Ex Parte Panish

Patent Trial and Appeal Board

Mar 16, 2017

13150356 (P.T.A.B. Mar. 16, 2017)

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