Ex Parte Goldammer et alDownload PDFPatent Trial and Appeal BoardFeb 8, 201612678174 (P.T.A.B. Feb. 8, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/678,174 05/04/2010 Hagen Goldammer 23643 7590 02/10/2016 Barnes & Thornburg LLP (IN) 11 S. Meridian Street Indianapolis, IN 46204 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 47923-211157 6100 EXAMINER LAZORCIK, JASON L ART UNIT PAPER NUMBER 1741 NOTIFICATION DATE DELIVERY MODE 02/10/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): INDocket@btlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HAGEN GOLDAMMER, ALOIS WILKE, and WINTZER WOLFRAM Appeal2014-004519 Application 12/678,174 Technology Center 1700 Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and JAMES C. HOUSEL, Administrative Patent Judges. PERCURIAM. DECISION ON APPEAL 1 STATEMENT OF THE CASE Appellants2 filed an appeal under 35 U.S.C. § 134 from the Examiner's decision finally rejecting claims 8-11, 13-17, 19-22, and 24-27. We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a). We AFFIRM. 1 Our decision refers to the Specification filed May 4, 2010 (Spec.), the Final Office Action mailed July 31, 2013 (Final Act.), Appellants' Appeal Brief filed Dec. 23, 2013 (Appeal Br.), the Examiner's Answer mailed Jan. 27, 2014 (Ans.), and Appellants' Reply Brief filed Feb. 18, 2014 (Reply Br.). 2 Appellants identify the real party of interest as Doctor Optics, GmbH. Appeal Br. 1. Appeal2014-004519 Application 12/678, 174 The claims on appeal are directed to methods for manufacturing a headlight lens for a vehicle headlight (see, e.g., claims 8, 16, and 22). Appellants disclose that an object of Appellants' invention is to provide a process for manufacturing headlight lenses having complex surface contours in small amounts and in a cost-efficient manner. Spec. 4, 11. 18-23. Independent claim 8 is illustrative of the subject matter on appeal. Claim 8 is reproduced from the Claims Appendix of the Appeal Brief: 8. Method for manufacturing a headlight lens for a vehicle headlight, the method comprising: heating a blank of glass to obtain an essentially homogeneous viscosity; and forming a headlight lens for a vehicle headlight by pressing the blank into an injection pressing mould. Appeal Br. 14. The claims on appeal stand rejected as follows: (1) claims 8, 11, 13-15, 22, and 24--27 under 35 U.S.C. § 103(a) as being unpatentable over Hiramoto; 3 (2) claims 9, 10, 16, 17, and 19-21under35 U.S.C. § 103(a) as being unpatentable over Hiramoto in view of Lillie; 4 (3) claims 10 and 17 under 35 U.S.C. § 103(a) as being unpatentable over Hiramoto in view of Lillie and further in view of Petticrew; 5 and 3 Hiramoto, JP 61-197429 A, published Sept. 1, 1986. An English language translation of Hiramoto was provided with the Final Office Action. Further references to Hiramoto refer to the translation. 4 Howard R. Lillie, A Method for Measuring the Flow Point of Glass, 35 J. Am. Ceramic Soc'y 149 (1952). 5 Petticrew, US 5,897,885 A, issued Apr. 27, 1999. 2 Appeal2014-004519 Application 12/678, 174 (4) claims 11, 22, and 24--27 under 35 U.S.C. § 103(a) as being unpatentable over Hiramoto in view of Petticrew. OPINION Rejection (1) Appellants' arguments raise two issues with regard to the § 103 rejection of claims 8, 11, 13-15, 22, and 24--27 as obvious over Hiramoto. We select claim 8 as representative for resolving the first issue and claim 11 as representative for resolving the second issue. Claims 13-15, which are not argued separately, stand or fall with claim 8. Claims 22, and 24--27 stand or fall with claim 11. Claim 8 The Examiner finds Hiramoto discloses heating a blank of glass, citing Hiramoto' s disclosure of reheating a temporarily cooled glass mass. Final Act. 3. The Examiner finds Hiramoto discloses pressing the blank into an injection pressing mold. Id. The Examiner finds the glass blank of Hiramoto would have an "essentially homogeneous viscosity." Final Act. 3--4. With regard to the step of "forming a headlight lens," the Examiner finds the molded glass product of Hiramoto would be capable of functioning as a vehicle headlight lens. Final Act. 5. Appellants argue Hiramoto does not teach or suggest heating a blank of glass to obtain an "essentially homogeneous viscosity." Appeal Br. 3 and 6. In particular, Appellants contend the glass mass of Hiramoto does not have an "essentially homogeneous viscosity" because Hiramoto discloses the surface portion of Hiramoto's glass mass is cooled to form a viscous layer and, when the glass mass is pressurized during molding, only a 3 Appeal2014-004519 Application 12/678, 174 softened portion of glass within the interior of the surface portion is transferred to an area between the molds of Hiramoto, which pressurize the glass. Appeal Br. 3 and 6-7. "[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting aprimafacie case ofunpatentability. If that burden is met, the burden of coming forward with evidence or argument shifts to the applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Here, the Examiner finds Appellants' Specification defines an "essentially homogeneous viscosity" as a viscosity that does not vary more than 20% and that "a higher fuctuation [sic] of the viscosity may be provided with respect to the support surface on which the blank has been placed." Final Act. 3--4 and Ans. 3--4 (citing Spec. 6, 11. 