KONINKLIJKE PHILIPS N.V.

Patent Trials and Appeals Board

Jul 28, 2020

14968127 - (D) (P.T.A.B. Jul. 28, 2020)

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.
14/968,127 12/14/2015 Marcus Antonius VERSCHUUREN 2006P02439US 5579
24737 7590 07/28/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
TISCHLER, FRANCES
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
07/28/2020 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
Ex parte MARCUS ANTONIUS VERSCHUUREN
_______________
Appeal 2019-004968
Application 14/968,127
Technology Center 1700
_______________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 2, 3, and 5–7 of Application
14/968,127. Appeal Br. 1, 13; Final Act. 1. We have jurisdiction under
35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.

1 In our Decision, we refer to the Specification filed December 14, 2015
(“Spec.”) of Application 14/968,127 (“the ’127 Application”); the Final
Office Action dated November 14, 2018 (“Final Act.”); the Appeal Brief
filed March 19, 2019 (“Appeal Br.”); the Examiner’s Answer dated April
15, 2019 (“Ans.”); and the Reply Brief filed June 13, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Koninklijke Philips Electronics N.V. as
the real party in interest. Appeal Br. 3.
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BACKGROUND
The ’127 Application describes a relief layer and the layer’s use in
semiconductor, optical, and micromechanical devices. Spec. 1:11–12. The
’127 Application describes the use of a stamp with a template relief pattern
on the stamping surface for forming the relief layer. Id. at 1:9–10.
According to the Specification, an embossing method can provide a low
porosity relief layer. Id. at 2:5–6.
Claim 2 is representative of the ’127 Application’s claims and is
reproduced below from the Claims Appendix of the Appeal Brief with key
limitations italicized.
2. A relief layer comprising:
a solidified siliconoxide layer that is dry formed with a
stamp having a stamping surface,
wherein the relief layer comprises silicon atoms
chemically bound to four oxygen atoms and silicon atoms
chemically bound to three oxygen atoms and one carbon atom;
wherein the relief layer is derived from a partially dried
siliconoxide compound layer that is sandwiched in between a
substrate surface and the stamping surface; and
wherein the stamp is configured to have sufficient
permeability for substantially all solvents and substantially all
hydrolysis reaction products in order to obtain the solidified
siliconoxide layer that is dry formed.
Appeal Br. 32 (emphasis added).
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REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Name Reference Date
Kurataka et al.
(“Kurataka”)
US 6,974,643 B2 Dec. 13, 2005
Vink et al.
(“Vink”)
US 2006/0055310 A1 Mar. 16, 2006
Xu et al.
(“Xu”)
US 2006/0081557 A1 Apr. 20, 2006
A. Shimojima et al., Synthesis of Oriented Inorganic-Organic
Nanocomposite Films from Alkyltrialkoxysilane-
Tetraalkoxysilane Mixtures, 120 J. Am. Chem. Soc. 4528–29
(1988) (hereinafter “Shimojima”).
REJECTIONS
On appeal, the Examiner maintains the following rejections:3
1. Claims 2 and 5–7 under 35 U.S.C. § 102(b) as anticipated by or, in
the alternative, under 35 U.S.C. § 103(a) as obvious over Xu.
Final Act. 2–4.
2. Claims 2, 3, and 5–7 under 35 U.S.C. § 103(a) as obvious over
Shimojima in view of Xu. Final Act. 4–6.
3. Claim 3 under 35 U.S.C. § 103(a) as obvious over Xu in view of
Shimojima. Final Act. 6–7.
4. Claims 2, 3, and 5–7 under 35 U.S.C. § 103(a) as obvious over
Kurataka in view of Xu and/or Shimojima. Final Act. 7–10.

3 Because this application claims priority to an application filed before the
March 16, 2013, effective date of the America Invents Act, we refer to the
pre-AIA version of the statutes.
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5. Claims 2, 3, and 5–7 under 35 U.S.C. § 103(a) as obvious over
Vink in view of Xu and/or Shimojima. Final Act. 10–13.
DISCUSSION
Ground 1: Rejection of claims 2 and 5–7 as anticipated by or, in the
alternative, as obvious over Xu
According to the Examiner, Xu would have anticipated or rendered
obvious each limitation recited in claims 2 and 5–7. Final Act. 2–4.
