Ex Parte Shelnut et al

Board of Patent Appeals and Interferences

Apr 28, 2009

11207627 (B.P.A.I. Apr. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES G. SHELNUT, MATTHEW L. MOYNIHAN,
NICOLA PUGLIANO, and PHILIP D. KNUDSEN
____________

Appeal 2009-0080
Application 11/207,627
Technology Center 1700
____________

Decided:1 April 29, 2009
____________

Before PETER F. KRATZ, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Application 11/207,627

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1, 4, and 6-12. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appellants’ invention is directed to a method of forming a printed
circuit board.
Representative claim 1 reads as follows:
1. A method of forming a printed circuit board having optical
functionality, comprising:

(a) providing a first, printed circuit board substrate;

(b) forming an optical waveguide structure comprising a clad
and a core structure on a second substrate, separate from
the printed circuit board substrate, wherein the optical
waveguide structure comprises a polymer comprising
units of the formula (R1SiO1.5), wherein R1 is a
substituted or unsubstituted organic group, and wherein
formation of the core structure comprises:

(bl) forming a core layer from a composition
comprising units of the formula (R1SiO1.5) and a
plurality of functional end groups; and a first
component for altering the solubility of the
composition upon exposure to actinic radiation;

(b2) exposing a portion of the core layer to actinic
radiation; and

(b3) developing the core layer, thereby forming the core
structure;

(c) separating the optical waveguide structure from the
second substrate; and

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(d) affixing the optical waveguide structure to the printed
circuit board substrate.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:2
Yoshimura 2002/0036055 A1 Mar. 28, 2002
Dawes 6,511,615 B1 Jan. 28, 2003
Xu 6,555,288 B1 Apr. 29, 2003
Adams 2004/0109950 A1 Jun. 10, 2004
Yamaguchi 2005/0002631 A1 Jan. 06, 2005
Kim 7,025,849 B2 Apr. 11, 2006
Shelnut 564 7,072,564 Jul. 04, 2006
Shelnut 565 7,072,565 Jul. 04, 2006
Shelnut 563 7,072,563 Jul. 04, 2006

The Examiner rejected the claims under 35 U.S.C. § 103(a) as follows:
a) Claims 1, 4, 6-9, 11, and 12 as unpatentable over Yoshimura in view
of Adams; b) Claims 1, 4, 6-9 and 12 as unpatentable over Dawes in view of
Adams; c) Claims 1, 4, 6 and 10 as unpatentable over Yamaguchi in view of
Kim and Adams; and, d) Claims 1, 4, 11 and 12 as unpatentable over Xu in
view of Kim and Adams.
The Examiner also rejected the claims on the grounds on non-statutory
obviousness-type double patenting as follows: 3

