Riall, James D. et al.

Patent Trials and Appeals Board

Dec 26, 2019

15144513 - (D) (P.T.A.B. Dec. 26, 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.
15/144,513 05/02/2016 James D. Riall VTN5477USCNT1 6130
27777 7590 12/26/2019
JOSEPH F. SHIRTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
EXAMINER
COLLINS, DARRYL J
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
12/26/2019 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):
jnjuspatent@corus.jnj.com
lhowd@its.jnj.com
pair_jnj@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES D. RIALL, FREDERICK A. FLITSCH,
RANDALL B. PUGH, and
SHARIKA SNOOK
____________

Appeal 2019-001427
Application 15/144,513
Technology Center 2800
____________

Before DONNA M. PRAISS, MICHELLE N. ANKENBRAND, and
JEFFREY R. SNAY, Administrative Patent Judges.

SNAY, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 filed an appeal under 35 U.S.C. § 134(a) from the
Examiner’s decision rejecting claims 1–9, 11–23, and 25–30. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Our Decision refers to the Specification filed May 2, 2016 (“Spec.”), the
Final Office Action dated Mar. 29, 2018 (“Final Act.”), the Appeal Brief
dated Sept. 25, 2018 (“Appeal Br.”), the Examiner’s Answer dated Nov. 5,
2018 (“Ans.”), and the Reply Brief dated Dec. 5, 2018 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Johnson & Johnson Vision Care, Inc.,
as the real party in interest. Appeal Br. 1.
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BACKGROUND
The subject matter on appeal relates to a multi-piece insert device for
an ophthalmic lens (see, e.g., claims 1 and 15). According to the
Specification, it has been theorized that active components, such as
semiconductor devices, may be incorporated into a contact lens. Spec. 1:20–
22. The Specification states that ophthalmic lenses containing inserts and
components may produce a device having an appearance different from a
standard look of a user’s eye. Id. at 1:27–2:1. Therefore, it may be desirable
for the ophthalmic product to have printed features that render an appearance
similar to a standard look of a user’s eye. Id. at 2:1–3. For instance, the
Specification discloses an embodiment of an ophthalmic lens device having
a pattern representing an iris type pattern. Id. at 16:3–5. The pattern may
cover or obscure underlying components and the region may include
features such as integrated circuits and electrical interconnects. Id. at 16:13–
16. The pattern may further have a window that allows light to pass through
the patterned region, such as to an underlying detector that can detect a
blink, which may signal a desire to change a state in the ophthalmic lens. Id.
at 16:20–27.
Independent claim 1 is illustrative and is reproduced below from the
Claims Appendix of the Appeal Brief. Limitations at issue are italicized.
1. A multi-piece insert device for an ophthalmic lens
comprising:
a back curve piece;
a front curve piece combined with the back curve piece to
form a cavity therebetween;
a pattern of conductive material placed onto one or both of
the front curve piece and the back curve piece;
at least one electronic component placed onto at least a
portion of the pattern of conductive material; and
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a colorant pattern placed onto a surface of the front curve
piece such that it overlies the electronic component but has a
region located within the colorant pattern which comprises a
transparent window located such that light may pass through the
transparent window to the electronic component.

Appeal Br. 11 (Claims App’x).

REJECTIONS ON APPEAL
I. Claims 1, 4–9, 11, 12, 15, 18–23, 25, 26, 29, and 30
under 35 U.S.C. § 103(a) as being unpatentable over
Pugh3 in view of Otis;4
II. Claims 2 and 3 as being unpatentable under 35 U.S.C.
§ 103(a) over Pugh in view of Otis and further in view of
Ocampo;5
III. Claims 13 and 14 as being unpatentable under 35 U.S.C.
§ 103(a) over Pugh in view of Otis and further in view of
Blum;6
IV. Claims 16 and 17 as being unpatentable under 35 U.S.C.
§ 103(a) over Pugh in view of Otis and further in view of
Ocampo; and
V. Claims 27 and 28 as being unpatentable under 35 U.S.C.
§ 103(a) over Pugh in view of Otis and further in view of
Blum.

