NOVARTIS AG

Patent Trials and Appeals Board

Mar 10, 2021

2019006814 (P.T.A.B. Mar. 10, 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.
14/917,685 03/09/2016 Susanne FECNHER PAT055904-US-PCT 1130
31781 7590 03/10/2021
ALCON RESEARCH, LLC
PATENT DEPARTMENT
11460 JOHNS CREEK PARKWAY
JOHNS CREEK, GA 30097-1556
EXAMINER
RETALLICK, KAITLIN A
ART UNIT PAPER NUMBER
2482
NOTIFICATION DATE DELIVERY MODE
03/10/2021 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 SUSANNE FECNHER, MATTHIAS SCHWAB, DANIEL
KESSLER, and ROGER BIEL

Appeal 2019-006814
Application 14/917,685
Technology Center 2400

Before JOHN A. JEFFERY, JAMES R. HUGHES, and
MICHAEL T. CYGAN, Administrative Patent Judges.

CYGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–14. Appeal Br. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Alcon, Inc.
Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claimed subject matter relates to a contact lens inspection system
and method of inspecting a contact lens. Appeal Br. 3. Collimated light
illuminates a contact lens, and a camera produces an orthographic image of
the contact lens on an electronic sensor. Id.
Independent claim 1 is illustrative, with the limitations at issue
emphasized in italics:
1. A contact lens inspection system (100) for soft contact
lenses (1), comprising:
a light source (20) for illuminating a contact lens to be
inspected, said light source (20) being adapted to illuminate
said contact lens with collimated light from a front side or the
rear side of said contact lens;
a camera (40) having an objective lens (41) and an electronic
sensor (42), said camera being arranged to produce an
electronic orthographic image (10) of said contact lens on said
electronic sensor (42), wherein said objective lens (41) has a
diameter which is at least as large as a maximum diameter of
said contact lens, and wherein said camera (40) is arranged on
that side of said contact lens opposite to said side where said
light source (20) is arranged;
an electronic scanning and evaluation unit (50) adapted for
electronically scanning at least one portion of said electronic
orthographic image of said contact lens on said electronic
sensor (42) in sections (S) of a predetermined size to detect
within each of said sections (S) of said electronic orthographic
image of said contact lens a line structure (5), and further
adapted for counting a total number of detected line structures
(5) in said scanned at least one portion of said electronic
orthographic image of said contact lens and for comparing said
total number of detected line structures (5) with a
predetermined threshold value (T) to determine whether or not
said contact lens is inverted.
Appeal Br. (Claims App. 1).
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Independent claim 8 recites a method having limitations substantially
commensurate with claim 1, and dependent claims 2–7 and 9–14 each
incorporate the limitations of their respective independent claims. Id. at
Claims App. 1–3.

REFERENCES
Name Reference Date
Lafferty et al.
(“Lafferty”)
US 5,801,822 Sept. 1, 1998
Doke et al.
(“Doke”)
US 6,134,342 Oct. 17, 2000
Topham et al.
(“Topham”)
US 2007/0071101 A1 Mar, 29, 2007
Polland et al.
(“Polland”)
US 2007/0273828 A1 Nov. 29, 2007
Suzuki et al.
(“Suzuki”)
US 2009/0059166 A1 Mar. 5, 2009
Ho et al.
(“Ho”)
US 2010/0195093 A1 Aug. 5, 2010
Ribnick et al.
(“Ribnick”)
US2015/0009301 A1 Jan. 8, 2015

REJECTIONS
Claims 1–3 and 8–10 are rejected under 35 U.S.C. §103 as being
obvious over the combined teachings and suggestions of Doke, Polland,
Lafferty, and Ribnick.
Claims 4 and 11 are rejected under 35 U.S.C. §103 as being obvious
over the combined teachings and suggestions of Doke, Polland, Lafferty,
Ribnick, and Ho.
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Claims 5 and 12 are rejected under 35 U.S.C. §103 as being obvious
over the combined teachings and suggestions of Doke, Polland, Lafferty,
Ribnick, Ho, and Topham.
Claims 6 and 13 are rejected under 35 U.S.C. §103 as being obvious
over the combined teachings and suggestions of Doke, Polland, Lafferty,
Ribnick, Ho, and Suzuki.
Claims 7 and 14 are rejected under 35 U.S.C. §103 as being obvious
over the combined teachings and suggestions of Doke, Polland, Lafferty,
Ribnick, Suzuki, and Topham.

