Ex Parte Mazumder

Board of Patent Appeals and Interferences

Sep 29, 2004

09526631 (B.P.A.I. Sep. 29, 2004)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JYOTI MAZUMDER
____________
Appeal No. 2004-1495
Application No. 09/526,631
____________
ON BRIEF
____________
Before FRANKFORT, BAHR and SAADAT, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-14,
which are all of the claims pending in this application.
We AFFIRM-IN-PART and REMAND.
BACKGROUND
The appellant’s invention relates to smart dies and molds having integrated
sensors for controlling temperature, distortion and/or stress and the process of making
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1 As explained by the examiner on pages 2-3 of the answer, the inclusion of claims 7-9 in this
rejection in the final rejection (Paper No. 9) was in error.
such smart dies and molds by a direct-metal deposition process (specification, page 1).
A copy of the claims under appeal is set forth in the appendix to the appellant’s brief.
The examiner relied upon the following prior art references in rejecting the
appealed claims:
Moore et al. (Moore) 4,493,362 Jan. 15, 1985
Arai 5,062,786 Nov. 5, 1991
Prinz et al. (Prinz) 5,278,442 Jan. 11, 1994
Spillman Jr. (Spillman) 5,440,300 Aug. 8, 1995
Amaya et al. (Amaya) 5,976,457 Nov. 2, 1999
The following rejections are before us for review.
(1) Claims 1-3, 5 and 61 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Arai in view of Prinz.
(2) Claims 4 and 10 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Arai in view of Prinz and Moore.
(3) Claims 7-9 stand rejected under 35 U.S.C. § 103 as being unpatentable over Arai
in view of Prinz and Spillman.
(4) Claim 11 stands rejected under 35 U.S.C. § 103 as being unpatentable over Arai
in view of Prinz, Moore and Spillman.
(5) Claims 12 and 13 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Moore in view of Amaya.
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(6) Claim 14 stands rejected under 35 U.S.C. § 103 as being unpatentable over
Moore in view of Amaya and Spillman.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the answer
(Paper No. 12) for the examiner's complete reasoning in support of the rejections and to
the brief (Paper No. 11) for the appellant’s arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
Rejection (1)
Arai discloses a molding device for molding optical elements, in particular Fresnel
lenses, comprising a molding machine including a high frequency induction heating
means 18 and a moving side mold 2B and a fixed side mold 2A, each having a
temperature sensor 20A, 20B embedded therein and cooling channels connected by
pipe 14A to a temperature controller 14. The signals from the temperature sensors are
transmitted to a temperature controller 22 which compares the detected temperatures to
a predetermined peak temperature to see if the predetermined peak temperature has
been reached or exceeded. Upon mold initiation, the moving side mold 2B is moved
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toward the fixed side mold 2A and the temperature controller 14 is actuated to heat the
cooling medium in a reservoir and actuate a pump to circulate cooling medium through
the cooling channels within the molds. The temperature controller 14 maintains the
cooling medium in the reservoir at a predetermined constant temperature (column 7,
lines 67-68). When the fixed side mold stops moving, high frequency oscillations are
transmitted to the heating coil 18B to heat the molds 2A, 2B. When the temperatures
detected by the temperature sensors reach or exceed the peak temperature, the
oscillation to the heating coil 18B is stopped, the heating means 18 is retracted, the
mold is closed, the molding operation is completed and the molded article is removed.
As disclosed in column 9, lines 3-30, the mold components 2A, 2B are fabricated
by laminating an electroformed copper layer, and thereafter
laminating a chromium plating layer or a titanium compound
layer on the worked face.
More specifically, by use of an iron type metal
material as the substrate for mold, heating can be done
efficiently by high frequency heating, and the copper layer
which is formed by electroforming is substantially free from
effect such as pinhold, etc. and excellent in cutting
workability, whereby high degree of mirror finishing is
rendered possible. Further, by providing a nickel layer
between the substrate of an iron type metal material and the
copper layer according to the electroforming method,
adhesive force between the iron type metal an [sic: and] the
copper layer is enhanced to completely prevent peeling, etc.
during mechanical working, hot impact.
Also, since the copper layer is susceptible to flaws
caused by deforming on account of low surface hardness
and elasticity, by lamination of a chromium plating layer or a
titanium compound layer such as of titanium nitride, etc., it
becomes possible to obtain a mold surface strongly resistant
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2 We, on the contrary, consider the material of Arai’s moving side mold 2B surrounding the cavity
thereof to be a surrounding portion as called for in claim 1.
to flaw or deformation, while maintaining fine uneven portion
or mirror surface characteristic.
