Ex Parte Stillwell et alDownload PDFPatent Trial and Appeal BoardAug 28, 201813634345 (P.T.A.B. Aug. 28, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/634,345 09/12/2012 408 7590 08/30/2018 LUEDEKA NEELY GROUP, P.C. PO BOX 1871 KNOXVILLE, TN 37901 FIRST NAMED INVENTOR Nicholas Stillwell 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. 68033.US 8129 EXAMINER TRAVERS, MATTHEW P ART UNIT PAPER NUMBER 3726 NOTIFICATION DATE DELIVERY MODE 08/30/2018 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): docketing@luedeka.com LNG.PA TENT@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NICHOLAS STILLWELL and ALFRED RODLSBERGER Appeal2017-005164 Application 13/634,345 1 Technology Center 3700 Before JOHN C. KERINS, BRANDON J. WARNER, and FREDERICK C. LANEY, Administrative Patent Judges. LANEY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Nicholas Stillwell and Alfred Rodlsberger (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner's decision (dated Mar. 10, 2016, hereinafter "Final Act.") rejecting claims 1, 3, 5-14, 17, and 18. 2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b ). We AFFIRM-IN-PART. 1 According to Appellants, the real party in interest is Upcycle Holdings Limited. Appeal Br. 2 (filed August 18, 2016). 2 Claims 2, 4, and 15-16 have been cancelled. Appeal Br. 4. In addition, Appellants ask us to cancel claim 14. Reply Br. 1. We do not have the authority to cancel claim 14, however. Therefore, it remains a subject of this appeal. Appeal2017-005164 Application 13/634,345 INVENTION Appellants' invention relates to "a moulding machine and a process for forming a mould for use in making moulded plastic articles" that "can be heated and cooled by conduction." Spec. 1. Claims 1, 8, 1 7, and 18 are independent. Claim 8 is illustrative of the claimed subject matter and reads as follows: 8. A process for creating a mould, comprising providing a solid body having at least one surface which defines a moulding surface against which an item is to be moulded in use, and forming at least two bores through the body configured for receiving flow of a mould cooling or heating fluid, the bores each having an opening at each end and which does not intersect the moulding surface, connecting two or more bores together by placing a connecting element between the opening at one end of one bore and an opening at one end of another bore, wherein the connecting element comprises a grooved block, the groove defining a channel between the two bores, wherein the or each groove is formed on a mould facing exterior surface of the block with a first end, a second end, and a constriction therebetween, the constriction being configured to provide a venturi effect so that when the fluid passes through the constriction its velocity increases. Appeal Br. 18 (Claims App.). REJECTIONS 3 The following rejections are before us for review: I. The Examiner rejected claims 8-14 under 35 U.S.C. § 103(a) as unpatentable over a translated version of Mitsuhiro (JP59- 3 Rejections VIII and IX are New Grounds of Rejection for claim 14 that were entered by the Examiner in the Answer, at pages 8-10. 2 Appeal2017-005164 Application 13/634,345 182706, pub. Oct. 17, 1984)4 and Brunner (US 4,245,811, iss. Jan. 20, 1981). II. The Examiner rejected claims 1, 5, and 14 under 35 U.S.C. § I03(a) as unpatentable over Stillwell (GB 2460838 A, pub. Dec. 16, 2009), Mitsuhiro, and Brunner. III. The Examiner rejected claim 3 under 35 U.S.C. § I03(a) as unpatentable over Stillwell, Mitsuhiro, Brunner, and Ouellette (US 6,852,264 B2, iss. Feb. 8, 2005). IV. The Examiner rejected claim 6 under 35 U.S.C. § I03(a) as unpatentable over Stillwell, Mitsuhiro, Brunner, and Sjoberg (US 5,662,948, iss. Sep. 2, 1997). V. The Examiner rejected claim 7 under 35 U.S.C. § I03(a) as unpatentable over Stillwell, Mitsuhiro, Brunner, Sjoberg, and Pearson (US 3,632,249, iss. Jan. 4, 1972). VI. The Examiner rejected claim 17 under 35 U.S.C. § I03(a) as unpatentable over Stillwell, Mitsuhiro, and Farrell (US 3,876,358, iss. Apr. 8, 1975) or alternatively Scolamiero (US 2005/0069600 Al, pub. Mar. 31, 2005). VII. The Examiner rejected claim 18 under 35 U.S.C. § I03(a) as unpatentable over Mitsuhiro and Farrell or alternatively Scolamiero. VIII. The Examiner rejected claim 14 under 35 U.S.C. § 112, fourth paragraph, as being of improper dependent form for failing to 4 Appellants do not contest the Examiner's reliance on the translation of Mitsuhiro. 