Ex Parte Bowers

Patent Trial and Appeal Board

Oct 19, 2016

13170636 (P.T.A.B. Oct. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/170,636 06/28/2011
27777 7590 10/21/2016
JOSEPH F SHIRTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
FIRST NAMED INVENTOR
Angie Bowers
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.
VTN5299USNP 4193
EXAMINER
ORTIZ, RAFAEL ALFREDO
ART UNIT PAPER NUMBER
3728
NOTIFICATION DATE DELIVERY MODE
10/21/2016 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):
jnjuspatent@corus.jnj.com
lhowd@its.jnj.com
pairjnj@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANGIE BOWERS
Appeal2014--008200
Application 13/170,6361
Technology Center 3700
Before ANNETTE R, REIMERS, JEREMY M. PLENZLER and
THOMAS F. SMEGAL, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
1A..ngie Bov,rers (ii .. ppellant) seeks our reviev,r under 35 U.S.C. § 134 of
the Examiner's Final Rejection under 35 U.S.C. § 103(a) of claims 1, 3, 4
and 8-10 as unpatentable over Newman (US 2004/0238380 Al, pub. Dec. 2,
2004), and Benson (US 2008/0264828 Al, pub. Oct. 30, 2008) or Kishida
(US 2007 /0267322 Al, pub. Nov. 22, 2007); and of claim 2 as unpatentable
over Newman, and Benson or Kishida, and Ray (US 3,253,702, iss. May 31,
1966).2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is Johnson & Johnson
Vision Care, Inc. Appeal Br. 1.
2 Claim 5-7 have been canceled. Appeal Br. 6, 7, Claims App.
Appeal2014--008200
Application 13/170,636
CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below and
illustrates the claimed subject matter, with disputed limitations emphasized.
1. A package for storing contact lenses in a solution
compnsmg,
(a) a transparent molded base comprising a cavity formed
in said molded base wherein said cavity comprises an inner
surface, and a flange extending outwardly from the periphery of
said cavity wherein said flange comprises a top surface;
(b) a flexible cover sheet having a lens facing surface
and an exterior surface where the lens facing surface of said
flexible sheet is superimposed over said top surface of said
flange and detachably sealed to said flange at about the
periphery of said cavity to form an enclosure between said inner
surface and said flexible cover, wherein said lens facing
surface comprises an area of color,
( c) a contact lens enclosed between said transparent base
and said flexible cover, wherein when said contact lens is
viewed through said transparent base, the contact lens covers a
portion of said area of color; and further comprising a viewing
area, Jvherein the area of color occupies about 10 to about 50
percent of the viewing area.
ANALYSIS
Obviousness of Claims 1, 3, 4 and 8-10 over Newman, and Benson or
Kishida; and of Claim 2 over Newman, and Benson or Kishida and Ray
The dispositive issue in this case is whether a flexible cover sheet
having a lens facing surface with an area of color that occupies about 10 to
about 50 percent of the viewing area, is merely a matter of design choice.
Appellant argues claims 1--4 and 8-10 as if all the claims were rejected as
obvious over Newman, and Benson or Kishida. See Appeal Br. 3.
2
Appeal2014--008200
Application 13/170,636
Claims 1, 3, 4, and 8-10
Appellant argues claims 1, 3, 4, and 8-10 as a group. See Appeal Br.
3-5 and Reply Br.1-2. We select claim 1 as the representative claim for this
group, and the remaining claims stand or fall with claim 1. See 37 C.F.R. §
41.37(c)(l)(iv); In re McDaniel, 293 F.3d 1379, 1383 (Fed. Cir. 2002); see
also In re Watts, 354 F.3d 1362, 1368 (Fed. Cir. 2004).
The Examiner finds that Newman discloses a package for storing
contact lenses in a solution, including inter alia, "a flexible cover sheet (15)
having a lens facing surface [that] comprises [a viewing area with] an area of
color (see [0227]), a contact lens (4) enclosed between said transparent base
(14) and said flexible cover (15) wherein when said contact lens is viewed
through said transparent base, the contact lens covers a portion of said area
of color."3 Final Act. 2-3 (citing Newman, fig. 8).4 While observing that
"Newman does not disclose a viewing area, wherein the area of color
occupies about 10 to about 50 percent of the viewing area," the Examiner
reasons that
[r]egarding the percentage's area of color occupied by the
viewing area [of Newman], it would have been obvious ... to
have the [] transparency area of color with any desired
percentage, i.e. 10 to about 50 percent, since it is a matter of
design choice [for] the amount of viewable area of the window
[to depend] on the desired portion of the article inside the
package to be viewed.
Id. at 3.
3 A preferred embodiment, where flexible cover (15) is colored, "is to have
