Ex Parte Wang et al

Patent Trial and Appeal Board

Oct 31, 2014

12589123 (P.T.A.B. Oct. 31, 2014)

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.
12/589,123 10/16/2009 Zhong Wang 50224-02109 7937
28960 7590 11/03/2014
HAVERSTOCK & OWENS LLP
162 N WOLFE ROAD
SUNNYVALE, CA 94086
EXAMINER
HEITBRINK, JILL LYNNE
ART UNIT PAPER NUMBER
1743
MAIL DATE DELIVERY MODE
11/03/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ZHONG WANG
and CHARLES R. HILL
____________

Appeal 2012–011117
Application 12/589,123
Technology Center 1700
____________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 3–5, and 8–36 of Application
12/589,123 under 35 U.S.C. § 103(a) as obvious.1 Final Rejection (FR)
(July 18, 2011). Appellants2 seek reversal of these rejections pursuant to 35
U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).

1 We note that the Office Action Summary does not identify claim 36 as
pending in the ’123 Application, but that the summary statement of
Rejection 1 states that claim 36 was rejected under 35 U.S.C. § 103(a).
Compare FR 1, FR 2. Because claim 36 was pending in the ’123
Application when the final rejection was entered, see, e.g., Amendment
(May 19, 2011), we conclude that the Examiner’s omission of claim 36 from
the Office Action Summary was an inadvertent error.
2 Flextronics AP, LLC is identified as the real party in interest. (App. Br. 1.)
Appeal 2012-011117
Application 12/589,123
2
For the reasons set forth below, we REVERSE.
BACKGROUND
The ’123 Application describes a portable device that can be used to
rapidly heat or cool a mold and a method for the use of the device. Spec. 1–
2. The claimed apparatus and method are useful as part of an injection
molding process. Id.
Claim 1 is representative of the ’123 Application’s claims and is
reproduced below:
1. A portable mold-temperature control unit comprising:
a support structure;
a transport mechanism coupled to said support structure;
a heating system coupled to said support structure for heating
fluid used to heat a mold;
a cooling system coupled to said support structure;
a first fluid duct coupled to said support structure for
facilitating the flow of hot fluid heated by said heating system;
a second fluid duct coupled to said support structure for
facilitating the flow of cool fluid used to cool said mold, said
cool fluid cooled by said cooling system; and
a fluid exchange system coupled to said support structure and
operative to supply hot fluid from said first fluid duct to said
mold and cool fluid from said second fluid duct to said mold,
said fluid exchange system being further operative to receive
said fluid from said mold; and wherein
said heating system includes a steam generator operative to
generate steam used to heat said mold; and
said first duct facilitates the flow of steam generated by said
steam generator.
(App. Br. 13 (Claims App’x).)
Appeal 2012-011117
Application 12/589,123
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REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 3–5, 8, 9, 12, 15–25, and 36 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Nagasaka,3
Erlenbach,4 and Pecht.5 (Ans. 5.)
2. Claims 10 and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Nagasaka, Erlenbach, Pecht,
and Toepperwein.6 (Ans. 8.)
3. Claims 13 and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Nagasaka, Erlenbach, Pecht,
and Toepperwein. (Ans 9.)
4. Claim 26 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Nagasaka, Erlenbach, Pecht, and Wu.7
(Ans. 9.)
5. Claims 26–35 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Nagasaka, Erlenbach, Pecht,
and Yoda.8 (Ans. 10.)

