11029191 (B.P.A.I. Mar. 30, 2011)

Ex Parte Wang

Board of Patent Appeals and InterferencesMar 30, 2011

11029191 (B.P.A.I. Mar. 30, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/029,191 01/04/2005 Yuh-Lin Wang 4910-25 7798 27799 7590 03/30/2011 COHEN, PONTANI, LIEBERMAN & PAVANE LLP 551 FIFTH AVENUE SUITE 1210 NEW YORK, NY 10176 EXAMINER OLSEN, ALLAN W ART UNIT PAPER NUMBER 1716 MAIL DATE DELIVERY MODE 03/30/2011 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte YUH-LIN WANG __________ Appeal 2010-003463 Application 11/029,191 Technology Center 1700 ____________ Before CHUNG K. PAK, MARK NAGUMO, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-003463 Application 11/029,191 2 Appellant appeals under 35 U.S.C. § 134 the final rejection of claims 1-16, 19, and 20. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. Appellant’s invention is said to be directed to a method for engraving irreproducible patterns with a characteristic texture on a nanoscale (Spec. 4). Claim 1 is illustrative: 1. A method for engraving an irreproducible textured pattern having a predetermined geometric outlined region and an average inner topography on a surface of a diamond, comprising the steps of: exposing an energetic ion beam onto the surface of the diamond at an angle from a normal of the surface of about 50º- 85º; and engraving the irreproducible textured pattern on the surface of the diamond using the energetic ion beam, said irreproducible textured patterned being stored for etching of the surface of the diamond and said average inner topography including a depth and slope at points within the outlined geometric region. Appellant appeals the following rejections: 1. Claims 1-16, 19, and 20 are rejected under 35 U.S.C. § 112, second paragraph, as failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. 2. Claims 1-6, 8, 9, 19, and 20 are rejected under 35 U.S.C. § 102(b) as being unpatentable over Adams (D. P. Adams, Focused Ion Beam Milling of Diamond: Effects of H2O on Yield, Surface Morphology and Microstructure, 21 J. VACUUM SCI. TECH. B 6, 2334 (2003).). Appeal 2010-003463 Application 11/029,191 3 3. Claims 1-7, 10-15, 19, and 20 are rejected under 35 U.S.C. § 102(b) as being unpatentable over Efremow (N. N. Efremow, Ion-beam- assisted Etching of Diamond, 3 J. VACUUM SCI. TECH. B 1, 416 (1985).). 4. Claim 16 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Efremow in view of Nishibayashi (US Patent 5,500,077 issued Mar. 19, 1996). Regarding rejections (1) to (3), Appellant argues claim 1 only (App. Br. 4-9). Appellant advances no further argument regarding rejection (4) of claim 16 other than to argue that Nishibayashi fails to cure the alleged deficiencies of Efremow (App. Br. 8-9). Rejection (1): § 112, 2nd Paragraph ISSUE Did the Examiner reversibly err in concluding that claim 1 is rendered indefinite by the phrase “irreproducible textured patterned being stored for etching of the surface of the diamond”? We decide this issue in the affirmative. FINDINGS OF FACT AND ANALYSIS The Examiner states that “irreproducible textured patterned [sic] being stored for etching of the surface of the diamond” is indefinite because it is unclear what is meant by “being stored” without reference to digital storage as described in the Specification (Ans. 3-4). The Examiner further explains Appeal 2010-003463 Application 11/029,191 4 that it is not clear how a pattern can be both irreproducible and digitally stored (Id. at 4). Appellant argues that the claim is clear because it is the irreproducible pattern having a predetermined geometric outlined region and an average inner topography that is stored (App. Br. 5). Appellant explains that the texture of the design is spontaneously formed during the ion bombardment process and only the general outline and average inner topography are stored (Reply Br. 2). We agree with Appellant. The preamble of claim 1 recites “an irreproducible textured pattern having a predetermined geometric outlined region and an average inner topography.” Claim 1 further recites “said irreproducible textured patterned being stored for etching of the surface of the diamond and said average inner topography including a depth and slope at points within the outlined geometric region.” Accordingly, the claim is clear that the geometric outline region and average inner topography are stored. Page 8 of the Specification further explains that the user can only control the general outline of the pattern and its impression, but