2 Two obviousness-type double patenting rejections were based on copending
applications that have now matured into US patents (i.e., Shelnut 565
corresponds to Serial No. 11/105,979; likewise Shelnut 563 corresponds to
Serial No. 10/993,069). Another obviousness-type double patenting rejection
(based on Serial No. 11/195,967) is now moot since Serial No. 11/195,967
has been abandoned. The list of prior art reflects these changes.
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e) Claims 1 and 4 over claims 7-9 of Shelnut 564 in view of
Yoshimura; f) Claims 1, 4, and 12 over claims 6-8 and 10 of Shelnut 565 in
view of Yoshimura; and, g) Claims 1, 4, and 12 over claims 8-10 and 14-19
of Shelnut 563 in view of Yoshimura.
The § 103 rejection based on Yoshimura and Adams; the § 103 rejection
based on Dawes and Adams; and the § 103 rejection based on Yamaguchi,
Kim, and Adams
FIRST ISSUE on APPEAL
In the first three grounds of rejection, the Examiner relies
alternatively on Yoshimura, Dawes, or Yamaguchi with Kim for teaching
all the steps recited in claim 1 except for the recitation of the specific
material used to make the core layer and the claimed steps of “exposing a
portion of the core layer to actinic radiation” as well as “developing the
core layer”.
The Examiner relies on Adams in all three of these grounds as
evidence that the use of the claimed polysilica polymer to form a
waveguide structure was known. The Examiner also relies on Adams alone
for teaching the steps of “exposing a portion of the core layer to actinic
radiation” and “developing the core layer” as recited in claim 1.
3 The ground of rejection labeled (viii) in Appellant’s Brief (see, App. Br. 4)
has been omitted, since the application upon which the rejection was based
has been abandoned. We have reframed the statement of the obviousness-
type double patenting rejections to reflect the current status of the
applications relied upon. Claims 6-8 and 10 of Shelnut 565 corresponds to
claims 6-8 and 10 of Serial No. 11/105,979; likewise claims 8-10 and 14-19
of Shelnut 563 corresponds to claims 8-10 and 14-19 of Serial No.
10/993,069.
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Appellants contend that the Examiner has improperly relied upon
Adams curing step for teaching the claimed step of “developing the core
layer” since “developing” has a well-understood definition in this art that
includes contacting a post-exposed layer with a developing solution (Br. 7).
Appellants provide excerpts from two technical books in support of their
definition4, and state that their Specification is entirely consistent with this
definition (id.).
The Examiner contends that Appellants’ Specification has no support
for their definition and that the broadest reasonable definition of
“developing” is its “ordinary meaning, such as ‘to bring from latency to or
toward[s] fulfillment’ or ‘to convert or transform’”, citing a dictionary
definition from The American Heritage Dictionary (Ans. 19). According to
the Examiner, Adams’ disclosure of “curing the material meets applicant’s
claimed ‘developing step’” (id.).
Thus, the first issue before us is whether Appellants have shown that
the Examiner reversibly erred in rejecting the claims in the first three
grounds of rejection under 35 U.S.C. § 103(a) because the Examiner erred
in her interpretation of the claim term “developing”.
We answer this question in the affirmative, and accordingly reverse
the first three grounds of rejection under 35 U.S.C. § 103.
PRINCIPLES OF LAW
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).

4 We shall consider this evidence since 1) the 5th edition of the Printed
Circuit Handbook is cited in Appellants’ Specification (see Spec. 14:13-15)
and 2) this evidence is in support of the definition argued by Appellants.
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During examination, the claims must be interpreted as broadly as their
terms reasonably allow. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364(Fed. Cir. 2004). However, “‘[c]laims are not to be read in a vacuum,
and limitations therein are to be interpreted in light of the specification in
giving them ‘their broadest reasonable interpretation.’’” In re Marosi, 710
F.2d 799, 802 (Fed. Cir. 1983) (quoting In re Okuzawa, 537 F.2d 545, 548
(CCPA 1976)).
“[T]he ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the effective filing date of
the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.
Cir. 2005) (en banc).
[The claims] are part of “a fully integrated written
instrument,” . . . consisting principally of a specification that
concludes with the claims. For that reason, claims “must be
read in view of the specification” . . . . [T]he specification “is
always highly relevant to the claim construction analysis.
Usually, it is dispositive; it is the single best guide to the
meaning of a disputed term.”

Phillips, 415 F.3d at 1315 (internal citations omitted).

