Ex Parte Corrigan

Patent Trial and Appeal Board

Sep 29, 2016

13613427 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/613,427 09/13/2012
32692 7590 10/03/2016
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Thomas R.J. Corrigan
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.
65621US008 5243
EXAMINER
RUMMEL, IAN A
ART UNIT PAPER NUMBER
1785
NOTIFICATION DATE DELIVERY MODE
10/03/2016 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 THOMAS R.J. CORRIGAN1
Appeal2015-000662
Application 13/613,427
Technology Center 1700
Before CHUNG K. PAK, KAREN M. HASTINGS, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner's decision2 finally rejecting claims 1-16, which are all of the
claims pending in the above-identified application. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 The real parties in interest are said to be 3M Company and its affiliate 3M
Innovative Properties Company of St. Paul, Minnesota. Appeal Brief filed
April 28,, 2014 ("App. Br.") at 2.
2 Final Action entered January 17, 2014 ("Final Act.") at 2-7, and the
Examiner's Answer entered August 14, 2014 ("Ans.") at 2-6.
Appeal2015-000662
Application 13/613,427
STATEMENT OF THE CASE
Details of the appealed subject matter are recited in illustrative claims
1 and 9, 3 which are reproduced below from the Claims Appendix of the
Appeal Brief (with disputed limitations in italicized form):
1. A method for laser imaging a substrate using a distributed
patterned mask, comprising:
imaging the substrate through an aperture for
transmission of light, wherein nontransmissive areas surround
the aperture and wherein the aperture forms a distributed
portion of a complete pattern;
moving the mask to a different position relative to the
substrate; and
repeating the imaging and moving steps in order to
repeatedly image the substrate through the same aperture,
wherein the imaging steps include imaging the same aperture
partially overlapping previously imaged portions on the
substrate,
wherein when the same aperture in the mask is
repeatedly imaged onto the substrate, structures within the
distributed portion merge within different areas of the imaged
pattern to create the complete pattern on the substrate with
distributed stitch lines in the partially overlapping imaged
portions.
9. A method for laser imaging a substrate using a sparse and
distributed patterned mask, comprising:
imaging the substrate through first apertures for
transmission of light, wherein nontransmissive areas surround
3 Appellant does not argue the separate patentability of claims 2-8 and 10-
16 apart from claims 1 and 9. Accordingly, for purpose of this appeal, we
decide the appeal as to those claims on the basis of claims 1 and 9. 3 7
C.F.R. § 41.37(c)(l)(iv) (2013).
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Application 13/613,427
the first apertures and wherein the first apertures in the mask
individually form first portions of a complete pattern; and
imaging the substrate through one or more second
apertures for transmission of light, wherein the non-
transmissive areas surround the one or more second apertures
and wherein the one or more second apertures in the mask
individually form second portions of the complete pattern,
wherein the imaging steps include imaging the one or
more second apertures partially overlapping previously imaged
portions on the substrate from the first apertures,
wherein the first apertures have a substantially identical
shape as the one or more second apertures,
wherein the first apertures and the one or more second
apertures collectively form a distributed portion of the complete
pattern,
wherein the first apertures and the one or more second
apertures together form the complete pattern when the first
apertures and the one or more second apertures are individually
imaged onto the substrate, and
wherein when the first and the one or rnore second
apertures in the mask are repeatedly imaged onto the substrate,
structures within the first and second distributed portions
merge within different areas of the imaged pattern to create the
complete pattern on the substrate with distributed stitch lines in
the partially overlapping imaged portions.
App. Br. 7-8, Claims Appendix.
The Examiner maintains the following grounds of rejection:
1. Claims 1, 3, and 4 under 35 U.S.C. § 102(b) as anticipated by
the disclosure of Dufresne (US 6,537,459 Bl, issued March 25, 2003);
2. Claims 2 and 5-16 under 35 U.S.C. § 103(a) as unpatentable
over the disclosure of Dufresne; and
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Application 13/613,427
3. Claims 1-16 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Fleming (US 2007/0235902, published October 11,
2007) and Dufresne. Final Act. 2-7; Ans. 2-6.
DISCUSSION
Upon consideration of the evidence on this appeal record in light of
the respective positions advanced by the Examiner and Appellants, we
determine that a preponderance of the evidence supports the Examiner's
determination that the collective teachings of Fleming and Dufresne would
have rendered the subject matter recited in claims 1-16 obvious to one of
ordinary skill in the art within the meaning of 35 U.S.C. § 103(a).
