Ex Parte Devoe et al

Board of Patent Appeals and Interferences

Sep 16, 2010

10297958 (B.P.A.I. Sep. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT J. DEVOE, BROOK F. DUERR,
PATRICK R. FLEMING, and HARVEY W. KALWEIT
____________

Appeal 2009-014688
Application 10/297,958
Technology Center 1700
____________

Before EDWARD C. KIMLIN, JEFFREY T. SMITH, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL1

This is an appeal from the final rejection of claims 1-14, 16 and 48-
53. Claim 1 is illustrative:

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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Application 10/297,958

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1. A method for making a structure, comprising:

(a) forming a molded article with at least one
macroscopic fabrication process comprising injection molding,
compression molding, embossing, extrusion embossing, and
polymerizing within a mold, wherein the molded article
comprises a surface with at least one feature;

(b) applying a multiphoton-curable composition within or
on the feature on the surface, wherein the composition
comprises a curable species and a multiphoton photoinitiator
system; and

(c) at least partially curing the multiphoton-curable
composition to create a three-dimensional image of a desired
shape and form a structure within or on the feature.

The Examiner relies upon the following references as evidence of
obviousness:

Winarski 6,115,339 Sep. 5, 2000

Cumpston et al. “Two-Photon Polymerization Initiators For Three-
Dimensional Optical Data Storage and Microfabrication” Nature, vol. 398
(March 4, 1999), pp. 51-54.

Appellants’ claimed invention is directed to a method for making a
structure from a molded article. The method involves applying to a feature
on the surface of the molded article a multiphoton-curable composition. The
multiphoton-curable composition is cured on the surface of the molded
article to create a three-dimensional image.
Appealed claims 1-14, 16 and 48-53 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Cumpston in view of Winarski.
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Appellants do not present an argument that is reasonably specific to
any particular claim on appeal. Accordingly, all the appealed claims stand
or fall together with claim 1.
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter would have been obvious to one of ordinary
skill in the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner’s rejection for essentially the
reasons expressed in the Answer and we add the following primarily for
emphasis.
There is no dispute that Cumpston, like Appellants, disclose a method
for making a structure comprising a three-dimensional image of a desired
shape by curing a multiphoton-curable composition. As recognized by the
Examiner, Cumpston does not disclose applying the multiphoton-curable
composition on the surface of a molded article before the curing step.
Rather, Cumpston is directed to generally providing a three-dimensional
image in a storage medium comprising a multiphoton-curable composition.
However, Appellants has not refuted the Examiner’s factual finding that “it
is nothing but conventional in the optical disk making art to provide data
layers on a preformed substrate, particularly one which contains an already
molded data layer of addressable bits - ie, projections and pits constituting at
least one feature on the surface thereof” (Ans. 4, third full sent.). Winarski
evidences the obviousness of forming a second data layer which is molded
over a first data layer. Accordingly, inasmuch as Cumpston teaches that the
multiphoton-curable system provides for “efficient 3D optical data storage
and lithographic microfabrication possible with other materials systems” (p.
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53, col. 2, second para.), we agree with the Examiner that it would have been
obvious for one of ordinary skill in the art to form a three-dimensional image
using a multiphoton-curable composition on any molded article, as broadly
claimed. Significantly, appealed claim 1 is sufficiently broad to embrace
forming a three-dimensional image on any molded article that comprises a
non-defined feature on its surface.
Appellant contends that “[t]he evidence of record does not support the
Examiner’s argument that one of ordinary skill in the art would utilize a two
photon polymerizeable material to replace the photopolymer that forms the
spacer layer 44 of Winkowski [sic, Winarski]” (Prin. Br. 6, first full para.).
However, as emphasized by the Examiner, the rejection is not based on the
premise of using a two photon polymerizeable material for the spacer layer
44 of Winarski. Rather, the basis of the Examiner’s rejection is the
obviousness of providing a three-dimensional image formed from a
multiphoton-curable composition on any molded substrate that has an
unspecified feature on its surface.
Appellants maintain that “curing along an interface is much more
difficult than curing a selected area within a material” (Reply Br. 3, last
para.). We agree with the Examiner, however, that, since the curing of
Cumpston is controlled on a point-to-point basis, “[i]t would not make any
difference whether the three-dimensional data is along an interface that
contains additional structure – ie, the feature in the claims” (Ans. 7). While
Appellants submit that “[u]nlike curing within a material, curing along an
interface requires an additional step of tracking of the interface at the
substrate surface” (id.), Appellants have not explained why such additional
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step would have been unobvious to one of ordinary skill in the art who
desires the three-dimensional effect produced by Cumpston.
As a final point, we note that Appellants base no argument upon
objective evidence of nonobviousness, such as unexpected results.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v).

AFFIRMED

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