FINDINGS OF FACT
The following findings of fact are supported by a preponderance of
the evidence. Additional findings of fact as necessary appear in other
portions of the opinion.
Appellants Specification describes that a waveguide core layer may be
typically patterned “by exposing and developing a photoimageable core
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layer” (Spec. 1: 17-19)5. The Specification also describes that functional end
groups are included in the core layer composition that allow a solubility
change in the composition after photoactivation (Spec. 6:17-19), and that an
amount of photoactive component is added for altering the solubility is an
amount “sufficient to alter the solubility of the composition upon exposure to
actinic radiation and render the exposed portion insoluble in a developer”
(Spec. 8: 16-19).
The Specification further describes that the unexposed portions of the
core layer 6 “are developed away” (Spec. 12:5-7). All of the examples
describe that the core is formed by placing artwork “directly on the core
layer”, exposing the core to “actinic radiation”, followed by “dipp[ing] in a
. . . developer solution” (Spec. 16:7-12; see also Spec. 16-21).
One of ordinary skill in the art would have appreciated that
developing means a process “in which a post-exposed layer is brought into
contact with a developer solution” and “cause[s] removal of the unexposed
regions in the case of a negative working layer, leaving behind the
relatively insoluble, polymerized exposed regions of the layer” (see, Br. 7;
also Printed Circuit Handbook, 4th edition ; Silicon Processing in Br.
Evidence Appendix)6.
The 5th edition of the Printed Circuit Handbook is cited in
Appellants’ Specification (see Spec. 14:13-15).

5 The Examiner does not rely upon Appellants’ admitted prior art of
exposing and developing a photoimageable core layer as discussed in the
Background of the Invention.
6 Coombs, Jr., Printed Circuits Handbook, 4th Edition, McGraw Hill, pp.
17.26-17.27, 1996; Wolf, Silicon Processing for the VLSI Era, Vol. 1 :
Process Technology, Lattice Press, pp. 441-446 (1986).
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Appellants do not dispute the Examiner’s finding that Adams describes
the use of a composition comprising the polysilica polymer claimed in claim
1 and a first component for altering the solubility of the composition upon
exposure to actinic radiation as claimed in claim 1, to form a waveguide
structure (Ans. 11, see generally Br.).
Adams describes that the polysilica material is useful for use in
“optoelectronic devices” including waveguides (p. 5, para. [0039]). Adams
also describes that the polysilica material may deposited on a substrate and
then cured (Adams, p. 5, para. [0041]).
Adams defines “curing” as “polymerization, condensation[,] or any
other reaction where the molecular weight of [the] compound is increased.”
(Adams, p. 2, para. [0019]. Adams describes that “curing . . . may be by any
means known in the art including . . . exposure to actinic radiation” (Adams,
p. 5, para. [0041]).
Adams does not explicitly describe making a waveguide that includes
a step of “developing the core layer” as recited in claim 1. The “curing” step
of Adam is not equivalent to a step of “developing the core layer” in the
context of this art.

ANALYSIS
We need only discuss independent claim 1.
Appellants dispute the Examiner’s finding that Adams discloses a
method that includes “developing the core layer” as recited in claim 1 (e.g.,
Ans. 5, 19; Br. 7). The Examiner states that Adams disclosure of “curing the
material meets applicant’s claimed developing step” (e.g., Ans. 19).
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Appellants contend that “curing” as disclosed in Adams is no way
suggestive of a “developing” process as that term is understood by those of
ordinary skill in the art (Br. 8). We agree with Appellants.
In the present case, the Specification provides ample guidance and
context for interpreting the term “developing” (see FFs above). Appellants
have also provided evidence that supports their position that one of ordinary
skill in the art would interpret “developing the core layer” as including
removal of unexposed portions of the core layer via a developing solution
(id., also, Br. 7).
It is well established that an Examiner is to give a claim term its
broadest reasonable interpretation. However, a given, broader interpretation
may not also be a reasonable one in a specific context. Intrinsic evidence of
a claim term's plain meaning is generally to be given greater weight than
extrinsic evidence of a dictionary definition. Appellants have provided a
reasonable rationale of why their asserted interpretation of “developing” is
consistent with the plain meaning of “developing” as understood by one of
ordinary skill in the art of forming optical waveguide structures in the
context of the claimed invention. The Examiner has not provided any
evidence that the broader dictionary definition of “develop” was one of the
accepted usages for the term “develop” in the context of the claimed step of
“developing a core layer” as it was used in the optical waveguide arts.
The Examiner relies upon Adams’ description of curing the material
to meet both the claimed steps (b2) and (b3); i.e., of “exposing a portion of
the core layer to actinic radiation” as well as “developing the core layer”
(e.g., see Ans. 19, 20, 21). Adams describes that “curing . . . may be by any
means known in the art including . . . exposure to actinic radiation” (Adams,
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p. 5, para. [0041]). According to the Examiner, Adams’ disclosure of
“curing the material meets applicant’s claimed developing step [b3]” (e.g.,
Ans. 19). The Examiner has stated that Adams’ disclosure of “curing” also
corresponds to the claimed step (b2) of “exposing a portion of the core layer
to actinic radiation” (see, e.g., Ans. 5; referring to Adams, p. 5, para.
[0041]). The Examiner’s position that “curing” corresponds to the claimed
step (b2) as well as the claimed step (b3) of “developing the core layer” is
not reasonable in the context of this art (see generally, Br. 6-9; FFs).
Therefore, we are persuaded that the Examiner's interpretation of
“developing the core layer” is overly broad and not reasonable. As such, we
cannot sustain the three obviousness rejections which all rely on this
interpretation.
CONCLUSION
Appellants have shown that the Examiner reversibly erred in
rejecting the claims in the first three grounds of rejection under 35 U.S.C. §
103(a) because the Examiner erred in her interpretation of the claim term
“developing”.
We are constrained by these circumstances to reverse the Examiner’s
rejections under 35 U.S.C. § 103 based on Yoshimura and Adams; Dawes
and Adams; and Yamaguchi, Kim, and Adams.

