Ex Parte Kuo et al

Patent Trial and Appeal Board

Feb 25, 2016

12847964 (P.T.A.B. Feb. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/847,964 07/30/2010 David Kuo
105639 7590 02/25/2016
Duane Morris LLP (10/11) Seagate
IP Docketing
2475 Hanover Street
Palo Alto, CA 94304-1194
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.
10-3882-00 4978
EXAMINER
HAUTH, GALEN H
ART UNIT PAPER NUMBER
1742
MAILDATE DELIVERY MODE
02/25/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID KUO, WSTIN HWU, GENNADY GAUZNER,
KIM YANG LEE, and DIETER WELLER
Appeal2014-005834
Application 12/847,964
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 14--20. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appellants' invention is best illustrated by independent claim 14,
reproduced below (emphasis added):
Appeal2014-005834
Application 12/847,964
14. An apparatus comprising:
a main body;
an imprinting layer disposed between said main body and
a workpiece including a resist layer and a substrate, said
imprinting layer including a surface with a pattern formed
therein; and
a layer of heating material disposed between said main
body and said workpiece and configured to heat said imprinting
layer and said resist layer without substantially heating said
main body and said substrate.
The Examiner maintains the following rejections:
(a) claims 14--20 rejected under 35 U.S.C. § l 12(b) or 35 U.S.C.
§ 112 (pre-AIA), second paragraph, as indefinite for failing to particularly
point out and distinctly claim the subject matter which the inventor or a joint
inventor, or for pre-AIA the applicant regards as the invention;
(b) claims 14--17 and 20 rejected under 35 U.S.C. § 102(b) as
anticipated by Seki et al. (US 2006/0279022 Al, published December 14,
2006) (hereinafter "Seki");
(c) claims 14--16 and 20 rejected under 35 U.S.C. § 102(b) as
anticipated by Imai et al. (WO 2008/126312 Al, published October 23, 2008
and relying on US 2010/0072665 Al, published March 25, 2010 as the
English equivalent) (hereinafter "Imai"); and
(d) claims 18 and 19 rejected under 35 U.S.C. § 103(a) as
unpatentable over Imai and Yoneda et al. (US 2010/0078860 Al, published
April 1, 2010) (hereinafter "Yoneda").
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Appeal2014-005834
Application 12/847,964
OPINION 1
Rejection under 35U.S.C.§112(b) or 35U.S.C.§112 (pre-AJA), second
paragraph, (indefiniteness) (Rejection (a))
We REVERSE.
The Examiner found the term "substantially heating" in claim 14
renders the claim indefinite because the claim and the Specification do not
provide a standard for ascertaining the requisite degree of the term so as to
reasonably apprise one of ordinary skill in the art of the scope of the
invention. Final Act. 2; Ans. 7-8.
Appellants argue one skilled in the art would understand from
paragraphs 20, 24, and 45 of the Specification that the meaning of
"substantially heating," as recited in claim 14, means confining the heat to
the imprinting and resist layers. App. Br. 10.
\Ve agree with Appellants that paragraphs 20 and 24 of the
Specification provides the requisite guidance to one skilled in the art to
ascertain the meaning of the disputed term "substantially heating."
Moreover, paragraphs 20 and 24 of the Specification further disclose the
heating material does not substantially alter the temperature or significantly
1 In addressing Rejections (a}-(c), Appellants present arguments only
addressing independent claim 14 and do not present arguments for
dependent claims 15-20. See Appeal Brief, generally. Furthermore,
Appellants rely on the arguments presented when discussing Rejection (c) in
addressing the separate rejection of claims 18 and 19. App. Br. 15.
Accordingly, we select independent claim 14 as representative of the subject
matter before us on appeal and limit our discussion in each rejection to this
claim. Claims 15-20 will stand or fall with independent claim 14.
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Appeal2014-005834
Application 12/847,964
heat the main body. We do not believe that "substantially" renders the
claimed subject matter indefinite in this case. "Substantially" is often used
to mean largely but not wholly what is specified. See, e.g., York Products,
Inc., v. Central Tractor Farm & Family Center, 99 F.3d 1568, 1572-73
(Fed. Cir. 1996); See also Amhil Enterprises Ltd. v. Wawa, Inc., 81 F.3d,
1554, 1562, (Fed. Cir. 1996).
Thus, on this record, the Examiner has not adequately explained why
claim 14 fails to particularly point out and distinctly claim the subject matter
which the inventor regards as the invention.
Accordingly, we reverse the Examiner's rejection under 35 U.S.C.
§ 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph.
Prior Art Rejections
We have thoroughly reviewed each of Appellants' arguments for
