Ex Parte Moseler et al

Patent Trial and Appeal BoardApr 6, 2016

12888706 (P.T.A.B. Apr. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/888,706 09/23/2010 Doris MOSELER 23643 7590 04/08/2016 Barnes & Thornburg LLP (IN) 11 S. Meridian Street Indianapolis, IN 46204 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. 47923-221753 4938 EXAMINER LAZORCIK, JASON L ART UNIT PAPER NUMBER 1741 NOTIFICATION DATE DELIVERY MODE 04/08/2016 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): INDocket@btlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DORIS MOSELER, POLINA EBELING, STEFFEN KOERNER, RALF BONITZ, FRANK PETERS, and HELMUT LARM 1 Appeal2014-008667 Application 12/888,706 Technology Center 1700 Before JEFFREY T. SMITH, KAREN M. HASTINGS, and JEFFREY R. SNAY, Administrative Patent Judges. SNAY, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 1--4 and 6-11. We have jurisdiction under 3 5 U.S.C. Â§ 6(b). We affirm. 1 Appellants identify Doctor Optics, GmbH as the real party in interest. App. Br. 1. Appeal2014-008667 Application 12/888,706 The subject matter involved in this appeal relates to method for producing a lens for use in a lighting device, e.g., a motor vehicle headlamp. Spec 1. 2 Appellants direct their arguments to claims 1, 9 and 10 which are reproduced from the Claims Appendix of the Appeal Brief as follows: 1. A method of manufacturing a lens having first and second opposite optical surfaces with the first optical surface having a convex shape, comprising the steps of: - melting a glass; - portioning a gob from the melt; - adjusting the temperature of the gob to a viscosity suited for hot-pressing of the gob; - providing a mold having a first generally concave mold surface and a second mold surface for forming said first and second optical surfaces, respectively, of the lens; - feeding the gob into the open mold; - hot-pressing the gob in said mold for generating said lens including providing areas having different optical scattering effects on at least one of said first and second optical surfaces; - cooling the lens down to room temperature; and - providing a diffractive structure on at least one of said first and second optical surfaces. 9. The method of claim 8, wherein the diffractive structure is provided only in an upper half of the lens. 10. The method of claim 1, wherein the diffractive structure is provided only in an upper half of the lens. 2 We cite to the Specification ("Spec.") filed Sep. 23, 2010; Non-Final Office Action ("Non-Final") dated Nov. 15, 2013; Examiner's Answer ("Ans."); and Appellants' Appeal Brief ("App. Br.") and Reply Brief ("Reply Br."). 2 Appeal2014-008667 Application 12/888,706 REJECTION The Examiner maintained the following ground of rejection: 3 Claims 1--4 and 6-11 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Bonitz, 4 Lindae, 5 Ito6 and Gage. 7 DISCUSSION Appellants argue claims 1--4, 6-8 and 11 as a group. App. Br. 2-10. We select claim 1 as representative and decide the propriety of the Rejection as applied to these claims based on claim 1. 37 C.F.R. Â§ 41.37(c)(l)(iv). Thus, claims 2--4, 6-8 and 11 stand or fall with claim 1. See id. Claims 9 and 10 are separately argued and will be separately addressed. Appellants claim a method for manufacturing a lens which includes, inter alia, hot pressing a glass gob in a mold to form an optical surface having areas of different optical scattering effects, and providing a diffractive structure on a surface of the lens. App. Br. 12 (claim 1). According to Appellants, transferring surface roughness from a mold to part of a lens surface favorably affects the light to dark transition of a motor vehicle headlamp. Spec. i-fi-125-26. 3 Ans. 2; Non-Final 3-13. 4 WO 03/107063 Al, published Dec. 24, 2003 ("Bonitz"). Appellants do not dispute the Examiner's reliance on US 2005/0200976 Al as an English- language equivalent ofBonitz. Compare Non-Final 4 with App. Br. 2-10 and Reply Br. 1-10. 5 US 5,014,173, issued May 7, 1991 ("Lindae"). 6 US 5,378,255, issued Jan. 3, 1995 ("Ito"). 7 US 1,561,149, issued Feb. 9, 1923 ("Gage"). 3 Appeal2014-008667 Application 12/888,706 The Examiner found that Bonitz discloses a motor vehicle headlamp lens having a forward surface, a region of which is roughened by the presence of microstructures formed in the surface of the lens. Non-Final 4--5 (citing Bonitz iii! 7-8 and Figures 4--5). Appellants do not dispute that Bonitz provides the roughened surface region to favorably affect the light to dark transition of a motor vehicle headlamp. See App. Br. 5 ("Bonitz' goal of providing superimposed microstructures is to provide a proper transition from light to dark."). The Examiner further found that Gage teaches providing a diffractive structure on a rear surface of a headlamp for the purpose of reducing glare. Non-Final 9 (citing Gage p. 1, 11. 