Ex Parte Klotz

Board of Patent Appeals and Interferences

Jun 9, 2010

10403545 (B.P.A.I. Jun. 9, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte BERND KLOTZ
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Appeal 2009-012151
Application 10/403,545
Technology Center 1700
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Decided: June 9, 2010
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Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE CASE
Claim 1 is representative of the subject matter on appeal and is set
forth below:
Appeal 2009-012151
Application 10/403,545

1. A method of making thick-walled optical lens, through provision of a
die with variable cavity defined between opposite walls of two die
components, said method comprising the steps of:
a) closing the die and adjusting the cavity to a first size which
corresponds to the dimension of a thin-walled optical lens;
b) injecting plastic material laterally into the cavity in substantial
parallel relationship to the opposite walls of the die
components, while keeping the die under pressure to maintain
the first size of the cavity so as to allow internal pressure
buildup:
c) continuing to inject plastic material into the cavity, causing the
cavity to expand to a second size which is greater than the first
size and corresponds to the dimension of a desired thick-walled
optical lens,
d) forming a thick-walled optical lens; and
e) opening the die and removing the thick-walled optical lens.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Grendol US 4,540,534 Sep. 10, 1985
Hidding US 4,363,772 Dec. 14, 1982
Nomura US 6,010,656 Jan. 4, 2000

THE REJECTION(S)
1. Claims 1, 3-8, and 10-12 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Grendol in view of Hidding.
2. Claims 2 and 9 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Grendol in view of Hidding, and further in view of
Nomura.

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ISSUE
Does the evidence support Appellants’ view that incorporation of the
teaching of Hidden of applying pressure to the die during injection of the
plastic contradicts the teachings of Grendol such that the combination is
improper?
We answer this question in the negative.

FINDINGS OF FACT, PRINCIPLES OF LAW, and ANALYSIS
1. The Rejection of Claims 1, 3-8, and 10-12 stand rejected under 35
U.S.C. §103(a) as being unpatentable over Grendol in view of
Hidding.
We refer to the Examiner’s statement of the rejection made on pages
3-5 of the Answer.
“Many of appellant’s arguments fail from the outset because . . .
they are not based on limitations appearing in the claims. . . .” In re Self,
671 F.2d 1344, 1348 (CCPA 1982). For example, Appellants emphasize a
two-phase injection molding process (see comparison table on page 5 of the
Brief and Appellants discussion found on pages 4-6 of the Brief, and see
also Appellant’s arguments under the heading “Issue 1” on pages 2-3 of the
Reply Brief, and under the heading “Issue 4” on page 4 of the Reply Br.).1

1 As another example, Appellant also argues that the Examiner submits that
Grendol’s method teaches the presence of a cavity of “a first size which
corresponds to a dimension of a thin-walled optical lens” as claimed.
Appellant argues that Grendol pursues a track of first oversizing the cavity
and then reducing the cavity to the size of the lens to be produced, while
claims 1 and 8 set forth the presence of an initially undersized cavity which
is then expanded to the size of the lens to be produced. Reply Br. 4-5. We
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However, such arguments are not commensurate in scope with Appellant’s
claims. That is, we agree with the Examiner’s interpretation of the claims as
discussed by the Examiner on pages 6-7 of the Answer. Therein, the
Examiner explains that the instant claims require injecting plastic material
into a first size cavity; maintaining the cavity at the first size to allow
pressure buildup, and continuing to inject plastic material to expand the
cavity to a second size that is greater than the first size. The Examiner
explains that the injection is continuing during the pressure buildup, so there
is only one continued injection of plastic material throughout the process
(contrary to Appellant’s alleged two phase injection process molding
process). It is the Examiner’s position that Grendol suggests this subject
matter with the exception that Grendol teaches to minimize the pressure
buildup due to the "little or no force" being applied to the die during the
initial filling. The Examiner states that Grendol’s disclosed language of
"little or no force" would suggest that some pressure occurs to the dies to
keep them in place during the initial injection. The Examiner then states that
the teaching of some amount of force applied to the dies, as taught by
accept the Examiner’s findings in the paragraph bridging pages 3-4 of the
Answer. Therein, the Examiner points out that Grendol teaches a variable
die cavity wherein the die is closed and the cavity is adjusted to a first size,
followed by expansion of the cavity. Hence, Grendol begins with a cavity
(unexpanded) that expands to a second sized cavity (expanded cavity).
Appellant does not adequately explain how the claim language of a cavity of
“a first size which corresponds to the dimension of a thin-walled optical
lens” differs from the first size of the cavity in Grendol. As such, we are not
persuaded by Appellant’s argument. Also, the concept of “an initially
undersized cavity” is not recited in the claims.

