Ex parte Douche et al.

Board of Patent Appeals and Interferences

Feb 18, 2000

07928784 (B.P.A.I. Feb. 18, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was
not written for publication in a law journal and (2) is not binding
precedent of the Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JEAN-PIERRE DOUCHE and PHILIPPE ARMAND
____________
Appeal No. 1996-2972
Application No. 07/928,784
____________
HEARD: February 07, 2000
____________
Before, KIMLIN, GARRIS, and KRATZ, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's refusal
to allow claims 1, 3-6, and 13-17 as amended after the final
rejection, which are all of the claims pending in this
application.
BACKGROUND
The appellants’ invention relates to a process of
duplicate molding wherein first and second glazings are each
positioned, respectively, in a separate mold associated
Appeal No. 1996-2972 Page 2
Application No. 07/928,784
therewith while the respective molds are each in a separate
auxiliary station. The molds are alternately and
independently moved into a pressing station from their
respective auxiliary stations that are located on different
sides of the pressing station. A further understanding of the
invention can be derived from a reading of exemplary claims 1
and 3, which are reproduced below.
1. Process of duplicate molding on at least one part of
a monolithic or laminated transparent glazing taken from at
least one of the group consisting of glass and transparent
plastic, the process comprising the steps of:
positioning a first glazing in a first mold at a first
auxiliary station at one side of a pressing station having a
press and plastic injecting means;
positioning a second glazing in a second mold at a second
auxiliary station at another side of said pressing station, so
that said first mold moves into said pressing station in a
direction opposite to a direction by which said second mold
moves into said pressing station;
alternately and independently moving said first and
second molds into and out of said pressing station such that
one of said first and second molds may remain stationary while
the other of said first and second molds is moving;
pressing and injecting plastic in a respective one of
said first and second molds in said pressing station while the
other of said first and second molds is in a respective
auxiliary station; and
removing a duplicate molded glazing in the other of said
first and second molds in the respective auxiliary station.
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Application No. 07/928,784
3. The process of Claim 1, including a mold closing
device for each of said first and second molds for applying an
intermediate pressure, lower than a pressure applied by said
press in said pressing station, to the respective mold,
including the step of applying said intermediate pressure
during said moving step.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Strauss 2,864,124 Dec. 16,
1958
Huckvale 2 039 463, Aug. 13, 1980
(United Kingdom)
Admitted prior art, (Appellants' specification, pages 1 and 2)
Claims 1, 3-6, 13-17 stand rejected under 35 U.S.C. §
112, second paragraph as being indefinite for failure to
particularly point out and distinctly claim that which
applicants regard as invention. Claims 1, 3-6, and 13-17
stand rejected under 35 U.S.C. § 103 as being unpatentable
over Huckvale in view of the admitted prior art at pages 1 and
2 of appellants' specification and Strauss.
OPINION
We refer to the appellants' briefs and to the answer for
the opposing viewpoints expressed by the appellants and the
Appeal No. 1996-2972 Page 4
Application No. 07/928,784
examiner concerning the above noted rejections. For the
reasons which follow, we cannot sustain the examiner's stated
§ 112, second paragraph, rejection as applied to claims 1, 6
and 16 and the examiner's § 103 rejection as expressed in the
answer. However, we shall summarily sustain the examiner's
§112, second paragraph rejection as it separately pertains to
claims 3-5, 13-15, and 17. An explanation follows.
Rejection under 35 U.S.C. § 112, second paragraph
The relevant inquiry under 35 U.S.C. § 112, second
paragraph, is whether the claim language, as it would have
been interpreted by one of ordinary skill in the art in light
of appellants’ specification and the prior art, sets out and
circumscribes a particular area with a reasonable degree of
precision and particularity. See In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238 (CCPA 1971).
In rejecting the appealed claims under 35 U.S.C. § 112,
second paragraph, the examiner (answer, page 3) urges that the
language of the fourth paragraph of claim 1 is indefinite "in
that the use of the term 'may' renders the claims unclear...."
At page 7 of the answer, the examiner further explains that
Appeal No. 1996-2972 Page 5
Application No. 07/928,784
"...it is unclear whether the limitation(s) following the
phrase are part of the claimed invention or not, and the
resulting claim does not clearly set forth the metes and
bounds of the patent protection desired."
We recognize that the recited permissive phrase "may" as
utilized in claim 1 does not require the limitation that
follows must occur; i.e., that one of the molds is stationary
