Ex Parte Yamamichi

Board of Patent Appeals and Interferences

Oct 27, 2011

11446363 (B.P.A.I. Oct. 27, 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.
11/446,363 06/05/2006 Nobuhiro Yamamichi SON-3567 8691
23353 7590 10/28/2011
RADER FISHMAN & GRAUER PLLC
LION BUILDING
1233 20TH STREET N.W., SUITE 501
WASHINGTON, DC 20036
EXAMINER
YI, STELLA KIM
ART UNIT PAPER NUMBER
1742
MAIL DATE DELIVERY MODE
10/28/2011 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 NOBUHIRO YAMAMICHI
____________

Appeal 2010-011829
Application 11/446,363
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and
MARK NAGUMO, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 3, 5, 6, and 14. 1 A hearing was held on
September 20, 2011. We have jurisdiction under 35 U.S.C. § 6.

1 Claims 7 through 13, the other claims pending in the above-identified
application, stand withdrawn from consideration by the Examiner. See
Appeal Brief (“App. Br.”) filed February 1, 2010, 2-3; and Examiner’s
Answer (“Ans.”) filed May 13, 2010, 2-3.

Appeal 2010-011829
Application 11/446,363

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STATEMENT OF THE CASE
The subject matter on appeal is directed to “an optical unit
manufacturing method in which an optical element united with a frame unit
is obtained by performing compression (press forming) to an optical material
with a mold after thermal softening of the optical material . . .” (Spec. 1,
¶ 0003, ll. 18-22). Details of the appealed subject matter are recited in
representative claims 1 and 142 reproduced from the Claims Appendix to the
Appeal Brief as shown below:
1. An optical unit manufacturing method, comprising the steps of:

providing a mold having a first mold part and a second mold part
operative to move towards one another from a disposed-apart position to a
stationary, abutting position;

placing a thermally-softened optical material between the first [and]
the second mold parts;

moving the first and second mold parts from the disposed-apart
position to the stationary, abutting position thereby compressing the
thermally-softened optical material into an optical element; and

while in the stationary, abutting position, injecting a plastic frame unit
material into the mold to surround and contact an outer periphery of the
optical element thereby forming the frame unit as an integral part of the
optical element without opening the mold after forming of the optical
element.

2 Appellants have argued claims 1 through 3, 5, and 6 as a group and claim
14 separately. (See App. Br. 5-13.) Therefore, for purposes of this appeal,
we select claims 1 and 14 and decide the propriety of the Examiner’s § 103
rejection set forth in the Answer based on these claims alone in accordance
with 37 C.F.R. § 41.37(c)(1)(vii).

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14. An optical unit manufacturing method, comprising the steps of:

providing an optical material suitable to form an optical element, an
injection molding material suitable to form a frame unit and a mold having
a[n] optical element forming cavity sized to receive the optical material in a
thermal softened state and a frame unit forming cavity in communication
with and surrounding the optical element forming cavity, the mold having a
first mold part and a second mold part operative to move towards one
another from a disposed-apart position to a stationary, abutting position;

placing the optical material in the thermal softened state between the
first and the second mold parts when the first and second mold parts are in
the disposed-apart position;

moving the first and second mold parts from the disposed-apart
position to the stationary, abutting position thereby compressing the optical
material in the thermal softened state in the optical element forming cavity
into the optical element; and

while the first and second mold parts are in the stationary, abutting
position, injection molding material into the frame unit forming cavity to
form the frame unit around and in contact with the optical element without
opening the mold after forming of the optical element.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following prior art references at page 4 of the
Answer:
Fay 2,655,692 Oct. 20, 1953
Yamamichi 6,295,172 B1 Sep. 25, 2001

Appellant seeks review of the Examiner’s rejection of claims 1
through 3, 5, 6, and 14 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Fay and Yamamichi. (See App. Br. 5.)

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ISSUE AND CONCLUSION
The dispositive question raised by the Examiner and Appellant is:
Has the Examiner reversibly erred in determining that the collective
teachings of Fay and Yamamichi would have led one of ordinary skill in the
art to employ a thermally-softened glass gob (optical material), in lieu of a
glass-molded lens (preformed optical element), to form a glass-molded lens
in cavities of the upper and lower mold blocks of Fay prior to forming a
frame unit as an integral part of the optical lens via injection molding?
On this record, we answer this question in the negative.
PRINCIPLES OF LAW
As stated by Supreme Court of the United States in KSR Int’l. Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007):
[A]nalysis [of whether the subject matter of a claim
would have been obvious under § 103] need not seek out
precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art
would employ.

