WATLOW ELECTRIC MANUFACTURING COMPANY

Patent Trials and Appeals Board

Jul 31, 2020

2019005706 (P.T.A.B. Jul. 31, 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.
13/629,999 09/28/2012 Martin WALLINGER 0100H-000201/US 1098
110407 7590 07/31/2020
Burris Law, PLLC
300 River Place Drive, Suite 1775
Detroit, MI 48207
EXAMINER
MELENDEZ, ARMAND
ART UNIT PAPER NUMBER
1742
NOTIFICATION DATE DELIVERY MODE
07/31/2020 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):
docketing@burrisiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN WALLINGER, GERHARD SCHEFBÄNKER,
WOLFGANG PÖSCHL, GERNOT ANTOSCH, REINHARDT LEHNERT,
MICHAEL KÜBLER, and AUGUST BURR
Appeal 2019-005706
Application 13/629,999
Technology Center 1700

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
DONNA M. PRAISS, Administrative Patent Judges.

PRAISS, 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, 3, 6–8, 10–12, and 15–17. See Final
Act. 1. An oral hearing was held on July 20, 2020. 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 Watlow Electric Manufacturing
Company as the real party in interest. Appeal Br. 2.
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Application 13/629,999
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CLAIMED SUBJECT MATTER
The claims are directed to a molding system to heat plastic material
and, more particularly, a molding system comprising a layered heater
integrally formed with a cooling unit to form an integrated unit. Spec. ¶¶ 2,
4, 6, 8. Claim 1, reproduced below, is illustrative of the claimed subject
matter (disputed limitations italicized):
1. A heating/cooling module for a molding system
comprising:
a die insert including a mold surface, the mold surface
defining a part of a mold cavity of a mold;
a cooling unit including a first surface facing the die
insert and a second surface opposing the first surface for
cooling the mold surface; and
a layered heater directly formed on the first surface of
the cooling unit by a thermal spray process, the layered heater
being a coating on the cooling unit such that the die insert is
heated and cooled by one single integrated structure,
wherein the die insert is raised from the first surface of
the cooling unit to define a step between the die insert and the
first surface of the cooling unit, and no portion of the cooling
unit defines a mold surface of the mold, and
wherein the layered heater functions to heat the mold
surface, and the cooling unit functions to cool the mold surface
such that the integrated structure is capable of variothermal
molding.
Appeal Br. 19 (Claims Appendix).
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REFERENCES
The Examiner relies upon the following prior art references.
Name Reference Date
Farrell US 3,876,358 Apr. 8, 1975
Pleasant US 5,261,806 Nov. 16, 1993
Baumgartner US 5,388,803 Feb. 14, 1995
Kang US 7,291,004 B2 Nov. 6, 2007
Burr US 2007/0039943 A1 Feb. 22, 2007
Chen US 2010/0159061 A1 June 24, 2010
Krömmer US 2011/0229595 A1 Sept. 22, 2011
Takashima2 WO 2011/158700 A1 Dec. 22, 2011

REJECTIONS
The Examiner maintains the following rejections. Final Act. 2–11.
Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis
1, 3, 11, 12 103(a) Kang, Takashima, Burr
6 103(a) Kang, Takashima, Burr, Krömmer
7, 16, 17 103(a) Kang, Takashima, Burr, Baumgartner
8 103(a) Kang, Takashima, Burr, Pleasant
10 103(a) Kang, Takashima, Burr, Farrell
15 103(a) Kang, Takashima, Burr, Chen
1, 3, 6, 11, 12 103(a) Kang, Krömmer, Burr
7, 16, 17 103(a) Kang, Krömmer, Burr, Baumgartner
8 103(a) Kang, Krömmer, Burr, Pleasant
10 103(a) Kang, Krömmer, Burr, Farrell
15 103(a) Kang, Krömmer, Burr, Chen

