Neil Goodenough et al.

Patent Trials and Appeals Board

Sep 19, 2019

15007237 - (D) (P.T.A.B. Sep. 19, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/007,237 01/27/2016 Neil Goodenough P10044WO06USD01(053-02F) 2889
81693 7590 09/19/2019
Kilyk & Bowersox, P.L.L.C.
400 Holiday Court
Suite 102
Warrenton, VA 20186
EXAMINER
SULTANA, NAHIDA
ART UNIT PAPER NUMBER
1743
MAIL DATE DELIVERY MODE
09/19/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte NEIL GOODENOUGH, DAVID ROBERT MORSLEY, IAN
BRUCE, EDYTA S. BIALEK, and LEE DARREN NORRIS
____________________

Appeal 2018-001337
Application 15/007,237
Technology Center 1700
____________________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
N. WHITNEY WILSON, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
March 6, 2017 decision rejecting claims 20, 21, and 23–312 (“Non-Final
Act.”). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). An
oral hearing was held on August 29, 2019, a transcript of which will be
made part of the record.
We reverse.

1 Appellant is the Applicant, CooperVision International Holding Company,
L.P., which is also identified as the real party in interest (Appeal Br. 1).
2 Claims 32–36 have been withdrawn from consideration (Non-Final Act. 1).
Appeal 2018-001337
Application 15/007,237

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CLAIMED SUBJECT MATTER
Appellant’s disclosure relates to an ophthalmic mold member which
includes a molding surface configured to form an entire surface (either
anterior or posterior) of a contact lens (Abstract). The molding surface
contains two distinct portions formed from different polymers (id.). One
polymer is water soluble and the other polymer is water insoluble (Spec.
¶¶ 29, 49). Details of the claimed invention are set forth in independent
claim 20, which is reproduced below from the Claims Appendix to the
Appeal Brief (emphasis added):
20. An ophthalmic contact lens mold member including a
molding surface configured to form an entire anterior or
posterior surface of a contact lens, the molding surface
comprising:
(a) a distinct first portion formed of a first polymer,
wherein the first polymer is water-soluble, and wherein the
distinct first portion is configured to come into direct contact
with a polymerizable composition to cast mold a first region of
the anterior or posterior surface of the contact lens; and
(b) a distinct second portion formed of a second polymer
that is different from the first polymer, wherein the second
polymer is essentially insoluble in water, and wherein the
distinct second portion is configured to come into direct contact
with the polymerizable composition to cast mold a second
region of the same anterior or posterior surface of the contact
lens, and is configured, in combination with the distinct first
portion, to form the entire anterior or posterior molding surface,
and wherein the combination of the distinct first portion and the
distinct second portion are configured to come into direct
contact with the polymerizable composition to cast mold the
entire anterior or posterior surface of the contact lens.
Appeal 2018-001337
Application 15/007,237

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REJECTIONS3
1. Claims 20, 23, 24, and 27–31 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Tokarski.4
2. Claims 21, 28, and 29 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tokarski in view of Plastic Technology.5
3. Claims 25 and 26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tokarski in view of Yamamichi.6

DISCUSSION
We decide this appeal based on limitations found in independent
claim 20. Accordingly, we limit our analysis to the rejection of claim 20 as
obvious over Tokarski.
The Examiner finds that Tokarski teaches an ophthalmic contact lens
mold member including a molding surface configured to form an entire
surface of a contact lens (Non-Final Act. 8, citing Tokarski ¶¶ 20–79, FIGS.
1–4):

3 In the Non-Final Action, claims 20, 23, 24, and 27–31 were rejected under
35 U.S.C. § 102(b) as anticipated by Tokarski (Non-Final Act. 3). This
rejection was withdrawn by the Examiner (Ans. 2) and, therefore, is not
considered as part of this appeal.
4 Tokarski et al., US 2008/0001317 A1, published January 3, 2008.
5 “Vinyl Alcohol Polymers Are Moldable and Extrudable,” Plastics
Technology, published July 2009.
6 Yamamichi, US 2006/0284327 A1, published December 21, 2006.
Appeal 2018-001337
Application 15/007,237

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FIG. 1 illustrates a diagram of an ophthalmic lens mold as taught by Tokarski.
As shown in FIG. 1 above, Tokarski’s lens mold has two parts:
female concave piece 102 and male convex piece 101. The Examiner
interprets claim 20 as requiring only “a distinct first and second mold (made
of different material), one water soluble material, and the other water
insoluble material” (Non-Final Act. 9). The Examiner further finds that
Tokarski teaches the use of both water soluble and water insoluble polymers
to form the mold member (Non-Final Act. 8–9). The Examiner also finds
there is sufficient motivation for one of ordinary skill in the art to modify
Tokarski’s mold parts “in order to have at least one mold made of [a] water
soluble material (see [0040]), and the other insoluble ([0040]).” (Non-Final
Act. 10).
Appellant argues that claim 20 requires that the molding surface of a
single mold part (i.e. a part which can form either the anterior or the
posterior surface of a contact lens) comprise two distinct portions, a first
portion formed of the water-soluble polymer, and a second portion formed
of the water insoluble polymer (Appeal Br. 5). The Examiner, in response,
contends that “Appellant's argument is not found persuasive since claim 20
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Application 15/007,237

5
as written does not state that ‘both first and second portions form SAME,
single, surface (anterior or poster) of the contact lens’ as argued” (Ans. 3).
In view of the claim language and the disclosure of Appellant’s
Specification, we agree with Appellant and reverse the rejection. In
particular, claim 20 recites that the second distinct portion of the molding
surface “is configured to come into direct contact with the polymerizable
composition to cast mold a second region of the same anterior or posterior
surface.” (Emphasis added). Thus, contrary to the Examiner’s argument,
the two distinct regions are required to cast mold the same surface of the
contact lens. Moreover, the Specification is clear in stating that:
“[F]orming the entire molding surface does not comprise forming a
mixture of the first and second polymers and using the polymer mixture
to form the entire molding surface. Instead, distinct first and second
portions are combined to form the entire molding surface, and once the
first and second portions have been combined to form the entire molding
surface, distinct first and second portions remain.”
(Spec. ¶ 24) (emphasis added). Thus, forming the molding surface from a
mixture of water-soluble and water-insoluble polymers without having
distinct regions of those two materials would not meet the limitations of the
claim.
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
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Application 15/007,237

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or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988). In this instance, the preponderance of the evidence of
record supports Appellant’s contention that the cited art does not teach or
suggest a single molding surface made up of two distinct regions, one
formed of a water soluble polymer, and one formed of a water insoluble
polymer. Accordingly, we reverse the rejection of claim 20. We reverse the
rejections of the dependent claims for the same reason.

CONCLUSION
We REVERSE the rejection of claims 20, 23, 24, and 27–31 under
35 U.S.C. § 103(a) as unpatentable over Tokarski.
We REVERSE the rejection of claims 21, 28, and 29 under
35 U.S.C. § 103(a) as unpatentable over Tokarski in view of Plastic
Technology.
We REVERSE the rejection of claims 25 and 26 under 35 U.S.C. § 103(a)
as unpatentable over Tokarski in view of Yamamichi.

REVERSED