Ex Parte TOMODA et al

Patent Trials and Appeals BoardFeb 4, 2019

13851679 - (D) (P.T.A.B. Feb. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/851,679 03/27/2013 Masaoki TOMODA 22852 7590 02/06/2019 FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP 901 NEW YORK A VENUE, NW WASHINGTON, DC 20001-4413 UNITED ST A TES OF AMERICA 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. 04788.0283 8478 EXAMINER CHOUDHURY, MUSTAK ART UNIT PAPER NUMBER 2872 NOTIFICATION DATE DELIVERY MODE 02/06/2019 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): regional-desk@finnegan.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MASAOKI TOMODA, SATORU ITO, KEI !SHIMURA, and HIROTATSU OKUMURA Appeal2017-011514 Application 13/851,679 Technology Center 2800 Before JAMES C. HOUSEL, A VEL YN M. ROSS, and JEFFREY R. SNAY, Administrative Patent Judges. ROSS, Administrative Patent Judge. DECISION ON APPEAL 1 Appellant2 appeal under 35 U.S.C. Â§ 134(a) from a final rejection of claims 1-12 and 14--18. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 In our Decision we refer to the Specification filed March 27, 2013 ("Spec."), the Final Office Action appealed from dated October 21, 2016 ("Final Act."), the Appeal Brief filed May 8, 2017 ("Appeal Br."), the Examiner's Answer dated July 14, 2017 ("Ans.") and the Reply Brief filed September 12, 2017 ("Reply Br."). 2 Appellant is Applicant, Nikon-Essilor Co., Ltd., which according to the Appeal Brief is also the real party in interest. Appeal Br. 1. Appeal 2017-011514 Application 13/851,679 STATEMENT OF THE CASE The subject matter on appeal "relates to an optical component and method of manufacturing the optical component." Spec. 1. In particular, "an aspect of the invention is to provide an optical component which has an antiglare effect, is effective for a reduction in feeling of fatigue and prevention of eye trouble, and is excellent in visibility," while reducing light with a wavelength in the blue region of visible light, i.e., 380 nm to 500 nm. Id. at 2. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A spectacle lens comprising: a plastic base which has a convex surface and a concave surface; and a multilayer film which is disposed on at least the convex surface of the plastic base, wherein the multilayer film has an average reflectivity of 4.2% to 10% over a wavelength range of 400 nm to 500 nm of blue light. Appeal Br. 19 (Claims App.). REJECTIONS The Examiner maintains the following rejections: A. Claims 1, 4--6, and 9-10 stand rejected under 35 U.S.C. Â§ 102(b) as being anticipated by Ishak. 3 Final Act. 8. 3 Ishak et al., US 7,520,608 B2, issued April 21, 2009 ("Ishak"). 2 Appeal 2017-011514 Application 13/851,679 B. Claims 2, 3, 11, and 12 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Ishak in view of Roisin. 4 Id. at 10. C. Claims 7, 8, and 14 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Ishak in view of Abe. 5 Id. at 14. D. Claim 15-18 stands rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Ishak in view of Abe and further in view of Roisin. Id. at 1 7. Appellant seeks our review of Rejections A-D. Appeal Br. 5. Because our basis for reversal-i.e., that Ishak fails to describe a multilayer film having an average reflectivity of 4.2% to 10% over a wavelength range of 400 nm to 500 nm of blue light-is common to all claims, we limit our discussion to Rejection A, claim 1. OPINION We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections .... ")). After considering the evidence presented in this Appeal and each of Appellant's arguments, we are 4 Roisin et al., US 2008/0213473 Al, published September 4, 2008 ("Roisin"). 5 Abe et al., US 2009/0257022 Al, published October 15, 2009 ("Abe"). 3 Appeal 2017-011514 Application 13/851,679 persuaded that Appellant identifies reversible error as explained below. Thus, we reverse the Examiner's rejection. We add the following. The Examiner rejects claims 1, 4--6, and 9--10 as anticipated by Ishak. Final Act. 8. Referring to Figures 7 A---C (7 A shown below), the Examiner finds that Ishak describes an ophthalmic system 700 that includes base lens 702 having a convex and concave surface and a multilayer film 705 comprising a filter comprising organic and/or inorganic substances that is disposed on the convex surface of the base. Id. 700 702 703 704 705Â· Figures 7 A-7C "illustrate various exemplary combinations of a blue blocking component, a color balancing component, and an ophthalmic component." Ishak, col. 3, 11. 