Ex Parte Pugh et al

Patent Trial and Appeal Board

Oct 27, 2016

12961667 (P.T.A.B. Oct. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/961,667 12/07/2010
27777 7590 10/31/2016
JOSEPH F. SHIRTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
FIRST NAMED INVENTOR
Randall B. Pugh
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.
VTN5294USCIP1 9588
EXAMINER
JOHNSTON, PHILLIP A
ART UNIT PAPER NUMBER
2881
NOTIFICATION DATE DELIVERY MODE
10/31/2016 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 RANDALL B. PUGH, EDWARD R. KERNICK, WILLIAM
CHESTER NEELEY, DWIGHT ABOUHALKAH, LESLIE A. VOSS,
KARSON S. PUTT, and JAMES DANIEL RIALL
Appeal2015-002619
Application 12/961,667
Technology Center 2800
Before ST. JOHN COURTENAY III, ERIC S. FRAHM, and CARLL.
SILVERMAN, Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
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Application 12/961,667
STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-8 and 10-23. Claim 9 has been canceled. We have jurisdiction
under 35 U.S.C. § 6(b).
Appellants' invention is a contact lens case having a base for
receiving a lens storage case (claim 1; Spec. 1:11-13 and 3:2-15; Abs.; Fig.
1 ). The base includes an electronic circuit for controlling a light emitting
diode (LED) for exposing the lenses with disinfecting radiation emitted from
the LED for a sufficient amount of time (claim 1; Spec. 6:9-7:9). The LED
is preferably an ultraviolet (UV) LED that emits radiation in the range of
250-280 nanometers (Spec. 6: 16-21; claim 8).
We affirm the obviousness rejections of claims 1-8, 10-18, and 21-
23, and reverse the obviousness rejection of claims 19 and 20.
Exemplary Claims
Exemplary claims 1, 19, and 20 under appeal, with emphases added,
read as follows:
1. A base for receiving an ophthalmic lens storage case
for storing one or more ophthalmic lenses, the base comprising:
a receptacle for receiving an ophthalmic lens storage
case, wherein said storage case is removable from said
receptacle and said storage case includes a removable cap
attached to said storage case by a fastening mechanism, wherein
said removable cap seals off an ambient atmosphere from a
storage compartment within the case and wherein said storage
case further comprises alignment mechanisms;
an electronic circuit mounted on said base, wherein said
electronic circuit controls a predetermined cycle time of light
emitting diode exposure, wherein the cycle time provides for
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emission of disinfecting radiation with a sufficient length of
time of exposure to a storage compartment proximate to the
base to kill an organism on an ophthalmic lens stored in the
storage compartment and then removal of the radiation;
and
one or more light emitting diodes emitting disinfecting
radiation in a direction which will intersect an ophthalmic lens
storage compartment proximate to the ophthalmic lens storage
case, wherein said light emitting diodes are controlled by the
electrical circuit.
19. The base of Claim 15 additionally comprising a
universal serial bus connector for providing logical
communication between one or both of: the processor and the
digital storage; and personal processing device.
20. The base of Claim 15 additionally comprising a
universal serial bus connector for providing an electrical
current for operating the storage base.
Examiner's Rejections
(1) The Examiner rejected claims 1---6 and 10-23 as being
unpatentable under 35 U.S.C. § 103(a) over Borup (US 2007/0206377 Al;
published Sept. 6, 2007), Baron (US 5,120,499; issued June 9, 1992), and
Ebel (US 6,592,816 B 1; issued July 15, 2003). 1 Final Act. 4--11.
1 Where a reference is relied on to support a rejection, whether or not in a
minor capacity, that reference should be positively included in the statement
of the rejection. See In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970).
The Examiner's responsive argument portion of the Answer appears to rely
upon new references relating to light sources used for disinfection. These
references have not been included in the statement of the rejection and are
not directly applied in rejecting the claims on appeal. These references (e.g.,
McCabe and Harris cited at Ans. 3) have not been considered by us in our
deliberations since they have not been positively included in a statement of
the rejection. See In re Hoch, supra.
