Ex Parte Klotz

Board of Patent Appeals and Interferences

Mar 17, 2010

10789412 (B.P.A.I. Mar. 17, 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 2009-013486
Application 10/789,412
Technology Center 1700
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Decided: March 17, 2010
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Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of pending claims 1-6, 12, and 13. (Appeal Brief filed March 19,
2007, (hereinafter “App. Br.”) 2.) We have jurisdiction pursuant to 35
U.S.C. § 6(b).1
We REVERSE.

1 Oral arguments were heard in this appeal on March 10, 2010.
Appeal 2009-013486
Application 10/789,412

2
Appellant describes a method for making a molded plastic article. (Spec.
[0011].) Claim 1, the only independent claim on appeal, is illustrative and
recites:
1. A method of making a molded plastic article, comprising the
steps of:
closing a cavity of a positive mold by applying a
clamping force;
fully filling the cavity with plastic material, while
maintaining a size of the cavity constant;
adding plastic material so as to distend the positive mold
in opposition to the clamping force until the cavity of the
positive mold expands to reach a defined size for producing a
defined article thickness;
closing the positive mold until reaching a residual
distending opening and molding the plastic material into a
plastic article while applying the clamping force to thereby
maintain the plastic material compressed; and
removing the plastic article.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Machida US 5,340,528 Aug. 23, 1994
Takeda US 5,776,407 Jul. 7, 1998
Uchiyama US 6,328,920 B1 Dec. 11, 2001

The Examiner rejected claims 1, 2, and 4-6 under 35 U.S.C. § 102(b)
as being anticipated by Takeda.
The Examiner rejected claim 3 under 35 U.S.C. § 103(a) as being
unpatentable over Takeda in view of Uchiyama.
The Examiner rejected claims 12 and 13 under 35 U.S.C. § 103(a) as
being unpatentable over Takeda in view of Machida.
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Application 10/789,412

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In rejecting the claims on appeal, the Examiner found that Takeda
discloses closing the mold until reaching a residual distending opening and
molding the plastic material into a plastic article while applying a clamping
force to compress the plastic material. (Examiner’s Answer entered August
21, 2007, (hereinafter “Ans.”) 3.)
Appellant contends, inter alia, that the Examiner erred in finding that
Takeda discloses the compression phase as recited in the appealed claims.
Specifically, Appellant argues that the appealed claims require that
compression is performed in the presence of a residual distending opening
whereas in Takeda, the opening (A3), which the Examiner equated to the
residual distending opening, is not present during the compression phase.
(App. Br. 6-7.)

ISSUE
Did the Examiner err in finding that Takeda discloses the compression
phase as recited in the claims?

FINDINGS OF FACT
The record supports the following Findings of Fact (FF) by a
preponderance of the evidence.

1. Takeda discloses a molding process including a filling step (Fig.
1), a pressure adjusting step (Fig. 2), a measuring step (Fig. 3), and
a compression step (Fig. 4). (Col. 3, ll. 1-25; col. 4, ll. 48-60.)
2. Takeda discloses that in the filling step, an initial opening A1
exists between a base member 38 and a movable plate 46. (Col. 8,
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Application 10/789,412

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ll. 4-11; Fig. 1.) Takeda discloses that during the pressure
adjusting step the opening is widened to opening A2. (Col. 8, ll.
21-37; Fig. 2.)
3. Takeda discloses that in the measuring step, the opening is reduced
to opening A3. (Col. 9, ll. 18-33; compare Figs. 2 and 3.)
4. Takeda discloses that during the compression step, the movable
plate 46 and base member 38 are closed until they abut together,
where the “amount B of compression is equal to the opening A3
between the base member 38 and the movable plate 46 . . . .” (Col.
9, ll. 34-41; Fig. 4.)

PRINCIPLES OF LAW
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).

ANALYSIS
The Examiner stated that “Takeda shows closing the mold until
reaching a residual distending opening, therefore meeting the claim, and
then continues to close the mold. Appellant[’]s claim does not exclude
further closing after the residual distending opening is achieved, as Takeda
teaches.” (Ans. 5.) The Examiner also stated that “[a]lthough appellant
contends that the claim requires molding the article in the presence of the
residual distending opening, the examiner cannot find this requirement in the
present claims.” (Ans. 5.) However, we agree with Appellant that the
Examiner did not fully appreciate that the compression phase in the claim
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requires that the residual distending opening remains present. (App. Br. 6.)
Specifically, claim 1 recites “closing the positive mold until reaching a
residual distending opening and molding the plastic material into a plastic
article while applying the clamping force to thereby maintain the plastic
material compressed.” (Claim 1, supra.) Thus, the claim requires that the
residual distending opening is present during the compression phase.
In contrast, Takeda discloses that in the compression step, the opening
A3 is closed such that the movable plate 46 and base member 38 abut
together. (FF 3 and 4.) Therefore, Takeda fails to disclose the presence of a
residual distending opening during the compression step as recited in claim
1. Accordingly, Appellant has identified reversible error in the Examiner’s
rejection of claims 1, 2, and 4-6 as being anticipated by Takeda.
Regarding the Examiner’s rejections under 35 U.S.C. § 103(a),
Uchiyama and Machida fail to remedy the deficiency in Takeda as discussed
above. Therefore, we reverse the Examiner’s rejections of claims 3, 12, and
13 for the same reasons.
ORDER
We reverse the Examiner’s decision rejecting claims 1-6, 12, and 13.

REVERSED

rvb

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