Ex Parte Kley

Patent Trial and Appeal Board

Feb 11, 2013

12214573 (P.T.A.B. Feb. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte VICTOR B. KLEY
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Appeal 2013-003195
Application 12/214,573
Technology Center 2800
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Before ROBERT E. NAPPI, DEBRA K. STEPHENS, and LYNNE E.
PETTIGREW, Administrative Patent Judges.

Per curiam.

DECISION ON APPEAL
Appeal 2013-003195
Application 12/214,573

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Appellant appeals under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 91-103. We have jurisdiction under 35 U.S.C. § 6(b).
Claims 1-90 have been cancelled.
We AFFIRM.

Introduction
According to Appellant, the invention relates to a scanning probe
microscopy (SPM) inspection and/or modification system that uses SPM
technology and techniques including microstructured SPM probes for
inspection and/or modification of an object. (Abstract).

STATEMENT OF THE CASE

Exemplary Claim
Claim 91 is an exemplary claim and is reproduced below:
91. A method comprising:
modifying an object by use of an energy source
directed to and interacting with material placed on the object
by a scanning probe microscope (SPM) other than a scanning
tunneling microscope.

References
Ichikawa US 5,416,331 May 16, 1995
Colbert US 2002/0084410 A1 Jul. 4, 2002

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Application 12/214,573

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Rejections
Claims 91- 103 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ichikawa and Colbert.

We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii)(2011).

ISSUE 1
35 U.S.C. § 103(a): claims 93, 95, and 101
Appellant indicates claim 93, 95, and 101 are cancelled in the Appeal
Brief (App. Br. iii, ¶4) Status of Amendments). However, no amendment
which cancels these claims has been properly submitted by Appellant and
entered by the Examiner. Therefore, the rejection of these claims is before
us and we pro forma affirm the rejection of claim 93, 95, and 101 under 35
U.S.C. § 103(a) as being unpatentable over Ichikawa and Colbert.

ISSUE 2
35 U.S.C. § 103(a): claims 91, 92, 94, 96-100, 102, and 103
Appellant asserts their invention is not obvious over Ichikawa and
Colbert because Colbert is not prior art (App. Br. vi; Reply Br. 2-3).
Appellant further argues the claimed invention is not obvious over Ichikawa
alone (Reply. Br. 3-4). Specifically, Appellant contends neither Ichikawa
nor Colbert teaches or suggests the invention recited in claim 91.
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Application 12/214,573

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Issue: Has the Examiner erred in finding the combination of Ichikawa
and Colbert or alternatively, Ichikawa teaches or suggests the invention as
recited in claim 91?

ANALYSIS
We agree with the Examiner’s findings and conclusions and adopt
them as our own. Appellant has not provided sufficient evidence or
argument to persuade us the invention is not obvious over Ichikawa and
Colbert and Ichikawa alone.
Accordingly, the Examiner did not err in finding the combination of
Ichikawa and Colbert or alternatively, Ichikawa teaches or suggests the
invention as recited in independent claim 91. Independent claims 94, 96, 99,
and 100 were argued based on the same arguments set forth for claim 91 and
thus, for the reasons set forth below we are not persuaded the Examiner
erred. Dependent claims 92, 97, 98, 102, and 103 were not separately
argued and therefore, fall with their respective independent claims.
Therefore, the Examiner did not err in rejecting claims 91, 92, 94, 96-100,
102, and 103 under 35 U.S.C. § 103(a) for obviousness.

DECISION
The Examiner’s rejection of claims 91-103 under 35 U.S.C. § 103(a)
is affirmed.

No time period for taking any subsequent action in connection with
Appeal 2013-003195
Application 12/214,573

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this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).

AFFIRMED

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