Ex parte PARK et al.

Board of Patent Appeals and Interferences

Mar 26, 1998

08016931 (B.P.A.I. Mar. 26, 1998)

Application for patent filed February 12, 1993. 1
According to appellants, this application is a continuation-
in-part of Application No. 07/698,611, filed May 10, 1991, now
abandoned.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte JOHN Y. PARK, JAMES N. COOK,
DORLA MIREJOVSKY and STEVEN S. MATSUMOTO
________________
Appeal No. 96-1852
Application No. 08/016,9311
________________
ON BRIEF
________________
Before KIMLIN, GARRIS and PAK, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-1852
Application No. 08/016,931
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This is an appeal from the final rejection of claim 1-13
and 15-22, all the claims remaining in the present
application. Claims 1, 12 and 13 are illustrative:
1. A method for inhibiting the formation of deposits on
a contact lens comprising:
introducing into a mammalian eye wearing a contact lens
an ophthalmically acceptable composition comprising an
ophthalmically acceptable antioxidant component in an amount
effective to inhibit the formation of at least one of
proteinaceous deposits and lipid deposits on said contact
lens.
12. A method for conditioning a contact lens comprising:
soaking a contact lens which is proteinaceous deposit-
free in an ophthalmically acceptable composition comprising
an ophthalmically acceptable aqueous carrier component, an
ophthalmically acceptable wearability component in an amount
effective to enhance the wearability of said soaked contact
lens in a mammalian eye, and an ophthalmically acceptable
antioxidant component in an amount effective to inhibit the
formation of at least one of proteinaceous deposits and lipid
deposits on said soaked contact lens after said soaked contact
lens is placed in a mammalian eye, said ophthalmically
acceptable antioxidant component being selected from the group
consisting of Vitamin A, Vitamin E, ascorbic acid,
glutathione, oxidation-type gluta-thione, ophthalmically
acceptable antioxidant salts thereof, ophthalmically
acceptable antioxidant derivatives thereof, precursors thereof
and mixtures thereof.
13. A composition useful for inhibiting the formation of
deposits on a contact lens being worn in a mammalian eye
comprising:
an ophthalmically acceptable aqueous carrier component;
Appeal No. 96-1852
Application No. 08/016,931
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an ophthalmically acceptable wearability component in an
amount effective to enhance the wearability of a contact lens
in a mammalian eye; and
at least one ophthalmically acceptable antioxidant
component in an amount effective to inhibit the formation of
at least one of proteinaceous deposits and lipid deposits on a
proteinaceous deposit-free contact lens being worn in a
mammalian eye, said
Appeal No. 96-1852
Application No. 08/016,931
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composition being ophthalmically acceptable and having an
ophthalmically acceptable pH greater than 5.0, said
ophthalmically acceptable antioxidant component being selected
from the group consisting of Vitamin A, Vitamin E, ascorbic
acid, glutathione, oxidation-type glutathione, ophthalmically
acceptable antioxidant salts thereof, ophthalmically
acceptable antioxidant derivatives thereof, precursors thereof
and mixtures thereof, said composition being ophthalmically
acceptable.
The examiner relies upon the following references as
evidence of obviousness:
Ogata 4,285,738 Aug. 25, 1981
Chanda et al. (Chanda) 4,715,899 Dec. 29, 1987
Japanese Abstract JP60254114 (Japanese '114) (1985)
Appellants' claimed invention is directed to a
composition useful for inhibiting the formation of deposits on
a contact lens, and methods for utilizing the composition on a
contact lens while being both worn and not worn. The
composition comprises ophthalmically acceptable carrier
components, wearability components and antioxidant components.
Appealed claims 1-13 and 15-22 stand rejected under
35 U.S.C. § 103 as being unpatentable over the collective
teachings of Chanda, Ogata and Japanese '114.
We have thoroughly reviewed the respective positions
advanced by appellants and the examiner. In so doing, we
Appeal No. 96-1852
Application No. 08/016,931
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concur with appellants that the prior art presented by the
examiner fails to establish a prima facie case of obviousness
for the claimed subject matter. Accordingly, for essentially
those reasons expressed by appellants in their Brief, we will
not sustain the examiner's rejection.
The examiner does not dispute appellants'
characterization of the prior art as teaching compositions and
methods of removing protein deposits on soiled contact lenses
with compositions that are not ophthalmically acceptable.
Rather, it is the examiner's position that to modify a prior
art composition to render it ophthalmically acceptable and to
use it to inhibit the formation of proteinaceous material
instead of removing such material are "within the skill of the
artisan" (page 5 of Answer). However, the fatal flaw in the
examiner's reasoning is that the proper test for obviousness
under 35 U.S.C. § 103 is not what one of ordinary skill in the
art could have accomplished if he was inclined to do so, but,
rather, does the prior art provide a teaching or suggestion of
the claimed invention. In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984). In the present case, we
fully agree with appellants that none of the applied prior
Appeal No. 96-1852
Application No. 08/016,931
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art, either singularly or collectively, teaches or suggests
inhibiting the formation of deposits on a contact lens by
utilizing a composition comprising the recited ophthalmically
acceptable components. Accordingly, we are constrained to
reverse the examiner's rejection.
Under the provisions of 37 CFR § 1.196(b), we enter the
following new ground of rejection. Claims 13 and 15-22 are
rejected under 35 U.S.C. § 103 over JP-011497. According to
page 3 of appellants' specification, the Japanese reference
discloses ophthalmic compositions comprising glutathione and
conventional auxiliaries such as appellants' wearability
component, polyvinyl alcohol. Although appellants'
specification states that the Japanese reference does not
teach use of the composition in the care of contact lens, it
is well settled that a claimed composition cannot be
distinguished from the same prior art composition by
recitation of an intended use not described in the prior art.
As a result, we find no patentable distinction between the
composition disclosed by Japanese '114 and the composition
recited in appealed claim 13. As for the claimed pHs set
forth in some of the dependent claims, it is also well settled
Appeal No. 96-1852
Application No. 08/016,931
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that it is a matter of prima facie obviousness for the skilled
artisan to ascertain the optimum conditions of pH and the
like. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934,
1936 (Fed. Cir. 1990).
In conclusion, based on the foregoing, the examiner's
decision rejecting appealed claims 1-13 and 15-22 is reversed.
A new ground of rejection under 37 CFR § 1.196(b) has been
entered for claims 13 and 15-22.
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b) (amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides, "[a] new ground of rejection shall
not be considered final for purposes of judicial review."
37 CFR § 1.196(b) also provides that the appellants,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (37
CFR § 1.197(c) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
Appeal No. 96-1852
Application No. 08/016,931
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reconsidered by the examiner, in which event the
application will be remanded to the examiner . . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record . . . .
Appeal No. 96-1852
Application No. 08/016,931
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED - 37 CFR § 1.196(b)
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
BRADLEY R. GARRIS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
CHUNG K. PAK )
Administrative Patent Judge )
Appeal No. 96-1852
Application No. 08/016,931
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Frank J. Uxa, Jr.
Peterson, Uxa & Myers
910 Calle Negocio, Suite 280
San Clemente, CA 92673-6201