3 Appeal2017-005164 Application 13/634,345 further limit the subject matter of the claim upon which it depends. IX. The Examiner rejected claim 14 under 35 U.S.C. § 102(b) as anticipated by Stillwell. ANALYSIS Rejection I The Examiner relies on Mitsuhiro to disclose each element of claim 8, except for the limitation reciting the groove, which defines a channel within the connecting element between the two bore ends, and has "a constriction between the two ends, the constriction being configured to provide a venturi effect so that when the fluid passes through the constriction its velocity increases." Final Act. 2. Nevertheless, the Examiner finds "Brunner teaches that it is beneficial to provide coolant channels of a mold with a constriction ( 11) in order to regulate the flow of coolant" and that "[ t ]he constriction [ 11] is present between two ends (from tube 8, only to widen again at the outer ring tube 7)." Id. at 3. The Examiner asserts a skilled artisan would have been led to modify Mitsuhiro' s connecting element to include the constriction Brunner discloses, "in order to have allowed rapid and uniform cooling of the mold." Id. (citing Brunner col. 1, 11. 37--46, col. 2, 11. 55---68). This combination, according to the Examiner, would necessarily result in a venturi effect at the constriction. Id. Appellants argue that the Examiner misapprehended the teachings of Brunner and failed to consider its teachings as a whole. Appeal Br. 11-12. In particular, Appellants contend the Examiner's obviousness determination is flawed because the constriction in Brunner is not between flow tubes, "but 4 Appeal2017-005164 Application 13/634,345 at the outlet of the flow tube into the outflow chamber 7." Id. at 11. According to Appellants, the placement of constrictions at the location recited would not have been obvious in view of Brunner. Id. at 12. In response, the Examiner "reiterates" that "the 'outflow chamber 7' [ in Brunner] still constitutes part of the overall flow channel, especially given its narrow annular structure, such that the constriction may be said to be formed between two ends of a portion of the flow channel of the mold." Ans. 10. The Examiner, moreover, reaffirms that "Brunner generally teaches that it is beneficial to provide coolant channels of a mold with a constriction (11) in order to regulate the flow of coolant" and that a skilled artisan would have been led to modify Mitsuhiro with a constriction "in order to have allowed rapid and uniform cooling of the mold." Id. at 5, 10. For the first time, in the Answer, the Examiner further asserts that a skilled artisan "would have recognized that the exposed channels of the connecting element of Mitsuhiro would have been easier to modify than the bores within the block 7." Id. at 5. Finally, the Examiner notes, while Applicant discloses the advantage of the constriction as maintaining the overall flow rate of fluid ([Specification] at page 9, lines 4--14 ), Applicant does not appear to disclose any specific advantage of locating of the constriction within the connecting block itself, and while one of ordinary skill may conceive of certain advantages ( e.g. as noted in the rejection above), one would not necessarily have expected the location in the connecting block to have presented any particular benefit over another location in the coolant path as far as it relates to the constriction regulating fluid flow. Ans. 10-11. Mitsuhiro "relates to a device for connecting a mold having a temperature regulation circuit inside a resin mold." Mitsuhiro p. 3. The 5 Appeal2017-005164 Application 13/634,345 temperature regulation circuit of Mitsuhiro includes multiple flow channels that pass through a mold. Id. A hose connects the flow channels to each other. Id. One of the problems with this configuration, however, was that the hose was easily damaged. Id. To solve this problem, Mitsuhiro teaches replacing the hose with a connection block attached to the end face of a mold. Id. at 4, Fig. 8. The connection block allows fluid to travel between the flow channels that pass through the mold. Id. Brunner relates to a press mould half, more especially for producing records, having a channel system, for heating and/or cooling media, which is formed underneath the pressing surface of the press mould half and which is arranged in uniformly-distributed manner over the pressing surface and which is provided with an inflow collecting chamber and an outflow collecting chamber. Brunner col. 1, 11. 