The § 103 rejection based on Xu, Kim and Adams
ISSUE
In this rejection, the Examiner relies upon Xu to teach or suggest
making a waveguide structure that may be subsequently separated from the
substrate upon which it was made (Ans. 13). As pointed out by the
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Examiner, Xu explicitly describes the claimed steps of “exposing a portion of
the core layer to actinic radiation” as well as “developing the core layer”
(Ans. 13). Xu does not describe the specific composition claimed in claim 1
to make the waveguide. The Examiner relies upon Kim to suggest the
obviousness of attaching a separately formed waveguide component as
taught in Xu to a printed circuit board (Ans. 13, 14). The Examiner relies on
Adams as evidence that the use of a composition comprising the polymer
claimed in claim 1 and a first component for altering the solubility of the
composition upon exposure to actinic radiation as claimed in claim 1, to form
a waveguide structure, was known (Ans. 14).
Appellants contend that this ground of rejection is improper because
the compositions disclosed in Adams are completely different than those of
Xu (Br. 12), and that Adams does not disclose or suggest that “the described
dielectric materials are even capable of forming a core structure by exposing
a portion of a core layer to actinic radiation and development” (Ans. 13).
Thus, the second issue on appeal is whether Appellants have shown
the Examiner reversibly erred in rejecting the claims under 35 U.S.C. §
103(a) because one of ordinary skill in the art would not expect the materials
described in Adams to be capable of forming a core structure by exposing a
portion of a core layer to actinic radiation and development as taught in Xu.
ADDITIONAL FINDINGS OF FACT
Appellants do not dispute the Examiner’s finding that Xu describes
making a waveguide structure that may be subsequently separated from the
substrate upon which it was made (Ans. 13, Xu, col. 25, ll. 10-12; see
generally Br.).
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Xu describes using a core polymerizable composition for the core
layer of the waveguide and “exposing a portion of the core layer to actinic
radiation” as well as “developing the core layer” as recited in claim 1 (Xu,
col. 8, ll. 39-60; col. 9, ll. 10-20; Ans. 13). Xu teaches that exposing the core
layer to actinic radiation cures the polymer (e.g., col. 8, ll. 39-60).
Xu does not describe the specific polymerizable composition claimed
in claim 1 to make the waveguide.
Appellants do not dispute the Examiner’s finding that Kim describes
attaching a separately formed waveguide component as taught in Xu to a
printed circuit board (Ans. 10, 11; Kim, see generally Br.).
Appellants also do not dispute the Examiner’s finding that Adams
describes the use of a composition comprising a polymer having units of the
formula (R1SiO1.5) as required in claim 1 and a first component for altering
the solubility of the composition upon exposure to actinic radiation as
claimed in claim 1, to form a waveguide structure (Ans. 14, see generally
Br.).
ADDITIONAL PRINCIPLES OF LAW
The Supreme Court has instructed that although the teaching,
suggestion, motivation test “captured a helpful insight,” an 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'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740 (2007).
For a prima facie case of obviousness to be established there must be
“an apparent reason to combine the known elements in the fashion claimed.”
KSR, 127 S. Ct. at 1740-41. However, “[t]he combination of familiar
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elements according to known methods is likely to be obvious when it does no
more than yield predictable results.” KSR, 127 S. Ct. at 1739. The question
to be asked is “whether the improvement is more than the predictable use of
prior art elements according to their established functions.” KSR, 127 S. Ct.
at 1740.
The Federal Circuit recently emphasized that “[a]n obviousness
determination is not the result of a rigid formula disassociated from the
consideration of the facts of a case. Indeed, the common sense of those
skilled in the art demonstrates why some combinations would have been
obvious where others would not.” Leapfrog Enter., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1161 (Fed. Cir. 2007).
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 Fritch, 972 F.2d 1260,
1264-65 (Fed. Cir. 1992); In re Preda, 401 F.2d 825, 826 (CCPA 1968).
ANALYSIS
Based on the above factual findings and principles of law, we have no
trouble finding that one of ordinary skill in the art would have found it
prima facie obvious to use the polysilica material, disclosed in Adams as
useful for making a waveguide, to make an optical waveguide using the
known process which includes exposing the material to actinic radiation
(i.e., curing the material, see Xu,) and then developing the material as
taught in Xu.
We also have no trouble finding that one of ordinary skill in the art
would have reasonably expected the material of Adams to be successfully
used in the Xu process, since one is merely exchanging one known material
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for forming waveguides for another. Adams, like Xu, teaches that actinic
radiation may be used to cure the polymer. Adams does not describe
developing the cured layer. However, the Examiner relies upon Xu as
evidence that it is known to develop the core layer after exposing it to
radiation in order to make the core layer of a waveguide.
We further note that claim 12 is to a product, in a format which is
commonly referred to as a “product-by-process claim”. Claim 12 recites “A
