Ex Parte Seibert

Board of Patent Appeals and Interferences

Sep 29, 2010

11279329 (B.P.A.I. Sep. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/279,329 04/11/2006 Joseph W. Seibert 126320.00101 7963
21269 7590 09/29/2010
PEPPER HAMILTON LLP
ONE MELLON CENTER, 50TH FLOOR
500 GRANT STREET
PITTSBURGH, PA 15219
EXAMINER
SUGARMAN, SCOTT J
ART UNIT PAPER NUMBER
2873
MAIL DATE DELIVERY MODE
09/29/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte JOSEPH W. SEIBERT
________________

Appeal 2009-015287
Application 11/279,329
Technology Center 2800
____________________________

Before JOSEPH F. RUGGIERO, MARC S. HOFF, and THOMAS S.
HAHN, Administrative Patent Judges.

HAHN, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-015287
Application 11/279,329

Appellant invokes our review under 35 U.S.C. § 134(a) from the final
rejection of claims 7-11.2 We have jurisdiction under 35 U.S.C. § 6(b). An
oral hearing was held on September 21, 2010. We affirm.

STATEMENT OF THE CASE3
Appellant claims a method for fabricating a lens that has distance and
near vision segments. The lens has a first convex surface and a second
concave surface with an included convex surfaced near vision segment
extending from a portion of the distance vision concave surface. The second
surface with distance and near vision segments is prepared by grinding.4
Claim 7 is illustrative:
7. A method of preparing a unitary multifocal lens, comprising:

selecting a lens blank having a first surface that is convex and an
opposing second surface that is concave; and

grinding the second surface to form a near vision segment and a
distant vision segment in the concave surface such that an area of
demarcation between the near vision segment and the distant vision segment
is visible;

wherein the near vision segment is convex.

2 Claims 1-6 and 12-20 have been canceled by Examiner’s Amendment
mailed June 9, 2009.
3 Throughout this opinion we refer for their respective details to the
Specification filed Apr. 11, 2006, the Appeal Brief filed Feb. 5, 2009, the
Examiner’s Answer mailed June 12, 2008, and the Reply Brief filed Aug.
12, 2008.
4 See generally Spec. 5:18-6:2; 12:22-14:11; Fig. 5.
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Application 11/279,329

The Examiner relies on the following prior art to show
unpatentability:
Moulton US 2,250,597 July 29, 1941
Leeds US Re. 29,231 May 24, 1977
Campbell US 4,288,149 Sep. 8, 1981
Claims 7-11 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Moulton, Campbell, and Leeds.

ISSUE
The pivotal issue, based on the Examiner’s findings and conclusions
(see Ans. 4-9) and Appellant’s contentions (see App. Br. 9-14; Reply Br. 4-
9), is whether the Examiner, under § 103(a), erred in finding that any or a
combination of Moulton, Campbell, and Leeds teaches or fairly suggests
fabricating a multi-focal length lens by grinding a surface to form a concave
distance vision segment with a convex near vision segment as recited in
claim 7.

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. Appellant discloses that a backside of a multi-focal lens with concave
and convex segments may be ground using machines and techniques
described in issued patents (Spec. ¶ [0030]). Further, the Appellant
discloses that “[t]he settings and techniques of the grinding or lathing
machine may be set, optionally with commercially available lens machine
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Application 11/279,329

software, and the settings may use standard or non-standard lens grinding
calculations to determine curvature settings for the backside of the lens”
(id.).
Moulton
2. Moulton discloses using transparent plastic synthetic resinous
compositions to make multi-focal length lenses (page 1, col. 1, ll. 1-3). Such
lenses include bifocal lenses having concave backside surfaces 5 for distance
vision with convex reading surfaces 6 extending from the concave surfaces 6
(page 2, col. 1, ll. 28-40; Figs. III and IV).
Leeds
3. Leeds discloses using plastic or polymeric material for contact lenses,
and that “[m]achining, grinding and/or casting is done in a manner known
per se in order to obtain a lens having a surface suitable for its optical
function” (col. 4, ll. 41-43; and col. 7, ll. 57-59).
Campbell
4. Campbell discloses that resin lenses may be made as a “finished lens
[by] . . . cast[ing] essentially in a finished state, or it may be defined by
optically grinding and polishing the rear surface of a cast semi-finished lens;
the latter instance is more common, especially with multi-focal lenses” (col.
10, ll. 20-24).

PRINCIPLES OF LAW
The Supreme Court has stated that “obviousness analysis cannot be
confined by a formalistic conception of the words teaching, suggestion, and
motivation.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). The
Court further stated that “combination[s] of familiar elements according to
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Application 11/279,329

known methods is likely to be obvious when it does no more than yield
predictable results.” Id. at 416. “One of the ways in which a patent’s
subject matter can be proved obvious is by noting that there existed at the
time of the invention a known problem for which there was an obvious
solution encompassed by the patent’s claims.” Id. at 419-420.