5-12. According to Brunner, previous problems with producing flat records are solved by creating a channel system that extends from the inflow collecting chamber towards the outflow collecting chamber, "the overall cross-section of which is reduced directly prior to [the channel system's] opening out into the outflow collecting chamber .... " Id. col. 1, 11. 13-21, 29-32. An example of this channel system is illustrated in Figure 2 of Brunner, reproduced below. 6 Appeal2017-005164 Application 13/634,345 Fig. 2 lJ /\ 2 Figure 2 of Brunner, reproduced above, "shows a top plan view of the base plate ... into which a system of spirally-extending channels is worked." Brunner col. 2, 11. 12-14. "The spirally-designed channels 8 have, at their rear end in the direction of flow of the heating and/ or cooling media, respectively, a constriction 11, before they open out into the outflow collecting chamber 7." Id. col. 2, 11. 55-58 ( emphasis added). Brunner states, "[ w ]hat is intended to be achieved by this measure is that the heating and/or cooling media or fluids which flow into the press mould are dammed up at the end of the channels, that is to say shortly prior to the opening of the channels into the outflow collecting chamber." Id. col. 1, 11. 37--42 (emphasis added). Brunner teaches that the constriction at the end of the spirally-designed 7 Appeal2017-005164 Application 13/634,345 channel "brings about the damming ... which in tum [is] the cause of a rapid and uniform filling of the channels 8 with heating and/or cooling media or a uniform distribution of quantity of flow in the channels 8." Id. col. 2, 11. 63---68; see also id. col. 1, 11. 42--46. After considering the totality of the Mitsuhiro and Brunner disclosures, we determine the Examiner's reasoning lacks a rational underpinning. The Examiner's reasoning relies on modifying Mitsuhiro 's connecting element to include the constriction Brunner discloses. Brunner teaches that the benefit of rapidly and uniformly cooling/heating of the mold is provided by having a constriction at the end of the cooling/heating channel to cause a damming effect just prior to the output chamber, which enables the channel to uniformly fill. Mitsuhiro's connecting element, however, is located intermediate of the flow channels and midway between the input/output of the temperature regulation circuit passing through the mold. The connecting element modified to have the constriction, therefore, would cause damming of the fluid at an intermediate location within the temperature regulation circuit of Mitsuhiro. As a result, the modified connecting element of Mitsuhiro would inhibit the ability of the temperature regulation circuit to cool the mold rapidly and uniformly because it would prevent the heating/cooling channels from uniformly filling. "An inference of nonobviousness is especially strong where the prior art's teachings undermine the very reason being proffered as to why a person of ordinary skill would have combined the known elements." DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009). Therefore, we do not sustain the 8 Appeal2017-005164 Application 13/634,345 Examiner's rejection of claim 8, as well as, claims 9-14 depending therefrom. Rejection II The Examiner determines claims 1, 5, and 14 would have been obvious in view of the teachings of Stillwell, Mitsuhiro and Brunner. Final Act. 4--5. Notably, similar to claim 8, independent claim 1 recites, "a constriction there between such that the flow path of the or each groove first narrows and then widens again between the first end and the second end, the constriction being configured to provide a venturi effect so that when the fluid passes through the constriction its velocity increases." Appeal Br. 17 (Claims App.). Citing Mitsuhiro and Brunner again for this constriction limitation, the Examiner relies on the same factual findings and reasoning provided for claim 1. See Final Act. 4--5. Therefore, for the same reasons discussed above (see supra Rejection I), we do not sustain the Examiner's rejection of claim 8, as well as claims 5 and 14 depending therefrom. Rejections III-V Claims 3, 6, and 7 each depend from claim 1. Appeal Br. 17-18. Therefore, because we have determined that the Examiner's rejection of claim 1 is flawed (see supra Rejection II), and the additional cited references are not relied upon in a way that would address the flawed reasoning, we also do not sustain the rejections of claims 3, 6, and 7 for the same reasons. Rejections VI and VII Claim 17 recites, "a block positioned on each side of the body ... to provide a single continuous flow path through the mould to allow the mould to be directly heated and cooled," and