Ex Parte Wintzer et alDownload PDFPatent Trial and Appeal BoardJun 21, 201713505222 (P.T.A.B. Jun. 21, 2017) Copy Citation 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.]. 2 Appeal 2016-003912 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. 3 Appeal 2016-003912 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 4 Appeal 2016-003912 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 5 Appeal 2016-003912 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.]. 6 Appeal 2016-003912 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. 7 Appeal 2016-003912 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 8 Appeal 2016-003912 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. 9 Appeal 2016-003912 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 10 Copy with citationCopy as parenthetical citation