Appellant’s arguments focus on limitations recited in independent
claim 2 and dependent claims 6 and 7. Appeal Br. 6–12; Reply Br. 2–7. We
select claim 2 as representative of the group. Claim 5 stands or falls with
claim 2. See 37 C.F.R. § 41.37(c)(1)(iv). We discuss claims 6 and 7
separately.
a. Claim 2
The Examiner notes that claim 2, as amended, reads as a product-by-
process claim. Final Act. 2. The Examiner construes the claim as reciting
three product-by-process clauses: (i) “the silicone layer ‘that is dry formed
with a stamp . . . ,’” (ii) “[t]he ‘relief layer is derived from . . . ,’” and (iii)
“[t]he ‘stamp is configured to have . . . .’” Ans. 4 (emphasis added).
The Examiner finds Xu describes, inter alia, “a siliconoxide relief
layer employing a stamp having a stamping surface including a template
relief pattern.” Final Act. 3. The Examiner finds that Xu’s method for
forming the siliconoxide relief layer “comprises the steps of providing a
substrate surface and a stamping surface,” each of which are used to
sandwich “a siliconoxide and a solvent.” Id. The Examiner finds that Xu’s
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siliconoxide is “dried by removing the solvent, stamped, cured/cross-linked,
and further heated.” Id.
The Examiner finds that the claimed relief layer is the same as the
known siliconoxide relief layer because Xu’s process results in a product,
which includes “silicon atoms attached to 4 oxygen atoms and silicon atoms
attached to 3 oxygen atoms and an organic group, such as methyl, ethyl or
propyl.” Id. The Examiner finds that the sandwiching method described in
the ’127 Application “does not impart any structure to the siliconoxide relief
layer that is materially different than” Xu’s siliconoxide relief layer. Id.
The Examiner concludes, in the alternative, that any structural difference
imparted to the claimed relief layer by the process limitations would have
been obvious to one having ordinary skill in the art at the time the invention.
Id.
Appellant argues that, under our reviewing court’s precedent in In re
Nordt Development Co., 881 F.3d 1371, 1374–75 (Fed. Cir. 2018), the
Examiner improperly construes claim 2 as a product-by-process claim.
Appeal Br. 7. Appellant argues that the disputed claim term “dry formed” is
analogous to terms that the Federal Circuit has construed as capable of
reciting structural features: “‘press fitted,’ ‘etched,’ ‘welded[,]’ and
‘chemically engraved.’” Id. at 7–8 (citing Nordt Dev., 881 F.3d at 1374–
75). Appellant argues that the limitation “the stamp is configured to have
sufficient permeability for substantially all solvents and substantially all
hydrolysis reaction products in order to obtain the solidified siliconoxide
layer that is dry formed,” as recited in claim 2, connotes specific structure
and thus should be considered by the Examiner. Appeal Br. 8–9; see also
Reply Br. 3–7. Appellant specifically argues that Xu fails to describe or
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suggest the stamp’s structural features, which have patentable weight.
Appeal Br. 9; Reply Br. 6.
We begin our analysis by noting that the disposition in Nordt
Development was based on two inquiries: (i) whether the disputed claim
term “injection molded” is a process or structural limitation and, if the latter,
(ii) the precise meaning of the structural limitation. See Nordt Dev., 881
F.3d at 1375. In Nordt Development, our reviewing court found it
dispositive that “not only does the specification itself convey a structural
meaning to ‘injection molded,’” but the patentee also asserted that the
claimed knee brace made with injection-molded components was
structurally different from a known knee brace made with fabric. See Nordt
Dev., 881 F.3d at 1375–76.
Applying Nordt Development’s first inquiry to the facts at hand, we
find that the disputed “dry formed” term is a process limitation. We agree
with the Examiner that the claimed relief layer is a product, which results
from a process step of sandwiching a partially dried siliconoxide compound
layer between a substrate surface and a stamping surface. See Ans. 4; see
also Spec. 6:10–11; 6:19 (describing that “the stamp is permeable . . . to
accomplish further drying during the sandwiching step . . . of the method”
for forming a relief layer).
