Ex Parte Mahnad et al

Patent Trial and Appeal Board

Feb 28, 2017

14319312 (P.T.A.B. Feb. 28, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/319,312 06/30/2014 FARAMARZ MAHNAD ORAl 10385-US-CNT-l 2595
81505 7590
ORACLE
(Oracle formerly d/b/a Sun Microsystems)
8055 East Tufts Avenue
Suite 450
Denver, CO 80237
EXAMINER
SULTANA, NAHIDA
ART UNIT PAPER NUMBER
1743
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
ptomail @ mfblaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FARAMARZ MAHNAD
and JOSEPH J. KOZAK
Appeal 2016-003055
Application 14/319,312
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants1 appeal the Examiner’s
decision finally rejecting claims 1—8, 10-15, and 21 under 35 U.S.C.
§ 103(a). An amendment after final canceled claims 10 and 21 and amended
claim 11 to include the limitations of claims 10 and 21 {see, e.g., Reply Br.
4). Thus, the claims on appeal are 1—8 and 11—14 (Amendment After Final
filed Jan. 20, 2016, at 1—5). We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
1 The real party in interest is stated to be Oracle International Corporation.
(Appeal Br. 1).
Appeal 2016-003055
Application 14/319,312
We AFFIRM.
Claims 1 and 11 are illustrative of the appealed subject matter
(emphasis added to highlight key disputed limitations):
I. A method for use in fabricating an embosser drum,
comprising:
making a plurality of replicas of an embossing master,
wherein each of the replicas includes a pattern of nanostructures;
bonding the plurality of replicas of the embossing master
together in a particular orientation to create a bonded replica
structure including a surface having a pattern of nanostructures
thereon, wherein the pattern of nanostructures on the surface of
the bonded replica structure comprises the combination of the
patterns of nanostructures of the plurality of replicas of the
embossing master;
producing a replica of the bonded replica structure; and
generating an embossing plate from the replica of the
bonded replica structure.
II. A method for producing at least one embosser drum that
has a pattern of nanometer-scale grooves formed in an outer
surface thereof, the method comprising:
producing a plurality of replicas of an embossing master
that has at least one surface with the pattern of nanometer-scale
grooves therein, wherein each of the replicas of the embossing
master comprises at least one surface with the pattern of
nanometer-scale grooves therein;
bonding the plurality of replicas of the embossing master
together to create a bonded replica structure having at least one
surface with the pattern of nanometer-scale grooves formed
therein, wherein the bonded replica structure comprises at least
one bonding seam between adjacent one of the replicas of the
embossing master that extends generally parallel to the
nanometer-scale grooves, and wherein a surface area of the at
least one surface of the bonded replica structure is at least
substantially the same as a surface area of the outer surface of the
embosser drum to be formed;
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Appeal 2016-003055
Application 14/319,312
producing a replica of the bonded replica structure; and
using the replica of the bonded replica structure to create
the embosser drum, wherein the using further comprises:
performing an electroforming process on the at least
one surface of the replica of the bonded replica structure
to create a metallic shim, wherein the metallic shim
comprises the pattern of nanometer-scale grooves on at
least one surface thereof; and
shaping the metallic shim to form the outer surface
of the embosser drum.
(Appeal Br. 12 (Claims App.); Amendment After Final filed Jan. 20,
2016, at 4).
REFERENCE AND REJECTION ON APPEAL
The Examiner maintains the rejection of claims 1—8 and 11—14 under
35 U.S.C. § 103(a) as unpatentable over Slafer (US 2008/0106001 Al,
published May 8, 2008) (hereinafter “Slafer”).2
With the exception of claims 3—7, Appellants do not make separate
substantive arguments in support of patentability of any of the claims (see
generally Appeal Br. 3—11; Reply Br. 2—5). Accordingly, our discussion
will focus on the obviousness rejection of independent claims 1 and 11.
Claims 8 and 12—14 stand or fall with each of their respective independent
claims. 37 C.F.R. § 41.37(c)(l)(vii). Claims 3—7 will be addressed
separately.
2 In the Examiner’s Second Answer mailed January 20, 2016 (hereinafter
“2nd Ans.”), at 3, the Examiner maintains the rejection of claim 15.
Appellants, however, canceled claim 15 in the Amendment After Final filed
Jan. 20, 2016, at 5.
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Appeal 2016-003055
Application 14/319,312
ANALYSIS
Upon consideration of the appeal record including Appellants’
position in this appeal as set forth on pages 3—11 of the Appeal Brief and
pages 2—5 of the Reply Brief, we affirm the rejection for the reasons stated
by the Examiner (Final Office Action mailed May 21, 2015, 3—12;
Examiner’s Answer mailed November 20, 2015, 2—12; and 2nd Ans. 3—11).
We add the following for emphasis.
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int 7 Co. v. Teleflex
Inc., 550 U.S. 398,418 (2007).
With respect to claims 1 and 11, Appellants’ main arguments focus on
the Examiner’s alleged failure to demonstrate that Slafer suggests the
limitations “producing a replica of the bonded replica structure” and,
thereafter, using such a replica of the bonded replica structure to