while the other of the two molds is moving. However, such
breadth does not equate with indefiniteness. See In re
Gardner, 427 F.2d 786, 788, 166 USPQ 138, 140 (CCPA 1970). From
our reading of appellants' specification, including the
claims, and the relevant prior art, it is clear to us that
appellants are correct in asserting, in essence, that one mold
need not be stationary while the other moves (brief, page 11).
Accordingly, we shall not sustain the examiner*s rejection of
the appealed claims under 35 U.S.C.
§ 112, second paragraph on the above-noted basis.
However, our ultimate disposition of the examiner's 35
U.S.C. § 112, second paragraph rejection of claim 3, as well
as the claims depending therefrom (i.e., claims 4, 5, 13-15,
Appeal No. 1996-2972 Page 6
Application No. 07/928,784
and 17) is another matter. Here, the examiner has advanced
an additional basis for asserting the lack of definiteness of
the latter claims based on the "a pressure" language appearing
in claim 3 (answer, page 3). Our review of the briefs reveals
that appellants have not contested this latter basis for the
examiner's rejection under 35 U.S.C. § 112, second paragraph.
Accordingly, on this record, while we do not sustain the
examiner's § 112, second paragraph rejection as it pertains to
claims 1, 6 and 16, we summarily sustain the examiner's
uncontested § 112, second paragraph rejection as it pertains
to claims 3-5, 13-15 and 17.
Rejection under 35 U.S.C. § 103
The examiner essentially acknowledges (answer, pages 3-5)
that Huckvale (G.B. 2 039 463) does not disclose (1) a
duplicate molding process with the application of a glazing to
the molds in auxiliary stations, and (2) moving the molds of
Huckvale independently into and out of the pressing station
as required by all of the claims on appeal. According to the
examiner, however, it would have been obvious to one of
ordinary skill in the art to use the injection molding machine
of Huckvale for duplicate molding rather than for molding shoe
Appeal No. 1996-2972 Page 7
Application No. 07/928,784
components as disclosed therein since duplicative molding
processes wherein glazing is placed in a mold and plastics
injected thereafter was admittedly well-known and one skilled
in the art would have recognized economic advantages in
duplicative molding via use of the molding techniques of
Huckvale. The examiner also opines that one of ordinary skill
in the art would have further modified the method of Huckvale
to provide for independent movement of each of the molds to
and from the injection station in light of the combined
teachings of the applied references including Strauss to
improve the versatility of the process. The examiner notes
that Strauss teaches the independent movement of mold
assemblies to and from a central injection molding station.
In our view, however, there is no suggestion in the
combined teachings of the applied references to modify the
shoe component molding process of Huckvale as proposed by the
examiner. This is so since the admitted prior art duplicative
molding process is described as taking place in a single
station or in a dissimilar turntable type process involving
four stations and four molds (specification, pages 1 and 2).
The examiner has not pointed to any teaching or suggestion in
Appeal No. 1996-2972 Page 8
Application No. 07/928,784
Huckvale's shoe component molding process using a common
carrier (62) for moving both molds together without the
positioning of glazing in each mold in auxiliary stations
and/or in Strauss' blow molding process for forming hollow
articles such as bottles that suggests the process
modifications contemplated in the examiner's rejection for a
duplicative molding process using glazings as claimed herein.
Accordingly, we agree with appellants (brief, page 10)
that the § 103 rejection advanced by the examiner appears to
rely on the description of appellants’ invention in their
specification for the suggested modifications. Thus, the
present record indicates that the examiner used impermissible
hindsight when rejecting the claims. See W.L. Gore &
Associates v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ
303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984); In re Rothermel, 276 F.2d 393, 396, 125 USPQ 328, 331
(CCPA 1960). Accordingly, we will not sustain the examiner’s
§ 103 rejection of the appealed claims.
CONCLUSION
Appeal No. 1996-2972 Page 9
Application No. 07/928,784
To summarize, the decision of the examiner to reject
claims 3-5, 13-15 and 17 under 35 U.S.C. § 112, second
paragraph is summarily affirmed. The decision of the examiner
to reject claims 1, 6 and 16 under 35 U.S.C. § 112, second
paragraph and to reject claims 1, 3-6, and 13-17 under 35
U.S.C. § 103 as being unpatentable over Huckvale in view of
the admitted prior art at pages 1 and 2 of appellants'
specification and Strauss is reversed.
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Application No. 07/928,784
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
BRADLEY R. GARRIS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
PFK/jlb
Appeal No. 1996-2972 Page 11
Application No. 07/928,784
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