3 US Patent Application Publication 2007/0063061 A1, published March 22,
2007.
4 UK 1,422,109, issued Jan. 21, 976.
5 US Patent No. 4,251,479, issued February 17, 1981.
6 US Patent No. 2,357,706, issued September 5, 1944.
7 US Patent No. 5,776,514, issued July 7, 1998.
8 US Patent No. 6,322,343 B1, issued November 27, 2001.
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Application 12/589,123
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DISCUSSION
Appellants present separate arguments for the reversal of the rejection
of independent claims 1 and 36 as obvious over the combination of
Nagasaka, Erlenbach, and Pecht, but do not argue any of the dependent
claims separately. We address each of the independent claims below.
Claim 36. Independent claim 36 is directed to a method for
controlling the temperature of a mold. Appellants argue that the rejection of
claim 36 should be reversed for four reasons: (1) the Examiner did not set
forth a prima facie case of obviousness with the required degree of
specificity (App. Br. 5–6); (2) the combined references do not teach or
suggest at least four steps recited in claim 36 (id. at 6–7); (3) the Examiner’s
proposed modifications of Nagasaka change Nagasaka’s principle of
operation and render it unsuitable for its intended purpose (id. at 8); and
(4) the Examiner did not provide an adequate reason for a person of ordinary
skill in the art to substitute propylene glycol for the water used in Nagasaka
(id. at 9). We need only consider the last of these arguments.
Appellants argue that the rejection of claim 36 should be reversed
because the Examiner has not explained why a person of ordinary skill in the
art would have modified Nagasaka’s method to include the steps of
generating and circulating steam through the mold. (App. Br. 9.) We agree
with Appellants.
Nagasaka describes the use of liquids other than water as the
temperature regulating medium in its portable mold-temperature control
unit. Nagasaka ¶ 12. Nagasaka explains that such fluids are preferred to
water to avoid scale formation. Id. at ¶ 8. While Nagasaka acknowledges
that “clear” (i.e., purified) water can be used to reduce scale formation,
production of the clear water requires the use of additional equipment. Id.
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Application 12/589,123
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Because Nagasaka uses liquids other than water as its temperature-regulating
medium, Nagasaka does not include apparatus for generating or circulating
steam to the mold. Instead, Nagasaka describes a portable mold-temperature
control unit that includes separate reservoirs for hot and cold temperature-
regulating medium. Id. at ¶ 11. Nagasaka controls the temperature of the
liquid circulated to the mold by mixing the hot and cold temperature-
regulating medium to obtain the desired temperature. Id.
The Examiner found that Erlenbach describes the generation and
circulation of steam as part of a process for controlling a mold temperature.
(Ans. 6–7.) The Examiner further found that Pecht describes precise control
of molding time and temperature as resulting in vastly superior material flow
characteristics. (Ans. 7 (citing Pecht col. 2, ll. 48–51).)
For the rejection to be proper, the Examiner must provide sufficient
reasoning supported by a rational underpinning to justify the modification of
Nagasaka’s method to include steam generation and circulation as described
by Erlenbach. See, e.g., KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (“[I]t can be important to identify a reason that would have prompted
a person of ordinary skill in the relevant field to combine the elements in the
way the claimed new invention does.”); In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.”).
The Examiner cites Pecht as providing the necessary reason for the
proposed modification. (Ans. 7 (citing Pecht col. 2, ll. 48–51).) The cited
portion of Pecht describes precise control of molding time and temperature
as resulting in vastly superior material flow characteristics. The Examiner,
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Application 12/589,123
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however, has neither found nor argued that Nagasaka’s method could not
control mold temperature to obtain the desired material flow characteristics.
The Examiner, therefore, has not provided a sufficient reason for an
ordinarily skilled artisan to modify Nagasaka’s method to include the steps
of steam generation and circulation. Thus, we reverse the rejection of claim
36 as obvious over the combination of Nagasaka, Erlenbach, and Pecht.
Claim 1. Claim 1 is directed to an apparatus that can be used to carry
out the method set forth in claim 36. The Examiner also rejected claim 1 as
obvious over the combination of Nagasaka, Erlenbach, and Pecht. (Ans. 5.)
For this rejection to be proper, the Examiner must provide a sufficient reason
for an artisan of ordinary skill in the art to modify Nagasaka’s apparatus by
including the steam generating and circulating structure described in
Erlenbach. For the reasons set forth above, we find that the Examiner has
not provided an adequate reason for the modifications proposed in the
rejection. We, therefore, also reverse the rejection of claim 1.
The other claims in the ’123 Application depend directly or indirectly
from claim 1. Because the Examiner has not provided an adequate reason
for modifying Nagasaka to incorporate steam generating and circulating
apparatus in the rejection of any of these claims, we also reverse the
rejection of these claims.

Appeal 2012-011117
Application 12/589,123
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CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 1,
3–5, and 8–36 of the ’123 Application under 35 U.S.C. § 103(a).
REVERSED

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