MENICON SINGAPORE PTE LTD.

Patent Trials and Appeals Board

Jan 21, 2022

2021002556 (P.T.A.B. Jan. 21, 2022)

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. 14/352,025 04/15/2014 Stephen D. Newman P272633WOUS01_506325-173 7688 153518 7590 01/21/2022 Dorsey & Whitney - Menicon 111 South Main Street 21st Floor Salt Lake City, UT 84111-2176 EXAMINER PERREAULT, ANDREW D ART UNIT PAPER NUMBER 3735 NOTIFICATION DATE DELIVERY MODE 01/21/2022 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): Thomas.Cynthia@dorsey.com case.kathy@dorsey.com ip.docket.slc@dorsey.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte STEPHEN D. NEWMAN Appeal 2021-002556 Application 14/352,025 Technology Center 3700 ____________ Before JOSEPH A. FISCHETTI, JAMES A. WORTH, and KENNETH G. SCHOPFER, Administrative Patent Judges. SCHOPFER, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3-8, and 12-14. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. BACKGROUND The Specification states that “[t]he present systems and methods relate to contact lens packaging and more particularly, to contact lens packaging that includes pre-formed multi-layered laminates and contact lens packaging 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Menicon Singapore Pte Ltd. Appeal Br. 1. Appeal 2021-002556 Application 14/352,025 2 for a plurality of contact lens that includes alternative arrangements for the contact lenses.” Spec. ¶ 1. CLAIMED SUBJECT MATTER Claim 1 is the only independent claim on appeal and recites: 1. A contact lens package, comprising: a multi-layer laminate substrate having a first polymer layer, a first metal layer and at least one pre-formed lens receiving portion, in the form of a depression formed in the multi-layer laminate substrate sized to hold at least a portion of a contact lens and having sufficient structural rigidity to maintain the shape; and a cover sheet removably secured to the substrate and configured to seal a contact lens within the at least one pre- formed lens receiving portion; wherein the cover sheet comprises a laminate having a second metal layer and a second polymer layer; and wherein the cover sheet has greater flexibility than the multi-layer laminate substrate. Appeal Br. 20. REJECTIONS 1. The Examiner rejects claims 1, 3-8, and 12-14 under 35 U.S.C. § 112(b) as indefinite. 2. The Examiner rejects claims 1, 3-8, 12, and 13 under 35 U.S.C. § 103 as unpatentable over Martin2 in view of Newman.3 3. The Examiner rejects claim 14 under 35 U.S.C. § 103 as unpatentable over Martin in view of Newman and Peck.4 2 Martin et al., US 5,620,088, iss. Apr. 15, 1997. 3 Newman, US 7,828,137 B2, iss. Nov. 9, 2010. 4 Peck et al., US 2004/0004008 A1, pub. Jan. 8, 2004. Appeal 2021-002556 Application 14/352,025 3 DISCUSSION Indefiniteness Regarding claim 1, the Examiner determines that the claim is indefinite based on the recitation of “, in the forms [sic] of a depression formed in.” Final Act. 3. The Examiner explains that the comma in this phrase “fails to make clear as to what the above refers (i.e. package, substrate, polymer, metal, etc.)” and that “[t]here is insufficient antecedent basis for this limitation in the claim (such as with respect to “the form”).” Id. at 3-4. We disagree with the Examiner. We are not persuaded that the comma in the quoted claim phrase creates any ambiguity. As Appellant explains, “[t]he comma punctuation after the recitation of ‘at least one pre- formed lens receiving portion,’ . . . serves grammatically to introduce the clause ‘in the form of a depression formed in’ as a modifier of the proceeding noun.” Appeal Br. 18. Thus, one would understand clearly that the phrase “in the form of a depression” refers to the receiving portion. This understanding of the claim is further clarified by the recitation of “the form,” which finds antecedent basis from the “at least one pre-formed lens receiving portion.” Appeal Br. 20 (emphasis added). Even though there may be no explicit antecedent basis for the phrase “the form” here, the claim has a reasonably ascertainable meaning, i.e., in the context of the claim, one of ordinary skill in the art would understand that “the form” refers to the “pre-formed lens receiving portion.” See Energizer Holdings, Inc. v. Int’l Trade Com’n, 435 F.3d 1366, 1370-1371 (Fed. Cir. 2006) (determining that the claim term “said zinc anode” referenced the previously recited “anode gel”). Accordingly, we do not sustain this rejection. Appeal 2021-002556 Application 14/352,025 4 Obviousness We are persuaded of error with respect to the rejection of independent claim 1 because the Examiner has not explained adequately how the proposed combination would result in a contact lens package as claimed. In rejecting claim 1, the Examiner finds that Martin teaches a contact lens package as claimed except for the claimed metal layer of the substrate, for which the Examiner relies on a combination with Newman. Final Act. 4-5 (citing Martin Figs. 6-13, 26-34; col. 4, ll. 15-31, col. 7, ll. 55-67; Newman col. 21, ll. 1-10) The Examiner determines that, based on Newman’s teachings, it would have been obvious to add a metal layer to Martin’s substrate “in order to inhibit oxygen transmission and protect the contents therein.” Id. at 5. As an initial matter regarding the Examiner’s findings, we note that although the Examiner appears to find that Martin teaches a multi-layer laminate substrate, Martin teaches only that the substrate is formed of a “molded plastic base member . . . [that] may be constituted