Ex Parte English et al

Patent Trials and Appeals BoardJun 18, 2019

14395431 - (D) (P.T.A.B. Jun. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/395,431 10/17/2014 Stephen English 79567 7590 06/20/2019 Klein, O'Neill & Singh, LLP 16755 Von Karman Avenue Suite 275 Irvine, CA 92606 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 1128-033.101 4444 EXAMINER PATEL, BRIJESH V ART UNIT PAPER NUMBER 3736 NOTIFICATION DATE DELIVERY MODE 06/20/2019 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): KOS_Docketing@koslaw.com GHollrigel@coopervision.com SPaladini@coopervision.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEPHEN ENGLISH, HAYDEN ATKINSON, ROBERT DA VIS, and KEVIN ALDRIGE Appeal2017-006346 1 Application 14/395,431 Technology Center 3700 Before MICHAEL C. ASTORINO, KENNETH G. SCHOPPER, and BRADLEY B. BAY AT, Administrative Patent Judges. BAY AT, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134(a) from an Examiner's final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. Â§ 6(b ). An oral hearing was held on May 30, 2019. We REVERSE. STATEMENT OF THE CASE Appellants' invention "is directed to contact lens blister packages and methods for making and using blister packages for producing packaged contact lenses." Spec. ,r 1. Claims 1, 14, and 20 are independent and recite substantially similar subject matter. See Appeal Br. 22-26, Claims App. 1 Appellants identify the real party in interest as "CooperVision International Holding Company, LP." Appeal Br. (filed Aug. 22, 2016) 2. Appeal2017-006346 Application 14/395,431 Claim 1, reproduced below with added bracketed matter, is illustrative of the subject matter on appeal. 1. A contact lens blister package comprising: [(a)] a thermoplastic base member comprising a proximal end region having a grip portion, a distal end region, a first side region extending from the proximal end region to the distal end region, a second side region opposing the first side region, and a cavity configured to contain a packaging solution and a contact lens when placed inside the cavity, the cavity being located between the proximal end region and the distal end region and between the first side region and the second side region; wherein [(b)] the cavity comprises a bottom wall having a bottom wall perimeter and a sidewall extending upwardly from the bottom wall perimeter to an upper cavity edge defining a cavity perimeter and including a substantially linear upwardly extending sidewall portion; [ ( c)] the cavity perimeter comprises a substantially linear portion and a non-linear portion opposing the substantially linear portion; and [ ( d)] a plane formed at the intersection of the bottom wall perimeter with the sidewall slopes away from the substantially linear portion of the cavity perimeter. REJECTI0N2 Claims 1-20 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Clements et al., U.S. 7,477,366 B2, iss. Jan. 13, 2009 ("Clements"), Coldrey et al., U.S. 7,426,993 B2, iss. Sept. 23, 2008 ("Coldrey"), and Borghorst et al., U.S. 5,609,246, iss. Mar. 11, 1997 ("Borghorst"). Final Action (mailed Mar. 25, 2016) 3; Answer (mailed Jan. 10, 2017) 2. 2 The rejection under 35 U.S.C. Â§ 112(b) or 35 U.S.C. Â§ 112 (pre-AIA), second paragraph, was withdrawn. Advisory Action (mailed July 18, 2016) 2. 2 Appeal2017-006346 Application 14/395,431 ANALYSIS We are persuaded by Appellants' argument that neither Clements nor Coldrey, on which the Examiner relies, discloses "a plane formed at the intersection of the bottom wall perimeter with the sidewall slopes away from the substantially linear portion of the cavity perimeter," as recited in limitation ( d) of claim 1. See Claim 1 supra. In rejecting claim 1, the Examiner found that "Clements '336 fails to teach ... a plane formed at the intersection of the bottom wall perimeter with the sidewall slopes away from the substantially linear portion of the cavity perimeter." Final Action 4. To cure this deficiency, the Examiner relied on "Coldrey '933 Col. 9 Ln. 61 - Col. 12 Ln. 25, Fig. 6" as disclosing limitation ( d). Id. In response to Appellants' argument, the Examiner appears to change that position and asserts that "Clements '366 teaches ... a plane at an intersection of the bottom wall perimeter with the sidewall" (Answer 3), and Coldrey "suggests an intersection between the sidewall and the bottom wall (of the cavity) can be non-perpendicular (i.e. sloping way from the sidewall towards the bottom; Coldrey '993 Col. 12, Ln. 22-24)." Id. at 4 ("[E]xaminer relies upon these teachings of Coldrey '993 to suggest modification of the primary reference Clements '366."). We agree with Appellants that the cited portions and figures of Coldrey do not suggest a plane formed at the intersection of the bottom wall perimeter with the sidewall that slopes away from the substantially linear portion of the cavity perimeter, as required by claim 1. Although "Coldrey does contemplate an alternative sidewall that is 'at a non-perpendicular angle to the bottom surface 138, such as the curved surface 36 shown in FIG. 3,' (Col. 12:22-25) the plane formed at the intersection between the 3 Appeal2017-006346 Application 14/395,431 sidewall and the flat planar bottom wall of the alternative design is still a planar flat bottom wall, as shown in FIG. 3, which does not slope." Appeal Br. 12-13. In other words, [t]he 'non-perpendicular' shape shown in FIG. 3 of the Coldrey reference is presented as an alternative to the FIG. 6 embodiment, which shows a perpendicular or right angle configuration ('at least one planar surface 137a and at least one curved surface 137b, each of which is substantially perpendicularly oriented to the bottom surface 138 of the cavity 118', Coldrey, Col. 12:19-22). Coldrey does not disclose a bottom cavity surface that slopes away from any sidewall. Reply Br. 10. Because Coldrey does not disclose or suggest this disputed feature of limitation ( d), we are persuaded that the Examiner's proposed combination fails to render claim 1 obvious. Accordingly, we do not sustain the rejection of independent claim 1. Because independent claims 14 and 20 recite the same disputed limitation as claim 1, which are rejected based on the same deficient finding in Coldrey (see Final Action 8-11 ), we do not sustain the rejection of those claims for the same reasons. The Examiner's reliance on Borghorst in rejecting the dependent claims does not cure the above deficiency. Therefore, we also do not sustain the rejection of dependent claims 2-13 and 15-19 for the same reasons. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims are nonobvious if the independent claims from which they depend are nonobvious"). DECISION The Examiner's rejection of claims 1-20 are reversed. REVERSED 4