Ex Parte Biel et alDownload PDFPatent Trial and Appeal BoardSep 28, 201612904201 (P.T.A.B. Sep. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/904,201 10/14/2010 31781 7590 09/30/2016 ALCON RESEARCH, LTD, PA TENT DEPARTMENT 11460 JOHNS CREEK PARKWAY JOHNS CREEK, GA 30097-1556 FIRST NAMED INVENTOR Roger Biel 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. PAT053748-US-NP 5430 EXAMINER LIU,XUEH ART UNIT PAPER NUMBER 1742 NOTIFICATION DATE DELIVERY MODE 09/30/2016 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): patent. docketing@alcon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROGER BIEL, AXEL HEINRICH, CAROLIN HARTERT, VOLKER LANIG, KARSTEN STRAUBE, and PETER HAGMANN Appeal2015-004017 Application 12/904,201 Technology Center 1700 Before MARK NAGUMO, MICHAEL P. COLAIANNI, and MICHAEL G. McMANUS, Administrative Patent Judges. McMANUS, Administrative Patent Judge. DECISION ON APPEAL The Examiner rejected claims 1-9 and 11-16 of Application 12/904,201under35 U.S.C. § 103(a) as obvious. Non-Final Act. (Jan. 3, 2014). Appellants 1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b ). For the reasons set forth below, we AFFIRM. 1 Novartis AG is identified as the real party in interest. Appeal Br. 3. Appeal2015-004017 Application 12/904,201 BACKGROUND Application 12/904,201 describes a method for the simultaneous manufacture of contact lenses having different lens parameters on the same production line. Spec. 1. Each lens is marked with an identification code that is invisible to the eye but may be discerned by an optical detection system. Id. at 4. One method of marking taught by the Specification is to use a dot pattern limited to a length of about 80 µm to 140 µm. Id. at 7. Claim 1 is representative of the pending claims and is reproduced below: 1. A method for the simultaneous manufacture of ophthalmic lenses wherein the lenses have different lens parameters on the same production line, comprising the steps of providing a number of molds, each mold comprising male and female mold halves and further comprising lens forming material in the molds, transporting the number of molds in sequential rows and in each row in side by side configuration through a series of treatment stations, the treatment stations arranged sequentially along a production line in which the lenses of different parameters are manufactured from the lens forming material, and further identifying each lens manufactured with a lens identification code associated with each said lens; and wherein the lens identification code is established such, that it is invisible to the eye but detectable with the aid of an optical detection system. Appeal Br. 10 (Claims App.). REJECTIONS On appeal, the Examiner maintains the following rejections: 1. Claims 1---6 and 11-16 are rejected under 35 U.S.C. § 103(a) as obvious over Wadding et al. (WO 2004/056555, pub. July 8, 2004) ("Wadding") in view of Hoffmeister et al. (US 3,657,085, iss. Apr. 18, 1972) ("Hoffmeister"). Non-Final Act. 3. 2 Appeal2015-004017 Application 12/904,201 2. Claim 7 is rejected under 35 U.S.C. § 103(a) as obvious over Wadding in view of Hoffmeister and further in view of Yokoyama et al. (EP 1657041 Al, pub. May 17, 2006) ("Yokoyama"). Id. at 6. 3. Claims 8-9 are rejected under 35 U.S.C. § 103(a) as obvious over Wadding in view of Hoffmeister and further in view of Doshi et al. (US 2008/0062381 Al, pub. Mar. 13, 2008) ("Doshi"). Id. at 7. DISCUSSION Appellants argue that independent claim 1 would not have been obvious over Wadding in view of Hoffmeister. Appellants assert that one of skill in the art would not have been motivated to combine the teachings of Wadding and Hoffmeister. As all other claims at issue depend from claim 1, Appellants contend that all such claims are patentable. Appellants do not advance any argument specific to any dependent claim, thus all claims will stand or fall together. To conclude that the rejected claims vvould have been obvious over the combined teachings of the prior art to an ordinarily skilled artisan, the Examiner must provide some rationale, articulation, or reasoned basis to explain why the conclusion of obviousness is correct. See In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006). Here, the Examiner finds that one of skill in the art would have been motivated to combine the teachings of Wadding and Hoffmeister. Wadding teaches a method of making lenses with variable parameters on a single production line. Hoffmeister teaches the marking of transparent materials in a manner invisible to the naked eye. The Examiner relies upon the following portion of Hoffmeister to find a motivation to combine: 3 Appeal2015-004017 Application 12/904,201 