2 Citations in the record to Takashima (and also in this Decision) are to the
corresponding English language publication US 2013/0217855 A1,
published Aug. 22, 2013.
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OPINION
Obviousness over Kang, Takashima, and Burr
The Examiner rejects claims 1, 3, 11, and 12 under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Kang in view of Takashima and Burr.
Final Act. 2. The Examiner adds Krömmer, Baumgartner, Pleasant, Farrell,
or Chen to reject claims 6–8, 10, and 15–17. Final Act. 4–7.
Appellant does not argue the claims and rejections based on Kang,
Takashima, and Burr separately, but, rather, asserts that the additional
references do not cure the deficiencies of Kang presented with respect to
claim 1. Appeal Br. 14–16. Thus, the issues are the same for all the claims
and rejections based on Kang, Takashima, and Burr. We therefore select
claim 1 as representative.

Product by process layered heater limitation “thermal spray process”
The first issue is whether Appellant has identified a reversible error in
the Examiner’s determination that Kang’s layered heater is not structurally
distinguished by the language “thermal spray process” recited in claim 1.
Appellant contends that a structure is implied by the product-by-process
limitation, asserting “a thermally sprayed material is porous, which one
skilled in the art understands, along with the attendant changes in properties
due to this porous structure.” Appeal Br. 9.
Appellant’s argument is not persuasive of reversible error. As the
Examiner notes, Appellant provides no evidence to support the claim that
thermal spraying results in porous materials. Ans. 12. It is well settled that
arguments of counsel cannot take the place of factually supported objective
evidence. See, e.g., In re Huang, 100 F.3d 135, 139–40 (Fed. Cir. 1996); In
re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). The Examiner also notes
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that the prior art combination includes Takashima (or Krömmer as applied in
the alternative rejection of claim 1), which discloses thermal spraying and,
therefore, would be expected to have the alleged porosity. Ans. 12–13.

Takashima does not disclose a layered heater
Appellant contends Takashima discloses a heat insulating layer by a
spraying method, rather than a layered heater. Appeal Br. 9 (citing
Takashima ¶¶ 73–75). We are not persuaded of error by the Examiner
because Kang discloses that the heater includes an insulating layer and does
not exclude polyimide from among the materials with which the heater may
be made. Ans. 13; Kang 5:60–58. The Examiner further finds that
Takashima demonstrates that polyimide can be thermally sprayed, therefore,
the heater layer required by Kang may be thermally sprayed as demonstrated
by Takashima. Ans. 13; Takashima ¶¶ 73–75, 79; Kang 5:23–33, 5:40–45.

Burr does not provide motivation to form a raised die insert
Appellant contends Burr discloses a conducting ceramic (16) for
heating a cavity surface, which is completely covered by a tool element (12),
therefore, Burr’s conducting ceramic is not a die insert as required by claim
1. Appeal Br. 9. Appellant argues that because Burr’s tool element (12) is
said to cover the entire surface of a carrier element, it is not “raised from the
first surface of the cooling unit [a surface of the carrier element] to define a
step between the die insert and the first surface of the cooling unit” as claim
1 recites. Id. at 10. Appellant also argues Kang’s step between a die insert
and a cooling block surface is due to the die insert being “recessed” from a
surface of a mold part. Id. (citing Kang Fig. 5). According to Appellant, the
dictionary definition of “step” is “the height of one stair.” Reply Br. 3.
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Appellant argues that the die insert is elevated to a higher position from the
first surface such that it resembles a stair of a stairway formed between the
die insert and the first surface of the cooling block. Id.
We are not persuaded of error by the Examiner. Although Appellant’s
arguments suggest that the die insert cannot contact any surface of the
cooling unit, this feature is not claimed. Rather, claim 1 recites that “no
portion of the cooling unit defines a mold surface of the mold.” Ans. 14.
Thus, Appellant is distinguishing Burr based on limitations that do not
appear in the claim. In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(limitations not appearing in the claims cannot be relied upon for
patentability).
Moreover, regarding the construction of “step” recited in claim 1,
which Appellant argues (Reply Br. 3) is shown in Appellant’s Figure 1,
although the claims are interpreted in light of the specification, limitations
from the specification are not read into the claims. In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993). Even if we were to adopt Appellant’s
claim construction for “step,” Burr’s tool element 12 is raised from the
surface of the carrier element for a height that is the height of layered heater
16. At oral hearing, Appellant’s representative acknowledged that “[t]he step
is the result of making the die insert raised.” Tr. 4. Appellant’s
representative also clarified that the claimed “step” does not require that the
cooling block be larger than the heater layer as depicted in Appellant’s
Figure 1. Id. Therefore, based on this record, we are not persuaded the
Examiner’s findings regarding Burr are in error.

