Ex Parte Tateno

Board of Patent Appeals and Interferences

Dec 9, 2008

11149242 (B.P.A.I. Dec. 9, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte RYO TATENO
__________

Appeal 2008-5944
Application 11/149,242
Technology Center 1700
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Decided: December 9, 2008
___________

Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and
JEFFREY T. SMITH, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from an Examiner’s final
rejection of claims 1-6, all of the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.

Appeal 2008-5944
Application 11/149,242

The following Examiner’s rejections are before us for review:1
Claims 1-4 are rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Nagano,2 DiStefano,3 and a NovecTM EGC-1720 product
information sheet.4
Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over the
combination of Nagano and Kanemura.5
Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over the
combination of Nagano, Kanemura, and the NovecTM EGC-1720 product
information sheet.
Claims 1 and 5 are the only independent claims on appeal. They read
as follows:
1. A method of manufacturing a replica diffraction grating,
comprising:
coating a fluorine surface treating agent on a grating
surface of a master diffraction grating as a peeling agent,
forming a metal thin film on the grating surface coated
with the fluorine surface treating agent with vapor deposition,

1 The Examiner finally rejected claim 6 under 35 U.S.C. § 112, second
paragraph. Final Office Action mailed April 23, 2007, at 3. The Appellant
does not address this rejection in the Appeal Brief, and the Examiner does
not discuss the rejection in the Answer. Rather, the Examiner indicates that
the Appellant’s statement of the grounds of rejection to be reviewed on
appeal is correct. See Appeal Brief dated December 13, 2007 (“Br.”), at 4,
Examiner’s Answer mailed March 5, 2008 (“Ans.”), section (6). Therefore,
we consider the rejection of claim 6 under 35 U.S.C. § 112, second
paragraph, to be withdrawn. MPEP § 1207.02 (8th ed., Rev. 7, July 2008);
see also Amendment After Final Action dated August 14, 2007, 3-4
(amending claim 6).
2 JP 07-146405 published June 6, 1995.
3 US 6,460,245 B1 issued to DiStefano on October 8, 2002.
4 NovecTM EGC-1720 product information sheet issued September 2003
(“Novec”).
5 US 5,374,668 issued to Kanemura et al. on December 20, 1994.
2
Appeal 2008-5944
Application 11/149,242

adhering a replica substrate to the master diffraction
grating having the metal thin film with an adhesive material,
and
removing the replica substrate from the master diffraction
grating in a state that the metal thin film is adhered to the
replica substrate.

5. A method of manufacturing a replica diffraction grating,
comprising:
coating a fluorine surface treating agent on a grating
surface of a master diffraction grating as a peeling agent,
forming a metal thin film on the grating surface coated
with the fluorine surface treating agent with vapor deposition,
adhering a replica substrate to the master diffraction
grating having the metal thin film with an adhesive material,
and
removing the replica substrate from the master diffraction
grating in a state that the metal thin film is adhered to the
replica substrate, a part of said fluorine surface treating agent
remaining as a film on a surface of the metal thin film of the
replica diffraction grating in removing the replica substrate.

Br. 11-12, Claims Appendix.
B. ISSUE
Based on the record before us, would it have been prima facie obvious
to substitute the separating agent used in the method of Nagano with the
fluorine surface treating agent disclosed in DiStefano, Novec, and/or
Kanemura?
C. ANALYSIS
The Examiner found that Nagano discloses a method of
manufacturing a replica diffraction grating. According to the method
disclosed in Nagano, a metal thin film is vapor deposited on a substrate, and
a master diffraction grating is formed by forming a grating in the film. A
thin film of oil or silicon grease is formed on the surface of the metal thin
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Appeal 2008-5944
Application 11/149,242

film, and an aluminum thin film is formed on top of the oil or silicon grease.
A replica diffraction grating is formed by attaching a glass substrate to the
aluminum thin film. Separation of the replica diffraction grating from the
master diffraction grating is facilitated by the oil or silicon grease. Nagano,
paras. [0003], [0010]; Nagano Figure 1(d).6
The Examiner found that Nagano does not teach the step of “coating a
fluorine surface treating agent on a grating surface of a master diffraction
grating as a peeling agent” recited in claims 1 and 5. Rather, Nagano
teaches that oil or silicon grease is used as a separating agent.
The Examiner found that DiStefano, Novec, and/or Kanemura suggest
fluorine release agents. The Examiner concluded that it would have been
obvious to one of ordinary skill in the art to substitute the oil or silicon
grease disclosed in Nagano for a fluorine release agent as disclosed in
DiStefano, Novec, and/or Kanemura.
The Appellant argues that the evidence, as a whole, does not suggest
substituting the oil or silicon grease used in the method of Nagano with a
fluorine surface treating agent as disclosed in DiStefano, Novec, or
Kanemura. We agree.
DiStefano discloses a release liner, such a thin, flexible plastic sheet,
provided over a releasable adhesive. DiStefano discloses that the release
liner may include a release treatment, such as a synthetic fluorine-containing
resin (Teflon®), to reduce the level of adhesive between the release liner and
the releasable adhesive. DiStefano 4:2-11, 8:6-11.

6 An English translation of JP 07-146405 to Nagano is of record in the
Official file of Application 11/149,242. Reference to Nagano in this opinion
is by way of that English translation.
4
Appeal 2008-5944
Application 11/149,242

Novec discloses that Novec EGC-1720 is a low viscosity solution of a
fluorosilane polymer carried in a hydrofluoroether solvent. Novec discloses
that the material covalently bonds to glass and metal oxide layers, forming
an effective anti-smudge coating on anti-reflective surfaces. Novec EGC-
1720 is said to dry to a thin transparent film having anti-wetting, anti-
stiction,7 and anti-migration properties. Novec 1.
Kanemura discloses that it was known to use a fluorine-type or a
silicon-type external release agent to release an epoxy resin based lens from
a polyolefin resin mold by treating the mold with the external release agent.
However, Kanemura discloses that use of these external release agents is
accompanied by certain problems. Kanemura 2:19-38. Kanemura discloses
that these problems may be eliminated by mixing an internal release agent
with an epoxy resin and a polythiol compound and cast polymerizing the
mixture. Kanemura 2:49-56, 8:9-30.
The evidence of record does not disclose using a fluorine release
agent to facilitate the separation of two metal surfaces from one another.
Moreover, the Examiner has failed to direct us to any evidence suggesting
that a fluorine release agent is a suitable substitute for oil or silicon grease in
separating metal surfaces from one another. Thus, it is not readily apparent
on this record why one of ordinary skill in the art would have substituted the
separating agent disclosed in Nagano with the fluorine release agent
disclosed in DiStefano, Novec, and/or Kanemura. See In re Kahn 441 F.3d
977, 988 (Fed. Cir. 2006) (“rejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead there must be some

7 The Examiner found that according to Answers.com, the definition of
“stiction” relates to the terms “static friction” and “stick.” Ans., section
(10); http://www.answers.com/topic/stiction?cat=technology.
5
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Application 11/149,242

articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness”).
D. CONCLUSION OF LAW
Based on the record before us, it would not have been prima facie
obvious to substitute the separating agent used in the method of Nagano with
the fluorine surface treating agent disclosed in DiStefano, Novec, and/or
Kanemura.
E. DECISION
The rejection of claims 1-4 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Nagano, DiStefano, and a NovecTM EGC-1720
product information sheet is reversed.
The rejection of claim 5 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Nagano and Kanemura is reversed.
The rejection of claim 6 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Nagano, Kanemura, and the NovecTM EGC-1720
product information sheet is reversed.

REVERSED

tc

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