Novartis AG

Patent Trials and Appeals Board

Apr 2, 2020

14557676 - (D) (P.T.A.B. Apr. 2, 2020)

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.
14/557,676 12/02/2014 Xuwei Jiang PAT055558-US-NP 3237
31781 7590 04/02/2020
ALCON RESEARCH, LLC
PATENT DEPARTMENT
11460 JOHNS CREEK PARKWAY
JOHNS CREEK, GA 30097-1556
EXAMINER
REDDY, KARUNA P
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
04/02/2020 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):
patent.docketing@alcon.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte XUWEI JIANG and DOUGLAS SCHLUETER

Appeal 2019-003004
Application 14/557,676
Technology Center 1700
____________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

SMITH 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, 6, 7, 10, 13, 14, and 17, which
constitute all the claims pending in this application. Claims 4, 5, 8, 9, 11,
12, 15, 16, 18, 19, and 20 have been cancelled. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

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 Novartis AG.
Appeal Br. 1.
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STATEMENT OF THE CASE
Appellant’s invention is generally directed to soft hydrophobic acrylic
materials having improved resistance to fluid diffusion and suitable
mechanical properties that allow deformation upon application of force.
(Spec 1 ll. 6–10.) The Specification discloses the acrylic materials are
useful for ophthalmic or otorhinolaryngological devices, such as contact
lenses. (Spec 2 ll. 26–31.) Claim 1 illustrates the subject matter on appeal
and is reproduced below:
1. A soft hydrophobic acrylic material, being characterized
by having a storage modulus of from about 0.5 MPa to about 3.0
MPa measured by dynamic mechanical analysis under
compression mode at about 35°C and a silicone uptake of less
than about 2.0% by weight after accelerated aging in a silicone
fluid for 32 days at 70°C,
wherein the acrylic material is obtained from a
polymerizable composition comprising:
a) from about 65% to about 80% by weight of at least one
perfluoro-substitued-CrC12 alkyl (meth)acrylate which is
selected from the group consisting of 2,2,2-trifluoroethyl
methacrylate, 2,2,2-trifluoroethyl acrylate, tetrafluoropropyl
methacrylate, tetrafluoropropyl acrylate, hexafluoroisopropyl
methacrylate, hexafluoroisopropyl acrylate, hexafluorobutyl
methacrylate, hexafluorobutyl acrylate, heptafluorobutyl
methacrylate, heptafluorobutyl acrylate, octafluoropentyl
methacrylate, octafluoropentyl acrylate, dodecafluoroheptyl
methacrylate, heptadecafluorodecyl acrylate,
heptadecafluorodecyl methacrylate, and combinations thereof;
b) from about 20% to about 35% by weight of at least one
C2-C12 alkyl (meth)acrylate which is selected from the group
consisting of ethyl acrylate, ethyl methacrylate, n-propyl
acrylate, n-propyl methacrylate, n-butyl acrylate, n-butyl
methacrylate, n-pentyl acrylate, n-pentyl methacrylate, n-hexyl
acrylate, n-hexyl methacrylate, n-heptyl acrylate, n-heptyl
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Application 14/557,676

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methacryate, n-octyl acrylate, n-octyl methacrylate, n-nonyl
acrylate, n-nonyl methacrylate, n-decyl acrylate, n-decyl
methacrylate, n-undecyl acrylate, n-undecyl methacrylate, lauryl
acrylate, lauryl methacrylate, 2-ethylhexyl acrylate, 2-ethylhexyl
methacrylate, 2,2-dimethylpropyl acrylate, 2,2-dimethylpropyl
methacrylate, isobutyl acrylate, isobutyl methacrylate, isopentyl
acrylate, isopentyl methacrylate, and mixtures thereof; and
c) at least one cross-linking agent which is selected from
the group consisting of ethylene glycol dimethacrylate,
diethylene glycol dimethacrylate, triethylene glycol
dimethacrylate, tetraethylene glycol dimethacrylate, allyl
methacrylate, 1,3- propanediol dimethacrylate, 2,3-propanediol
dimethacrylate, 1,6-hexanediol dimethacrylate, 1,4-butanediol
dimethacrylate, their corresponding acrylates, and combinations
thereof, provided that the polymerizable composition is
substantially free of any aryl acrylic monomer.

Appeal Br. 6, Claims Appendix.

The following rejection is presented for our review: 2
Claims 1–3, 6, 7, 10, 13, 14, and 17 are rejected under 35 U.S.C.
§ 103 as unpatentable over Ueda et al (US 2011/0306713 A1, Dec. 15, 2011)
(“Ueda”) in view of Amimoto et al.3 (US 4,795,793, Jan. 3, 1989)
(“Amimoto”).
OPINION
After review of the respective positions provided by Appellant and the
Examiner, we REVERSE the Examiner’s rejection under 35 U.S.C.

