Ex Parte Kim

Patent Trial and Appeal Board

Mar 22, 2016

12822592 (P.T.A.B. Mar. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/822,592 06/24/2010 Eui Kyoon Kim
51344 7590 03/24/2016
BROOKS KUSHMAN P,C /Oracle America/ SUN I STK
1000 TOWN CENTER, TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075-1238
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.
SUN100284-US-NP 6112
EXAMINER
LIGHTFOOT, ELENA TSOY
ART UNIT PAPER NUMBER
1715
NOTIFICATION DATE DELIVERY MODE
03/24/2016 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@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte EUI KYOON KIM
Appeal2014-005505
Application 12/822,592
Technology Center 1700
Before BEYERL YA. FRANKLIN, TERRY J. OWENS, and A VEL YN M.
ROSS, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's
decision rejecting claims 1-19. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
Appeal2014-005505
Application 12/822,592
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellant's subject matter on appeal and is
set forth below (with text in bold for emphasis):
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:
coating the second side of the substrate film with a curable liquid
composition from a dispenser;
moving the substrate film from the dispenser to a patterning
roller, the substrate film being guided by at least one roller;
patterning the curable liquid composition onto the second side of the
substrate film with the patterning roller, the curable liquid composition
comprising a radical photoinitiator and a polymerizable component
comprising at least one acrylate;
illuminating the curable liquid composition 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
• • ' 1 • 1 impnm rnyer s10e;
moving the substrate film from the patterning roller to metal
deposition station, the substrate film being guided by at least one roller;
and
placing a multilayer data recording assembly over the second imprint
layer side.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Goetz
Raniuk et al.
Bu et al.
Uchida et al.
us 4,198,446
US 2007 /0206477 Al,
US 2008/0226889 Al,
US 2011/0014499 Al,
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Apr. 15, 1980
Sept. 6,2007
Sept. 18, 2008
Jan. 20, 2011
Appeal2014-005505
Application 12/822,592
THE REJECTIONS
1. Claims 1-19 are rejected under § 103 as being obvious over Raniuk in
view of Uchida.
2. Claims 1-19 are rejected under§ 103 as being obvious over Raniuk in
view of Uchida, and further in view of Bu.
ANALYSIS
We adopt the Examiner's findings and position in the Answer, and
AFFIRM, and add the following for emphasis.
Rejection 1
Beginning on page 4 of the Appeal Brief, Appellant argues that
Raniuk fails to teach the claimed feature pertaining to a multilayer storage
including a "patterned imprint layer" formed by "moving the substrate film
from the dispenser to a patterning roller, the substrate film being guided by
at least one roller". Appellant argues that Raniuk fails to provide any details
about how the embossed layer steps are accomplished, in particular,
Appellant argues that Raniuk fails to disclose the substrate film moving from
the dispenser to the patterning layer and from the patterning roller to a metal
deposition station. Appeal Br. 5.
In response, beginning of page 6 of the Answer, the Examiner
explains that Figure 72 of Raniuk depicts a substrate film that moves from a
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Appeal2014-005505
Application 12/822,592
dispenser1 to an embossing drum (item 7210), and from this drum to a
continuous sputter coating facility, whereby the substrate film is guided by
at least one roller. Raniuk, Figure 72, para. [0014]. Ans. 6-7.
In reply, Appellant reiterates the stated position that Raniuk does not
teach a process in which a substrate film moves from a dispenser to a
patterning roller and from the patterning roller to a metal deposition station.
Reply Br. 2. It appears that Appellant's interpretation of claim 1 is different
from the Examiner's interpretation of claim 1. We agree with the Examiner
that Raniuk in fact teaches moving the substrate film from a dispenser to a
patterning roller, and moving the substrate film from the patterning roller to
a metal deposition station, as required by claim 1. Ans. 2-3. Appellant's
claim 1 does not exclude additional steps between moving the substrate film
from a dispenser, to a patterning roller, and to a metal deposition station.
With regard to Appellant's argument pertaining to the Anilox-to-
rubber-to-web process presented on pages 5---6 of the Appeal Brief, we agree
with the Examiner's stated findings made on page 3 of the Answer, and with
the Examiner's reply made on pages 7-8 of the Answer, and therefore are
not convinced by Appellant's arguments in this regard.
In view of the above, we affirm Rejection 1. Because Appellants rely
upon the same arguments presented for Rejection 1, for Rejection 2, we also
affirm Rejection 2 for the same reasons.
1 The Examiner finds that Raniuk's manual syringe discussed in paragraph
[0126] of Raniuk is the claimed dispenser. Ans. 2. Alternatively, the
Examiner finds that paragraph [0419] of Raniuk teaches use of an Anilox-to-
rubber-to-web coating application technique. Id.
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Appeal2014-005505
Application 12/822,592
DECISION
Each rejection is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a).
ORDER
AFFIRMED
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