Ex Parte Wintzer et al

Patent Trial and Appeal Board

Jun 21, 2017

13505222 (P.T.A.B. Jun. 21, 2017)

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.
13/505,222 04/30/2012 Wolfram Wintzer 47923-220768 6775
23643 7590 06/23/2017
Barnes & Thornburg LLP (IN)
11 S. Meridian Street
Indianapolis, IN 46204
EXAMINER
LAZORCIK, JASON L
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
06/23/2017 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 WOLFRAM WINTZER, PETER MUHLE, LARS ARNOLD,
ALOIS WILLKE, HAGEN GOLDAMMER, and ANDREAS BAATZSCH
Appeal 2016-003912
Application 13/505,2221
Technology Center 1700
Before TERRY J. OWENS, CHRISTOPHER L. OGDEN, and
JEFFREY R. SNAY, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 25—35 in the above-identified application.2 We
have jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Docter Optics SE. See
Appeal Brief 1, Sept. 23, 2015 [hereinafter Appeal Br.].
2 Final Office Action, May 13, 2015 [hereinafter Final Action]; Examiner’s
Answer, Jan. 29, 2016 [hereinafter Answer], The Appellants also appealed
from the Examiner’s rejection of claim 46, see Appeal Br. 1, but the
Examiner withdrew this rejection in the Answer, see Answer 2, 21—22.
Appeal 2016-003912
Application 13/505,222
BACKGROUND
Appellants’ invention concerns a method for making “a solar
concentrator made from transparent material, wherein the surface
concentrator comprises a light entry (sur)face, a light exit (sur)face, and a
light guide portion arranged between the light entry surface and the light exit
surface.” Spec. 1:8—17.3 The invention aims “to reduce the costs for
manufacturing solar concentrators,” and “to produce solar concentrators of a
particularly high quality within a restricted budget.” Id. at 2:1—3.
Independent claim 25 is representative:
25. A method for manufacturing a solar concentrator
from transparent material having a light entry face, a light exit
face and a light guide portion arranged between the light entry
face and the light exit face and tapering in the direction of the
light exit face, which light guide portion is restricted by a light
guide portion surface between the light entry face and the light
exit face, the method comprising the steps of:
providing a first mold, adapted for molding the light
entry face;
providing at least a second mold, adapted for molding the
light exit face;
drawing the transparent material into the second mold by
means of pressure below atmospheric pressure; and
press molding a transparent material between said first
mold and said second mold for creating the solar concentrator,
such that the light guide portion surface merges into the blank
molded light exit face with a continuous first derivative.
Appeal Br. 16. Claim 36, 37, and 44 are also independent. See id. at 17—19.
3 Substitute Specification (without markings), Apr. 30, 2012 [hereinafter
Spec.].
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Application 13/505,222
The Examiner’s sole pending ground of rejection4 rejects claims 25—
35 under 35 U.S.C. § 103(a) as being unpatentable over Hosoe5 in view of
Krischke.6 See Final Action 4—11.
Appellants argue claims 25—35 as a group. See Appeal Br. 5—11, 13.
Therefore, consistent with 37 C.F.R. § 41.37(c)(l)(iv) (2016), we limit our
discussion to claim 25. Claims 26—35 stand or fall with claim 25.
DISCUSSION
The Examiner finds that Hosoe discloses each of the limitations of
claim 25 except for the step of “drawing the transparent material into the
second mold by means of pressure below atmospheric pressure.” Final
Action 5—6. In particular, the Examiner finds that the light entry face, light
exit face, and light guide portion of claim 25 are as identified in the
Examiner’s annotated Figure 11 of Hosoe, reproduced as follows:
4 The Examiner has withdrawn a rejection of claim 46 under 35 U.S.C.
§ 112, 4th paragraph, a rejection of claim 46 under 35 U.S.C. § 103(a), and a
rejection of claims 33—49 on grounds of nonstatutory double patenting. See
Answer 2—3.
5 Hosoe et al., US 2005/0268660 A1 (published Dec. 8, 2005).
6 Krischke, DE 100 20 396 Al (published Nov. 15, 2001). Citations to
Krischke are to a machine translation submitted by the Examiner on
November 20, 2014. See Final Action 4. Appellants submitted a different
machine translation on July 9, 2015. See Appeal Br. 5. However, the
version submitted by Appellants contains missing or untranslated portions
that are present in the version submitted by the Examiner. Our decision does
not depend on the choice between these two translations.