ANALYSIS
Claim 7
We are not convinced by Appellant’s argument that the combination
of Moulton, Campbell, and Leeds fails to teach or fairly suggest grinding a
lens back or second surface to form a concave distance vision segment with
a convex near vision segment as recited in claim 7 (App. Br. 9; Reply Br. 5).
The Examiner acknowledges that Moulton does not teach that the
disclosed lens second surface having combined concave and convex surfaces
is fabricated by grinding (Ans. 4). From the other cited references, however,
the Examiner finds that (i) Campbell teaches optically grinding and
polishing the rear surface of a cast semi finished multi-focal length lens
(Ans. 4), and (ii) Leeds teaches that machining, grinding, and/or casting
were known techniques for fabricating a lens with a desired optical function
(Ans. 4). We adopt these Examiner findings (see FF 3, 4). With these
findings the Examiner reasons that “once the optical structure is known
(Moulton, Figs. III and IV), it is very well known, as taught by Campbell or
Leeds, to grind or cast the desired optical surface [, and that] . . . grinding or
casting the desired optical surface would provide a predictable result” (Ans.
4; see FF 2-4).
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Appellant references the Campbell disclosure to “optically grind[] and
polish[] the rear surface of a cast semi-finished lens . . . (col. 10, lines 20-
24)” (Reply Br. 5) (emphasis deleted), and argues that this disclosure
“illustrates that Campbell only discloses grinding of a ‘cast semi-finished
lens’ . . . [and] hence include[es] casting as part of its process” (id.).
Similarly, in addressing Leeds, the Appellant argues that there is “no
disclosure that would enable the grinding of a lens blank (i.e., an uncast
item) to form both a near vision segment and a distance vision segment on
the concave surface” (Reply Br. 6). We find such arguments unavailing
because claim 7 recites no limitation directed to excluding casting.
Appellant also argues lack of expectation of success by asserting that
the prior art is deficient because it merely teaches pursuing a “‘general
approach that seemed to be a promising field of experimentation where the
prior art [gives] only general guidance as to the particular form of the
claimed invention or how to achieve it.’” In re Farrell, 853 F.2d 894, 903
(Fed. Cir. 1988) (citations omitted) (Reply Br. 7).
Again, we find Appellant’s contentions unavailing because the
Supreme Court has stated that “combination[s] of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR, 550 U.S. at 416. First, the record
shows the Examiner’s combination is of familiar elements, namely (i)
Moulton teaches the recited lens segment curvatures (FF 2); and (ii) Leeds
and Campbell teach fabricating plastic lenses by grinding (FF 2, 3). Second,
we find that the problem (i.e., fabricating Moulton’s lens curvatures), and
the methods for solution (i.e., Leeds and Campbell’s optical grinding) were
known (FF 2-4). Finally, we find that using optical grinding to fabricate
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Application 11/279,329

Moulton lens curvatures brings about a predictable result – a multi-focal
length lens. We do not find any evidence or argument of record that
grinding a Moulton multi-focal length lens would not provide a predictable
result. Indeed, Appellant’s Specification discloses that machines and
techniques described in patents issued prior to the filing of the Specification
can be used to grind the recited surfaces (FF 1). Accordingly, we are
persuaded by the Examiner’s articulated reasoning that:
[O]nce the optical structure is known (Moulton, Figs. III and IV),
it is very well known, as taught by Campbell or Leeds, to grind or cast
the desired optical surface. Therefore, it would have been obvious to
one of ordinary skill in the art to grind a convex near vision segment
and distant vision segment in the concave surface of Moulton, since as
taught by Campbell or Leeds, grinding or casting the desired optical
surface would provide a predictable result.
(Ans. 4.)
We also are not persuaded by Appellant’s argument that modifying
Moulton with Campbell or Leeds renders Moulton unsatisfactory for its
intended purpose, and that Moulton therefore teaches away from the
combination (Reply Br. 7-9). Appellant makes this argument by referencing
a Moulton disclosure that fabricating plastic lenses requires using different
tools from those used to make glass lenses and that grinding tools are
expensive (App. Br. 10; Reply Br. 8). The Examiner disagrees with
Appellant’s reading of Moulton as being too narrow, and responds with a
citation to another Moulton disclosure identifying that a manufacturer can
grind an optical surface with both concave and convex surfaces using “a new
selection of tools” (Moulton, p. 2, col. 1, ll. 66-70) (Ans. 6). We also find
that Moulton makes this alternative disclosure. Based on the complete
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Application 11/279,329

record, we are persuaded that “the prior art’s mere disclosure of more than
one alternative does not constitute a teaching away from . . . alternatives
because such disclosure does not criticize, discredit, or otherwise discourage
the solution claimed . . . .” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004) (emphasis added). Accordingly, we find the Examiner’s referenced
Moulton disclosure and response persuasive.
For the foregoing reasons, we will sustain the rejection of claim 7.
Claims 8-11
Appellant relies on arguments made for base independent claim 7 to
assert that dependent claims 8-11 are patentable (App. Br. 14-16 and 19-22).
For reasons addressed supra, we find Appellant’s assertions unavailing.
Appellant further asserts that the Examiner failed to address these
dependent claims in the Final Rejection (id.). The Examiner’s Answer
includes separate discussions setting out reasons for the rejection of each of
these claims (Ans. 8, 9), and Appellant did not acknowledge or address the
Examiner’s indicated reasoning in the Reply Brief. We have reviewed the
Examiner’s indicated reasoning and find the reasoning to be persuasive in
view of the record.
Accordingly, we will also sustain the rejection of claims 8-11.
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CONCLUSION
The combination of Moulton, Campbell, and Leeds teaches
fabricating a multi-focal length lens by grinding a surface to form a concave
distance vision segment with a convex near vision segment as recited in
claim 7.

ORDER
The Examiner’s decision rejecting claims 7-11 is 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)(1)(iv).
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Application 11/279,329

AFFIRMED

ELD

PEPPER HAMILTON LLP
ONE MELLON CENTER, 50TH FLOOR
500 GRANT STREET
PITTSBURGH, PA 15219
10