27-33). See also Gage Fig. 1 (depicting diffraction structure 5, 6 on a rear surface of lens 5). The Examiner determined that it would have been obvious to one of ordinary skill in the art to provide Bonitz's headlamp lens with a diffractive structure to reduce glare, as taught by Gage. Id. 11. Appellants contend that adding a diffractive element would "change the operation of the Bonitz headlamp," App. Br. 5, "destroy the advantageous effect of the Bonitz lens," Id. 6, and "change Bonitz['s] desired soft-focus effect," Reply Br. 2. However, Appellants do not present any technical reasoning or point us to any factual evidence to support these contentions. On this record, we are not persuaded that the light scattering properties of Bonitz's forward lens surface would have been negatively impacted solely because the light entering the lens had been diffracted. 8 8 Appellants' contention that a diffractive element would alter Bonitz's light scattering effect also is inconsistent with the Specification where Appellants describe their diffraction element and roughened lens surface as achieving 4 Appeal2014-008667 Application 12/888,706 Neither are we persuaded by Appellants' argument that the Examiner has not explained how adding a diffractive structure to Bonitz's lens would affect the optical characteristics imparted by the surface microstructures. App. Br. 4---6; Reply Br. 2---6. As noted, Appellants have not directed us to evidence that adding a diffraction element to Bonitz' s lens would have had any effect on the optical characteristics of Bonitz's lens, other than the desired effect of reducing glare. Moreover, "[ o ]bviousness does not require absolute predictability of success ... all that is required is a reasonable expectation of success." In re Kubin, 561F.3d1351, 1360 (Fed. Cir. 2009). Absent any evidence to the contrary, we are persuaded that one of ordinary skill would have reasonably expected these prior art elements to perform according to their established functions-the diffracting element to diffract light entering the lens and the roughened surface to scatter light emitted from the lens. Appellants present a series of arguments directed to the relied upon references individually. E.g. App. Br. 7 (arguing that neither Bonitz nor Lindae disclose press molding a glass gob); Reply Br. 6-7 (arguing that Ito's process does not result in a lens surface having different optical scattering effects); Id. 8 (arguing that neither Lindae nor Ito disclose a hot pressing step "resulting in a lens as recited in claim 1 "). We find each of these arguments unpersuasive because they address the references individually, without regard to the collective teaching of the prior art which the Examiner relied upon in reaching the obviousness determination. See In re Keller, 642 different optical effects without indicating any impact of one upon the other. See Spec. i-fi-125, 82. 5 Appeal2014-008667 Application 12/888,706 F.2d 413, 425 (CCPA 1981) ("[O]ne cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references."). Appellants additionally argue that the Examiner did not explain "how Lindae's step of pressing a glass objective in a mold is to be used in Bonitz," or "how Ito's steps 1-7 are to be used in Bonitz-Lindae so as to arrive at the subject matter of Appellants' claim 1." App. Br. 8-9. We disagree. The Examiner explained that Bonitz discloses a headlamp lens having a roughened optical surface, without identifying any particular method for its manufacture. Non-Final 5. The Examiner further explained that Lindae expressly teaches that a headlamp lens having a roughened optical surface may be fabricated by press-molding using a mold surface that has microelevations, without identifying details of the molding operation. Non- Final 6-7. Lastly, the Examiner explained that Ito teaches details of a glass lens molding operation including melting glass, portioning a gob, adjusting viscosity of the gob, feeding the gob into a mold, hot pressing and cooling. Non-Final 8. We are persuaded that the Examiner adequately explained the reasoning underlying the obviousness determination based upon these prior art disclosures. For the foregoing reasons, we sustain the Examiner's rejection of claims 1--4, 6-8 and 11. Appellants' sole additional argument with regard to claims 9 and 10--- that the Examiner provided "no evidence" to support the finding that providing the diffractive element only within the upper half of the lens surface reduces unwanted glare while directing any unobstructed glare downwardly against a road surface (App. Br. 10}-lacks persuasive merit. 6 Appeal2014-008667 Application 12/888,706 The Examiner expressly cited Gage as evidence in support of the above- noted finding. Non-Final 12 (citing Gage p. 2, 11. 108-119, Figs. VI and VII). Gage's Figure VI depicts a diffraction element limited to the upper half of a lens, which according to Gage causes the lens "to direct any unobstructed glare from the lamp downwardly only and against the road." Gage p. 2, 11. 108-114. Accordingly, we also sustain the Examiner's Rejection of claims 9 and 10. DECISION The Examiner's decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended 35 C.F.R. Â§ 1.136. AFFIRMED 7