Ex Parte Lessmollmann et al

Board of Patent Appeals and Interferences

Sep 12, 2002

08576367 (B.P.A.I. Sep. 12, 2002)

The opinion in support of the decision being entered today was not written for publication and
is not binding precedent of the Board.
Paper No. 33
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte CHRISTOPH LEBMOLLMANN,
JOACHIM EICHER and HOLGER REINECKE
____________
Appeal No. 2000-1103
Application No. 08/576,367
____________
ON BRIEF
____________
Before LIEBERMAN, TIMM, and JEFFREY T. SMITH, Administrative Patent Judges.
JEFFREY T. SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Applicants appeal the decision of the Primary Examiner finally rejecting claims 18 to
32, all of the claims remaining in the application. We have jurisdiction under 35 U.S.C.
§ 134.
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BACKGROUND
Appellants’ invention relates to a process of producing a microstructured mold with
at least one open cavity from a solid ceramic, glass, stone or monocrystalline material by
precision mechanical machining, additive or subtractive structuring. The cavity is filled and
the mold covered by a flowable material and the solidified flowable material is separated
from the mold giving a microstructure element. (Specification, pp. 2-3). In another
embodiment, the top portion of the solidified flowable material is removed to expose the
surface of the mold and the solidified material filling the cavity. A layer of conductive
material is applied to the exposed surface and remaining solidified material. Then the
conductive layer and the remaining solidified material are separated from the mold to
provide a structure with a shape complementary to the mold. A layer of metal is
electrodeposited on the complementary structure and, finally, the metal layer is separated to
produce a metallic microstructure element. (Specification, pp. 2-3). Claims 18, 31 and 32
which are representative of the claimed invention, appear below:
18. A process for the production of a microstructured element, comprising the
steps of:
(a) forming a microstructure of a microstructured mold having an open cavity
on one surface thereof from a solid body by mechanical machining, additive
structuring or subtractive structuring, wherein said mold consists essentially of
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ceramic, glass, stone, quartz, gallium arsenide, germanium or mixture thereof;
(b) filling the cavity and covering the microstructured mold with a flowable
plastic or sinterable material;
(c) solidifying the flowable material which has filled and covered the
microstructured mold; and
(d) separating the solidified flowable material form the mold to provide a
plastic or sintered material element having a microstruture complementary to
the microstructured mold.
31. A microstructured element produced by the process of Claim 18.
32. A microstructured element produced by the process comprising the steps
of:
(a) forming a microstructure of a microstructured mold having an open cavity
on one surface thereof from a solid body by mechanical machining, additive
structuring or subtractive structuring, wherein said mold consists essentially of
ceramic, glass, stone, quartz, gallium arsenide, germanium or mixture thereof;
(b) filling the cavity and covering the microstructured mold with a flowable
electrical non-conductive material;
(c) solidifying the flowable electrically non-conductive material to form a
solid layer in contact with the surface of the microstructured mold and filling
the cavity;
(d) removing a portion of the solid layer to expose the surface of the
microstructured mold and the cavity filling with solidified flowable material;
(e) applying a layer of conductive material to and covering the exposed surface
of the mold and filled cavity;
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(f) separating the conductive layer and solidified flowable material in the
cavity from the mold to provide a microstructure having a shape
complementary to the mold;
(g) electrodepositing a metal layer on the complementary microstructure; and
(h) separating the metal layer from the complementary structure to provide a
metallic microstructured element.
CITED PRIOR ART
As evidence of unpatentability, the Examiner relies on the following references:
Reichert 3,993,515 Nov. 23, 1976
Geissler et al. (Geissler) 4,759,887 Jul. 26, 1988
Hashiguchi et al. (Hashiguchi) 5,358,909 Oct. 25, 1994
Wuensch et al. (Wuensch) 5,415,977 May 16, 1995
Milinkovic et al. (Milinkovic) 5,470,651 Nov. 28, 1995
Koseki et al. (Koseki) 5,702,810 Dec. 30, 1997
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The Examiner, in the Answer, rejected claims 18, 19, 21, 23, 24, 26 and 28 to 32
under 35 U.S.C. § 103(a) as being unpatentable over the combination of Wuensch,
Milinkovic and Koseki and Reichert. The Examiner added Hashiguchi to the combination
of Wuensch, Milinkovic and Koseki and Reichert to reject claims 20, 22 and 27 under 35
U.S.C. § 103(a). The Examiner added Geissler to the combination of Wuensch, Milinkovic
and Koseki and Reichert to reject claim 25 under 35 U.S.C. § 103(a). (Answer, pp. 3-4).
Appellants have indicated, that the claims should stand or fall in the following
groups: Group I (claims 18 to 27 and 31), Group II (claims 28 to 30), and Group III (claim
32). However, we note that Appellants’ groupings of the claims mix statutory classes of
invention. Accordingly, we will groups the claims based on their appropriate statutory class,
process claims Group I (claims 18 to 30) and product claims Group II (claims 31 and 32).
We will limit our consideration to claims 18, 31 and 32 as representative of the claims on
appeal.
Rather than reiterate the conflicting viewpoints advanced by the Examiner and
Appellants concerning the above-noted rejections, we refer to the Answer and the Brief. For
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the reasons set forth below, we will sustain the Examiner’s rejection of claim 31 and reverse
the rejection of all other claims.
DISCUSSION
I.
The Examiner has rejected all of the process claims 18 to 30 over the Wuensch
reference in combination with, inter alia, the Milinkovic, Koseki and Reichert references. A
principal question in all of these rejections is whether the Examiner has established that the
process described in Wuensch when combined with the other references renders the claimed
process obvious. We answer this question in the negative.
Claim 18 is directed to a process for the production of a microstructured element,
