Spy Eye, LLC

Patent Trials and Appeals Board

Jul 9, 2021

2020004127 (P.T.A.B. Jul. 9, 2021)

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.
15/629,610 06/21/2017 Eric Anthony Perozziello 32774-37101/US 6431
143795 7590 07/09/2021
Tectus / Fenwick
801 California Street
Mountain View, CA 94041
EXAMINER
FISSEL, TRAVIS S
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
07/09/2021 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):
fwtectuspatents@fenwick.com
patents@tectuscorp.com
ptoc@fenwick.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ERIC ANTHONY PEROZZIELLO,
EDWARD JOHN PALEN, and MICHAEL WEST WIEMER
____________

Appeal 2020-004127
Application 15/629,610
Technology Center 2800
____________
Before JAMES C. HOUSEL, GEORGE C. BEST, and JANE E. INGLESE,
Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–21 of Application 15/629,610. Final
Act. (March 22, 2019). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we reverse.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Tectus Corporation as the real party in interest. Appeal Br. 2.
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Application 15/629,610
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I. BACKGROUND
The ’610 Application describes methods for making electrical
connections on curved surfaces and a device made by such methods. Spec.
¶ 4. The methods are said to be useful for making electrical connections on
the surface of a contact lens. Id. ¶ 3. At least one proposed eye-mounted
display system uses a contact lens-mounted display projector, which could
be connected to other electronic components via electrical interconnects on
the surface of the contact lens. Id. ¶¶ 2–3.
Claim 1 is representative of the ’610 Application’s claims and is
reproduced below from the Appeal Brief’s Claims Appendix.
1. A method for creating conductive traces on a curved
surface of the contact lens, the method comprising:
creating a groove in a curved surface of a contact lens
material, the groove exposing some contact lens material;
forming a seed layer on the curved surface and on the
contact lens material exposed by the groove;
removing the seed layer from the curved surface, in
leaving some seed layer on the contact lens material exposed by
the groove; and
depositing a conductive material onto the seed layer in
the groove.
Appeal Br. 12.
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II. REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1–3, 5, 6, 8, 11–14, and 17–21 are rejected under 35
U.S.C. § 103 as unpatentable over the combination of Etzkorn2
and Mandell.3 Final Act. 2.
2. Claim 4 is rejected under 35 U.S.C. § 103 as unpatentable over
the combination of Etzkorn, Mandell, and Moosburger.4 Final
Act. 6.
3. Claim 7 is rejected under 35 U.S.C. § 103 as unpatentable over
the combination of Etzkorn, Mandell, and Weidman.5 Final
Act. 6.
4. Claim 9 is rejected under 35 U.S.C. § 103 as unpatentable over
the combination of Etzkorn, Mandell, and Streibig.6 Final
Act. 7.
5. Claim 10 is rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Etzkorn, Mandell, and Mizoguchi.7
Final Act. 7.
6. Claims 15 and 16 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Etzkorn, Mandell, and
Ho.8 Final Act. 7.