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(2) The Examiner rejected claims 7 and 8 as being unpatentable under
35 U.S.C. § 103(a) over Borup, Baron, Ebel, and Brown-Skrobot (US
2005/0079096 Al; published Apr. 14, 2005). Final Act. 11-12.
Issues on Appeal
Appellants present separate arguments as to (i) sole independent claim
1 as representative of the group of claims 1, 16-18, and 21-23 (App. Br. 3-
5; Reply Br. 2-3); dependent claims 2, 3---6, 10-15, and 19 and 20 (App. Br.
5); and (iii) dependent claims 7 and 8 which ultimately depend from claim 1
(App. Br. 6; Reply Br. 3). We select claim 1 as representative of the group
of claims consisting of claims 1, 16-18, and 21-23, and we will address
representative independent claim 1 and dependent claims 2-8, 10-15, 19,
and 20 in our analysis herein.
Based on Appellants' arguments in the Appeal Brief (App. Br. 3-7)
and the Reply Brief (Reply Br. 2-3), the following three issues are presented
on appeal:
(1) Did the Examiner err in rejecting claims 1, 16-18, and 21-23 as
being obvious because (a) there is no motivation for making the
combination; and (b) the combination of Borup, Barron, and Ebel fails to
teach or suggest the base for storing lenses and cleaning the lenses using
disinfecting radiation emitted from an LED as set forth in representative
claim 1? In particular, this issue is principally centered on whether or not
Borup' s light inherently provides disinfecting radiation.
(2) Did the Examiner err in rejecting claims 2---6 and 10-15 as being
obvious because the combination of Borup, Barron, and Ebel fail to teach or
suggest the limitations recited in claims 2---6 and 10-15?
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(3) Did the Examiner err in rejecting claims 7 and 8 as being obvious
because there is no reason to combine Borup, Barron, Ebel, and Brown-
Skrobot other than impermissible hindsight?
(4) Did the Examiner err in rejecting claims 19 and 20 as being
obvious because the combination of Borup, Barron, and Ebel fails to teach
or suggest using a "universal serial bus [USB] connector" to provide
operating current or communication signals to the device, as recited in
claims 19 and 20?
ANALYSIS
We have reviewed the Examiner's rejections (Final Act. 4--12) in light
of Appellants' contentions in the Appeal Brief (App. Br. 3-7) and Reply
Brief (Reply Br. 2-3) that the Examiner has erred in light of the Examiner's
response to Appellants' arguments in the Appeal Brief (Ans. 9-23).
Issue 1: Representative Claim 1 and Claims 16-18 and 21-23 Grouped
Therewith
With regard to representative claim 1, we adopt as our own (1) the
findings and reasons set forth by the Examiner (Final Act. 4--8; Ans. 3---6),
and (2) the reasons set forth by the Examiner in the Examiner's Answer in
response to Appellants' Appeal Brief (see Ans. 9-19), with the exception
that we do not rely upon the cited extrinsic evidence (e.g., McCabe and
Harris cited at Ans. 3). We concur with the conclusion reached by the
Examiner, and disagree with Appellants' arguments, as to representative
claim 1. We highlight and address specific findings and arguments for
emphasis as follows.
Appellants have not shown that the Examiner erred in rejecting
representative claim 1 as being obvious because (a) there is motivation for
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making the combination as provided by the Examiner (see Final Act. 5-11;
Ans. 4--6 and 13-19); and (b) the combination of Borup, Baron, and Ebel
teaches or suggests the base for storing lenses and cleaning the lenses using
disinfecting radiation emitted from an LED as set forth in representative
claim 1. In particular, Appellants have not shown that Borup's light does
not inherently provide disinfecting radiation at least because Baron discloses
irradiating lenses in a case with ultraviolet light in order to "destroy micro-
organisms associated with contact eye lenses to thereby safeguard against
diseases to the eyes or other parts of the human body which may be caused
by the presence of such organisms" (col. 2, 11. 1--4; see also col. 2, 11. 15-30
and col. 7, 11. 10-13 and 30--41 (claim 7)).
