Ex Parte Dukes et al

Board of Patent Appeals and Interferences

Jun 17, 2009

10843954 (B.P.A.I. Jun. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JERRY W. DUKES,
ANGIE L. BOWERS, and KARIN D. MCCARTHY
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Appeal 2009-002212
Application 10/843,9541
Technology Center 2800
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Decided:2 June 17, 2009
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Before PETER F. KRATZ, CATHERINE Q. TIMM, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

1 Application 10/843,954, Tinted contact Lenses with Combined Limbal
Ring and Iris Patterns, filed 12 May 2004. The specification is referred to
as the “954 Specification,” and is cited as “Spec.” The real party in interest
is listed as Johnson & Johnson Vision Care, Inc. (Appeal Brief, filed
12 February 2009 (“Br.”), 3.)
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-002212
Application 10/843,954

DECISION ON APPEAL
A. Introduction
Jerry W. Dukes, Angie L. Bowers, and Karin D. McCarthy (“Dukes”)
timely appeal under 35 U.S.C. § 134(a) from the final rejection3 of
claims 1-11, and 17.4 We have jurisdiction under 35 U.S.C. § 6.
We REVERSE.
The subject matter on appeal relates to tinted contact lenses having a
pattern of dots forming “fibrous structures” in the “limbal” region—the
region at the border of the cornea and the schlera (white)—of the eye. The
contact lenses are said to be especially useful as cosmetic lenses for
enhancing the iris of a dark-eye.
Representative Claim 1 is reproduced from the Claims Appendix to
the Principal Brief on Appeal:
1. A contact lens, comprising
a limbal ring, the limbal ring comprising
an opaque band of color and
a fibrous dot pattern comprising a pattern of dots
arranged so as to form a plurality of fibrous
structures.
(Claims App., Br. 12; paragraphing and indentation added.)

3 Office action mailed 21 June 2007 (“Final Rejection”; cited as “FR”).
4 Remaining pending claims 12-15 and 19 have been withdrawn from
consideration by the Examiner. (FR 1.)
Appeal 2009-002212
Application 10/843,954

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The Examiner has maintained the following grounds of rejection:5
A. Claims 1-11 and 17 stand rejected under
35 U.S.C. § 102(e) in view of Ocampo.6
B. Claims 1-11 and 17 stand rejected under
35 U.S.C. § 102(e) in view of Clark.7
The issue dispositive of this appeal is whether, as Dukes argues,
neither Ocampo nor Clark describes or suggests dots arranged as fibrous
structures.
B. Findings of Fact
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
The 954 Specification
1. The 954 Specification defines the term “limbal ring” as “an annular
band of color that, when the lens is on-eye and centered, partially or
substantially completely overlies the lens wearer’s limbal region, or the
junction of the sclera with the cornea.” (Spec. 2, ll. 15-17.)

5 Examiner’s Answer mailed 29 April 2008. (“Ans.”).
6 Geraldo J. Ocampo, Colored Contact Lenses that Enhance Cosmetic
Appearance of Light-Eyed People, U.S. Patent Application Publication
US 2005/00978 A1 (6 January 2005), based on an application filed 30 June
2004, and claiming the benefit of a provisional application filed 1 July 2003.
7 Douglas G. Clark et al., Tinted Contact Lenses with Color Patterns
Having Varying Depths, U.S. Patent Application Publication
US 2004/0119939 A1 (24 June 2004), based on an application filed 19
December 2002.
Appeal 2009-002212
Application 10/843,954

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2. The “sclera” is the “dense fibrous opaque white outer coat enclosing
the eyeball except the part covered by the cornea.” (Webster’s Third New
International Dictionary (1993), (“Webster’s”).)
3. In the words of the 954 Specification, “[b]y ‘fibrous dot pattern’ is
meant a pattern of dots that are arranged such that they appear to form a
plurality of fibrous structures in which each of the individual fibrous
structures may or may not be intertwined with other of the fibrous
structures.” (Spec. 2, ll. 25-28.)
4. Figure 1 of the 954 Specification is reproduced below at 1:1 scale
from the record copy via the SnagIt 7® application:

{Figure 1 is said to show a contact lens fibrous dot pattern.}
5. The 954 Specification indicates that limbal ring 11 is a black opaque
band, while fibrous dot pattern 12 is “composed of a plurality of
substantially intertwined random fibrous structures,” (i.e., there are no
repeating clusters). (Spec. 3, ll. 12-15.)
Appeal 2009-002212
Application 10/843,954

