Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE JAMES R. SKINNER
Appeal No. 650-69
November 25, 1986
Application for Patent filed September 29, 1982, Serial No. 427,717. Mold, Molding Method And Molded Article.
Hubert E. Dubb et al. for appellant
Primary Examiner--Jay H. Woo
Before Winters, Goolkasian, and Emery
This is an appeal from the examiner's final rejection of claims 7 through 13, 20, and 21. Claims 1 through 6 and 14 through 19 remain in the case but stand withdrawn pursuant to a restriction requirement.
Appellant's invention is directed to a mold of the type used to produce plastic articles. The claimed mold is very smooth and is characterized by having a surface portion having a surface roughness of no more than about 12.5 x 10-8 meters, RMS (root mean square). The mold surface is coated with a material which is substantially void-free, non-corroding, and has a Rockwell C hardness above about 60. This is achieved by vacuum deposition or sputtering of chromium or rhodium onto the mold surface. Claim 7 is illustrative and reads as follows:
7. In a mold (24) useful for preparing a molded plastic article (10), the mold (24) having a mold surface (30) having a surface portion (32) which is replicated onto the molded plastic article (10), an improvement comprising:
wherein said surface portion (32) has a surface roughness of no more than about 12.5 x 10-8 meters, RMS; and including
a surface coating (34) covering said surface portion (32), said coating (34) being substantially void-free, substantially non-corroding when exposed to ambient atmospheric conditions, having a Rockwell C hardness above about 60 and having a surface roughness of no more than about 12.5 x 10-8 meters, RMS.
The references relied on by the examiner are:
Mizutani et al. (Mizutani) 4,138,086 Feb. 06, 1979
Nyman et al. (Nyman) 4,262,875 Apr. 21, 1981
Japan 54-25285 Feb. 26, 1979
Claims 7, 8, 11, and 12 stand rejected under 35 U.S.C. 102 over Mizutani. Claims 7 through 13, 20, and 21 stand rejected under 35 U.S.C. 103 over Mizutani in view of Nyman and further in view of Japanese Patent Pub. No. 54- 25285.
We consider first the rejection under 35 U.S.C. 102. The Mizutani reference is directed to a mold used for manufacturing contact lenses. The mold is composed of two metallic mold halves forming a cavity in which a silicone resin contact lens may be molded. The surface of each section of the mold is plated with chromium or nickel so that a contact lens having high surface optical quality can be manufactured. The mold is said to be plated with chromium or nickel and is said to impart excellent optical property to the surface of the lens. It is the examiner's position, as stated in the Final Rejection, that '[a]lthough the patentee does not explicitly disclose the properties claimed by applicant, such properties may be inherent characteristics of the reference coating.' (Emphasis added.) [FNa1] We reverse.
*2 It is by now well settled that the burden of establishing a prima facie case of anticipation resides with the Patent and Trademark Office. In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984) quoting In re Warner, 379 F.2d 1011, 1016, 154 USPQ 173, 177 (CCPA 1967). It is the examiner's position that the mold of Mizutani may inherently have the characteristics of the claimed mold. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323 (CCPA 1981). We are mindful that there is a line of cases represented by In re Swinehart, 439 F.2d 210, 169 USPQ 226 (CCPA 1971) which indicates that where an examiner has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, the examiner possesses the authority to require an applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. Nevertheless, before an applicant can be put to this burdensome task, the examiner must provide some evidence or scientific reasoning to establish the reasonableness of the examiner's belief that the functional limitation is an inherent characteristic of the prior art. In the case before us, no such evidence or reasoning has been set forward.
Appellant urges that the mold for a contact lens would not reasonably be expected to have a surface roughness of no more than about 12.5 x 10-8 meters, RMS. In this regard, we note that appellant's specification indicates that the desired degree of surface smoothness is only achieved by polishing or diamond turning of the surface finish. See page 2, lines 12 through 14. Moreover, appellant utilizes a sputtering technique to apply the chromium onto the mold surface rather than a plating technique as utilized by the reference patent. Absent reasons on the part of the examiner regarding why the natural result of the process used to prepare the mold of Mizutani would have been to achieve the characteristics claimed by appellant's mold, a prima facie case of anticipation has not been established. See In re Oelrich, supra.
Claims 7 through 13, 20, and 21 stand rejected under 35 U.S.C. 103 over Mizutani in view of Nyman and further in view of the Japanese reference. We have carefully considered all of appellant's arguments but are unpersuaded of error in the examiner's rejection with respect to claims 7 through 13.