6-15). Citing Hiramoto 's disclosure to use glass heat so the glass has a soft core and a viscous surface, the Examiner determines that the Appellants' definition of an "essentially homogeneous viscosity" encompasses the glass of Hiramoto. Ans. 4. Where patentability rests upon a property of the claimed material not disclosed within the art, the PTO has no reasonable method of determining whether there is, in fact, a patentable difference between the prior art materials and the claimed material. In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Once the Examiner provides a reasonable basis to believe that the characteristic is inherent, the burden shifts to the applicant to prove that the prior art products do not necessarily possess the characteristics of his claimed product. Id. at 1254--55 (discussing In re Swinehart, 439 F.2d 210 ( CCP A 1971) and In re Ludtke, 441 F .2d 660 ( CCP A 1971) ). In view of the breadth of viscosities encompassed by "essentially homogeneous viscosity," as defined by Appellants' Specification, and the PTO' s lack of a reasonable 4 Appeal2014-004519 Application 12/678, 174 method of determining whether there is a difference between prior art materials and a claimed material, the Examiner has set forth a reasonable basis to believe the glass of Hiramoto has an "essentially homogeneous viscosity," as recited in claim 8 and defined by Appellants' Specification. Therefore, the Examiner has met the initial burden of setting forth a prima facie case ofunpatentability, which shifts the burden to Appellants. Appellants' arguments are not persuasive. Appellants contend Hiramoto' s process does not heat a blank of glass to obtain an "essentially homogeneous viscosity" because the surface of Hiramoto' s glass is cooled while only the soft interior of the glass is molded. Reply Br. 3 and 4. This argument does not explain why Hiramoto 's process does not meet the definition of "essentially homogeneous viscosity" set forth in Appellants' Specification. Appellants further argue the viscosity of the surface portion of Hiramoto' s glass mass would differ from the viscosity of the center by more than 20%. Reply Br. 3. However, Appellants provide no evidence or technical reasoning to support this assertion. As a result, Appellants have not met their burden of providing evidence or argument rebutting the Examiner's case of unpatentability. Appellants further assert Hiramoto does not teach or suggest pressing a blank into an injection mold because the ordinary and customary meaning of "injection mold" would exclude the moving molds 11 of Hiramoto. Appeal Br. 4--5. To support this argument, Appellants cite a class definition for class 425, subclass 542, of the United States Patent and Trademark Classification System. Appeal Br. 5---6 and Reply Br. 5-7. Appellants' arguments are not persuasive because "injection mold" encompasses more than the particular definition asserted by Appellants. The 5 Appeal2014-004519 Application 12/678, 174 Merriam-Webster dictionary6 defines "injection molding" as "a method of forming articles (as of plastic) by heating the molding material until it can flow and injecting it into a mold." There is no requirement that the mold have static mold parts or be a closed system, as asserted by Appellants. As discussed above, Hiramoto discloses molding a glass article by heating a mass of glass, such as by reheating a cooled mass of glass, so a central portion of the glass is soft and injecting the central portion into a mold. Moreover, claim 8 recites pressing the blank of glass into an "injection pressing mould," which itself suggests "pressing" the glass with the mold, as disclosed by Hiramoto. As a result, the claims do not exclude the process disclosed by Hiramoto. In addition, Appellants argue Hiramoto does not teach or suggest forming a headlight lens for a vehicle. Appeal Br. 8-9. The Examiner finds the molded glass product of Hiramoto 7 would be capable of being used in a vehicle headlight and there is no structural difference between the claimed lens and the lens of Hiramoto. Final Act. 5 and Ans. 14. The Examiner further finds Appellants have not set forth any structural differences between the lens of claim 8 and the lens ofHiramoto. Ans. 14--15. In other words, the Examiner finds that the lens of Hiramoto is no different from the headlight lens of claim 8. This is sufficient to meet the Examiner's initial burden of setting forth a case ofunpatentability, which shifts the burden to Appellants. However, Appellants do not meet their burden because 6 Merriam-Webster dictionary, defining "injection molding", http://www.merriam-webster.com/dictionary/injection%20molding (last visited Jan. 29, 2016). 7 Hiramoto discloses the molded glass product is a biconvex lens. Hiramoto 5, 11. 19-22. 