Ex Parte Hirota et al

Board of Patent Appeals and Interferences

Apr 26, 2010

10359159 (B.P.A.I. Apr. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SHINICHIRO HIROTA
and KOUICHI SATO
____________________

Appeal 2009-013871
Application 10/359,159
Technology Center 1700
____________________

Decided: April 26, 2010
____________________

Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge
CATHERINE Q. TIMM.

Separate Opinion Concurring-in-part and Dissenting-in-part filed by
Administrative Patent Judge LINDA M. GAUDETTE.

TIMM, Administrative Patent Judge.
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DECISION ON APPEAL
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1-21. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
Appellants’ invention relates to manufacturing high-precision glass
optical elements using a press-molding process (Spec. ¶ [0001]). In
particular, the invention relates to a method of accounting for the change in
the refractive index due to press-molding (see Spec. ¶¶ [0014], [0070] and
[0071]). Claims 1 and 7 are illustrative:
1. A method of manufacturing glass optical elements of desired
refractive index n3, by means of a press molding process comprising press
molding a softened glass material in a pressing mold and cooling a molded
element with a predetermined cooling rate,
comprising:
initially determining a first reference refractive index n1 of a first glass
composition that has been subject to processing according to a standard
condition;
thereafter, preparing an interim optical element by means of the press
molding process from a glass material of said first glass composition,
measuring a refractive index n2 of the interim optical element,
obtaining a difference between said first reference refractive index n1
of the first glass composition and the refractive index n2,
after the preparing, measuring and obtaining steps for the interim
optical element, preparing a second glass composition that has been subject
to processing according to said standard condition and has a second
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reference refractive index substantially of the value which is obtained by
adding the difference to the desired refractive index n3,
and
preparing an optical element by means of the press molding process
from a glass material of the second glass composition,
wherein said standard condition does not include a pressing or
molding step, and comprises maintaining the glass at a temperature greater
than or equal to the glass transition temperature and cooling the glass at a
cooling rate less than or equal to 50 degrees Celsius per hour.
7. The method of Claim 1 wherein the glass material of the first or the
second glass composition is prepared by cooling the glass melt at a cooling
rate of from 300°C to 1,500°C/minutes at least over a range of from a
softening point to a strain point minus 50°C.
The Examiner relies upon the following evidence:
First Named Inventor Document No. Issue or Pub. Date
Omori
Sato
Ishida1
US 5,735,920
US 6,413,894 B1
JP 07-330354 A
Apr. 7, 1998
Jul. 2, 2002
Dec. 19, 1995
The Examiner maintains, and Appellants seek review of, the
following rejections:
1. The rejection of claims 1-15, and 21 under 35 U.S.C. § 112, first
paragraph, as failing to provide written descriptive support for the
phrase “does not include a pressing or molding step”;
2. The rejection of claims 1-6, 8-11, 13-16, and 18-20 under 35 U.S.C.
§ 103 as unpatentable over Omori in view of Sato;