21-23. The Examiner further finds that the multilayer film has a reflectivity of 4.3% to 10% over a wavelength of 400 nm to 500 nm. Final Act. 8-9. Appellant presents several arguments to oppose the Examiner's rejection. See generally Appeal Br. 6-13. Because we find Appellant's argument that Ishak fails to describe a multilayer film having an average reflectivity of 4.2% to 10% over a wavelength range of 400 nm to 500 nm of blue light (Id. at 13-14) persuasive, we do not address Appellant's 4 Appeal 2017-011514 Application 13/851,679 remaining arguments. In particular, Appellant contends that while both Ishak and the invention seek to cut the light in the wavelength range of 400- 500 nm, each accomplishes the reduction of blue light in a different manner-Ishak uses a dyed lens in combination with a multilayer anti- reflection coating where the instant invention requires a multilayer film having an average reflectivity of 4.2% to 10% over a wavelength of 400 nm to 500 nm. Appeal Br. 13. Anticipation requires " [ t ]he identical invention [to] be shown in as complete detail as is contained in the patent claim." Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). Not only must each claim element be shown in a single reference, but the elements must be "arranged or combined in the same way as recited in the claims." Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008). Here, the Examiner urges that the multilayer film of Ishak meets the claimed reflectivity limitations. Final Act. 8-9 ( citing col. 1, 11. 31-32, col. 12, 11. 44--59, and col 13, 11. 12-15). However, Ishak makes clear that it is the combination of both the dyed lens and the multilayer antireflection coating that achieves the improved results. For example, Ishak explains that: The system includes an ophthalmic material doped with a dye that absorbs light in a wavelength range and a layer that corrects a color imbalance caused by absorption of light by the dye. [Ishak, Abstract]. In systems according to the present invention, AR coatings or other color balancing films may be combined with an absorbing dye to allow for simultaneous absorption of blue wavelength light, typically in the 430 nm region, and increased transmittance. [Id. at col. 10, 11. 59---63] 5 Appeal 2017-011514 Application 13/851,679 In systems according to the present invention, a blue-absorbing dye may be combined with a coating or other film to provide a blue blocking, color balanced system. The coating may be an AR coating on the front surface that is modified to correct the color of the transmitted and/or reflected light. [Id. at col. 12, 11. 1-5]. [B]y combining an absorbing dye into the lens substrate this reflection with the front modified anti-reflection coating the desired effect can be achieved along with a reduction of the reflectivity to a level that is well accepted by the wearer. The reflected light observed by a wearer of a system including one or more AR coatings may be reduced to 8% or less, or more preferably 3% or less. [Id. at col. 12, 11. 48-59]. See also id. at claim 1 ( claiming an ophthalmic system composed of a dyed lens and a film). Thus, Ishak explains that it is the light absorbing dye (coated on or included within the lens) in combination with the anti- reflection multilayer coating that reduces reflectivity of the blue light wavelength as opposed to the multilayer coating alone as claimed. Furthermore, the Examiner identifies no discussion in Ishak illustrating an average reflectivity of the multilayer coating separate from a combination with the dyed lens that falls within the claimed range. See generally Final Act. and Ans. Rather, as shown in Figures 20 and 28, the anti-reflective coating alone has an average reflectivity across a wavelength of 400 to 500 nm of much greater than 10% and only achieves the claimed average reflectivity at wavelengths greater than 500 nm. See Ishak, Figs. 20 and 28; see also Appeal Br. 8, 12; see also Reply 3, 7-8. Therefore, on this record, we cannot sustain the Examiner's rejection. The Examiner's remaining rejections based on obviousness (Rejections B- 6 Appeal 2017-011514 Application 13/851,679 D) similarly fail, because the Examiner fails to remedy the deficiency above or provide any rationale to modify Ishak in order to achieve a multilayer film having an average reflectivity of between 4.2% to 10% across a wavelength of 400 to 500 nm as required by the claims. CONCLUSION Appellant has identified a reversible error in the Examiner's rejection of claims 1, 4---6, and 9--10 under 35 U.S.C Â§ 102(b) as anticipated by Ishak. Appellant has identified a reversible error in the Examiner's rejection of claims 2, 3, 11, and 12 under 35 U.S.C Â§ 103(a) as unpatentable over Ishak in view of Roisin. Appellant has identified a reversible error in the Examiner's rejection of claims 7, 8, and 14 stand rejected under 35 U.S.C Â§ 103(a) as unpatentable over Ishak in view of Abe. Appellant has identified a reversible error in the Examiner's rejection of claims 15-18 under 35 U.S.C Â§ 103(a) as unpatentable over Ishak in view of Abe and further in view of Roisin. DECISION For the above reasons, the Examiner's rejection of claims 1-12 and 14--18 is reversed. REVERSED 7