Ex Parte Nashner

Patent Trial and Appeal Board

Sep 1, 2016

12569810 (P.T.A.B. Sep. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/569,810 0912912009
67521 7590 09/06/2016
Technology & Innovation Law Group, PC
2055 Junction A venue, #205
Attn: 101
San Jose, CA 95131-2116
FIRST NAMED INVENTOR
Michael Nashner
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.
101-P689/P7871US1 8975
EXAMINER
MCNALLY, DANIEL
ART UNIT PAPER NUMBER
1746
NOTIFICATION DATE DELIVERY MODE
09/06/2016 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):
aspence@tipatents.com
dthomas@tipatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL NASHNER
Appeal2015-003113
Application 12/569,810
Technology Center 1700
Before: KAREN M. HASTINGS, JAMES C. HOUSEL, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from a rejection2 of claims
1-2 and 4-21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm for reasons well-stated by the Examiner.
1 The real party in interest is identified as Apple Inc. (Appeal Brief, filed
September 15, 2014 ("App. Br.") 2.)
2 Final Rejection dated March 7, 2014 ("FR.").
Appeal2015-003113
Application 12/569,810
CLAIMED SUBJECT MATTER
The claims are directed to techniques for "making outer housing
surfaces of electronic devices." (Spec. ,-i 2. )3 The '810 Specification seeks
to provide "product markings using an ultra-violet (UV) curable material."
(Id. ,-i 6.) The "UV curable material can be placed on a product surface, and
then selectively cured on the product surface in places where markings,
namely text and/or graphics, are to be provided." (Id.) "Subsequently,
remaining UV curable material at the product surface that has not been cured
can be removed such that the product surface thereafter includes the text
and/or graphics for the product marking." (Id.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
A method for depositing material to selected regions of an
electronic device housing, said method comprising:
depositing a layer of UV curable material onto a housing
surface of the electronic device housing;
curing select portions of the layer of UV curable material
that are desired to remain on the housing surface; and
removing remaining portions of the layer of UV curable
material that have not been cured by said curing,
wherein said depositing of the layer of UV curable
material onto the housing surface includes at least:
forming a mask layer having at least one
predetermined opening;
adhering the mask layer to the housing surface of
the electronic device housing;
depositing the layer of UV curable material onto the
housing surface, the layer of UV curable material being
3 Application 12/569,810, Techniques for Marking Product Housings, filed
September 29, 2009. We refer to the '"810 Specification," which we cite as
"Spec."
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Application 12/569,810
provided on the housing surface only within the
predetermined opening of the mask layer; and
subsequently removing the mask layer from the
housing surface,
wherein said curing of the select portions of the layer of
material comprises directing UV light from a UV laser onto the
select portions of the layer of UV curable material on the housing
surface to thereby cure the select portions of the of the layer of
UV curable material that are to remain on the housing surface.
(Claim Appendix, App. Br. A-1 (emphases added).)
Claim 11, reproduced below, is illustrative of the claimed subject
matter:
A method for depositing material to selected regions of an
electronic device housing, said method comprising:
adhering a mask layer having at least one predetermined
opening to a housing surface of the electronic device housing;
depositing a layer of UV curable material onto the housing
surface, the layer of UV curable material being provided on the
housing surface within the predetermined opening of the mask layer;
removing the mask layer from the housing surface;
curing select portions of the layer of UV curable material that
are desired to remain on the housing surface, said curing of the select
portions of the layer of material comprises directing UV light from a
laser onto the select portions of the layer of UV curable material on
the housing surface to thereby cure the select portions of the of the
layer of UV curable material that are to remain on the housing
surface; and
removing, subsequent to said curing, remaining portions of the
layer of UV curable material that have not been cured by said curing.
(Claim Appendix; App. Br. A-2, A-3 (emphases added).)
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
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Application 12/569,810
Hara
Hill
Nishiwaki
Flosbach et al.
us 4,754,418
us 4,925,705
US 2002/0058737 Al
US 2005/0224169 Al
REJECTIONS
Jun. 28 1988
May 15 1990
May 16 2002
Oct. 13 2005
Claims 1, 2, 4-12, and 14-21 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Hara, Hill, and Flosbach. (P.R. 2.)
