Ex Parte Frey

Board of Patent Appeals and Interferences

Jan 30, 2008

10473520 (B.P.A.I. Jan. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JURGEN FREY
____________

Appeal 2008-0085
Application 10/473,520
Technology Center 1700
____________

Decided: January 30, 2008
____________

Before PETER F. KRATZ, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal from the Examiner’s final rejection of
claims 1-5, the only claims that remain pending in this application. We have
jurisdiction pursuant to 35 U.S.C. § 6.

Appeal 2008-0085
Application 10/473,520

Appellant claims an invention that is directed to a method for
producing a molding. A temperature measurement occurs at the mold wall
and the measured temperature is analyzed and used for controlling at least
one of the following: (1) an injection rate; (2) a holding pressure; (3) a
holding pressure time; and (4) a mold temperature. Claim 1 is illustrative
and reproduced below:
1. A method for producing a molding in a mold having at least
one cavity which is surrounded by a mold wall, comprising
measuring the temperature at the mold wall which defines the at
least one cavity, analyzing the measured temperature, and
controlling at least one of injection rate, holding pressure,
holding pressure time and mold temperature on the basis of the
measured temperature analysis.

The Examiner relies on the following prior art reference as evidence
in rejecting the appealed claims:
Hahn 4,615,849 Oct. 7, 1986

Claims 1-5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hahn.
We affirm. Our reasoning follows.
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations. See Graham v.
John Deere, 383 U.S. 1, 17-18 (1966). The analysis supporting obviousness
should be made explicit and should “identify a reason that would have
prompted a person of ordinary skill in the [art] to combine the elements” in
the manner claimed. KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1741
2
Appeal 2008-0085
Application 10/473,520

(2007). “The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR, 127 S. Ct. at 1739.
In considering the question of the obviousness of the claimed
invention in view of the prior art relied upon, we are guided by the basic
principle that the question under 35 U.S.C. § 103 is not merely what the
references expressly teach but what they would have suggested to one of
ordinary skill in the art at the time the invention was made. See Merck &
Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) and In re
Keller, 642 F.2d 413, 425 (CCPA 1981). That is, the question of
obviousness cannot be approached on the basis that an artisan having
ordinary skill would have known only what they read in the references,
because such artisan is presumed to know something about the art apart from
what the references disclose. See In re Jacoby, 309 F.2d 513, 516 (CCPA
1962). Nor is it necessary that suggestion or motivation be found within the
four corners of the references themselves. Indeed, a conclusion of
obviousness may be made from common knowledge and common sense of
the person of ordinary skill in the art without any specific hint or suggestion
in a particular reference. See In re Bozek, 416 F.2d 1385, 1390 (CCPA
1969).
Appellant argues the rejected claims together as a group (Br. 3).1
Accordingly, we select claim 1 as the representative claim on which we
decide this appeal.

1 Our references to the Brief herein are to Appellant’s Brief filed on
November 20, 2006.
3
Appeal 2008-0085
Application 10/473,520

The Examiner has found that Hahn discloses or suggests a molding
method wherein a molding is produced in a mold cavity defined by a mold
wall, the temperature of the mold wall is measured and the analyzed
measured temperature is used to control a process condition (steam
injection) (Ans. 3; Hahn, col. 7, ll. 16-30). In this regard, Hahn discloses
that temperature and pressure measurement signals are analyzed, including
compared with reference values in a controller, and Hahn further teaches
that the controller provides control signals for the molding process, such as
steam supply for heating, as a result of the analysis (Abstract, col. 7, ll. 26-
50, col. 10, l. 5 - col. 13, l. 37). Based on the above-noted disclosure of
Hahn, including the Examiner’s findings respecting the disclosure of Hahn
in the Answer, and given the level of skill in the art which is evidenced by
the teachings of Hahn, the Examiner has reasonably maintained that the
claimed method would have been at least prima facie obvious to one of
ordinary skill in the art at the time of the invention as evidenced by Hahn.2
Appellant acknowledges that Hahn discloses a molding process
wherein a temperature transducer (TG, Fig. 3) is mounted in a mold wall
(Br. 3). However, Appellant contends that the mold wall that Hahn’s
transducer is mounted in mates with a second mold wall (11a) to form a
cavity and that “there is a great distance between the end of the
temperature-transducer element (45) and the mold wall which forms a
portion of the mold cavity” (id.). Appellant further explains this mating,
second wall and great distance argument by the further assertion that Hahn
measures the temperature in a wall which defines the mold cavity rather than