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Application 13/505,222
1
Final Action 5. Figure 11 “shows a simplified sectional view of a mold
which has a preset space to accept the flow of a glass material.” Hosoe
23, 109. The figure shows glass material G, which has been placed into
optical transfer surface cavity 3a, between upper and lower mold members 1
and 3, respectively. See id. H 109, 142. The Examiner’s annotations label
the top surface of the optical component as the light entry face, the bottom as
the light exit face, and the tapered surface adjacent to the bottom as the light
guide portion. See Final Action 5. The Examiner finds that the glass lens
structure is a solar concentrator as required by claim 25 because the term
solar concentrator is a functional limitation, and the biconvex lens depicted
in Figure 11 would be capable of focusing, and thus concentrating, solar
light. See Final Action 5; Answer 7—8.
The Examiner states that “Hosoe is silent regarding a step of drawing
the transparent material into the second mold by means of a pressure below
atmosphere” as required by claim 25, but finds that Krischke teaches this
limitation. See id. at 6—8. In particular, the Examiner finds that Krischke,
like Hosoe, teaches molding a glass body having a deeply concave surface
with structural components corresponding to the light entry face, light exit
face, the light guide portion, and first and second molds of claim 25. See id.
at 6—7. The Examiner also finds that Krischke teaches pulling glass material
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Application 13/505,222
into the depression of a mold structure by pulling a vacuum through
channels in the second mold. See id. at 7—8. The Examiner determines that
[i]n view of Krischke, one of ordinary skill in the art would have
found it an obvious matter to modify the Hosoe lower mold to
provide a means for forming a pressure below atmospheric pres­
sure in the second mold at least partially during blank molding
as a means to expedite mold filling with the heat softened pre­
form and to prevent premature solidification of the molten glass
within the mold.
Id. at 8.
Appellants argue that the term solar concentrator refers in the art to a
structure that “has an input surface larger than its output surface and is
designed so that light entering the input surface is funneled to and leaves the
output surface (except for minor losses).” Appeal Br. 6. In light of this
definition, Appellants argue that the Examiner has not provided a proper
explanation as to why Hosoe discloses a solar concentrator. See id. at 6—9.
Appellants also argue that the Examiner has failed to establish that solar
concentration is an inherent characteristic of the optical device disclosed by
Hosoe’s optical device. See id. at 6, 8.
We do not find these arguments persuasive, as Appellants do not
support their proposed definition of solar concentrator with a citation to any
evidence in the Specification, a dictionary, or elsewhere. We apply to claim
terms “the broadest reasonable meaning of the words in their ordinary usage
as they would be understood by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or otherwise that may
be afforded by the written description contained in the applicant's
specification.” In re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997). Based
on this appeal record, the broadest reasonable interpretation of the term solar
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Application 13/505,222
concentrator is that given by the Examiner: it is a functional term that refers
to any device that concentrates solar light. See Final Action 5; Answer 7—8.
Appellants do not dispute that Hosoe discloses a biconvex lens that has the
function of focusing solar light. See Answer 9 (noting that Appellants have
acknowledged that Hosoe’s biconvex lens has a focusing function (citing
Appeal Br. 12)). Therefore, we find no reversible error in the Examiner’s
finding that Hosoe teaches a solar concentrator.
Appellants also argue that Hosoe does not disclose the shape of the
light guide portion as required by claim 25. See Appeal Br. 12—13. First,
Appellants argue that the portion of Hosoe’s optical element identified by
the Examiner as the light guide portion does not taper in the direction of the
light exit face. Appeal Br. 12 (citing Hosoe Fig. 13). We do not find this
argument persuasive of reversible error, because the portion of Hosoe’s lens
identified by the Examiner as the light guide portion is clearly tapering
toward the portion identified as the light exit face. Moreover, Appellants’
argument is conclusory and does not specifically address the Examiner’s
interpretation of Hosoe’s Figure 11.
Second, Appellants argue that the light guide portion does not merge
into the exit face “with a continuous first derivative.” See Appeal Br. 12—13.
Appellants claim that “[a] function that has a continuous derivative is a
continuous function (e.g., the straight-line shape shown in Applicant’s Fig.
3).” Id. at 12. We do not find this argument persuasive, for the
mathematical reasons set forth by the Examiner in the Answer, to which
Appellants did not offer rebuttal evidence in the Reply Brief,7 which shows
7 Reply Brief, Mar. 11, 2016 [hereinafter Reply Br.].
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Application 13/505,222
that a curved line may have a continuous first derivative. See Answer 18—
21. Moreover, we note that in Appellants’ Figure 5—an enlargement of
Figure 3—the light guide portion surface 5 merges into the blank molded
light exit face 3 at a curved surface 8, which is not consistent with
Appellants’ interpretation of claim 25. See Spec. 7:12—14, Fig. 5.
