Ex Parte Ellin et al

Board of Patent Appeals and Interferences

Sep 23, 2009

10494732 (B.P.A.I. Sep. 23, 2009)

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