OptoTech Optikmaschinen GmbH

Patent Trials and Appeals Board

Sep 23, 2020

2019004461 (P.T.A.B. Sep. 23, 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.
14/511,367 10/10/2014 Roland MANDLER 12007-0227 3711
22902 7590 09/23/2020
CLARK & BRODY
1700 Diagonal Road
Suite 310
Alexandria, VA 22314
EXAMINER
SCHIFFMAN, BENJAMIN A
ART UNIT PAPER NUMBER
1742
MAIL DATE DELIVERY MODE
09/23/2020 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 ROLAND MANDLER
____________

Appeal 2019-004461
Application 14/511,367
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, JEFFREY R. SNAY, 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 rejecting claims 1, 2, and 4–9. A hearing was
conducted September 17, 2020, a transcript of which will be made of record.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies OptoTech Optikmaschinen GmbH as the real
party in interest. Appeal Br. 3.
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BACKGROUND
The invention relates to a lens retaining device for use in lens
processing, such as milling, grinding, and cutting. Spec. 1. Claim 1 is the
only independent claim on appeal and reads:
1. A lens retaining device (1) for retaining a raw lens (100)
in a processing machine,
• with a tool mount (10) for immobilizing the lens
retaining device (1) in a processing machine, and
• with a workpiece mount (20) for receiving a raw
lens (100) to be processed,
• wherein the workpiece mount (20) has a curved
surface (21) and is connected to the tool mount
(10), and
• wherein an air channel (22) extends from the tool
mount (10) to the curved surface (21) of the
workpiece mount (20),
characterized in that,
• the workpiece mount (20) includes an adhesion
element (23) as a part thereof, the adhesion
element at least to some extent forms the curved
surface (21),
• wherein the adhesion element (23) has adhesive
properties on the curved surface (21) and
comprises an adhesive material based on polyvinyl
chloride, polyethylene, silicone, or
poly(organo)siloxanes, and
• further wherein the air channel (22) is configured
to generate a suction force between the curved
surface, that at least to some extent is formed by
the adhesion element (23), and a raw lens.
Appeal Br. 31 (Claims Appendix).

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REJECTION
Claims 1, 2, and 4–92 stand rejected under 35 U.S.C. § 103 as
unpatentable over Felten,3 Soper,4 and Cole.5

OPINION
Appellant directs the submitted arguments solely to claim 1. See
Appeal Br. 10–29. Each of claims 2 and 4–9 stands or falls with claim 1.
Relevant to Appellant’s arguments on appeal, the Examiner finds
Felten discloses a lens held to a mount by an adhesion element. Final Act.
2–3. The Examiner finds Soper discloses a lens held to a mount by suction
applied through an apertured disc. Id. at 3; Ans. 3. The Examiner further
finds Cole discloses a lens held to a mount by a silicone adhesive-coated
blocking pad. Final Act. 3, 5–6. In light of these findings, the Examiner
determines one of ordinary skill would have had a reason to replace Felten’s
adhesion element with Soper’s aperture disc, and to provide the disc with a
silicone adhesive coating, to hold a lens to a mount for processing. Id. 3, 5–
6; Ans. 3–4.
Appellant argues Felten’s adhesion element is adhered to the lens and,
therefore, is not part of the workpiece mount as recited in claim 1. Appeal
Br. 11–17. Appellant also argues Felten discloses an air channel that does
not extend through the adhesion element to the lens surface. Id. at 17–18.
There appears to be no dispute on either point. See Final Act. 3 (“Felten

2 The Examiner withdrew claims 10–12 from consideration. Final Act. 1.
3 US 2011/031637 A1, published February 10, 2011 (“Felten”).
4 US 4,089,102, issued May 16, 1978 (“Soper”).
5 US 7,935,402 B2, issued May 3, 2011 (“Cole”).
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does not appear to explicitly disclose the adhesion element is part of the
workpiece mount and that the air channel communicates with the curved
surface between the adhesion element and the raw lens.”). Because the
Examiner’s rejection of claim 1 is not premised on a finding that Felten’s
adhesion element is part of the mount, or that Felten provides the recited air
channel, Appellant’s arguments against such findings are not persuasive of
error.
Turning to the combined teachings of Felten and Soper, Appellant
argues “there is simply no motivation given in Felten to apply features of a
suction holder (as Soper discloses) to the blocking6 procedure of Felten,
because Felten does not disclose suction forces.” Appeal Br. 17. According
to Appellant, “The protecting tape 13 of Felten and the disc 22 of Soper are
different parts in a lens blocking device and cannot be reasonably said to be
substitutes for each other as is alleged in the rejection.” Id. at 19. Appellant
contends Felten’s adhesion element is used to protect a lens and bond the
lens to a mounting block, whereas Soper’s apertured disc is used to allow
suction to hold the lens in place on a mounting block. Id. at 20. Appellant
argues Felten’s protecting tape and Soper’s disc “are not similar in the
least.” Id. See also Reply Br. 1–6.
Having considered Appellant’s arguments together with the evidence
presented, we are not persuaded of reversible error. “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

6 Blocking, in this case, refers to forming a solid connection between a lens
and a mount. Spec. 2 (“The process of producing such solid connections
between a raw lens and a lens retaining device is also called blocking.”).
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Inc., 550 U.S. 398, 416 (2007). The prior art need not present an express
suggestion to substitute one equivalent for another. In re Fout, 675 F.2d
297, 301 (CCPA 1982). Here, Appellant’s arguments identify the
differences between adhesion, such as in Felten, and suction, as in Soper, but
do not challenge the Examiner’s finding that both are techniques known for
the same purpose of retaining a lens to a mount for processing. To the
contrary, the Specification identifies these techniques as known alternatives.
Spec. 2 (“An alternative to the blocking methods are vacuum holders.”).
Lastly, Appellant argues there would have been no reason to use
Cole’s adhesive with Soper’s disc, and the Examiner’s contrary finding is
based in impermissible hindsight. Appeal Br. 26–27. We disagree.
Although Soper discloses retaining a lens to the apertured disc by suction,
Soper also teaches securing the disc to the mount using an adhesive. Soper
4:9–11. Thus, Soper’s disc already includes an adhesive positioned between
the disc and the mount’s surface to which the disc is secured. The Examiner
finds, and Appellant does not dispute, that Cole teaches using silicone
adhesives for securing a lens blocking pad to a mount. Final Act. 3. To the
extent Appellant contends claim 1 requires an adhesive positioned on the
surface to which a lens is adhered, Cole teaches providing the disclosed
adhesive to both sides of a blocking pad for that purpose. Cole 6:1–9.
Appellant argues the claimed invention provides a combination of
adhesion and suction to retain a lens. Appeal Br. 28–29. This argument is
not persuasive. As noted, Soper also provides a combination of suction and
adhesion in the process of retaining a lens. Moreover, Appellant does not
present credible evidence that the combination of adhesion and suction
yields more than their expected cumulative effects. See In re Kerkhoven,
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626 F.2d 846, 850 (CCPA 1980) (stating it is prima facie obvious to
combine two different materials useful for the same purpose to form a third
material which is to be used for that purpose).
For the foregoing reasons, Appellant has not persuasively
demonstrated reversible error in the Examiner’s obviousness determination
with regard to claim 1. Appellant does not separately argue any other claim.
Accordingly, the Examiner’s rejection under 35 U.S.C. § 103 is sustained.

CONCLUSION
The Examiner’s decision rejecting claims 1, 2, and 4–9 is affirmed.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–9 103 Felten, Soper, Cole 1, 2, 4–9

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