Ex Parte Wang et al

Patent Trial and Appeal Board

Jul 26, 2017

14158879 (P.T.A.B. Jul. 26, 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.
14/158,879 01/20/2014 Guigui Wang P10027US-C01(3038-063-02) 1163
81693 7590 07/26/2017
Kilyk & Bowersox, P.L.L.C.
400 Holiday Court
Suite 102
Warrenton, VA 20186
EXAMINER
SALAMON, PETER A
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
07/26/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUIGUI WANG,
YUN ZHANG, YUWEN LIU, YE HONG,
CHARLIE CHEN, and PETER ZHU
Appeal 2016-001340
Application 14/158,879
Technology Center 1700
Before ADRIENE LEPIANE HANLON, GEORGE C. BEST, and
MICHAEL G. McMANUS, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 2, and 4—30 of Application
14/158,879 under 35 U.S.C. § 103(a) as obvious and objected to claim 3.
Final Act. (February 11, 2015). Appellant1 seeks reversal of these rejections
pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
We heard argument in this appeal on July 20, 2017.
For the reasons set forth below, we reverse.
1 The Appellant is Cooper Vision International Holding Co. L.P., which is
identified as the applicant and the real party in interest. Appeal Br. 3.
Appeal 2016-001340
Application 14/158,879
BACKGROUND
The ’879 Application describes polymerizable compositions that can
be used to form hydrogel contact lenses and methods for the manufacture of
such contact lenses. Spec. 17. The polymerizable compositions comprise a
hydrophilic monomer and at least one phosphine-containing compound. Id.
18-
Claim 1 is representative of the ’879 Application’s claims and is
reproduced below:
1. A method of manufacturing a hydrogel contact lens,
comprising:
providing a polymerizable composition comprising
(a) at least one hydrophilic monomer, and
(b) at least one phosphine-containing compound, wherein
the at least one phosphine-containing compound is present in an
unoxidized form at the time it is combined with the at least one
hydrophilic monomer in the polymerizable composition, and
(c) at least one thermal initiator, wherein (b) and (c) are
different from each other; and
(d) thermally curing the polymerizable composition to
form a polymeric lens body.
Appeal Br. 39 (Claims App.) (emphasis added).
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Appeal 2016-001340
Application 14/158,879
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 2, 4—19, and 21—23 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Muller2 as evidenced by Hahn,3 Mendonca,4
and Sobhi.5 Answer 2.
2. Claims 20 and 24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Muller and Morrison,6 as
evidenced by Hahn, Mendonca, and Sobhi. Answer 9.
3. Claims 1, 2, 4—19, 21—27, and 29 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Muller and
Chen7 as evidenced by Hahn, Mendonca, and Sobhi. Answer 12.
4. Claims 20, 24, 28, and 30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Muller, Morrison, and Chen
as evidenced by Hahn, Mendonca, and Sobhi. Answer 15.
2 US 5,939,489, issued August 17, 1999.
3 US 4,113,893, issued September 12, 1978.
4 C.R. Mendonca et al., Two-Photon Absorption Spectrum of the
Photoinitiator Lucirin TPO-L, 90 Appl. Phys. A 633—636 (2008).
5 Hany F. Sobhi et al., Evaluation of Acylphosphine Oxide Polymerization
Initiators Using Differential Scanning Calorimetry, 101 J. Therm. Anal.
Calorim. 1063-69 (2010).
6 US 5,337,888, issued August 16, 1994.
7 US 7,572,841 B2, issued August 11, 2009.
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Appeal 2016-001340
Application 14/158,879
DISCUSSION
For reasons which shall become apparent, we confine our discussion
to the independent claims on appeal, i.e., claims 1, 17, 20, 21, and 24. We
discuss each of the grounds of rejection separately below.
Rejection 1. Independent claims 1, 17, and 21 are subject to this
ground of rejection. Answer 2. Each of these claims contains language
limiting the scope of the claim to a polymerizable composition comprising,
in relevant part, at least one phosphine-containing compound and at least
one thermal polymerization initiator and further specifying that the
phosphine-containing compound and the thermal initiator are different from
each other. See Appeal Br. 39 (Claim 1), 42 (Claim 17), 43^44 (Claim 21).
For the reasons set forth below, we determine that the Examiner has not
demonstrated that Muller describes or suggests the claimed polymerizable
compositions. Thus, we determine that the Examiner has not established a
prima facie case of obviousness. Therefore, we reverse the rejection of
independent claims 1,17, and 21.
In rejecting claims 1,17, and 21, the Examiner stated:
7. ... the Examiner takes the position that it would
be obvious to the skilled practitioner to choose multiple
photoinitiators from the list provided. Additionally, as
evidenced by Hahn, the use of TPP is commonly as an oxygen
scavenger [3: 10-18]. The skilled artisan would be motivated
to use a known oxygen scavenger in addition to a photoinitiator
in the contact lens formulations as it is well known that oxygen
can quench radicals generated by the photoinitiator. This can
lead to overall lowering the extent of conversion of the
photocuring system or leaving the surface of the cured object
tacky if exposed to air during photopolymerization.
8. Furthermore, Muller teaches that if desired, the
crosslinking can also be initiated thermally (20: 23). It is well
known that most photoinitiators such as benzophenone,
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Appeal 2016-001340
Application 14/158,879
thioxanthones, and 2,4,6 - trimethyl benzoyldiphenylphosphine
oxides will yield radicals under thermal conditions. See