comprising the steps of forming a microstructure of a microstructured mold having an open
cavity on one surface thereof wherein the mold consists essentially of ceramic, glass, stone,
quartz, gallium arsenide or germanium mixture thereof. Wuensch discloses a process for the
production of microstructures from a microstructured mold having an open cavity on one
surface. The Examiner acknowledges the claimed process differs from the process of
Wuensch because of the material from which the mold is formed. (Answer, pp. 5-6). To
remedy this deficiency the Examiner relies on several other references to illustrate that
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metal is equivalent to other materials suitable for molds such as ceramic, germanium or
gallium arsenide. We acknowledge that mold structures can be formed from a variety of
materials. However, the Examiner’s position is deficient for at least two reasons. First,
Wuensch discloses the mold material is electroconductive because after the polymer layer is
applied to the mold, another metal is electro-deposited on the polymer layer. (Col. 1, l. 63 to
col. 2, l. 15). The Examiner has not indicated that if the mold is formed from a material,
such as those claimed, would be suitable for the electro-deposition application of a metal is
on the intervening polymer layer. Second, while molds can be formed from various
materials, the Examiner has not indicated that the various materials were known at the time
of the invention to be suitable for microstructured molds. The mere fact that the prior art
could be modified as proposed by the Examiner is not sufficient to establish a prima facie
case of obviousness. See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed.
Cir. 1992). The Examiner must explain why the prior art would have suggested to one of
ordinary skill in the art the desirability of the modification. See Fritch, 972 F.2d at 1266, 23
USPQ2d at 1783-84. The Examiner has not provided such an explanation. The 35 U.S.C.
§ 103(a) rejections of claims 18 to 30 are reversed.
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II.
We must note that claims 31 and 32 on appeal are written in product-by-process
format. Therefore, the Examiner has a lesser burden of proof with a rejection under section
102 or section 103 indicated where the prior art reasonably appears to disclose a product that
is identical with or only slightly different than the product claimed. See In re Fitzgerald,
619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980); In re Fessman, 489 F.2d 742, 744, 180
USPQ 324, 326 (CCPA 1974). Once the Examiner meets this lesser burden of proof, the
burden shifts to Appellants to show that the claimed product materially differs from the
product of the prior art. It is the product that must be gauged in light of the prior art, not the
process limitations. See In re Wertheim, 541 F.2d 257, 271, 191 USPQ 90, 103 (CCPA
1976); In re Fessman, supra.
The product of claim 31 is a plastic or sintered material element having a
microstructure complementary to the microstructured mold. As stated above, the Examiner
has found that Wuensch discloses a process for the production of microstructures from a
microstructured mold having an open cavity on one surface. The Examiner acknowledges
the claimed process differs from the of process of Wuensch because of the material from
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which the mold is formed. (Answer, pp. 5-6). The Examiner has found that Wuensch
discloses a patterned polymer layer that corresponds to Appellants’ solid body. (Answer, p.
5). The polymer layer is applied to the metal microstructured mold and irradiation to such
an extent that the irradiated polymer can be removed, giving a relief-like polymer structure
on the electroconductive substrate. (Col. 1, l. 60 to col. 2, l. 5). Accordingly, we determine
that the Examiner has met the initial burden of establishing a prima facie case of
unpatentability under sections 102/103. Therefore, the burden has been shifted to
Appellants to show that the claimed product differs substantially from the product disclosed
by Wuensch. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657-58 (Fed. Cir.
1990); and In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Appellants
have not submitted any evidence that the product of Wuensch is substantially different than
the claimed product. The 35 U.S.C. § 103(a) rejection of claim 31 is affirmed.
Claim 32 is also is written in product-by-process format. The resultant product of
claim 32 is a metallic microstructured element which has a structure that is complementary
to the first microstructure. The claimed invention is produced by the solidification of a
polymer layer on the microstructured mold. Removing a portion of the solid layer to expose
the surface of the microstructured mold and the cavity filled with solidified flowable
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material. Applying a layer of conductive material to and covering the exposed surface of the
mold and filled cavity. Separating the conductive layer and solidified flowable material in
the cavity from the mold to provide a first microstructure which has a shape complementary
to the mold. A metal layer is electrodeposited on the first microstructure and subsequently
separated therefrom. The result is a metallic microstructured element which has a shape
complementary to the first microstructure.
The Examiner states “the recited metal microstructural element is not seen as
differing from the metal microstructured mold insert of Wuensch.” (Answer, p. 13).
The Examiner’s conclusory statement fails to provide a factual basis to support a
legal conclusion of obviousness as set forth in Graham v. John Deere Co., 383 U.S. 1
(1966). The Examiner has not met the initial burden of establishing a prima facie case of
unpatentability under section 103. Therefore, the 35 U.S.C. § 103(a) rejection of claim 32
is reversed.
CONCLUSION
For the above reasons, the rejections of claims 18 to 30 and 32 under 35 U.S.C.
§ 103(a) are reversed and the rejections of claims 31 under 35 U.S.C. § 103(a) is affirmed.
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Time for taking action
No time period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART

)
)
PAUL LIEBERMAN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CATHERINE TIMM ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )
JTS/kis
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