Appeal No. 2006-3179 Page 3
Application No. 10/477,069
as they would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be afforded by the
written description contained in the applicant's specification.” In re Morris, 127 F.3d
1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Crish, 393 F.3d 1253, 1256,
73 USPQ2d 1364, 1367 (Fed. Cir. 2004). According to its dictionary definition,2
“passivate” means “to make inactive or less reactive.” This definition is consistent with
the specification which describes the claimed process as inactivating the Brönsted sites
located at the lens body surface and also with the body of the claim. Specification,
page 4. Brönsted sites are defined in the application to include COOH and OH groups.
Id., page 3, ¶¶ 5 and 6; page 5, ¶ 1. Thus, the claimed subject matter is drawn to a
method of making the surface of a lens less chemically reactive by exposing it (“dipped
into”) to a solution of a fluoroalkyl silane which deactivates the Brönsted sites.
Obviousness
Gupta in view of Ogawa
Claims 1, 3, 5, and 7-9 stand rejected under § 103(a) as obvious over Gupta3 in
view Ogawa.4
Gupta teaches the modification of the outermost surface of an acrylic optical lens
to produce a surface which is biologically inert and which has “low glare, soil resistance,
UV absorbance, and cytotoxic and anti-bacterial properties.” Gupta, page 3, lines 30-
32. Carboxyl groups present on the acrylic polymer chains of the len’s surface are
modified in a “surface modifying step” by the addition of “a chemical group selected
2 Webster’s New Collegiate Dictionary 838 (1976)
3 Gupta, EP 348 462 B1, published May 18, 1994
4 Ogawa, U.S. Pat. No. 6,060,123, issued May 9, 2000
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