The examiner determined that Arai lacked a body constructed using a direct
metal deposition process and a surrounding portion2 as called for in claim 1. The
examiner’s position appears to be that it would have been obvious to fabricate the mold
components 2A, 2B of Arai using the thermal spray deposition method of Prinz to
facilitate production of articles having undercuts and irregular shapes.
To the extent that the lamination using electroforming process of Arai may not be
considered to be “a direct metal deposition process” as used in claim 1, we agree with
the examiner that Prinz provides ample motivation to form the nickel, copper and
chromium or titanium layers of Arai’s mold using a thermal deposition spray process
wherein material is incrementally built up in thin layers to overcome the disadvantages
of known lamination techniques cited by Prinz in column 2, lines 17-23.
Appellant’s argument on page 5 of the brief that Arai is not directed to articles
having undercuts and irregular shapes is not well taken. As illustrated in Figure 6, the
molds 2A, 2B are shaped so as to mold a Fresnel lens having an irregular shape.
We are also unpersuaded by appellant’s argument on page 5 of the brief to the
effect that Prinz lacks any teaching that the thermal spray deposition process is used for
anything more than a few layers. We find no requirement in claim 1 that the entirety of
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the body be constructed using direct metal deposition. In other words, the claim
language is sufficiently broad to encompass the modified Arai mold with the nickel,
copper and chromium or titanium layers being added by a thermal deposition spray
process to an iron substrate in view of Prinz as discussed above.
For the reasons discussed above, we do not find appellant’s arguments
persuasive as to the patentability of claim 1 over Arai in view of Prinz and thus shall
sustain the rejection of claim 1, as well as claims 2, 3, 5 and 6 which appellant has
grouped therewith (brief, page 4).
Rejection (2)
Claim 4 depends from claim 1 and further recites that the product shaping or
forming portion is a die. As eventually recognized by the examiner on page 16 of the
answer, Arai discloses either a mold or a die in column 5, line 31. Thus, we regard the
reliance on the additional teachings of Moore as mere surplusage. For the reasons
discussed above with regard to claim 1, it follows that we shall also sustain the rejection
of claim 4 as being unpatentable over Arai in view of Prinz and Moore.
We shall not, however, sustain the rejection of claim 10 as being unpatentable
over Arai in view of Prinz and Moore. We appreciate that Moore discloses a die-casting
machine in which temperature feedback is used to control the flow of coolant through
servo-controlled coolant valves. Arai’s molding device, on the other hand, uses
temperature feedback to control the induction heating and not the coolant flow. As
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explained above, Arai’s temperature controller 14 maintains the cooling medium in the
reservoir at a predetermined constant temperature (column 7, lines 67-68) and simply
actuates a pump to circulate the cooling medium through the cooling passages in the
mold. While Arai’s molding device could be modified to provide an electronic flow meter
which adjusts inlet coolant flow based on signals from a feedback controller, the
controller operating to adjust the temperature of the coolant by sending signal input to
the flow meter, we find no suggestion in either Arai or Moore to do so. The mere fact
that the prior art could be so modified would not have made the modification obvious
unless the prior art suggested the desirability of the modification. See In re Fritch, 972
F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992); In re Mills, 916 F.2d 680,
682, 16 USPQ2d 1430, 1432 (Fed. Cir. 1990); In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984).
Rejection (3)
Claims 7-9 depend from claim 1 and further require a plurality of integrated
sensors, each outputting an electrical signal which is a function of strain. Arai does not
disclose strain sensors in the molding device. In fact, one of ordinary skill in the art
would have inferred from the disclosure in the second full paragraph of column 2 that
the use of strain sensors was not necessary, inasmuch as the use of high frequency
induction heating in combination with mold temperature control is expected to prevent
sinking or strain on the optical part.
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Spillman evidences that it was known in the art at the time of appellant’s
invention to embed strain sensors in smart structures. As pointed out by appellant
(brief, page 6), however, Spillman’s teachings are directed to wireless systems with
capability to sense, process and receive data from embedded structures without direct
physical connection between the structures and a data collection and powering interface
and are not specifically directed to tools, molds or dies.
