Ex Parte Britten

Patent Trial and Appeal Board

Aug 26, 2014

12371451 (P.T.A.B. Aug. 26, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JERALD A. BRITTEN
____________

Appeal 2012-010397
Application 12/371,451
Technology Center 2800
____________

Before MARK NAGUMO, MICHAEL P. COLAIANNI, and
CHRISTOPHER M. KAISER, Administrative Patent Judges.

KAISER, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134 from the decision of the
Primary Examiner finally rejecting claims 1–20 (“Final Rej.”). We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

OPINION

Appellant’s invention “relates to dielectric transmission gratings.”
Spec. ¶ 2.
Claim 1, reproduced below, is representative of the appealed subject
matter:
Appeal 2012-010397
Application 12/371,451

2
1. A multilayer dielectric transmission grating,
comprising:
a substrate comprising a first side and a second side;
a first antireflection (AR) coating comprising an AR
coating first side and an AR coating second side, wherein said
AR coating first side is operatively attached to said substrate
second side, wherein said first AR coating comprises a single
layer; and
a diffraction grating operatively attached to said AR
coating second side, wherein said diffraction grating
comprising one or more dielectric materials.
Br. 12.
The Examiner rejected claims 3, 4, 13, and 14 under 35 U.S.C. § 112,
first paragraph, for failure to comply with the written description
requirement.1 Final Rej. 2. The Examiner also rejected claims 3, 4, 13, and
14 under 35 U.S.C. § 112, second paragraph, as indefinite for failing to
particularly point out and distinctly claim the subject matter of the claims.2
Id. at 3. The Examiner rejected claims 1, 3, 5, 6, 8–11, 13, 15, 16, and 18–
20 under 35 U.S.C. § 102(b) as anticipated by Perry3 and claims 1, 10, 11,
and 20 under 35 U.S.C. § 102(e) as anticipated by Gil.4 Final Rej. 5–8. In
addition to these rejections, the Examiner entered rejections of the following
claims under 35 U.S.C. § 103(a) as obvious over the following prior art:
claims 2, 4, 12, and 14 over the combination of Perry and Tanabe;5 claims 7

1 The Examiner originally rejected claims 1–20 on this ground, Final Rej. 2,
but withdrew the rejection as to all but claims 3, 4, 13, and 14. Answer 4.
2 The Examiner originally rejected claims 1–20 on this ground, Final Rej. 3,
but withdrew the rejection as to all but claims 3, 4, 13, and 14. Answer 4.
3 Perry et al., US 5,907,436, issued May 25, 1999.
4 Gil et al., US 2010/0003605 A1, published Jan. 7, 2010.
5 Tanabe et al., US 6,271,966 B1, issued Aug. 7, 2001.
Appeal 2012-010397
Application 12/371,451

3
and 17 over Perry; claims 2 and 12 over the combination of Gil and Tanabe;
claims 3, 6, 13, and 16 over the combination of Gil and Miyazawa;6 claims 4
and 14 over the combination of Gil, Tanabe, and Miyazawa; and claims 5, 7,
15, and 17 over Gil.

Rejection under 35 U.S.C. § 112, First Paragraph
In rejecting claims 3, 4, 13, and 14 under 35 U.S.C. § 112, first
paragraph, the Examiner found that “[t]he originally filed specification
ONLY gives positive support for a single [anti-reflective] coating having
more than one layer. There is no additional AR coating . . . in contact with
the first AR coating.” Final Rej. 2. This encompasses two separate
findings: first, that the Specification supports only one anti-reflective (“AR”)
coating, as opposed to more than one; and second, that the Specification
supports only coatings with multiple layers, as opposed to coatings having a
single layer each. In response, however, Appellant argues only against the
latter finding, stating that “[t]he application does indeed provide support for
a single layer AR coating.” Br. 5. Appellant does not allege any error and
therefore shows no error in the Examiner’s finding that the Specification
fails to provide support for multiple AR coatings. Claims 3, 4, 13, and 14
recite limitations that require at least an additional AR coating in contact
with the first AR coating. See, e.g., Br. 12 (claim 3: “The grating of claim 1,
further comprising at least one additional AR coating wherein an AR coating
of said at least one additional AR coating is in contact with said first AR
coating”). Because these claims require the additional AR coating, and
because Appellant does not show any error in the Examiner’s finding that

6 Miyazawa, US 5,473,594, issued Dec. 5, 1995.
Appeal 2012-010397
Application 12/371,451

4
the Specification fails to provide support for such additional AR coatings,
we affirm the Examiner’s rejection of these claims under 35 U.S.C. § 112,
first paragraph, for failure to comply with the written description
requirement.