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Hidden and “perhaps even suggested in Grendol”, then the applied art
suggests Appellant’s claimed subject matter. Ans. 7.
Appellant argues that one would have to ignore the teachings of
Grendol in order to incorporate the teachings of Hidden as proposed by the
Examiner. Br. 7. Appellant argues that Grendol relates to an injection of
plastic into a cavity, whereby the molten plastic flows from the outer
perimeter of the cavity inwards. Appellant states that to prevent knit lines in
the finished product, Grendol applies a compression step to affect a
backflow of plastic. Appellant states that in contrast, Hidding relates to an
injection of plastic material into a cavity, whereby the plastic is injected
centrally into the cavity to bounce off an opposite rigid wall for dispersing
the plastic stream to eliminate "jetting" in the final product. No compression
step is applied in Hidding. Br. 8.
Appellant then argues that the Grendol and Hidding processes are
different enough so that an artisan having common sense at the time of the
invention would not have reasonably considered modifying the process of
Grendol, as suggested by the Examiner. Appellant submits that the artisan
reading Grendol would have no motivation to look to Hidding because
Grendol and Hidding teach completely different approaches to address the
problem of flaws in the finished product. Appellant argues that to address
the problem of "knit lines", the Grendol process proposes to exert little or no
force on the die through the piston (49) during injection of plastic into the
cavity (col. 5, lines 29-34). In other words, the die and the piston are allowed
to move backwards. Appellant states that, conversely, to address the problem
of "jetting", the Hidding process requires the cylinder (54) to maintain its
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forwardmost position during injection of plastic into the cavity in order to
allow the bounce-off effect. Br. 8. See also Reply Br. 3.
As made evident above, on the one hand, Appellant argues that
Grendol eliminates formation of knit lines by application of a compression
step to affect backflow of plastic. On the other hand, Appellant argues that
Grendol eliminates knit lines by exerting “little or no force” on the die
through piston (49) during the injection of the plastic. Hence, Appellant
gives two different interpretations of Grendol in this regard. Meanwhile, it
is the Examiner’s position that it is the expansion of the cavity to a second
size during the injection that eliminates the knit lines, and not the fact that
little or no force is applied to the die. Ans. 9.
Even more important, Appellant has not made it clear whether or not
there would be elimination of knit lines if force is applied to the die of
Grendol as taught by Hidden during the injection of plastic as proposed by
the Examiner. Hidden applies some pressure and Grendol allows for “little
or no force”. As stated by the Examiner on page 9 of the Answer, it is
within the ordinary skill of one in the art to advantageously employ an
amount of pressure in the process of Grendol. See KSR Int’l. Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007) (In making an obviousness determination one
“can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ”). In this context, Appellant’s
argument that Grendol and Hidding address different objectives (elimination
of knit lines versus jetting) is not convincing.
In view of the above, we are unpersuaded by Appellant’s arguments
that one would have to ignore the teachings of Grendol in order to
incorporate the teachings of Hidden as proposed by the Examiner, and that
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the Grendol and Hidding processes are different enough so that an artisan
would not have reasonably considered modifying the process of Grendol, as
suggested by the Examiner. Br. 7-8. Reply Br. 3.
We therefore affirm the Examiner’s rejection.
2. The Rejection of Claims 2 and 9 under 35 U.S.C. §103(a) as being
unpatentable over Grendol in view of Hidding, and further in view of
Nomura
On page 9 of the Brief, Appellant argue that claims 2 and 9 are
allowable by virtue of their dependency on claims 1 and 8.
Hence, for the reasons that we affirmed the previous rejection, we
affirm this rejection.
CONCLUSIONS OF LAW and ORDER
Each rejection is affirmed.
The Examiner’s decision 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)(v).

AFFIRMED

tc

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