printed wiring board having optical functionality formed from the method of
claim 1.” It has been well established that, for a claim to a product, the
patentability of the product must be defined by the claim, rather than the
process for making it, and it must be gauged in light of the prior art. In re
Wertheim, 541 F.2d 257, 271 (CCPA 1976); In re Brown, 459 F.2d 531, 535
(CCPA 1972). Likewise it has long been held that “‘[i]f the product in the
product-by-process claim is the same as or obvious from a product of the
prior art, the claim is unpatentable even though the prior product was made
by a different process.’” SmithKline Beecham Corp. v. Apotex Corp., 439
F.3d 1312, 1317 (Fed. Cir. 2006) (quoting In re Thorpe, 777 F.2d 695, 697
(Fed. Cir. 1985)).
The resultant end product of the applied references of Adams and Kim
appears to meet all the structural requirements set out in Appellants’ claim
12. It is not even necessary to rely upon Xu. The structure of a waveguide,
with a core comprising the claimed polysilica material of Adams, located on
a printed circuit board, which is a conventional use of a waveguide as
exemplified in Kim, would have been prima facie obvious. No evidence or
reasoning has been provided to establish that the manner of making the
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waveguide as claimed in claim 1 would have imparted any different
structure to the final printed wiring board product.
Thus, for these additional reasons, we also do not see how Appellants’
product claim 12 patentably defines over the prior art applied by the
Examiner.
CONCLUSION
Appellants have not shown the Examiner reversibly erred in rejecting
the claims under 35 U.S.C. § 103(a) because one of ordinary skill in the art
would not expect the materials described in Adams to be capable of forming
a core structure by exposing a portion of a core layer to actinic radiation and
development as taught in Xu.
The Obviousness-Type Double Patenting Rejections
Application claims 1 and 4 over claims 7-9 of Shelnut 564 in view of
Yoshimura; Application claims 1, 4, and 12 over claims 6-8 and 10 of
Shelnut 565 in view of Yoshimura; and Application claims 1, 4, and 12 over
claims 8-10 and 14-19 of Shelnut 563 in view of Yoshimura.
ISSUES
The first issue raised with respect to the obviousness-type double
patenting rejection based on Shelnut 564 turns on whether the Examiner
reversibly erred in rejected only method claims of the present application
over only product claims in Shelnut 564 that belong to a different statutory
class (Br. 16).
The second issue raised by Appellants, which is a common issue with
respect to all of the obviousness-type double patenting rejections, is whether
the Examiner has reversibly erred in establishing that it would have been
obvious to form the waveguides made by the process described in the claims
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of the commonly assigned patents on a substrate and then remove them from
that substrate and place on a circuit board as taught by Yoshimura (Br. 16,
18, 20, 21).
FINDINGS OF FACT
The Examiner correctly finds that claims of the Shelnut 563 and
Shelnut 565 each define forming an optical waveguide by the process set out
in Appellants' claim 1 process in all respects except for the requirement that
the waveguide be formed on a second substrate, then separated therefrom and
placed on a printed circuit board (Ans. 16, 17, 18).
Method claim 14 of Shelnut 563 and method claim 10 of Shelnut 565
each describe “activating” the core layer of the optical waveguide;
“activating” as defined in the patent includes exposing the layer to radiation
and developing same (see, e.g., Shelnut 563, col. 14, ll. 10-27; Shelnut 565,
col. 10, ll. 10-35).
Application claim 12 is drawn to a product, claimed in product-by-
process format.
Appellants do not dispute the Examiner’s finding that Yoshimura to
describes forming an optical waveguide on a second substrate, separating the
waveguide therefrom, and affixing the waveguide to a printed circuit board
substrate.
Based on these findings, the Examiner concludes that “it would have
been obvious to one of ordinary skill in the art to combine the method of
forming a printed circuit board taught by Yoshimura with the optical
waveguides disclosed in the conflicting claims” of each of Shelnut 564,
Shelnut 565, and Shelnut 563 in order “to ensure alignment when forming an
electronic device” (Ans. 16, 17, 18).
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PRINCIPLES OF LAW
“The judicially-created doctrine of obviousness-type double patenting
cements that legislative limitation [i.e., the duration of a patentee's right to
exclude others from practicing a claimed invention pursuant to 35 U.S.C. §
154 (a)(2)] by prohibiting a party from obtaining an extension of the right to
exclude through claims in a later patent that are not patentably distinct from
claims in a commonly owned earlier patent.” Eli Lilly and Co. v. Barr Labs.
Inc., 251 F.3d 955, 967 (Fed. Cir. 2001).
In obviousness-type double patenting rejections, the Examiner must
establish, in an analysis comparable to that under 35 U.S.C. § 103, that one
of ordinary skill would have considered the rejected claims obvious over the
conflicting claims. See In re Braat, 937 F.2d 589, 592-93 (Fed. Cir. 1991).
While the conflicting patent's specification cannot be used as prior art,
it can nonetheless be used in certain circumstances “as a dictionary to learn
the meaning of terms in a claim.” See, In re Vogel, 422 F.2d 438, 441
(CCPA 1970). The conflicting patent's disclosure may also be consulted to
clarify the patented claims' scope, by referring to tangible embodiments of
the patented claims that are disclosed in the specification. See id. at 442.