1 We refer to, and rely upon, the translation of Ishida made of record on
April 22, 2009.
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3. The rejection of claims 7 and 21 under 35 U.S.C. § 103 as
unpatentable over Omori in view of Sato and Ishida; and
4. The rejection of claims 12 and 17 under 35 U.S.C. § 103 as
unpatentable over Omori in view of Sato and Ishida.
II. DISCUSSION
A. WRITTEN DESCRIPTIVE SUPPORT – 35 U.S.C. § 112, FIRST
PARAGRAPH
1. ISSUE ON APPEAL
The Examiner contends that the phrase “does not include a pressing or
molding step” does not have written descriptive support in Appellants’
Specification (Ans. 3).
Appellants contend that written descriptive support can be found in (a)
the definition of “standard conditions” found in paragraphs [0019] to [0023]
of Appellants’ Specification; (b) the specific examples for the preparation of
the first glass composition in paragraphs [0052] and [0064]-[0067] of
Appellants’ Specification; and (c) the pressing step performed on the
preforms produced “under the standard conditions by melting, flowing
cutting and cooling, with no mention of pressing or molding prior to the
pressing step” in paragraphs [0052]-[0054] (Br. 7; see also Br. 19-21, and
23).
A first issue on appeal arising from the contentions of Appellants and
the Examiner is: did the Appellants identify reversible error in the
Examiner’s finding of a lack of written descriptive support in Appellants’
Specification for the phrase “said standard condition does not include a
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pressing or molding step” as recited in claim 1? We answer this question in
the negative.
2. FACTUAL FINDINGS
Paragraphs [0019] and [0020] of Appellants’ Specification define the
term “standard conditions” as maintaining the glass for a period of time
within a certain temperature range and cooling the glass at a prescribed
cooling rate. (Spec. ¶¶ [0019]-[0020]). Appellants’ Specification does not
define “standard conditions” by the steps taken to place the glass in a form
suitable for pressing and molding.
Reference Example 1 of Appellants’ Specification describes obtaining
an oblate spheroid preform (a glass material for press molding) in which
“glass was melted, made to flow from an outflow pipe, cut, and cooled
(quenched in air)” (Spec. ¶ [0052]). Reference Example 1 also describes
that the preforms are “maintained for 2 hr at Tg+30ºC and cooled at a
cooling rate of 30ºC/hr to a temperature 50ºC below the strain point” (id.).
3. PRINCIPLES OF LAW
The initial burden of establishing a prima facie case of lack of written
description rests with the Examiner. See In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992). However, the initial burden is discharged by the Examiner
if the Examiner establishes the fact that Appellants are claiming
embodiments completely outside the scope of the Specification. See In re
Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996).
“The test for determining compliance with the written description
requirement is whether the disclosure of the application as originally filed
reasonably conveys to the artisan that the inventor had possession at that
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time of the later claimed subject matter, rather than the presence or absence
of literal support in the specification for the claim language.” In re Kaslow,
707 F.2d 1366, 1375 (Fed. Cir. 1983).
4. ANALYSIS
Claim 1 recites that the “standard condition does not include a
pressing or molding step.” Appellants’ Specification defines the standard
condition only as a thermal treatment that includes maintaining a glass
material at a certain temperature for a certain time period and then cooling
the material at a certain cooling rate. The “standard condition” treatment
appears to be unrelated to the manner in which a preform structure might be
made. While we agree with our colleague that “one of ordinary skill in the
art would have understood from the original disclosure that any processing
steps involved in the standard condition are limited to those which eliminate
the past thermal history and cool the glass at a certain controlled rate,” the
claim is not drafted in a way that comports with the definition of “standard
conditions” from Appellants’ Specification. There may be support in the
original disclosure for the broad concept of forming a preform by methods
that exclude pressing and molding, but this preforming concept is not part of
the definition of “standard conditions.” As such, the Specification would not
have conveyed to a skilled artisan that the inventor had possession of a step
wherein the “standard condition does not include a pressing or molding step”
as recited in claim 1.
Accordingly, the Examiner did not reversibly err in finding a lack of
written descriptive support in Appellants’ Specification for the phrase “said
standard condition does not include a pressing or molding step.”
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B. CLAIM 1 – OBVIOUSNESS – OMORI IN VIEW OF SATO
1. ISSUE ON APPEAL
Appellants contend that the teachings of Sato are “incompatible” with
the teachings of Omori since it would have been “inadequate” to modify
Omori “to omit its critical pressing and molding step prior to taking a
measurement of a first optical object” (Br. 24). Appellants also contend that
neither Omori nor Sato, separately, teach the claimed process including
using a standard condition for both a first and second composition (Br. 25,
28, and 29). Appellants also contend that the Examiner makes an
unsupported assumption that the same conditions would apply for preparing
both a first glass composition and a second glass composition (Br. 26).
Specifically, Appellants assert that “there are a number of other parameters
[other than cooling rate] that may be varied in the processes, in order to