Mendonca, page 635, for the two photon absorption of ethyl -
2,4,6 - trimethybenzoylphenyl phosphinate[,] an acylphosphine
oxide radical photoinitiator[,] at 800 nm. This is in the IR
spectrum. Additionally, Sobhi shows, at least at Figures 5 and
6, that mixtures of acylphosphine oxide or bisacylphosphine
oxide photoinitiators with methyl methacrylate generate
radicals under thermal conditions as shown by the exothermic
heat flow of the DSC charts. Therefore, it would be obvious to
include a conventional thermal initiator, such as a peroxide,
into the system of Muller to effect thermal curing based on the
direct motivation by Muller to do so.
Answer 3^4 (emphasis added).
As the quoted passage demonstrates, the Examiner’s position begins
with the assertion that a person of ordinary skill in the art would have used
multiple photoinitiators in Muller’s process. The Examiner, however, never
explains why it would have been obvious to a person of ordinary skill in the
art at the time of the invention to do so. Id. at 3. Nor does the Examiner
point us to any evidence in the record in support of this assertion. Id.
Similarly, the Examiner states that “[i]t is well known that most
photoinitiators . . . will yield radicals under thermal conditions.” Id. at 2—4.
The Examiner, however, does not point to sufficient evidence to support this
assertion. In particular, the Examiner does not point to any evidence that
either benzophenone or thioxanthones can thermally initiate polymerization.
Mendonca discusses initiation via two photon absorption, which is a
photochemical process. While Sobhi does demonstrate thermal initiation by
compounds that also are photoinitiators, this discussion is limited to a small
number of examples of a single type of photoinitiator. Sobhi does not
suffice to support the Examiner’s broad assertion.
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Appeal 2016-001340
Application 14/158,879
Furthermore, the Examiner has not provided any explanation for the
implicit assumption that a person of ordinary skill in the art would have had
a reason to use both triphenylphosphine and a second photoinitiator which
also can serve as a thermal initiator.8 While Muller does state that
“crosslinking can also be initiated thermally,” col. 20,1. 23, the context
makes clear that this is an alternative to photoinitiation.
Because “rejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness,” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), we are
constrained to reverse the rejection of claims 1,17, and 21.
Rejection 2. Independent claims 20 and 24 are directed to a contact
lens package comprising a contact lens produced by polymerizing a
composition comprising (a) a hydrophilic monomer, (b) a phosphine-
containing compound, and (c) a thermal initiator, wherein (b) and (c) are
different from each other. See Appeal Br. 43 (Claim 20), 44-45 (Claim 24).
Claim 24 further specifies that the phosphine-containing compound is not an
initiator.
8 In the Answer, the Examiner appears to rely upon in situ formation of
triphenylphosphine oxide via the reaction of triphenylphosphine with
dissolved oxygen to form a second photoinitiator which can also serve as a
thermal initiator. See Answer 18—19. Such a theory is erroneous, as Weiss
teaches that “triphenylphosphine oxide [does] not initiate polymerization,”
thereby excluding triphenylphosphine oxide as a photoinitiator. Philip
Weiss, Photo-Induced Polymerization, 15 Pure & Applied Chem. 587, 594
(1967). It is unclear whether Weiss’s control experiments are sufficient to
establish that triphenylphosphine oxide also is not a thermal initiator.
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Application 14/158,879
In rejecting these claims as obvious over the combination of Muller
and Morrison, the Examiner relies upon Morrison solely for its description
of a contact lens package comprising a packaging solution. See Answer 11—
12. The Examiner’s analysis regarding the polymerizable composition
limitations of these claims relies upon Muller and is substantially the same
as the analysis provided with respect to claims 1,17, and 24. See id. at 10-
11. As discussed above, the Examiner’s analysis regarding these claim
limitations is based upon flawed and inadequately supported assumptions
and assertions.
Thus, we reverse the rejection of claims 20 and 24.
Rejection 3. In the Answer, the Examiner purported to reject claims
1,17, and 21 as unpatentable over the combination of Muller and Chen and
evidenced by Hahn, Mendonca, and Sobhi. Answer 13. The Examiner,
however, relies solely on Muller with respect to these claims: “Claims 1, 2, 4
-19 and 21-24 are rejected for the reasons of record listed in paragraphs 6—
29 [i.e., Rejections 1 and 2] supra.” Id.
As discussed above, we have reversed Rejections 1 and 2. Thus, we
also reverse the rejection of claims 1,17, and 21 as set forth in Rejection 3.
Rejection 4. In the Answer, the Examiner purported to reject claims
20 and 24 as unpatentable over the combination of Muller, Morrison, and
Chen as evidenced by Hahn, Mendonca, and Sobhi. Answer 15. The
rejection, however, states that claims 20 and 24 are rejected for the same
reasons stated in Rejection 2. Id. at 16. Because we have already reversed
Rejection 2, we also reverse this rejection of claims 20 and 24.
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Application 14/158,879
CONCLUSION
For the reasons set forth above, we reverse the rejections of
independent claims 1, 17, 20, 21, and 24. Therefore, we also reverse the
rejection of dependent claims 2, 4—16, 18, 19, 22, 23, and 25—30 of the ’879
Application.
REVERSED
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