Ex Parte Wong et al

Patent Trial and Appeal BoardApr 19, 2016

13211936 (P.T.A.B. Apr. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/211,936 08/17/2011 21839 7590 04/21/2016 BUCHANAN, INGERSOLL & ROONEY PC POST OFFICE BOX 1404 ALEXANDRIA, VA 22313-1404 FIRST NAMED INVENTOR Kathy Wai Yuen WONG 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. 1021255-000030.001 5237 EXAMINER FRANKLIN, JODI COHEN ART UNIT PAPER NUMBER 1741 NOTIFICATION DATE DELIVERY MODE 04/21/2016 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): ADIPDOC 1@BIPC.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KA THY WAI YUEN WONG, DAVID ANDREW LEWIS, FANG CHEN, BOHDAN GRZEGORZ CIESLINSKI, and RUAN KIAK TOH Appeal2014-002488 Application 13/211,936 Technology Center 1700 Before CHUNG K. PAK, TERRY J. OWENS, and JEFFREY T. SMITH Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 46-65, 67, 68 and 70. We have jurisdiction under 35 U.S.C. Â§ 6(b). The Invention The Appellants claim a method for making a photochromic article such as an ophthalmic lens. Claim 46 is illustrative: 46. A method for manufacturing a photochromic article, the method including the steps of: Appeal2014-002488 Application 13/211,936 forming a photochromic host layer on the casting face of at least one mould section, treating the photochromic host layer to minimise [sic] damage during subsequent steps, filling an assembled mould that includes the mould section having the photochromic host layer with a substrate monomer composition, before filling the assembled mould with the substrate monomer composition, applying a barrier layer to the photochromic host layer to minimize penetration of the substrate monomer composition into the photochromic host layer, and then, curing the substrate monomer composition to form a solid article that includes the photochromic host layer, and the barrier layer, and introducing a photochromic compound into the photochromic host layer either before or after the step of curing the substrate monomer composition. Mueller Kingsbury Gupta(Gupta '940) Welch Gupta (Gupta '845) The References us 5,079,319 us 5,523,030 us 5,531,940 US 2002/0076549 Al WO 95/15845 Al The Rejections Jan. 7, 1992 June 4, 1996 July 2, 1996 June 20, 2002 June 15, 1995 The claims stand rejected under 35 U.S.C. Â§ 103 as follows: claims 46-55, 65, 67, 68, and 70 over Kingsbury in view of Gupta '940 and Gupta '845, claims 56-58 over Kingsbury in view of Gupta '940, Gupta '845 and Mueller, and claims 59---64 over Kingsbury in view of Gupta '940, Gupta '845 and Welch. OPINION We reverse the rejections. We need address only the sole independent claim, i.e., claim 46. That claim requires applying a barrier layer to a 2 Appeal2014-002488 Application 13/211,936 photochromic host layer to minimize penetration of a substrate monomer composition into the photochromic host layer. To meet that claim requirement the Examiner relies upon Gupta '845 (Ans. 4). Gupta '845 discloses "[m]ethods for making optical quality plastic lenses with photochromic additives" (Abstract). A plastic made from CR-39 (bisphenol A bisallyl carbonate) has a crosslink density which is too high for a photochromic compound to be added to it by dipping it into a heated solution containing a photochromic compound dissolved in an organic solvent, but a soft, low-crosslink-density plastic such as one made from CR-307 (a bisallyl carbonate) is useful (p. 2, 11. 3-15; p. 13, 11. 31-32; p. 24, 11. 1-2). 1 Both CR-39 and CR-307, however, are among the preferred monomers for forming photochromic additive-containing casting resin and layering resin layers provided that no polymerizable component has a functionality greater than two, and are among the preferred monomers for forming hard scratch-resistant outermost layers (p. 12, 1. 29-p. 13; p. 13, 11. 15-17; p. 14, 11. 16-18). Gupta '845 exemplifies a photochromic additive-containing layer comprising CR-307 copolymerized with SR-344 (polyethylene glycol diacrylate; col. 24, 11. 1-2) (Example 3, col. 24, 11. 20- 21 ), a photochromic additive-containing layer comprising CR-39 copolymerized with SR-344, SR 9209 (alkoxylated aliphatic diacrylate ester) and SR 399 (dipentaerythritol pentaacrylate) (Example 4, col. 25, 11. 28-33), 1 That teaching is consistent with the Appellants' disclosure that highly crosslinked lens substrate polymers including CR-39 "are too rigid to be readily imbibable with photochromic compounds and as a consequence they are traditionally difficult to use on photochromic articles" (Spec. 6: 11-16). 3 Appeal2014-002488 Application 13/211,936 and a hard scratch-resistant layer comprising CR-307 copolymerized with SR-344 (Example 4, p. 25, 11. 14--15; p. 26, 11. 2---6). The Examiner argues that "Gupta '845 teaches providing a hard-scratch resistant layer of CR-39 resin between the photochromic host layer and substrate, or lens layer, as shown in Example 3-4 and described on p. 6; lines 5-15, wherein Gupta '845 teaches CR-39 is a hard layer that prevents the photochromic additive from migrating across it, thus a barrier layer (p. 2; lines 9-15, p. 12; lines 7-37, 24)" (Ans. 4). The Examiner does not explain how Gupta '845' s disclosure that a plastic made from CR-39 is unsuitable for having a photochromic compound added to it by dipping it into a heated solution containing a photochromic compound dissolved in an organic solvent (p. 2, 11. 3-12) is a disclosure that the plastic is capable of preventing penetration of a substrate monomer composition into a photochromic host layer as required by the Appellants' claim 46. Nor does the Examiner explain how Gupta '845's indication that Example 3's layer formed using CR-39 is not preferred for containing a photochromic additive due to one of the monomers with which the CR-39 is copolymerized being trifunctional (p. 12, 11. 30-37; p. 13, 11. 15-17) indicates that the layer is capable of functioning as a barrier layer between a substrate monomer composition and a photochromic additive. As for Gupta '845 's Example 4, the Examiner provides no evidence or reasoning which establishes that the layer formed using CR-39 and containing a photochromic additive is capable of functioning as a barrier layer between the photochromic additive and a substrate monomer composition. 4 Appeal2014-002488 Application 13/211,936 Thus, the Examiner has not established that the relied-upon disclosures are sufficient to support a prima facie case of obviousness of the Appellants' claimed method. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) ("A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art"). Accordingly, we reverse the rejections. DECISION/ORDER The rejections under 35 U.S.C. Â§ 103 of claims 46-55, 65, 67, 68 and 70 over Kingsbury in view of Gupta '940 and Gupta '845, claims 56-58 over Kingsbury in view of Gupta '940, Gupta '845 and Mueller, and claims 59---64 over Kingsbury in view of Gupta '940, Gupta '845 and Welch are reversed. It is ordered that the Examiner's decision is reversed. REVERSED 5