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6. Fibrous dot pattern 12 is shown as beginning at innermost border 14
of the limbal ring and terminating at innermost border 15, leaving an area 13
in which there are no pattern elements. (Spec. 3, ll. 9-24.)
Ocampo
7. Ocampo describes colored contact lenses that are said to enhance the
color of the eyes of a light-eyed person while maintaining a natural
appearance. (Ocampo 1, ¶ [0002].)
8. According to Ocampo, the contact lenses have a colored, non-opaque
pupil section that is separated from a colored patterned iris section by a
jagged border. (Ocampo 1, ¶ [0010].)
9. Ocampo teaches that the preferred pattern of the iris area is
randomized, although “other patterns are contemplated.” (Ocampo 1,
¶ [0009].)
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Application 10/843,954

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10. Ocampo Figure 2 is reproduced below at 1:1 scale from the record
copy via the SnagIt 7® application:

{Ocampo Figure 2}
11. Ocampo describes Figure 2 in the following words: “[a]s shown in
Fig. 2, the iris section can comprise an intermittent pattern that leaves a
portion of the iris section 32 within the interstices of the pattern clear or less
densely colored.” (Ocampo 2-3, ¶ [0026].)
12. According to Ocampo, “[t]he clear areas 34 of the iris section 32
appear white in FIG. 2, and appear clear on the actual contact lens.”
(Ocampo 3, ¶ [0026].)
13. “Furthermore,” Ocampo continues, “the colored iris section 32 can
either be solid or composed of a pattern of closely spaced dots.” (Ocampo 3,
¶ [0026].)
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Application 10/843,954

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14. The Examiner has not directed our attention to any verbal description
in Ocampo of dots arranged to form “fibrous structures.”
Clark
15. Clark describes contact lenses that are said to change the natural color
of the lens wearer’s iris. (Clark 1, ¶ [0001].)
16. According to Clark, the effect is obtained by providing a contact lens
having a base opaque or translucent layer having a first thickness, and
providing one or more additional colored layers that may be opaque or
translucent, that have different thicknesses.
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Application 10/843,954

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17. Figure 2 of Clark is reproduced below at 1:1 scale from the record
copy via the SnagIt 7® application:

{Clark Figure 2 is said to show a tinted contact lens}
18. According to Clark, Figure 2 shows a multi-layer color pattern 20
having uniform thickness translucent color layer 22 and an opaque color
layer that “varies in thickness within the layer as can be seen by comparing
the darker dotted portions 23 of the layer with the lighter striations 25.”
(Clark 2, ¶ [0036].)
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19. Clark further provides a translucent color layer that “varies in depth
within the layer as seen by comparing the striations 24 to those striations 26
of the translucent layer.” (Clark 2, ¶ [0036].)
20. The Examiner has not directed our attention to any verbal description
in Clark of dots arranged to form “fibrous structures.”
C. Discussion
Anticipation is a question of fact, In re Baxter Travenol Labs.,
952 F.2d 388, 390 (Fed. Cir. 1991), which requires specific fact findings and
satisfactory explanations for such findings. See, e.g., Gechter v. Davidson,
116 F.3d 1454, 1460 (Fed. Cir. 1997).
The ordinary meaning of the term “fibrous structure” is “fiber-like
structure,” and a fiber commonly is understood to be a “thread or structure
or object resembling a thread” (Webster’s). The supporting
954 Specification does not appear to use the term “fibrous structure” in a
broader sense. Indeed, the 954 Specification distinguishes the “fibrous dot”
patterns shown in figures 1-4 from the “Spoke-dot” patterns shown in
Figures 5-7; see also the mixed spoke-dot and fibrous-dot patterns shown in
Figures 8 and 9. Moreover, although threads may be held under tension to
form straight structures or segmented structures, in the absence of an
external force, they tend to meander and intertwine, as shown in Figure 1.
We conclude that the term “fibrous structure,” as that term is used in
appealed claim 1, refers to a structure in which individual loose threadlike
structures are visible.
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Application 10/843,954

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In the present case, the Examiner has directed us to the disclosures—
in particular, to the drawings—of Ocampo and of Clark for evidence
supporting the finding that Ocampo and Clark disclose tinted contact lenses
having a “fibrous dot pattern comprising a pattern of dots arranged so as to
form a plurality of fibrous structures.” We do not perceive structures of dots
resembling individual loose threads in Ocampo Figure 2 or in Clark
Figure 2. Ocampo describes the dots as being in a “random pixelated
pattern” (Ocampo 2, ¶ [0011]), or as comprising an “intermittent pattern”
(id. at 3, ¶ [0026].) Clark describes “dotted portions 23” and “striations” 24,
25, and 26. The Examiner has not directed our attention to any written
description in Ocampo or Clark that describes or suggests threadlike
structures of dots.
We conclude that Dukes has shown that the Examiner’s finding that
Ocampo and Clark anticipate the claimed subject matter is erroneous.
D. Order
We REVERSE the rejection of claims 1-11 and 17 under
35 U.S.C. § 102(e) in view of Ocampo.
We REVERSE the rejection of claims 1-11 and 17 under
35 U.S.C. § 102(e) in view of Clark.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

Appeal 2009-002212
Application 10/843,954

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PL Initial:
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