from a suitable injection molded or thermoformed thermoplastic sheet material.” Martin col. 4, ll. 15-18. In contrast, Martin discloses a “flexible cover sheet [that] may be constituted of a laminate of a thermoplastic film and aluminum foil or a barrier material comprising silicon oxide.” Id. col. 4, ll. 18-21. Thus, Martin does not appear to disclose laminate substrate and only discloses the use of a laminate for the cover sheet. Given that Martin does not disclose the use of a multi-layer laminate substrate, the Examiner has failed to explain adequately how or why the combination proposed would result in such a laminate structure. In the rejection, the Examiner states only that the combination provides “a metal Appeal 2021-002556 Application 14/352,025 5 layer within the entire substrate that conforms to the shape of Martin and cooperates to maintain a shape of the depression.” Final Act. 5. In the Answer, the Examiner states that “Newman is provided merely to include a metal layer on the existing structure already provided by Martin.” Ans. 7. The problem with the Examiner’s analysis is that it fails to consider the claim requirements that the substrate is not only multi-layered but is also a laminate. The Examiner does not explain how adding a metal layer on Martin’s substrate would result in a laminate material or why one of ordinary skill in the art would have had a reason to modify Martin’s substrate to be a laminate material as claimed. At best, the combination proposed only provides a multi-layered substrate, but we fail to see, and the Examiner does not explain, how it results in a laminate material. Our determination of error is guided by the appropriate interpretation of the claim at issue. Notably, the Specification distinguishes between packages that “include layers of material for the cover sheet and substrate that are added during assembly of the contact lens package rather than being provided with the substrate and/or cover sheet as a laminate.” Spec. ¶ 41. In other words, packaging material that includes layers that are not provided as a part of a base laminate material before construction of the package are simply multi-layered materials, not laminates. This is consistent with the claim language, which requires that the material of the substrate is not only multi-layered but is also a laminate material. Given the distinction presented in the Specification, one of ordinary skill would understand that a laminate material is a manufactured material that consists of multiple layers bonded together, which is also consistent with the plain meaning of the term. See, e.g., Cambridge Dictionary at Appeal 2021-002556 Application 14/352,025 6 https://dictionary.cambridge.org/us/dictionary/english/laminate; accessed on Jan. 13, 2022. Under this interpretation, the Examiner does not explain how or why one of ordinary skill in the art would have combined Newman’s metal layer with Martin’s substrate to form a laminate substrate. At best, the Examiner’s reasoning that a metal layer would inhibit oxygen transmission only explains why a metal layer would be added, but does not explain why a laminate substrate would be formed and used. Regarding the Examiner’s reasoning, we also agree with Appellant that the Examiner has not adequately explained why one of ordinary skill in the art would have had a reason to provide an additional metal layer to form a laminate substrate in Martin’s packaging. The Examiner determines that the combination would have been obvious “in order to inhibit oxygen transmission and protect the contents therein.” Final Act. 5. We agree with Appellant that it is not apparent that any such benefit would be provided by the combination. Specifically, we find that Martin suggests that the substrate provides adequate inhibition of oxygen transmission. Specifically, Martin distinguishes between the injection molded or thermoformed base member and the flexible cover sheet that “may be constituted of a laminate of a thermoplastic film and aluminum foil or a barrier material comprising silicon oxide.” Martin col. 4, ll. 16-21. Martin further describes that “[t]he flexible cover sheet is preferably constituted of a laminated foil, barrier film layered to other plastic, metalized or further layers, or other suitable material structure.” Id. col. 7, ll. 56-58. Thus, Martin discloses that the cover sheet preferably includes a barrier layer without any mention of the base requiring additional barrier materials. Based on this disclosure, it is not clear that one Appeal 2021-002556 Application 14/352,025 7 of ordinary skill in the art would have recognized a benefit to adding a metal layer to Martin’s base to form a laminate substrate as claimed. Based on the foregoing, we are persuaded of error in the rejection of independent claim 1. For the same reasons, we are persuaded of error in the rejection of claims 3-8, 12, and 13. Further, with respect to the rejection of dependent claim 14, the Examiner does not provide further evidence or analysis that would cure the deficiency in the rejection of claim 1. Thus, we are also persuaded of error in the rejection of claim 14. Accordingly, we do not sustain the obviousness rejections of claims 1, 3-8, and 12-14. CONCLUSION We REVERSE the rejections of claims 1, 3-8, and 12-14. In summary: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1, 3-8, 12-14 112(b) Indefiniteness 1, 3-8, 12-14 1, 3-8, 12, 13 103 Martin, Newman 1, 3-8, 12, 13 14 103 Martin, Newman, Peck 14 Overall Outcome 1, 3-8, 12-14 REVERSED