Ex Parte Parker et alDownload PDFBoard of Patent Appeals and InterferencesMar 31, 201010744276 (B.P.A.I. Mar. 31, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JEFFERY R. PARKER, TIMOTHY A. MCCOLLUM, and KURT R. STARKEY ____________ Appeal 2008-005711 Application 10/744,276 Technology Center 1700 ____________ Decided: March 31, 2010 ____________ Before CATHERINE Q. TIMM, ROMULO H. DELMENDO, and LINDA M. GAUDETTE, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL Appeal 2008-005711 Application 10/744,276 2 Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-90 (Appeal Brief filed on October 8, 2007, as revised on January 18, 2008, hereinafter “Br.,” at 1, 2; Final Office Action mailed on June 15, 2006). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE Appellants’ claimed invention relates to a method of making at least one pattern of optical elements on or in an optical substrate (Specification, hereinafter “Spec.,” 1, ll. 16-21; claim 1). Claims 1, 21-25, 27, 31, 33, 38, 41, and 44 on appeal read as follows (formatting added to claim 1 for improved readability): 1. A method of making at least one pattern of optical elements on or in an optical substrate comprising the steps of providing a sleeve on a roll, moving a tool into and out of engagement with the sleeve during relative circumferential and lateral movements between the tool and the roll to cut or form at least one pattern of a plurality of individual circumferentially and laterally spaced optical element shapes in an exterior surface of the sleeve, removing at least a portion of the sleeve containing at least the one pattern of optical element shapes from the roll, and using at least the one pattern of optical element shapes in the removed portion of the sleeve or a copy or inverse copy of the optical element shapes in the removed portion of the sleeve to form a corresponding pattern of optical elements on or in an optical substrate. 21. The method of claim 1 wherein the tool is moved into and out of engagement with an exterior surface of the sleeve to form at least the one pattern of individual Appeal 2008-005711 Application 10/744,276 3 circumferentially and laterally spaced optical element shapes while rotating the roll. 22. The method of claim 21 wherein the tool is moved longitudinally or transversely relative to the roll during or between cutting or forming steps. 23. The method of claim 21 wherein the tool is angularly adjusted relative to the roll during or between cutting or forming steps. 24. The method of claim 1 wherein multiple patterns of individual circumferentially and laterally spaced optical element shapes are cut or formed in the sleeve. 25. The method of claim 1 wherein the entire sleeve is removed from the roll after the cutting or forming step. 27. The method of claim 25 wherein the portion of the sleeve containing at least the one pattern of optical element shapes is removed from the sleeve after the sleeve has been removed from the roll. 31. The method of claim 1 wherein multiple patterns of individual circumferentially and laterally spaced optical element shapes are cut or formed in the sleeve, and multiple sleeve portions each containing at least one pattern of optical element shapes are removed from the sleeve. 33. The method of claim 1 wherein at least the one pattern of optical element shapes in the sleeve is a random pattern. Appeal 2008-005711 Application 10/744,276 4 38. The method of claim 1 wherein the roll is rotated during the cutting or forming steps. 41. The method of claim 38 wherein the tool is moved into and out of engagement with the sleeve at least once per second during rotation of the roll to cut or form at least the one pattern of individual circumferentially and laterally spaced optical element shapes in the sleeve. 44. The method of claim 1 wherein after at least some of the optical element shapes are cut or formed in the exterior surface of the sleeve, the roll is turned lengthwise 180° and at least some additional optical element shapes are cut or formed in the exterior surface of the sleeve on the roll. (Claims App’x, Br. 18, 21-25.) The Examiner relied upon the following as evidence of unpatentability (Examiner’s Answer mailed on April 16, 2008, hereinafter “Ans.,” 3-6): Sandor 5,330,799 July 19, 1994 The Examiner rejected the claims as follows: I. Claims 1-10, 12, 13, 18, 22-26, 28, 34, 37-40, 43, 47-49, 51-54, 56-66, 68, 72, 73, 75, 76, 80-82, 84-87, 89, and 90 under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Sandor (Ans. 3-5); and II. Claims 11, 14-17, 19-21, 27, 29-33, 35, 36, 41, 42, 44- 46, 50, 55, 67, 69-71, 74, 77-79, 83, and 88 under 35 U.S.C. § 103(a) as unpatentable over Sandor (Ans. 5-6). Appeal 2008-005711 Application 10/744,276 5 ISSUES I. Claims 1-10, 12, 13, 18, 25, 26, 28, 34, 37-40, 43, 47-49, 51-54, 56- 66, 68, 72, 73, 75, 76, 80-82, 84-87, 89, and 90 The Examiner found that Sandor describes, either explicitly or inherently, every limitation of claim 1 (Ans. 3-4). In particular, the Examiner found that Sandor necessarily discloses the contested claim limitation “moving a tool into and out of engagement with the sleeve . . . ” (id. at 4). Alternatively, the Examiner reasoned that a person of ordinary skill in the art would have been led “to move a cutting tool into and out of engagement with a sleeve being cut to form” the optical element shapes disclosed in Sandor’s Figure 6a (id.). Appellants contend that the Examiner’s rejection is flawed because “all of the lenticles 17 of the lenticular pattern [optical element shapes] that is cut into the copper sleeve 109 in cylinder 108 as shown in Fig. 6a of Sandor et al are elongated parallel rib-like cylindrical lenses having a narrow width and a uniform size and shape (see column 8, lines 18-20)” (Br. 13). Thus, a dispositive issue with respect to these claims is: (1) Does Sandor describe the “moving . . .” step recited in claim 1? Claims 22 and 23 Regarding claims 22 and 23, the Examiner found that “Sandor . . . has to move the tool longitudinally or transversely with respect to the roll during cutting as recited in instant claim 22 and Figure 6a appears to suggest that the tool is [angularly] adjusted during the cutting – note the arrow” (Ans. 4). Alternatively, the Examiner found that various optical patterns are known in Appeal 2008-005711 Application 10/744,276 6 the art and concluded that “it is within the [ordinary] skill level to modify a known method to make different optical patterns” (Ans. 7). Appellants contend that Sandor’s “tool is moved in and out between the cutting of each individual lenticle 17, not moved in and out to form a pattern of individual circumferentially and laterally spaced optical element shapes as recited in these claims” (Br. 14). Further, Appellants urge that Sandor does not disclose that “the tool is angularly adjusted relative to the roll during or between cutting or forming steps,” as recited in claim 23 (id.). Thus, the dispositive issues are: (2) Does Sandor describe, either explicitly or inherently, the limitation “the tool is moved into and out of engagement with an exterior surface of the sleeve to form at least the one pattern of individual circumferentially and laterally spaced optical element shapes while rotating the roll,” as recited in claim 21, from which claim 22 depends? (3) Does Sandor disclose or otherwise suggest angular adjustment of the tool? Claim 24 Relying on two elements identified as 47 in Sandor’s Figure 11, the Examiner found that Sandor describes the limitation recited in claim 24 (Ans. 5). Appellants contend that the limitation “is nowhere disclosed or suggested in Sandor” (Br. 14). Thus, the issue is: Appeal 2008-005711 Application 10/744,276 7 (4) Does Sandor describe “multiple patterns of individual circumferentially and laterally spaced optical element shapes,” as recited in claim 24? II. Claims 11, 14-17, 19, 20, 29, 30, 42, 50, 55, 67, 69-71, 83, and 88 Appellants rely on the same arguments in support of claim 1 against Rejection I. Accordingly, the issue is identical to I. (1) above. Claim 21 Appellants rely on the same arguments based on the limitation recited in claim 21 against Rejection I as applicable to claim 22. Accordingly, the issue is identical to I. (2) above. Claim 27 The Examiner reasoned that while Sandor does not describe the limitation of claim 27 (“the portion of the sleeve containing at least the one pattern of optical element shapes is removed from the sleeve after the sleeve has been removed from the roll”), it does not confer patentability because Sandor discloses multiple patterns of optical element shapes (Ans. 5). Appellants contend that the Examiner’s reasoning constitutes “hindsight reconstruction” (Br. 15). Thus, the issue is: (5) Has the Examiner articulated some reason based on some rational underpinning as to why a person of ordinary skill in the art would Appeal 2008-005711 Application 10/744,276 8 have been prompted to remove a portion of the sleeve containing a pattern of optical element shapes after the sleeve is removed from the roll? Claims 31 and 32 The Examiner found that the limitations recited in these claims do not confer patentability in view of Sandor’s disclosure of multiple patterns of optical element shapes (Ans. 5). Appellants argue that the disputed limitations are not disclosed or suggested in Sandor. Thus, the issue is: (6) Does Sandor disclose or otherwise suggest the limitations of claims 31 and 32? Claims 33, 35, and 36 The Examiner found that the recited characteristics of the optical element shapes (e.g., “random pattern” recited in claim 33) do not confer patentability because a person of ordinary skill in the art would have arrived at various configurations of the shapes depending on the optical article (i.e., optical effect) desired (Ans. 5). Appellants contend that these characteristics are not disclosed or suggested in Sandor (Br. 16). Thus, the issue is: (7) Did the Examiner articulate some reasoning based on some rational underpinning as to why a person of ordinary skill in the art would have arrived at the configurations of the optical element shapes in the manner claimed? Appeal 2008-005711 