Third, in the Reply Brief, Appellants newly argue that “[i]t is well
known that a light guide works on a simple principle of total internal
reflection. That is, all light entering a light entry face is reflected along a
guide portion and exits a light exit face. Such total reflection does not form
an image.” Reply Br. 2. According to Appellants,
Hosoe does form an image as admitted by, for example, [the Ex­
aminer’s statement that Hosoe’s optical device is a lens with a
focal point] and one of ordinary skill in the art would understand
that Hosoe’s lens that forms an image cannot comprise the light
guide portion and is, therefore, not a solar concentrator as
claimed.
Id. Because Appellants do not support their interpretation of the term light
guide portion with any citation to evidence, we do not find this argument
persuasive of reversible error in the rejection. For the above reasons,
Appellants have not persuaded us that Hosoe does not disclose the shape of
the light guide portion as required by claim 25.
Appellants also argue that the Examiner improperly combined
Krischke with Hosoe. See Appeal Br. 7—8, 10—11, 13; Reply Br. 3—5. First,
Appellants argue that Krischke does not teach a device that is capable of
functioning as a solar concentrator. See Appeal Br. 7—8. We do not find this
argument persuasive of reversible error, as the Examiner’s rejection does not
rely on this finding. See Answer 14. The Examiner relies on Hosoe for
disclosing a solar concentrator. See Final Action 5; Answer 7—10.
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Application 13/505,222
Second, Appellants argue that the Examiner has not articulated how or
why a person of skill in the art would have used the vacuum disclosed in
Krischke for drawing glass material into the mold, when a vacuum is already
disclosed in Hosoe. See Appeal Br. 10-11. We do not find this argument
persuasive, because the Examiner has articulated a reason why a person of
ordinary skill in the art would have used the vacuum means of Krischke,
even though one already exists in Hosoe: to expedite mold filling and to
prevent premature solidification of the molten glass. See Final Action 8;
Answer 17. Furthermore, “it is not necessary that the inventions of the
references be physically combinable to render obvious the invention under
review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). The issue is
whether the combined teachings of Hosoe and Krischke would have
suggested the invention of claim 25 to a person of ordinary skill in the art.
In re Keller, 642 F.2d413, 425 (CCPA 1981).
Third, Appellants argue that Hosoe teaches away from combination
with Krischke. Id. at 11, 13; Reply Br. 3—5. Appellants argue that “Hosoe
clearly states that it is important to evacuate the molding chamber in a
moment instead of evacuating the molding chamber by a vacuum pump.”
Reply Br. 3; see also id. at 3^4 (citing Hosoe 64, 75, 143). This argument is
not persuasive of reversible error, because Appellants have not shown that
Krischke specifically teaches the use of a vacuum pump to the exclusion of a
vacuum reservoir.
Appellants also argue that Hosoe teaches away from combination with
Krischke because the Examiner has not shown such a combination to have
an effect, or the combination would have an adverse affect, on transferability
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Application 13/505,222
of a surface pattern on the mold to the optical element. See Appeal Br. 13;
Reply Br. 4—5. Appellants argue that Hosoe teaches that
it is important to keep on pressing the glass against the optical
transfer surface of the mold until the glass temperature falls down
to about the glass transition temperature in order to improve the
transferability. This can effectively suppress the generation of
shrink of the glass and deterioration of the optical transfer surface
shape.
Appeal Br. 13 (quoting Hosoe 1102 with emphasis); see also Reply Br. 4—5
(citing Hosoe 194). We do not find this argument persuasive of reversible
error, because Appellants have not shown that a skilled artisan would have
expected that the use of a vacuum to draw glass into the mold would
adversely affect the continued pressing of the mold as taught by Hosoe, or
would result in adverse effects on transfer. We also note that claim 25 does
not require the preservation of an optical transfer surface shape. See Appeal
Br. 16.
Finally, Appellants argue that a skilled artisan would not have
modified Hosoe with the teachings of Krischke because if the mold chamber
were evacuated as in Hosoe, there would be no potential for any significant
sucking force by using an additional vacuum. See Appeal Br. 13; Reply Br.
5. This argument appears to assume that the mold chamber would be
evacuated prior to filling the mold with glass material; however, Appellants
have not persuasively explained why that would be the case. For example,
we note that in one embodiment, Hosoe teaches that evacuation occurs “after
putting the glass material in the mold.” Hosoe 1143. Thus, Appellants have
not persuasively shown that the teachings of Hosoe and Krischke are
incompatible.
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Application 13/505,222
For the above reasons, Appellants have not persuaded us of reversible
error in the Examiner’s rejection of claim 25. For the same reasons, we
affirm the Examiner’s rejection of claims 26—35.
DECISION
The Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(l)(iv) (2016).
AFFIRMED
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