Ex Parte Clements et al

Patent Trial and Appeal Board

Dec 17, 2015

12558424 (P.T.A.B. Dec. 17, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/558,424 09/11/2009 Julie Clements
79567 7590 12/21/2015
Klein, O'Neill & Singh, LLP
16755 Von Karman Avenue
Suite 275
Irvine, CA 92606
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.
1128-024.101 6424
EXAMINER
TRUONG, THANH K
ART UNIT PAPER NUMBER
3721
NOTIFICATION DATE DELIVERY MODE
12/21/2015 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):
KOS_Docketing@koslaw.com
GHollrigel@coopervision.com
SPaladini@coopervision.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JULIE CLEMENTS, KEVIN ALDRIDGE,
KLAUS STROTBEK, and KLAUS STRAUB
Appeal2013-003884
Application 12/558,424
Technology Center 3700
Before BRANDON J. WARNER, LISA M. GUIJT, and
MARK A. GEIER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Julie Clements et al. ("Appellants") appeal under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1-5. 1 Appeal Br. 2. Claims
6-15 have been withdrawn. Id. We have jurisdiction over the appeal under
35 U.S.C. § 6(b). An oral hearing was held on October 27, 2015.
We REVERSE.
According to Appellants, the real party in interest is Cooper Vision
International Holding Company, LP. Appeal Br. 2.
Appeal2013-003884
Application 12/558,424
CLAIMED SUBJECT MATTER
Appellants' disclosed invention "relates to methods, devices, and
systems for producing ophthalmic lenses, such as contact lenses." Spec. i-f 1.
Claim 1, reproduced below with emphasis added, is the sole independent
claim appealed and is representative of the subject matter on appeal.
1. A method of manufacturing an ophthalmic lens,
compnsmg:
providing an ophthalmic lens in a volume of liquid in a
well of a lens carrier so that the ophthalmic lens is understood
to be a wet lens;
removing the wet lens from the well using a wet lens pick
up head[] comprising an outer periphery sized and convexly
shaped to form a fit with a posterior concave surface of the wet
lens;
moving the wet lens pick up head with the posterior
surface of the wet lens fixed to the outer periphery of the wet
lens pick up head toward a blister package having a cavity to
receive the wet lens; and
releasing the wet lens from the wet lens pick up head into
the cavity of the blister package,
wherein, during the moving, the wet lens is fixed to a first
set of holes in the outer periphery of the wet lens pick up head
and is retained by vacuum, and excess liquid is removed from
the wet lens by a second set of holes recessed from the
periphery of the wet lens pick up head that do not come in
contact with the wet lens surface.
2
Appeal2013-003884
Application 12/558,424
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Peck
Widman
Newman
Duggan
US 2004/0031701 Al
US 2004/0074525 Al
US 2008/0100799 Al
GB 2 435 106 A
REJECTIONS
The following rejections are before us for review:
Feb. 19,2004
Apr. 22, 2004
May 1, 2008
Aug. 15, 2007
I. Claims 1-5 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Newman.
II. Claims 1, 2, and 4 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Widman.
III. Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Widman and Duggan.
IV. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Widman and Peck.
ANALYSIS
Independent claim 1 recites, in relevant part, a method of
manufacturing an ophthalmic lens where the method includes removing a
wet lens from a well using a wet lens pick up head that includes "an outer
periphery sized and convexly shaped to form a fit with a posterior concave
surface of the wet lens," moving the pick up head with the lens fixed to the
outer periphery thereof, and releasing the wet lens from the pick up head.
3
Appeal2013-003884
Application 12/558,424
Appeal Br., Claims App. (emphasis added). The claim also requires that,
"during the moving, the wet lens is fixed to a first set of holes in the outer
periphery of the wet lens pick up head and is retained by vacuum, and excess
liquid is removed from the wet lens by a second set of holes recessed from
the periphery of the wet lens pick up head that do not come in contact with
the wet lens surface." Id. (emphasis added).
We initially note that these recited limitations require the structure of
a second set of holes that are "recessed from the periphery" of the pick up
head. Id. The recited periphery from which these holes are recessed is not
just an outermost surface of the pick up head, but is constrained by the
language of the claim to be the portion of such an outermost surface that is
"sized and convexly shaped to form a fit with a posterior concave surface of
the wet lens." Id. In addition, this method claim requires more than just the
presence of such a second set of holes-it also requires that these holes are
actively used to remove excess liquid from the wet lens therethrough during
the moving of the pick up head. See id.
Rejections I-IV all rely on a finding that either Newman or Widman
discloses these recited limitations. Based on the claim construction outlined
above, we address separately below the Examiner's findings with respect to
each cited reference and Appellants' arguments directed thereto.
4
Appeal2013-003884
Application 12/558,424
Rejection I-Premised on anticipation by Newman
of Independent Claim 1
Appellants argue that Newman does not disclose the recited feature of