ANALYSIS
The Examiner has not adequately explained why the method of
making optical waveguides as specified in claims 1 and 4 are patentably
indistinct from product claims 7-9 of the 564 patent. Consequently, we agree
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with Appellants that the double patenting rejection of application claims 1
and 4 over claims 7-9 of the 564 patent is improper. (Br. 15, 16).7
However, Appellants contention that Yoshimura does not disclose or
suggest development of an actinic radiation-exposed core layer to form a
core layer (Br. 16, 18, 20) is not persuasive of reversible error in the
rejections that include the instant application method claims 1 and 4, as well
as application product claim 12, over product and method claims of the
Shelnut 565 and 563 patents. As pointed out by the Examiner, Yoshimura is
not relied upon for the developing step of the application claims, since the
activating step of the patent claims “meets applicant’s claimed developing
step” (e.g., Ans. 24). Appellants have not disputed this finding of the
Examiner8.
Additionally, it reasonably appears that instant application product
claim 12 is likewise patentably indistinct from the identified product claims
in Shelnut 563 (i.e., claims 8-10 to an optical waveguide) and Shelnut 565
(i.e., claims 6-8 to an optical waveguide, alone or in combination with the
teachings of Yoshimura, since the use of the optical waveguide product
claimed in Shelnut 563 and 565 on a “printed wiring board” would have been
well within the level of ordinary skill in the art.

