Ex Parte Burke et alDownload PDFPatent Trial and Appeal BoardJun 21, 201612782950 (P.T.A.B. Jun. 21, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121782,950 05/19/2010 32692 7590 06/23/2016 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 FIRST NAMED INVENTOR James P. Burke 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 63327US013 5692 EXAMINER SWINNEY, JENNIFER B ART UNIT PAPER NUMBER 3724 NOTIFICATION DATE DELIVERY MODE 06/23/2016 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES P. BURKE, ALAN B. CAMPBELL, DALE L. EHNES, and DANIELS. WERTZ Appeal2014-004237 Application 12/782,950 Technology Center 3700 Before JILL D. HILL, THOMAS F. SMEGAL, and PAUL J. KORNICZKY, Administrative Patent Judges. SMEGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE James P. Burke et al. (Appellants) 1 seek our review under 35 U.S.C. § 134 of the Examiner's Final Rejection under 35 U.S.C. § 102(b) of claims 2, 3, 22, 24-26, and 33-35 as anticipated by Wilson (US 7 ,212,345 B2, iss. May 1, 2007).2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 According to Appellants, the real party in interest is 3M Innovative Properties Company. Appeal Br. 3. 2 Claims 23, 27-32, and 36-39 are withdrawn. Final Act. 2. Appeal2014-004237 Application 12/782,950 CLAIMED SUBJECT MATTER Independent claims 2 and 3 both illustrate the claimed subject matter and are reproduced below, with disputed limitations emphasized. 2. A polymeric article comprising: an external surface having features formed by a cylindrical tool, wherein the tool has groove segments formed therein, wherein the features in the polymeric article have been imprinted by the cylindrical tool such that the features in the polymeric article correspond to the groove segments of the tool, wherein the groove segments and the corresponding features in the polymeric article are arranged according to an integer brick pattern that defines a repeating pattern of groove segments, wherein the integer is greater than two, wherein each of the groove segments and each of the corresponding features in the polymeric article defines a length and a width, the length being greater than the width and perpendicular to the width, wherein groove segments and the corresponding features in the polymeric article adjacent to one another in a direction parallel to the width are offset in a direction parallel to the length by a fraction of the length, v,;herein the fraction is 1 divided by the integer, wherein each of the groove segments and each of the corresponding features in the polymeric article has a beginning and an end along its length, wherein the integer brick pattern repeats every integer number of rows such that the beginning and end of each groove segment in a row of groove segments is aligned with the beginning and end of groove segments in other rows of groove segments and the beginning and end of each corresponding feature in a corresponding row of features in the polymeric article is aligned with the beginning and end of features in other rows of features in the polymeric article, the other rows being offset from the row by an integer number of rows, and wherein each of the groove segments and each of the corresponding features in the polymeric article has a radius of curvature between the beginning and the end corresponding to a 2 Appeal2014-004237 Application 12/782,950 cutting radius of a fly-cutting head used to form the groove segment. 3. A polymeric article comprising: an external surface having features formed by a cylindrical tool, wherein the tool comprises: a plurality of groove segments formed therein, wherein the features in the polymeric article have been imprinted by the cylindrical tool such that the features in the polymeric article correspond to the groove segments of the tool, wherein each of the groove segments and each of the corresponding features in the polymeric article has a beginning and an end, wherein successive groove segments and the corresponding features in the polymeric article are offset with respect to previous groove segments and the corresponding features by a helix angle, wherein the helix angle forms multiple revolutions about the cylindrical tool, wherein groove segments of each successive revolution in the helix angle are interleaved between groove segments of the previous revolution in the helix angle both longitudinally and circumferentially about the tool such that the corresponding features in the polymeric article are interleaved about a length and a width of the external surface of the polymeric article, wherein the groove segments and the corresponding features in the polymeric article are arranged according to an integer brick pattern that defines a repeating pattern of groove segments, wherein the integer is greater than two, and wherein each of the groove segments and each of the corresponding features in the polymeric article has a radius of curvature between the beginning and the end corresponding to a cutting radius of a fly-cutting head used to form the groove segments. 3 Appeal2014-004237 Application 12/782,950 ANALYSIS Anticipation of claims 2, 3, 22, 24-26, and 33-35 by Wilson Claims 2, 22, and 24-26 We are persuaded by Appellants' arguments that the Examiner fails to establish a prima facie showing of anticipation in rejecting claims 2, 22, and 24--26 over Wilson. See Appeal Br. 7-12 and Reply Br. 2---6. The Examiner finds that Wilson anticipates independent claim 2 by disclosing a polymeric article having features corresponding to the groove segments in a cylindrical tool where, inter alia, "the corresponding features in the polymeric article adjacent to one another in a direction parallel to the width are offset in a direction parallel to the length by a fraction of the length, wherein the fraction is 1 divided by the integer." Final Act. 2 (citing Wilson, Figs. 4--6). In contesting the rejection, Appellants explain that "claim 2 specifies that ... the corresponding features in the polymeric article are adjacent to one another," while "the adjacent features shown in FIG. 5 and FIG. 6 of Wilson are offset [at] varying intervals." Appeal Br. 9. Appellants further point out that "the right side feature on the bottom row of FIG. 5 (labeled as A) appears to be offset from the immediately adjacent feature, 'B' by a shorter distance than feature 'B' is offset from its other adjacent feature 'C"' while "[s]imilarly, feature 'C' appears