Ex Parte Emmons et al

Patent Trials and Appeals Board

Mar 20, 2019

14356645 - (D) (P.T.A.B. Mar. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/356,645 05/07/2014
32692 7590 03/22/2019
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Robert M. Emmons
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.
67875US006 2026
EXAMINER
JOHNSON, NANCY ROSENBERG
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
03/22/2019 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 ROBERT M. EMMONS, BRYAN V. HUNG, and
COREY D. BAL TS
Appeal2018-003146
Application 14/356,645
Technology Center 1700
Before KAREN M. HASTINGS, N. WHITNEY WILSON, and
JENNIFER R. GUPTA, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
rejections of claims 1-6, 11, and 12 under pre-AIA 35 U.S.C. § 103(a) as
obvious over either Yoon (WO 2010/011060 A2, published January 28,
2010), or Campbell (WO 2009/124107 Al, published October 8, 2009). We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant is the Applicant, 3M Innovative Properties Company, which is
also stated to be the real party in interest, as an affiliate of, and with, the 3M
Company (Appeal Br. 2).
Appeal 2018-003146
Application 14/356,645
Claim 1 is illustrative of the claimed subject matter ( emphasis added
to highlight limitation in dispute):
1. A light directing film comprising:
a surface comprising a plurality of microstructures with
peaks extending along a length of the surface, each
microstructure comprising a plurality of elevated portions and a
plurality of non-elevated portions,
wherein a diameter, De, of a largest circle that can be
overlaid on the surface without including at least a portion of an
elevated portion is less than about 0.5 mm, and
wherein the light directing film cannot be divided into a
plurality of same size and shape grid cells forming a continuous
two-dimensional grid satisfying a first condition, the first
condition being that each of at least 90% of the grid cells
comprise either:
(i) a single leading edge of an elevated portion or
(ii) a portion of an elevated portion where the elevated portion
has a length that is greater than an average length, L, of the elevated
portions.
Appellant's arguments solely focus on claim 1 (generally Appeal Br.;
Reply Br.); thus all the claims stand or fall with claim 1 for each rejection.
OPINION
We review the appealed§ 103(a) rejections for error based upon the
issues identified by Appellant and in light of the arguments and evidence
produced thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections")). After having
considered the evidence presented in this Appeal and each of Appellant's
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Application 14/356,645
contentions, we are not persuaded that Appellant identifies reversible error,
and we affirm the Examiner's§ 103(a) rejections for the reasons expressed
in the Final Office Action and the Answer. We add the following primarily
for emphasis.
In assessing whether a claim to a combination of prior art elements or
steps would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements or steps according to their established functions. KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). "[T]he analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." Id. at 418.
Appellant's main argument with respect to each rejection whether
based on Yoon or Campbell is that the Examiner is de facto taking an
unreasonably broad interpretation of the disputed claim language highlighted
above because according to logic, both conditions (i) and (ii) must be
satisfied (App. Br. 3-8; generally Reply Br.). This argument is not
persuasive.
In construing claims, "the PTO must give claims their broadest
reasonable construction consistent with the specification .... Therefore, we
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation." In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007). "[A]s applicants may amend claims
to narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee." Id.
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Application 14/356,645
As pointed out by the Examiner, it is reasonable to construe the claim
language in accordance with its plain wording as alternatives, either (i) or
(ii) must be met, but not both need to be met, for the film to be lacking "a
first condition" as recited in claim 1 (Ans. 4, 5). Notably, Appellant's
Specification appears to describe precisely that at, e.g., page 19 of the
Specification (Spec. 19:10-13 ("Each of at least 90% or 92%, or 94%, or
96%, or 98% or 100% of the grid cells comprise either [(i)] or [(ii)]"). Thus,
Appellant has not shown error in the Examiner's determination that the
disputed claim language reasonably encompasses Yoon's or Campbell's
light directing film (e.g., Ans. 12).
While we appreciate Appellant's argument regarding De Morgan's
principles of logic (Appeal Br. 6), Appellant has not directed us to anything
in the Specification that supports the position that De Morgan's logic should
exclusively be used to interpret the claim language. One of ordinary skill in
the art would have readily interpreted the claim language in the same way as
the Examiner, especially in light of the sentence at page 19 referenced
above. Notably, in prosecution before the PTO "[i]t is the applicants'
burden to precisely define the invention, not the PTO's." In re Morris,
127 F. 3d 1048, 1056 (Fed. Cir. 1997). The purpose of this requirement is to
provide the public with adequate notice of the boundaries of protection
involved. The time to do so is during prosecution where an applicant has the
ability to amend the claims to more precisely define the metes and bounds of
the claimed invention. See Ex Parte Miyazaki, 89 USPQ2d 1207, 1210-12
(PT AB 2008).
Appellant also argues that the Examiner impermissibly relied on
drawing proportions in Campbell, and that methods known in the art would
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Application 14/356,645
not have allowed achievement of the recited film when enlarging Fig. 6 of
Campbell (Appeal Br. 9, 10). This argument is not persuasive of error for
reasons set out by the Examiner (Ans. 6, explaining that reliance upon actual
proportions of Campbell's Fig. 6 are not necessary for an obviousness
determination, and that no enlargement of Fig. 6 is needed; Appellant does
not provide any adequate response to these determinations of the Examiner).
Attorney's arguments in a brief cannot take the place of evidence. In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974).2
Thus, a preponderance of the evidence supports the Examiner's
obviousness determination of a light directing film as claimed based on
either Campbell or Yoon.
The Examiner's§ 103 rejections are affirmed.
ORDER
It is ordered that the Examiner's decision 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)
AFFIRMED
2 Notably, Campbell is "incorporated by reference in its entirety" in
Appellant's Specification (Spec. 13: 19-22) and shares a common inventor
and assignee with the case on appeal. Appellant is thus in the position to
know the proportions and dimensions, if necessary, of Campbell, yet has not
shown adequate evidence that the claim as interpreted herein does not
encompass Camp bell's light directing film.
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