Ex Parte KANEKO et al

Patent Trial and Appeal Board

Oct 22, 2018

13409328 (P.T.A.B. Oct. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/409,328 03/01/2012
25191 7590 10/24/2018
BURR & BROWN, PLLC
POBOX869
FAYETTEVILLE, NY 13066
FIRST NAMED INVENTOR
Kimihisa KANEKO
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
796_237 6475
EXAMINER
LAW, NGA LEUNG V
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
10/24/2018 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):
tpreston@burrandbrown.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KIMIHISA KANEKO and KUNIHIKO YOSHIOKA
Appeal2018-000509
Application 13/409,328
Technology Center 1700
Before ROMULO H. DELMENDO, N. WHITNEY WILSON, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134 from a rejection of claims
1-11. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The real party in interest is identified as NGK Insulators, Ltd. Appeal
Brief of April 19, 2017 ("App. Br."), 2.
2 Final Office Action of November 28, 2016 ("Final Act."). In this opinion,
we also refer to the Examiner's Answer of August 18, 2017 ("Ans.") and the
Reply Brief of October 16, 2017 ("Reply Br.").
Appeal2018-000509
Application 13/409,328
CLAIMED SUBJECT MATTER
The claims are directed to a production method for a forming mold.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method for producing a forming mold comprising a base
member having two opposed surfaces, and a resin layer formed
on the base member, wherein the resin layer has a surface serving
as a forming surface, and the base member has a rigidity higher
than that of the resin layer, which method comprises:
a forming step of forming on the two opposed surfaces of
the base member a resin layer having a thickness of more than 1
mm, and
a machining step of machining the surface of the formed
resin layer, to thereby form the forming surface,
wherein the machining step is performed by end-milling
or planar grinding to achieve a final resin layer thickness of 0.1
mm to 1.0 mm.
App. Br. 11 (Claims Appendix).
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Kataoka et al.
("Kataoka")
Kao et al.
("Kao")
US 5,362,226 Nov. 8, 1994
US 2005/0020195 Al Jan. 27, 2005
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Appeal2018-000509
Application 13/409,328
REJECTION ON APPEAL
Claims 1, 3 4, 4 5, and 10-11 are rejected under pre-AIA 35 U.S.C.
103(a) as being unpatentable over Kataoka in view of Kao. Final Act. 3.
OPINION
Claim 1
Appellants argue that the Examiner reversibly erred in finding that
Kataoka teaches or suggests "forming ... on two opposed surfaces of [a]
base member .... a resin layer" as recited because "in Kataoka, only one of
the two opposed surfaces is coated with a resin layer." App. Br. 6 ( emphasis
in original). In addition, the Examiner finds that Kataoka teaches "the
injection mold cavity surface is coated with a thin heat insulating layer
comprising synthetic resin" which has the advantages of "improv[ing] the
molding surface reproducibility of the molded articles" as well as "assuring
satisfactory molding surface reproducibility without increasing a mold
temperature or without lengthening the cooking time even when a mold
temperature is increased." Ans. 6 (citing various portions of Kataoka
including 1:24--27, 3:5-10). The Examiner accordingly concludes that the
prior art teaching would have led a skilled artisan to "coat on all side[s] in
3 Claims 2, 3, and 7-9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kataoka, Kao, and respective additional references. Final
Act. 5, 6. Appellants do not present arguments for claims 2, 3, and 7-9
separate from those for claim 1 and claims 2, 3, and 7-9 therefore stand or
fall with claim 1. App. Br. 6--9; see also 37 C.F.R. § 4I.37(c)(l)(iv) (2013).
4 Claims 6 and 8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kataoka, Kao, and respective additional references. Final
Act. 5, 6. Appellants do not present arguments for claims 6 and 8 separate
from those for claim 4 and claims 6 and 8 therefore stand or fall with claim
4. App. Br. 8; see also 37 C.F.R. § 4I.37(c)(l)(iv) (2013).
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Appeal2018-000509
Application 13/409,328
the cavity of the injection to achieve" these advantages. Id. at 6-7.
Appellants do not address this aspect of the obviousness analysis. See, e.g.,
Reply Br. 1-3. We in tum are not persuaded that the Examiner reversibly
erred here. 5
Appellants next argue that "a person of ordinary skill in the art would
have recognized that the alleged machining step disclosed in Kataoka is
nothing more than a minor modification to the surface of the resin layer in
order to provide a cosmetically pleasing appearance to the finished article."
App. Br. 6. This argument - even if it were supported by factual evidence
( which the record before us lacks) - is not commensurate in scope with the
