Abbott Medical Optics, Inc. v Alcon Laboratories, Inc
[2012] APO 78
•26 July 2012
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Abbott Medical Optics, Inc. v Alcon Laboratories, Inc. [2012] APO 78
Patent Application: 2004201867
Title:Process for cleaning and disinfecting contact lenses
Patent Applicant: Alcon Laboratories, Inc.
Opponent: Abbott Medical Optics, Inc.
Delegate: Dr B. Akhurst
Decision Date: 26 July 2012
Hearing Date: By written submissions dated 12 June 2012 and 29 June 2012
Catchwords: PATENTS - final determination of an opposition under section 59 -whether amendments overcome the deficiencies in the opposed claims - the claims are directed to the use of a single solution - deficiencies overcome - costs awarded against the opponent
Representation: Patent applicant: Dr Simon Weisman patent attorney of FB Rice & Co., Sydney
Opponent:Dr Trevor Davies and Dr Linda Govenlock, patent attorneys of Allens Arthur Robinson, Sydney
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2004201867
Title:Process for cleaning and disinfecting contact lenses
Patent Applicant: Alcon Laboratories, Inc.
Date of Decision: 26 July 2012
DECISION
The applicant’s amendments of 21 November 2011 overcome all of the deficiencies identified in the earlier decision. Subject to appeal, I direct that the application proceed to sealing.
REASONS FOR DECISION
BACKGROUND
Grant of a patent for application 2004201867 in the name of Alcon Laboratories, Inc. was opposed by Abbott Medical Optics, Inc. Following a hearing, on 26 September 2011, I issued a decision upholding the opposition, which was reported as Abbott Medical Optics, Inc. v Alcon Laboratories, Inc. [2011] APO 79. The background to the present matter is presented in this earlier decision.
Alcon filed amendments to the specification under section 104, which were advertised allowed on 31 May 2012. Both parties filed written submissions for the final determination of the opposition. Alcon’s were filed on 12 June 2012. Abbott’s submissions on 29 June 2012 relied in part on comments on the proposed amendments filed on 14 December 2011.
The amendments
Compared to the opposed claims, Alcon’s amendments incorporated part of opposed claim 6 into claim 1; added and deleted text in claims 2 and 7, respectively; corrected a typographical error in claim 20; and added two additional claims. Consequential amendments were made to the dependent claims.
4. Claim 1 remains the only independent claim. With the additional text underlined, claim 1 reads as follows:
“A method of cleaning a contact lens with a single solution comprising polycarboxylates(s) or corresponding acid(s) or a combination thereof in an amount effective to clean the lens, wherein said method comprises (i) applying the single solution to the lens for a time and under conditions sufficient to remove debris from the lens, and then (ii) soaking the lens in the single solution for a time and under conditions sufficient to remove protein deposits attached to the lens wherein said time and said conditions do not only disinfect the lens or remove debris.”
The earlier decision is final and determined all the relevant issues that were capable of determination at the time (R v Smith; Ex parte Mole Engineering Pty Ltd [1981] HCA 25; (1981) 147 CLR 340 at 348-349). In the earlier decision, I found that matter claimed in the opposed specification was not novel, lacked an inventive step and that a claim was not clear. The only issue to be decided in this final determination is whether Alcon’s amendments overcome the deficiencies.
Lack of novelty and inventive step
The opposition was successful on the grounds of novelty and inventive step as follows:
· the prior use of Opti‑Free® Rinsing Disinfecting and Storage Solution (Opti-Free® RDS) in accordance with the instructions provided in its package insert disclosed the subject matter of claims 1-5, 9 and 11-17, rendering it not novel ([2011] APO 79 at [91]); and
· the subject matter of claims 1 and 2 was not novel and lacked an inventive step, over the separate disclosures of US4599195 and US 4808239 ([2011] APO 79 at [59], [99]).
Amended claim 1 incorporates only part of the features of opposed claim 6. Since no claim of the same scope was considered in the earlier decision, it remains to be determined if claim 1 encompasses novel and inventive subject matter. All other claims are dependent on claim 1.
Alcon believes the amendments overcome the deficiencies in the claims. However, Abbott submits that the claimed invention is still anticipated by the prior art and in particular the Opti-Free® RDS package insert.
Opti-Free® RDS package insert
Abbott submits that Steps 2 and 3 of the Opti-Free® RDS package insert anticipate amended claim 1. In particular, the additional ‘pre-treatment’ step in amended claim 1 is taught by Step 2 in the Opti-Free® RDS package insert.
10. The Opti-Free® RDS package insert provides a 3-step process. In the earlier decision I concluded at [71] that only Step 3 uses Opti-Free® RDS as a single solution.
11. Step 1 instructs the user to add one or two drops of a daily cleaner to the lens and to clean each side of the lens by rubbing. There is no instruction in Step 1 to rinse the lens at any point to remove the daily cleaner.
12. Step 2 instructs the user to add a few drops of Opti-Free® RDS and after further rubbing, to rinse both surfaces with Opti-Free® RDS ‘to remove all traces of cleaner’. My conclusion at [71] of the earlier decision was based on my construction of Step 2 which I interpreted to mean that the daily cleaner is removed with the rinse at the end of Step 2.
13. Abbott accepts that at the end of Step 1 debris and cleaning solution remain on the lens. The following submission by Abbott is consistent with my construction of Steps 1 and 2:
“… after Step 1 the lens with debris and cleaning solution are held in the palm of the wearer’s hand. Even if some of the debris has been loosened after Step 1, the debris is only ‘removed from the lens’ as required by amended claim 1, after the lens has been rubbed and rinsed with the OPTI-FREE® RDSS in Step 2.”
14. Opti-Free® RDS is applied as a single solution in Step 2. However, it is applied to a lens that has daily cleaner remaining on it on completion of Step 1. Once Opti-Free® RDS is added, the rubbing action (i.e. the cleaning action) in Step 2 is carried out using the Opti‑Free® solution in combination with the residual daily cleaning solution.
15. In the earlier decision at [34], I construed claim 1 relevantly to define a method of cleaning a contact lens using only the one solution. Amended claim 1 has the same introductory words “A method of cleaning a contact lens with a single solution…” and I consider that it is still directed to the use of one solution. It follows that amended claim 1 is not anticipated by Steps 2 and 3 in the Opti-Free package because Step 2 uses two solutions in combination.
US 4599195 and US 4808239
16. In the earlier decision I found that cleaning methods contained in Examples 2 and 3 of US 4599195 and Example 2 of US 4808239 were relevant to the novelty and inventive step of opposed claims 1 and 2. Abbott has generally indicated that it considers these documents still relevant to the claimed invention, but made no specific submissions in this regard.
17. Neither prior art document teaches or suggests the pre-treatment step as presently claimed. Consequently, I find the invention of amended claim 1 is novel and involves an inventive step over each of US 4599195 and US 4808239.
18. All other claims in the specification are ultimately dependent on claim 1 and incorporate the features of this claim. Consequently, the dependent claims also define novel and inventive subject matter.
Clarity
19. There was no argument with respect to the amendment to opposed claim 20 (amended claim 21). The correction of the sodium citrate concentration from 0.056% to 0.56% (w/v) renders the claim clear.
Summary
20. I find that Alcon’s amendments of 21 November 2011 overcome the deficiencies in the opposed claims.
Costs
21. The parties made no submissions on costs. In view of my decision it is appropriate to award costs against the unsuccessful party. I award costs according to Schedule 8 against Abbott Medical Optics, Inc.
Barbara Akhurst
Delegate of the Commissioner of Patent
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