the color displayed inwardly toward a contact lens so that the lens may be
easily visualized." See Newman, i-f22 7, 11. 21-23. See also Ans. 5.
4 Although not recited by claim 1, the Examiner also looks to Benson or
Kishida for disclosing a viewing area "for visual inspection of the packaged
article from any or both sides of the package." Final Act. 3.
3
Appeal2014--008200
Application 13/170,636
In response, Appellant first contends that "the Examiner has not raised
a prim a facie case of obviousness," asserting that the Examiner "has not
even established a motivation to combine references in non-analogous arts."
Appeal Br. 3. Appellant continues by asserting that "Newman is a package
for contact lenses, while"[b ]oth Kishida and Benson are packages for
feminine protection products [that] are not even in the molded plastic art, let
alone describing the use in the contact lens field." Id. at 4
However, the "Examiner points out that Newman, Benson and
Kishida are all related, disclosing packages for holding items," and that
"Benson and Kishida are only used for the disclosure and teaching of a
colored viewing window in a package [that] is a well-known and common
feature in the packaging art." Ans. 6. Thus, upon reviewing the Examiner's
stated rationale, we are not persuaded the Examiner failed to produce
sufficient evidence and findings (supported by citation to the references) to
support a prima facie case of obviousness based on broadest reasonable
interpretation of the recited range. See, e.g., In re Jung, 637 F.3d 1356,
1362 (Fed. Cir. 2011). 5
Appellant also contends that "[t]here is nothing stated in Newman
about the desirability of location or the size the viewing surface ... to
suggest that having an open viewing area in the package would achieve a
better result." Appeal Br. 4. (emphasis added).
5 "[A ]11 that is required of the office to meet its prima facie burden of
production is to set forth the statutory basis of the rejection and the reference
or references relied upon in a sufficiently articulate and informative manner
as to meet the notice requirement of [35 U.S.C.] § 132." Jung, 637 F.3d at
1363.
4
Appeal2014--008200
Application 13/170,636
We are instructed by our reviewing court that "[a] greater than
expected result is an evidentiary factor pertinent to the legal conclusion of ..
. obviousness [of the claimed subject matter]." In re Corkill, 771 F.2d 1496,
1501 (Fed. Cir. 1985) (citing United States v. Adams, 383 U.S. 39, 51-52
(1966)). Thus, in cases in which the difference between the claimed
invention and the prior art is some range or other variable within the claims,
it has consistently been held that "the applicant must show that the particular
range is critical, generally by showing that the claimed range achieves
unexpected results relative to the prior art range." In re Woodruff, 919 F.2d
1575, 1578 (Fed. Cir. 1990).
Here we find the record before us is devoid of any factual support that
a "better result" is obtained because of the area of color recited by claim 1,
when compared to the area of the colored surface disclosed in Newman.
Arguments relying on factually unsupported assumptions to rebut a prima
facie case of obviousness can hardly be considered factual evidence. See In
re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (holding that arguments
and conclusions unsupported by factual evidence carry no evidentiary
weight).
In the Reply Brief, for the first time, Appellant argues that "[t]he
device of the present invention is contained in a blister package, and so has a
fluid contained therein." Reply Br. 2. While claim 1 is not limited to a
blister package containing fluid, Appellant also did not present this argument
in the Appeal Brief. For that reason, it is also not responsive to an argument
newly raised in the Examiner's Answer. Thus Appellant did not set forth
this argument in a timely manner prior to filing of the Reply Brief to permit
the Examiner an opportunity to fully respond. See 37 C.F.R. § 41.41(b)(2)
5
Appeal2014--008200
Application 13/170,636
(2014) ("Any argument raised in the reply brief which was not raised in the
appeal brief, or is not responsive to an argument raised in the examiner's
answer ... will not be considered by the Board for purposes of the present
appeal, unless good cause is shown).
Accordingly, and based on the record presented, we sustain the
Examiner's rejection of claims 1, 3, 4, and 8-10 as obvious over Newman,
and Benson or Kishida.
Claim 2
Appellant does not separately argue the rejection of claim 2. See
Appeal Br. 3. Therefore, for the reasons stated above, we also sustain the
rejection of this claim.
DECISION
We AFFIRM the Examiner's rejections.
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)(l )(iv).
AFFIRMED
6