Novartis AG

Patent Trials and Appeals Board

Feb 18, 2021

2020001986 (P.T.A.B. Feb. 18, 2021)

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.
15/437,653 02/21/2017 Robert Carey Tucker PAT053789-US-DIV 1072
31781 7590 02/18/2021
ALCON RESEARCH, LLC
PATENT DEPARTMENT
11460 JOHNS CREEK PARKWAY
JOHNS CREEK, GA 30097-1556
EXAMINER
HERRING, LISA L
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
02/18/2021 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):
alcon_PAIR@firsttofile.com
patent.docketing@alcon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT CAREY TUCKER and LAURA ASHLEY CREECH
Appeal 2020-001986
Application 15/437,653
Technology Center 1700
Before TERRY J. OWENS, JEFFREY B. ROBERTSON, and
BRIAN D. RANGE, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 13 and 21–23. See Appeal Br. 3. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 This Decision includes citations to the following documents:
Specification filed February 21, 2017 (“Spec.”); Final Office Action mailed
April 8, 2019 (“Final Act.”); Appeal Brief filed September 9, 2019 (“Appeal
Br.”); and Examiner’s Answer mailed October 28, 2019 (“Ans.”).
2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Novartis AG. Appeal
Br. 3.
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Application 15/437,653

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CLAIMED SUBJECT MATTER
Appellant states the invention relates to the field of colored contact
lenses. Spec ¶ 2. Claim 13, the only independent claim on appeal, is
illustrative of the claimed subject matter and is reproduced below (Appeal
Br., Claims Appendix 9–10):
13. A method of manufacturing a colored contact lens
comprising the steps of:
a) inking, with a color ink, at least one cliché having a
transfigured amorphous simulated iris pattern[] to be printed on
a contact lens to form an inked image in the at least one cliché;
b) transferring the inked image from the at least one cliché
to at least one surface of at least one contact lens forming mold
by means of at least one transfer pad, (c) at least partially curing
the inked image transferred on the at least one surface of at least
one contact lens forming mold to form a colored film;
(d) dispensing a hydrogel lens-forming material into at
least one lens-forming cavity of the at least one contact lens
forming mold; and
(e) curing the hydrogel lens-forming material within the at
least one lens-forming cavity to form the contact lens, whereby
the colored film detaches from the at least one surface of at least
one contact lens forming mold and becomes integral with a body
of the contact lens, wherein the transfigured amorphous
simulated iris pattern is made by the method comprising the steps
of:
opening or scanning an image file in a photo editing
software application, said image file containing a base
amorphous image having at least two colors, wherein the base
amorphous image is totally unrelated to any eye structure;
distorting the base amorphous image with one or more
filters to change a shape of contents of the base amorphous base
image,
reducing the opacity of the distorted base amorphous
image to create a translucent image;
modifying the size of the translucent image to create a
sized image; and
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Application 15/437,653

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cutting out a lens shape from the sized image to simulate
iris shape, the lens shape being defined by a substantially circular
outer diameter having a smaller substantially inner circle
removed therefrom.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Tucker et al. (“Tucker”) US 2006/0181676 A1 Aug. 17, 2006
Atkins et al. (“Atkins”) US 7,255,438 B2 Aug. 14, 2007
Doshi et al. (“Doshi”) US 2008/0062381 A1 Mar. 13, 2008
April, Jr. et al. (“April”) US 8,399,607 B2 March 19, 2013
Adobe Adobe Photoshop CSC
User Guide 641 pages
2007

REJECTIONS
1. Claims 13 and 21–23 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Doshi in view of Adobe,
and Tucker et al. Final Act. 4–6.
2. Claims 13 and 21–23 are rejected on the ground of nonstatutory
double patenting as being unpatentable over claims 16–19 of
April, Jr., in view of Doshi and Adobe. Final Act. 7–10.
3. Claims 13 and 21–23 are rejected on the ground of nonstatutory
double patenting as being unpatentable over claims 1–19 of
Atkins, in view of Doshi and Adobe. Final Act. 10–12.
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Application 15/437,653

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OPINION
Rejection 1
We limit our discussion to claim 13, which is sufficient for disposition
of this rejection.