For the above reasons, we conclude that the teachings of Arai, Prinz and
Spillman are insufficient to have suggested the inclusion of strain sensors in Arai’s
molding device. It follows that we shall not sustain the rejection of claims 7-9 as being
unpatentable over Arai in view of Prinz and Spillman.
Rejection (4)
Claim 11, like claims 7-9, requires a plurality of integrated sensors each
outputting an electrical signal which is a function of strain. For the reasons discussed
above with regard to claims 7-9, we find no suggestion in the applied references to
include strain sensors in Arai’s molding device. We thus shall not sustain the rejection
of claim 11 as being unpatentable over Arai in view of Prinz, Moore and Spillman.
Rejection (5)
Moore discloses a method of fabricating a product using a die casting machine
comprising thermocouples 112, 114 outputting an electrical signal indicative of
temperature. Moore does not disclose providing a computer database describing the
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mold and fabricating the mold using a laser-aided, computer-controlled direct metal
deposition process in accordance with the computer database description.
Amaya discloses a method of fabricating molds using a CAD type computer
database describing the mold in conjunction with existing technologies, such as
stereolithography (SLA), to form the core and cavity patterns of the mold. In the SLA
process, a fully-automated machine uses the CAD data to guide an ultraviolet laser over
a vat of photosensitive polymer to cure or solidify portions struck by the laser so as to
incrementally build up a solid object to achieve the dimensions specified in the CAD
files. The core and cavity patterns so formed are then fitted into die pockets to powder
injection mold the actual mold parts. Amaya does not appear to disclose a laser-aided
computer-controlled direct metal deposition process as asserted by the examiner on
page 13 of the answer. We thus find ourselves in agreement with appellant that the
combined teachings of Moore and Amaya fail to suggest fabricating a product including
one or more integrated sensors using a laser-aided computer-controlled direct metal
deposition process. We thus shall not sustain the rejection of claims 12 and 13.
Rejection (6)
Claim 14, which depends from claim 12 and further recites one or more sensors
for monitoring temperature, stress and strain, is rejected as being unpatentable over
Moore in view of Amaya and Spillman. We have reviewed the teachings of Spillman
and find nothing therein to overcome the above-noted deficiencies of the combination of
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Moore and Amaya. Moreover, we find no suggestion, in Spillman’s broad disclosure of
the use of embedded strain sensors in smart structures, to provide strain sensors in the
mold of Moore. Accordingly, we shall not sustain the rejection of claim 14.
REMAND TO THE EXAMINER
Pursuant to our authority under 37 CFR § 41.50(a)(1), we remand this application
to the examiner to review the scope of claim 12 and consider conducting an additional
search in view of such scope. It is not apparent from the record and from the
references cited and applied by the examiner that the examiner has appreciated that
claim 12 is directed to a method of fabricating a product broadly and is not limited to
fabrication of a mold or die. Claim 12 would be met by a method of using a CAD
database and laser-aided computer-controlled direct metal deposition process to
fabricate any product including an integrated sensor. We also note that claim 12 does
not expressly recite that the sensor is fabricated using the direct metal deposition
process.
CONCLUSION
To summarize, the rejections of claims 1-6 are sustained and the rejections of
claims 7-14 are reversed. The application is remanded to the examiner for the reasons
discussed above.
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In addition to affirming the examiner's rejection of one or more claims, this
decision contains a remand. 37 CFR § 41.50(e) (effective September 13, 2004, 69 Fed.
Reg. 49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004))
provides that
[w]henever a decision of the Board includes a
remand, that decision shall not be considered final for
judicial review. When appropriate, upon conclusion of
proceedings on remand before the examiner, the Board may
enter an order otherwise making its decision final for judicial
review.
Regarding any affirmed rejection, 37 CFR § 41.52(a)(1) provides "[a]ppellant may
file a single request for rehearing within two months from the date of the original
decision of the Board."
The effective date of the affirmance is deferred until conclusion of the
proceedings before the examiner unless, as a mere incident to the limited proceedings,
the affirmed rejection is overcome. If the proceedings before the examiner do not result
in allowance of the application, abandonment or a second appeal, this case should be
returned to the Board of Patent Appeals and Interferences for final action on the
affirmed rejections, including any timely request for rehearing thereof.
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No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART and REMANDED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JENNIFER D. BAHR ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
JDB/ki
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John G. Posa
Gifford Krass Groh Sprinkle Patmore
Anderson & Citkowski PC
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Birmingham, MI 48009