Ex Parte Matsuzawa et al

Patent Trial and Appeal BoardDec 27, 2012

10152930 (P.T.A.B. Dec. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte YASUO MATSUZAWA, LYNN COOK WINTERTON, and MICHAEL NELSON WILDE ____________________ Appeal 2010-000969 Application 10/152,9301 Technology Center 2800 ____________________ Before MARC S. HOFF, ANDREW J. DILLON, and JOHN A. EVANS, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of claims 1, 3, 5-7, 9, 11, 13-15, 17, and 20-22.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Appellants’ invention is a basket for ophthalmic lenses. 1 The real party in interest is Novartis AG. 2 Claims 2, 4, 8, 10, 12, 16, 18, 19, and 23-25 have been cancelled. Appeal 2010-000969 Application 10/152,930 2 Claim 1 is exemplary of the claims on appeal: 1. A basket for holding an ophthalmic lens, the basket having a lattice structure, wherein said basket comprises a first and a second mating members, said first and second mating members having an ophthalmic lens contacting side and an ophthalmic lens non-contacting side, said first and second mating members forming a cavity when mated for receiving said ophthalmic lens, said cavity inhibiting inversion or rolling over of said ophthalmic lens when emplaced therein, wherein said ophthalmic lens contacting side of said lattice has sharp edges available for said ophthalmic lens to contact, and further wherein said sharp edges are thin lines radiating from the centers of said first and second mating members and wherein there are through-holes in the centers of said first and second mating members. The Examiner relies upon the following prior art in rejecting the claims on appeal: Sibley US 5,101,967 Apr. 7, 1992 Ohta EP 0 476 937 B1 Aug. 23, 1995 LaRuffa US 6,347,870 B1 Feb. 19, 2002 Claims 1, 3, 5-7, 9, 11, and 13-15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Sibley in view of Ohta. Claims 17 and 20-22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Sibley in view of Ohta and LaRuffa. ISSUES Appellants argue that the Examiner erred in rejecting independent claims 1 and 9 because spokes 23 of Sibley do not correspond to the claimed “sharp edges” to support contact lenses (App. Br. 5). Appellants contend that the square cross-sectional shape of Sibley’s spokes cannot constitute a sharp edge, or “thin lines” (id.), because one of ordinary skill would interpret a “sharp edge” as presenting a cross-sectional shape wherein one edge is thinner than the remainder of the object (App. Br. 6). Appeal 2010-000969 Application 10/152,930 3 Appellants further argue that it would not have been obvious to modify Sibley, which teaches a single through-hole, in view of Ohta, which also teaches a single through-hole, in order to obtain a device having through-holes in first and second mating members (App. Br. 7-8). With respect to claims 3 and 11, Appellants argue that the claimed dimension of the sharp edges (“1/10 mm or less”) presents a complete difference in kind, not merely dimension, in comparison to the cited prior art (App. Br. 7). With respect to independent claim 17, Appellants argue that one of ordinary skill in the art would not have been motivated to modify Sibley and Ohta, each of which is concerned with a single pair of contact lenses, to employ a stacked tray assembly such as taught by LaRuffa (App. Br. 9-10). Appellants’ contentions present us with the following issues: 1. Do spokes 23 of Sibley correspond to the claimed “sharp edges” constituting “thin lines radiating from the centers”? 2. Do the combined teachings of Sibley and Ohta teach or fairly suggest through-holes in the centers of first and second mating members? 3. Do the combined teachings of Sibley and Ohta teach or fairly suggest thin lines having a thickness of about 1/10 mm or less? 4. Would one of ordinary skill in the art have been motivated to modify Sibley and Ohta to use the stacked tray assembly of LaRuffa? PRINCIPLE OF LAW The Examiner’s articulated reasoning in the rejection must possess a rational underpinning to support the legal conclusion of obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Appeal 2010-000969 Application 10/152,930 4 ANALYSIS CLAIMS 1, 5-7, 9, AND 13-15 Appellants’ argument that Sibley does not teach that spoke 23 has “sharp edges,” “wherein the sharp edges are thin lines radiating from the centers of said first and second mating members” is not persuasive to establish that the Examiner erred. Appellants’ contention that one of skill in the art would know that a sharp edge “must normally present a cross- sectional shape wherein one