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Rearrangement in parts requires a single reference
Appellant argues that the claimed invention is not a mere change in
size/proportion because no single prior art reference provides a structure
similar to the claimed invention. Appeal Br. 11. According to Appellant, it is
insufficient that the parts of a reference device could be rearranged to meet
the terms of the claim. Id. at 12.
We are not persuaded by Appellant’s argument because the Examiner
provides a sufficient reason to modify Kang’s die insert, mold block/cooling
unit with the thermal spraying taught by Takashima and Burr to make a
layered heater to improve wear resistance and corrosion resistance as taught
by Takashima and supported by Krömmer. Ans. 15–15; Takashima ¶ 58;
Krömmer ¶ 15. The Examiner’s findings are supported by a preponderance
of the evidence cited in this Appeal record.

Claim as a whole provides advantage of easy positioning
Appellant argues that the claim as a whole provides a unique structure
of a die insert raised from a cooling unit to define a step that has the
advantage of being easily adapted for any existing mold parts because it can
be easily positioned relative to adjacent mold parts. Appeal Br. 13.
According to Appellant, none of the cited prior art references can achieve
this advantage. Id.
Appellant’s argument is not persuasive of error because the burden of
establishing that unexpected results support a conclusion of nonobviousness
rests with Appellant. Huang, 100 F.3d at 139. Appellant does not direct us to
any evidence of unexpected results of its alleged “unique structure” over that
of the prior art molding systems. Accordingly, Appellant’s argument is not
persuasive of Examiner error.
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Obviousness over Kang, Krömmer, and Burr
The Examiner rejects claims 1, 3, 6, 11, and 12 under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Kang in view of Krömmer and
Burr as an alternative rejection. Final Act. 7. The Examiner adds
Baumgartner, Pleasant, Farrell, or Chen to reject claims 7, 8, 10, and 15–17.
Final Act. 9–11.
Appellant does not argue the claims and rejections based on Kang,
Krömmer, and Burr separately, but, rather, asserts that neither Krömmer nor
any of the additional references cure the deficiencies of Kang presented with
respect to claim 1 over the combination of Kang, Takashima, and Burr.
Appeal Br. 14–16. Because the issues presented to us are the same for all the
rejections based on Kang, Krömmer, and Burr, we likewise affirm the
Examiner’s rejections based on these references for the same reasons
discussed above.
CONCLUSION
The Examiner’s decision to reject claims 1, 3, 6–8, 10–12, and 15–17
is AFFIRMED.
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Application 13/629,999
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C.
§ Reference(s)/ Basis Affirmed Reversed
1, 3, 11, 12 103(a) Kang, Takashima, Burr 1, 3, 11, 12
6 103(a) Kang, Takashima, Burr, Krömmer 6
7, 16, 17 103(a) Kang, Takashima, Burr, Baumgartner 7, 16, 17
8 103(a) Kang, Takashima, Burr, Pleasant 8
10 103(a) Kang, Takashima, Burr, Farrell 10
15 103(a) Kang, Takashima, Burr, Chen 15
1, 3, 6, 11,
12 103(a) Kang, Krömmer, Burr
1, 3, 6, 11,
12
7, 16, 17 103(a) Kang, Krömmer, Burr, Baumgartner 7, 16, 17
8 103(a) Kang, Krömmer, Burr, Pleasant 8
10 103(a) Kang, Krömmer, Burr, Farrell 10
15 103(a) Kang, Krömmer, Burr, Chen 15
Overall
Outcome
1, 3, 6–8,
10–12, 15–
17

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) (2018).
AFFIRMED