Ex Parte Peck et al

Patent Trial and Appeal BoardMay 23, 2016

13540086 (P.T.A.B. May. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/540,086 07/02/2012 27777 7590 05/25/2016 JOSEPH F. SHIRTZ JOHNSON & JOHNSON ONE JOHNSON & JOHNSON PLAZA NEW BRUNSWICK, NJ 08933-7003 FIRST NAMED INVENTOR James M. Peck 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. VTN0603USCNT4 3499 EXAMINER DESAI, HEMANT ART UNIT PAPER NUMBER 3721 NOTIFICATION DATE DELIVERY MODE 05/25/2016 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): jnjuspatent@corus.jnj.com lhowd@its.jnj.com pairjnj@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES M. PECK, GEORGE E. HIMES JR., MICHAEL G. TOKARSKI, CHRISTOPHER WILDSMITH, DAVID C. TURNER, JOHN B. FORE, and MARK MANDEVILLE Appeal2014-000719 Application 13/540,086 Technology Center 3700 Before: CHARLES N. GREENHUT, ANNETTE R. REIMERS, and LISA M. GUIJT, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134 from a rejection of claims 17-23. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse and enter a new ground of rejection. CLAIMED SUBJECT MATTER The claims are directed to a contact lens package. Claim 17, reproduced below, is illustrative of the claimed subject matter: 1 7. A method of hydrating a contact lens comprising hydrating said lens in a molded base wherein said molded base comprises Appeal2014-000719 Application 13/540,086 a cavity formed in said molded base, wherein said cavity comprises an inner surface wherein said inner surface of said cavity has a lens contact area of about 25 percent to about 7 5 percent and a roughness so that a contact lens contained within said cavity will not adhere to the surface of the base, but will float freely in a solution. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Hollinger Abrams Lipscomb us 3,394,717 us 5,467 ,868 US 7,374,037 B2 REJECTIONS July 30, 1968 Nov. 21, 1995 May 20, 2008 Claims 17-22 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Lipscomb and Hollinger. Claim 23 is rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Abrams and Hollinger. OPINION We reverse the Examiner's rejections under 35 U.S.C. Â§ 103(a). The rejection of Claims 17-22 over Lipscomb in view of Hollinger is argued as a group (App. Br. 3--4) for which claim 17 is representative. See 37 C.F.R. Â§ 41.37(c)(iv). Appellants raise essentially the same issues concerning the rejection of claim 23 over Abrams and Hollinger. App. Br. 4--5. We discuss these rejections together. There is no dispute that the base references Lipscomb or Abrams teach the basic structure and method claimed with the exception of the 2 Appeal2014-000719 Application 13/540,086 limitations: "wherein said inner surface of said cavity has a lens contact area of about 25 percent to about 7 5 percent and a roughness so that a contact lens contained within said cavity will not adhere to the surface of the base, but will float freely in a solution." The Examiner relies on Hollinger to demonstrate that it would have been obvious to one of ordinary skill in the art to modify Lipscomb or Abrams so that the lens contact area would cover 25-75% of the inner surface. Ans. 4--5. The Examiner more specifically states that it would have been obvious to modify the protrusions or ridges (i.e., lens contact areas) taught by Hollinger to arrive at the 25-75% amount recited in the claims via routine experimentation. Ans. 4--5. This is essentially the point of dispute on appeal. Appellants argue that one of ordinary skill in the art would not have modified Lipscomb or Abrams in order to add more protrusions (i.e., lens contact area) as provided by Hollinger via routine experimentation because Lipscomb already provides an arguably similar workable range of 85-100%. App. Br. 3. However, it is not clear from the record whether the range provided by Lipscomb is the same as the range provided in the claims. The Examiner, citing the rationale provided by In re Aller, 220 F.2d 454, 456 (CCPA 1955), regarding routine optimization, states: where the general conditions of a claim (the raised portions covering the inner surface) are disclosed in Hollinger, it is not inventive to discover the optimum or workable ranges by routine experimentation (i.e. to add more protrusions to increase the percentage of the inner surface covered or to remove protrusions to decrease the percentage of the inner surface covered). Ans. 4. The critical flaw with this rationale is that Examiner has failed to establish an overlapping or encompassing range, that the variables which are the product of routine optimization were known to be result-effective, or any 3 Appeal2014-000719 Application 13/540,086 other rational underpinnings in support of the Examiner's conclusion of obviousness. Regarding the obviousness rejections based on Lipscomb or Abrams in view of Hollinger, the Examiner has not pointed to any evidence or articulated any reasoning supported by rational underpinnings regarding selecting a particular lens contact area percentage range according to claims 17 and 23. App. Br. 3-5; Ans. 3-5. Accordingly, we reverse the Examiner's rejections based on Lipscomb or Abrams and Hollinger for claims 17-23. We enter new grounds of rejection for claim 17-22 under 35 U.S. C. Â§ 112, second paragraph. Claim 17 recites, "wherein said inner surface of said cavity has a lens contact area of about 25 percent to about 7 5 percent and a roughness so that a contact lens contained within said cavity will not adhere to the surface of the base, but will float freely in a solution." We reject claim 17, and those claims depending therefrom, as indefinite because, on the record before us, it is unclear what is meant by these limitations. Specifically, it is not clear from claim 17, when read in light of the Specification, whether the contact lens contained within the cavity will not adhere to the surface of the base because of "a lens contact area," "a roughness," or both. It is not clear from the claim or the rest of the Specification precisely to what "so that" refers. This phrase is amenable to different reasonable interpretations depending upon what the absence of adhesion is attributed to, the contact area, the "roughness," or both. The Specification does not provide sufficient guidance as to the proper 4 Appeal2014-000719 Application 13/540,086 interpretation of this phrase. We are therefore justified in requiring Appellants to more precisely define the metes and bounds of the claimed subject matter. In re Packard, 751F.3d1307 (Fed. Cir. 2014). DECISION The rejection of claims 17-22 as being unpatentable over Lipscomb in view of Hollinger is reversed. The rejection of claim 23 as being unpatentable over Abrams in view of Hollinger is reversed. Pursuant to our authority under 37 C.F.R. Â§ 41.50(b), we enter a new ground of rejection of claim 17-22 under 35 U.S.C. Â§ 112, 2nd paragraph as being indefinite. This decision contains new grounds of rejection pursuant to 37 C.F.R. Â§ 41.50(b). 37 C.F.R. Â§ 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. Â§ 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner. ... (2) Request rehearing. Request that the proceeding be reheard underÂ§ 41.52 by the Board upon the same record. REVERSED; 37 C.F.R. Â§ 41.50(b) 5