Ex Parte Hartzell

Board of Patent Appeals and Interferences

May 24, 2006

10131551 (B.P.A.I. May. 24, 2006)

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The opinion in support of the decision being entered
today was not written for publication in a law journal
and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte JOHN W. HARTZELL
________________

Appeal No. 2006-1712
Application No. 10/131,551
________________

ON BRIEF
________________

Before KIMLIN, WALTZ, and FRANKLIN, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

REMAND TO THE EXAMINER
This is an appeal from the final rejection of claims 1-22.
Claim 1 is illustrative:
1. A method of forming, on a low-temperature substrate
selected from the group including glass, plastics, flexible
materials, metal foil, and textiles, and from a precursor material
having selectively and controllably changeable crystalline-
structure-related mechanical properties, a mechanical device
possessing (a) a pre-determined configuration, and therein (b) a
set of such mechanical properties, that are desired for the
performance by the completed device of a pre-chosen mechanical
task, said method comprising,

placing a selected substrate in a processing zone,

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Application No. 10/131,551

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forming, by thin-film layer-formation processing, a precursor
body of such material on the substrate,

selecting a volumetric region in that body which is suitable
(a) for the creation therefrom of the desired device configuration
and (b) for the establishment therein of the desired set of
crystalline-structure-related mechanical properties,

within the processing zone, subjecting the selected region to
a controlled changing of the crystalline structure therein, and
thus of the related mechanical properties, and performing this
subjecting step in a manner which avoids any heat-related damage
to the underlying supporting substrate, and

by that processing, achieving, in the selected region, the
desired set of mechanical properties.

The examiner relies upon the following references as evidence
of obviousness:
Aklufi et al. 6,176,922 B1 Jan. 23, 2001
(Aklufi)
Hartzell US 2003/0196590 A1 Oct. 23, 2003
(Patent Application Publication, filed Apr. 23, 2002)
Hartzell US 2003/0196592 A1 Oct. 23, 2003
(Patent Application Publication, filed Apr. 23, 2002)
Hartzell US 2003/0196593 A1 Oct. 23, 2003
(Patent Application Publication, filed Apr. 23, 2002)

Im et al. (Im) WO 97/45827 Dec. 4, 1997

Claims 1-22 stand rejected under 35 U.S.C. § 112, second
paragraph. Claims 1-22 also stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Im in view of Aklufi. In
addition, the appealed claims stand rejected under the judicially
created doctrine of obviousness-type double patenting.
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Application No. 10/131,551

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Appellant makes the following argument in response to the
§ 103 rejection at page 12 of the Substitute Appeal Brief, third
paragraph:
Failure of the cited and applied art to support a
proper obviousness rejection of appellant's claims is
further strongly supported by the clearly expressed
Declarations of two people, Mark A. Crowder, and Robert
S. Sposili, who possess impressive credentials
establishing them as being very skilled in, and
knowledgeable about, the relevant prior art. These
Declarations are, of course, part of the file history of
this case. Unequivocally, these two declarants each has
stated that the cited and applied prior art, viewed as a
whole, does not lead one toward making or practicing
appellant's claimed invention.

We have reviewed the Examiner's Answer in vain for any
consideration of the declarations cited by appellant. Indeed,
appellant notes at page 4 of the Reply Brief that the declarations
are unchallenged by the examiner.
Manifestly, the examiner has not taken into consideration all
the evidence of obviousness and nonobviousness in reaching the
legal conclusion of obviousness. Accordingly, this application is
remanded to the examiner for the purpose of allowing the examiner
to place on record consideration of the declarations cited by
appellant. The examiner should bear in mind that an opinion by a
declarant regarding the legal conclusion of obviousness is not
evidence, though some weight should be given to a persuasively
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supported statement by one skilled in the relevant art with
respect to what was not obvious to him/her. In re Grunwell,
609 F.2d 486, 491, 203 USPQ 1055, 1059 (CCPA 1979).
This remand to the examiner pursuant to 37 CFR § 41.50(a)(1),
effective September 13, 2004, 69 Fed. Reg. 49960 (August 12,
2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)) is made
for further consideration of a rejection. Accordingly, 37 CFR
§ 41.50(a)(2) applies if a Supplemental Examiner's Answer is
written in response to this remand by the Board.
REMANDED

EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
THOMAS A. WALTZ ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
BEVERLY A. FRANKLIN )
Administrative Patent Judge )

ECK:clm

Appeal No. 2006-1712
Application No. 10/131,551

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