Ex Parte PanishDownload PDFPatent Trial and Appeal BoardMar 16, 201713150356 (P.T.A.B. Mar. 16, 2017) Copy Citation 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. 13/150,356 06/01/2011 Joseph M. Panish R00268NP 2834 129668 7590 Invoke / Oracle c/o CPA Global 900 Second Avenue South, Suite 600 Minneapolis, MN 55402 EXAMINER SANDERS, JAMES M ART UNIT PAPER NUMBER 1743 NOTIFICATION DATE DELIVERY MODE 03/20/2017 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): docketing @ InvokeIP.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSEPH M. PANISH Appeal 2016-003157 Application 13/150,356 Technology Center 1700 Before KAREN M. HASTINGS, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Examiner’s decision finally rejecting claims 1—11 and 21—29 under 35 U.S.C. § 103(a). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 The real party in interest is stated to be Oracle International Corp. (Appeal Br. 2). Appeal 2016-003157 Application 13/150,356 Claim 1 is illustrative of the appealed subject matter (emphasis added to highlight key disputed limitations): 1. A system for embossing a pattern on a storage tape, the system comprising: a storage tape component having a curable layer; an ultraviolet light source; an embossing drum having an exterior drum section and an interior cavity, the ultraviolet light source being positioned within the interior cavity, the exterior drum section being transmissive to ultraviolet light, the exterior section having an outer surface that contacts the curable layer, the outer surface having a first pattern that is complementary to a second pattern to be formed on the storage tape component, the exterior drum section rotatable about a center such that the storage tape component moves in concert with the exterior drum section while the curable layer is cured by ultraviolet radiation emanating from the ultraviolet light source and passing through the exterior drum section; and a dispenser that applies a curable liquid composition onto the storage tape component to form the curable layer thereon, the dispenser positioned before the embossing drum such that the storage tape component proceeds to the embossing drum after formation of the curable layer, the curable liquid composition being polymerizable and including a free radical photoinitiator and at least one polymerizable monomer, oligomer, or combinations thereof (Claims App. 1). 2 Appeal 2016-003157 Application 13/150,356 REFERENCES AND REJECTIONS ON APPEAL The Examiner maintains, and Appellant appeals, the following rejections under 35 U.S.C. § 103(a): (a) Claims 1, 3—10, 21—26, 28, and 29 are rejected as unpatentable over Slafer et al. (US 2007/0222096 Al, published Sept. 27, 2007) (hereinafter “Slafer ’096”); (b) Claims 2 and 11 are rejected as unpatentable over Slafer ’096 in view of Slafer et al. (US 2006/0283539 Al, published Dec. 21, 2006) (hereinafter “Slafer ’539”); and (c) Claim 27 is rejected as unpatentable over Slafer ’096 in view of Raniuk et al. (US 2007/0206477 Al, published Sept. 6, 2007) (hereinafter “Raniuk”). Appellant’s arguments urging reversal of the rejections of claims 2—11 and 21—29 focus on limitations common to independent claim 1 (Appeal Br. 3—6; Reply Br. 1—2).2 In the absence of arguments specific to their patentability, dependent claims 2—11 and 21—29 stand or fall with claim 1. 37 C.F.R. §41.37(c)(l)(iv). ANALYSIS Considering all of the evidence on the record and each contention in the Brief and Reply Brief of Appellant, we find that a preponderance of the evidence supports the Examiner’s determination that the claimed subject 2 Appellant argues that “Slafer ’096 does not disclose a dispenser that applies polymerizable curable liquid composition as called for by claim 27.” Appeal Br. 3. Dependent claim 27, however, is not separately argued because the claim limitation at issue is recited in independent claim 1. 3 Appeal 2016-003157 Application 13/150,356 matter of representative claim 1 is unpatentable within the meaning of § 103. Accordingly, we will sustain the Examiner’s rejections for essentially those reasons expressed in the Answer, including the Examiner’s Response to Argument section, and we add the following primarily for emphasis. “It is well settled that a prior art reference is relevant for all that it teaches to those of ordinary skill in the art.” In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992). “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Appellant’s main arguments focus on the Examiner’s alleged failure to demonstrate that Slafer ’096 suggests the limitations requiring that the dispenser: (i) is “positioned before the embossing drum” and (ii) dispenses a “curable liquid composition being polymerizable” (Appeal Br. 3—6; Reply Br. 1—2). Specifically, Appellant argues that “Slafer ’096 discloses a system that includes a dispenser holding a softening agent” and “it is clear that Slafer ’ 096 does not disclose a system for polymerizing a layer onto a storage tape” (Appeal Br. 3 (citing Slafer ’096 148); Appeal Br. 4). Appellant further argues that in the event that Slafer ’096’s dispenser actually dispensed a polymerizable composition, “additional baffling would have to be added so that the polymerizable compounds do not pre-react” (Appeal Br. 5). According to Appellant, because “Slafer ’096 does not address this feature^]... it does not disclose a dispenser for applying a curable composition as called for by claim 1” (id.). We disagree for reasons well stated by the Examiner (Ans. 9—12). As aptly pointed out by the Examiner, Slater ’096’s dispenser is capable of applying a polymerizable curable composition. Slafer ’096 explicitly teaches the softening 4 Appeal 2016-003157 Application 13/150,356 chemical can be replaced with a liquid polymeric material that can be hardened by radiation, such as is known to the art, where the radiation source is of an appropriate wavelength (e.g., ultraviolet) to cause the polymer to become solid prior to separation from the drum .... From this teaching, one of ordinary skill would readily understand that Slafer ’096 does disclose a dispenser that is capable of applying a polymerizable curable composition. (Ans. 10 (citing Slafer ’096 150)). Thus, Appellant’s arguments do not identify reversible error in the Examiner’s finding that Slafer ’096 teaches a dispenser of liquid polymeric material which is curable by ultraviolet radiation. SeeFritch, 972 F.2d at 1264. Appellant argues that the Examiner’s proposed modification of Slafer ’096’s apparatus cannot be a mere arrangement of elements because moving the dispenser’s position to before the embossing drum would require a modification of the apparatus’ operation (Reply Br. 2). Specifically, Appellant argues that because “Slafer [ ’096] does not disclose a dispenser that applies a polymerizable composition”, such dispenser repositioning amounts to “a modification of operation since a polymerizable composition is being applied and not a softening agent” (id.). These arguments are not persuasive of error in the Examiner’s rejections. As set forth above, Slafer ’096 explicitly teaches a dispenser of liquid polymeric material. The relocation of an element from the position disclosed in the prior art is not inventive if the device’s operation is not modified. In reJapikse, 181 F.2d 1019, 1023 (CCPA 1950). We have no doubt that such dispenser repositioning would have been within the level of 5 Appeal 2016-003157 Application 13/150,356 ordinary creativity in the art3 based on the applied prior art of Slafer ’096. See Perfect Web Techs., Inc. v. Info USA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (“We therefore hold that while an analysis of obviousness always depends on evidence that supports the required Graham factual findings, it also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.”). Thus, we affirm the rejections of claims 1—11 and 21—29. DECISION The appealed rejections are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 3 Furthermore, we conclude that the incorporation of “[additional baffling” to prevent premature polymerization would have been within the level of ordinary creativity in the art. See Appeal Br. 5. 6 Copy with citationCopy as parenthetical citation