The question to be asked is “whether the improvement is more than
the predictable use of prior art elements according to their established
functions.” KSR, 550 U.S. at 417.
Economic factors or simplification of process steps may provide the
requisite reason or motivation to one of ordinary skill in the art to arrive at
the claimed subject matter. In re Thompson, 545 F.2d 1290, 1294 (CCPA
1976) (“Eliminating the cost of the preliminary step of wax impregnation
would have been sufficient motivation for doing so.”)

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RELEVANT FACTUAL FINDINGS
As correctly found by the Examiner at pages 4 and 5 of the Answer,
Fay discloses a molding process comprising steps of providing a mold (10)
having upper and lower mold blocks (11) and (12), placing a lens (50) made
of plastic or glass (optical material) between the upper and lower mold
blocks (11) and (12) in a disposed-apart (opened) position, pressing the first
and second mold blocks in a stationary, abutting (substantially closed)
position , thereby compressing the lens between cavities of the upper and
lower mold blocks (11) and (12), and while the upper and lower mold blocks
(11) and (12) are in the stationary, abutting (substantially closed) position,
injecting a thermoplastic material into frame forming cavities between the
upper and lower mold blocks through gate (26) to fill the frame forming
cavities to contact and surround the lens (optical material), thereby forming
a frame unit as an integral part of the optical lens. (See Fay, Figs. 1 and 3,
col. 1, 47 to col. 2, l. 5 and col. 3, l. 20 to col. 4, l. 15.) Fay discloses using
the upper and lower mold blocks to hold a preformed optical element (a
glass-molded lens), rather than to form and hold an optical element (glass-
molded lens) as required by claims 1 and 14, in its process for forming a
frame unit as an integral part of the optical lens.
As acknowledged by Appellant at page 9 of the Appeal Brief,
“Yamamichi teaches forming an optical element . . . by pressing a glass
material softened by heat with an upper mold and a lower mold.”
(Emphasis added.) Yamamichi discloses that the lower and upper molds
defining cavities “are made relatively come close to each other to press-mold
the [thermally softened] glass gob, thereby obtaining a required optical glass
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element such as a glass-molded lens.” (See col. 1, ll. 7-20 and Figs. 2, 3 and
5.)
ANALYSIS
As indicated supra, Fay discloses the claimed optical unit
manufacturing process for forming a frame unit as an integral part of an
optical element (a lens), except for pressing upper and lower mold blocks
defining cavities in a stationary, abutting (substantially closed) position to
form an optical element (a glass-molded lens) from a thermally softened
optical material as required by claims 1 and 14. Although Fay discloses
pressing its upper and lower mold blocks defining cavities in a stationary,
abutting (closed) position as required by claims 1 and 14, its upper and
lower mold blocks defining cavities are used to hold a preformed optical
element (i.e., a glass-molded lens), rather than to form an optical element (a
glass-molded lens) from a thermally softened optical material. However,
Yamamichi teaches forming a glass-molded lens (optical element) by
pressing a glass material softened by heat with upper and lower molds
defining cavities as indicated supra. One of ordinary skill in the art would
have inferred from this teaching of Yamamichi that the upper and lower
mold blocks taught by Fay can also be used (or modified) for forming a
glass-molded lens from a thermally softened glass gob, in addition to
holding the resulting lens between cavities of the upper and lower mold
blocks, prior to forming a frame unit as an integral part of the glass-molded
lens (optical element) since the use of the upper and lower press molds
taught by Fay, according to their established or known function, i.e.,
pressing to form a molded lens as taught by Yamamichi, is predictable.
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Cf. KSR, 550 U.S. at 416 and 418. Both Fay and Yamamichi as a whole
indicate that the upper and lower press molds in question can operate in the
same manner (i.e., pressing) to provide two functions sequentially, i.e.,
forming and then holding a glass-molded optical element. Cf. Thompson,
545 F.2d at 1294.
It follows that we concur with the Examiner that the collective
teachings of Fay and Yamamichi would have led one of ordinary skill in the
art to employ a thermally-softened glass gob (optical material), in lieu of a
glass-molded lens (preformed optical element), to form and hold a glass-
molded lens in cavities of the upper and lower mold blocks taught by Fay as
a matter of simplification prior to forming a frame unit as an integral part of
the optical glass lens via injection molding. KSR, 550 U.S. at 418;
Thompson, 545 F.2d at 1294.
Appellant has not raised arguments for patentability based on
secondary considerations such as unexpected results or commercial success.
Accordingly, we determine that the preponderance of evidence weighs
most heavily in favor of obviousness of the claimed subject matter within
the meaning of 35 U.S.C. § 103(a).
ORDER
In view of the foregoing, it is
ORDERED that the decision of the Examiner rejecting claims 1
through 3, 5, 6, and 14 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Fay and Yamamichi is AFFIRMED; and
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FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

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