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hara, Hill, Flosbach, and Nishiwaki. (FR. 6.)
OPINION
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Claim 14
Appellant argues that "claim 1 recites that the mask layer is ...
removed from the housing surface prior to" "curing select portions of the
layer of UV curable material that are desired to remain on the housing
surface" which Appellant argues is not taught by any of the prior art
references. (App. Br. 7; see also Reply 2 (stating that "Claim 1 clearly
recites that the removal of the mask layer occurs prior to the curing").)5
4 Appellant does not present separate arguments for claims 2, 4, 5, and 8-10.
(App. Br. 11, 12.) Claims 2, 4, 5, and 8-10 which depend from claim 1,
therefore, stand or fall with claim 1.
5 Reply Brief filed December 19, 2014 ("Reply"). Because the Reply is not
paginated, we cite to the Reply based on our own page numbers.
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Application 12/569,810
"Unless the steps of a method actually recite an order, the steps are
not ordinarily construed to require one." Interactive Gift Express, Inc. v.
Compuserve Inc., 231 F.3d 859, 875 (Fed. Cir. 2000). The Court of Appeals
for the Federal Circuit applies "a two-part test for determining if the steps of
a method claim that do not otherwise recite an order, must nonetheless be
performed in the order in which they are written." Altiris, Inc. v. Symantec
Corp., 318 F.3d 1363, 1369-70 (Fed. Cir. 2003) (quoting Interactive, 256
F.3d at 1343) (internal citations omitted). When applying the two-part test:
First, we look to the claim language to determine if, as a matter
oflogic or grammar, they must be performed in the order written.
. . . If not, we next look to the rest of the specification to
determine whether it 'directly or implicitly requires such a
narrow construction.' If not, the sequence in which such steps
are written is not a requirement.
Altiris, 318 F.3d at 1369-70 (emphasis in original).
In this case, the plain language of claim 1 does not recite an order in
which the steps must be performed. The various steps of "depositing,"
"curing," "removing," "forming," "adhering," "depositing," and
"subsequently removing" are not expressly recited in claim 1 as having a
sequential relation to one another. While claim 1 recites "subsequently
removing the mask layer from the housing surface," Appellant does not
explain - "as a matter of ... grammar" or otherwise - to which of the
various steps the recited "subsequently removing" step applies. See Altiris,
318 F.3d at 1370.
Appellant also does not explain why the particular order advocated by
Appellant is the one that "must be performed" "as a matter of logic." See id.
For example, Appellant does not explain why "curing select portions of the
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Application 12/569,810
layer of UV curable material" must only take place after "removing the
mask layer" but not after "depositing the layer of UV curable material" and
before "removing the mask layer" as recited in claim 1. (App. Br. 7.)
Claim 1, as it is currently written, is also unclear as to whether each of
the recited steps is mutually exclusive. For example, it is unclear whether
claim 1 excludes a scenario in which "curing selected portions of the layer"
may occur while "removing the mask layer from the housing surface." (See
Ans. 11.)
Not only does Appellant fail to argue that claim 1 must be narrowed
to the order advocated by Appellant "as a matter of logic or grammar," but
Appellant also does not argue that the '810 Specification "expressly disclaim
the broader definition" of claim 1. See Altiris, 318 F.3d at 1369-70; see also
In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) ("Absent claim language
carrying a narrow meaning, the PTO should only limit the claim based on
the specification or prosecution history when those sources expressly
disclaim the broader definition.").
Figures 5A and 5B of the '810 Specification in fact illustrate an
"exemplary marking of a product in accordance with a product marking
process" without specifying that "removing the mask layer" must occur
before "curing." (Spec. iii! 18, 48--49.) Figure 5A illustrates "a product
housing 500" having a "predetermined region 502" to which "a masking
layer can be used to confine the layer of material" "(e.g., UV curable
material)." (Id. iJ 48.) Figure 5B follows Figure 5A and "illustrates the
product housing 500 after the layer of material in the predetermined region
502 has been further processed (e.g., curing and rinsing) to yield the desired
labeling." (Id. iJ 49.) In this embodiment illustrated in Figures 5A and 5B,
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Application 12/569,810
the '810 Specification does not restrict the marking process for obtaining
"the desired labeling" of product housing 500 to first removing the mask
layer followed by curing as Appellant asserts. (See id. iii! 48--49.) Appellant
does not explain why the Examiner's broader interpretation is unreasonable
in light of the '810 Specification as a whole including the embodiment in
Figures 5A and 5B and the statements that "the invention extends beyond
these limited embodiments" and "[t]he various aspects, features,
embodiments or implementations of the invention described above can be
used alone or in various combinations." (See Spec. iii! 22, 54, 56.)
