Ex Parte Ellin et alDownload PDFBoard of Patent Appeals and InterferencesSep 23, 200910494732 (B.P.A.I. Sep. 23, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ALEXANDER DAVID SCOTT ELLIN, JAMES REYNOLDS HENSHAW, and DAVID ROBERTS MCMURTRY ____________ Appeal 2009-002645 Application 10/494,732 Technology Center 3700 ____________ Decided: September 23, 2009 ____________ Before WILLIAM F. PATE III, STEFAN STAICOVICI, and KEN B. BARRETT, Administrative Patent Judges. WILLIAM F. PATE III, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE This is an appeal from the final rejection of claims 1-5 and 7-13. These are the only claims in the application. We have jurisdiction over the appeal under 35 U.S.C. §§ 134 and 6. Appeal 2009-002645 Application 10/494,732 2 The claimed invention is directed to a method of treating a substrate to produce a pattern thereon. Claim 13, reproduced below, is further illustrative of the claimed subject matter. 13. A method of treating a substrate with laser light to produce a generally periodic pattern thereat, comprising: generating a reference signal; displacing the substrate in a direction of movement relative to the laser light by use of a displacement mechanism; providing a motion signal indicative of that displacement; monitoring the motion and reference signals; maintaining the velocity of the displacement so as to keep the motion and reference signals substantially in synchronism, and; treating the substrate by means of directing pulses of the laser light at the substrate at a rate determined by the reference signal so as to produce the periodic pattern, wherein the rate of the pulses does not cause treatment at every successive period of the pattern. REFERENCES The references of record relied upon by the examiner as evidence of anticipation and obviousness are: Golker US 4,406,939 Sep. 27, 1983 Kabushiki1 EP 380 810 A2 Aug. 8, 1990 1 While Kurosawa is the first-named inventor of the European published application, the Examiner refers to the document as Kabushiki. To avoid confusion we will also use that name. Appeal 2009-002645 Application 10/494,732 3 REJECTIONS Claims 1-4, 7 and 9-13 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Golker. Claims 5 and 8 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Golker in view of Kabushiki. Rejections of claims 1-4, 7 and 9-13 under 35 U.S.C. § 102(b) as being anticipated by Kabushiki I (EP 380,810 A2) and claims 5 and 8 under 35 U.S.C. §103(a) as unpatentable over Kabushiki I in view of Kabushiki II (EP 420,667 A2) have been withdrawn by the Examiner on page 3 of the Answer. ISSUE Appellants argue that Golker does not teach: operating the laser wherein the pulses do not cause treatment at every successive period of the pattern as claimed in claim 13; or, treatment of the substrate occurring not at every successive incremental point of the pattern but at increments which are not a factor of the total number of increments required on the substrate as claimed in claim 1. Therefore, the issue for our consideration in this appeal is whether the Examiner erred in finding that Golker anticipates or renders obvious the method steps quoted above with respect to claim 13 and claim 1. ANALYSIS We have carefully reviewed the rejections on appeal in light of the arguments of the Appellants and the Examiner. As a result of this review, we have determined that Appellants have established that the Examiner Appeal 2009-002645 Application 10/494,732 4 erred in rejecting the claimed subject matter under § 102 and § 103 respectively. Therefore, the rejections on appeal are reversed. The following are our findings of fact with respect to the scope and content of the prior art and the difference between the art and the claimed subject matter. Golker generally discloses the method of treating a substrate to produce a pattern thereon. In Fig. 1 of Golker, Golker is incrementally rotated, and a laser pulse is issued after each increment of rotation. See col. 2, ll. 52-62. Therefore, the treatment occurs at each successive incremental point, and the Figure 1 embodiment does not anticipate or render obvious claims 1 and 13. We note that the Examiner points to the Golker disclosure at col. 2, l. 63 which refers to a random angular position. From the totality of the disclosure, and especially ll. 12-16 of col. 3, we believe Golker refers to the random position as a starting point for the code pattern. Therefore, we do not credit the Examiner’s finding that Golker treats the disk in a random fashion. Furthermore, we agree with Appellants that a random pattern, even if disclosed by Golker would not anticipate or render obvious claims 1 and 13, since a random pattern may indeed treat the substrate at successive points in a pattern. Two successive points of treatment are not prohibited if the pattern is truly random. With respect to the Fig. 2 embodiment, Golker discloses in Col. 3, ll. 32-33 that the marks produced on the code disk can be produced at varying incremental distances from adjacent marks. However, these marks still appear to be produced successively. See col. 3, ll. 29-33. Accordingly, the Fig. 2 embodiment of Golker does not anticipate or render obvious the subject matter of claims 13 and 1. Appeal 2009-002645 Application 10/494,732 5 Finally, the Fig. 3 embodiment appears to sequentially, incrementally mark the substrate, and thus, the Fig. 3 embodiment does not appear to anticipate or render obvious the subject matter of claim 13 and claim 1. We have carefully considered the other reference applied by the Examiner, but find therein, no disclosure which would mitigate the problems that we have pointed out with respect to Golker. Accordingly, the Appellants have established that the Examiner erred in rejecting the subject matter on appeal under § 102 and § 103 of the statute. Therefore, the rejections of the claims on appeal are reversed. REVERSED Vsh OLIFF & BERRIDGE, PLC P.O. BOX 320850 ALEXANDRIA VA 22320-4850 Copy with citationCopy as parenthetical citation