ENGEL AUSTRIA GmbH

Patent Trials and Appeals Board

Mar 24, 2022

2021001278 (P.T.A.B. Mar. 24, 2022)

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. 14/874,806 10/05/2015 Josef GIESSAUF 2015-1270A 8310 513 7590 03/24/2022 WENDEROTH, LIND & PONACK, L.L.P. 1025 Connecticut Avenue, NW Suite 500 Washington, DC 20036 EXAMINER VARGOT, MATHIEU D ART UNIT PAPER NUMBER 1742 NOTIFICATION DATE DELIVERY MODE 03/24/2022 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): eoa@wenderoth.com kmiller@wenderoth.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOSEF GIESSAUF and CHRISTIAN MAIER ____________ Appeal 2021-001278 Application 14/874,806 Technology Center 1700 ____________ Before JEFFREY R. SNAY, DEBRA L. DENNETT, and LILAN REN, Administrative Patent Judges. SNAY, 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 17-31. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Engel Austria GmbH as the real party in interest. Appeal Br. 1. Appeal 2021-001278 Application 14/874,806 2 CLAIMED SUBJECT MATTER The invention relates to a tool for use in molding an optical element, such as a lens. Spec. 1. Claim 17 is reproduced below. 17. A molding tool for producing an optical element, said molding tool comprising: a first mold half; a second mold half separate from said first mold half; a first injection station configured to shape a first layer of the optical element to be produced; a second injection station for accommodating the first layer of the optical element to allow a second layer of the optical element to be injected onto the first layer; a handling robot serving as a first transport device and configured to transport the first layer from said first injection station to said second injection station; a cooling station operatively located between said first injection station and said second injection station for cooling the first layer of the optical element, said handling robot being configured to transport the first layer from said first injection station to said cooling station, and to transport the first layer from said cooling station to said second injection station; a third injection station for accommodating the first layer with the second layer of the optical element to allow a third layer of the optical element to be injected onto the first layer; a second transport device configured to transport the first layer with the second layer out of said second injection station and to said third injection station; wherein said second injection station is configured such that the second layer is injected onto a first side of the first layer, and said third injection station is configured such that the third layer is injected onto a second side of the first layer facing away from the second layer. Appeal Br. 9 (Claims Appendix). Appeal 2021-001278 Application 14/874,806 3 REJECTION The Examiner maintains the following grounds of rejection: Claims 17-31 stand rejected under 35 U.S.C. § 103 as unpatentable over Giessauf.2 OPINION We review the appealed rejection for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”)). After considering the argued claims in light of each of Appellant’s arguments, we are not persuaded Appellant has identified reversible error in the appealed rejections. Appellant separately argues claims 17, 28, and 31. Appeal Br. 4-8. Each remaining claim on appeal stands or falls with the argued claim from which it depends. See 37 C.F.R. § 41.37(c)(1)(iv)(2022). Claim 17 Relevant to Appellant’s arguments on appeal, the Examiner finds Giessauf discloses a molding tool which includes first and second injection stations configured to form first and second product layers, respectively, and a transport device operatively located between injection stations. Ans. 3. 2 DE 102014004766 A1, published October 2, 2014. The Examiner relies on US 2014/0332991 A1, published November 13, 2014, as an English language equivalent of Giessauf. Ans. 3. Appellant does not contest the Examiner’s reliance on US 2014/0332991 A1 in that regard. Appeal 2021-001278 Application 14/874,806 4 The Examiner further finds Giessauf teaches optionally providing a third injection station to form a third product layer. Id. The Examiner finds Giessauf is silent with regard to providing a second transport device between the second and third injection station, but determines it would have been obvious to do so to achieve the same transport function between second and third stations as that which Giessauf teaches is achieved between the first and second stations. Id. at 4. Appellant argues Giessauf teaches forming subsequent layers “simultaneously formed on both sides” of the previous layer and, for that reason, does not teach forming a second layer on one side of the first layer, and forming a third layer on an opposite side of the first layer. Appeal Br. 4. Claim 17 recites, in relevant part, the second injection station is configured to inject a second layer “onto a first side of the first layer,” and the third injection station is configured to inject a third layer “onto a second side of the first layer facing away from the second layer.” Appellant’s argument that the foregoing language precludes simultaneous coating of both sides is not persuasive. Particularly, even if Giessauf were viewed, as Appellant contends, as disclosing forming a second layer simultaneously over both sides of a first layer, and subsequently forming a third layer simultaneously over both sides of the second layer, Appellant does not persuasively demonstrate why that sequence would not fall within the scope of the claim. Forming a second layer on both sides would include forming the second layer on one side. Subsequently forming a third layer on both sides would include forming the third layer an opposite second side. In any event, as the Examiner finds (Ans. 4), Giessauf teaches an alternative configuration in which molded layers on opposite sides of an Appeal 2021-001278 Application 14/874,806 5 article are formed in separate stations. Giessauf ¶ 37 (“Alternatively, however, it is also conceivable to produce top and bottom layers in each case in separate stations, thus one after the other.”). Appellant further argues Giessauf teaches forming second and third layers in the same injection station, and therefore fails to teach more than two injection stations. Appeal Br. 4-5. Appellant’s argument is undermined by Giessauf’s express teaching that “one, two, three or more injection- molding units” may be provided. Giessauf ¶ 46. See also id. ¶ 49 (exemplifying three injection-molding units for forming three layers). Appellant’s argument that Giessauf does not specify providing a second transport device (Appeal Br. 6) neither addresses nor refutes the Examiner’s finding that Giessauf teaches providing a transport device between injection units, such that one of ordinary skill would have had a reason to duplicate Giessauf’s disclosed transport device operatively located between first and second injection units for the same operative purpose between second and third injection units. Claim 28 Claim 28 additionally requires the first, second, and third injection stations are arranged along a so-called “separation plane” defined between mold halves. Appellant argues Giessauf fails to teach injection stations “arranged at the (same) separation plane.” Appeal Br. 7. However, Giessauf’s Figure 4 depicts injection molding units aligned along a common plane defined between their respective mold halves. See Giessauf Fig. 4. Claim 31 With regard to claim 31, Appellant argues Giessauf does not teach a configuration by which the molded part is retained in the same first or Appeal 2021-001278 Application 14/874,806 6 second mold half during formation of second and third layers. Appeal Br. 7. Appellant’s argument, however, neither addresses nor refutes the Examiner’s finding that Giessauf expressly teaches retaining a molded part within the same mold half when conveying from one to a subsequent injection unit. Ans. 6 (citing Giessauf ¶ 40). See also Giessauf ¶ 40 (“After production of a pre-moulded part, this mould insert, including the pre- moulded part, can be brought into another position, wherein simultaneously a further realization of the mould insert is brought into the injection- moulding position in the movable mould half.”). For the foregoing reasons and those expressed in the Examiner’s Final Office Action and Answer, Appellant’s arguments do not identify reversible error. The Examiner’s rejection is sustained. CONCLUSION The Examiner’s decision rejecting claims 17-31 is affirmed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference Affirmed Reversed 17-31 103 Giessauf 17-31 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