7 While method claim 15 of Shelnut 564 describes a “method of forming a
flexible optical waveguide” using a composition that is “developable in an
aqueous developer solution” and “activating” the core layer, the Examiner
did not rely upon method claim 15 in the obviousness-type double patenting
rejection based on Shelnut 564. The Examiner also did not include the
instant application product claim 12 in the obviousness-type double patenting
rejection over product claims 7-9 of Shelnut 564.

8 No Reply Brief was filed.
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Appellants’ assertion that “the manner in which the Official Action
suggests modifying the . . . claims based on Yoshimura is such an alteration .
. . that the purpose for this judicial doctrine would not be met” (Br. 16, 18,
20) is not persuasive of reversible error for the rejections based on Shelnut
565 and Shelnut 563. This argument constitutes a mere allegation that the
rejection is improper without reasonably specifying any error therein.
Therefore, the argument is unpersuasive.
CONCLUSION
Appellants have established that the Examiner reversibly erred in
rejecting method claims 1 and 4 over product claims 7-9 of Shelnut 564.
Appellants have failed to particularly point out with any reasonable
specificity error in the Examiner’s factual findings or conclusions of
obviousness based on the combined teachings of the respective claims of
commonly owned patents Shelnut 565 and 563, each taken with Yoshimura.
ORDER
The decision of the Examiner rejecting claims 1, 4, 6-9, 11, and 12 as
unpatentable over Yoshimura in view of Adams is reversed.
The decision of the Examiner rejecting claims 1, 4, 6-9 and 12 as
unpatentable over Dawes in view of Adams is reversed.
The decision of the Examiner rejecting claims 1, 4, 6 and 10 as
unpatentable over Yamaguchi in view of Kim and Adams is reversed.
The decision of the Examiner rejecting claims 1 and 4 over claims 7-9
of Shelnut 564 in view of Yoshimura on the grounds on non-statutory
obviousness-type double patenting is reversed.
The decision of the Examiner rejecting claims 1, 4, 11 and 12 as
unpatentable over Xu in view of Kim and Adams is affirmed.
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Appeal 2009-0080
Application 11/207,627

The decision of the Examiner rejecting claims 1, 4, and 12 over claims
6-8 and 10 of Shelnut 565 in view of Yoshimura on the grounds on non-
statutory obviousness-type double patenting is affirmed.
The decision of the Examiner rejecting claims 1, 4, and 12 over claims
8-10 and 14-19 of Shelnut 563 in view of Yoshimura on the grounds on non-
statutory obviousness-type double patenting is affirmed.

Accordingly, the Examiner’s decision to reject the appealed claims is
affirmed-in-part.

No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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