Ex Parte Visser

Board of Patent Appeals and Interferences

Jun 17, 2003

09553295 (B.P.A.I. Jun. 17, 2003)

1
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not written for publication and is not binding precedent of the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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte Robert G. Visser
__________
Appeal No. 2002-2210
Application 09/553,295
___________
ON BRIEF
___________
Before FRANKFORT, STAAB, and McQUADE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 42 and 56, all of the claims
remaining in this application. Claims 43 through 55 have been
canceled.
Appeal No. 2002-2210
Application 09/553,295
2
Appellant’s invention relates to a method of grinding a
glass workpiece and, more particularly, to a “ductile grinding”
process wherein there is careful control of the amount of
grinding force exerted on the glass surface (specification, pages
1-3). As noted on page 1 of the specification, during the
forming process, defects such as mold lines, rough surfaces,
small points and other small imperfections may be present on the
outer surface of the glass. Known processes of abrasive
finishing are used to remove such imperfections, with those
processes typically comprising processes categorized as grinding,
lapping, fining and polishing. “Grinding” is used to remove
large amounts of glass quickly while leaving as fine a scratch
pattern as the tooling and abrasive materials used will allow.
Any scratches and other surface imperfections left from the rough
grinding process are then removed during subsequent processing
steps known as “fining” and “polishing.” As is made clear
numerous times throughout the specification, we again emphasize
that appellant’s invention in the present application addresses a
method of grinding a glass workpiece and, more specifically,
represents a refinement of the ductile grinding process (see, for
example, page 7, lines 11-16 and page 27, lines 11+).
Appeal No. 2002-2210
Application 09/553,295
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Independent claims 1, 22 and 56 are representative of the subject
matter on appeal and a copy of those claims can be found in the
Appendix to appellant’s brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Howard et al. (Howard) 3,916,584 Nov. 4, 1975
Christianson et al. (Christianson) 5,888,119 Mar. 30, 1999
Claims 1 through 5, 8 through 16, 18 through 26, 29 through
37, 39 through 42 and 56 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Christianson.
Claims 6, 7, 17, 27, 28 and 38 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Christianson in
view of Howard.
Rather than reiterate the examiner's full commentary
regarding the above-noted rejections and the conflicting
viewpoints advanced by the examiner and appellant regarding those
rejections, we make reference to the examiner's answer (Paper No.
11, mailed June 18, 2002) for the reasoning in support of the
Appeal No. 2002-2210
Application 09/553,295
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rejections, and to appellant’s brief (Paper No. 10, filed April
17, 2002) for the arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant’s specification and claims, to
the applied prior art references, and to the respective positions
articulated by appellant and the examiner. As a consequence of
our review, we have made the determinations which follow.
In rejecting claims 1 through 5, 8 through 16, 18 through
26, 29 through 37, 39 through 42 and 56 under 35 U.S.C. § 103(a)
on the basis of Christianson, the examiner directs us to Figures
1-2 and column 7, line 39 through column 31, line 47 of that
patent, urging that Christianson discloses the invention “except
for ‘to provide a final surface roughness Ra less than about
0.030 micrometer’” (answer, page 3). The examiner then makes the
following statements and assertions:
In col.20, lines 54-65, Christianson discloses the speeds of
the polishing machine. In col. 22, lines 63-67,
Christianson discloses the cut rate and Ra values of the
polishing result. However, Christianson does not
specifically disclose the claimed result. Thus, it would
Appeal No. 2002-2210
Application 09/553,295
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have been obvious to a person of ordinary skill in the art
at the time the invention was made to have operated the
polishing machine at the claimed result set forth in the
claim since it has been held that discovery of optimum value
of result effective variable in known process is ordinary
within the skill of the art. In re Boesch, 205 USPQ 215
(CCPA 1980)
Having reviewed and evaluated the applied Christianson
patent, we share appellant’s assessment of the § 103 rejection
based thereon (brief, pages 12-15) and agree with appellant that
Christianson is solely directed to the polishing of glass
surfaces and neither teaches nor suggests improvements to the
grinding phase of finishing a glass surface or glass workpiece as
addressed by appellant. As for the examiner’s reference to
Christianson col. 20, lines 54-65 for the speeds of the polishing
machine and col. 22, lines 63-67 for the cut rate and Ra values
of the polishing result, we are in total agreement with
appellant’s views expressed on pages 14-15 of the brief and
incorporate them herein as our own.
Since neither the speed nor the cut rate set forth in
independent claims 1, 22 and 56 on appeal for appellant’s
grinding method are disclosed in the cited sections referenced by
the examiner, or anywhere else in the Christianson patent, it is
Appeal No. 2002-2210
Application 09/553,295
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our determination that the examiner has failed to establish a
prima facie case of obviousness. The examiner’s conclusion that
it would have been obvious to one of ordinary skill in the art at
the time of appellant’s invention “to have operated the polishing
machine [of Christianson] at the claimed result set forth in the
claim [sic] since it has been held that discovery of optimum
value of result effective variable in known process is ordinary
[sic] within the skill of the art,” is totally without foundation
and appears to be based entirely on hindsight reconstruction.
Thus, we refuse to sustain the examiner’s rejection of
claims 1 through 5, 8 through 16, 18 through 26, 29 through 37,
39 through 42 and 56 under 35 U.S.C. § 103(a) based on
Christianson.
With regard to the examiner’s rejection of claims 6, 7, 17,
27, 28 and 38 under 35 U.S.C. § 103(a) as being unpatentable over
Christianson in view of Howard, we have reviewed the Howard
patent and agree with appellant that there is nothing in the
disclosure this patent which makes up for or otherwise provides
Appeal No. 2002-2210
Application 09/553,295
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for the deficiencies of the Christianson reference. Accordingly,
the rejection of dependent claims 6, 7, 17, 27, 28 and 38 under
35 U.S.C. § 103(a) is not sustained.
In light of the foregoing, the decision of the examiner to
reject claims 1 through 42 and 56 under 35 U.S.C. § 103(a) is
reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN P. McQUADE )
Administrative Patent Judge )
CEF:pgg
Office of Intellecutal Property Counsel
Appeal No. 2002-2210
Application 09/553,295
8
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