"The inherent teaching of a prior art reference" is a "question of fact."
In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995). Inherency may supply a
missing claim limitation in an obviousness analysis. See, e.g., PAR
Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc. 773 F.3d 1186, 1194--95
(Fed. Cir. 2014); Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1354
(Fed. Cir. 2012); Alcon, 687 F.3d 1362, 1369 (Fed. Cir. 2012); In re Kao,
639 F.3d 1057, 1070 (Fed. Cir. 2011); In re Kubin, 561F.3d1351, 1357
(Fed. Cir. 2009).
Where the Examiner establishes a reasonable assertion of inherency
and thereby evinces that a claimed product appears to be identical to a
product disclosed by the prior art and/ or that the products claimed by the
applicant and disclosed in the prior art appear to be the same, the burden is
properly shifted to the applicant to show that they are not. See In re Spada,
911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1254--56
(CCP A 1977). Such a burden-shifting framework is fair because of "the
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PTO' s inability to manufacture products or to obtain and compare prior art
products." In re Best, 562 F.2d at 1255 (referencing In re Brown, 459
F.2d 531(CCPA1972)).
We find the evidence cited by the Examiner (i.e., the applied
references themselves, including Baron2) sufficient to show that "the natural
result flowing from the operation as taught would result in the performance
of the questioned function." PAR Pharm., Inc. v TWI Pharms., Inc., 773
F.3d at 1194--95 (Fed. Cir. 2014)(intemal citation omitted). In other words,
Baron's disclosure of using light irradiation to clean lenses supports the
Examiner's finding that Borup's light inherently (and as a natural result)
operates to disinfect lenses in a case as recited in representative claim 1.
Accordingly, we sustain the obviousness rejection of representative
claim 1, as well as claims 16-18 and 21-23 grouped therewith.
Issue 2: Claims 2-6 and 10--15
Claim 2 further recites a reflective surface for reflecting disinfecting
radiation towards the lens storage compartment. We agree with the
Examiner (Final Act. 8) that it would have been obvious to use different
materials, including reflective materials, in the lens storage case base.
Notably, Borup (i-f 35) teaches or suggests using a reflecting light emitted
from light emitting device 112, and Baron (Fig. 3) also teaches using a
reflector 26 to reflect light from light source 24 (col. 5, 11. 38--48).
2 See Baron col. 2, 11. 1--4and15-30 and col. 7, 11. 10-13 and 30--41
(evidencing the fact that light irradiation results in cleansing of lenses and
destruction of micro-organisms). Notably, Baron (col. 2, 11. 19-30) discloses
using wavelengths for light radiation around 250-290 nanometers, which is
very similar to Appellants' description of using light of wavelengths
between 250-280 nanometers (Spec. 6: 16-21 ).
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Therefore, we are not persuaded by Appellants' assertion (App. Br. 5) that
the Examiner's case for obviousness is made out of "thin air" (App. Br. 5).
Claims 3---6 further recite a pulsing mechanism to provide a pulsed
pattern of disinfecting radiation, and claim 6 adds that a processor is used to
generate a pattern of radiation. Appellants' assertion (App. Br. 5) that the
Examiner has not shown these features to be obvious is unpersuasive in light
of (i) our agreement with the Examiner (Final Act. 8-9) that this would have
been obvious; and (ii) the fact that Ebel discloses using computer (see col. 8,
11. 37-38) to produce pulses for lens sterilization (see col. 9, 11. 47-54) using
a computer 11 (see col. 11, 1. 54 to col. 12, 1. 3).
Claims 10-15 further recite a processor, logical control signal,
display, audio component, and memory for generating the disinfecting
radiation. Appellants' assertion (App. Br. 5) that the Examiner has not
shown these features to be obvious is unpersuasive for similar reasons
discussed supra, with regard to claim 6, and because Ebel discloses control,
logic algorithms, mass storage (see col. 11, 11. 64 to col. 12, 1. 3), as well as
an interactive user interface 10 (which obviously could include a display,
audio component, memory, etc.) and operating on digital information (col.
12, 11. 34--35). Therefore, we agree with the Examiner that such features are
"commonly included in prior art computer systems" (Final Act. 9).