Because Appellant has not provided a reason either "as a matter of
logic or grammar" or based on the '810 Specification to support a narrower
interpretation, we decline to import unrecited limitations into claim 1. See
Altiris, 318 F.3d at 1369-70. Appellant's argument that each reference
teaches curing prior to removing the mask layer (App. Br. 7-8) fails to
identify error in the Examiner's conclusion because claim 1 does not restrict
"curing" to be carried out only after "removing the mask layer."
Appellant's argument that either Hara or Flosbach teaches away from
claim 1 based on the assertion that"[ c ]laim 1 recites first 'adhering ... ' then
'depositing ... "' and that "claim 1 recites that the removal of the mask layer
occurs prior to the curing" (App. Br. 9; Reply 2) fails based on the same
reason that claim 1 does not expressly recite the particular order of carrying
out the steps as asserted by Appellant.
"[D]uring patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of language explored,
and clarification imposed." In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
As the Examiner notes, had Appellant raised this and other arguments before
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the Examiner, the disagreement may have been resolved. (Ans. 10.) For
example, the disagreement may have been resolved based on a record clearly
establishing that a particular sequence to carry out the various steps is
affirmatively recited in the claim.
Appellant next argues that Hara which "teaches first applying the UV
ink, masking the ink, and then irradiating the ink" teaches away from Hill
which teaches "first 'depositing a mask layer onto a substrate, depositing the
ink onto the substrate through the opening in the mask, and removing the
mask along with unwanted ink."' (App. Br. 9.) Appellant argues that the
combined teachings of Hara and Hill using "two masks" show
"incompatibility." (Id. at 10.) Appellant, however, does not explain why
such disclosures "criticize, discredit, or otherwise discourage" each other or
the method recited in claim 1. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004 ). Appellant, in fact, does not dispute the Examiner's finding that claim
1, an open-ended claim, does not preclude more than one mask layer from
being used. (Ans. 12; Reply 2, 3.)
Although "a UV laser" recited in claim 1 is undisputedly taught in
Flosbach, Appellant argues that Hara teaches away from using the UV laser
and that a skilled artisan "would not seek or desire to combine" these
references. (App. Br. 10.) Appellant again presents no factual evidence
showing that Hara "criticize[s], discredit[s], or otherwise discourage[s]" the
use of "a UV laser" recited in claim 1. Fulton, 391 F.3d at 1201. Appellant
does not dispute the Examiner's finding that to the extent that Hara is silent
with regard to "a UV laser," such silence would not "dissuade one of
ordinary skill from using a laser." (Ans. 13; see Reply 2.) "Attorneys'
argument is no substitute for evidence." Johnston v. IVAC Corp., 885 F.2d
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Application 12/569,810
1574, 1581 (Fed. Cir. 1989). No reversible error has been identified in the
Examiner's findings with regard to these references.
Claims 6 & 17
Claim 6 depends from claim 1 and additionally recites "wherein the
layer of material is a layer of UV curable adhesive." Finding that the '810
Specification does not provide a definition of the term "UV curable
adhesive," the Examiner reasons that under the broadest reasonable
interpretation, the "UV curable adhesive" may include the UV curable ink
disclosed in Hara which "sticks to" a surface and "does not fall" from that
surface. (Ans. 15-16.)
Appellant does not dispute the Examiner's finding that the "UV
curable ink" in Hara may remain on a surface without falling off. (Reply 3.)
