Ex Parte Rosen et al

Patent Trial and Appeal Board

Feb 27, 2017

12409700 (P.T.A.B. Feb. 27, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/409,700 03/24/2009 David William Rosen PAT052435-US -NP 1887
31781 7590 03/01/2017
ALCON RESEARCH, LTD.
PATENT DEPARTMENT
11460 JOHNS CREEK PARKWAY
JOHNS CREEK, GA 30097-1556
EXAMINER
SMITH, JEREMIAH R
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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):
patent, docketing @ alcon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID WILLIAM ROSEN, SCOTT JOHNSTON,
AMEYA S. LIMA YE, ROBERT E. SCHWERZEL, and
ALLEN GILLIARD1
Appeal 2015-005588
Application 12/409,700
Technology Center 1700
Before CATHERINE Q. TIMM, ROMULO H. DELMENDO, and
MICHAEL G. McMANUS, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL2
STATEMENT OF CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner’s decision to reject claims 1, 2, 5—7, 9, and 10 under 35 U.S.C. §
1 Appellants identify the real party in interest as Novartis AG and Georgia
Tech Research Corporation. Br. 3.
2 In our opinion below, we reference the Specification filed March 24, 2009
(Spec.), Final Office Action mailed March 12, 2014 (Final), the Appeal
Brief filed Nov. 17, 2014 (Br.), and the Examiner’s Answer mailed Feb. 26,
2015 (Ans.).
Appeal 2015-005588
Application 12/409,700
103(a) as obvious over the combination of Widman3 and Andino4 as
evidenced by Mandler5 and Travnicek6 and claim 8 over the combination of
Widman, Andino, and Suleski.7 We have jurisdiction under
35 U.S.C. § 6(b).
For the reasons stated in the Answer, we AFFIRM. We add the
following primarily for emphasis.
The claims are directed to a method for making a contact lens using
stereolithography. See, e.g., claim 1. Appellants and the Examiner agree
that Widman teaches a stereolithographic process to make a “Lens
Precursor.” Compare Br. 5 with Ans. 9. As the Examiner points out,
Widman’s Lens Precursor is subsequently hardened to form a contact lens.
Ans. 9. The issue on appeal is whether Widman’s method of forming a
contact lens is a method meeting the requirements of claim 1.8 Claim 1 is
reproduced below with the portions most relevant to the issue highlighted:
1. A method for manufacturing a contact lens using
stereolithography, the method comprising'.
introducing a volume of essentially solvent-free
photocurable material into a container;
wherein said container comprises a male mold and no
female mold, said male mold having a male mold surface, and
3 Widman et al., US 2009/0051059 Al, published Feb. 26, 2009..
4 Andino et al., US 2004/0046287 Al, published Mar. 11, 2004.
5 Mandler et al., US 2006/0073771 Al, published Apr. 6, 2006.
6 Travnicek, US 4,165,158, issued Aug. 21, 1979.
7 Suleski et al., US 2002/0146627 Al, published Oct. 10, 2002.
8 Appellants do not argue any claim apart from the others, nor do they argue
the rejection of claim 8 separately. Thus, it will suffice for us to address the
rejection of claim 1.
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Appeal 2015-005588
Application 12/409,700
said male mold surface being immersed in said photocurable
material;
creating a digital 3-D mathematical model defining
corrective needs of an eye; and;
projecting programmed patterns of UV light through said
male mold via a pattern generator;
wherein said programmed patterns of UV light cure said
photocurable material into a contact lens shape defined by said
male mold surface and said digital model, to manufacture said
contact lens in final form without requirement of additional
finishing work.
Br. 8 (emphasis added).
OPINION
Widman’s Figure 1 depicts a process flow chart illustrating some
embodiments of Widman’s method. Widman 127. As acknowledged by
Appellants, “as a result of the lithography process (represented by box 110)
there is then formed the Lens Precursor.” Br. 5; see also Widman 1163. In
Figure 1, the Lens Precursor is labeled 160.
The Lens Precursor includes a Lens Precursor Form and a Fluent Lens
Reactive Mixture. Widman 1 60. Figure 17 depicts the Lens Precursor,
shown in a schematic representation at 1700 with Lens Precursor Form 1740
and Fluent Lens Reactive Mixture 1710. Lens Precursor Form 1740 is solid,
while Fluent Lens Reactive Mixture 1710 remains fluent after
stereolithographic processing because it is not yet cured past the gel point.
Widman 11 58, 62, 190, 191.
The Lens Precursor 160 undergoes Lens Precursor processing (130)
and post-processing (140). Widman 1163. Lens Precursor processing (130)
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Appeal 2015-005588
Application 12/409,700
may include removal of fluent material (131), but this step may be bypassed
as shown by the dashed arrow in Figure 1. Widman 1195.
Lens Precursor processing (130) may also include stabilization (132)
and fixation (133). Widman Fig. 1. In a preferred embodiment, stabilization
involves isolating the Lens Precursor 1700 from vibrations or other
