Ex Parte Vadali et al

Patent Trial and Appeal Board

May 29, 2018

13749426 (P.T.A.B. May. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/749,426 01/24/2013
97830 7590 05/31/2018
Crawford Maunu PLLC
1150 Northland Drive, Suite 100
St. Paul, MN 55120
FIRST NAMED INVENTOR
Venkata Madhukanth Vadali
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.
WARF.106PA
(Pl30168US01)
CONFIRMATION NO.
8082
EXAMINER
STAPLETON, ERIC S
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
05/31/2018 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):
USPTO-patent@ip-firm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VENKATA MADHUKANTH V ADALI, CHAO MA,
NEIL ARTHUR DUFFIE, XIAOCHUN LI, and
FRANK EWALD PFEFFERKORN
Appeal2017-005133 1
Application 13/749,426
Technology Center 3700
Before: EDWARD A. BROWN, ARTHUR M. PESLAK, and
ANTHONY KNIGHT, Administrative Patent Judges.
KNIGHT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-16. 2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.
1 According to Appellants, the real party in interest is the Wisconsin Alumni
Research Foundation. Appeal Br. 2.
2 Claims 17 and 18 have been indicated as allowable by the Examiner if
rewritten to overcome the rejections under 35 U.S.C. § 112, second
paragraph, and to include all limitations of the base claim and any
intervening claims. See Final Act. 15.
Appeal2017-005133
Application 13/749,426
CLAIMED SUBJECT MATTER
The disclosure is directed to "the polishing of materials, and more
specific aspects relate to reducing surface asperities via the application of
different regimes for polishing." Spec. 1 :9--11. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A method comprising:
reducing a height of surface asperities in a material surface
region having both high-frequency surface asperities and low-
frequency surface asperities, by controlling characteristics of the
surface region under a first regime to flow from the surface
asperities; and
reducing a height of high-frequency surface asperities in
the material surface region by controlling characteristics of the
surface region under a second regime to flow material that is
predominantly from the high-frequency surface asperities, the
controlled characteristics in the second regime being different
than the controlled characteristics in the first regime.
REJECTIONS
The Examiner made the following rejections:
I. Claims 1-18 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
II. Claims 1-16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over S. Kuo et al., Oscillatory Marangoni Flow: A
Fundamental Study by Conduction-Mode Laser Spot Welding, The Welding
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Application 13/749,426
Journal, Dec. 2011, pp. 229--240 (hereinafter "Kuo")3 and Cormont (FR
2,977,182 Al, published Jan. 4, 2013) (hereinafter "Connont")4.
OPINION
Rejection I - The rejection of claims 1-18 under
35 US.C. § 112, second paragraph
Claim 1 is directed to a method comprising reducing surface asperities
using two different regimes to smooth out surface roughness. 5 Claim 1
recites, "reducing a height of surface asperities ... by controlling
characteristics of the surface region under a first regime to flow material
from the surface asperities." Appeal Br. 10, Claims App 'x. The Examiner
finds that claim 1 is indefinite because "[ t ]he recitation of, 'reducing a height
[]' appears to be part of the step of, 'controlling,' rather than a distinct step.
However, the claim is structure [sic] such that, 'reducing,' is recited like a
step of the claim." Final Act. 2-3. More generally, the Examiner states that
"it is not definite which recitations of verbs are steps of the claimed
method(s)." Id. at 3.
3 The Examiner references page 241 as a part of Kuo, however, this page is
in a different article. Therefore, we confine our review to the pages of Kuo
referenced above.
4 The Examiner's rejection is based upon a French publication having a U.S.
equivalent document, US 2014/0113528 Al, published Apr. 24, 2014. We
gain our understanding of the French reference from the U.S. equivalent
publication and all references are to the same.
5 See Spec. 2:8-12. ("[T]he present invention [is] directed to polishing or
otherwise reducing surface asperities, such as those relating to rough surface
features of a material. In accordance with various embodiments, surface
asperities in a material such as a metal or metal alloy are reduced in height
(e.g., size) by applying energy under first and second regimes having
different operating characteristics.").
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Application 13/749,426
Appellants argue that "the relevant claim limitations are
unambiguously clear." Appeal Br. 7. Appellants explain that "[t]he
Examiner is correct, in that the first recited 'reducing' portion is indeed a
step of the claim." Id. Further, Appellants point out that the step of
"reducing" is modified by "controlling" and thus these are not separate
steps. Id. at 7-8.
In this instance, a person having ordinary skill in the art would
recognize that the clause positioned between the words "reducing" and
"controlling" does not change the fact that the word "controlling" indicates
how the step of "reducing" is to be performed. Thus, we are in agreement
with Appellants that the language relates to a single step and is not unclear.
Accordingly, we do not sustain the Examiner's rejection of claim 1 based
upon indefiniteness.
Claims 2-15 depend from claim 1. The Examiner proffers two
reasons why these dependent claims are indefinite. First, the Examiner
determines that these claims are indefinite because they depend from claim
