Ex Parte Nishimoto et al

Board of Patent Appeals and Interferences

May 20, 2011

10825178 (B.P.A.I. May. 20, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/825,178 04/16/2004 Shiro Nishimoto 44085-171 8286
7590 05/20/2011
McDermott, Will & Emery
600 13th Street, N.W.
Washington, DC 20005-3096
EXAMINER
DEHGHAN, QUEENIE S
ART UNIT PAPER NUMBER
1741
MAIL DATE DELIVERY MODE
05/20/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SHIRO NISHIMOTO, MITSUGU TOKUNAGA, HIDEKI
KAWAI, TOSHIHARU MORI, and SHINJI FUKUMOTO
____________________

Appeal 2009-012620
Application 10/825,178
Technology Center 1700
____________________

Before PETER F. KRATZ, CATHERINE Q. TIMM, and
KAREN M. HASTINGS, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 20 and 21 under 35 U.S.C. § 103(a) as being
unpatentable over Philips (Derwent Abstract to NL8600728, pub. Derwent-
Week 198746), Ikenishi (US 2003/0109370 A1, pub. Jun. 12, 2003) and
Suzuki (JP 2000182316, pub. Jun. 30, 2000 (as translated)).
We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2009-012620
Application 10/825,178

2
We REVERSE.
Appellants’ invention relates to a method of manufacturing a glass
substrate having a center hole at the center of gravity of the substrate. Claim
20 is illustrative:
20. A manufacturing method for a glass substrate,
comprising the steps of:
melting a glass material;
flowing the melted glass into a lower mold;
press molding the glass between an upper mold and the
lower mold into a glass substrate;
detecting the center of gravity of the glass substrate; and
creating a center hole so that the center of gravity
becomes the center of the center hole.
II. DISCUSSION
As a first matter, the Examiner and Appellants disagree over whether
claim 20 requires the step of detecting be performed before the step of
creating (Br. 4; Ans. 5).
Claim 20 requires melting, flowing, and press molding a glass
material into a glass substrate. It is the center of gravity of this glass
substrate that is detected. The step of creating a hole, e.g., cutting an
opening, must occur “so that the center of gravity [of the glass substrate]
becomes the center of the center hole.” (Claim 20, emphasis added.) This
language implies an order of steps in which the hole is created after the press
molding and detecting steps.
Philips describes a process of injection molding substrates and
welding two such substrates together to form an optical recording disc. The
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Application 10/825,178

3
central hole is formed during the injection molding process. There is no
dispute that Philips does not teach a step of “detecting the center of gravity
of the glass substrate” as required by claim 21 (Ans. 3-4). The Examiner
finds that “[i]t would have been obvious to one of ordinary skill in the art at
the time of the invention to expect that the center of gravity is detected in the
process of Philips in order to access that the center of gravity is in the center
of the center hole”, (Ans. 3-4) and that “the detecting step would have
naturally been performed, since it is necessary for determining that the
center of gravity is in the center of the hole” (Ans. 5).
We, however, agree with Appellants that the evidence does not
support the Examiner’s findings (Br. 5-6). Rather than detecting the center
of gravity of the substrate, Philips makes sure that the mass of the disc is
evenly distributed around the already formed hole. The center of the hole is
preordained by the design of the injection mold. Therefore, Philips selects a
different method, other than detecting the center of gravity of the substrate,
i.e., equalizing mass distribution, to insure that the center of gravity and the
center of the hole are aligned.
The Examiner relies upon Suzuki for its teaching of measuring the
center of gravity on a glass substrate using image processing (Ans. 4-5).
However, as pointed out by Appellants, Suzuki creates the center hole before
the imaging process and corrects any deviation by attaching a sticker to the
optical disc to balance the mass. Suzuki does not create a center hole “so
that the center of gravity becomes the center of the center hole” as claimed
(Br. 6-7; Suzuki, ¶ [0007]). The “creating” step requires aligning the center
hole and center of gravity at the time the hole is created. Correcting the
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Application 10/825,178

4
alignment after creating the hole by the mass distribution systems of Philips
and Suzuki does not meet the requirements of the claim.
The Examiner relies upon Ikenishi for its teaching of press molding
and cutting a center hole. This reference, as relied upon by the Examiner,
does not correct the deficiency in the rejection discussed above.
The Examiner has not provided convincing evidence supporting a
finding of a suggestion in the prior art for conducting steps of detecting and
creating as required by the claims.
III. CONCLUSION
On the record before us, we do not sustain the rejection maintained by
the Examiner.
IV. DECISION
The decision of the Examiner is reversed.

REVERSED

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