movements so that gravity allows the fluent surface of Fluent Lens Reactive
Mixture 1710 to stabilize. Widman H 134, 135; Fig. 17. The stabilized
Lens Precursor is then irradiated with actinic radiation to fix the Lens
Precursor into a formed ophthalmic lens in the fixation step (133). Widman
1136.
Widman also discloses alternative embodiments that bypass the
stabilization step. Widman 1139. In these embodiments, fluent material is
washed off and the Lens Precursor Form is directly fixed into the lens by
irradiating in the fixation step without any stabilization step. Thus, the Lens
Precursor Form that is formed by stereolithography has the shape of the final
product lens. Specifically, Widman discloses:
By way of example, some alternative embodiments for
processing in the fixing apparatus may include a Lens
Precursor Form where fluent material may have been washed
off in a washing system. As this Lens Precursor Form in a fixed
form may include a lens of certain characteristics in its own
right, it is within the scope of the invention to anticipate
embodiments that involve the use of the fixing apparatus in a
manner that does not require the stabilization apparatus per se.
In a more general sense, the invention may anticipate numerous
embodiments of materials and forms where the fixing apparatus
may fix materials that do not require a previous flowing of a
fluent material on the surface to be fixed. By way of example, a
Lens Precursor Form that has been formed with the Voxel-
based lithographic optical system and has Fluent Lens Reactive
Mixture 1710 washed off may still include an embodiment
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Appeal 2015-005588
Application 12/409,700
where the fixing apparatus is capable of fixing the Lens
Precursor into a lens.
Widman 1139 (emphasis added). In the embodiments where the Lens
Precursor 1700 has the same basic shape as the ultimately formed
ophthalmic lens, the programmed patterns of UV light cure the photocurable
material of Widman into a contact lens shape as required by claim 1.
Appellants contend that Widman’s Lens Precursor is not a contact
lens. Br. 5. But the Examiner does not find that the Lens Precursor is a
contact lens. Instead, the Examiner determines that claim 1 is open to the
use of the additional washing, fixation (133), release cleansing, hydration
(141), and package, sterilization (142) steps Widman discloses as part of the
process of forming ophthalmic lens 170 depicted in Figure 1. Final 3—5;
Ans. 2—6, 9—10. The Examiner finds that the additional steps do not amount
to the types of “additional finishing work” excluded by claim 1 because
these steps to do not reshape the Lens Precursor.
The evidence supports the Examiner’s claim interpretation. The
Examiner provides a specific interpretation of “additional finishing work”
well-supported by the evidence. Final 5; Ans. 9—10. The Examiner
determines “additional finishing work” would have been interpreted to mean
“touch-up type surface reshaping.” Final 4—5. As explained by the
Examiner, this interpretation is consistent with the meaning conveyed by
Appellants’ Specification, and with the meaning of the term in Travnicek
and Mandler. Final 5; Ans. 5; see Spec. 14 (explaining that in the prior art
casting process the cavity between the male and female mold creates a
contact lens in final form “with no additional finishing work on the surface
of the lens or the edges of the lens.”); Travnicek col. 4,11. 3—8, 40—50
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Appeal 2015-005588
Application 12/409,700
(explaining that “FIG. 21 is a typical prior art configuration requiring edge
finishing, i.e. reshaping by grinding, polishing and/or painting as illustrated
in one or more of FIGS. 22-26” where painting is a method of smooth
surfacing by applying a covering layer and curing it); Mandler 1295
(distinguishing smoothing and polishing to obtain the finished surface of the
convex front face of the lens from cleaning using standardized washing
frames.). Appellants do not point to any persuasive countervailing evidence.
A preponderance of the evidence supports the Examiner’s interpretation of
“additional finishing work.”
The Examiner finds that the fixing or washing steps Widman discloses
in paragraph 139 are not additional finishing steps. Final 4—5. A
preponderance of the evidence supports the Examiner’s finding. Washing
merely cleans. Fixing merely hardens. Appellants do not present any
persuasive evidence that the types of reshaping that are ordinarily considered
finishing work take place during fixing and washing.
CONCLUSION
We sustain the Examiner’s rejections.
DECISION
The Examiner’s decision is affirmed.
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)(1).
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Appeal 2015-005588
Application 12/409,700
AFFIRMED
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