Assuming that the disputed “dry formed” term connotes structure
solely for the purpose of conducting Nordt Development’s second inquiry
here, we find that the ’127 Application does not precisely describe the term’s
meaning. Our review of the Specification finds no support for a structural
meaning of the disputed term, let alone any recitation of the “dry formed”
term verbatim. Unlike the patentee in Nordt Development, Appellant has not
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asserted any structural differences between Xu’s known siliconoxide relief
layer and the claimed relief layer made with a stamp having sufficient
permeability for solvents and hydrolysis reaction products. Thus, Nordt
Development is inapposite here.4
Appellant is relying upon product-by-process limitations regarding the
manufacture of the relief layer. Such limitations, however, do not add a
patentable distinction when the claimed product is the same as the cited art’s
product. See In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). Where the
claimed and prior art products are identical or substantially identical, or are
produced by identical or substantially identical processes, the PTO can
require an applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product. In re Best, 562
F.2d 1252, 1256 (Fed. Cir. 1977).
Appellant has not met the burden of proving that Xu’s siliconoxide
relief layer does not necessarily or inherently possess: (i) a form that has
been dried and (ii) silicon atoms chemically bound to four oxygen atoms and
silicon atoms chemically bound to three oxygen atoms and one carbon atom.

4 Likewise, to the extent Appellant relies on In re Ganero, 412 F.2d 276, 279
(CCPA 1969) (see Reply Br. 4), that case is similarly inapposite. The claim
at issue in Ganero recited an “insulation panel . . . consisting essentially of
expanded perlite particles which are interbonded one to another by
interfusion.” Ganero, 412 F.2d 276, 277 (emphasis added). In other words,
Ganero’s structural limitation recited a feature of the claimed insulation
panel. Here, the alleged structural limitation of “sufficient permeability for
substantially all solvents and substantially all hydrolysis reaction products”
(see Reply Br. 6) is a feature of a stamp, which is not a component of the
claimed relief layer. Appeal Br. 32; see also Ans. 4. Rather, the stamp is
used in the process step of sandwiching a partially dried siliconoxide
compound layer. See Spec. 6:10–11; 6:19.
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See Ans. 5; Reply Br. 7 (without any evidence or persuasive argument,
Appellant merely asserts that the claimed relief layer “is different” from
Xu’s). Comparing Xu’s disclosure with claim 2, we find that the claim
encompasses the prior art.
We sustain the rejection of claim 2 as anticipated by or obvious over
Xu. For the same reasons, we sustain the rejection of claim 5.
b. Claim 6
Claim 6 is reproduced below from the Claims Appendix of the Appeal
Brief with key limitations italicized.
6. The relief layer according to claim 2, wherein the
features of the relief layer have a shape conformal to the
corresponding complementary feature within a template relief
surface.
Appeal Br. 32 (emphasis added).
The Examiner finds Xu’s siliconoxide relief layer possesses a shape
conformed to a template relief surface. Final Act. 6.
Appellant argues that Xu merely discloses removal of mold (30)
without describing or suggesting the claimed feature. Appeal Br. 11.
For purposes of § 103, a reference is prior art for all that it discloses.
Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991);
see also In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992) (explaining that
“[i]t is well settled that a prior art reference is relevant for all that it teaches
to those of ordinary skill in the art”)). Xu explicitly describes “separating
the mold from the solid polymeric material such that a replica of the relief
structure in the mold is formed in the solidified polymeric material.” Xu
¶ 12. As the Examiner notes, Xu depicts “mold (30) with protrusions (41)
and recessions (43), wherein a polymerizable fluid fills the recessions to
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form a layer (50)[,] which becomes a solidified layer (60) with the
corresponding grooves and plateaus of the mold (30).” Ans. 6 (citing Xu
¶¶ 28, 29; Figs. 1–3). Appellant, therefore, fails to distinguish the shape of
Xu’s relief layer from the “shape conformal to the corresponding
complementary feature within a template relief surface” recited in claim 6.
Appeal Br. 32.
We sustain the rejection of claim 6 as anticipated by or obvious over
Xu.
c. Claim 7
Claim 7 is reproduced below from the Claims Appendix of the Appeal
Brief with key limitations italicized.
7. The relief layer according to claim 2, wherein the relief
layer comprises relief features with dimensions smaller than 1
micrometer.
Appeal Br. 32 (emphasis added).
The Examiner finds Xu discloses that the width and depth of the relief
layer’s protrusions (41) and recessions (43) may range from “10 nm to about
5,000 microns.” Ans. 7 (citing Xu ¶ 28).