achieve the desired index of refraction” and that “it would require
impermissible hindsight to assume that the conditions in Omori et al would
be the same ‘standard conditions’” for both compositions (Br. 28).
The Examiner responds that, despite Appellants’ assertion, Omori
teaches a process for preparing preforms which does not require pressing
and molding and that Sato clearly teaches treating glass material under
standard conditions as defined in Appellants’ Specification (Ans. 11). The
Examiner also contends that, in a study of refractive index changes due to
press-molding, as described by Omori, a skilled artisan would have prepared
glass samples under identical processing conditions to eliminate variables to
the refractive index other than from the press-molding process (Ans. 12).
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A second issue on appeal arising from the contentions of Appellants
and the Examiner is: did Appellants identify reversible error in the
Examiner’s conclusion that one of ordinary skill in the art would have
subjected first and second glass compositions, which are prepared without a
pressing and molding step, to processing according to a standard condition,
based on the teachings of Omori and Sato? We answer this question in the
negative.
2. FACTUAL FINDINGS
Omori teaches a process in which refractive indexes of first and
second glass composition, that have different refractive indexes due to
differences in BaO and SiO2 content, are measured and compared before and
after press-molding the compositions into first and second precision optical
elements, respectively, to address the change in refractive index that occurs
as a result of the press-molding process (Omori, col. 3, ll. 26-col. 4, ll. 7).
In Embodiment 1, Omori teaches the first glass composition is
provided as a spherical glass material cut out from a commercially
available block of glass material (Omori, col. 3, ll. 29-31 and 37-39).
Omori teaches the second glass composition includes an increased
BaO content and decreased SiO2 content from the first glass composition
and that the refractive index is altered by this compositional change (Omori,
col. 3, ll. 55-60). However, Omori is silent as to how the second glass
composition is provided, e.g., in what structure and by what process the
structure was made (see id.).
Omori teaches other embodiments in which “an optical glass element
was formed by the same process under the same conditions as in
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Embodiment 1 except that this blank was press-molded” (Omori, col. 4, ll.
9-17).
Omori also teaches that the invention is not limited to “using spherical
glass cut out for a block material” or “press molding using a blank have been
discussed above” (Omori, col. 5, ll. 46-49). Omori also teaches a “direct
press” process that “eliminates the formation of a high-accuracy glass
preform and makes it possible to use a glass gob, which is extracted directly
from molten glass and controlled at a predetermined temperature, as a glass
preform” (Omori, col. 5, l. 66 through col. 6, l. 3). Omori teaches that “[i]n
this method, however, the change in the refractive index of glass caused by
the press molding is relatively large. Therefore, the method of the present
invention is applied to this method to adjust the refractive index change”
(Omori, col. 6, ll. 6-12).
Sato teaches that “[t]here are a variety of methods of forming press-
shapeable material used for precision-press shaping, depending upon kinds
of shaped articles as end products. In any method, however, it is required to
prepare a desired glass melt in a melting furnace, introduce the glass melt to
a desired site through a flow pipe and flow it down through a flow outlet of
the flow pipe” (Sato, col. 2, ll. 25-31).
Sato particularly teaches a process similar to Omori’s “direct press”
process in which a glass gob is provided by flowing a glass melt through a
small-diameter flow pipe to form a “precision-press shapeable material
(glass preform)” (see Sato, col. 5, ll. 29-51).
Sato teaches that the glass sample used to form the glass preform is
subjected to a process of “maintaining the molten glass sample at a
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temperature equivalent to its glass transition point for 1 hour and then
cooling it to room temperature at a temperature decrease rate of -30º
C./hour” (Sato, col. 5, ll. 10-17).
3. PRINCIPLES OF LAW
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). 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.
“[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” KSR, 550 U.S. at 417.
4. ANALYSIS
We agree with the Examiner that, despite the assertions of Appellants,
Omori teaches a process for preparing preforms which does not require
pressing and molding. Omori clearly teaches a process in which a preform
is cut from a glass block, which is described without any molding or
pressing steps. Moreover, the “direct press” process taught by Omori clearly
uses a glass gob that is extracted directly from melted glass, which is clearly
not pressed or molded, to form the melted gob shape. We also agree with
the Examiner that Sato clearly teaches treating a glass material under
“standard conditions” prior to press molding, since the glass material is
maintained at Tg for an hour and cooled at a rate of 30ºC/hr prior to press-
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molding, conforming to the definition of the term “standard conditions”
from Appellants’ Specification (see Spec. ¶ [0020]).
The Examiner concludes that
[i]t would have been obvious to one of ordinary skill in the art
at the time the invention was made to utilize the standard
condition of Sato in the preparation steps for the first and
second glass material of Omori in order to obtain a glass
