Ex Parte Fueller

Patent Trial and Appeal Board

Jan 21, 2015

12085861 (P.T.A.B. Jan. 21, 2015)

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.
12/085,861 05/13/2009 Hermann Fueller MBPP102US 3506
49003 7590 01/21/2015
MICHAEL L. DUNN
SIMPSON & SIMPSON, PLLC
5555 MAIN STREET
WILLIAMSVILLE, NY 14221
EXAMINER
KRINKER, YANA B
ART UNIT PAPER NUMBER
1747
MAIL DATE DELIVERY MODE
01/21/2015 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HERMANN FUELLER1
____________

Appeal 2013-001600
Application 12/085,861
Technology Center 1700
____________

Before BRADLEY R. GARRIS, BEVERLY A. FRANKLIN, and
WESLEY B. DERRICK, Administrative Patent Judges.

DERRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s rejection of claims 17–20 and 22–28 as unpatentable under
35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF CASE
Appellant’s invention relates to a method of producing glass articles
in negative molds where the external surface of a glass object is heat treated
prior to removal from the mold. Spec. 2–3.

1 According to Appellant, the Real Party in Interest is Fueller
Glastechnologie Vertriebs GmbH. App. Br. 3.
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Application 12/085,861

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Independent claim 17 is illustrative of the claimed invention:
17. A method of producing glass articles wherein the
following steps are carried out:
a) introducing a portion unit of liquid or paste-like
glass into a negative mould (10) of an article to be produced;
b) applying negative pressure to the negative mould
(10) for a period which is sufficient for the liquid or paste-like
glass to be sucked into the negative mould (10) and to be
brought into exactly fitting contact with the walls of the
negative mould (10); wherein an external surface of the glass
located in the negative mould (10) is heat-treated to retard
cooling to relieve stresses and smooth the surface; and
c) cooling and de-moulding of the moulded glass
article.
Applied Prior Art
The Examiner relies on the following prior art in rejecting the claims:
Giffen US 3,181,563 May 4, 1965
Dahms US 4,432,783 Feb. 21, 1984
Minakawa US 4,682,003 July 21, 1987
Martinez-Soto US 4,940,480 July 10, 1990
Krischke2 DE 100 20 396 A1 Nov. 15, 2001
Uezaki US 2003/0051508 A1 Mar. 20, 2003
Tijerina-Ramos US 2003/0167799 A1 Sept. 11, 2003
Rejections
The Examiner rejects claims 17–20 and 22–28 under 35 U.S.C.
§ 103(a) as unpatentable as follows:
I. Claims 17–19, 22, and 24 over Krischke in view of
Minakawa. Final Action 2–4.

2 The Examiner relies on a machine translation of Krischke made of record
in the Office Action issued July 11, 2011.
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II. Claim 20 over Krischke in view of Minakawa and
Dahms. Id. at 4.
III. Claim 23 over Krischke in view of Minakawa and
Martinez-Soto. Id. at 5.
IV. Claims 25 and 26 over Krischke in view of Minakawa
and Giffen. Id. at 5–6.
V. Claim 27 over Krischke in view of Minakawa, Giffen,
and Tijerina-Ramos. Id. at 6–7.
VI. Claim 28 over Krischke in view of Minakawa and
Uezaki. Id. at 7–8.
ANALYSIS
We have reviewed the Examiner’s rejections under 35 U.S.C. § 103(a)
in light of arguments advanced by Appellant in the Appeal Brief and Reply
Brief, but are not persuaded that the Examiner erred reversibly in concluding
the claims are unpatentable, essentially for the reasons expressed in the Final
Action and the Response to Argument in the Examiner’s Answer, which we
adopt.3 See Final Action 2–8; Ans. 3–8. We add the following for
emphasis.
We begin our analysis by determining the meaning of the claims,
giving terms the broadest reasonable interpretation consistent with the
Specification as it would be interpreted by one of ordinary skill in the art.
See, e.g., In re Suitco Surface, Inc., 603 F.3d 1255, 1259–60 (Fed. Cir.

3 Rather than reiterate all arguments of Appellant and the Examiner, we refer
to the Final Office Action (mailed December 6, 2011), the Appeal Brief
(filed June 4, 2012), the Answer (mailed September 5, 2012), and the Reply
Brief (filed November 5, 2012).
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2010); In re Morris, 127 F.3d 1048, 1054–55 (Fed. Cir. 1997). In particular,
we consider whether or not “an external surface of the glass located in the
negative mold” is limited to an external surface in contact with the negative
mold. Claim 17. We determine that it is not because the Specification
states:
In accordance with the invention, an external surface of the glass
located in the negative mould, especially a surface thereof facing an
introduction aperture of the negative mould, is heat–treated, for
which there is used preferably a burner, especially a blowtorch.