1. For the reasons stated above, we do not sustain the rejection of claim 1 as
being indefinite. Likewise, we do not sustain the rejection of the dependent
claims.
The Examiner also determines that claims 2-15 are indefinite because
they "do not refer back to previously recited subject matter." Final Act. 3.
We agree with Appellants that the Examiner has not established that
dependent claims 2-15 do not lack antecedent basis. Appeal Br. 8. Each
dependent claim refers back to a preceding claim in the preamble. Further,
each dependent claim uses the phrase "wherein ... include[ s ]" to denote the
limitation of claim 1 or intervening claims that is being modified. Thus, we
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Application 13/749,426
do not sustain the Examiner's rejection of dependent claim 2-15 as indefinite
on this basis either.
Claim 16 is an independent claim and contains different phrasing than
claim 1. The Examiner does not provide an explanation for how the
phrasing of claims 16-18 would be indefinite separate and apart from claim
1. Accordingly, we do not sustain the rejection of claim 16, and claims 17
and 18 which depend therefrom, as being indefinite for the reasons discussed
supra.
Claim 1
Rejection II - The rejection of claims 1-16 under
35 US.C. § 103(a)
The Examiner finds that the combination of Kuo and Cormont
discloses or suggests all of the limitations of claim 1. Final Act. 4--5, 10-11.
In support of these findings, the Examiner cites the entire Kuo document and
all of Cormont' s figures and disclosure except for the claims.
Appellants argue that "the record as it stands does not provide
adequate explanation or teachings in the references, that would suggest that
the cited Marangoni flow aspects and the laser processing in the [Cormont]
references would necessarily result in the claimed regimes of flow." Id. at 7
( emphasis added).
Neither the Final Rejection nor the Examiner's Answer sets forth
specifically how the applied references disclose the limitations of claim 1.
See Final Act. 4--5, 10-11; Ans. passim. Despite the Examiner's assertion
that Cormont discloses the first regime in paragraph 48 (Ans. 17), this
paragraph does not clarify this finding. The methods described in paragraph
48 of Cormont are disparate methods in that some remove material by
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Application 13/749,426
mechanical action (polishing), some by laser action (laser retouching), and
one is not descriptive of the method of removing material (smoothing). The
Examiner does not explain how the methods disclosed in Cormont anticipate
or render obvious claim 1. It is not clear from the Final Action or the
Answer which of these methods the Examiner considers to address the
limitations of claim 1, and, in particular, the limitation of a first regime to
flow material from the surface asperities. See Final Act. 10-11; Ans. 16.
Additionally, we have reviewed the file history including the Office Action
dated September 1 7, 2015, and it also does not set forth how the Examiner
determines that the applied references disclose or suggest all the limitations
of claim 1.
Our reviewing court has set forth the standard for determining the
sufficiency of an Examiner's rejection:
[T]he PTO carries its procedural burden of establishing a
prima facie case when its rejection satisfies 35 U.S.C. § 132, in
"notify[ing] the applicant ... [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application."
That section "is violated when a rejection is so uninformative that
it prevents the applicant from recognizing and seeking to counter
the grounds for rejection."
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (citations omitted)
(alterations in original).
Based on our review of all of the Office Actions issued in this case,
we are unable to locate the Examiner's reasons for rejecting claim 1 as
anticipated or unpatentable, nor have we located specific citations by the
Examiner to the references that correspond to the limitations of claim 1.
Therefore, we determine that a prima facie showing of anticipation or
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unpatentability of claim 1, sufficient to satisfy the requirements of 35 U.S.C.
§ 132, has not been established because the rejection "is so uninformative
that it prevents the applicant from recognizing and seeking to counter the
grounds of the rejection." Id. We, thus, do not sustain the rejection of claim
1.
Claims 2-15
Claims 2-15 depend from claim 1. Appeal Br. 10-13, Claims App'x.
The Examiner relies on the same deficient findings and reasoning based on
Kuo and Cormont discussed above, regarding claim 1. Thus, for the same
reasons discussed above, we do not sustain the rejection of claims 2-15.
Claim 16
Similar to claim 1, independent claim 16 recites the method step of
"reducing a height of the additional high-frequency asperities under a second
regime by applying second energy pulses to generate melt pools in the
surface region and to promote at least one of thermocapillary flow and
capillary flow of the material." Appeal Br. 13-14, Claims App'x. For claim
16, the Examiner relies on the same deficient findings and conclusions with
regard to Kuo and Cormont discussed above with regard to claim 1. See
Ans. 16-18. Thus, for the same reasons discussed above, we also do not
sustain the rejection of claim 16.
DECISION
The Examiner's decision to reject claims 1-18 under 35 U.S.C.
§ 112, second paragraph, is reversed.
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The Examiner's decision to reject claims 1-16 under 35 U.S.C. § 103
is reversed.
REVERSED
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