plain language of claim 1 which does not exclude any particular purpose of
the recited "machining step." We further note that this argument cannot
identify reversible error in the Examiner's findings because the Examiner
acknowledges that "Kataoka does not explicitly teach[] the polishing
machining step is performed by end milling or planar grinding." Final Act.
4.
5 Because we agree with the Examiner that even the narrower claim
construction proposed by Appellants does not require reversal of the
obviousness rejection, we need not and do not address that issue. However,
because Appellants apparently intended that a resin layer is formed on each
of the opposed surfaces, the claim could be drafted to recite "forming on
each [or both] a/the two opposed surfaces." In re Morris, 127 F.3d 1048,
1056 (Fed. Cir. 1997) ("It is the applicants' burden to precisely define the
invention, not the PTO's."; cf Ex parte Miyazaki, 2008 WL 5105055, at *5
(BP AI 2008) (precedential) ("[I]f a claim is amenable to two or more
plausible claim constructions, the USPTO is justified in requiring the
applicant to more precisely define the metes and bounds of the claimed
invention by holding the claim unpatentable under 35 U.S.C. § 112, second
paragraph, as indefinite.").
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Appeal2018-000509
Application 13/409,328
For the claim limitation of "end-milling or planar grinding," the
Examiner finds that "Kao teaches a method of forming a release surface of a
mold" as well as "grind[ing] the mold releasing surface to improve the
smoothness of the surface and enhance the releasability." Final Act. 4
( citing Kao Abstract, ,r 5). Appellants' argument that "Kao discloses
machining the surface of a mold base member, not the surface of a resin
layer formed on the surface of the mold base member" (App. Br. 8
( emphasis omitted)) does not identify reversible error because "if 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 Int'! Co. v. Teleflex Inc., 550 U.S. 398,417
(2007). Appellants' remaining argument that
a person of ordinary skill in the art would have understood that
polishing or sand blasting the resin layer as disclosed in
Kataoka, or polishing the uncoated molding surface of the mold
base member as disclosed in Kao, is not the same as machining
the surface of the formed resin layer by end-milling or planar
grinding, as required by claim 1
(App. Br. 8 ( emphasis omitted)) merely states Appellants' disagreement with
the Examiner's determination without providing their own analysis or
factual support. See also Reply Br. 2. Such an unelaborated attorney
argument is insufficient to identify reversible error in the Examiner's
findings. We accordingly sustain the Examiner's obviousness rejection of
claim 1.
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Appeal2018-000509
Application 13/409,328
Claim 4
The claim limitation at issue here is "wherein the resin layer is formed
from a fluorine compound as a material." While Kataoka states that "[t]he
polyimide to be used in the present invention contains substantially no
substance interfering with adhesion to a metal mold, such as fluorine"
(Kataoka 8:53-55), the Examiner points out that Kataoka explicitly
describes a particular embodiment using a fluorinated polyimide layer. Final
Act. 4 (citing Kataoka 19:1-7 "COMPARATIVE EXAMPLE").
"Under the proper legal standard, a reference will teach away when it
suggests that the developments flowing from its disclosures are unlikely to
produce the objective of the applicant's invention. A statement that a
particular combination is not a preferred embodiment does not teach away
absent clear discouragement of that combination." Syntex (U.S.A.) LLC v.
Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (citations omitted).
In this case, Appellants' teaching away argument is not commensurate
in scope with the claim language because claim 4 does not require adhesion
to "a metal mold" as described in Kataoka in the application of fluorine. See
Kataoka 8:53-55. Moreover, as the Examiner points out (Ans. 9), while the
comparative example in Kataoka is not a preferred embodiment, "[ a ]11 the
disclosures in a reference must be evaluated, including nonpreferred
embodiments, and a reference is not limited to the disclosure of specific
working examples." In re Mills, 470 F.2d 649, 651 (CCPA 1972). The fact
that the prior art describes certain comparative examples which use fluorine
is consistent with the Examiner's finding that such use of fluorine was
known in the art. We accordingly are not persuaded that the Examiner
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Appeal2018-000509
Application 13/409,328
reversibly erred in evaluating the whole of the prior art teaching with regard
to claim 4.
DECISION
The Examiner's decision is affirmed.
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)(l )(iv).
AFFIRMED
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