Ex Parte Mumme

Patent Trial and Appeal Board

Dec 28, 2012

11013164 (P.T.A.B. Dec. 28, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/013,164 12/15/2004 Frank Mumme HER007 P448 2223
277 7590 12/31/2012
PRICE HENEVELD LLP
695 KENMOOR SE
P O BOX 2567
GRAND RAPIDS, MI 49501
EXAMINER
HEITBRINK, JILL LYNNE
ART UNIT PAPER NUMBER
1743
MAIL DATE DELIVERY MODE
12/31/2012 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 FRANK MUMME
____________

Appeal 2011-010410
Application 11/013,164
Technology Center 1700
____________

Before CHUNG K. PAK, HUBERT C. LORIN, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge.

DECISION ON APPEAL
Frank Mumme (“Appellant”) appeals under 35 U.S.C. § 134 from the
final rejection of claims 1-3, 5, 8-17, 19-20, and 22, directed to a method for
injection molding molten materials in a mold. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

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Application 11/013,164

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STATEMENT OF THE CASE
Claim 1 is illustrative of the subject matter on appeal:
1. A method for injection molding molten materials in a mold that
has a mold surface which comes into contact with the material comprising:

providing the mold surface with a surface texture for obtaining a
specified gloss level and/or color value for an injection-molded part by
substantially exactly reproducing the mold surface on a part surface of the
injection-molded part;

providing the mold surface with at least one thermal insulating coating
selected from the group consisting of titanium nitride (TiN), titanium carbon
nitride (TiCN), chromium nitride (CrN), tungsten carbide/carbon (WC/C),
titanium aluminium nitride (TiAlN), Al2O3, (A1Cr)2O3 and SiO2;

controlling the temperature of the mold surface;

introducing the molten material into the mold;

cooling the mold surface by way of a temperature-control so that the
molten material in the mold solidifies; and

removing an injection-molded part from the mold; wherein the
thickness of the coating for the mold surface is selected in coordination with
a heat penetration coefficient of the material of the coating, so that
premature freezing of the molten material before it has penetrated into the
surface texture of the mold is delayed and, thus, the specified gloss level
and/or color value for the injection-molded part is obtained.

The Examiner relies on the following evidence of unpatentability:

Ohman US 2003/0047823 A1 Mar. 13, 2003

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THE REJECTION
Appellant seeks our review of the final rejection of claims 1-3, 5, 8-
17, 19-20, and 22 under 35 U.S.C. § 103(a) as unpatentable over Ohman.
ANALYSIS
The Final Office Action contains seven grounds of rejection, each of
which is addressed in the Appeal Brief. All of the rejections are withdrawn
in the Answer, except for the one rejection recited above. Although the
statutory basis and evidence for the sole surviving rejection remains the
same, the Grounds of Rejection stated in the Answer include many pages of
new analysis, and refer to newly-cited portions of Ohman, that are not
reflected in the Final Office Action. Compare Final Office Action ¶¶ 18-19
to Ans. 3-8. Appellant responds by filing a Substitute Appeal Brief, which
the Examiner enters and considers as a Reply Brief.1
Having carefully considered each of Appellant’s arguments for
patentability, we agree with the Examiner that the subject matter of claims 1-
3, 5, 8-15, 19-20, and 22 would have been obvious to an ordinary artisan
within the meaning of section 103(a) in view of Ohman.
Appellant argues that Ohman “is drawn to a method of making a mold
used in molding plastic,” whereas claim 1 is “drawn to molding plastic
materials.” App. Br. 25. The Examiner responds that Ohman “discloses
injection molding a plastic element such as a compact disc in paragraph
[0001] and Figures 1-3 show the injection molding operation.” Ans. 8.
Appellant appears to concede this point. Reply Br. 5 (last paragraph)

1 We refer to the Final Office Action mailed July 12, 2010, the Examiner’s
Answer mailed February 14, 2011 (“Ans.”), the Appeal Brief filed
December 2, 2010 (“App. Br.”), and the Reply Brief fashioned as a
Substitute Appeal Brief filed April 14, 2011 (“Reply Br.”).
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Application 11/013,164