composition that is free of striae, a desired optical property, as
taught by Sato.
(Ans. 6.) We find the Examiner’s conclusion to be reasonable because one
of ordinary skill in the art would recognize that using the maintaining and
cooling steps taught by Sato would improve Omori’s “direct press” process
in the same way it improves the process taught by Sato, as the two processes
are similar. See KSR, 550 U.S. at 417.
While we can agree with Appellants that there are many ways to
adjust the refractive index of a glass material, Omori specifically recites
adjusting the refractive index by changing the BaO and SiO2 content of the
glass and by press-molding the product. Since the process taught by Omori
is directed towards addressing the changes in refractive index that occur as a
result of the press-molding process, we agree with the Examiner that it
would have been obvious to one of ordinary skill in the art to use the same
process for making both the first and second glass composition to avoid any
variables to the refractive index caused by any factors other than the
composition itself and the press-molding process (see Ans. 5 and 12). As
such, it would have been obvious to subject both the first and second glass
compositions taught by Omori to the maintaining and cooling processes
taught by Sato.
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Accordingly, we are not persuaded that the Examiner erred in
concluding that one of ordinary skill in the art would have subjected first and
second glass compositions, which are prepared without a pressing and
molding step, to processing according to a standard condition, based on the
teachings of Omori and Sato.
Appellants assert that claims 2-6, 8-11, 13, 14, and 15 stand or fall
with claim 1 (Br. 22 and 31). Appellants assert that claims 16 and 18-20 are
argued separately (Br. 22), but Appellants’ Brief contains no argument
particularly directed towards these claims (see Br. 22-31). Likewise,
Appellants present no arguments with respect to separately rejected claims
12 and 17 in addition to those presented above with respect to claim 1 (see
Br. 32-33). Accordingly, we need not address any of these claims
separately.
C. CLAIM 7 – OBVIOUSNESS – OMORI IN VIEW OF SATO AND
ISHIDA
Since Appellants’ arguments raise an additional issue with respect to
claims 7 and 21 as a group (Br. 31-32), we decide this issue on the basis of
representative claim 7.
1. ISSUE ON APPEAL
Appellants contend that none of the references teach a cooling rate as
recited in claim 7, since “the cooling rate of Ishida is applied to a glass that
is press molded is [sic] and not to a glass material before press molding, as
claimed” (Br. 31-32).
The Examiner contends that “[i]t would be reasonable to apply this
known cooling rate to a glass material that has been softened (whether in a
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press mold or any other softening means) in order to achieve the desired
results of preventing cracks and certain desirable optical attributes” (Ans.
13).
A third issue on appeal arising from the contentions of Appellants and
the Examiner is: did the Appellants identify reversible error in the
Examiner’s conclusion that one of ordinary skill in the art would have
applied Ishida’s cooling rate to the preparation of the glass material taught
by Omori, as recited in claim 7? We answer this question in the negative.
2. PRINCIPLES OF LAW
In KSR Int'l Co. v. Teleflex Inc., the Supreme Court clarified that “it
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,” but that “the analysis need not seek out precise
teachings [in the prior art] directed to the specific subject matter of the
challenged claim.” 550 U.S. 398, 418 (2007). An obviousness analysis may
consider “the inferences and creative steps that a person of ordinary skill in
the art would employ.” Id.; In re Preda, 401 F.2d 825, 826 (CCPA 1968)
(“[I]n considering the disclosure of a reference, it is proper to take into
account not only the specific teachings of the reference but also any
inferences which one skilled in the art would reasonably be expected to draw
therefrom.”).
The question under 35 U.S.C. § 103 is not merely what the references
expressly teach but what they would have suggested to one of ordinary skill
in the art at the time the invention was made. See Merck & Co., v. Biocraft
Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Keller, 642 F.2d 413,
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425 (CCPA 1981). Thus, a conclusion of obviousness may be made from
common knowledge and common sense of the person of ordinary skill in the
art without any specific hint or suggestion in a particular reference. See
In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969).
3. ANALYSIS
The Examiner acknowledges that Ishida does not teach using the
disclosed cooling rate during a step of preparing the glass material of the
first or the second glass composition as recited in claim 7. But the Examiner
provides a reason why one of ordinary skill in the art would have applied the
cooling rate to the step of preparing the glass materials, i.e., to prevent
cracking of any softened glass material whether in a press mold or any other
softening means (Ans. 13).
Appellants have presented no arguments that specifically rebut the
Examiner’s findings and conclusion, which we determine to be reasonably
grounded in the teachings of the prior art and knowledge of the ordinary
artisan in the absence of evidence to the contrary.
Thus, Appellants have not identified reversible error in the
Examiner’s conclusion that one of ordinary skill in the art would have
applied Ishida’s cooling rate the preparation of the glass material taught by
Omori, as recited in claim 7.
III. CONCLUSION
On the record before us2 and for the reasons discussed above, we
sustain the rejections maintained by the Examiner.

