Ex Parte TOMODA et al

Patent Trial and Appeal Board

Feb 4, 2019

13851679 (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. § 134(a) from a final rejection of
claims 1-12 and 14--18. We have jurisdiction under 35 U.S.C. § 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.
§ 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. §
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.
§ 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. § 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
705·
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 § 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 § 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 § 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 § 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