Application 10/744,276 9 Claim 41 The Examiner found that “[t]he rate at which the tool would be moved into and out of engagement with the sleeve as recited in instant claim 41 would depend on the exact optical pattern desired” and thus its determination would have been obvious to a person of ordinary skill in the art (Ans. 6). Appellants contend that the limitations of claim 41 are not disclosed or suggested in Sandor (Br. 17). Thus, the issue is: (8) Did the Examiner articulate some reasoning based on some rational underpinning as to why a person of ordinary skill in the art would have arrived at the rate of movement recited in claim 41? Claims 44-46, 74, and 77-79 The Examiner reasoned that a person of ordinary skill in the art would have known “how to manipulate cutters and sleeves being cut to obtain a desired pattern and . . . that these claims call for no more than this – ie, the removal of the sleeve, re-positioning and additional cutting is submitted to have been obvious dependent on the exact pattern desired” (Ans. 6). Appellants contend that the limitations of these claims (e.g., claim 44) are not disclosed or suggested in Sandor (Br. 17). Thus, the issue is: (9) Did the Examiner articulate some reasoning based on some rational underpinning as to why a person of ordinary skill in the art would have, e.g., repositioned the roll 180° prior to additional cutting? Appeal 2008-005711 Application 10/744,276 10 FINDINGS OF FACT (“FF”) 1. Appellants’ Figures 52 and 53 are reproduced below: Appellants’ Figures 52 and 53 depict a perspective view and an end view, respectively, of a roll 170 having a sleeve 172, upon which optical element shapes 175 are cut or formed using cutting tool 176 (Spec. 5, ll. 23-27 and 23, l. 19 to 24, l. 2). 2. Appellants’ Specification explains that the pattern of optical element shapes may be used to form (e.g., by molding) optical elements (Spec. 25, l. 24 to 26, l. 5). 3. Sandor describes a method for making autostereoscopic images by concurrently printing images on paper or plastic and fabricating a lenticular polymer lens surface, wherein a lenticular pattern is produced by applying a reactive polymer layer to an outer surface of a transparent cylinder having a lenticular pattern in relief on its outer surface and casting the Appeal 2008-005711 Application 10/744,276 11 pattern in registration with the image using UV radiation (col. 1, ll. 7-15). 4. Sandor’s Figure 6a is reproduced below: Sandor’s Figure 6a depicts a relief pattern (which is placed on cylinder 41 shown in Figure 11 below) being cut into a removable copper sleeve 109 on a cylinder 108 using diamond tip cutting tool 110, which is actuated by a lathe (e.g., a computer manipulation-controlled lathe) (col. 7, ll. 35-36; col. 10, ll. 37-57). Appeal 2008-005711 Application 10/744,276 12 5. Sandor’s Figure 11 is reproduced below: Sandor’s Figure 11 depicts the production of two optical elements 47 on substrate 34 using relief pattern plate 50 disposed on cylinder 41 on which a thermosetting resin flows from hopper 35 via rollers 36-38 (col. 10, ll. 16- 36). 6. Sandor’s Figure 1 is reproduced below: Sandor’s Figure 1 depicts a lenticular screen with lenticles 17 of polymer layer 10 on substrate 14 (col. 7, ll. 21-23; col. 8, ll. 18-20). Appeal 2008-005711 Application 10/744,276 13 7. Sandor states that the lenticles 17 of Figure 1 “are elongated, parallel, rib-like cylindrical lenses having a narrow width and a uniform size and shape” (col. 8, ll. 18-20). 8. Sandor teaches that a “press polymerization process may be applied to other sorts of optical elements useful in three- dimensional and multi-imaging printing,” e.g., “rectangular or cylindrical arrays of lenslets” (col. 15, ll. 1-6). PRINCIPLES OF LAW “[T]he PTO must give claims their broadest reasonable construction consistent with the specification . . . . Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). “The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007). According to KSR, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 421. See also Perfect Web Techs., Inc. v InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (“[W]hile 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 Appeal 2008-005711 Application 10/744,276 14 person of ordinary skill that do not necessarily require explication in any reference or expert opinion.”). ANALYSIS I. Claims 1-10, 12, 13, 18, 25, 26, 28, 34, 37-40, 43, 47-49, 51-54, 56- 66, 68, 72, 73, 75, 76, 80-82, 84-87, 89, and 90 We affirm the rejection of these claims for the concise, well-stated reasons given by the Examiner (Ans. 3-4; FF 1-6). Specifically, we agree with the Examiner that Sandor inherently discloses the disputed claim limitation (“moving a tool into and out of engagement with the sleeve . . .” in claim 1) by explicitly describing the formation of the relief pattern (FF 4). While Appellants refer to Sandor’s disclosure that the lenticular pattern shown in Figure 6a has “a narrow width and a uniform size and shape” (Br. 13; FF 7), they have failed to explain how that teaching supports Appellants’ position. Accordingly, Appellants have not successfully rebutted the Examiner’s prima facie case of anticipation. Similarly, we find no error in the Examiner’s obviousness conclusion because anticipation is the epitome of obviousness. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991). Claims 22 and 23 Again, we find ourselves in complete agreement with the Examiner’s findings and reasoning (Ans. 4, 7). Moreover, even if Sandor does not explicitly describe rotation of the roll or angular adjustment of the tool, a person of ordinary skill in the art would have had only a finite number of Appeal 2008-005711 Application 10/744,276 15 options to effect cutting – by moving the roll (e.g., rotation) and/or moving the tool (e.g., angular adjustment of the tool) (FF 4). Thus, Appellants’ skeletal arguments to the contrary are unpersuasive to rebut the Examiner’s prima facie case. Claim 24 Equally unavailing is Appellants’ contention that the limitation of claim 24 “is nowhere disclosed or suggested in Sandor” (Br. 14). As pointed out by the Examiner (Ans. 5), Sandor explicitly discloses two optical element shapes on the sleeve (FF 5). Therefore, we find no error in the Examiner’s rejection. II. Claim 27 We share the Examiner’s view that a person of ordinary skill in the art would have been prompted to cut a portion of Sandor’s sleeve containing the optical element shapes in order to produce two relief patterns, as explicitly disclosed in the reference (FF 4 and 5). Appellants’ dismissal of the Examiner’s reasoning as “hindsight reconstruction” does not persuasively rebut the Examiner’s analysis based on common sense. Perfect Web, 587 F.3d at 1329. Claims 31 and 32 We agree with the Examiner for reasons similar to those given for claim 27. Appellants’ skeletal argument that the disputed limitations are not Appeal 2008-005711 Application 10/744,276 16 disclosed or suggested in Sandor fails to rebut the Examiner’s prima facie case. Claims 33, 35, and 36 Again, we refer to the Examiner’s reasoning (Ans. 5). Appellants’ skeletal arguments that the limitations are not disclosed or suggested in Sandor fail to address the rational underpinning in the Examiner’s rejection. Claim 41 We refer to the Examiner’s reasoning (Ans. 6). Appellants’ skeletal arguments that the limitation is not disclosed or suggested in Sandor fail to address the rational underpinning in the Examiner’s rejection. Claims 44-46, 74, and 77-79 We agree with the Examiner that a person of ordinary skill in the art would have known “how to manipulate cutters and sleeves being cut to obtain a desired pattern and . . . that these claims call for no more than this – ie, the removal of the sleeve, re-positioning and additional cutting is submitted to have been obvious dependent on the exact pattern desired” (Ans. 6). Again, Appellants’ skeletal argument that the limitations of these claims are not disclosed or suggested in Sandor fails to address the Examiner’s rejection in a helpful and meaningful way. Appeal 2008-005711 Application 10/744,276 17 CONCLUSION On this record, Appellants have failed to demonstrate any error in the Examiner’s factual findings and conclusions that: (1) Sandor describes the “moving . . .” step recited in claim 1; (2) Sandor describes, either explicitly or inherently, the limitation “the tool is moved into and out of engagement with an exterior surface of the sleeve to form at least the one pattern of individual circumferentially and laterally spaced optical element shapes while rotation the roll,” as recited in claim 21, from which claim 22 depends; (3) Sandor discloses or otherwise suggests angular adjustment of the tool; (4) Sandor describes “multiple patterns of individual circumferentially and laterally spaced optical element shapes,” as recited in claim 24; (5) a person of ordinary skill in the art would have been prompted to remove a portion of the sleeve containing a pattern of optical element shapes after the sleeve is removed from the roll; (6) Sandor discloses or otherwise suggests the limitations of claims 31 and 32; (7) a person of ordinary skill in the art would have arrived at the configurations of the optical element shapes in the manner claimed; (8) a person of ordinary skill in the art would have arrived at the rate of movement recited in claim 41; and (9) a person of ordinary skill in the art would have, e.g., repositioned the roll 180° prior to additional cutting. Appeal 2008-005711 Application 10/744,276 18 DECISION The Examiner’s decision to reject: I. Claims 1-10, 12, 13, 18, 22-26, 28, 34, 37-40, 43, 47-49, 51-54, 56-66, 68, 72, 73, 75, 76, 80-82, 84-87, 89, and 90 under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Sandor; and II. Claims 11, 14-17, 19-21, 27, 29-33, 35, 36, 41, 42, 44- 46, 50, 55, 67, 69-71, 74, 77-79, 83, and 88 under 35 U.S.C. § 103(a) as unpatentable over Sandor, 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)(1)(iv). AFFIRMED bim DONALD L. OTTO (RAMBUS) RENNER, OTTO, BOISSELLE & SKLAR, LLP 1621 EUCLID AVENUE 19TH FLOOR CLEVELAND, OH 44115 Copy with citationCopy as parenthetical citation