claim 18 similarly recites, "placing a 9 Appeal2017-005164 Application 13/634,345 connecting element on each side of the body ... to provide a single continuous flow path through the body to allow the mould to be directly heated and cooled." Appeal Br. 19 (Claims App.). In Rejections VI and VII, the Examiner relies on the combined teachings of Mitsuhiro and Farrell ( or alternatively Scolamiero) to reach the determination that the above limitations would have been an obvious adaptation to the known molds. Final Act. 6-8. Appellants address these rejections together and assert, "neither of the proposed bases for modifying Mitsuhiro to have a single continuous flow path are valid, and the asserted motivation does not exist." Appeal Br. 15. For the following reasons, Appellants' argument is not persuasive. The Examiner notes that, "[ a ]lthough several arrangement[ s] are shown, Mitsuhiro ... does not specifically teach providing the blocks on each side of the body to provide a single continuous flow path." Final Act. 7. The Examiner cites Farrell and Scolamiero to evidence it was a known alternative for the temperature regulation circuit of Mitsuhiro to be configured in a single serpentine arrangement and, thus, provide a single continuous flow path. Id. (citing Farrell col. 3, 11. 11-15, Fig. 2; Scolamiero ,r 44). The Examiner finds further that using a serpentine pattern was known by skilled artisans to "promote turbulent flow and thus [provide] better heat transfer." Id. ,r 44. "[D]epending upon the heat transfer and/or the envelope requirements of the mold," the Examiner determines substituting the known single serpentine arrangement into the mold of Mitsuhiro would have been obvious. Id. Additionally, the Examiner contends rearranging the configuration of the temperature regulation circuit that Mitsuhiro discloses 10 Appeal2017-005164 Application 13/634,345 to have a single serpentine arrangement to promote turbulent flow and better heat transfer would have involved only routine skill in the art. Id. Appellants contend the Examiner erred because such a substitution would result in a structure that "is wholly opposite of what Mitsuhiro seeks to achieve-namely a temperature regulation circuit which is specifically configured to have multiple flow paths." Appeal Br. 15. Notably, Appellants do not cite any evidence for this proposition. Addressing Appellants' attorney argument, the Examiner responds persuasively that, although Mitsuhiro discloses configurations with multiple flow paths, "the particular flow paths disclosed by Mitsuhiro do not appear to be a critical part of the disclosed invention." Ans. 12. Citing pages 3 and 4 of Mitsuhiro, the Examiner correctly characterizes Mitsuhiro as focused on providing a means of connecting flow paths within a mold block which is superior to prior art methods such as adding flexible hose segments to the outside of the mold, or providing complex internal bore arrangements which require drilling from multiple directions and plugging unwanted openings. The disclosed mold blocks allow a simpler means of connecting the flow paths, which is a similar motivation to that of Applicant. Id. Consistent with the Examiner's position, in the "Constitution of the Invention" section, Mitsuhiro states, [b ]y attaching a connection block to the end face of a mold, the temperature regulation circuit inside the mold can be organized into a number of paths required by one or more blocks, the overall configuration can be simplified, and it is extremely advantageous from the standpoint of management and assembly. Mitsuhiro 4. On this record, Appellants' arguments against the Examiner's rejection of claims 17 and 18 are neither persuasive nor supported. Therefore, we sustain the rejections of these claims. 11 Appeal2017-005164 Application 13/634,345 Re} ections VIII and IX Appellants do not present any arguments with respect to the rejections of claim 14 under either 35 U.S.C. § 112, fourth paragraph, as being of improper dependent form (Rejection VIII) or 35 U.S.C. § 102(b) as being anticipated (Rejection IX). See Reply Br. 1; see also Ans. 9--10. Instead, Appellants simply declare an intention to cancel claim 14 without prejudice. Reply Br. 1. Because Appellants do not apprise us of any error, we summarily sustain the Examiner's rejections of claim 14. DECISION We reverse the rejections of claims 1, 3, and 5-13 and affirm the rejections of claims 14, 17 and 18. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 12 Copy with citationCopy as parenthetical citation