2 Indeed, it is well settled that anticipation is the epitome of obviousness.
See In re Grose, 592 F.2d 1161, 1165 (CCPA 1979).
4
Appeal 2008-0085
Application 10/473,520

at the inner surface of the mold cavity wall (Br. 5). In this vein, Appellant
asserts Hahn’s method is unlike the claimed method wherein the temperature
measuring is said to occur at the mold wall which defines a mold cavity.
Also, Appellant maintains that Hahn “does not teach to analyze the
temperature at the mold wall and to control the injection rate and/or the
holding pressure and/or the holding pressure time and/or the mold
temperature on the basis of this analysis” (Br. 4).
We are not persuaded of reversible error in the Examiner’s
obviousness rejection by Appellant’s contentions for substantially the
reasons set forth by the Examiner in the Answer and as further emphasized
herein. As articulated by the Examiner in the Answer, “the claim language
at issue does not require the inference of [an inner] ‘surface’ as it relates to
the mold wall” temperature measuring location (Ans. 6).
In this regard, it is axiomatic that, in proceedings before the PTO,
claims in an application are to be given their broadest reasonable
interpretation consistent with the specification, and that claim language
should be read in light of the Specification as it would be interpreted by one
of ordinary skill in the art. In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir.
1983). Moreover, limitations are not to be read into the claims from the
Specification. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) citing
In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
Here, the “measuring the temperature at the mold wall… ” limitation
of representative claim 1, when given its broadest reasonable construction in
light of the Specification as it would be construed by one of ordinary skill in
the art, does not require a direct measurement of the temperature at the inner
surface of the mold wall as seemingly argued by Appellant. We note that
5
Appeal 2008-0085
Application 10/473,520

Appellant has not referenced any specialized definition for this disputed
claim language that has been furnished in the Specification in the arguments
presented. In this regard, our review of the brief Specification description
reveals that no such definition was provided therein. While the
Specification refers to an end of a mold cavity as a preferred temperature
measuring location (Specification 2), Appellant’s Specification does not
mention an inner surface of a mold cavity wall or end wall. Nor does the
Specification disclose how such an inner wall surface location would or
could be used as the location where the mold wall temperature is measured
at during a molding operation; much less, require such an inner surface
location based on the claim language in question. As such, we agree with
the Examiner that the claimed temperature measuring at the mold wall step
of representative claim 1 is taught by Hahn’s use of a temperature
measurement element with an ending (45, Fig. 3) that is located within a
mold wall (11b, Fig. 3) and positioned flush with the inside thereof (col. 5,
ll. 4-7), which element is used for measuring mold wall temperature.
Moreover, Appellant’s thinly minted contentions implying that Hahn
does not teach or suggest analyzing the measured temperature and
controlling an injection rate and/or mold temperature on the basis thereof is
clearly without merit given the disclosure and suggestions of Hahn, as
referred to above and in the Answer. Also, see, for example, claim 1 of
Hahn. In this regard, we note that the above referred to disclosure of Hahn
clearly conveys that the temperature measuring values are inputted to a
control device, a comparison (analysis) is performed by the control device,
and the control device controls the supply of steam injection and other inputs
6
Appeal 2008-0085
Application 10/473,520

that influence mold temperature based at least in part on the measured
temperature and analysis thereof.
On this record, we affirm the Examiner’s obvious rejection of the
appealed claims over Hahn.

CONCLUSION
The decision of the Examiner to reject claims 1-5 under 35 U.S.C.
§ 103(a) as being unpatentable over Hahn is affirmed.
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

tf/ls

BACHMAN & LAPOINTE, P.C.
900 CHAPEL STREET
SUITE 1201
NEW HAVEN, CT 06510
7