Novartis AG

Patent Trials and Appeals Board

Jun 1, 2020

2019004092 (P.T.A.B. Jun. 1, 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.
14/967,825 12/14/2015 R. Erich Bauman PAT054671-US-DIV 1253
31781 7590 06/01/2020
ALCON RESEARCH, LLC
PATENT DEPARTMENT
11460 JOHNS CREEK PARKWAY
JOHNS CREEK, GA 30097-1556
EXAMINER
VARGOT, MATHIEU D
ART UNIT PAPER NUMBER
1742
NOTIFICATION DATE DELIVERY MODE
06/01/2020 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 R. ERICH BAUMAN, PETER HAGMANN,
JOHN DALLAS PRUITT, and JOSEPH MICHAEL RAPPON

Appeal 2019-004092
Application 14/967,825
Technology Center 1700
____________

Before ROMULO H. DELMENDO, MONTÉ T. SQUIRE, and
BRIAN D. RANGE, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 18–23 and 26–29.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm. Because the Appellant identifies no reversible error in the
rejection, we adopt the Examiner’s findings, analysis, and conclusion as our
own and add the following for emphasis.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42—namely, Novartis AG (Application Data Sheet filed
December 14, 2015 at 6), which is also identified as the real party in interest
(Appeal Brief filed December 12, 2018 (“Appeal Br.”) at 1).
2 See Appeal Br. 2–5; Reply Brief filed April 30, 2019 (“Reply Br.”) at 1–3;
Final Office Action entered June 15, 2018 (“Final Act.”) at 2–4; Examiner’s
Answer entered March 8, 2019 (“Ans.”) at 3–7.
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I. BACKGROUND
The subject matter on appeal relates to a silicone hydrogel contact
lens having a nano-textured surface that mimics the surface texture of a
human cornea (Specification filed December 14, 2015 (“Spec.”) at 1,
ll. 5–7). Representative claim 18 is reproduced from the Claims Appendix
to the Appeal Brief, as follows:
18. A silicone hydrogel contact lens, comprising: a silicone
hydrogel lens body and a non-silicone hydrogel coating
thereon, wherein the non-silicone hydrogel coating
comprises wrinkle surface patterns having a roughness
(Ra) of from about 5 nm to about 600 nm, wherein the
wrinkle surface patterns are composed of geometric
shapes which resemble worms.
(Appeal Br. 6).
II. REJECTION ON APPEAL
Claims 18–23 and 26–29 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sharma et al.3 (“Sharma”) in view of either Qiu et al.4
(“Qiu ’457”) or Timm et al.5 (“Timm”) (Ans. 3–7; Final Act. 2–4).6
III. DISCUSSION
The Appellant relies on the same arguments for all claims on appeal
(Appeal Br. 2–5). Therefore, we decide this appeal on the basis of claim 18,

3 US 2008/0143956 A1, published June 19, 2008.
4 US 2012/0026457 A1, published February 2, 2012.
5 US 2003/0175408 A1, published September 18, 2003.
6 The Examiner no longer relies on Qiu et al., US 2002/0086160 A1,
published July 4, 2002 (Ans. 5).
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which we designate as representative. 37 C.F.R. § 41.37(c)(1)(iv)(2018).
Pursuant to this rule, claims 19–23 and 26–29 stand or fall with claim 18.
The Examiner finds that Sharma describes a silicone hydrogel contact
lens with a silicate coating together with, or alternative to, a surface
modification, wherein the surface exhibits a wrinkled pattern that has the
same roughness recited in claim 18 and is comprised of a series of raised
ridges having certain geometric shapes such as a curved shape (Ans. 3–4;
Final Act. 2). The Examiner finds further that Sharma teaches forming the
wrinkled pattern by swelling the lens base body and that such surface
coating may also include a hydrophilic polymer coating as a secondary
coating (Ans. 3; Final Act. 2–3). The Examiner acknowledges that Sharma
does not explicitly disclose (i) “a non-silicone hydrogel coating” and (ii)
“wrinkle surface patterns . . . which resemble worms,” both as recited in
claim 18 (id. at 3–4). Regarding the wrinkle surface patterns that resemble
worms, the Examiner finds that Sharma discloses that the raised ridges may
be curved and that such a teaching would have at least rendered worm-like
shapes obvious to a person having ordinary skill in the art and that,
“[i]ndeed, a wrinkled surface, particularly one with curved wrinkles [as
disclosed in Sharma], would have been expected to have the appearance of
—[i.e.,], resemble— worm” (id. at 4). Regarding the “non-silicone hydrogel
coating” limitation, the Examiner finds that Qiu ’457 and Timm disclose that
it was known in the contact lens art to provide such non-silicone hydrogel
coatings in the form of a crosslinked, non-silicone hydrophilic coating to
impart hydrophilicity to an otherwise hydrophobic silicone hydrogel lens
and to improve biocompatibility, respectively (id.). Given the collective
teachings found in the prior art, the Examiner concludes that “one of
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ordinary skill in this art would have found it obvious to have substituted the
non-silicone hydrogel coatings of either secondary reference for the silicate
coating of the primary reference in order to enhance the comfort and
biocompatibility of the contact lens” (id.).
The Appellant contends that “Sharma is totally silent about a
non-silicone hydrogel coating” and that Sharma’s teaching regarding a layer
of hydrophilic polymer attached to a carbon layer on a silicone contact lens
does not relate to a hydrogel, which is a crosslinked polymeric material
having the characteristic defined in the current Specification (Appeal
Br. 3–4; Spec. 3, ll. 11–12). Furthermore, the Appellant argues that Sharma
does not disclose wrinkled surface patterns composed of geometric shapes
resembling worms (Appeal. Br. 4). According to the Appellant, “each of
[the] secondary references fails completely to disclose anything about a
non-silicone hydrogel coating comprising wrinkled surface patterns and
anything about winkled [sic] surface patterns composed of geometrical
shapes which resemble worms” (id.).
The Appellant’s arguments fail to identify reversible error in the
Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Sharma teaches that contact lenses made from silicone materials are
generally subdivided into two major classes: hydrogels and non-hydrogels
(Sharma ¶ 2).7 Sharma teaches, however, that “[s]ilicone contact lenses may
tend to have relatively hydrophobic, non-wettable surfaces” (Sharma ¶ 3).
Thus, to provide comfort and to avoid corneal edema, inflammation, and