At the outset we note that appellant's specification indicates, as background, that it is known that molded plastic articles can be made with relatively smooth surfaces by providing a relatively smooth surface for the mold in which the article is manufactured. Relatively smooth surfaces are generally accomplished by machine grinding and lapping any portion of the mold surface which is to be replicated on a position on the plastic article where smoothness is desired. Appellant notes that surfaces having a roughness of 2.5 to 5 x 10-8 meters, RMS, have been prepared in the art by polishing or diamond turning. We are in full agreement with the examiner that one of ordinary skill, desiring as smooth a surface as possible on the contact lens mold of Mizutani, would have considered it obvious to achieve a surface finish within the range claimed by appellant. The Nyman reference teaches quite clearly that a chromium layer on a mold serves to harden the surface of a mold and make it resistant to scratching of the surface by abrasive particles. We shall take official notice that chromium plated or chromium coated metal surfaces are more corrosion resistant than would be the base metal itself. Indeed, the Hackh's Chemical Dictionary definition of chromium describes chromium plating as 'the electrolytic coating of metals with a layer of c.0.00001 in. thick over a layer of nickel which produces a non-corrodible surface.' The Nyman reference also teaches that plating of chromium onto mold surfaces develops a film which is 'rough' (column 2, lines 64-66) and suggests vapor deposition techniques, e.g., sputtering and the like to apply a less rough, thin, stress free conformal layer containing chromium. One of ordinary skill having the references before him would have considered it obvious to improve the mold surface of the Mizutani mold by finely polishing the metal backing material to the required extent and then sputtering a layer of chromium thereover to improve the hardness and oxidation exposure of the base metal.
*3 Claims 20 and 21, however, are directed to the use of rhodium as the metal in place of or in conjunction with chromium. The examiner relies on the Japanese reference for a teaching of utilizing a rhodium layer on the surface of a brass plate. The Japanese reference is directed to a method of making an ornamental part for a time piece (watch) by coating the part with a thin layer of compounds having a refractive index less than 2.41. Among the compounds which may be coated thereon are compounds of chromium, titanium, iron, copper, mercury, lead, and bismuth. Specifically, rhodium is first deposited [FNa2] onto the brass base metal. Subsequently, a chromium layer and chromium oxide layer are vacuum depositeds%n thereon. The examiner has provided no information regarding why the Japanese reference used the rhodium coating as an undercoat and no reasons or incentive for utilizing the rhodium coating of the Japanese reference as an undercoat for the chromium of either Mizutani or Nyman.
To properly combine the references to reach the conclusion that the subject matter of claims 20 and 21 would have been obvious, case law requires that there must have been some teaching, suggestion, or inference in either reference, or both, or knowledge generally available to one of ordinary skill in the relevant art, which would have led one of ordinary skill in the art to combine the relevant teachings of the references. See ACS Hospital Systems, Inc. v. Montefiore Hospital, 732 F.2d 1572, 221 USPQ 929 (Fed. Cir. 1984). When the incentive to combine the teachings of the references is not readily apparent, it is the duty of the examiner to explain why combination of the reference teachings is proper. In other words, the examiner must indicate the reasons why one skilled in the art would have substituted the sputtered chromium/rhodium combination of the Japanese patent for the sputtered chromium of the Nyman reference when it was substituted for the metal plated chromium of the Mizutani patent. Absent such reasons or incentives, the teachings of the references are not combinable. We reverse the examiner's rejection.
The examiner's rejection of claims 7, 8, 11, and 12 under 35 U.S.C. 102 is reversed. The examiner's rejection of claims 20 and 21 under 35 U.S.C. 103 is also reversed. The examiner's rejection of claims 7 through 13 under 35 U.S.C. 103 is affirmed.
BOARD OF PATENT APPEALS AND INTERFERENCES
Sherman D. Winters
John T. Goolkasian
Stephen J. Emery
FNa1. The quoted language appears in the office action mailed 11/22/83 (paper no. 5) which is expressly referred to in the Final Rejection.
FNa2. The Derwent translation of the Japanese reference indicates that the rhodium layer is deposited at three thousand angstrom thickness by a process described as 'metalising plating.' While we would normally consider this to be an electroplating process, appellant's Brief (page 8) indicates that the rhodium is applied by vacuum deposition.
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