Rejection under 35 U.S.C. § 112, Second Paragraph
In rejecting claims 3, 4, 13, and 14 under 35 U.S.C. § 112, second
paragraph, the Examiner found that the claim limitation “further comprising
at least one additional AR coating . . . in contact with said first AR coating”
was indefinite. According to the Examiner, this “additional AR coating”
could not be a single layer out of the multiple AR coating layers because this
would go beyond the Specification’s disclosure, which was limited to multi-
layer coatings and did not describe single AR layers. Further, according to
the Examiner, if the “additional AR coating” were something other than an
individual layer, it was unclear what else it could be. We disagree with the
Examiner. The second paragraph of § 112 requires “that a patent's claims,
viewed in light of the specification and prosecution history, inform those
skilled in the art about the scope of the invention with reasonable certainty.”
Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). As
pointed out by Appellant, Br. 5, the Specification discloses both single-layer
and multi-layer AR coatings. Spec. ¶ 7 (describing AR coatings of “one or
more layers”). Accordingly, a person of ordinary skill in the art would
understand with reasonable certainty the scope of the limitation “further
comprising at least one additional AR coating” as requiring at least two AR
coatings in total, with each AR coating comprising one or more separate
layers. Because claims 3, 4, 13, and 14 “inform those skilled in the art about
Appeal 2012-010397
Application 12/371,451

5
the scope of the invention with reasonable certainty,” Nautilus, 134 S. Ct. at
2129, we reverse the Examiner’s rejection of these claims under 35 U.S.C.
§ 112, second paragraph.

Rejections Relying on Perry
Several of the Examiner’s rejections relied on Perry, a reference that
Appellant argues fails to teach the claimed single-layer AR coating and fails
to teach the claimed AR coating for a transmission grating.7 Appellant’s
argument as to a single-layer AR coating rests on the limitation “wherein
said first AR coating comprises a single layer.” Br. 12. Appellant argues
that, although this limitation requires a single-layer coating, Perry discloses
only multi-layer AR coatings. Br. 8; see also Perry, Fig. 1A (showing multi-
layer AR coating 4). The Examiner agrees with this reading of Perry but
argues that the limitation “wherein said first AR coating comprises a single
layer” should be construed as allowing the first AR coating to have either
one layer or more than one layer. Answer 18–19. We agree with the
Examiner that, although Appellant’s claims include AR coatings with a
single layer, they are not limited to such coatings, as they would be if they
recited a coating “consisting of a single layer.” Instead, by virtue of their
recital of a coating that “comprises a single layer,” they also include coatings
that are made up of multiple layers. The limitation “wherein said first AR
coating comprises a single layer” is similar to the limitation “comprising . . .
first, second, and third blades” in Gillette Co. v. Energizer Holdings Inc.,
405 F.3d 1367, 1371–73 (Fed. Cir. 2005), which was held not to exclude

7 These are the only arguments that Appellant raises against any of the
rejections that rely on Perry. Br. 8–9.
Appeal 2012-010397
Application 12/371,451

6
devices with more than three blades. Accordingly, Appellant’s claims do
not exclude AR coatings with more than one layer. Because Perry discloses
such AR coatings, we see no error in the Examiner’s reliance on Perry.
Appellant’s other argument against Perry is that Perry does not
disclose a grating that “will produce diffraction efficiency in transmission, at
least because there will be absorption in the alternating high and low index
of refraction of the multilayer of [Perry] as well as absorption by the
substrate of [Perry].” Br. 8–9. We do not find this persuasive. None of
Appellant’s claims require “produc[tion of] diffraction efficiency in
transmission.” Unclaimed features cannot impart patentability to claims. In
re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998); In re Self, 671 F.2d
1344, 1348 (CCPA 1982). To the extent Appellant’s argument is intended
to suggest that Perry fails to teach the claimed “transmission grating”
because it does not transmit light, we disagree. Perry teaches transmission
of light through a grating, several layers below the grating, and a substrate, a
teaching of which Appellant, as a named inventor of Perry, had full
knowledge. Perry, Fig. 6. Accordingly, we find no error in the Examiner’s
reliance on Perry, and we affirm the rejections that rely on Perry.

