION
We review the appealed § 103 rejection for error based upon the
issues identified by Appellant and in light of the arguments and evidence
produced thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections")). After having
considered the evidence presented in this Appeal and each of Appellant's
contentions, we are not persuaded that Appellant identifies reversible error,
and we affirm the Examiner's§ 103 rejection for the reasons expressed in
the Final Office Action and the Answer.
We add the following primarily for emphasis.
2
Appeal2018-006125
Application 14/594,558
Appellant argues that the Examiner reversibly erred in rejecting claim
272 by not providing a motivation, or rational basis, to use a release additive
in Alvarez/Lipscomb's packaging material, as suggested by Kindt-Larsen's
use of a release additive in a mold material (Appeal Br. 3; Reply Br. 2).
According to Appellant, Kindt-Larsen is directed to a manufacturing mold
used to make contact lenses versus a consumer package for contact lenses, as
disclosed by Alvarez/Lipscomb and as claimed by Appellant, and one skilled
in the art would not combine these teachings because a manufacturing mold
is not the same as a package (Appeal Br. 3, 4; Reply Br. 2). This argument
fails to show reversible error in the Examiner's rejection for reasons well
presented by the Examiner (e.g., Ans. 5, 6).
Appellant's argument may be construed as an argument that Kindt-
Larsen is directed to non-analogous art. In KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398, 419-20 (2007), the Supreme Court stated that:
In determining whether the subject matter of a ... claim
is obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. What matters is the objective
reach of the claim. If the claim extends to what is obvious, it is
... [ unpatentable] under § 103. One of the ways in which a
patent's subject matter can be proved obvious is by noting that
there existed at the time of [the] invention a known problem for
which there was an obvious solution encompassed by the
patent's claims.
Our reviewing court followed this by stating:
The Supreme Court's decision in KSR . .. directs us to construe
the scope of analogous art broadly, stating that 'familiar items
2 Appellant argues the claims as a group and does not present separate
arguments for any claim. See, e.g., Appeal Br. 3, 4. All the claims,
therefore, stand or fall with claim 27. See 37 C.F.R. § 4I.37(c)(l)(iv)
(2013).
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Appeal2018-006125
Application 14/594,558
may have obvious uses beyond their primary purposes, and a
person of ordinary skill often will be able to fit the teachings of
multiple patents together like pieces of a puzzle.'
Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (quoting
KSR, 550 U.S. at 420). See also, In re Clay, 966 F.2d at 658 (holding that
whether a prior art reference is "analogous" is a question of fact).
In this case, based on the undisputed teachings of the applied prior art,
we are unpersuaded that the Examiner reversibly erred in determining that a
skilled artisan would have combined the concept exemplified in Kindt-
Larsen, that is, including a wetting agent/surfactant in the mold material to
aid in the release of a contact lens from a plastic surface (see Final Act. 3,
Ans. 6), with the Alvarez/Lipscomb's consumer packaging for a contact
lens, for the reasons presented by the Examiner (see generally Ans. and
Final Act.).
Accordingly, Appellant has not shown error in the Examiner's
determination that one of ordinary skill in the art, using no more than
ordinary creativity, would have incorporated the PVP wetting agent used in
the consumer package solution of Alvarez in the consumer packaging mold
of Alvarez/Lipscomb based on the teachings of Kindt-Larsen. See also In re
Fritch, 972 F.2d 1260, 1264---65 (Fed. Cir. 1992) (it is also well settled that a
reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom).
Appellant has also not explained sufficiently why the method recited
in claim 27 is not "more than the predictable use of prior art elements
according to their established functions." KSR, 550 U.S. at 417. As a result,
we sustain the Examiner's rejection of claim 27.
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Appeal2018-006125
Application 14/594,558
Accordingly, we sustain the Examiner's rejection of all the claims on
appeal.
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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