2Only those arguments actually made by Appellants have been considered
in this decision. Arguments which Appellants could have made but chose
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IV. DECISION
We affirm the Examiner’s decision.
V. 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) (2007).

AFFIRMED

not to make have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii) (2008).
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GAUDETTE, Administrative Patent Judge, concurring-in-part and
dissenting-in-part
I concur in the majority’s decision to affirm the Examiner’s rejection
of the appealed claims because Appellants have not persuasively argued that
the Examiner erred in determining that the claimed invention would have
been obvious within the meaning of 35 U.S.C. § 103(a). However, I
disagree with the majority’s decision to sustain the rejection of claims 1-15
and 21 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement.
During examination, claim terms must be given their broadest
reasonable construction consistent with the Specification. In re ICON
Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
The written description must be examined in every case,
because it is relevant not only to aid in the claim construction
analysis, but also to determine if the presumption of ordinary
and customary meaning is rebutted. The presumption will be
overcome where the patentee, acting as his or her own
lexicographer, has clearly set forth a definition of the term
different from its ordinary and customary meaning. The
presumption also will be rebutted if the inventor has disavowed
or disclaimed scope of coverage, by using words or expressions
of manifest exclusion or restriction, representing a clear
disavowal of claim scope.

Brookhill-Wilk 1, LLC. v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298-99
(Fed. Cir. 2003) (internal citations omitted).
I do not share the majority’s view that the claim language “does not
include a pressing or molding step” redefines the claim term “standard
condition” in a manner inconsistent with the explicitly stated definition in
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the Specification. As more fully explained below, I find that one of ordinary
skill in the art would have understood, from the original disclosure, that the
inventors were in possession of a method in which the standard condition
excludes pressing and molding steps, and I interpret the claim phrase “does
not include a pressing or molding step” as properly limiting the scope of the
claims to this specific embodiment of the invention. I do not agree with the
majority’s decision to sustain the Examiner’s rejection under 35 U.S.C. §
112, first paragraph, because I find that the rejection is based on the
Examiner’s limited consideration of the explicit definition of “standard
condition” in paragraph [0019] of the Specification. (See Ans. 10-11 (“The
specification defines a standard condition to comprise a heating/maintaining
step and a cooling step. Yet, the applicant points out other additional steps,
such as flowing/dripping and cutting of the glass composition that satisfies
the standard condition. This would imply the definition of standard condition
is not all inclusive and can comprise of additional steps. This further affirms
that the negative limitation of excluding a pressing or molding step is not
supported in the specification.”).) The Examiner failed to establish a prima
facie case of lack of written descriptive support, because the Examiner did
not consider whether one of ordinary skill in the art would have understood,
from the Specification in its entirety, that the inventors were in possession of
a method in which the standard condition excludes pressing and molding
steps.
“Whether an applicant has complied with the written description
requirement is a finding of fact, to be analyzed from the perspective of one
of ordinary skill in the art as of the date of the filing of the application.”
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In re Alonso, 545 F.3d 1015, 1018 (Fed. Cir. 2008) (citations omitted); cf.
Brookhill-Wilk 1, LLC. v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed.
Cir. 2003) (“The words used in the claims are examined through the viewing
glass of a person skilled in the art.”) (citation omitted). “The written
description is the technologic disclosure of the invention. It serves the
fundamental patent purpose of making known what has been invented,
including any variations and alternatives contemplated by the inventor.”
Space Systems/Loral, Inc. v. Lockheed Martin Corp., 405 F.3d 985, 987
(Fed. Cir. 2005). Thus, “[t]he written description . . . need not include
information that is already known and available to the experienced public.”
Id.
The present invention relates “to methods of manufacturing high-
precision glass optical elements” (Spec. [0001]), i.e., “precision press
molding techniques” (Spec. [0002]). Appealed claim 1 recites: “A method
of manufacturing glass optical elements of desired refractive index n3, by
means of a press molding process comprising press molding a softened glass
material in a pressing mold and cooling a molded element with a
