Ex Parte Xia et al

Board of Patent Appeals and Interferences

Mar 22, 2010

10725159 (B.P.A.I. Mar. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_________________

Ex parte ERNING XIA and ZHENZE HU
Appellants
_________________

Appeal 2009-010233
Application 10/725,159
Technology Center 1600
_________________

Decided: March 22, 2010
_________________

Before SALLY GARDNER LANE, RICHARD E. SCHAFER, and
MICHAEL P. TIERNEY, Administrative Patent Judges.

LANE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2009-010233
Application 10/725,159

2
I. STATEMENT OF THE CASE
The appeal, under 35 U.S.C. § 134, is from a Final Rejection of claims
4, 7, 9-12, 20, and 21. Appellants canceled claims 1-3, 5, 6, 8, and 13-19.
(App. Br. 2). We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Appellants’ specification relates to preservative systems for contact
lenses and other medical devices that contain saccharides and cationic
polysaccharides. (Spec. ¶¶ [0001] and [0002]).
The real party-in-interest is said to be Bausch & Lomb, Inc.
(App. Br. 1).
The Examiner relied on the following patent documents:
Name Number Date Abbreviation
Sugiura 5,928,606 July 27, 1999 Sugiura ‘606
Hu et al. 6,274,133 August 14, 2001 Hu ‘133
Park et al. 6,916,958 July 12, 2005 Park ‘958
Appellants appeal the rejection of claims 4, 7, 9-12, 20, and 21 under
35 U.S.C. § 103(a) over Hu ‘133 and Sugiura ‘606. Appellants did not
argue for the separate patentability of any of the claims within the rejection.
We focus on claim 20 in our review. See 37 C.F.R. § 41.37(c)(vii).
II. FINDINGS OF FACT
1. Appellants’ claim 20 recites1:
A method of imparting a preservative efficacy to a contact lens
solution, the method comprising: providing in said contact lens
solution a preserving agent that comprises

1 Claim 20 has been modified by adding an indentation. See 37 C.F.R.
§ 1.75(i).

Appeal 2009-010233
Application 10/725,159

3
one or more saccharides selected from the group
consisting of glucose and α-methyl
glucopyranoside in their D or L forms in
combination with
one or more polyquaternium-10 cationic polysaccharides,
wherein the saccharides and cationic polysaccharides are in
amounts effective for solution preservation.

(App. Br. 8, Claims App’x).

2. Hu ‘133 teaches solutions for treating contact lenses that
comprise a cationic cellulosic polymer, a tonicity agent, a buffering agent,
and a demulcent (wetting agent). (Hu ‘133 col. 13, l. 45, through col. 14,
l. 8 (claims 1 and 4), see also Hu ‘133 col. 5, ll. 6-10, and col. 7, ll. 1-5).
3. Hu ‘133 teaches that a suitable cationic cellulosic material is a
polyquaternium-10 cationic cellulosic polymer. (Hu ‘133 col. 5, ll. 27-44).
4. Hu ‘133 teaches that the wetting agent can be a mono- or
disaccharide. (Hu ‘133 col. 14, ll. 9-12 (claim 5); see also Hu ‘133 col. 7,
ll. 20-22).
5. Sugiura ‘606 teaches a wetting agent for use with contact lenses
that includes glucose as a tonicity agent. (Sugiura ‘606 col. 10, ll. 36-60).
6. The examples in Appellants’ specification report results from
tests of “preservative efficacy” in relation to an “acceptance criteria,”
wherein the test solution must reduce the number of bacteria, yeast, and
molds by specific, recited amounts within a specified time. (See Spec.
¶¶ [0029], [0031], [0033], [0035], [0037], [0039], and [0041]).
7. Appellants’ specification provides that
[a] preserving amount of one or more saccharides and one or
more cationic polysaccharides is an amount that will at least
partially reduce the microorganism population in the formations
Appeal 2009-010233
Application 10/725,159

4
employed. Preferably, a preserving amount is that which will
reduce the microbial burden of representative bacteria by two
log orders in four hours and more preferably by one log order in
one hour. More preferably, a preserving amount is an amount
that will eliminate the microbial burden on a contact lens when
used according to its regimen for the recommended soaking
time (FDA Chemical Disinfection Efficacy Test – July 1985
contact Lens Solution Draft Guidelines).