to be offset a greater distance from feature 'B' than from its other adjacent feature 'D. "' Id. at 10 (citing an annotated version of Fig. 5 of Wilson). In response, the Examiner explains that the annotated version of Wilson's Figure 5 "double[s]the number of groove rows shown such that the larger pattern is revealed" (citing to an annotated version of Figure 5 of 4 Appeal2014-004237 Application 12/782,950 Wilson added to the Final Rejection), and reasons that based on the doubled pattern, "Wilson teaches a polymeric article having a repeating integer brick pattern of 4, as seen above by the shaded groove segments [of the annotated version]," and that "[t]he groove segments are also offset by a fraction of the integer 4 divided by 1." Ans. 4. Appellants disagree, again pointing out that "Fig. 5 of Wilson illustrates adjacent features at varying intervals," and further noting that "while Wilson mentions staggering of optical elements horizontally, these general staggering concepts disclosed by Wilson fail to anticipate the more precise arrangement of an integer brick pattern as recited by Appellant's claim 2." Reply Br. 4 (citing Wilson, col. 5, 1. 64 - col. 6, 1. 3). We agree with Appellants that Wilson does not disclose adjacent features that are offset "by a fraction of the length, wherein the fraction is 1 divided by the integer," as recited by claim 2 and find the determination made by the Examiner to be an arbitrary (and therefore unreasonable) interpretation of the disclosure in Wilson. For the foregoing reasons, we do not sustain the Examiner's rejection of independent claim 2 and dependent claims 22 and 24--26 as anticipated by Wilson. Claim 3 The Examiner finds that Wilson anticipates independent claim 3 by disclosing a polymeric article having features corresponding to the groove segments in a cylindrical tool where, inter alia, "the groove segments and the corresponding features in the polymeric article are arranged according to an integer brick pattern that defines a repeating pattern of groove segments 5 Appeal2014-004237 Application 12/782,950 (Fig. 5), wherein the integer is greater than two." Final Act. 5 (citing Wilson, Figs. 4---6; Col. 5, 11. 54--56 and 65-67) (emphasis added). The Examiner also finds that "[s]taggering is one of the configurations in which the elements [of Wilson] can be arranged such that there is no unpatterned area." Id. at 7 (citing Wilson, col. 6, 11. 1-3). In contesting the rejection, Appellants first contend that claim 3 "specifies that groove segments of each successive revolution in the helix angle are interleaved between groove segments of the previous revolution," and also "specifies that the ... features in the polymeric article are arranged according to an integer brick pattern that defines a repeating pattern of groove segments, wherein the integer is greater than two." Appeal Br. 13. (emphasis added). In response, the Examiner points out that "Wilson fairly teaches and suggests a polymeric article having [a] repeating pattern (Col. 11, lines 52- 56) and an integer brick pattern with an integer greater than two," further explaining that "[t]his pattern is disclosed above on Page 4 [of the Answer], by the grey shaded areas, which repeats after four iterations." Ans. 6-7. The Examiner also reasons that "Wilson's grooves are interleaved, as they can clearly be seen to overlap each other in figure 5." Id. at 8. Appellants have not apprised us of any error in the Examiner's findings or conclusions, and we find none. Appellants also assert that claim 3 is patentable because "the features shown in FIG. 5 of Wilson are offset [at] varying intervals." Appeal Br. 13. However we find Appellants' assertion to be unavailing as it is not commensurate with the scope of claim 3, which is not limited by recitation 6 Appeal2014-004237 Application 12/782,950 of features that are offset by intervals that do not vary. See Appeal Br. 17, Claims App. For the foregoing reasons, we sustain the rejection of claim 3 as anticipated by Wilson. Claims 33-35 Appellants argue claims 33-35 as a group. See Appeal Br. 13-14. We select claim 33 as the representative claim for this group such that the remaining claims stand or fall with claim 33. We have considered Appellants' arguments raised in the Appeal Brief, but do not find them persuasive to demonstrate error in the Examiner's rejection of claim 33 as being anticipated by Wilson. Regarding claim 33, which depends from claim 3, the Examiner finds, inter alia, that "the plurality of groove segments [in Wilson] combine to form a series of adjacent and parallel grooves, wherein ... each groove segment within the groove is aligned with and adjoins adjacent groove segments such that the groove segments within the groove approximate a single continuous feature forming the groove." Final Act. 5---6 (citing Wilson, Figs. 3 and 4). Appellants respond that, in rejecting claim 3 in the Final Rejection, the Examiner relied upon figure 5 of Wilson, not figures 3 and 4, because "FIG. 3 and FIG. 4 fail to disclose the feature of an integer brick pattern, wherein the integer is greater than two as provided by independent claim 3," and contend that "Wilson, FIG. 5 fails to disclose the [portion of claim 33 recited in the Examiner's Final Rejection and repeated by Appellants]." Appeal Br. 14. 7 Appeal2014-004237 Application 12/782,950 However, in referring to another annotated version of figure 5 of Wilson, the Examiner explains that "[t]he groove segments of Wilson ... are segments formed within a groove and approximate a single continuous feature within the groove," and "since the grooves overlap, they form a continuous groove." Ans. 8. Appellants' response is not directed to claim 33, depending from claim 3, but merely argues the annotated version of figure 5 of Wilson as applied by the Examiner to claim 24 that depends from claim 2. See Reply Br. 5---6. Thus, Appellants have not apprised us of any error in the Examiner's findings or conclusions regarding claim 33 which depends from claim 3, not from claim 2, and we find none. For the foregoing reasons, we sustain the rejection of claims 33-35 as anticipated by Wilson. DECISION We REVERSE the Examiner's rejection of claims 2, 22, and 24--26. We AFFIRM the Examiner's rejection of claims 3 and 33-35. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv) (2012). AFFIRMED-IN-PART 8 Copy with citationCopy as parenthetical citation