“A prima facie case of obviousness typically exists when the ranges
of the claimed composition overlap the ranges disclosed in the prior art.” In
re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); see also In re Malagari,
499 F.2d 1297, 1303 (CCPA 1974) (concluding that a claimed invention was
rendered prima facie obvious by a prior art reference whose disclosed range
(0.020–0.035% carbon) overlapped the claimed range (0.030–0.070%
carbon)). Appellant fails to address (and rebut) the Examiner’s finding that
the size range for the features of Xu’s relief layer overlaps the claimed
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range. See Ans. 7. Therefore, we sustain the rejection of claim 7 as
anticipated by or obvious over Xu.
Ground 2: Rejection of claims 2, 3, and 5–7 as obvious over as
obvious over Shimojima in view of Xu
According to the Examiner, the combination of Shimojima and Xu
would have rendered obvious each limitation recited in claims 2, 3, and 5–7.
Final Act. 4–6.
Appellant’s arguments focus on limitations recited in independent
claim 2 and dependent claims 6 and 7. Appeal Br. 13–18; Reply Br. 7–10.
We select claim 2 as representative of the group. Claims 3 and 5 stand or
fall with claim 2. See 37 C.F.R. § 41.37(c)(1)(iv). We discuss claims 6 and
7 separately.
a. Claim 2
As discussed above, claim 2 is a product-by-process claim. Final Act.
4–5.
The Examiner finds Shimojima describes, inter alia, a
“nanocomposite film/layer of siliconoxide,” which is dried for a day and
“synthesized from a sol-gel mixture of tetramethoxysilane (TMOS) and
alkyltrimethoxysilanes (CTMS) that provides for Si-O-Si cross-linking.” Id.
at 5. The Examiner finds Shimojima’s siliconoxide film/layer is
substantially similar to the claimed relief layer, except that the film/layer
does not possess a pattern from a stamping template. Id. The Examiner,
however, determines that it would have been obvious to one of ordinary skill
in the art at the time of the invention to have applied Xu’s stamp and
template to make Shimojima’s film/layer because this would have provided
“a useful application for the same siliconoxide layer disclosed in both
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references comprising silicon atoms bound to 4 oxygen atoms and silicon
atoms bound to 3 oxygen atoms and one carbon atom.” Id. at 5–6.
Appellant argues that claim 2 recites structural limitations having
patentable weight, but the Examiner has ignored these features. Appeal Br.
15; Reply Br. 9. Appellant particularly argues that Shimojima’s discussion
of a TMOS/CnTMS ratio fails to render obvious the structural limitations
concerning the stamp used to obtain the dry formed siliconoxide layer.
Appeal Br. 16.
Appellant’s arguments are not persuasive to show reversible error. As
set forth in Ground 1 above, Appellant relies on product-by-process
limitations regarding the manufacture of the relief layer, which do not add a
patentable distinction when the claimed product is the same as Shimojima’s
modified product. See Thorpe, 777 F.2d at 697. Appellant merely asserts
without any evidence or persuasive argument that the claimed relief layer “is
different” from Shimojima’s siliconoxide modified film/layer. Reply Br. 10;
see Ans. 8; see also Best, 562 F.2d at 1256.
Appellant also argues that Xu does not cure the deficiencies of
Shimojima. Appeal Br. 16. Having found no deficiencies in Shimojima, we
sustain the rejection of claim 2 as obvious over Shimojima in view of Xu.
For the same reasons, we sustain the rejection of claims 3 and 5.
b. Claims 6 and 7
The Examiner’s findings and Appellant’s arguments in Ground 2
regarding Xu’s teachings are identical to those in our discussion of Ground 1
supra. We do not repeat them here.
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For the reasons provided above, relating to Ground 1, we do not find
Appellant’s arguments persuasive to show reversible error, and sustain the
rejection of claims 6 and 7 as obvious over Shimojima in view of Xu.
Ground 3: Rejection of claim 3 as obvious over Xu in view of
Shimojima
Appellant argues, inter alia, that claim 3 is in condition for allowance
because claim 3 recites additional patentable subject matter. Appeal Br. 19.
This argument of Appellant is not persuasive of reversible error.
More substantive arguments are required in an appeal brief to overcome a
rejection. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that
the Board reasonably interpreted 37 C.F.R. § 41.37 (c)(1)(vii) as requiring
“more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art”).
Appellant also argues that claim 3 is in condition for allowance by
virtue of its dependency on claim 2. Appeal Br. 19. Appellant merely
argues that neither Xu, nor Shimojima, teaches or suggests each feature
recited in claim 3. Reply Br. 10.