OPINION
We begin with claim 1. Appellant contends that the combination of
Doke, Polland, Lafferty, and Ribnick does not teach or suggest every
limitation of claim 1. Appeal Br. 5.
1. Objective lens diameter at least as large as contact lens
diameter
We begin with Appellant’s contention that the Examiner errs in
relying on Doke to teach or suggest “that the objective lens has a diameter
which is at least as large as a maximum diameter of the contact lens.” Id. at
6.
The Examiner finds Doke to teach or suggest that limitation. Final
Act. 10. The Examiner points to Figures 4, 6, and 7 of Doke as each
depicting an objective lens having a larger diameter than the contact lens
that is being imaged. Final Act. 6; Ans. 25. The Examiner further finds the
selection of the objective lens diameter to be a matter of design choice. Ans.
23–24 (citing Gardner v. TEC Syst., Inc., 725 F.2d 1338 (Fed. Cir. 1984)
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(holding where the only difference between the prior art and the claims was
a recitation of relative dimensions of the claimed device, and a device
having the claimed relative dimensions would not perform differently than
the prior art device, the claimed device was not patentably distinct from the
prior art device). Based on these depictions, and in the lack of any
presentation of unexpected results for the claimed diameter, the Examiner
finds that choosing the diameter of a lens to be as depicted in Figures 4, 6,
and 7 of Doke would be within the level of ordinary skill in the art. Id. at
26. The Examiner concludes that one of ordinary skill would have found the
claimed objective lens dimension would have been obvious. Id. at 25.
Appellant does not contest that the prior art teaches an objective lens
used to image a proximately held contact lens. Appeal Br. 7. Appellant
only contests that one having ordinary skill in the art would not be led to use
an objective lens larger than the contact lens, despite the figures of Doke
showing such proportions. Id. Appellant has not provided reasoning or
evidence to support that position, instead arguing that the Examiner’s
position is not in accord with relevant precedent, and therefore, the
Examiner has not shown the claimed relative dimensions to be obvious. Id.
at 6–8. Appellant argues that the drawings of Doke are not proportioned so
as to be relied upon for their relative dimensions. Appeal Br. 7–8 (citing
Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222, F.3d 951, 956 (Fed.
Cir. 2000) (“[i]t is well established that patent drawings do not define the
precise proportions of the elements and may not be relied upon to show
particular sizes if the specification is completely silent on the issue.”).
Appellant argues that the specification of Doke is silent on the issue of
objective lens size, and that Figure 4 of Doke shows elements as blocks, and
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is clearly not drawn to scale. Id. With respect to the Examiner’s reliance on
Gardner, Appellant distinguishes the claim as setting forth dimensions
describing “how the features within the claim itself fit together,” not as a
comparison of relative size between a claimed object and a prior art object as
considered in Gardner. Id. at 8.
In determining obviousness, we employ the “flexible” test set forth in
KSR, taking “account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex, 550 U.S.
398, 415, 418 (2007). We note that the person of ordinary skill is the person
of ordinary skill in the art is “a person of ordinary creativity, not an
automaton.” Id. at 421. The Supreme Court further stated, “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. at 415–16.
The Examiner’s conclusion of obviousness of the claimed relative
lens sizes rests not only on the teachings provided by Figures 4, 6, and 7 of
Doke, but also the ability of one having ordinary skill in the art to select
relative lens dimensions in an appropriate manner. We agree that, in light of
the above-cited court cases and the teachings of Doke, one having ordinary
skill in the art would have concluded that the selection of an objective lens
having a diameter that is at least as large as the maximum diameter of the
contact lens would have been obvious.
In this determination, we further agree with the Examiner that the
record is devoid of any indication that the relative size of the objective lens
acts to do “more than yield predictable results.” Ans. 25. Apart from
arguments that the Examiner has not made a proper finding (Appeal Br. 8),
Appellant does not explain why one of ordinary skill in the art would not
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have concluded the claimed relative dimensions would have been obvious.
To show support for the relative size of the objective lens in its Appeal
Brief, Appellant points to its own figures, apparently relying on Appellant’s
own drawings for the claimed relative dimensions. Appeal Br. 3–4.
Appellant points to “a camera (please see item 40, Fig. 5) having an
objective lens (item 41 of Fig. 5)” and a “contact lens (please see item 1 of
Fig. 1a and Fig. 2a).” Id. In the Appeal Brief, Appellant states that the
claim requires the objective lens to have a diameter at least as large as the
maximum diameter of the contact lens, but does not point to any support for
that matter in the Specification, other than the reference numbers used in the
figures. Id. Appellant does not explain why the Examiner erred in finding
the relative dimensions of the objective lens and contact lens to be within the
