Ex parte Tohill et al.

Board of Patent Appeals and Interferences

Sep 2, 1998

08658719 (B.P.A.I. Sep. 2, 1998)

Application for patent filed June 5, 1996.1
1
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 10
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte GAYLORD E. TOHILL, JR. and STEVE E. HENSCHEL
_____________
Appeal No. 98-0459
Application 08/658,7191
______________
ON BRIEF
_______________
Before CALVERT, COHEN and PATE, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 5, all of the claims in the application.
Appellants’ invention pertains to a contact lens storage
compartment. An understanding of the invention can be derived
from a reading of exemplary claim 1, a copy of which appears in
the APPENDIX to the brief (Paper No. 8).
Appeal No. 98-0459
Application 08/658,719
2
As evidence of obviousness, the examiner has applied the
documents listed below:
Nathan 3,768,633 Oct. 30, 1973
Artz 4,044,933 Aug. 30, 1977
Cuppari 4,909,382 Mar. 20, 1990
Jessen 4,925,017 May 15, 1990
The following rejections are before us for review.
Claims 1 through 3, and 5 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Jessen in view of Cuppari and
Nathan.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jessen in view of Cuppari and Nathan, applied
above, further in view of Artz.
The full text of the examiner's rejections and response to
the argument presented by appellants appears in the answer (Paper
No. 9), while the complete statement of appellants’ argument can
be found in the brief (Paper No. 8).

Appeal No. 98-0459
Application 08/658,719
In our evaluation of the applied patents, we have considered all of2
the disclosure thereof for what it would have fairly taught one of ordinary
skill in the art. See In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA
1966). Additionally, this panel of the board has taken into account not only
the specific teachings, but also the inferences which one skilled in the art
would reasonably have been expected to draw from the disclosure. See In re
Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
3
OPINION
In reaching our conclusion on the obviousness issues raised
in this appeal, this panel of the board has carefully considered
appellants’ specification and claims, the applied patents, and2
the respective viewpoints of appellants and the examiner. As a
consequence of our review, we make the determinations which
follow.
We reverse each of the examiner’s rejections of appellants’
claims under 35 U.S.C. 103(a).
The contact lens storage compartment of Claim 1 comprises,
inter alia, a main storage body compartment having a hinged top
cover, and at least one additional lens storage compartment
“exterior” to the main storage compartment.
Reading the language of claim 1 in light of the underlying
disclosure, it is clear to this panel of the board that the claim
Appeal No. 98-0459
Application 08/658,719
As an example, Cuppari and Nathan respectively evidence two separate3
and distinct storage compartment entities, not a contact lens storage
compartment comprising a main storage body compartment and at least one
additional lens storage compartment exterior to the main storage compartment,
as set forth in claim 1.
4
addresses a contact lens storage compartment as a structural
entity which comprises at least one additional storage
compartment exterior or outside of its main storage body
compartment, which main storage body compartment is coverable by
the hinged top cover. This claimed contact lens storage
compartment is, of course, clearly not simply two physically
separate and distinct structural entities, one a storage body
compartment and another a distinct additional storage
compartment.3
We turn now to the teachings of Jessen, Cuppari, and Nathan,
applied to claim 1.
Cuppari teaches two pairs of contact lens carriers or
storage compartments 36, 38, 40, and 42, but these contact lens
storage compartments are all interior of the main storage body
compartment under the hinged and mirrored lid or cover 18.
Jessen teaches a temporary storage contact lens cleaning kit
that includes one pair of contact lens storage cups 20 and caps
Appeal No. 98-0459
Application 08/658,719
5
22 along with one or more bottles 18 of contact lens solutions
(Figs. 1, 3, and 4) on a base 14. The base with the
aforementioned components is stored within a storage box.
Accordingly, Jessen reveals to us an absence of at least one
additional lens storage compartment exterior of the storage box
(main storage compartment), as now claimed.
Nathan (Fig. 10) is fairly viewed as simply teaching an
arrangement of one pair of externally mounted lens cases.
Collectively assessed, it is at once apparent to us that the
references described, supra, simply do not address and would not
have been suggestive of the now claimed contact lens storage
compartment having at least one additional lens storage
compartment “exterior” to the covered main storage compartment.
As to the disclosure of the Artz patent, it clearly does not
overcome the deficiencies of the Jessen, Cuppari, and Nathan
patents. Since the evidence of obviousness before us lacks a
suggestion for the claimed invention, the rejections of
appellants’ claims are appropriately reversed.
Appeal No. 98-0459
Application 08/658,719
6
In summary, this panel of the board has:
reversed the rejection of claims 1 through 3, and 5 under 35
U.S.C. § 103(a) as being unpatentable over Jessen in view of
Cuppari and Nathan; and
reversed the rejection of claim 4 under 35 U.S.C. § 103(a)
as being unpatentable over Jessen in view of Cuppari, Nathan, and
Artz.
The decision of the examiner is reversed.
REVERSED
)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
WILLIAM F. PATE, III )
Administrative Patent Judge )
Appeal No. 98-0459
Application 08/658,719
7
Joseph H. McGlynn
6111 Saddle Horn Dr
Fairfax, VA 22030