2 US 2014/0200424 A1, published July 17, 2014.
3 US 5,108,169, issued April 28, 1992.
4 US 2015/0236223 A1, published August 20, 2015.
5 US 2014/0211473 A1, published July 31, 2014.
6 US 2002/0057416 A1, published May 16, 2002.
7 US 2004/0135644 A1, published July 15, 2004.
8 US 9,884,180 B1, issued February 6, 2018.
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Application 15/629,610
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III. DISCUSSION
Claims 1–21 stand rejected. Final Act. 1.
Appellant argues for reversal of the various rejections of the claims on
the basis of limitations common to independent claims 1 and 13. See Appeal
Br. 3–10. Claim 13 is alleged to be patentable for the same reasons
independent claim 1 is patentable. Id. at 10 (“Thus, the Examiner has erred
in rejecting claim 1 under 35 U.S.C. § 103. The Examiner has made the
same error in rejecting claim 13 under 35 U.S.C. § 103.”). The remaining
claims are alleged to be patentable based upon their dependence from the
parent independent claim. Id.
The Examiner rejected claims 1 and 13 as unpatentable over the
combination of Etzkorn and Mandell. Final Act. 2. In doing so, the
Examiner found that Etzkorn describes forming a seed layer on a surface of
a contact lens, leaving some seed layer, and depositing a conductive material
onto the seed layer. Id. at 3 (citing Etzkorn’s layer 520 in Figs. 5B–5H as the
seed layer); see also Ans. 3–6. The Examiner further found that Mandell
describes cutting a groove into the surface of a contact lens, placing an
adhesive into the groove, placing a metal wire onto the adhesive and then
removing excess material. Id.
Appellant argues that the Examiner erred by finding that Etzkorn’s
layer 520 corresponds to the claimed seed layer. Appeal Br. 3–10. Etzkorn
describes, inter alia, a method for making an encapsulated electronic device
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that can be incorporated into a contact lens. Etzkorn ¶ 4. For ease of
reference, Etzkorn’s Figures 2C and 2D are reproduced below.
Etzkorn’s Figure 2C is a cross-sectional side view
of Etzkorn’s eye-mounted device. Etzkorn ¶ 11.
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Etzkorn’s Figure 2D is an enlarged view of a
portion of Figure 2C. Etzkorn ¶ 12.
As shown in Figures 2C and 2D, eye 10 includes cornea 20, upper
eyelid 30, and lower eyelid 32. Etzkorn ¶ 65. Etzkorn’s eye-mounted device
210 is mounted on the outer surface 22 of cornea 20. Id. ¶ 64. Tear films 40
and 42 cover the exposed surfaces 224 and 226 of eye-mountable device
210. Id.
Eye-mounted device 210 comprises polymeric material 220, which
can be a bio-compatible material similar to those used to make contact
lenses. Id. ¶ 56. Substrate 230 is embedded in polymeric material 220. Id.
¶ 59. Electronic controller 250 and bio-interactive electronics 260 are
located on the surface of substrate 230. Id. ¶ 61.
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Etzkorn describes one process for making bio-compatible
encapsulated electronic devices such as substrate 230. Id. ¶ 107
(summarizing content of Figures 5A through 5H). The encapsulated
electronics can be embedded in an eye-mountable device such as a contact
lens. Id. For ease of reference, we reproduce Etzkorn’s Figure 5B below.
Figure 5B shows a stage in the manufacture of an
encapsulated electronics module. Etzkorn ¶ 16.
Figure 5B shows working substrate 502 coated with sacrificial layer
510. Id. ¶ 78. “[W]orking substrate 502 can generally be a substantially flat
material suitable for receiving layers of material by deposition,
photolithography, etc. For example, the working substrate 502 may be a
silicon wafer with a polished surface.” Id. Sacrificial layer 510 temporarily
attaches the encapsulated electronic device to the working substrate during
assembly. Id. First layer of bio-compatible material 520 is formed over
sacrificial layer 510. Id. ¶ 80. The lower side of first layer of bio-compatible
material 520 forms an exterior surface of the encapsulated electronics. Id.
¶ 80. The upper side of first layer of bio-compatible material 520 may also
serve as a substrate for forming electronics. Id. ¶ 82.
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For ease of reference, we reproduce Etzkorn’s Figure 5C below.
Figure 5C shows a later stage in the manufacture
of an encapsulated electronics module.
As shown in Figure 5C, conductive material can be patterned on first
layer of bio-compatible material 520 to form electronic circuitry. Id. ¶ 83.
The conductive material can be metal or a substantially transparent
conductive material such as indium tin oxide. Id. “The conductive material
can be patterned via photolithography, deposition, and/or electroplating,
