Ex Parte Kim

Patent Trial and Appeal Board

Jul 28, 2017

12822600 (P.T.A.B. Jul. 28, 2017)

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.
12/822,600 06/24/2010 Eui Kyoon Kim R00291NP 6120
129668 7590
Invoke / Oracle
c/o CPA Global
900 Second Avenue South, Suite 600
Minneapolis, MN 55402
EXAMINER
LAW, NGA LEUNG V
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
08/01/2017 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):
docketing @ InvokeIP.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EUI KYOON KIM1
Appeal 2016-000861
Application 12/822,600
Technology Center 1700
Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
MARK NAGUMO, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1—4, 7, 8, 10-16, 19, and 20.2 We have
jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appeal Brief, the real party in interest is Oracle
International Corp. (App. Br. 2).).
2 Claims 5, 6, 17 and 18 have been withdrawn from consideration. (Final
Act. 1). The status of pending claim 9 is unclear on the present record.
Claim 9 has not been subject to rejection presented for our review.
Appeal 2016-000861
Application 12/822,600
BACKGROUND
Appellant’s invention relates to methods for making an optical tape
for data storage from a substrate film. Claim 1 is representative of the
subject matter on appeal and is reproduced below from the Claims Appendix
to the principal Brief:
1. A method for forming an optical tape for data storage
from a substrate film, the substrate film having a first substrate
side and a second substrate side, the method comprising:
a) patterning a curable liquid composition with a
patterning roller onto the second side of the substrate film, the
curable liquid composition comprising a cationic photoinitiator
and a polymerizable component selected from the group
consisting of vinyl ethers, cyclohexene oxides, glycidyl ether
epoxides, and combinations thereof, the substrate film being
supplied to the patterning roller from a spool;
b) illuminating the curable liquid composition while the
curable liquid composition is contacting the patterning roller to
form a patterned imprint layer disposed over the substrate film,
the imprint layer having a first imprint layer side and a second
imprint layer side, the first imprint layer side being more
proximate to the second substrate side than the second imprint
layer side; and
c) placing a multilayer data recording assembly over the
second imprint layer side, the substrate film moving during
operation from the spool to the patterning roller and then to
depositions stations for placement of the multilayer data
recording assembly such that a first portion of the film substrate
is at the patterning roller while a second portion of film
substrate is at the deposition stations.
The Examiner maintains, and Appellant appeals, the rejection of
claims 1—4, 7, 8, 10-16, 19, and 20 under 35 U.S.C. § 103(a) as unpatentable
over Raniuk et al. (US 2007/0206477 Al; Sept. 6, 2007) in view of Uchida
2
Appeal 2016-000861
Application 12/822,600
et al. (WO 2009/110596 using copending US Patent Application Publication
2011/0014499 Al; Jan. 20, 2011) as English translation) and Kamo et al.
(WO 2007/116565 Al; using the US Patent Application Publication
2010/0061212 Al; Mar. 11, 2010) as English translation).
OPINION
We have reviewed each of Appellant’s arguments for patentability.
We will sustain the Examiner’s § 103(a) rejection of claims 1—4, 7, 8, 10—16,
19, and 20 for essentially those reasons expressed in the Final Action and
Answer, including the Response to Argument section.3
We add the following:
Appellant argues Raniuk, Uchida, and Kamo do not disclose a
patterned imprint layer formed from the chemical precursors called for by
independent claims 1, 12, and 19. Appellant argues only Raniuk is directed
to tape technologies but does not disclose any of the chemical precursors
required by the present invention to form the imprint layer and Uchida and
Kamo are not directed to tape technologies. (App. Br. 6). Appellant argues
Uchida describes hundreds of different chemical precursors without any
guidance as to criteria for making a suitable selection required by the present
invention. (Id. at 8). Appellant argues the methods of Kamo are directed to
forming a recording layer not directed to forming and imprint layer. (Id).
Appellant’s arguments are without persuasive merit. The Examiner
found Raniuk teaches ah the features of claims 1,12 and 19, including a UV
3 We limit our discussion to independent claims 1, 12, and 19, the claims
argued by Appellant.
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Appeal 2016-000861
Application 12/822,600
curable monomer fluid (curable liquid composition) except the vinyl ethers
as the monomer (polymerizable component) and the cationic photoinitiator
in the curable liquid composition. (Final Act. 2-4; Raniuk || 126, 127).
The Examiner found Raniuk teaches the tape substrate is patterned utilizing
patterning rollers prior to entering the coating deposition station. (Final Act.
3). The Examiner found Uchida describes UV curable liquid composition
containing vinyl ether and a photo initiator. {Id. at 4; Uchida 1119). The
Examiner found both Raniuk and Uchida described imprinting a UV curable
liquid composition. {Id. at 3^4; Raniuk || 126—127; Uchida Tflf 100-101).
The Examiner further found Kamo describes polymerizable compositions
containing vinyl ether and onium salts cationic polymerization initiators.
{Id. at 4). The Examiner determined it would have been obvious to utilize
onium salts cationic polymerization initiators in a UV curable composition
for an UV nanoimprint method. {Id. at 4—5).
A person of ordinary skill in the art would have recognized the
suitability of utilizing known precursor compositions. Uchida does not place
a limit on UV curable resin suitable for imprinting methods. (Uchida 1109).
A person of ordinary skill in the art would have reasonably expected that
suitable polymerization initiators including cationic polymerization initiators
would have been suitable for imprinting methods. Appellant has not
directed us to evidence that establishes UV cationic polymerization initiators
provide unexpected results compared to other UV polymerization initiators.
“Obviousness does not require absolute predictability of success ... all that
is required is a reasonable expectation of success.'1'’ In re Kubin, 561 F.3d
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Appeal 2016-000861
Application 12/822,600
1351, 1359-60 (Fed. Cir. 2009) (citingIn re 0’Fcirrell, 853 F.2d 894, 903-
04 (Fed. Cir. 1988)).
Appellant argues Raniuk, Figure 79, does not disclose a “dynamic
system in which during operation a tape moves from a spool to a patterning
roller and then through deposition stations for placement of a multilayer data
recording assembly.” (App. Br. 11).
Appellant’s argument is not persuasive. We agree with the Examiner
that Raniuk describes patterned imprint layer is formed from applying a
monomer fluid on a substrate, and the curable liquid composition is
embossed by a drum embossing (patenting roller) and subsequently the tape
is directed to the deposition zone depicted by Figure 79. (Answer 17—18;
Raniuk 11 126-127, 606-607).
Accordingly, we sustain the Examiner’s decision to reject claims 1—4,
7, 8, 10-16, 19, and 20 for the reasons presented by the Examiner and given
above.
DECISION
The Examiner’s obviousness rejections are 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)(1).
AFFIRMED
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