Ex Parte KleyDownload PDFPatent Trial and Appeal BoardFeb 11, 201312214573 (P.T.A.B. Feb. 11, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte VICTOR B. KLEY ____________________ Appeal 2013-003195 Application 12/214,573 Technology Center 2800 ____________________ Before ROBERT E. NAPPI, DEBRA K. STEPHENS, and LYNNE E. PETTIGREW, Administrative Patent Judges. Per curiam. DECISION ON APPEAL Appeal 2013-003195 Application 12/214,573 2 Appellant appeals under 35 U.S.C. § 134(a) (2002) from a final rejection of claims 91-103. We have jurisdiction under 35 U.S.C. § 6(b). Claims 1-90 have been cancelled. We AFFIRM. Introduction According to Appellant, the invention relates to a scanning probe microscopy (SPM) inspection and/or modification system that uses SPM technology and techniques including microstructured SPM probes for inspection and/or modification of an object. (Abstract). STATEMENT OF THE CASE Exemplary Claim Claim 91 is an exemplary claim and is reproduced below: 91. A method comprising: modifying an object by use of an energy source directed to and interacting with material placed on the object by a scanning probe microscope (SPM) other than a scanning tunneling microscope. References Ichikawa US 5,416,331 May 16, 1995 Colbert US 2002/0084410 A1 Jul. 4, 2002 Appeal 2013-003195 Application 12/214,573 3 Rejections Claims 91- 103 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Ichikawa and Colbert. We have only considered those arguments that Appellant actually raised in the Briefs. Arguments Appellant could have made but chose not to make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii)(2011). ISSUE 1 35 U.S.C. § 103(a): claims 93, 95, and 101 Appellant indicates claim 93, 95, and 101 are cancelled in the Appeal Brief (App. Br. iii, ¶4) Status of Amendments). However, no amendment which cancels these claims has been properly submitted by Appellant and entered by the Examiner. Therefore, the rejection of these claims is before us and we pro forma affirm the rejection of claim 93, 95, and 101 under 35 U.S.C. § 103(a) as being unpatentable over Ichikawa and Colbert. ISSUE 2 35 U.S.C. § 103(a): claims 91, 92, 94, 96-100, 102, and 103 Appellant asserts their invention is not obvious over Ichikawa and Colbert because Colbert is not prior art (App. Br. vi; Reply Br. 2-3). Appellant further argues the claimed invention is not obvious over Ichikawa alone (Reply. Br. 3-4). Specifically, Appellant contends neither Ichikawa nor Colbert teaches or suggests the invention recited in claim 91. Appeal 2013-003195 Application 12/214,573 4 Issue: Has the Examiner erred in finding the combination of Ichikawa and Colbert or alternatively, Ichikawa teaches or suggests the invention as recited in claim 91? ANALYSIS We agree with the Examiner’s findings and conclusions and adopt them as our own. Appellant has not provided sufficient evidence or argument to persuade us the invention is not obvious over Ichikawa and Colbert and Ichikawa alone. Accordingly, the Examiner did not err in finding the combination of Ichikawa and Colbert or alternatively, Ichikawa teaches or suggests the invention as recited in independent claim 91. Independent claims 94, 96, 99, and 100 were argued based on the same arguments set forth for claim 91 and thus, for the reasons set forth below we are not persuaded the Examiner erred. Dependent claims 92, 97, 98, 102, and 103 were not separately argued and therefore, fall with their respective independent claims. Therefore, the Examiner did not err in rejecting claims 91, 92, 94, 96-100, 102, and 103 under 35 U.S.C. § 103(a) for obviousness. DECISION The Examiner’s rejection of claims 91-103 under 35 U.S.C. § 103(a) is affirmed. No time period for taking any subsequent action in connection with Appeal 2013-003195 Application 12/214,573 5 this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011). AFFIRMED tj Copy with citationCopy as parenthetical citation