Having found no deficiencies in Xu in Ground 1 and Shimojima and
in Ground 2 above, we sustain the rejection of claim 3 as obvious over Xu in
view of Shimojima.
Ground 4: Rejection of claims 2, 3, and 5–7 as obvious over
Kurataka in view of Xu and/or Shimojima
According to the Examiner, the combination of Kurataka, Xu, and/or
Shimojima would have rendered obvious each limitation recited in claims 2,
3, and 5–7. Final Act. 7–10.
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Appellant’s arguments focus on limitations recited in independent
claim 2 and dependent claim 6. Appeal Br. 20–24; Reply Br. 11–13. We
select claim 2 as representative of the group. Claims 3, 5, and 7 stand or fall
with claim 2. See 37 C.F.R. § 41.37(c)(1)(iv). We discuss claim 6
separately.
a. Claim 2
As set forth in Ground 1 above, claim 2 is a product-by-process claim.
Final Act. 7.
The Examiner finds that Kurataka describes a method for dry forming
a silicone relief layer product using a stamp having a stamping surface,
which includes a template relief pattern. Id. at 7–8. The Examiner finds that
Kurataka describes, inter alia, a tetraethoxysilane (TEOS) or
tetramethoxysilane (TMOS) siliconoxide compound in which the silicon
atoms are chemically bound to four oxygen atoms, but the reference is silent
with respect to the silicon atoms being chemically bound to three oxygen
atoms and a carbon atom. Id. at 8–9. The Examiner determines that it
would have been obvious to one of ordinary skill in the art at the time of the
invention to have combined Kurataka’s siliconoxide to have both tri- and
tetra- oxygen atoms bonded to the silicon atoms as taught by Xu and/or
Shimojima. Id. at 9.
Appellant does not dispute the Examiner’s reasons for combining
Kurataka with Xu and/or Shimojima in Ground 4 to render claim 2 obvious.
See generally Appeal Br. 20–23; Reply Br. 11–13. Rather, Appellant argues
that the Examiner ignores the structural limitations recited in claim 2 having
patentable weight. Appeal Br. 22–23; Reply Br. 12. Appellant particularly
argues that Kurataka’s discussion of the imprinting surfaces of stampers fails
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to render obvious the structural limitations concerning the stamp used to
obtain the dry formed siliconoxide layer. Appeal Br. 23.
Appellant’s arguments are not persuasive to show reversible error. As
set forth in Ground 1, Appellant relies on product-by-process limitations
regarding the manufacture of the relief layer, which do not add a patentable
distinction when the claimed product is the same as Kurataka’s modified
product. See Thorpe, 777 F.2d at 697. Appellant merely asserts without any
evidence or persuasive argument that the claimed relief layer “is different”
from Kurataka’s modified siliconoxide compound. Reply Br. 13; see Ans.
10; see also Best, 562 F.2d at 1256.
Appellant also argues that Xu and Shimojima do not cure the
deficiencies of Kurataka. Appeal Br. 23. Having found no deficiencies in
Xu in Ground 1 or Shimojima in Ground 2 above, we sustain the rejection of
claim 2 as obvious over Kurataka in view of Xu and/or Shimojima. For the
same reasons, we sustain the rejection of claims 3, 5, and 7.
b. Claim 6
The Examiner finds Kurataka’s siliconoxide relief layer possesses a
shape conformed to a template relief surface. Final Act. 6.
Appellant argues that “Kurataka merely discusses []imprinting
surfaces of stampers but fails to discuss the feature ‘the relief layer has the
shape conformed to template relief surface’ recited in claim 6.” Appeal Br.
24.
Kurataka, however, explicitly describes that “the imprinting surface of
the stamper is removed from contact with the partially dried sol-gel layer,
leaving the sol-gel layer adhered to the substrate surface with the exposed
upper surface thereof comprising a faithfully replicated positive image of the
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patterned imprinting surface of the stamper.” Kurataka 9:24–30 (emphasis
added); see also Fritch, 972 F.2d at 1264. Appellant, therefore, has failed to
distinguish the shape of Kurataka’s stamped siliconoxide compound from
the “shape conformal to the corresponding complementary feature within a
template relief surface” recited in claim 6. Appeal Br. 32.
We sustain the rejection of claim 6 as obvious over Kurataka in view
of Xu and/or Shimojima.