Marking in this manner is particularly adapted for placing identifying marks on lenses. The marks being normally invisible may be placed in a preselected position on the lenses - the center, for example - where they can readily be found when polarized light is applied to render the marks visible. It is substantially impossible to alter or falsify the marks. And the marks do not disturb the optical properties of the lenses or change their surfaces in any way. Hoffmeister, 2:15-23; Answer 3. Appellants advance several arguments as to why one of ordinary skill in the art would not have been motivated to combine the teachings of the references. First, Appellants assert that the Examiner has not shown that markings such as those taught by Wadding (visible to the naked eye) are insufficiently substantial or permanent. Appeal Br. 6. The Examiner need not make such a finding in order to show a motivation to combine. See In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) ("[J]ust because better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes."). The Examiner finds that the invisible marking of Hoffmeister is well adapted to lenses and permits placing the marking anywhere on the lens including the center if so desired. Hoffmeister, 2: 15-21 ("Marking in this manner is particularly adapted for placing identifying marks on lenses ... [including] the center, for example .... "). The Supreme Court has held that "if 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." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Here, one of skill in the art would have recognized 4 Appeal2015-004017 Application 12/904,201 that the invisible lens marking taught by Hoffmeister could be used in the process of Wadding to achieve a predictable result. Appellants' second basis for arguing the absence of any proper motivation to combine is that the markings of Wadding must be visible to those wearing the lenses and their doctors in order to serve their intended function. Accordingly, one would not have been motivated to make such markings invisible. Appeal Br. 7. In response, the Examiner finds that "other identification marks in Wadding et al. related to the prescription, such as marks 160 and 165 as shown in fig. 3 are not required to be always visible in order to be useful." Id. at 7-8. This is supported by Wadding's specification which provides as follows: The lens inspection system may measure the optical parameters of the contact lens or may read indicia and/or take measurements on identifiable marks which are moulded in to the lens. * * * For example, the inspection may comprise identifying the optical correction of the lens by providing a first identifiable marking on a posterior surface of the lens and providing a second identifiable marking different from the first marking on an anterior surface of the lens; assigning combinations of first and second markings to optical correction values such that each unique combination of first and second markings is assigned to a unique optical correction value, and storing the assigned combinations and optical correction values in a database. Wadding 5-6. Thus, Wadding teaches the use of markings to indicate a machine-readable optical correction value of the lenses. Such a value need not be visible to the human eye in order to serve its intended function. Appellants' third argument asserting the lack of motivation to combine the teachings of Hoffmeister and Wadding is that Hoffmeister is limited to applications involving glass. Appeal Br. 7-8. The Examiner 5 Appeal2015-004017 Application 12/904,201 finds, however, that "while Hoffmeister et al. mentions glass as an example of a transparent material suitable for the process; Hoffmeister et al. does not positively limit the material to glass or specifically require a rigid material in order for the process to work." Answer 8. The Examiner's finding is consistent with the teachings of Hoffmeister. See Hoffmeister, 1 :4---6 (noting that the claimed invention relates to "markings on transparent material"). The Board adopts the Examiner's finding. 2 Accordingly, we find no error in the Examiner's finding that a person of ordinary skill in the art would have been motivated to combine the teachings of Wadding and Hoffmeister. CONCLUSION The rejections of claims 1-9 and 11-16 of Application 12/904,201 under 35 U.S.C. § 103(a) as obvious are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 2 Further, even if Hoffmeister were limited to marking glass materials, it would still teach the desirability of invisible marking for lens applications as such markings "do not disturb the optical properties of the lenses." 6 Copy with citationCopy as parenthetical citation