Ex parte TSAO et al.

Board of Patent Appeals and Interferences

Mar 1, 2000

08258909 (B.P.A.I. Mar. 1, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 38
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte FU-PAO TSAO and ROSALIND DANRIDGE
____________
Appeal No. 1996-2766
Application No. 08/258,909
____________
HEARD: February 22, 2000
____________
Before GARRIS, PAK, and WALTZ, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 15 through 17, 19 through
22 and 24. Claims 18 and 23, the only other claims remaining
in this application, stand objected to as being dependent upon
a rejected base claim but would be allowable if rewritten in
independent form. Therefore, claims 18 and 23 are not
included in this appeal (Brief, page 2, and Answer, page 1).
Appeal No. 1996-2766
Application No. 08/258,909
2
According to appellants, the invention is directed to
compositions and dosage forms for cleaning protein and lipid
deposits from the lens surface of contact lens by providing a
cleaning composition which increases the pH to a basic level
using substantially no protein-digesting enzyme or protein-
dissolving surfactant (Brief, pages 2-3). Claim 15 is
illustrative of the subject matter on appeal and a copy of
this claim is reproduced below:
15. A solid pH-controlled cleaner dosage form, comprising:
a) a tonicity builder comprising a water-soluble salt
compatible with ocular tissue; and
b) a pH regulator selected from the group consisting of
basic acetates, phosphates, borates, nitrates, sulfates,
tartrates, lactates, carbonates, bicarbonates, and mixtures
thereof, whereby dissolution of said pH regulator in an
aqueous environment results in a protein cleaning composition
having a pH of 7.5 to 11.5,
wherein said composition includes substantially no
protein-digesting enzyme and wherein a protein-dissolving
effective amount of surfactant is absent from said
composition.
The examiner has relied upon the following references as
evidence of obviousness:
Fu 4,323,467 Apr. 6, 1982
Davies et al. (Davies) 4,863,627 Sep. 5, 1989
Appeal No. 1996-2766
Application No. 08/258,909
The final rejection of claims 18 and 23 under the first1
paragraph of 35 U.S.C. § 112 has been withdrawn by the
examiner in view of appellants’ response dated Sep. 27, 1995,
Paper No. 27 (see the Advisory Action dated Nov. 14, 1995,
Paper No. 28).
The “instant negative limitation” quoted by the examiner2
is incorrect. The claimed provision reads “wherein a protein-
dissolving effective amount of surfactant is absent from said
composition.” (see claim 15 on appeal).
3
The claims on appeal stand rejected under 35 U.S.C. § 103
as unpatentable over Fu in view of Davies (Answer, page 3). 1
We reverse this rejection for reasons which follow.
OPINION
The examiner finds that Fu discloses a solution for
cleaning a contact lens comprising a tonicity agent, a
viscosity builder, a sequestering agent and water (Answer,
page 3). The examiner further finds that Fu does not disclose
or suggest the inclusion of an enzyme but discloses the
addition of an ethylenediamine surfactant in amounts as little
as 0.01% (Id.). The examiner submits that appellants have not
shown that the range of surfactant taught by Fu (as low as
0.01%) “is not encompassed by the instant negative limitation
‘substantial absence of a surfactantly effective amount of
surfactant.’” (Answer, page 5). The examiner further notes2
Appeal No. 1996-2766
Application No. 08/258,909
4
that the claims are drafted using the term “comprising” which
opens the claimed composition to additional adjuvants, even in
major amounts (Id.).
Appellants argue that the Fu compositions require the
presence of a “protein-dissolving effective amount of
surfactant.” (Brief, page 5). Appellants further argue that
even if Fu and Davies were combined as proposed by the
examiner, the combination would require more than a protein-
dissolving effective amount of surfactant, otherwise the Fu
composition would not effectively perform its cleaning
function (Brief, page 6).
Fu teaches that the “cleaning and wetting functions of
these solutions can be achieved when the surfactant is present
in a non-irritating amount and which is 0.01% to 40% by weight
of the solutions.” (column 4, lines 37-40). Fu also contains
the following disclosure:
Tetronic® polyols disclosed herein as wetting
agents also have utility for removing soilants from
contact lenses. All the solutions described above are
capable of effectively removing proteins, fats,
mucopolysaccharides and other soilants that may
accumulate on lenses during normal wear.
(column 7, lines 46-51).
Appeal No. 1996-2766
Application No. 08/258,909
On this record, there is no allegation or evidence that3
the effective protein-removing by the surfactant of Fu differs
from the “protein-dissolving” by the surfactant as recited in
the claims on appeal.
5
Accordingly, the above quoted disclosure from Fu teaches
that the compositions of this reference contain a protein-
removing effective amount of surfactant. The claims on appeal
require that “a protein-dissolving effective amount of
surfactant is absent” from the claimed composition (see claim
15 on appeal). The examiner, not the appellants, bears the3
initial burden of presenting a prima facie case of
obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992). The examiner has not shown or
established, by evidence or convincing reasoning, why one of
ordinary skill in the art would have excluded the effective
protein-removing amount of surfactant used in the compositions
of Fu.
The examiner notes that the claims are drafted with the
term “comprising” which opens the claim to additional
adjuvants (Answer, page 5). This claim interpretation is not
well taken since the plain meaning of the claims cannot be
altered by the common interpretation of “comprising”, i.e.,
Appeal No. 1996-2766
Application No. 08/258,909
6
the claims require the absence of a protein-dissolving
effective amount of surfactant.
The examiner’s combination of Davies with the primary
reference to Fu does not remedy the deficiency discussed above
as Davies is applied by the examiner for the teaching that
contact lens cleaners are formulated in a solid form for
superior cleaning performance (Answer, pages 4-5). In
addition to the deficiency in Fu discussed above, the examiner
has not provided any reason or suggestion for the proposed
combination of Fu and Davies. Davies discloses a
disinfecting/cleaning composition which contains a hydrogen
peroxide source which would be inactivated by water. Thus the
disinfecting unit form must be a solid (see Davies, column 1,
lines 5-13; column 2, lines 14-18; column 3, lines 9-18;
column 6, lines 10-17). The examiner has not presented
evidence or convincing reasoning of any teaching, suggestion
or motivation to support the proposed combination of Fu and
Davies, considering that the cleaning composition of Fu does
not contain hydrogen peroxide and is in aqueous form. See In
Appeal No. 1996-2766
Application No. 08/258,909
7
re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed.
Cir. 1999).
For the foregoing reasons, we determine that the examiner
has failed to establish a prima facie case of obviousness in
view of the reference evidence. Accordingly, the rejection of
the claims on appeal under 35 U.S.C. § 103 over Fu in view of
Davies is reversed.
The decision of the examiner is reversed.
REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Appeal No. 1996-2766
Application No. 08/258,909
8
Administrative Patent Judge )
lp
Appeal No. 1996-2766
Application No. 08/258,909
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Michael W. Glynn
Novartis Corporation
564 Morris Avenue
Summit NJ 07901
Leticia
Appeal No. 1996-2766
Application No. 08/258,909
APJ WALTZ
APJ PAK
APJ GARRIS
DECISION: REVERSED
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s):
Prepared: October 16, 2000
Draft Final
3 MEM. CONF. Y N
OB/HD GAU
PALM / ACTS 2 / BOOK
DISK (FOIA) / REPORT