Accordingly, we sustain the Examiner's§ 103(a) rejection of the above
claims for the reasons set forth in the Final Action and the Answer. 4 We add
the following primarily for emphasis and completeness.
4 Having affirmed the rejection of all the claims on appeal based on the
combined teachings of Fleming and Dufresne, it is unnecessary for us to
address the additional §§ 102(b) and 103(a) rejections maintained by the
Examiner. See In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (holding
that obviousness rejections need not be reached upon affirming a rejection of
all claims as anticipated); In re Basel! Poliolefine, 547 F.3d 1371, 1379
(Fed. Cir. 2008) ("Having concluded that the Board properly affirmed the
rejection of claims 1-52 of the '687 patent based on obviousness-type double
patenting in view of the '987 patent, we need not address the remaining
issues raised by Basell regarding the §§102(b) and 103(a) rejections, as well
as the additional double patenting rejections. Accordingly, the Board's
decision is affirmed."): Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423
(Fed. Cir. 1984) (having decided a single dispositive issue, the ITC was not
required to review other matters decided by the presiding officer).
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Application 13/613,427
In assessing the obviousness of the subject matter recited in the claims
on appeal, "[ o ]ften, it will be necessary for ... [us] to look to interrelated
teachings of [the] multiple [prior art references relied upon by the Examiner]
... to determine whether there was an apparent reason to combine the
known elements in the fashion claimed .... " KSR Int'! Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007). These prior art references must be read in
context, taking into account "demands known to the design community,"
"the background knowledge possessed by a person having ordinary skill in
the art," and "the inferences and creative steps that a person of ordinary skill
in the art would employ." Id. at 418; see also In re Paulsen, 30 F.3d 1475,
1480 (Fed. Cir. 1994) ("[A] prior art reference must be 'considered together
with the knowledge of one of ordinary skill in the pertinent art."') (quoting
In re Samour, 571F.2d559, 562 (CCPA 1978)). The background
knowledge attributable to one of ordinary skill in the art includes what was
admittedly known in the art at the time of the invention. Constant v.
Advanced Micro-Devices Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988) ("A
statement in a patent that something is in the prior art is binding on the
applicant and patentee for determinations of anticipation and obviousness.");
In re Nomiya, 509 F.2d 566, 570-71(CCPA1975) (using the admitted prior
art in applicant's Specification to determine the patentability of a claimed
invention.); In re Fout, 675 F.2d 297, 301(CCPA1982) ("[i]t is not unfair
or contrary to the policy of the patent system that appellants' invention be
judged on obviousness against their actual contribution to the art" (footnote
omitted)).
Here, there is no dispute that Fleming teaches using "a mask with
apertures for laser ablation of a micro-structured tool [to form square, round,
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and/or hexagonal relief structures.]" Compare Final Act. 5-6, citing
Fleming iii! 18, 43, with App. Br. 6. Although Fleming does not specifically
mention the use of a distributed pattern mask in the manner recited in claims
1 and 9, the Examiner finds, and Appellants do not dispute, that:
Dufresne teaches a method for imaging a substrate with a
distributed pattern mask, the mask having light transmissive
apertures and non-transmissive regions that each forms a portion
of a distributed pattern. Dufresne teaches that the apertures each
form different segments of a larger pattern, and that by
repeatedly imaging the various apertures onto the substrate with
changes to the relative position of the mask and substrate, one
can form a larger pattern from the various aperture segments of
the mask.
Compare Final Act. 2, 5, citing Dufresne, col. 11, 11. 21--47, col. 12, 11.
40-57, col. 13, 11. 3-17, 64-65, with App. Br. 3-6.
The Examiner also finds, and Appellants do not dispute, that
"Dufresne teaches that the imaged areas should overlap slightly, with the
overlapping areas corresponding to the 'stitch lines' of Applicant's [claims 1
and 9.]" Compare Final Act. 2, 4, 5, with App. Br. 3-6; see also Dufresne,
col. 12, 11. 45-57 ("Each of the apertures provides an individual field of
exposure on the photoresist surface which adds up to the final composite.
The individual fields should be exposed so as to have portions which slightly
overlap at zones where the fields overlap .... This overlap allows for the
photoresist to be assured of having the abutting areas sufficiently exposed
(in a negative-acting imaging resist system) to assure complete hardening or
(in the case of positive-acting imaging resist system) to assure complete
reduction in solubility.")
Based on the above findings, the Examiner concludes, and Appellants
do not question, that "[i]t would have been obvious to one of ordinary skill
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Application 13/613,427
in the art to use the technique of Dufresne to make the products of Fleming,
[such as micro-structured tools having square, round, or hexagonal relief
structures.]" Compare Final Act. 5, with App. Br. 3-6.
Appellants contend that one of ordinary skill in the art would not have
been led to use the same aperture or two or more substantially identical
apertures in a mask to repeatedly image a substrate to form a complete
pattern as recited in claims 1 and 9. App. Br. 3-6. According to Appellants,
"Dufresne uses multiple different, in size and shape, apertures to form a
complete pattern" and imaging only a single aperture shape would not work
for Dufresne's tubular element. Id. at 3--4. This contention is not well
taken.
Notwithstanding Appellants' arguments to the contrary, Dufresne
teaches that:
One specifically unique aspect of the present invention in
this particular step is the use of segments of patterns, rather than
complete patteTI1s of exposure in the aperture mask. It is typical,
as shown in FIG. 2lb of W097/42910, to have a single type of
aperture hole (or a complete pattern in contact with the surface
as with a conventional stencil or exposure mask) through which
the exposure of the radiation is projected. As shown in FIG. 2,
an aperture mask 100 is shown with a pattern of aperture holes
106, 108, 110, and 112 of which at least two are significantly
different in size and shape (usually most or all may be different).
Laser radiation ... passes through one of the openings 106 in the
aperture mask 100 and exposes a latent image (not shown)
corresponding to the shape of the opening 106 on the surface of
the photosensitive (photoresist) coated tubular element 52 (FIG.
4).
Dufresne, 11:20-37 (emphasis added).
Implicit in this teaching in Dufresne is that (1) a single type of
aperture hole in a conventional mask can be used to provide segments of
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Application 13/613,427
patterns, (2) two of the four apertures in its mask need not be significantly
different in sizes and shapes, and (3) the type of apertures (shape and size of
openings) used is dependent on the image to be formed. KSR, 550 U.S. at
418; In re Preda, 401F.2d825, 826-27 (CCPA 1968) ("[I]n considering the
disclosure of a reference, it is proper to take into account not only specific
teachings of the reference but also the inferences which one skilled in the art
would reasonably be expected to draw therefrom.") In fact, Appellants
acknowledge that at the time of the invention, one of ordinary skill in the art
knew that repeatedly imaging a substrate through the same aperture in a
mask to form a complete pattern, such as a multiple square-like or net-like
pattern, was known. Spec., 5, 1. 24-6, 1. 10; Figs. 3, 4; see also App. Br. 4
referencing Figures 3 and 4 (prior art imaging). Moreover, the images or
relief patterns (e.g., multiple square or multiple hexagonal relief structures)
taught by Fleming involve a plurality of the same or substantially the same
shape designs that are reasonably expected by one of ordinary skill in the art
to obtain by repeatedly imaging a substrate through the same aperture or two
or more substantially identical apertures in a mask.
Under the above circumstances, we find no reversible error in the
Examiner's determination that one of ordinary skill in the art would have
been led to use the same aperture or two or more substantially the same
apertures in a mask to repeatedly image a substrate in the manner taught by
Dufresne to form the types of complete patterns taught by Fleming,
thusarriving at the invention recited in claims 1 and 9. In re Kubin, 561 F.3d
1351, 1359 (Fed. Cir. 2009) ("Where a skilled artisan merely pursues
'known options' from a 'finite number of identified, predictable solutions,'
obviousness under § 103 arises.") (quoting KSR Int 'l. Co. v. Teleflex Inc.,
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Application 13/613,427
550 U.S. 398, 421 (2007)); Jn re Boesch, 617 F.2d 272, 276 (CCPA
l 980)("[D]iscovery of an optimum value [or the use of optimum or
workable apertures] of a result effective variable [ (the types of apertures that
correspond to a latent segmented image or segmented pattern useful for
forming a desired complete image or pattern)] ... is ordinarily within the
skill of the art.") .
ORDER
In view of the foregoing, we affirm the Examiner's rejection of claims
1-16 under 35 U.S.C. § 103(a) as unpatentable over the combined
disclosures of Fleming and Dufresne, but do not reach any decision on the
Examiner's rejections of claims 1, 3, and 4 under 35 U.S.C. § 102(b) as
anticipated by the disclosure of Dufresne and claims 2 and 5-16 under 35
U.S.C. § 103(a) as unpatentable over the disclosure of Dufresne.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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