patentability. However, we determine that a preponderance of the evidence
supports the Examiner's § 102 rejections of representative independent
claim 14. Accordingly, we will sustain all of the Examiner's rejections for
essentially the reasons expressed in the Answer and we add the following for
emphasis.
Independent claim 14 requires an apparatus comprising a main body
and a layer of heating material disposed between said main body, where the
heating material does not substantially heat the main body.
Prior Art Anticipatory Rejection over Seki (Rejection (b))
The Examiner found Seki anticipates the claimed invention by
teaching an imprinting apparatus comprising a main body (support structure
7001 in Figure 7A) and a layer of heating material. Final Act. 3; Ans. 8-9;
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Appeal2014-005834
Application 12/847,964
Seki Figure 7A, Abstract, ifif18-21, 35, 36. The Examiner found Seki
discloses disposing the layer of heating material between an additional layer
and a mold where the additional layer prevents heat from dissipating outside
of the mold. Final Act. 3; Ans. 8; Seki if 62.
Appellants argue paragraph 62 of Seki fails to teach or suggest a layer
of heating material configured as recited in independent Claim 14. App. Br.
12-13; Reply Br. 4.
We are unpersuaded by Appellants' argument and find no error in the
Examiner's determination that support structure 7001 is the main body of
Seki's imprinting apparatus. Ans. 8-9; Seki Figure 7 A. As pointed out by
the Examiner, Appellants have not claimed any specific configuration for the
heating material. Ans. 8. Moreover, Appellants have not adequately
explained how the claimed invention differs from the heating arrangement
(configuration) of Seki where the heating material is disposed between an
additional layer and a mold such that the additional layer suppresses heat
dissipation from the mold to effectively transfer heat from the heat
generation member to the imprinting pattern. Seki if 62. Thus, Appellants
have not adequately explained why Seki' s additional layer would not
prevent heating of the support structure 7001.
Therefore, we affirm the Examiner's rejection of claims 1-17 and 20
under 35 U.S.C. § 102(b) as anticipated by Seki (Rejection (b)) forthe
reasons presented by the Examiner and given above.
Prior Art Anticipatory and Obviousness Rejections over Imai
(Rejection (c) and (d))
Focusing on the Examiner's anticipatory rejection, the Examiner
found Imai anticipates the claimed invention by teaching an imprinting
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Appeal2014-005834
Application 12/847,964
apparatus comprising a main body (pressing mechanism not shown) and a
layer of heating material where adiabatic elements associated with the
heating material prevent any heating of the main body. Final Act. 4; Imai
Figure 18, Abstract, i-fi-1 90, 91.
Appellants argue Imai does not disclose or suggest heat generating
elements heat an imprinting layer and a resist layer without substantially
heating Imai's pressing mechanism. App. Br. 14. According to Appellants,
Imai does not disclose the adiabatic members prevent heat from transferring
to any layer in contact the heating member. App. Br. 14; Reply Br. 5.
We are unpersuaded by these arguments and agree with the
Examiner's finding of anticipation. As noted by the Examiner, Imai's
adiabatic elements serve the purpose of preventing heat dissipation. Final
Act. 4; Ans. 9. Contrary to Appellants' arguments, Imai discloses the
adiabatic elements prevent heat dissipation of the holding faces (heating
faces) when the pressing mechanisms and other components are brought into
contact with the faces of the mold holding portion and transfer substrate
holding portion on the sides opposite the holding faces to reliably heat the
mold and the transfer substrate. Imai Figure 18, i1 91. Given Appellants
have not claimed any specific configuration for the heating material,
Appellants have not adequately explained how the claimed invention differs
from the heating arrangement (configuration) of Imai's Figure 18.
Therefore, we affirm the Examiner's rejections of claims 1-16 and
18-20 (Rejections (c) and (d)) for the reasons presented by the Examiner
and given above.
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Appeal2014-005834
Application 12/847,964
ORDER
The Examiner's rejection of claims 14--20 under 35 U.S.C. § 112(b)
or 35 U.S.C. § 112 (pre-AIA), second paragraph, (indefiniteness) (Rejection
(a)) is reversed.
The Examiner's rejection of claims 14--17 and 20 under 35 U.S.C.
§ 102 (b) (Rejections (b)) is affirmed.
The Examiner's rejection of claims 14--16 and 18-20 under 35 U.S.C.
§§ 102(b) and 103(a) (Rejections (c) and (d)) are 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)(l).
AFFIRMED
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