Appellants have neither shown (i) the Examiner erred in rejecting
claims 2---6 and 10-15 as being obvious; or (ii) the combination of Borup,
Barron, and Ebel fails to teach or suggest the limitations recited in claims 2-
6 and 10-15. Accordingly, we sustain the Examiner's obviousness
rejections of dependent claims 2---6 and 10-15.
Issue 3: Claims 7 and 8
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With regard to claims 7 and 8, Appellants' arguments (App. Br. 6;
Reply Br. 3) that the Examiner (i) fails to provide a reason to combine
Borup, Baron, Ebel, and Brown-Skrobot; and/or (ii) employs impermissible
hindsight, are unpersuasive in light of the Examiner's response in the
Answer (Ans. 22-23) taken with the prima facie case made with respect to
claims 7 and 8 in the Final Rejection (Final Act. 5-8 and 11-12). To the
extent Appellants argue (see App. Br. 6) the Examiner improperly combines
four references, we note that reliance on a large number of references in a
rejection does not, without more, weigh against the obviousness of the
claimed invention. In re Gorman, 933 F.2d 982, 985 (Fed. Cir. 1991)
(affirming a rejection based on thirteen prior art references). See also MPEP
2145(V). In re Gorman, 933 F.2d at 987 ("The large number of cited
references does not negate the obviousness of the combination, for the prior
art uses the various elements for the same purposes as they are used by
appellants, making the claimed invention as a whole obvious in terms of
3 - rT s (' § 1()"'1''' - 5 Li.'- . •. .) ).
Issue 4: Claims 19 and 20
We agree with Appellants' arguments and conclusions with regard to
dependent claims 19 and 20. Specifically, based on the record before us, we
are constrained to find that none of the applied references teach or suggest
connecting the base with a USB connector, and, thus, the combination fails
to teach or suggest the USB limitations recited in dependent claims 19 and
20. Because we find Borup, Barron, and/or Ebel to be silent as to any use of
a USB connector as claimed, we do not sustain the Examiner's rejection of
claims 19 and 20.
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The Patent Trial and Appeal Board is a review body, rather than a
place of initial examination. Harris (US 2010/0234925 Al; published Sept.
16, 2010) discloses a treatment system 270 for nail disease using an
antimicrobial light 272 that includes a bidirectional communication link such
as a USB cable between the light source 272 and the controller 276 and/or
the light source and the light scanner 274 (see Fig. 25 and i-fi-f 165-175; see
also i-f 170 describing the USB cable). However, we leave the Examiner to
consider the appropriateness of further rejections of dependent claims 19 and
20 under 35 U.S.C. § 103(a) over Borup, Barron, Ebel, and Harris, or in
combination with another prior art reference pertaining to USB connectors.
CONCLUSIONS
(1) The Examiner did not err in rejecting claims 1, 16-18, and 21-23
as being obvious because (a) there is ample motivation for making the
combination; and (b) the combination of Borup, Barron, and Ebel teaches or
suggests the base for storing lenses and cleaning the lenses using
disinfecting radiation emitted from an LED as set forth in representative
claim 1 since Borup' s light inherently provides disinfecting radiation.
(2) The Examiner did not err in rejecting claims 2---6 and 10-15 as
being obvious because the combination of Borup, Barron, and Ebel teaches
or suggests the limitations recited in claims 2---6 and 10-15.
(3) The Examiner did not err in rejecting claims 7 and 8 as being
obvious because there are ample reasons to combine Borup, Barron, Ebel,
and Brown-Skrobot.
(4) The Examiner erred in rejecting claims 19 and 20 as being obvious
because the combination of Borup, Barron, and Ebel fails to teach or suggest
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using a "universal serial bus [USB] connector" to provide operating current
or communication signals to the device, as recited in claims 19 and 20.
DECISION
The Examiner's obviousness rejection(s) of (i) claims 1-8, 10-18, and
21-23 under 35 U.S.C. § 103(a) are affirmed; and (ii) claims 19 and 20
under 35 U.S.C. § 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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