The Examiner’s Rejection
In rejecting the claims as unpatentable over Doshi, Adobe, and
Tucker, the Examiner found Doshi discloses inks used to color or tint a
contact lens and Doshi discloses digitally encoded images that may include
images or pictures that do not correspond to the general appearance of an
eye can be used. Final Act. 4; Doshi ¶ 236. The Examiner found Doshi
discloses the image can be scanned into digital form using appropriate
hardware and software to provide a digitally encoded image to be printed on
a substrate, which one of ordinary skill in the art could envision as a cliché.
Id. at 4–5; Doshi ¶ 287. The Examiner found Doshi does not disclose:
photo editing software applications; the image file contains a base
amorphous image having at least two colors; and distorting the base
amorphous image with one or more filters to change a shape of contents of
the amorphous base image. Id. at 5.
The Examiner found Adobe discloses Adobe Photoshop is capable of
opening and importing images, including an amorphous base image having
at least two colors, distorting the amorphous base image, reducing the
opacity of the distorted imaged to create a translucent image, modifying the
size of the translucent image to create a sized image, and cutting out a lens
shape from binary images to simulate an iris shape, a lens shape being
defined by substantially circular outer diameter having a smaller
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Application 15/437,653

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substantially inner circle remover therefrom. Id. As such, the Examiner
determined one skilled in art could envision the transfigured amorphous
pattern made by the claimed steps based on the teachings of Doshi and
Adobe. Id. at 5–6. The Examiner relied on Tucker for the specific details of
coloring a contact lens with ink and a cliché. Id. at 6.

Appellant’s Arguments
Appellant argues Doshi does not disclose any type of image, and as a
result does not disclose a base amorphous image totally unrelated to any eye
structure as recited in claim 13. Appeal Br. 5–6. Appellant contends the
Examiner does not explicitly explain why one would look to Adobe when
considering Doshi in order to modify a pattern image totally unrelated to any
eye structure into a transfigured amorphous simulated iris pattern even
accepting there was a similarity in underlying steps to modify the image. Id.
at 6.

Issue
Did the Examiner err in determining that it would have been obvious
to have distorted a base amorphous image with one or more filters to change
a shape of contents of the base amorphous image, reduce the opacity of the
distorted base amorphous image to create a translucent image, and modify
the size of the translucent image to create a sized image as recited in claim
13 in view of Doshi and Adobe?

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Discussion
Initially, we are unpersuaded by Appellant’s argument that Doshi fails
to disclose analogue images that are “totally unrelated to any eye structure”
as recited in claim 13. Doshi expressly discloses that analogue images “may
include a variety of images or pictures that do not mimic or correspond to
the general appearance of an eye or a portion of an eye such as an iris.”
Doshi ¶ 236.
However, while Doshi discloses an image may be scanned into digital
form and the viscosity of the inks used to print the image can allow dots to
blend together and produce a highly realistic appearance to the unaided eye
(Doshi ¶¶ 171, 287), Doshi does not disclose an analogue base image
modified in the manner recited in claim 13.
Although Adobe discloses a photo editing software application that
allows for the use of filters to distort an image, adjusting the opacity of the
image, modifying the size of the image, and cutting a shape from an image
(Adobe 58, 61, 66, 213, 220, 292, 360, 486), we agree with Appellant that
the Examiner has not provided a sufficient reason why one of ordinary skill
in the art would have applied the techniques in Adobe in the manner recited
in claim 1 to modify the analogue base image of Doshi.
As the Court in KSR stated,
[o]ften, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue. To facilitate review, this analysis
should be made explicit. See In re Kahn, 441 F.3d 977, 988 (CA
Fed. 2006) (“[R]ejections on obviousness grounds cannot be
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sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness”).
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (alteration in
original).
In this case, the Examiner’s reasoning that “a person having ordinary
skill in the art could envision a transfigured amorphous pattern to [be]
printed on a contact lens to form an inked image, as merely an aesthetic
design change” (Ans. 7) is conclusory, and does not provide a sufficient
rational underpinning to support the Examiner’s position. As discussed
above, Doshi discloses blending of dots during printing using low viscosity
inks and vibrational energy. Doshi ¶ 171. The mere disclosure in Doshi of
software used to scan and store a digital image (Doshi ¶¶ 165, 287) is
insufficient to support the Examiner’s position that one of ordinary skill in
the art would have turned to Adobe and applied the filter techniques therein
in the manner recited in claim 13.
As a result, we reverse the Examiner’s rejection of claim 13.

Rejections 2 and 33
The Examiner relied on a similar rationale in rejecting the claims for
double patenting as for the Rejection 1. Final Act. 8–12; see Appeal Br. 7–
8. Accordingly, we reverse the Examiner’s rejections for similar reasons as
discussed above for Rejection 1.

3 Although, as the Examiner observed, Appellant does not set forth any
specific arguments with respect to Rejection 3 (Ans. 7; see Appeal Br. 7–8),
because Rejections 2 and 3 are nearly identical as to the reasoning and art
applied in addition to the patents (Final Act. 8–12), we address Rejection 3
as well.
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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
13, 21–23 103(a) Doshi, Adobe,
Tucker
13, 21–23
13, 21–23 Non-
statutory
double
patenting
April, Jr., Doshi,
Adobe
13, 21–23
13, 21–23 Non-
statutory
double
patenting
Atkins, Doshi,
Adobe
13, 21–23
Overall
Outcome
13, 21–23

REVERSED