Ground 5: Rejection of claims 2, 3, and 5–7 as obvious over Vink in
view of Xu and/or Shimojima
According to the Examiner, the combination of Vink, Xu, and/or
Shimojima would have rendered obvious each limitation recited in claims 2
3, and 5–7. Final Act. 10–13.
Appellant’s arguments focus on limitations recited in independent
claim 2 and dependent claim 6. Appeal Br. 25–30; Reply Br. 14–16. We
select claim 2 as representative of the group. Claims 3, 5, and 7 stand or fall
with claim 2. See 37 C.F.R. § 41.37(c)(1)(iv). We discuss claim 6
separately.
a. Claim 2
As set forth in Ground 1 above, claim 2 is a product-by-process claim.
Final Act. 11.
The Examiner finds that Vink describes a method for dry forming a
silicone relief layer product using a stamp having a stamping surface, which
includes a template relief pattern. Id. at 11. The Examiner finds that Vink
describes, inter alia, that “the siliconoxide compound consists of silicon
atoms being chemically bound to a carbon atom and three oxygen atoms,
namely methyl trimethoxy silane (MTSM).” Id. at 11–12. The Examiner
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determines that it would have been obvious to one of ordinary skill in the art
at the time of the invention to have combined Vink’s siliconoxide to have
both tri- and tetra- oxygen atoms bonded to the silicon atoms as taught by
Xu and/or Shimojima. Id. at 12.
Appellant does not dispute the Examiner’s reasons for combining
Vink with Xu and/or Shimojima in Ground 5 to render claim 2 obvious. See
generally Appeal Br. 25–29; Reply Br. 14–16. Rather, Appellant argues that
the Examiner ignores the structural limitations recited in claim 2 having
patentable weight. Appeal Br. 27; Reply Br. 15. Appellant specifically
argues that Vink’s discussion of a spinning or dip-coating process or a
screen-printing technique fail to render obvious the structural limitations
concerning the stamp, which is used to obtain the dry formed siliconoxide
layer. Appeal Br. 28–29.
Appellant’s arguments are not persuasive to show reversible error. As
set forth in Ground 1 supra, Appellant relies on product-by-process
limitations regarding the manufacture of the relief layer, which do not add a
patentable distinction when the claimed product is the same as Vink’s
modified product. See Thorpe, 777 F.2d at 697. Appellant merely asserts
without any evidence or persuasive argument that the claimed relief layer “is
different” from Vink’s modified siliconoxide compound. Reply Br. 16; see
Ans. 13; see also Best, 562 F.2d at 1256.
Appellant also argues that Xu and Shimojima do not cure the
deficiencies of Vink. Appeal Br. 29. Having found no deficiencies in Xu in
Ground 1 or Shimojima in Ground 2 supra, we sustain the rejection of claim
2 as obvious over Vink in view of Xu and/or Shimojima. For the same
reasons, we sustain the rejection of claims 3, 5, and 7.
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b. Claim 6
The Examiner finds Vink’s siliconoxide relief layer possesses a shape
conformed to a template relief surface. Final Act. 6.
Appellant argues that “Vink merely discusses a pattern of recesses
152 and protrusions 154 but fails to discuss the feature ‘the relief layer has
the shape conformed to template relief surface’ recited in claim 6.” Appeal
Br. 30.
Vink, however, explicitly discloses that “[w]hen the stamp is brought
into contact with the layer 131 (FIG. 1C), . . . the layer 131 of liquid
material is given an embossed pattern, which matches the pattern of
recesses 152 and protrusions 154 on the stamp 150.” Vink ¶ 54 (emphasis
added); see id. at Fig. 1D (depicting cured solid siliconoxide relief layer 130
having the same matched pattern as liquid layer 131); see also Fritch, 972
F.2d at 1264. Appellant, therefore, has failed to distinguish the shape of
Vink’s stamped siliconoxide compound from the “shape conformal to the
corresponding complementary feature within a template relief surface”
recited in claim 6. Appeal Br. 32.
We sustain the rejection of claim 6 as obvious over Vink in view of
Xu and/or Shimojima.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
2, 5–7 102(b) or
103(a)
Xu 2, 5–7
2, 3, 5–7 103(a) Shimojima, Xu 2, 3, 5–7
3 103(a) Xu, Shimojima 3
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2, 3, 5–7 103(a) Kurataka,
Shimojima, Xu
2, 3, 5–7
2, 3, 5–7 103(a) Vink,
Shimojima, Xu
2, 3, 5–7
Claims
Rejected
2, 3, 5–7
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