3 Pugh et al., US 2010/0072643 A1, published Mar. 25, 2010 (“Pugh”).
4 Otis et al., US 2012/0245444 A1, published Sept. 27, 2012 (“Otis”).
5 Ocampo, US 2005/0001978 A1, published Jan. 6, 2005 (“Ocampo”).
6 Blum et al., US 2009/0033863 A1, published Feb. 5, 2009 (“Blum”).
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DISCUSSION
Rejection I
Claims 1, 4–9, 11, 12, 15, 18–23, 25, 26, 29, and 30 under 35 U.S.C.
§ 103(a) as being unpatentable over by Pugh in view of Otis.
The Examiner finds Pugh discloses an insert device for an ophthalmic
lens comprising a back curve piece, a front curve piece, a pattern of
conductive material, at least one electronic component, and a colorant
pattern. Final Act. 4. The Examiner finds Pugh does not teach that the
colorant pattern includes a region comprising a transparent window located
to pass through the window to the electronic component, as claim 1 recites.
Id.
The Examiner finds Otis discloses an ophthalmic device including an
insert, conductive material, a sensor, and a mask overlying an electronic
component that has a window. Id. The Examiner concludes it would have
been obvious to one of ordinary skill in the art to modify Pugh’s device to
include a window in its colorant pattern, as Otis teaches, to permit energy to
reach a sensor for its operability. Id.
Appellant contends that Otis’s opening or void is not a “transparent
window,” as claim 1 recites. Appeal Br. 8. Specifically, Appellant argues
that Otis discloses a photoresist, SU-8, that is ultimately removed to create a
void or opening above Otis’s sensor. Id. The Examiner responds that the
broadest reasonable interpretation of “transparent window” is synonymous
with an opening. Ans. 3–4 (citing Merriam-Webster dictionary; Spec.
16:27–29).
Appellant disputes the Examiner’s interpretation. Appellant presents
an alternative definition, which defines “window” as “an opening especially
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in the wall of a building for admission of light and air that is usually closed
by casements or sashes containing transparent material.” Reply Br. 2 n.1.
Appellant argues that the Examiner’s interpretation gives no meaning,
weight, or consideration to the term “transparent.” Id. at 1–2. Appellant
further asserts that the passage in the Specification the Examiner cites sets
forth two alternatives for a window: one that is a lack of pattern-forming
material and another that is made by a material transparent to light. Id. at 2–
3. Appellant argues the latter is an explicit definition for “transparent
window” that excludes an opening. Id. at 3.
Appellant’s arguments are unpersuasive. During prosecution before
the Examiner, the claim language should be given its broadest reasonable
meaning of the words in their ordinary usage as they would be understood
by one of ordinary skill in the art, taking into account any definitions or
enlightenment contained in the written description of Appellant’s
Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
The Specification identifies the transparent window as follows:
[I]t may be desirable for any patterns on the lens to have a
window 625 that allows light to pass through the patterned region
. . . . The window 625 may be made by the lack of pattern-
forming material, or by an alternative material, which is
transparent to light.
Spec. 16:25–28.
The above-quoted passage is reasonably interpreted to describe a
light-passing window (i.e., a transparent window) formed either as a lack of
pattern-forming material (an opening) or a provided material that is
transparent to light. Appellant’s proposed definition stating that a window is
an opening that usually is closed by transparent material is not inconsistent
with the above-noted reading of the Specification. Accordingly, we find
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reasonable the Examiner’s determination that the recited “transparent
window” encompasses an opening formed by a lack of pattern-forming
material.
Appellant further argues the Examiner’s statement “it is the
examiner’s belief that such a transparent window is necessary for the contact
lens to be operable” in the Response to Arguments section of the Office
Action (Final Act. 3) is conclusory. Appeal Br. 7–8. This argument is
unpersuasive because the Examiner has set forth a sufficient rationale in the
rejection for modifying Pugh in view of Otis (i.e., modifying Pugh to use
Otis’s opening as a way for energy to reach Pugh’s photo detector for
operability). Final Act. 4.
Appellant also asserts the Examiner’s discussion of Otis’s opening as
functionally equivalent in the Response to Arguments section of the Office
Action (id. at 3) applies to a claim term analyzed under 35 U.S.C. § 112,
sixth paragraph, but the Examiner has not applied § 112, sixth paragraph
here. Appeal Br. 9. As the Examiner notes, functional equivalence was not
used as a basis for the rejection of claim 1. Ans. 5; Final Act. 4.
For the foregoing reasons, Appellant’s arguments do not identify
reversible error in the rejection of claim 1. Appellant does not separately
argue any of claims 4–9, 11, 12, 15, 18–23, 25, 26, 29, and 30 separately
from claim 1.
Accordingly, we sustain the Examiner’s § 103(a) rejection of claims
1, 4–9, 11, 12, 15, 18–23, 25, 26, 29, and 30 over by Pugh in view of Otis.

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Rejections II–V
Appellant does not present arguments against any of Rejections II–V
apart from the arguments presented in connection with Rejection I.
Therefore, we also sustain the Examiner’s § 103(a) rejections of claims 2, 3,
13, 14, 16, 17, 27, and 28 for the same reasons discussed above.

CONCLUSION
The Examiner’s decision rejecting claims 1–9, 11–23, and 25–30 is
affirmed.
In summary:
Claims
Rejected
35 U.S.C.
§ References/Basis Affirmed Reversed
1, 4–9, 11,
12, 15, 18–
23, 25, 26,
29, 30
103(a)

Pugh, Otis
1, 4–9, 11,
12, 15, 18–
23, 25, 26,
29, 30

2, 3 103(a) Pugh, Otis, Ocampo 2, 3

13, 14 103(a) Pugh, Otis, Blum 13, 14
16, 17 103(a) Pugh, Otis, Ocampo 16, 17

27, 28 103(a) Pugh, Otis, Blum 27, 28
Overall
Outcome 103(a)
1–9, 11–23,
25–30

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED