Ex Parte Ellin et alDownload PDFPatent Trial and Appeal BoardNov 29, 201712659404 (P.T.A.B. Nov. 29, 2017) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/659,404 03/08/2010 Alexander David Scott Ellin 119651.01 2209 25944 7590 OLIFF PLC P.O. BOX 320850 ALEXANDRIA, VA 22320-4850 EXAMINER PAIK, SANG YEOP ART UNIT PAPER NUMBER 3742 NOTIFICATION DATE DELIVERY MODE 12/01/2017 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): OfficeAction25944@oliff.com j armstrong @ oliff.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALEXANDER DAVID SCOTT ELLIN, JAMES REYNOLDS HENSHAW, and DAVID ROBERTS MCMURTRY Appeal 2016-001028 Application 12/659,404 Technology Center 3700 Before: CHARLES N. GREENHUT, LEE L. STEPINA, and JASON W. MELVIN, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1— 18, 20—29, and 31.1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 An oral hearing was conducted on November 21, 2017. Appeal 2016-001028 Application 12/659,404 CLAIMED SUBJECT MATTER The claims are directed “to the production of a pattern by means of treating a substrate[,] for example[,] using laser light.” Spec. 1:11—13. Claim 10, reproduced below, is illustrative of the claimed subject matter. 10. A method of forming an encoder scale for a measurement device, the method comprising the steps of: (a) taking a substrate formed of a reflective material and having a reflective surface; (b) treating the reflective surface directly to darken the surface, the darkening of the surface reducing the reflectivity of the surface itself; and (c) using a laser to mark bright lines directly onto the surface, the marking of the bright lines restoring the reflectivity of the surface along the marked bright lines, and the bright lines defining an encoder scale. Claims App. A-2. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Fechter US 3,747,117 July 17, 1973 Golker US 4,406,939 Sept. 27, 1983 Domkowski US 4,652,528 Mar. 24, 1987 Veldkamp US 4,846,552 July 11, 1989 Machida US 4,883,710 Nov. 28, 1989 Williams US 5,120,927 June 9, 1992 Barenboim US 5,822,211 Oct. 13, 1998 REJECTIONS (I) Claims 10-17 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. 2 Appeal 2016-001028 Application 12/659,404 (II) Claims 10, 13, 14, 16, and 17 are rejected under 35 U.S.C. § 102(b) as anticipated by Golker. (III) Claims 1—4, 6—9, 20-23, and 27—29 are rejected under 35 U.S.C. § 103(a) as unpatentable over Golker, Fechter, Williams, and Veldkamp. (IV) Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over Golker, Fechter, Williams, Veldkamp, and Barenboim. (V) Claims 11, 18, and 31 are rejected under 35 U.S.C. § 103(a) as unpatentable over Golker and Domkowski. (VI) Claim 12 and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable over Golker and Fechter. (VII) Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over Golker and Williams. (VIII) Claim 24 is rejected under 35 U.S.C. § 103(a) as unpatentable over Golker, Fechter, Williams, Veldkamp, and Machida. OPINION Rejection (I); Written Description The Examiner finds that the limitations “reflective material” and “reflective surface” recited in claim 10 (and required by claims 11—17 via dependence from claim 10) are not supported by the original disclosure. Non-Final Act. 3^42. 2 We herein refer to the Specification filed Mar. 8, 2010 (“Spec.”); Second Non-Final Office Action, mailed Sept. 25, 2014 (“Non-Final Act.”); Appeal Brief filed Apr. 27, 2015 (“Appeal. Br.”); Examiner’s Answer mailed Aug. 27, 2015 (“Ans.”); and the Reply Brief filed Oct. 27, 2015 (“Reply Br.”). 3 Appeal 2016-001028 Application 12/659,404 Appellants contend that “two general types of encoder substrates may be employed,” specifically, ones with “a transmissive substrate through which light emitted on one side of the substrate passes so that an encoder scale thereon may be read by a device on the opposite side of the substrate” and ones with “a reflective substrate upon a surface of which light emitted on one side of the substrate is reflected so that an encoder scale thereon may be read by a device on the side of the substrate from which the light is emitted.” Appeal Br. 27. Appellants point out that the Specification discloses that “the substrates mentioned would in practice be stainless steel,” and contend that a person of ordinary skill in the art would understand the “reflective” limitations in claim 10 to be supported by the original disclosure. Id. at 27—28 (quoting Spec. 15:16—18. In response, the Examiner finds that the original disclosure “lacks . . . recited terminology such as ‘reflective material’ or ‘reflective surface.’” Ans. 12. Citing MPEP § 2163, Appellants reply that there is no in haec verba requirement under 35 U.S.C § 112, first paragraph. Reply Br. 10. To satisfy the written description requirement, “the [original] specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” AriadPharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Of pertinence here is what is required to support a claim to a genus, which is also discussed in Ariad. [A] sufficient description of a genus . . . requires the disclosure of either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can “visualize or recognize” the members of the genus. Id. at 1350. 4 Appeal 2016-001028 Application 12/659,404 The paragraph of the Specification in which Appellants’ partial quote above is taken states: The embodiments in the invention shown are merely illustrative and many variants are envisaged. The substrates mentioned would in practice be stainless steel but any material could be used. The invention is not limited to laser light ablation or vaporisation, but extends to the treatment of any substrate e.g.: the removal of an etch-resistant film on a substrate, laser deposition of material onto the surface; spraying the surface with e.g. ink, etch resist or a suitable chemical reagent; exposing a photographic film; laser marking bright lines onto a surface that has previously been darkened by etching, anodising or other suitable process; producing a depressed line feature which is subsequently filled with a contrasting material or given a contrasting surface finish; producing line features by mechanical means e.g. diamond scribing or painting, and; electric discharge machining. Spec. 15:15—16:5 (emphasis added). Thus, the Specification discloses that any material (even a non- reflective material) may be used for the substrate. Appellants do not direct our attention to any portion of the Specification discussing the reflectivity of substrates. Accordingly, the Specification does not disclose structural features common to the members of the genus (substrates composed of reflective material). Further, assuming arguendo that stainless steel is a reflective material, the Specification does not provide examples of other substrate materials that are also reflective. Thus, the Specification does not a representative number of species falling within the scope of the genus. In light of these deficiencies in the Specification, we agree with the Examiner 5 Appeal 2016-001028 Application 12/659,404 that one of skill in the art would not be able to “visualize or recognize” the members of the relevant genus. Ariad, 598 F.3d at 1350. Specifically, the disclosure of one example within a genus does not, under the facts of this case, provide written description support for a claim to the entire genus as set forth in claim 10. Consequently, we sustain the Examiner’s rejection of claim 10 and claims 2—7 depending therefrom as failing to comply with the written description requirement. Rejection (II); Anticipation, Golker The Examiner finds that Golker discloses “a reflective material such as glass which inherently includes a reflective surface[ and] an opaque layer which is a non-transparent layer that is provided/treated on the disk that forms a darkened surface.” Non-Final Act. 4. Appellants assert that Golker does not disclose “(i) ‘treating the reflective surface directly to darken the surface,’ and (ii) ‘using a laser to mark bright lines onto the surface, the marking of the bright lines restoring the reflectivity of the surface along the marked bright lines.’” Appeal Br. 8 (quoting claim 10). In response, the Examiner states, “[Golker] shows a glass disk with nickel vapor deposited thereon (column 2, lines 34—36) which is then applied with a laser that restores the reflectivity of the disk as stated in the ground of rejection.” Ans. 9. Thus, the Examiner finds that depositing nickel on the surface of the substrate satisfies the requirement in claim 10 to directly treat the reflective surface of the substrate itself. In reply, Appellants contend, “[t]he Answer fails to explain, however, how depositing and thereafter partially removing this nickel vapor by a laser 6 Appeal 2016-001028 Application 12/659,404 in any way alters the surface of Golker’s glass code disk 1 itself so as to constitute ‘treating the reflective surface directly.’” Reply Br. 4. We agree with Appellants on this point because applying a coating as disclosed by Golker is not the same as treating a surface directly and reducing the reflectivity of the surface itself as recited in claim 10. In this regard, claim 10 requires that it be the surface of the substrate that is treated and darkened, not the surface of the measurement device of which the substrate is a subcomponent. Thus, covering the surface of the substrate is not the same as directly darkening the surface of the substrate itself. Accordingly, we do not sustain the Examiner’s rejection of claim 10 and claims 13, 14, 16, and 17 depending therefrom as anticipated by Golker. Rejection (III); Golker, Fechter, Williams, and Veldkamp Claims 1—4, 6—9, 20—23, 27, and 29; Non-transparent Substrate Each of claims 1 and 27 requires the use of a non-transparent substrate. Claims App. A-1, A-4. The Examiner relies on Golker for many of the features recited in independent claim 1, but finds that Golker fails to disclose such a substrate. Non-Final Act. 5—6. Nonetheless, the Examiner finds that Williams discloses “a recording medium substrate for an encoder wherein the recording medium can be provided with a substrate that is made of plastics or metal, which is inherently non-transparent and also reflective.” Id. at 6. The Examiner also finds that Fechter teaches a recording medium with a plastic substrate darkened by anodization and that Velkamp discloses a substrate “made of metal, quartz, glass, or plastic, with an etch-resistant film (522) such as a photo resist film.” Id. The Examiner determines that it would have been obvious to a person of ordinary skill in the art that “the 7 Appeal 2016-001028 Application 12/659,404 substrate can be interchangeably formed of a non-transparent or a transparent substrate.” Id. at 7 (emphasis added). Appellants contend that the Examiner’s proposed modification to Golker would render Golker’s encoder inoperable because Golker intends for light to pass through its encoder, and making Golker’s substrate opaque would prevent this. Appeal Br. 11—12. In response, the Examiner states, “[w]ith respect to the substrate being ‘non-transparent,’ it is also noted that while Golker shows a glass disk, Golker does not exclusively limit the disk to be glass material only as Golker discloses that the code disk 1 ‘may, for example, be a glass disk.’” Ans. 10 (emphasis added; bolding omitted). Appellants contend that Golker requires a transparent substrate, and that the Examiner’s finding that Golker does not require glass fails to address Appellants’ argument that replacing Golker’s transparent substrate with a non-transparent substrate would render Golker’s encoder inoperable. See Reply Br. 4—5. We agree with Appellants on this point. The method of operation in Golker requires transmission of light through the encoder, and Golker’s disclosure that materials other than glass may be used does not negate this requirement. See Golker, 1:10-12, 22—23. Accordingly, we disagree with the Examiner’s finding that “the substrate can be interchangeably formed of a non-transparent or transparent substrate,” and we do not sustain the Examiner’s rejection of independent claims 1 and 27 and claims 2-4, 6—9, 20-23, and 29, which depend from claim 1, as unpatentable over Golker, Fechter, Williams, and Veldkamp. 8 Appeal 2016-001028 Application 12/659,404 Claims 18 and 28; Continuous Relative Displacement Claim 18 recites, in part: operating the displacement mechanism to cause continuous relative displacement between the substrate and the substrate treatment device; and operating the control system to monitor the displacement signal and cause the substrate treatment device to treat the substrate at intervals so as to produce a pattern while the continuous displacement takes place. Claims App. A-3. Claim 28 recites the same feature. Id. at A-5. Appellants contend that the Examiner errs in finding that Golker discloses “operating the displacement mechanism to cause continuous relative displacement between the substrate and the substrate treatment device” as recited in claim 18. Appeal Br. 24; see also Non-Final Act. 9 (referring to Golker, 2:63—3:6 for this feature). Appellants refer to a BPAI decision discussing Golker in support of the contention that Golker discloses only intermittent movement. Appeal Br. 24 (citing Ex parte Ellin, Appeal No 2009-002645 (BPAI 2009)). The Examiner responds that the Ellin decision does not directly analyze Golker for this disclosure. Ans. 12. Additionally, the Examiner states, “Golker, however, shows a displacement device (10, 24) wherein as such device is a continuous operative condition, it would provide ‘continuous relative displacement.’” We do not sustain the rejection of claims 18 and 28 because the Examiner has not shown by a preponderance of the evidence that Golker treats a substrate to produce a pattern while continuous displacement takes place between the treatment device and the substrate. Although Golker may operate in a continuous operative condition, as found by the Examiner, the 9 Appeal 2016-001028 Application 12/659,404 Examiner does not explain persuasively why such operation provides the above-noted continuous displacement between the treatment device and the substrate. Thus, we do not sustain the Examiner’s rejection of claims 18 and 28 as unpatentable over Golker, Fechter, Williams, and Veldkamp. Rejections (IV)—(VIII) The Examiner’s use of Fechter, Williams, Barenboim, Domkowski, and Machida does not remedy the deficiencies discussed above regarding Rejections (II) and (III). See Final Act. 8—10. Accordingly, we do not sustain Rejections (IV)-(VIII). DECISION (I) The Examiner’s rejection of claims 10—17 as failing to comply with the written description requirement is affirmed. (II) The Examiner’s rejection of claims 10, 13, 14, 16, and 17 as anticipated by Golker is reversed. (III) The Examiner’s rejection of claims 1—4, 6—9, 20—23, and 27—29 as unpatentable over Golker, Fechter, Williams, and Veldkamp is reversed. (IV) The Examiner’s rejection of claim 5 as unpatentable over Golker, Fechter, Williams, Veldkamp, and Barenboim is reversed. (V) The Examiner’s rejection of claims 11, 18, and 31 as unpatentable over Golker and Domkowski is reversed. (VI) The Examiner’s rejection of claims 12 and 18 as unpatentable over Golker and Fechter is reversed. (VII) The Examiner’s rejection of claim 15 as unpatentable over Golker and Williams is reversed. 10 Appeal 2016-001028 Application 12/659,404 (VIII) The Examiner’s rejection of claim 24 as unpatentable over Golker, Fechter, Williams, Veldkamp, and Machida is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART 11 Copy with citationCopy as parenthetical citation