excess liquid being removed from the wet lens by a second set of holes that
are recessed from the periphery of the pick up head. Appeal Br. 6; see also
Reply Br. 6. We agree.
In rejecting independent claim 1, the Examiner relied on Newman as
disclosing these features. Final Act. 2-3 (citing Newman, Figs. 4C, 4D).
The Examiner responds to Appellants' argument by clarifying the position
that Newman's transfer member 3 00 is considered to form an extension of
the wet lens pick up head and that this element includes "holes recessed
from the periphery of the wet lens pick up head as recited." Ans. 4
(including reproductions of Newman, Figs. 3A, 3B).
After careful consideration of Newman's disclosure, and accepting
transfer member 300 as being an extension of the pick up head as interpreted
by the Examiner, we observe that although this element does include holes
(see Newman, Fig. 3B) and does define a periphery sized and convexly
shaped to form a fit (albeit not an exact shape correspondence) with a
posterior concave surface of the wet lens (see Newman, Figs. 3A, 4A--4D),
the holes in the element are not recessed from the periphery as recited in the
claim. Moreover, the Examiner does not identify, nor do we discern, any
disclosure in Newman that the identified holes in transfer member 300 are
actively used to remove excess liquid from the wet lens therethrough, as
would be required for a finding of anticipation of this method claim as
discussed above.
5
Appeal2013-003884
Application 12/558,424
Thus, we agree with Appellants that the Examiner has not established
by a preponderance of the evidence that Newman discloses, either expressly
or inherently, these features of the recited structure or active steps required
by independent claim 1. See Appeal Br. 6; Reply Br. 6.
Accordingly, based on the record before us-because an anticipation
rejection requires a finding, in a single reference, of each and every
limitation as set forth in the claim-we cannot sustain the rejection of
independent claim 1, and associated dependent claims 2-5, as anticipated by
Newman.
Rejections II-IV - Premised on anticipation by Widman
of Independent Claim 1
Appellants argue that Widman does not disclose the recited feature of
excess liquid being removed from the wet lens by a second set of holes that
are recessed from the periphery of the pick up head that do not come in
contact with the wet lens surface. Appeal Br. 8-9; see also Reply Br. 7-9.
We agree.
In rejecting independent claim 1, the Examiner relied on Widman as
disclosing these features. Final Act. 3--4 (citing Widman, Figs. 3A-3D).
The Examiner responds to Appellants' argument by clarifying the position
that Widman's holes 123 are "recessed from the periphery of the pick up
head and the holes do not come in contact with the wet lens surface as
recited." Ans. 5 (including reproductions of Widman, Figs. 2, 7 and citing
Widman i-f 44).
After careful consideration of Widman's disclosure, we observe that
holes 123 do not come in contact with the wet lens surface (see Widman,
6
Appeal2013-003884
Application 12/558,424
Figs. 2, 3A-3D; see also Appeal Br. 8; Reply Br. 8) as recited in the claim.
Additionally, holes 123 appear to be spaced away from the periphery of the
pick up head as this surface is constrained by the language of the claim
(regarding the portion of the outermost surface that is "sized and convexly
shaped to form a fit with a posterior concave surface of the wet lens," as
discussed above) (see Widman, Figs. 2, 3A-3D), as also recited in the claim.
However, regardless of whether this "spaced away" relationship is sufficient
to meet the claim limitation of being "recessed" (which does not specify any
directional component), the Examiner does not identify, nor do we discern,
any disclosure in Widman that holes 123 are actively used to remove excess
liquid from the wet lens therethrough (see Reply Br. 8), as would be required
for a finding of anticipation of this method claim as discussed above. 2
Thus, we agree with Appellants that the Examiner has not established
by a preponderance of the evidence that Widman discloses, either expressly
or inherently, this feature of the recited active steps required by independent
claim 1. See Appeal Br. 8-9; Reply Br. 7-9.
Accordingly, based on the record before us-because an anticipation
rejection requires a finding, in a single reference, of each and every
limitation as set forth in the claim-we cannot sustain the rejection of
independent claim 1, and associated dependent claims 2 and 4, as anticipated
by Widman. We note that Rejections III and IV are premised on the same
2 We note that although Widman i-f 44 (cited by the Examiner) identifies
holes 123 as "relief holes," it appears from Widman i-f 47 and Fig. 2 that
holes 123 are actively used-not to remove excess liquid from the wet lens,
as recited in the claim-but to vent gas inwardly therethrough such that
passages within the manifold assembly "equilibrate to neutral atmospheric
pressure."
7
Appeal2013-003884
Application 12/558,424
purported disclosure from Widman, and that Duggan and Peck are relied on
for teaching additional features, but not to cure the deficiency of Widman
identified above. Thus, we also do not sustain the rejections of dependent
claims 3 and 5.
DECISION
We REVERSE the Examiner's rejections of claims 1-5.
REVERSED
rvb
8