Ex Parte Pugh et alDownload PDFPatent Trial and Appeal BoardOct 27, 201612961667 (P.T.A.B. Oct. 27, 2016) Copy Citation 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 Appeal2015-002619 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 2 Appeal2015-002619 Application 12/961,667 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. 3 Appeal2015-002619 Application 12/961,667 (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? 4 Appeal2015-002619 Application 12/961,667 (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 5 Appeal2015-002619 Application 12/961,667 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 6 Appeal2015-002619 Application 12/961,667 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 ). 7 Appeal2015-002619 Application 12/961,667 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 8 Appeal2015-002619 Application 12/961,667 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. 9 Appeal2015-002619 Application 12/961,667 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 10 Appeal2015-002619 Application 12/961,667 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 11 Copy with citationCopy as parenthetical citation