level of ordinary skill in the art, nor does the Specification explain how the
relative dimensions provide more than predictable results.
Furthermore, contrary to Appellant’s characterization, the claim at
issue in Gardner addressed relative dimensions between parts of a claimed
apparatus; i.e., how the features within the claim itself fit together. Gardner,
725 F.2d at 1340–41 (claiming, in an apparatus having a nozzle, a plate, and
a web, that “the maximum spacing of the plate from the web never being
greater than the width of the plate,” among other limitations as to the relative
sizing and spacing of these features). Accordingly, we find Gardner on
point to the relative dimensions of objective lens and contact lens set forth in
claim 1, and supportive of the Examiner’s obviousness conclusion.
In view of the totality of the evidence on this record, we are not
persuaded by Appellant’s arguments that the Examiner erred in concluding
that it would have been obvious for one of ordinary skill in the art to use an
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objective lens having a diameter which is at least as large as a maximum
diameter of the contact lens, in combination with the other limitations of
claim 1.
2. Comparison of detected line structures with threshold
We turn to Appellant’s other contention, that the Examiner errs in
relying on Polland to teach or suggest “that the prior art inspections detect a
line structure and count a total number of detected line structures, to
compare the number of detected line structures with a predetermined
threshold value (T) to determine whether or not the lens is inverted.”
Appeal Br. 6.
The Examiner finds Polland in view of Doke to teach or suggest this
limitation. The Examiner finds Doke to describe detection of position marks
on a contact lens. Ans. 14 (citing Doke col. 10). The Examiner finds
Pollard to describe detection of multiple shapes having lines that are
detected to determine whether or not the lens is inverted. Id. at 16 (citing
Polland ¶ 52). The Examiner further finds Pollard to describe comparing the
number of detected mark shapes to a mark pattern; i.e., comparing the
number of mark shapes to a predetermined threshold value of one mark
pattern having predetermined (such as three) shapes. Id.
Appellant contests these findings, arguing that (1) the lens markings
of Polland are visible whether are not the lens is inverted, and (2) Polland
does not count lines to compare to a standard. Appeal Br. 9.
With respect to Appellant’s argument that Polland’s lens markings are
visible whether are not the lens is inverted, we are not persuaded this
contention shows error in the rejection. Claim 1 does not require that lens
markings only be visible when the lens is inverted. Instead, claim 1 requires
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determining “whether or not said contact lens is inverted.” The Examiner
finds that Polland teaches this determination, and we agree. Polland
describes measuring contact lens orientation “including lens inversion.”
Polland ¶ 52.
With respect to Appellant’s argument that Polland does not count
lines to compare to a predetermined threshold value, we are not persuaded of
error in the rejection. Appellant’s sole argument is that “there is no hint in
the Polland reference (nor in the combination of references) of counting
lines to compare against a standard.” Appeal Br. 9. However, the Examiner
has found that Polland teaches a plurality of marks forming a pattern that is
compared with a desired structure to determine whether the lens is inverted.
Ans. 5–6. We agree with the Examiner’s finding that Polland’s detection of
marks teaches detecting lines such as marks “in a pattern of three straight
intersecting lines.” See, e.g., Polland ¶44. The Examiner finds Polland to
perform a count of mark patterns – either finding one or zero detected mark
patterns. Ans. 16–17. The Examiner finds Polland to compare that count of
detected mark patterns to a threshold of one mark pattern, finding lens
inversion if the number of detected mark patterns is at the threshold of one
mark pattern, and no inversion if the number of detected mark patterns is
below that threshold. Id. We are not persuaded by Appellant’s argument
that the comparison of a detected structure to determine whether it has a
certain expected number of mark patterns or lines (such as three lines within
a mark pattern) does not teach or suggest counting lines to compare against a
standard. Accordingly, we are not persuaded of error in the Examiner’s
rejection of claim 1.
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For the above-described reasons, we adopt the Examiner’s findings
and rationale, and sustain the Examiner’s rejection of claim 1. Furthermore,
for the same reasons, we sustain the Examiner’s rejection of claims 2–14,
argued under the same reasoning as argued against claim 1. See Appeal Br.
5.
CONCLUSION
For the above-described reasons, we affirm the Examiner’s rejection
of claims 1–14 as being obvious over the applied references under 35 U.S.C.
§103, as detailed below.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

DECISION SUMMARY

In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 8–10 103 Doke, Polland,
Lafferty, Ribnick
1–3, 8–10
4, 11 103 Doke, Polland,
Lafferty, Ribnick, Ho
4, 11
5, 12 103 Doke, Polland,
Lafferty, Ribnick,
Ho, Topham
5, 12
6, 13 103 Doke, Polland,
Lafferty, Ribnick,
Suzuki
6, 13
7, 14 103 Doke, Polland,
Lafferty, Ribnick,
7, 14
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Suzuki, Topham
Overall
Outcome
1–14

AFFIRMED