edge is thinner than the remainder of the object” (App. Br. 6) lacks evidentiary support. We find no special definition of “sharp edge” in Appellants’ Specification. We agree with the Examiner’s findings that, absent some special definition, “sharp” is a relative term, and that a flat surface (as in Sibley) may represent a sharp surface (Ans. 13). We further agree that independent claims 1 and 9 contain no shape limitations on the “sharp edges” or “very sharp edges” recited (Ans. 13). We are also unpersuaded of error by the argument that the combination of Sibley and Ohta does not teach or suggest through-holes in the centers of the first and second mating members (App. Br. 8). Appellants’ position is that since neither Sibley nor Ohta teaches more than one through- hole individually, their combination could not fairly suggest a basket having two through-holes (id.). We do not agree with Appellants. Instead, we agree with the Examiner that Ohta’s top basket member with center through-hole may be combined with Sibley’s bottom basket member with center through- hole (Ans. 14). We find that the Examiner’s stated rationale, “to decrease the cleaning time for the lenses by applying cleaning liquid to both sides of the lenses simultaneously” (Ans. 15), possesses a rational underpinning, and Appeal 2010-000969 Application 10/152,930 5 thus supports the legal conclusion of obviousness. See Kahn, 441 F.3d at 988. We conclude that the Examiner did not err in rejecting claims 1, 5-7, 9, and 13-15 under § 103 as being unpatentable over Sibley in view of Ohta. We will sustain the Examiner’s rejection. CLAIMS 17 AND 20-22 We are not persuaded by Appellants’ argument that one of ordinary skill in the art would not have been motivated to combine Sibley and Ohta with LaRuffa (App. Br. 9-10). The Examiner states that it would have been obvious to modify the single-pair lens baskets of Sibley or Ohta in view of LaRuffa – which teaches a plurality of baskets – because it would be “advantageous in a household with multiple people living together to clean multiple contact lenses at the same time to conserve time and reduce the cleaning fluid used by the household” (Ans. 15). We find that the Examiner’s stated rationale possesses a rational underpinning to support the legal conclusion of obviousness. See Kahn, 441 F.3d at 988. CLAIMS 3 AND 11 In contrast to independent claims 1 and 9, dependent claims 3 and 11 each recite that “each of the thin lines have a thickness of about 1/10 mm or less.” Appellants’ Specification expresses a desire for baskets to hold ophthalmic lenses in place with a small percentage of solid surface for a lens to contact. Appellants disclose that lenses “may tend to stick to the solid surface of baskets,” which tends to “prevent the lens from being treated uniformly during a washing, extracting, coating, or drying process” (Spec. 2), and that an unwanted chemical coating may form on solid surfaces and then adhere onto a lens (Spec. 2-3). We find that Appellants have therefore Appeal 2010-000969 Application 10/152,930 6 disclosed the criticality of minimizing the thickness of basket lens supports to the greatest extent possible. Consequently, we agree with Appellants that the Examiner’s reliance on Gardner v. TEC Sys., Inc., 725 F.2d 1338 (Fed. Cir. 1984), is misplaced (see App. Br. 7; Ans. 7). We agree with Appellants that a device having the claimed dimensions, i.e. thin lines having a thickness of about 1/10 mm or less, would perform differently than the prior art, in that it would avoid nonuniform treatment of the lens and would avoid unwanted chemical coating(s). We conclude that the Examiner erred in rejecting claims 3 and 11 as being unpatentable over Sibley in view of Ohta. We will not sustain the § 103 rejection. CONCLUSIONS 1. Spokes 23 of Sibley correspond to the claimed “sharp edges” constituting “thin lines radiating from the centers.” 2. The combined teachings of Sibley and Ohta fairly suggest through- holes in the centers of first and second mating members. 3. The combined teachings of Sibley and Ohta do not teach or fairly suggest thin lines having a thickness of about 1/10 mm or less. 4. One of ordinary skill in the art would have been motivated to modify Sibley and Ohta to use the stacked tray assembly of LaRuffa. ORDER The Examiner’s rejection of claims 1, 5-7, 9, 13-15, 17, and 20-22 is affirmed. The Examiner’s rejection of claims 3 and 11 is reversed. Appeal 2010-000969 Application 10/152,930 7 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R.§ 1.136(a)(1)(iv) (2010). AFFIRMED-IN-PART babc