predetermined cooling rate.”
The Specification states that the “press molding” step is only part of
the press molding process and refers to “transferring the optically functional
surface of a pressing mold by pressing in a pressing mold at a prescribed
temperature a glass material having a viscosity permitting deformation by
means of pressure in a pressing mold.” (Spec. [0025].) Sato likewise
describes “precision press shaping” as placing a shapeable material on a
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surface of a lower mold member, placing the upper mold member thereon,
and exerting a load. (Sato, col. 23, ll. 5-12.)
Appealed claim 1 includes the terms “first glass composition” and
“second glass composition” and recites a step of “preparing an optical
element by means of the press molding process from a glass material of the
second glass composition.” The Specification defines the term “glass
material” as referring “to glass materials employed in molding and includes
preforms in the form of normal or flattened spheroid having the weight and
shape of which have been made to approximate the molded one, blanks cut
from glass blocks, as well as gobs generated by causing a glass melt to flow
out of a pipe.” (Spec. [0025].)
Sato explains that there are a variety of methods for forming glass
materials for use in a precision press molding process and selection thereof
is dependent upon the desired end product. (Sato, col. 2, ll. 25-27.) Sato
specifically discloses forming an optical glass by mixing raw materials,
melting the formulation, and directing the melt through a flow pipe to a
predetermined site. (Sato, col. 9, ll. 39-47.) In Example 30, glass gobs were
allowed to drop from the flow pipe into the concave portion of shaping
molds “where they were floated without almost any contact, to form
spheres” (Sato, col. 22, ll. 41-46), “suitable as precision-press shapeable
materials” (Sato, col. 22, ll. 52-53).
The melting and cooling steps used to prepare a glass material are part
of its thermal history. Thermal history affects refractive index of the glass
material. “For example, two glass materials of identical composition that are
melted and/or are maintained at a temperature close to the glass transition
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point Tg will have refractive indexes measured at room temperature that
differ with the rate at which the materials are cooled.” (Spec. [0003].) The
inventive method seeks to eliminate differences in the products of press
molding processes which are created by differences in the glass materials
used in the press molding process. Specifically, the method of appealed
claim 1 requires subjecting glass compositions to processing according to a
standard condition.” (Spec. [0019].) The Specification defines the term
“standard conditions” as “maintaining the glass for a period and at a
temperature essentially eliminating the past thermal history of the glass, and
subsequently cooling the glass at a prescribed cooling rate.” (Id.)
The Specification further specifies that “‘maintaining the glass for a
period and at a temperature essentially eliminating the past thermal history
of the glass’ means maintaining the glass at a temperature greater than or
equal to the glass transition temperature Tg until the temperature of all the
glass becomes essentially uniform.” (Id.) The Specification defines
“cooling the glass at a prescribed cooling rate” as “cooling the glass under
certain conditions at which the thermal history imparted to the glass is
constant.” (Spec. [0019].) Thus, one of ordinary skill in the art would have
understood from Appellants’ Specification that any processing steps
involved in the standard condition are limited to those which eliminate the
past thermal history and cool the glass at a certain controlled rate.
As indicated in the Specification, thermal history can be eliminated by
press molding steps. (See Spec. [0027].) The Specification also describes a
preferred method of eliminating thermal history by “maintaining a gob of
glass melt of prescribed composition at a temperature of Tg+30ºC for 2
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hours, cooling the gob at a cooling rate of 30ºC/hr to a temperature of 50ºC
or more below the strain point.” (Spec. [0041].) In my view, one of
ordinary skill in the art would have understood paragraph [0041] of the
Specification as describing an embodiment in which the standard condition
excludes press molding steps. Moreover, the above-cited passages from
Sato evidence that one of ordinary skill in the art at the time of Appellants’
invention would have understood that the glass material used to form a glass
optical element, i.e., the starting material used in a precision press molding
process, need not have been subjected to press molding steps.
Based on the foregoing, I cannot agree with the Examiner’s finding
that the written description does not support the claim 1 limitations requiring
that the standard condition exclude pressing and molding steps. Therefore, I
would not sustain the rejection under 35 U.S.C. § 112, first paragraph.

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