2021000908 (P.T.A.B. Jun. 1, 2021)

Lantos Technologies Inc.

Patent Trials and Appeals BoardJun 1, 2021

2021000908 (P.T.A.B. Jun. 1, 2021)

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. 15/845,172 12/18/2017 Robert J. Fei LANT-0401-U01 4703 87084 7590 06/01/2021 GTC Law Group PC & Affiliates One University Ave., Ste. 302B Westwood, MA 02090 EXAMINER AMEEN, MOHAMMAD M ART UNIT PAPER NUMBER 1742 NOTIFICATION DATE DELIVERY MODE 06/01/2021 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): uspatents@gtclawgroup.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT J. FEI, MICHAEL L. RISHTON, JONATHAN AGUILAR, and LYDIA GREGORET Appeal 2021–000908 Application 15/845,172 Technology Center 1700 Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and JEFFREY R. SNAY, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–3 and 22–28. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Lantos Technologies, Inc. Appeal Br. 3. Appeal 2021-000908 Application 15/845,172 2 CLAIMED SUBJECT MATTER Claim 1 is illustrative of Appellant’s subject matter on appeal and is set forth below: 1. A method comprising: applying a transferrable material to an outer surface of a casting plate to form a pattern on the outer surface of the casting plate; applying, after applying the transferrable material, a composite material to the outer surface of the casting plate to form an inflatable membrane, the composite material covering at least a portion of the pattern and comprising a fluorescent material and a pigment material; and curing the inflatable membrane to allow removal of the inflatable membrane from the casting plate, the inflatable membrane comprising an inner surface having the pattern detectable upon receiving of light causing the fluorescent material to emit fluorescent light. Appeal Br. 14 (Claims App.). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Muchi US 5,829,350 Nov. 3, 1998 Hart US 2013/0002824 A1 Jan. 3, 2013 Forsyth US 2014/0272221 A1 Sept. 18, 2014 REJECTION Claims 1–3 and 22–28 are rejected under 35 U.S.C. § 103 as being obvious over Hart in view of Forsyth and Muchi. Appeal 2021-000908 Application 15/845,172 3 OPINION We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). After considering the evidence presented in this Appeal (including the Examiner’s Answer, the Appeal Brief, and the Reply Brief), we are persuaded that Appellant identifies reversible error essentially for the reasons Appellant presents. Thus, we reverse the Examiner’s rejection with the following emphasis. We refer to the Examiner’s statement of the rejection set forth on pages 3–7 of the Non-final Office Action mailed December 31, 2019. Therein, the Examiner recognizes that Hart in view of Forsyth fails to teach a method of forming a patterned inflatable membrane (the pattern being on the inner surface of the inflatable membrane). Non-final Act. 5. The Examiner relies upon Muchi for assertedly providing this teaching. Id. However, Appellant states, inter alia, that claim 1 requires a method step wherein a pattern is formed on the inner surface of the inflatable membrane. Appellant argues that the applied art does not suggest this limitation. Appeal Br. 9. More specifically, on page 10 of the Appeal Brief, Appellant submits that the combination of Hart and Forsyth would produce a pattern within the membrane and not on an inner surface of the membrane as claimed. We agree for the reasons provided by Appellant therein. Appellant then submits that Muchi does not remedy this deficiency of Hart in view of Forsyth. Appeal 2021-000908 Application 15/845,172 4 Appeal Br. 10–13. Appellant specifically states that even if one assumes that Muchi’s “holding cylinder could be inserted into an object comprising an inflatable membrane and a pattern bearing transfer pad inflated to deposit a pattern on the inner surface of the inflatable membrane, the steps contemplated and described when so doing are not the steps that are claimed nor do they ameliorate the deficiencies of the Hart-Forsyth combination.” Appeal Br. 12. The Examiner’s stated response does not adequately resolve the issues raised by Appellant (Ans. 6–9) for the reasons presented by Appellant on pages 1–4 of the Reply Brief. We thus reverse the rejection. CONCLUSION We reverse the Examiner’s decision. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 22–28 103 Hart, Forsyth and Muchi 1–3, 22–28 REVERSED