(See Spec. ¶ [0042]).
III. ISSUE
Would those of skill in the art have found it obvious to make a contact
lens solution comprising glucose and a polyquaternium-10 cationic
polysaccharide, in amounts that inhibit microorganism growth to some
extent?
IV. ANALYSIS
Appellants’ claim 20 is drawn to a method of using a contact lens
solution, wherein the solution includes: (1) a saccharide selected from
glucose or α-methyl glucopyranoside and (2) a polyquaternium-10 cationic
polysaccharide. These components are present in “amounts effective for
solution preservation.” (FF 1).
Hu ‘133 provides solutions for treating contact lenses that comprise a
cationic cellulosic polymer and a wetting agent, among other ingredients.
(FF 2; Hu ‘133 col. 13, l. 45, through col. 14, l. 8 (claims 1 and 4)). The
cationic cellulosic polymers taught in Hu ‘133 include polyquaternium-10
cationic cellulosic polymers. (FF 3; Hu ‘133 col. 5, ll. 27-44). Hu ‘133 also
teaches that the wetting agent can be a mono- or disaccharide. (FF 4;
Hu ‘133 col. 14, ll. 9-12 (claim 5)).
Appeal 2009-010233
Application 10/725,159

5
Sugiura ‘606 teaches a wetting agent for use with contact lenses that
includes glucose. (FF 5; Sugiura ‘606 col. 10, ll. 36-60).
Appellants argue that there would have been no reason to combine
these teachings to impart a preserving efficacy to a contact lens solution.
However,
[i]n determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed
purpose of the [claims] controls. . . . Under the correct analysis,
any need or problem known in the field of endeavor at the time
of invention and addressed by the patent can provide a reason
for combining the elements in the manner claimed.

KSR Int’l v. Teleflex Inc., 550 U.S. 398, 419-20 (2007). We agree with the
Examiner that because Sugiura ‘606 provides a specific component of the
wetting agent, which falls within the genus taught by Hu ‘133, there would
have been a reason to combine the reference teachings, even if it is not the
reason put forth in Appellants’ claim.
Appellants make several arguments based on the use of the solution as
recited in claim 20 – as a preservative. According to Appellants, they
“proceeded against conventional wisdom” and realized that ingredients
previously thought to encourage microorganism growth could be used as
preservatives. (App. Br. 6-7). They argue that those in the art would not
have had a reasonable expectation of success in combining these compounds
to act as a preservative. (App. Br. 6-7).
The steps of the claimed method are found in the prior art. Both
Hu ‘133 and Sugiura ‘606 teach exposing contact lenses to solutions that
include the claimed components. Thus, we do not find the preamble of
“imparting preservative efficacy” to be limiting. See Bristol-Myers Squibb
Appeal 2009-010233
Application 10/725,159

6
Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1376 (Fed. Cir. 2001) (“the
claimed process here is not directed to a new use, it is the same use, and it
consists of the same steps as described by [the prior art]. Newly discovered
results of known process directed to the same purpose are not patentable
because such results are inherent.”); see also In re Tomlinson, 363 F.2d 928,
934 (CCPA 1966) (“As to the introductory language, ‘A process of
inhibiting degradation of polypropylene caused by exposure to light,’ again
we do not think these words can serve to patentably distinguish the claimed
process from the prior art. That language in effect, states the result of
admixing the two materials. While the references do not show a specific
recognition of that result, its discovery by appellants is tantamount only to
finding a property in the old composition, not in the nickel compound for
which, it is argued, a new use has been found.”). Appellants have not
persuaded us that those of skill in the art would not have had an expectation
that the compounds recited in their claim would be useful in a contact lens
solution.
Appellants also argue that neither Hu ‘133 nor Sugiura ‘606 teach that
“the saccharides and cationic polysaccharides are in amounts effective for
solution preservation,” as claimed. (App. Br. 4). Appellants assert that
“preservative efficacy” is defined in paragraph 0029 of their specification.
(Reply Br. 3). Paragraph 0029 discusses testing of “preservative efficacy” in
regard to an “acceptance criteria” for reduction of microorganisms. (FF 6).
The term “acceptance criteria” does not appear in Appellants’ claims.
Furthermore, paragraph 0042 of Appellants’ specification defines a
preserving amount of saccharide and cationic polysaccharide as “an amount
that will at least partially reduce the microorganism population in the
Appeal 2009-010233
Application 10/725,159

