Appeal 2007-0554
Reexamination Nos. 90/006,118 & 90/006,254
Patent 6,196,681 B1
material forming said soft inner portion in the same mold” (Br. App. Claim
7), the Specification points to “commercially available sport glasses . . . that
include some structure made by a two-shot process in a single mold”
(Specification, col. 1, ll. 20-22) and Canavan ‘505. Itself, the Specification
recites the phrase “two-shot process . . . in a single mold” repeatedly
(Specification, col. 1, ll. 22, 27, and 66; col. 2, ll. 11, 37-38; and Claims 1
and 7), without amplification. We find that Canavan ‘505 does not mention
a “two-shot process . . . in a single mold” for any purpose whatsoever.
On the other hand, at the August 15, 2007, oral hearing of this appeal,
Appellant was asked to explain how the supporting Specification in this case
could have enabled a person skilled in the art to make and use the full scope
of the claimed invention. Appellant appeared to concede that the “two-shot
process . . . in a single mold” nominally recited in its claims and
Specification was a process well-known in the art of making thermoplastic
structures of various sizes, shapes and complex configurations prior to its
filing date (Transcript of Proceedings, August 15, 2007, Oral Hearing, pp. 5-
10).
Discussion
1. Prima facie obviousness
Appellant and the Examiner appear to agree that Conway describes a
unitary structure with an inner soft portion and an outer hard portion which
are formed by a two-shot process whereby each shot is separately performed
in each of two distinct molds. The frame of Conway’s eyewear is “formed
of a rigid plastic across substantially the entire front-facing surface thereof,
wherein the rigid (front surface) plastic and soft (rear surface) plastic are
7
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