7 Sharma teaches that “[h]ydrogels generally have a water content greater
than about ten weight percent” (Sharma ¶ 2), which is consistent with the
Inventors’ definition (Spec. 3, ll. 11–12).
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other adverse effects, especially for lenses intended for wearing for an
extended period of time, Sharma teaches providing a wrinkled surface
including raised ridges, which may have a curved shape, on hydrophobic,
non-wettable silicone hydrogel lenses so as to facilitate fluid exchange
between the lens and a cornea when worn (id. ¶¶ 3–7, 45).
According to Sharma, the wrinkled surface is created by providing a
silicone contact lens with a modified surface layer, swelling the contact lens
with a polymerizable swelling agent, and polymerizing the swelling agent
(id. ¶ 7). Sharma discloses that the silicone contact lens may be a silicone
hydrogel contact lens (id. ¶¶ 8, 36). With respect to the swelling agent,
Sharma discloses monomers such as alkyl (meth) acrylates, which are
preferably mixed with crosslinking agent such as di(meth)acrylate
monomers (id. ¶¶ 50–51)—all of which are non-silicone materials.
According to Sharma, the polymerized swelling agent stabilizes the wrinkled
modified surface layer by “anchor[ing] the wrinkled modified surface to the
underlying silicone copolymer substrate, resulting in a wrinkled, robust
coating that does not delaminate from the contact lens surface and in a
wrinkled, durable wettable coating” (id. ¶ 54 (emphasis added))—i.e., a
crosslinked hydrophilic coating.
In a manner similar to that disclosed in Sharma, Qiu ’457 teaches
providing a crosslinked hydrophilic coating as a surface modification on a
silicone hydrogel contact lens because “a silicone hydrogel material
typically has a surface, or at least some areas of its surface, which is
hydrophobic (non-wettable) and susceptible to adsorbing lipids or proteins
from the ocular environment and may adhere to the eye” (Qiu’ 457 Abstract;
¶¶ 3, 9). The Examiner reasonably finds that Qiu ’457’s crosslinked
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hydrophilic coating is in fact a crosslinked non-silicone hydrogel (Ans. 6),
and, in this regard, the Appellant does not offer any evidence or technical
reasoning to the contrary (Appeal Br. 4 (arguing only that the secondary
references do not disclose the claimed feature—i.e., wrinkled surface
patterns composed of geometrical shapes resembling worms—alleged to be
missing in Sharma)). Given the collective teachings found in Sharma and
Qiu ’457, we are in complete agreement with the Examiner’s conclusion that
a person having ordinary skill in the art would have been prompted to
substitute Sharma’s silicate coating with Qiu ’457’s non-silicone hydrogel
coating in order to enhance the wearer’s comfort and improve
biocompatibility (Ans. 4; Final Act. 2).
Furthermore, Timm teaches modifying the surface of various devices
such as contact lenses with “hydrophilic and/or hydrogel coatings such as
polyvinyl pyrrolidone (PVP), polyethylene glycol (PEG), or Hyaluronic acid
(HA)”—all of which are non-silicone materials—to improve
biocompatibility (Timm ¶¶ 4, 6). Therefore, we share the Examiner’s
conclusion that a person having ordinary skill in the art would have been
prompted to substitute Sharma’s silicate coating with Timm’s hydrophilic
hydrogel coating with a reasonable expectation of success in improving
biocompatibility (Ans. 4; Final Act. 2).
We find no persuasive merit in the Appellant’s argument that Sharma
does not disclose or suggest “wrinkle surface patterns . . . composed of
geometric shapes which resemble worms,” as recited in claim 18. The
Inventors’ broad description of “worm-like patterns” (Spec. 7, ll. 8–10,
13–14; Drawings filed December 14, 2015, Fig. 2B) fails to impart a
definition for “geometric shapes which resemble worms” that meaningfully
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distinguishes over Sharma’s disclosure of wrinkled patterns comprised of
curved ridges.
Lastly, the Appellant’s argument that Qiu ’457 and Timm do not teach
wrinkled surface patterns is ineffective. First, as the Examiner correctly
explains (Ans. 6–7), Qiu ’457’s and Timm’s non-silicone hydrogels, when
implemented in Sharma, would reasonably be expected to provide a
wrinkled pattern because Sharma explicitly teaches that swelling the silicone
contact lens with a swelling agent to form a crosslinked hydrophilic coating
provides the wrinkled pattern (Sharma ¶ 7). Second, as the Examiner aptly
points out (Ans. 7), the argument fails because it attacks the references
individually rather than consider the collective prior art teachings as a whole
as required under the law. In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.”).
For these reasons, and those well-stated by the Examiner, we uphold
the Examiner’s rejection.

IV. CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
18–23, 26–29 103(a) Sharma, Qiu ’457,
Timm
18–23, 26–
29

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED