Ex Parte Kley

Patent Trial and Appeal Board

Jun 24, 2013

12214573 (P.T.A.B. Jun. 24, 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 REQUEST FOR REHEARING

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STATEMENT OF THE CASE
Appellant filed a Request for Rehearing under 37 C.F.R.
§ 41.52(a)(1) (hereinafter “Request”) for reconsideration of our Decision
mailed February 13, 2013 (hereinafter “Decision”).
Our Decision affirmed the Examiner’s rejection of:
Claims 91- 103 as being unpatentable under 35 U.S.C. § 103(a) over
Ichikawa and Colbert and
Claims 91-103 as being unpatentable under 35 U.S.C. § 103(a) over
Ichikawa.

We have reconsidered our Decision, in light of Appellant’s arguments
in the Request for Rehearing, and we grant the request.

Appellant requests reconsideration of the following issues:

(1) Has the Examiner erred in relying on Colbert as prior art?

(2) Has the Examiner erred in concluding it would have been
obvious to an ordinarily skilled artisan upon reading Ichikawa, to
modify an object by using an energy source directed to and interacting
with material placed on the object by a scanning probe microscope
(SPN) other than a scanning tunneling microscope?

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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.

ISSUE 1
Appellant argues the Colbert reference cannot be used in rejecting his
claims since Colbert is not prior art (Request 3-4). Specifically, in the
Appeal Brief, Appellant asserts “the present application claims domestic
priority in some instances as far back as July 28, 1994” (App. Br. vi)
(emphasis added). Appellant then contends support can be found in U.S.
Patent 5,751,683 filed on July 24, 1995 (hereinafter, Kley ‘683) pointing to
column 2, lines 61-66; column 3, lines 45-49; and column 4, lines 28-37
(App. Br. vii). Kley ‘683 discloses a positioning system for positioning the
write/read mechanism and the storage medium (col. 2, ll. 14-16). Kley ‘683
further discloses the write/read mechanism comprises one or more write
probes (col. 2, ll. 61-63). In Kley ‘683:
The controller is used in this embodiment to (A) during a write
mode, control the positioning apparatus in positioning the write
probes over the storage medium so that the light emitting write tips
are over the storage medium, (B) during the write mode, control each
light emitting write probe to emit a predetermined amount of light so

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as to cause a predetermined amount of alteration of the storage
medium so as to write data thereto.

Col. 3, ll. 41-49.

The biochemical instrument comprises a probe that includes a porous
tip and a tip 30 positioning apparatus to position the tip with respect to
a sample material. The positioning apparatus is used to position the
probe and sample material with respect to each other. The controller is
used to (A) control the positioning apparatus in positioning the probe
over the sample and (B) control the tip positioning apparatus in
lowering the tip into the sample material to produce a biochemical
interaction between the porous tip and the sample material.

Col. 4, ll. 28-37.

In the Reply Brief, Appellant further points out column 5, lines 30-40
of the ‘683 patent discloses a positioning system:
As will be more evident from the following discussions, the
positioning system may be used as the positioning system in the data
storage devices described herein or as the positioning system in
measuring systems (such as atomic force microscopes (AFMs),
scanning tunneling microscopes (STMs), optical microscopes, and
nearfield microscopes), microfabrication systems, or other instruments
that require precise positioning.

Col. 5, ll. 32-40.
Appellant then argues “the write probe per se is clearly part of a
disclosed microscope” (Reply Br. 2). Based on these arguments, we
affirmed the Examiner. Appellant’s arguments are predicated on the write
probe being part of the positioning system; however, Kley ‘683 states the
write/read mechanism is separate from the positioning system (col. 2, ll. 14-
16). Appellant did not provide any explanation as to why the disclosed
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write/read mechanism and therefore, the “write probe” is a part of the
positioning system and moreover, no explanation as to why the write probe
would be a part of a disclosed microscope.
However, upon further review and despite Appellant’s lack of
explanation, we determine the disclosure reasonably conveys to skilled
artisans that Appellant had possession of the claimed invention, i.e., use of
an SPM not an STM, as of the filing date of Kley ’683.
Accordingly, we change our determination and concur with
Appellants’ argument that Colbert is not prior art. Accordingly, we reverse
our decision to sustain the Examiner’s rejection under 35 U.S.C. § 103(a)
over Ichikawa and Colbert.

ISSUE 2
Appellant’s argument regarding the rejection of the claims as being
obvious over Ichikawa is not persuasive.
Appellant additionally argues that:
the Examiner’s Answer “does not present any evidence that it
would have been obvious to one of ordinary skill in the art at
the time of the invention to modify an object by using an energy
source directed to and interacting with material placed on the
object [by] a scanning probe microscope (SPN) [sic, SPM]
other than a scanning tunneling microscope.” Reply Brief at
page 4.
(Request 5-6) This is not persuasive. The Examiner relied on Ichikawa as
teaching modifying an object by using an energy source directed to and
interacting with material placed on the object by a scanning probe
microscope (Final Rej. 3).
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Appellant argues “the Examiner would have to establish that scanning
probe microscopes were interchangeable in the context of the added ability”
(Reply. Br. 4); however, this is not the standard. Section 103 forbids
issuance of a patent when “the differences between the subject matter sought
to be patented and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject matter pertains.” KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The test for obviousness
is what the combined teachings of the references would have suggested to
one of ordinary skill in the art. See In re Kahn, 441 F.3d 977, 987-88 (Fed.
Cir. 2006); In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991); In re Keller,
642 F.2d 413, 425 (CCPA 1981). Moreover, in evaluating such references it
is proper to take into account not only the specific teachings of the
references but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom. In re Preda, 401 F.2d 825, 826
(CCPA 1968).
Appellant states “[a]tomic force microscopes (AFMs), scanning
tunneling microscopes (STMs), and near field microscopes were well known
at the time, and this reference to them clearly imparts enough information to
one skilled in the art that the write probe is part of an imaging system”
(Reply Br. 2-3). The Examiner articulated reasoning with a rational
underpinning as to why an ordinarily skilled artisan would have found it
obvious to use the energy source associated with an SPM other than an
STM (Final Rej. 3; Ans. 2-3 and 10-11). Specifically, the Examiner stated:

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AFM imaging will, for certain sample types, provide better imaging
that generates images with a higher resolution, for some sample types.
This is one of the major advantages of AFM imaging over
STM/STEM/TEM imaging, in spite of the fact that AFM devices are
more sensitive to their surroundings. In the interest of generating a
better resolved image of the specimen/sample, this would have been
obvious.

Ans. 5.

Appellant has not identified sufficient evidence or argument to
persuade us an ordinarily skilled artisan would not have found it obvious to
use an SPM other than an STM. Indeed, Appellant has not persuaded us
using an SPM other than an STM would have been “uniquely challenging or
difficult for one of ordinary skill in the art” or “represented an unobvious
step over the prior art.” See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19).
With respect to Appellant’s arguments that the Examiner should have
stated a new ground of rejection in rejecting the claims for being
unpatentable over Ichikawa alone (Request 6), we emphasize the following.
We are not persuaded Appellant was not given notice or the Examiner did
not make findings. Specifically, the Examiner stated in both the Final
Rejection and Answer that although Ichikawa fails to teach that the SPM is
other than an STM, this would have been obvious (Final Rej. 3 and Ans. 2-
3). The Examiner provided further explanation in the Answer (Ans. 10-11).
Appellant responded to the alternative rejection of Ichikawa for being
obvious over Ichikawa without any assertion that this alternative rejection
was a “new ground” (Reply Br. 3-4).
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Nonetheless, since the Examiner did not specifically articulate the
rejection in the Grounds of Rejection in either the Answer or Final
Rejection, we designate this rejection as a New Ground of Rejection.
REJECTION OF CLAIMS 91-103 UNDER 37 C.F.R. § 41.50(b)
We make the following new ground of rejection using our
authority under 37 C.F.R. § 41.50(b): Claims 91-103 under
35 U.S.C. § 103(a) over Ichikawa.
As set forth above, we conclude it would have been obvious to
one of ordinary skill in the art at the time of the invention that Ichikawa
teaches or at least suggests “modify an object by using an energy source
directed to and interacting with material placed on the object a scanning
probe microscope (SPN) other than a scanning tunneling microscope” as
recited in claim 91.
CONCLUSION
We have considered the arguments raised by Appellant in the Request
for Rehearing, and find these arguments persuasive that our original
Decision was in error. We are of the view that the invention set forth in
claims 91-103 is unpatentable over Ichikawa.

DECISION
The Examiner’s rejection of claims 91-103 under 35 U.S.C. § 103(a)
over Ichikawa and Colbert is reversed.
In a new ground of rejection, we reject claims 91-103 under 35 U.S.C.
§ 103(a), as being obvious over Ichikawa.
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This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (2010). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the proceeding will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

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)(iv).

REHEARING GRANTED-IN-PART
37 C.F.R. § 41.50(b)

ELD