Spec. 4, ll. 1–4 (emphasis added.)
We observe the Examiner also finds that “an external surface of the
glass located in the negative mold” is not limited to an external surface in
contact with the negative mold. See, e.g., Ans. 4 (citing surface 15 of
Krischke Fig. 2 as illustrating that an “external surface of the glass” need not
be “in contact with the walls of the negative mold”).
As to the prior art, the Examiner finds Krischke teaches, inter alia, a
method of producing glass stoppers by providing a portion of liquid glass,
applying a negative pressure to a negative mold to draw glass into the mold
and into contact with the walls of the mold, cooling the stopper, and de-
molding the stopper. Final Action 2–3. Further, as related above, the
Examiner finds Krischke teaches use of such a mold wherein a portion of the
external surface of the glass in the mold is not in direct contact with the
walls of the mold. See, e.g., Ans. 4–5.
The Examiner finds Minakawa teaches, inter alia, a glass forming
apparatus that includes a mechanism for holding a glass, pre-heating the
glass, cutting an exposed portion “with a laser and ‘heat[ing] with a burner
26 for accelerated smoothing’” and heating “by burner 25” to reduce thermal
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stress. Final Action 3; see also Ans. 5. The Examiner finds that “burners 25
and 26, by heating the glass, intrinsically ‘retard cooling’ of the glass.” Id.
The Examiner concludes that it would have been obvious for one of
ordinary skill at the time of the invention to heat-treat the external surface of
the glass in a negative mold as taught by Minakawa in order to accelerate
smoothing of the glass and reducing stress of the glass. Id.; see also Ans. 5
(“Minakawa teaches . . . benefits of heat-treating a portion of the glass gob
that heat-treating results in accelerated smoothing . . . and a reduction in
thermal stress”).
The Examiner relies on the other cited references for their teaching of
additional limitations of dependent claims subject to Rejections II–VI. Final
Action 4–8.
Appellant emphasizes that the claimed method requires applying heat
to the external surface of glass before it is removed from the mold. See, e.g.,
App. Br. 10–11. Appellant argues that the asserted combination of Krischke
and Minakawa does not teach or suggest that “an external surface of the
glass located in the negative mould (10) is heat-treated to retard cooling to
relieve stresses and smooth the surface while it is in the negative mold.” Id.
at 11 (emphasis omitted.) In particular, Appellant argues that Krischke does
not disclose or suggest such a step and, in fact, teaches away from it because
it “add[s] cooling to the mold rather that anything that would retard cooling
of the surface of a molded article.” Id. at 11. Appellant argues Minakawa
does not remedy the deficiency of Krischke because there is “nothing
suggested . . . concerning forming in a negative mold, or heating an exterior
surface of a mold” in Minakawa’s disclosure that after a glass article has
been formed (by blow molding), unwanted glass left after molding can be
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cut off by a laser and the surface is smoothed by direct application of a
flame. Id. Appellant further notes that the glass article in Minakawa is held
in a chuck, not in a negative mold, during the cutting process. Id. at 12–13.
Appellant also argues that “[a]n essential point of the invention is not
a fire polishing step, but rather to ensure a very high shape accuracy.” Id. at
13.
With respect to additional references cited in Rejections II–VI,
Appellant argues they do not remedy the argued deficiency, but instead
teach away to the extent some of them provide for cooling. Id. at 12. In the
Reply Brief, Appellant further argues that Minakawa teaches away from the
claimed invention because “complicated additional steps are required after
the article is formed. Thermal stress is reduced by yet another step avoided
by the presently claimed invention.” Reply Br. 3.
Appellant also argues that the Examiner has mischaracterized
Appellant’s arguments to include “heating the external surface of the
negative mold as part of the invention” as meaning the exterior of the mold
not in contact with glass. Reply Br. 2, 3, 4, 5. Having considered the record
before us, we do not find that to be the case. Rather, we find Appellant’s
arguments fail to appreciate the Examiner’s application of the claim to the
prior art where, as set forth above, the claim does not require that “an
external surface of the glass located in the negative mold” be an external
surface in contact with the negative mold. Ans. 4 (emphasis omitted.)
In light of the claims not being limited to heat-treating surfaces in
contact with the mold, we find Appellant’s argument that the Examiner’s
proffered combination of Krischke and Minakawa does not teach or suggest
the claimed invention wholly without merit because it does not address the
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Examiner’s proffered combination of teachings. Appellant’s arguments,
particularly those highlighting Minakawa’s differences from Krischke (see,
e.g., App. Br. 11), also fail to “take account of the inferences and creative
steps that a person of ordinary skill in the art would employ” in overcoming
difficulties in combining the teachings of the cited references. KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007). “A person of ordinary skill is
also a person of ordinary creativity, not an automaton.” Id. at 421.
Further, we find Appellant’s arguments directed to features not set
forth in the claims, including “ensur[ing] a very high shape accuracy” (App.
Br. 13), unpersuasive of reversible error because, as the Examiner
determines (Ans. 7), the cited features are not claim limitations.
Having considered the record before us, we also find Appellant’s
various arguments that the references teach away from the claimed invention
(see, e.g., App. Br. 11–13; Reply Br. 3) unpersuasive of reversible error. See
DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed.
Cir. 2006) (“We will not read into a reference a teaching away from a
process where no such language exists.”). As determined by the Examiner,
Krischke does not teach away simply because it teaches eventually cooling
the glass article before it is removed from the mold (Ans. 6), nor do the other
references (id. at 7). Further, the argument that Minakawa teaches away
because its heat treatment “adds stress at the solid/liquid interface” (App. Br.
10; Reply Br. 2) is not persuasive because it is merely attorney argument.
See, e.g., In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s
argument . . . cannot take the place of evidence.”).

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Application 12/085,861

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In view of the foregoing, we determine that Appellant has not
identified reversible error in the Examiner’s conclusion that Krischke,
Minakawa, Dahms, Martinez-Soto, Giffen, Tijerina-Ramos, and Uezaki, as a
whole, would have suggested the method of producing glass articles as
recited in the claims on appeal within the meaning of 35 U.S.C. § 103(a).
DECISION
We AFFIRM the Examiner’s decision rejecting claims 17–20 and 22–
28.
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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).
AFFIRMED

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