2 The complete statement of the rejection on appeal appears in the Final
Office Action. (Final Act. 2–4.)
3 The Examiner and Appellant refer to Amimoto as Animoto.
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Application 14/557,676

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§ 103(a). The Examiner has reproduced the rejections on appeal and the
Examiner’s answer. (Ans. 3–5.)
We limit our discussion to the independent claim 1 as argued by
Appellant. 37 C.F.R. § 41.37(c)(1)(iv). Claims 2, 3, 6, 7, 10, 13, 14, and 17
stand or fall with independent claim 1.

The Examiner finds Ueda teaches a copolymer comprising a fluorine
containing monomer, a fluorine-free monomer other than a crosslinkable
monomer; and a crosslinkable monomer. (Final Act. 2; Ueda ¶ 12.) The
Examiner finds Ueda teaches suitable cross-linking monomers include
compounds having at least two carbon-carbon double bonds, a compound
having at least one carbon-carbon double bond and at least one reactive
group. (Final Act. 3; Ueda ¶¶ 27, 52.) The Examiner finds Ueda differs
from the claimed invention with respect to the claimed crosslinking agent
and claimed properties. (Final Act. 3.) The Examiner cites Amimoto for
teaching a copolymer comprising (a) perfluoroalkyl (meth)acrylate, (b)
cyclohexyl (meth)acrylate and (c) at least one crosslinkable monomer
required by the claimed invention. (Final Act. 3.) The Examiner determines
it would have been obvious to one skilled in art to add polyethylene glycol
di(meth)acrylate such as ethylene glycol dimethacrylate, to the
polymerizable composition of Ueda for the advantages of durability to dry-
cleaning and oil and water repellency composition has extremely excellent
durability to dry-cleaning. (Final Act. 3; Ueda col. 2, ll. 47–61.)

The dispositive issue on appeal is:
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Did the Examiner reversibly err in determining that the combination
of Ueda and Amimoto suggests a soft hydrophobic acrylic material, being
characterized by having a storage modulus of from about 0.5 MPa to about
3.0 MPa measured by dynamic mechanical analysis under compression
mode at about 35°C and a silicone uptake of less than about 2.0% by weight
after accelerated aging in a silicone fluid for 32 days at 70°C as required by
independent claim 1?
We answer this question in the affirmative.
Appellant argues the combination of Ueda and Amimoto fails to
disclose all the limitations of independent claim 1. (Appeal Br. 3.)
Appellant argues there significant structural and functional differences
between the claimed soft hydrophobic acrylic material and the fluorine
containing polymer compositions of Ueda and Amimoto. (Reply Br. 3.)
We agree with Appellant that the Examiner’s failed to explain
adequately how the disclosures of Ueda and Amimoto suggest a soft
hydrophobic acrylic material having the three require components —a
fluorine containing monomer, a fluorine-free monomer other than a
crosslinkable monomer, and a crosslinkable monomer— in amounts
resulting in a soft hydrophobic acrylic material having a storage modulus of
from about 0.5 MPa to about 3.0 MPa measured by dynamic mechanical
analysis under compression mode at about 35°C and a silicone uptake of less
than about 2.0% by weight after accelerated aging in a silicone fluid for 32
days at 70°C as required by independent claim 1.
The soft hydrophobic acrylic material of the present invention is
described as
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soft hydrophobic acrylic materials having improved resistance to
fluid diffusion and suitable mechanical properties that allow
deformation upon application of force, which are desirable as
biocompatible materials for fluid-based accommodating
intraocular lenses (IOLs).
(Spec. 1 ll. 6–10.)

In contrast, Ueda is directed to a water and oil repellent soil-resistant
composition comprising a fluorine containing acrylic polymer that is applied
to porous substrates. (Ueda ¶ 11.) The fluorine-containing polymer of Ueda
must be soluble or dispersible in a solvent or a liquid medium, because it
must be used in a water- and oil-repellent soil-resistant composition (i.e., a
surface treatment agent). (Ueda ¶ 8.) Similarly, Amimoto is directed to a
fluorine containing copolymer composition that is oil and water repellent
and has excellent solubility in organic solvents. (Amimoto col 1 ll. 52–54.)
An inherent characteristic must be inevitable, and not merely a
possibility or probability. See In re Oelrich, 666 F.2d 578, 581 (CCPA
1981). The Examiner has not established Ueda and Amimoto are directed to
compositions comprising dispersible fluorine-containing polymers applied to
substrates to provide oil and water repellency. Neither Ueda nor Amimoto
are directed to polymer composition suitable for intraocular lenses. The
Examiner has failed to explain adequately how the properties of an oil and
water repellent composition are the same as a composition suitable for use as
an intraocular lens.

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Application 14/557,676

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 6, 7, 10,
13, 14, 17
103 Ueda, Amimoto 1–3, 6, 7,
10, 13, 14,
17

REVERSED