create/generate the embosser drum/plate (Appeal Br. 4—6, 10-11; Reply Br.
2—3, 4). Specifically, Appellants argue that because “Slafer discloses
directly forming the welded metal elements 202 of Figure 2B into a
cylindrical tool/drum [,]... an ordinary artisan would have no reason to
additionally generate an embossing plate from the metal elements 202, and
then form such an embossing plate into an embosser drum” (Appeal Br. 6,
(citing Slafer Fig. 2B, || 32 and 35); see also Reply Br. 2—3, 4). Appellants
further argue the Examiner’s reliance upon 174 of Slafer merely “suggests
that, when an electroforming process is formed on the ganged/butted/joined
together structure, the generated continuous single strip element would itself
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Application 14/319,312
be an embossing plate” (Reply Br. 2). Therefore, according to Appellants,
“there is no disclosure or suggestion that an embossing plate would be
generated from the continuous single strip structure” (id. ).
We disagree for reasons well stated by the Examiner (Ans. 2-A\ 11—
15). As aptly pointed out by the Examiner,
Slafer does not teach forming [a] replica of the bonded replica
[in the embodiment disclosed in Figure 2B], however, because
Slafer in a different embodiment. . . teaches forming [a] replica
of a bonde[d] replica to create at least one embosser drum (or
belt), (see [0074]—[0075]), thus it would have been obvious to
one ordinary skill in the art at the time of the applicant’s
invention to combine the process with further including
producing [a] replica of the bonded replica in combination with
electroforming, as taught by Slafer, in order to create a
continuous or elongated pattern structure with reduced seam....
(2nd Ans. 9-10 (citing Slafer H 47, 74-75)).
Under the flexible inquiry set forth by the Supreme Court (see Ball
Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984,
993 (Fed. Cir. 2009)), the PTO must take account of the inferences that a
person of ordinary skill in the art would have made, such as the inference
that a (‘“mirror image’) continuous single strip element,” , “can ... be
utilized to form a near-seamless pattern on the outer . . . surface of a
cylindrical by the transfer of a complementary pattern (by any of the
replicating/imprinting methods known to the art, such as thermal embossing,
etc.) from a patterned cylinder of larger diameter . . . .” Slafer || 74, 75; see
also Fig. 4.
Furthermore, Appellants acknowledge that Slafer teaches “forming a
first generation copy of an original relief pattem/template, forming a second-
generation copy from a first-generation copy, etc.” (Appeal Br. 4 (citing
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Application 14/319,312
Slafer || 36—37)). Based on Slafer’s disclosures, the ordinary skilled artisan
would have reasonably inferred that such a mirror image continuous strip
could be used to create a ‘“second generation’” replica of the bonded replica,
substantially devoid of seams, which could then be used to produce a single
metallic shim to create/generate the embosser drum/plate (see Spec. 137;
Fig. 3). It is well settled that a reference stands for all of the specific
teachings thereof as well as the inferences one of ordinary skill in this art
would have reasonably been expected to draw therefrom. See In re Frit eh,
972 F.2d 1260, 126A-65 (Fed. Cir. 1992).
Thus, Appellants have not shown reversible error in the Examiner’s
determination that one of ordinary skill in the art, using no more than
ordinary creativity, would have gleaned from Slafer’s disclosure that one
could produce a replica of the bonded replica structure and, thereafter, use
such replica of the bonded replica structure to create/generate the embosser
drum/plate as required by claims 1 and 11.
With respect to claims 3—7, Appellants argue that “the Examiner’s
above modification of Figure 2B of Slafer would actually not even reduce
the number of seams in the first place” (Appeal Br. 7, 9; Reply Br. 3—4).
These arguments are not persuasive of error in the Examiner’s
rejection. As set forth above, the Examiner’s modification of Slafer’s Figure
2B would have resulted in a replica of the bonded replica that is substantially
devoid of seams. As the Examiner determined, “it would have been obvious
to one [of] ordinary skill[] in the art at the time of the applicant’s invention
to modify the bonding arrangement in accordance with the specific type of
patterns being bonded, for the benefit of forming a seamless[] or improved
seam single master” (2nd Ans. 7 (citing Slafer Abstract, 172); see generally
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2nd Ans. at 5—8). We have no doubt that such bonding arrangement
modifications would have been within the level of ordinary creativity in the
art based on the applied prior art of Slafer. See Perfect Web Techs., Inc. v.
Info USA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (“We therefore hold
that while an analysis of obviousness always depends on evidence that
supports the required Graham factual findings, it also may include recourse
to logic, judgment, and common sense available to the person of ordinary
skill that do not necessarily require explication in any reference or expert
opinion.”).
Thus, we affirm the rejection of claims 1—8 and 11—14.
DECISION
The appealed rejection is affirmed.
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)(iv).
AFFIRMED
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