Rejections Relying on Gil
Several of the Examiner’s rejections relied on Gil, a reference that
Appellant argues is not prior art because it was antedated by a declaration
(“Britten Declaration” or “Britten Decl.”) submitted pursuant to 37 C.F.R.
§ 1.131.8 Final Rej. 7–8, 10–13; Br. 6–8. A declaration seeking to antedate

8 This is the only argument that Appellant raises against any of the rejections
that rely on Gil. Br. 9–11.
Appeal 2012-010397
Application 12/371,451

7
a reference must “establish reduction to practice prior to the effective date of
the reference, or conception of the invention prior to the effective date of the
reference coupled with due diligence from prior to said date to a subsequent
reduction to practice or to the filing of the application.” 37 C.F.R.
§ 1.131(b).
The issue here is whether the Britten Declaration sufficiently shows
invention by Appellant of the claimed subject matter before the effective
date of Gil. To do so, it must show “a completion of the invention
commensurate with the extent the invention is shown in the reference.” In
re Wakefield, 422 F.2d 897, 901 (CCPA 1970) (quoting In re Clarke, 356
F.2d 987, 992 (CCPA 1966)) (internal quotation marks omitted). As
discussed above, the claimed invention here is in relevant part an AR
coating, made up either of a single layer or of multiple layers. Gil discloses
a single-layer AR coating. Gil ¶ 13. Accordingly, to antedate Gil, the
Britten Declaration must show “completion” of the invention of a single-
layer AR coating.
To this end, Appellant argues that the Britten Declaration establishes
invention of a single-layer coating because the Declaration describes “one or
more layers of dielectric material that create an antireflective (AR)
property.” Br. 7; see Britten Decl., Record of Invention 1. The Examiner
responds that the Britten Declaration describes multi-layered AR coatings in
great detail but does not discuss the claimed single-layer AR coating in
nearly the same level of detail, showing that Appellant had not yet reduced
to practice a single-layer AR coating at the time of the Britten Declaration.
Answer 18; see Britten Decl., Record of Invention 2–4.
Appeal 2012-010397
Application 12/371,451

8
We agree with the Examiner. Although there is vague language in the
Britten Declaration regarding an AR coating of “one or more layers,” the
Record of Invention attached to the Britten Declaration describes in detail
only multi-layer AR coatings. The “Invention Description” section
discusses “a 3-layer antireflective coating” and “the AR multilayer,” with no
mention of a single-layer coating. Britten Decl., Record of Invention 2. The
Figures that follow this description all disclose a “2-layer AR coating.” Id.
at Record of Invention 3–4. While the Britten Declaration may establish that
a single-layer coating was contemplated before the effective date of Gil, it
does not establish that such a coating was reduced to practice. Appellant has
not argued, and we do not find, that the Britten Declaration establishes the
“due diligence” required by 37 C.F.R. § 1.131(b) in the absence of a
reduction to practice, so the Britten Declaration does not antedate Gil.
Accordingly, we affirm the Examiner’s rejections that rely on Gil.

ORDER

The Examiner’s decision rejecting claims 3, 4, 13, and 14 under 35
U.S.C. § 112, first paragraph, for failure to comply with the written
description requirement is affirmed. The Examiner’s decision rejecting
claims 3, 4, 13, and 14 under 35 U.S.C. § 112, second paragraph, as
indefinite for failing to particularly point out and distinctly claim the subject
matter of the claims is reversed. The Examiner’s decisions rejecting claims
1, 3, 5, 6, 8–11, 13, 15, 16, and 18–20 under 35 U.S.C. § 102(b) as
anticipated by Perry; rejecting claims 2, 4, 12, and 14 under 35 U.S.C.
§ 103(a) as obvious over the combination of Perry and Tanabe; and rejecting
claims 7 and 17 under 35 U.S.C. § 103(a) as obvious over Perry are
Appeal 2012-010397
Application 12/371,451

9
affirmed. The Examiner’s decisions rejecting claims 1, 10, 11, and 20 under
35 U.S.C. § 102(e) as anticipated by Gil; rejecting claims 2 and 12 under 35
U.S.C. § 103(a) as obvious over the combination of Gil and Tanabe;
rejecting claims 3, 6, 13, and 16 under 35 U.S.C. § 103(a) as obvious over
the combination of Gil and Miyazawa; rejecting claims 4 and 14 under 35
U.S.C. § 103(a) as obvious over the combination of Gil, Tanabe, and
Miyazawa; and rejecting claims 5, 7, 15, and 17 under 35 U.S.C. § 103(a) as
obvious over Gil are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED

lp