Appellant instead cites to the '810 Specification which discloses that "the
layer of UV curable material can be a layer of UV curable adhesive, such as
a curable coating DYMAX Multi-Cure 9-20557 available from DYMAX
Corporation of Torrington, CT." (Id. (citing Spec. ,-i 34).) Appellant,
however, does not argue that the recited "UV curable adhesive" should be
interpreted in a particular way. (Reply 3.) Nor does Appellant argue that
the "UV curable adhesive" is limited to this particular product from
DYMAX only. (Id.) Appellant also does not explain why this passage of
the '810 Specification shows that a skilled artisan would "understand and
know that a UV curable ink cannot be equated to and is not the same as a
UV curable adhesive." (Id.) No reversible error has been identified here.
Claim 17 depends from claim 11 and additionally recites "wherein the
layer of material is a layer of adhesive that is UV curable." Appellant's
argument which is a repeat of that for claim 6 fails for the reason provided
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above. (Compare App. Br. 11 with App. Br. 18-19; Compare Reply 3 with
Reply 5.)
Claims 7 & 18
Claim 7 depends from claim 1 and additionally recites "wherein said
depositing the layer of UV curable material onto the housing surface
comprises spraying the layer of UV curable material onto the housing
surface." Based on the combined teachings including Flosbach's disclosure
that the "coating composition curable by means of UV radiation may be
applied onto the backing film by conventional methods" such as "spraying
or electrostatic spraying," the Examiner finds that a skilled artisan would
have found claim 7 obvious. (P.R. 4 (citing Flosbach iJ 32).)
Appellant, on the other hand, argues that "Flosbach teaches that the
coating composition is applied to a backing film and not 'onto the housing
surface' as recited in claim 7." (App. Br. 12.) Because Appellant does not
dispute the Examiner's finding that the combined teachings include Hara' s
teaching that "the UV curable ink is applied to the electronic housing
surface," no reversible error has been identified here. (Ans. 16; see, e.g.,
Reply.)
Claim 18 depends from claim 11 and additionally recites "wherein
said depositing the layer of UV curable material onto the housing surface
comprises spraying the layer of UV curable material onto the housing
surface." Appellant's argument which is a repeat of that for claim 7 fails for
the reason provided above. (Compare App. Br. 12 with App. Br. 19; see,
e.g., Reply.)
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Application 12/569,810
Claim 11 6
Appellant argues that the Examiner erred in rejecting independent
claim 11 which "clearly recites that the removal of the mask layer occurs
prior to the curing[.]" (Reply 4; see App. Br. 12-13.) Claim 11, as it is
currently written, does not recite an order in which "curing" and "removing
the mask layer" are carried out. Based on the analysis with regard to claim 1
on this issue, we are not persuaded that the Examiner erred in the
interpretation of claim 11.
Appellant's remaining arguments with regard to claim 11 again repeat
those presented for claim 1. (Compare App. Br. 8-10 with App. Br. 14-16;
Compare Reply 2-3 with App. Br. 4-5.) Based on the analysis with regard
to claim 1 on these issues, no error has been identified in the Examiner's
findings with regard to the prior art references.
Claim 16
Claim 16 depends from claim 11 and additionally recites "wherein the
predetermined opening is oversized as compared to an area for the select
portions of the layer of UV curable materials that remain on the housing
surface." The Examiner finds that "it would have been obvious to one of
ordinary skill in the art to optimize the size of the openings of the mask to
ensure an optimum amount of UV curable ink is applied." (FR. 6.)
Appellant argues that the Examiner erred for "provid[ing] no
indication where any prior art reference describes the features of claim
16[.]" (App. Br. 17.) Appellant, however, does not dispute the Examiner's
6 Appellant does not present separate arguments for claims 12-15 and 19-21
(App. Br. 19-20), these claims, which depend from claim 11, therefore,
stand or fall with claim 11.
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finding that Hill "discloses the mask [which] includes a negative pattern of a
required pattern to be deposited" and that "[t]he combination of Hara and
Hill results in the requirement of claim 16 because the openings in the mask
will surround a region where the text or graphic [] is to be applied." (See,
e.g., Reply; Ans. 22 (citing Hill, 2, 11. 35-49; Hara, 6, 11. 46-57).) No
reversible error has been identified in the Examiner's findings with regard to
claim 16.
DECISION
The Examiner's rejections of claims 1-2 and 4-21 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
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