7
formations employed.” (FF 7). Paragraph 0042 recites more specific
“preferred” levels of reduction of microorganism, but “an applicant should
[not] have limitations of the specifications read into a claim where no
express statement of the limitation is included in the claim.” In re Prater,
415 F.2d 1393, 1396 (CCPA 1969). Given the broad scope of “a preserving
amount” in paragraph 0042 and the lack of specific amounts or the term
“acceptance criteria” recited in Appellants’ claims, we construe Appellants’
claims as encompassing any amount of saccharide or cationic polysaccharide
that reduces the level of microorganisms. See In re American Academy of
Sci. Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004) (“During
examination, ‘claims ... are to be given their broadest reasonable
interpretation consistent with the specification, and ... claim language should
be read in light of the specification as it would be interpreted by one of
ordinary skill in the art.’”).
Hu ‘133 teaches concentrations of wetting agent from 0.01 to 2.0%
(Hu 133 col. 7, ll. 16-20), and cationic polysaccharide from 0.01 to 1.0 %
(Hu ‘133 col. 5, ll. 6-8). Appellants’ specification provides that
concentrations of saccharides from approximately 0.0001 to approximately
10.0 % (Spec. ¶ [0017]) and cationic polysaccharides from approximately
0.001 to approximately 1.0 % (Spec. ¶ [0020]) are useful in the claimed
method. We find that the amounts of saccharide (glucose) and cationic
polysaccharide taught in Hu ‘133 would reduce the level of microorganisms
to some extent, according to Appellants’ specification. Thus, Hu ‘133
teaches “amounts effective for solution preservation.” Appellants’ have not
provided evidence to persuade us otherwise.
Appeal 2009-010233
Application 10/725,159

8
Appellants also dispute that Sugiura ‘606 teaches saccharides are
wetting agents, arguing instead that Sugiura teaches saccharides are tonicity
agents. (App. Br. 5). Appellants assert that “[p]eople of ordinary skill in the
art understand that tonicity agents are not generally or necessarily wetting
agents” (App. Br. 5). Regardless, Sugiura ‘606 specifically teaches that
glucose is known in the contact lens solution art as a suitable agent for use in
combination with wetting agents. Thus, we are not persuaded that those of
skill in the art would not have used glucose in combination with the wetting
agent of Hu ‘133.
V. CONCLUSION
Those of skill in the art have found it obvious to make a contact lens
solution comprising glucose and a polyquaternium-10 cationic
polysaccharide, in amounts that would inhibit microorganism growth to
some extent. The Examiner did not err in finding that the claimed method of
imparting a preservative efficacy to a contact lens would have been obvious
under 35 U.S.C. § 103(a).
VI. ORDER
Upon consideration of the record and for the reasons given,
the Examiner’s rejection of claims 4, 7, 9-12, 20, and 21 under 35
U.S.C. § 103(a) over Hu ‘133 and Sugiura ‘606 is AFFIRMED.
FURTHER ORDERED that no time period for taking any subsequent
action in connection with the appeal may be extended under 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

Appeal 2009-010233
Application 10/725,159

9
ak

Bausch & Lomb Incorporated
One Bausch & Lomb Place
Rochester, NY 14604-2701