6 Appeal2014-004519 Application 12/678, 174 Appellants do not provide any evidence or technical reasoning demonstrating the lens of Hiramoto would not be capable of being used as a headlight lens for a vehicle or the headlight lens of claim 8 structurally differs from the lens of Hiramoto. Appellants additionally assert the Examiner relied upon impermissible hindsight in making the rejection over Hiramoto. Appeal Br. 12. As discussed above, the Examiner has set forth a prima facie case of unpatentability. For the reasons discussed above and those set forth in the Examiner's Answer, we sustain the Examiner's§ 103 rejection of claims 8 and 13-15 over Hiramoto. Claim 11 We now tum to the second issue raised by Appellants' arguments, for which we select claim 11 as representative. Claim 11, which depends from claim 8, recites "wherein the blank is heated on a cooled lance." Appellants contend Hiramoto does not teach or suggest heating a blank on a cooled lance and that if the glass of Hiramoto were heated, the lower mold 6 of Hiramoto would no longer be cooled. Appeal Br. 8 and Reply Br. 7-9. The Examiner finds Hiramoto discloses heating a glass mass, such as by reheating a cooled glass mass. Final Act. 5. The Examiner further finds Hiramoto discloses its drum mold 5 and lower mold 6 "are kept at a temperature at or below the glass transition point to cool the surface portion of the glass mass 4 and increase the viscosity." Final Act. 5. In view of this, the Examiner finds the drum mold 5 and lower mold 6 are cooled structures. 7 Appeal2014-004519 Application 12/678, 174 Ans. 12. The disclosure of Hiramoto supports the Examiner's rejection because Hiramoto' s disclosure of reheating a mass of glass and keeping the drum mold 5 and lower mold 6 at a temperature at or below the glass transition point suggest heating glass on a cooled lance. As an aside, we note claim 11 does not require a particular temperature that the cooled lance or heated glass must achieve. Similarly to claim 11, independent 22 recites "heating a blank of glass on a cooled lance." Claims 24--27 depend from claim 22. The rejection of claims 22 and 24--27 is sustained for the same reasons as the rejection of claim 11. For the reasons discussed above and those set forth in the Examiner's Answer, we sustain the Examiner's§ 103 rejection of claims 11, 22, and 24-- 27 over Hiramoto. Rejection (2) We now address Appellants' arguments for the rejection of claims 9, 10, 16, 17, and 19-21 over Hiramoto in view of Lillie. Appellants do not argue any claim apart from the others. We select claim 9 as representative for resolving the issue on appeal. The Examiner finds Hiramoto does not disclose a viscosity for the heated mass of glass. Final Act. 6. The Examiner finds Lillie discloses viscosities for glass employed for the shaping and/or treatment of glass, with a working range being between 107·6 poise and 104 poise or 103 poise. Final Act. 7. The Examiner concludes it would have been obvious to heat the glass of Hiramoto to within the working range disclosed by Lillie. Id. 8 Appeal2014-004519 Application 12/678, 174 Appellants argue Lillie discloses a range of 103 to 104 poise, not 107·6 poise and one of ordinary skill in the art would not have looked to Lillie because Lillie is an academic discussion not directed to optical glass. Appeal Br. 9-10 and Reply Br. 9-11. Appellants' arguments are unpersuasive. As explained by the Examiner, Lillie discloses the working viscosity range for glass may range from the softening point, which is about log 7 .6 poise (or 107·6 poise), to about 104 poise or 103 poise. Ans. 16-17 and Lillie 149 § I. This range overlaps with the viscosity range claimed by Appellants. This overlap between ranges establishes a prima facie case of obviousness. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). In addition, Lillie provides guidance for parameters useful in the processing of glass, such as in the process of Hiramoto, by disclosing the viscosities and temperatures corresponding to a working range for glass. For the reasons discussed above and those set forth in the Examiner's Answer, we sustain the Examiner's§ 103 rejection of claims 9, 10, 16, 17, and 19-21 over Hiramoto in view of Lillie. Rejections (3) and ( 4) We now address Appellants' arguments for the rejection of claims 10 and 17 over Hiramoto in view of Lillie, and Petticrew and the rejection of claims 11, 22, and 24--27 over Hiramoto in view of Petticrew. The Examiner relies upon Petticrew to show that glass is heated during a glass molding operation. Final Act. 9-11. The disclosure of Petticrew is cumulative to the disclosure of Hiramoto, which discloses the reheating of glass for injection molding, as discussed above. Therefore, 9 Appeal2014-004519 Application 12/678, 174 there is no need for further discussion of the rejections further relying on Petticrew. For the reasons discussed above and those set forth in the Examiner's Answer, we sustain the Examiner's§ 103 rejection of claims 10 and 17 over Hiramoto in view of Lillie, and Petticrew and the Examiner's§ 103 rejection of claims 11, 22, and 24--2 7 over Hiramoto in view of Petticrew DECISION The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). AFFIRMED 10 Copy with citationCopy as parenthetical citation