Ex Parte Williams et al

Board of Patent Appeals and Interferences

Jul 27, 2007

10790898 (B.P.A.I. Jul. 27, 2007)

The opinion in support of the decision being entered today is
not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TODD R. WILLIAMS and
OLESTER BENSON, JR
____________

Appeal 2007-1389
Application 10/790,898
Technology Center 1700
____________

Decided: July 27, 2007
____________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and LINDA M.
GAUDETTE, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-26. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

Appeal 2007-1389
Application 10/790,898

I. BACKGROUND
The invention relates to a composite article including a layer of
radiation cured polymer on a metal foil backing. The exposed surface of the
radiation cured layer has a three-dimensional microstructure. The composite
article has large scale dimensional stability. Claim 1 is illustrative of the
subject matter on appeal:
1. A composite article having large scale predictable
dimensional stability comprising:

a. a metal foil backing having a back surface and an
opposite front surface; and

b. a layer of a radiation cured polymer having an exposed
front surface bearing a three-dimensional microstructure of
precisely shaped and located functional discontinuities
including distal surface portions and adjacent depressed surface
portions and an opposite surface in adherent contact with the
front surface of said backing.

The Examiner relies on the following prior art reference to show
unpatentability:
Lu US 5,468,540 Nov. 21, 1995
The rejections as presented by the Examiner are as follows:
1. Claims 1-11 and 13-22 are rejected under 35 U.S.C. § 102(b) as
anticipated by Lu; and
2. Claims 12 and 23-26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lu.
In reviewing the rejections, we consider the dispositive issues arising
from the contentions in the Brief filed August 31, 2006, the Answer filed
October 5, 2006, and the Reply Brief filed December 5, 2006.
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II. DISCUSSION
A. Issue
The dispositive issue arising from the contentions of the Examiner and
Appellants is whether Lu describes a composite article having “large scale
predictable dimensional stability” as claimed (see Claims 1 and 11).
B. Facts
1. The clause “large scale predictable dimensional stability” is
recited in the preamble of claims 1 and 11, the independent
claims.
2. The clause “large scale predictable dimensional stability” is
defined in the Specification as referring to “the ability of a
segment of shaped sheet-like substrate to retain substantially its
predicted dimensions after being subjected to a heated
environment of 150°C or less for 60 minutes or less and then
returned to ambient temperature.” (Specification 8:1-4).
3. The “predicted dimensions” are dimensions resulting from
known or predictable shrinkage or expansion that takes place
during curing of the radiation curable composition
(Specification 12:24 to 13:17). The term “predictable”
dimensional stability is intended to take into account such
shrinkage or expansion because the master used to impart the
microstructure on the surface of the curable layer is easily made
oversized to produce predictable dimensions in the cast
polymer after curing (Specification 13:7-15).
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Application 10/790,898

4. The Specification does not particularly limit the identity of the
curable composition beyond disclosing that it must be capable
of being radiation cured (Specification 12:12-23).
5. The “large scale dimensional stability” of the composite article
is a property of the article.
6. Lu describes a composite article (base sheet 11 as shown in
Figure 1) including an array 14 and a reflective layer 17 (Lu,
col. 3, ll. 59-64).
7. Array 14 is formed from a radiation curable oligomeric
composition (Lu, col. 2, l. 64 to col. 3, l. 12 (curable
composition spread between a substrate film and the master);
col. 8, ll. 35-48)). The compositions suggested as useful are the
same or similar to those disclosed in Appellants’ Specification
and include, for instance, urethane-based oligomers and
acrylates (Compare Lu, col. 8, ll. 45-46 and col. 9, ll. 12-18
with Specification 12:17-23).
8. Lu does not expressly state that the composite has “large scale
predictable dimensional stability.”
C. Principles of Law
“[A] prior art reference without express reference to a claim limitation
may nonetheless anticipate by inherency.” In re Omeprazole Patent
Litigation, 483 F.3d 1364, 1373, 82 USPQ2d 1643, 1650 (Fed. Cir. 2007).
When a claimed product appears to be substantially identical to a product
disclosed by the prior art, the burden is on the Applicants to prove that the
product of the prior art does not necessarily or inherently possess
characteristics or properties attributed to the claimed product. In re Spada,
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Application 10/790,898

911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); In re Best,
562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
D. Analysis
As a first matter, we agree with Appellants that all the claims are
limited to composite articles having “large scale predictable dimensional
stability” as that phrase further limits a property of the article, i.e., gives life
and meaning to the claim, rather than merely defining an intended use or an
inherent property of the structure recited in the body of the claim. See
Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 480-81 (CCPA 1951) (A
preamble reciting "An abrasive article" was deemed essential to point out the
invention defined by claims to an article comprising abrasive grains because
“abrasive” further limited the structure of the article).
As a second matter, we agree with Appellants that “large scale
predictable dimensional stability” has been given a special meaning in the
Specification and that meaning governs when interpreting the claims. See
Phillips v. AWH Corp., 415 F.3d 1303, 1315-16, 675 USPQ2d 1321, 1329
(Fed. Cir. 2005) (“[T]he specification may reveal a special definition given
to a claim term by the patentee that differs from the meaning it would
otherwise possess. In such cases, the inventor's lexicography governs.”). As
claimed, the composite article must have at least a segment that retains
substantially its predicted dimensions after heating as required by
Appellants’ definition (FF 2; see also FF 3).
Lu discloses a composite article (FF 6). However, while Lu does not
expressly disclose that the claimed property is present in Lu’s described
composite article, the Examiner points out that the radiation curable
composition of Lu is a curable oligomeric composition, the same type of
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composition disclosed as useful by Appellants. Appellants argue that the
Examiner has not supported a finding that “such a broad class of materials
all have this property,” i.e., the claimed stability property (Reply Br. 4). But
nor does the Specification provide any evidence that the broad class does not
have the claimed property. Appellants’ Specification, in fact, does not
particularly limit the identity of the radiation curable composition (FF 4) and
the radiation curable compositions disclosed by Lu are the same or similar to
those exemplified in the Specification (FF 7). Therefore, there is a
reasonable basis to conclude the claimed property is inherently present in
Lu’s composite such that the burden is shifted to Appellants to show that the
property is, in fact, not present. Spada, 911 F.2d at 708, 15 USPQ2d at
1657; Best, 562 F.2d at 1255, 195 USPQ at 433. Appellants provide no
objective evidence showing, in fact, the composite of Lu does not have the
claimed property.
III. CONCLUSION
We conclude that the Examiner reasonably supported the finding that
Lu describes a composite article having “large scale predictable dimensional
stability” as claimed. Therefore, we find a preponderance of the evidence
supports the Examiner’s finding of anticipation.
With respect to the rejection of dependent claims 12 and 23-26 under
35 U.S.C. § 103(a) as unpatentable over Lu, Appellants advance no
additional arguments. Therefore, we sustain the rejection of 12 and 23-26
for the reasons presented above.

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Appeal 2007-1389
Application 10/790,898

IV. DECISION
The decision of the Examiner rejecting claims 1-11 and 13-22 under
35 U.S.C. § 102(b) and claims 12 and 23-26 under 35 U.S.C. § 103(a) is
affirmed.
V. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

TLC/ls/cam

3M INNOVATIVE PROPERTIES COMPANY
P.O. BOX 33427
ST. PAUL, MN 55133-3427

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