not the spontaneously formed topological details (i.e., the texture of the surface). Accordingly, when claim 1 is read in light of the Specification, it is clear that the general outline and average inner topography are digitally stored, not the irreproducible texture on the surface of the design. For the above reasons, we reverse the Examiner’s § 112, second paragraph, rejection of claims 1-16, 19, and 20. Appeal 2010-003463 Application 11/029,191 5 Rejections (2) and (3): Anticipation ISSUE Did the Examiner reversibly err in finding that Adams or Efremow teach an exposure angle for the ion beam within the claimed range and the irreproducible textured pattern having a geometric outlined region and an average inner topography as recited in claim 1? We decide this issue in the negative. FINDINGS OF FACT AND ANALYSES The Examiner finds that Adams’ Figures 4, 6, and 8 teach the claimed process that includes exposing a diamond to an ion beam at exposure angles from 50° to 85° (Ans. 4). The Examiner finds Adams to teach using the ion beam to form a square box feature having a surface morphology (id. at 5). Regarding the storage limitation for the irreproducible textured pattern, the Examiner finds that Adams’ rastering is almost certainly computer controlled (id. at 6). Alternatively, the Examiner finds that the stored feature is met by manual control wherein the user stores the desired image in his or her memory (id.). The Examiner finds that Adams’ textured surface would inherently have the claimed sloped and angled topography (id.). The Examiner finds that Efremow’s Figure 4 teaches exposing a diamond to the claimed exposure angle range of 50° to 85° (id. at 8). The Examiner further finds that Efremow teaches forming grating structures which correspond to the geometric outlined region having an average inner topography (id.). The Examiner reasons that Efremow meets the claim features of storing the irreproducible textured surface and the claimed Appeal 2010-003463 Application 11/029,191 6 average inner topography based on reasoning similar to that noted above wth regard to Adams meeting these features (id. at 8-9). Appellant argues that Adams and Efremow fail to teach the claimed exposure angle range (App. Br. 6, 7). Appellant contends that Adams and Efremow fail to teach the irreproducible textured pattern having a predetermined geometric outlined region and an average inner topography on a surface of the diamond where the irreproducible textured pattern is stored for etching and the average inner topography having a depth and slope at points within the outlined geometric region (id. at 6-8). Appellant’s arguments fail to address specifically the Examiner’s finding that Adams and Efremow teach using the claimed range of exposure angles. The Examiner relies on Efremow’s Figure 4 and Adams’ Figures 4, 6 and 8 which graphically depict data measured by Efremow and Adams at different exposure angles that include the Appellant’s claimed range of 50° to 85°. Appellant contends that Adams teaches a preference for an exposure angle range of 33 to 45° because Adams’ Figure 6(b) shows that is where long wavelength features appear (id. at 6). However, Adams’ alleged exposure angle preference does not diminish the fact that the claimed exposure angle range is demonstrated by Adams. As stated by the Examiner, Adams teaches that ridges form most prominently at an exposure angle of 40°, but also that ridges are still present at other angles (Ans. 14). Moreover, Appellant’s arguments regarding the specifics of the irreproducible texture pattern and the pattern being stored also fail to address the Examiner’s findings noted above regarding these features. Rather, Appellant concedes that Adams and Efremow digitally store the pattern and Appeal 2010-003463 Application 11/029,191 7 use computer control to form the pattern into the diamond (Reply Br. 3). Appellant’s mere argument that the features are not taught by Adams or Efremow does not respond to the Examiner’s well reasoned findings that the disputed features are in fact taught by Adams and Efremow. For the above reasons, we affirm the Examiner’s § 102(b) rejection of claims 1-6, 8, 9, 19, and 20 over Adams, and the § 102(b) rejection of claims 1-7, 10-15, 19, and 20 over Efremow. We further affirm the Examiner’s § 103(a) rejection of claim 16 over Efremow in view of Nishibayashi for the same reasons. DECISION The Examiner’s decision 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. ORDER AFFIRMED bar