Ex Parte Parker et al

Board of Patent Appeals and Interferences

Mar 31, 2010

10744276 (B.P.A.I. Mar. 31, 2010)

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
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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
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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.

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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).
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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
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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:
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(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
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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?
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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?
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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
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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).

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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).
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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
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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
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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
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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.

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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.

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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