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(confirming that Ohman discloses a “second molding process” wherein a
“compact disc is formed by introducing molten material into the mold”). On
this record, the evidence supports the Examiner’s finding that Ohman
discloses “[a] method for injection molding molten materials in a mold” as
specified in claim 1.
Appellant also argues that Ohman’s mold coating, not mold surface,
provides the “surface texture for obtaining a specified gloss level and/or
color value for an injection-molded part.” Claim 1; App. Br. 25. The
Examiner points out that claim 1 similarly specifies a coated mold surface.
Ans. 9 (claim 1 specifies “providing the mold surface with at least one
thermal insulating coating”) (quoting claim 1). The Examiner observes that
“the coating is part of the mold surface and the coating is the mold surface
which comes into contact with the [molten injected] material.” Id. On that
basis, the Examiner finds that Ohman’s coating layer 7 is “the mold surface
with a surface texture” responsible for “substantially exactly reproducing the
mold surface on . . . the injection molded part 3.” Id.; see Ohman Figures.
The evidence supports the Examiner’s findings on this point.
Appellant contends that Ohman fails to select a coating thickness in
coordination with the heat penetration coefficient of the coating material as
specified in claim 1. Reply Br. 6-7. The evidence, however, supports the
Examiner’s finding that Ohman optimizes the thickness of the coating layer
and, further, adapts the “heat transfer capacity and/or the heat capacity of the
matrix” in order to delay a “freeze” effect and thereby “enhance the
replication capacity.” Ans. 7-8 (citing Ohman ¶ [0012], describing selection
of optimal coating thickness) (quoting Ohman ¶ [0013], describing the
undesirable “freeze” effect that occurs when molten injected material begins
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to solidify before it has penetrated the surface texture of a mold; further,
describing adapting the “heat transfer capacity” to delay the freeze effect and
thereby “enhance the replication capacity”). In other words, Ohman
identifies the same problem and applies substantially the same solution as
Appellant. See Spec. ¶¶ [0006], [0014]-[0015] (by “coordinating the coating
thickness with the heat penetration coefficient of the coating material” the
“‘freeze’ effect” is delayed and “the accuracy” of replication is improved).
No persuasive argument or evidence having been brought forward by
Appellant, we affirm the rejection of claims 1-3, 5, 8-15, 19-20, and 22 as
obvious under section 103(a) over Ohman.
The Examiner fails to articulate reasoning with a rational
underpinning to support a conclusion that the subject matter of claims 16
and 17 would have been obvious over Ohman. See In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006) (cited approvingly in KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007)). Claim 16 specifies “an adhesive layer” that
“is applied between the mold surface and the coating.” Claim 17 depends
from claim 16 and further specifies that “the adhesive layer is selected from
the group consisting of titanium, chromium and TiN.” The Examiner finds
that Ohman discloses a mold surface “with at least one coating of titanium
nitride.” Ans. 7 (citing Ohman ¶ [0219] and claim 8). Appellant argues that
Ohman “does not disclose an adhesive [layer] application between a mold
surface and a coating, much less an adhesive layer selected from the group
consisting of titanium, chromium and TiN.” Reply Br. 10; App. Br. 25-26.
We recognize that both the coating layer and the adhesive layer of the
invention may be composed of titanium nitride. Compare claim 1
(specifying “at least one thermal insulating coating” selected from a group
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that includes “titanium nitride (TiN)”) to claim 17 (specifying an “adhesive
layer” selected from a group that includes “TiN”). Nonetheless, claim 16
specifies a coating layer that is distinct from the adhesive layer. Claim 16
(“adhesive layer is applied between the mold surface and the coating”).
It is unclear to us, and the Examiner does not adequately explain, how
the single layer of titanium nitride (namely, coating layer 7) described in
Ohman at paragraph [0219] represents “both the coating [layer] and the
adhesive layer” specified in claim 16. Ans. 10. The Examiner identifies no
disclosure in Ohman that suggests applying an adhesive layer “between the
mold surface and the coating” as specified in claim 16. Ans. 7, 10-11. On
this record, the Examiner fails to prima facie show that claim 16, or claim 17
which depends therefrom, would have been obvious over Ohman. We thus
reverse the rejection of claims 16 and 17.

CONCLUSION
We affirm the rejection of claims 1-3, 5, 8-15, 19-20, and 22. We
reverse the rejection of claims 16 and 17.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED-IN-PART

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