etc.” Id. “In some examples, one or more of the metal structures patterned on
to the first layer of bio-compatible material 520 can be a multilayer
arrangement that includes a seed layer (or adhesion layer) patterned directly
on the bio-compatible material 520.” Id. ¶ 88.
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For ease of reference, we reproduce Etzkorn’s Figure 5E below.
Figure 5E shows a later stage in the manufacture
of an encapsulated electronics module.
After the electronics are completely assembled, a second layer of bio-
compatible material 550 is formed over the assembled electronics. Id. ¶ 92.
Second layer of bio-compatible material 550 functions similarly to first layer
of bio-compatible material 520 to create a bio-compatible exterior for the
encapsulated electronics and to structurally support the assembled
electronics. Id. Second layer of bio-compatible material 550 surrounds the
assembled electronics and contacts first layer of bio-compatible material 520
at edges 552, 554. Id. ¶ 94. Layers of bio-compatible material 520, 550 are
then annealed to completely encapsulate the electronic assembly. Id. ¶ 95.
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For ease of reference, we reproduce Etzkorn’s Figure 5H below.
Figure 5H shows the final step in the manufacture
of an encapsulated electronics module.
Once encapsulated electronic assembly 570 is completed, it is released
from working substrate 502 by dissolving sacrificial layer 510. Id. ¶ 102.
The encapsulated electronic device can then be embedded within a contact
lens.
For the following reasons, we are persuaded by Appellant’s argument
that the combination of Etzkorn and Mandell fail to disclose or suggest
forming a seed layer on the curved surface and on the contact lens material
exposed by the groove.
In rejecting claim 1, the Examiner found that
Regarding claim 1, Etzkorn discloses a method for
creating conductive traces on a contact lens, the method
comprising:
forming a seed layer (520) on the surface (502) in a
cavity (Fig. 2D shows the device within the lens);
leaving some seed layer (Figs. 5A-H shows seed layer
remaining) on the contact lens (Fig. 2A-D show the electronic
device in the lens); and
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depositing a conductive material onto the seed layer (Fig.
5D shows any of 539, 540 and 536 deposited on the seed layer).
Final Act. 3.
First, the Examiner erred by finding that “Etzkorn discloses a method
for creating conductive traces on a contact lens.” Id. As discussed above,
Etzkorn describes methods for the manufacture of an encapsulated electronic
assembly on a working substrate such as a polished silicon wafer. Etzkorn
¶ 78. The encapsulated electronic assembly is then embedded in the contact
lens. Id. ¶ 59. Etzkorn, therefore, describes a method for creating conductive
traces on a bio-compatible material that are subsequently encapsulated and
placed within a contact lens rather than creating conductive traces on a
contact lens.
Second, the Examiner erred by finding that first layer of bio-
compatible material 520 corresponds to claim 1’s seed layer. Etzkorn
specifically describes the properties and function of bio-compatible material
520. Id. ¶ 81. Although Etzkorn states that the bio-compatible material can
be used as a substrate for assembling electronics, this statement refers to the
structural rigidity of the bio-compatible material and not to its suitability as a
seed layer for a plating process. Id. Indeed, Etzkorn later states that an
additional seed layer may be added to facilitate electroplating processes. Id.
¶ 88. Thus, Etzkorn’s bio-compatible material 520 does not correspond to
claim 1’s seed layer.
Third, the Examiner erred by finding that Etzkorn describes leaving
some seed layer on the contact lens. As discussed above, Etzkorn describes
the manufacture of the encapsulated electronics on a working substrate that
is separate from the contact lens. The encapsulated electronics are then
embedded within the contact lens. Etzkorn, therefore, does not describe a
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process in which some of the seed layer is left on the surface of the contact
lens.
In view of the foregoing, we reverse the rejection of claims 1 and 13.
Thus, we also reverse the rejections of claims 2–12 and 14–21.
IV. CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §  Reference(s)/Basis Affirmed Reversed
1–3, 5, 6, 8,
11–14, 17–
21
103 Etzkorn, Mandell
1–3, 5, 6,
8, 11–14,
17–21
4 103 Etzkorn, Mandell, Moosburger 4
7 103 Etzkorn, Mandell, Weidman 7
9 103 Etzkorn, Mandell, Streibig 9
10 103 Etzkorn, Mandell, Mizoguchi 10
15, 16 103 Etzkorn, Mandell, Ho 15, 16
Overall
Outcome 1–21
REVERSED