COOPERVISION INTERNATIONAL HOLDING COMPANY, LP

Patent Trials and Appeals Board

Apr 13, 2020

14589191 - (D) (P.T.A.B. Apr. 13, 2020)

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.
14/589,191 01/05/2015 Alvin N. Irizarry Martell 1128-034.101 5659
79567 7590 04/13/2020
Klein, O'Neill & Singh, LLP
16755 Von Karman Avenue
Suite 275
Irvine, CA 92606
EXAMINER
BURKHART, ELIZABETH A
ART UNIT PAPER NUMBER
1715
NOTIFICATION DATE DELIVERY MODE
04/13/2020 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):
GHollrigel@coopervision.com
KOS_Docketing@koslaw.com
SPaladini@coopervision.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALVIN N. IRIZARRY MARTELL, MARK REYNOLDS,
JOHN LEONE, STEVE RENNER, and JAMES COOK
Appeal 2019-000778
Application 14/589,191
Technology Center 1700
Before N. WHITNEY WILSON, BRIAN D. RANGE, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 20–25. See Final Act. 3, 4, 5. An oral
hearing was held on March 9, 2020. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
“CooperVision International Holding Company, LP.” Appeal Br. 2.
Appeal 2019-000778
Application 14/589,191

2
CLAIMED SUBJECT MATTER
The claims “relate to the removal of flash from molded contact lens
bodies.” Spec. 1:24–25. Claim 20, reproduced below, is illustrative of the
claimed subject matter:
20. A method of manufacturing a contact lens comprising:
receiving at least one unfinished polymerised contact lens
body in at least one contact lens mold assembly, wherein each
contact lens mold assembly comprises a first mold member and
a second mold member assembled together, and the first mold
member comprises a mold surface and a peripheral surface;
demolding the mold assembly so that the first mold
member is separated from the second mold member and the
unfinished polymerized contact lens body remains on the first
mold member;
bringing together a de-flashing element, comprising a
cutting edge, and the first mold member such that at least a
portion of the cutting edge is in a position proximal to the
peripheral surface of the first mold member; and
rotating the de-flashing element and/or the first mold
member relative to each other thereby separating flash from the
peripheral surface of the first mold member;
wherein the first mold member is a male mold member
comprising a convex lens surface having the unfinished
polymerized contact lens body in contact therewith and the
second mold member is a female mold member.
Claims Appendix (Appeal Br. 27).
Appeal 2019-000778
Application 14/589,191

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REFERENCES
The prior art references relied upon by the Examiner are:
Name Reference Date
Dobner
Hodgkinson
Iwata
Plaza
US 6,368,096 B1
US 2003/0160343 A1
US 2006/0063852 A1
US 2011/0089584 A1
Apr. 9, 2002
Aug. 28, 2003
Mar. 23, 2006
Apr. 21, 2011

REJECTIONS
Claims 20, 21, and 23 are rejected under 35 U.S.C. § 103 as being
unpatentable over Dobner in view of Plaza. Final Act. 3.
Claim 22 is rejected under 35 U.S.C. § 103 as being unpatentable over
Dobner in view of Plaza and further in view of Hodgkinson. Final Act. 4.
Claims 24 and 25 are rejected under 35 U.S.C. § 103 as being
unpatentable over Dobner in view of Plaza and further in view of Iwata.
Final Act. 5.
OPINION
In rejecting claim 20 over Dobner and Plaza, the Examiner finds that
Dobner teaches or suggests all recited steps but “the first mold member is a
male mold member” for which the Examiner cites Plaza. Final Act. 3.
Based on Plaza’s teaching that male mold part may be loaded below
or alternatively above the female mold part during the demolding process
(Final Act. 3 (citing Plaza ¶ 34, Figs. 1, 2)), the Examiner finds that a skilled
artisan would have combined the prior art teachings to arrive at the recited
method. Id. at 4 (finding that it would have been obvious to a skilled artisan
“to demold the assembly of Dobner wherein the first mold member is a male
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mold member as suggested by Plaza since the opposite mold member
configuration was a suitable alternative for demolding lens assemblies”).
Appellant does not dispute the prior art teachings but argues that a
skilled artisan would not have combined Dobner and Plaza because doing so
would damage the contact lens body. Appeal Br. 10. More specifically,
Appellant argues that, based on Figure 9 of Dobner, “the monomer ring
removal mechanism 30 of Dobner can only operate if the mold member 14 is
a female mold member and the contact lens body 12 is located in the
concave mold surface of the female mold member, away from the stripper
plate 57 of the removal mechanism 30” and replacing the female mold
member with a male mold member would lead to the flat surface of shaft 56
to push against the contact lens body 12 thereby damaging it. Id. at 10, 15
(emphasis omitted) (repeating the argument that the combination would
yield a defective product).
Contrary to Appellant’s arguments, however, it is not necessary to be
able to physically incorporate the teachings of one reference into another to
render obvious the claimed invention. See In re Nievelt, 482 F.2d 965, 968
(CCPA 1973) (“Combining the teachings of references does not involve an
ability to combine their specific structures.”) (emphasis omitted). All of the
features of the secondary reference need not be bodily incorporated into the
primary reference and the skilled artisan is not compelled to blindly follow
the teaching of one prior art reference over the other without the exercise of
independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d
881, 889 (Fed. Cir. 1984).
In this case, the Examiner finds that “the only difference between the
process of Dobner and the claimed invention is that Dobner uses a female
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mold member as the first mold member” instead of the recited male mold
member. Ans. 7 (emphasis omitted). Given Plaza’s teaching of the
alternative configuration of the male and female mold members, the
Examiner finds that a skilled artisan would have arrived at Dobner’s process
with either configuration. Id.; Final Act. 4, 6. In the Final Rejection, the
Examiner further finds that Plaza also “discloses stripper plate 48 used with
a male mold member (Fig. 3) such that the lens body is not damaged.” Final
Act. 6 (citing Plaza ¶¶ 42, 48). Appellant does not address this finding in the
Appeal Brief. See Appeal Br. 9–21.
Appellant’s argument is also unpersuasive because it does not identify
error in the Examiner’s finding that it is within a skilled artisan’s skill to
apply the combined prior art teaching to arrive at the method recited in claim
20. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.”). For example, the Examiner finds that it is within a
skilled artisan’s skill to contour surface 124 “to an appropriate shape” to
prevent the possible damage theorized by Appellant. Ans. 7. Appellant
argues that the Examiner reversibly erred because “the concave surface
region 124 and the length of the exposed pins 104 must be sized
accordingly” without explaining why such an endeavor is beyond the skill of
an ordinary artisan. Reply Br. 6. Given that the Examiner here has shown
that the record supports a finding that the required technique has been used
to improve one device, a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, which makes “using
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the technique is obvious unless its actual application is beyond his or her
skill.” (KSR, 550 U.S. at 417)..
Appellant’s argument is not persuasive also because it is not directed
to the method claim. For example, Appellant argues that the combination of
Dobner and Plaza “is defective because Dobner does not teach using a
monomer ring removal mechanism with a male mold member due to the two
relatively movable shafts of the disclosed monomer ring removal device 30.”
Appeal Br. 15. As another example, Appellant argues that “the device of
Dobner cannot operate with a male mold member without destroying the
contact lens.” Id. at 10. Method claim 20, however, does not recite that the
claimed steps are carried out by a particular apparatus. Appellant’s other
argument that the Examiner reversibly erred by failing to explain “how the
devices are usable in a modified combination” (Appeal Br. 13) is similarly
unpersuasive as it is not based on the claim language. See In re Hiniker Co.,
150 F.3d 1362, 1369 (Fed. Cir. 1998) (holding that unclaimed features
cannot impart patentability to claims).
We further note that some of Appellant’s arguments are unsupported
by evidence and such “[a]ttorneys’ argument is no substitute for evidence.”
Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989). “An
assertion of what seems to follow from common experience is just attorney
argument and not the kind of factual evidence that is required to rebut a
prima facie case of obviousness.” In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997). In particular, Appellant’s arguments that a skilled artisan would
not have had reasonable expectation of success by combining the prior art
teachings are not supported by evidence. Appeal Br. 20; see Life Techs., Inc.
v. Clontech Labs. Inc., 224 F.3d 1320, 1326 (Fed. Cir. 2000) (“Reasonable
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expectation of success is assessed from the perspective of the person of
ordinary skill in the art.”). In any event, “[o]bviousness does not require
absolute predictability of success. . . . For obviousness under § 103, all that
is required is a reasonable expectation of success.” See In re O’Farrell, 853
F.2d 894, 903–04 (Fed. Cir. 1988). As noted earlier, the Examiner finds that
the skilled artisan would have had a reasonable expectation of success
without causing damage to the lens (Final Act. 6; see also Ans. 7–8) which
is not beyond the ordinary skill of the artisan.
Appellant does not separately argue against the rejections of claims
21–25. See Appeal Br. 21. These rejections are affirmed with the rejection of
claim 20. See 37 C.F.R. § 41.37(c)(1)(iv).
CONCLUSION
The Examiner’s rejections are affirmed.
More specifically,
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
20, 21, 23 103 Dobner, Plaza 20, 21, 23
22 103 Dobner, Plaza,
Hodgkinson
22
24, 25 103 Dobner, Plaza, Iwata 24, 25
Overall
Outcome:
  20–25

Appeal 2019-000778
Application 14/589,191

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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