MEI S.R.L.

Patent Trials and Appeals Board

Aug 18, 2020

2020000148 (P.T.A.B. Aug. 18, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
15/027,833 04/07/2016 Stefano SONZOGNI F5572-00030 2560
8933 7590 08/18/2020
DUANE MORRIS LLP - Philadelphia
IP DEPARTMENT
30 SOUTH 17TH STREET
PHILADELPHIA, PA 19103-4196
EXAMINER
DION, MARCEL T
ART UNIT PAPER NUMBER
3723
MAIL DATE DELIVERY MODE
08/18/2020 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 STEFANO SONZOGNI
____________

Appeal 2020-000148
Application 15/027,833
Technology Center 3700
____________

Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and KENNETH
G. SCHOPFER, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 7–9, and 12. We have jurisdiction
under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as MEI S.r.l.. Appeal
Br. 1.
Appeal 2020-000148
Application 15/027,833

2

CLAIMED SUBJECT MATTER
The Appellant’s claimed invention relates to a process for machining
a lens (Spec., page 1, lines 2, 3). Claim 1, reproduced below is
representative of the subject matter on appeal.

1. A process for machining a lens, the process comprising the steps of:
- holding a semi-finished product through a suction holding
force which is active during an entire surface machining cycle of the
semi-finished product, wherein said semi-finished product comprises
a convex front surface, a concave rear surface to be machined
opposite to the front surface and a perimeter surface, wherein the
suction holding force acts on the front surface;
- carrying out the surface machining cycle only on said rear
surface to be machined of the semifinished product by a machine tool;
and
- activating a pressure holding force depending on a magnitude
of mechanical stresses exerted on the rear surface of the semi-finished
product during the surface machining cycle on said rear surface, the
pressure holding force acting on said rear surface,
wherein the surface machining cycle on said rear surface
comprises a first step in which the semi-finished product is held by the
application of both the suction holding force on said front surface and
the pressure holding force on said rear surface and the machine tool
machines the rear surface of the semi-finished product moving from
the outer edge of the rear surface towards the central portion of the
rear surface, and a subsequent step in which the semi-finished product
is held by application of just the suction holding force on said front
surface and the machine tool has reached the central portion of the
rear surface.

THE REJECTIONS
The following rejections are before us for review:
1. Claims 1–4, 7, 8, and 12 are rejected under 35 U.S.C. § 103 as
unpatentable over Gerber (US 5,720,649; iss. Feb. 24, 1998), Abbey (GB
Appeal 2020-000148
Application 15/027,833

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583,202; iss. Dec. 11, 1946), and Monnoyeur (US 2011/0256806 A1; pat.
pub. Oct. 20, 2011).
2. Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Gerber, Abbey, Monnoyeur, and Cook (US 5,567,198; iss. Oct. 22,
1996).

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence2.

ANALYSIS
The Appellant argues that the rejection of record of claim 1 is
improper because the cited combination of references would not have been
obvious (App. Br. 11–14). The Appellant argues the prior art fails to
disclose or suggest a pressure holding force on a rear surface while the
machine tool machines the rear surface of the product moving from the outer
edge to the central portion (App. Br. 12).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Action 2–4; Ans. 3–5).
We agree with the Appellant. In KSR Int'l Co. v. Teleflex Inc., 550
U.S. 398 (2007) the Supreme Court at 418 noted that in an obviousness
analysis that “rejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
Appeal 2020-000148
Application 15/027,833

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reasoning with some rational underpinning to support the legal conclusion of
obviousness”.
Here, even assuming all the elements of the cited prior art are present
in the cited prior art, we determine that the cited proposed combination
would not have been obvious. For example, we agree that Gerber teaches
holding the semi-finished product “by the application …[of] the pressure
holding force on said rear surface [while] the machine tool machines the
rear surface of the semi-finished product moving from the outer edge of the
rear surface towards the central portion of the rear surface” at Fig. 1 and
column 5, lines 25–35. We also agree that Monnoyeur at paragraph 59
discloses using suction to hold a lens blank. Figure 3 of Abbey discloses the
spindle 12 rotatably supported while surface is machined. Abbey at Figure 4
does disclose axial forces holding the lens, but this is done while machining
the edge of the lens only, and not the rear surface of the lens. While Abbey
at Figure 5 does disclose a pressure holding force on the rear surface, this is
done while “drilling” the lens, not machining the surface from the outer edge
to the rear surface towards the central portion as claimed.
Here, the cited prior art fails to provide articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness
for the modification of the elements to include “the pressure holding force
on said rear surface [while] the machine tool machines the rear surface of the
semi-finished product moving from the outer edge of the rear surface
towards the central portion of the rear surface” without impermissible
hindsight in the cited rejection. Accordingly, the rejection of claim 1 and its
dependent claims is not sustained.

Appeal 2020-000148
Application 15/027,833

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CONCLUSIONS OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 1–4, 7, 8, and 12 under 35 U.S.C. § 103 as unpatentable
over Gerber, Abbey, and Monnoyeur.
We conclude that Appellant has shown that the Examiner erred in
rejecting claim 9 under 35 U.S.C. § 103(a) as unpatentable over Gerber,
Abbey, Monnoyeur, and Cook.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 7, 8,
and 12
103 Gerber, Abbey,
and Monnoyeur
1–4, 7, 8,
and 12
9 103 Gerber, Abbey,
Monnoyeur, and
Cook
9
Overall
Outcome
1–4, 7-9,
and 12

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

REVERSED