Louis M. Spoto et al.

Patent Trials and Appeals Board

Mar 10, 2020

14157500 - (D) (P.T.A.B. Mar. 10, 2020)

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.
14/157,500 01/16/2014 Louis M. Spoto 21899-A
(35371-76460DIV)
1044
44986 7590 03/10/2020
Levenfeld Pearlstein, LLC (ILLINOIS TOOL WORKS)
2 North LaSalle Street
Suite 1300
Chicago, IL 60602
EXAMINER
OLAMIT, JUSTIN N
ART UNIT PAPER NUMBER
2854
NOTIFICATION DATE DELIVERY MODE
03/10/2020 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):
ipdocket@lplegal.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LOUIS M. SPOTO, DEAN J. RANDAZZO, and
MATTHEW J. DESCHNER
____________

Appeal 2018-007891
Application 14/157,500
Technology Center 2800
____________

Before ST. JOHN COURTENAY III, KEVIN F. TURNER, and
MATTHEW J. McNEILL, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final rejection of
claims 1, 4–6, and 20, and 21. Claims 2, 3, 7–19, and 22–24 are canceled.
We have jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). According to Appellant, the real party in interest is
Illinois Tool Works Inc. See Appeal Br. 3.

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STATEMENT OF THE CASE 2
Introduction
Appellant’s claimed invention is “directed to an embossing shim and a
method of producing embossing shims.” Spec. ¶ 2.
Representative Independent Claim 1
1. A method of making an enhanced optical
interference pattern for an embossing shim, the method
comprising:

directing three light beams from a coherent light source
onto a photodefinable surface in a single exposure, each light
beam emitted from a location corresponding to a respective
vertex of a triangle, the locations positioned relative to one
another such that a phase angle of one light beam is different
than a phase angle of the other light beams and each light beam
interferes with each of the other light beams to form an optical
interference pattern that produces asymmetrical visual effects,
each of the light beams directed onto the photodefinable surface
from one side of the photodefinable surface to interfere with
each of the other light beams to form the optical interference
pattern;

mapping the optical interference pattern onto an entirety
of the photodefinable surface by interference of the three beams
in the single exposure, wherein the optical interference pattern
is a diffraction cross-grating across the entirety of the
photodefinable surface produced by the single exposure to the
three beams; and

producing the embossing shim from the photodefinable
surface.

2 We herein refer to the Final Office Action, mailed Sept. 26, 2017 (“Final
Act.”); Appeal Brief, filed Apr. 5, 2018 (“Appeal Br.”); the Examiner’s
Answer, mailed May 31, 2018 (“Ans.”), and the Reply Brief, filed July 31,
2018 (“Reply Br.”).
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Appeal Br. 14, “CLAIMS APPENDIX.” (Emphasis added regarding the
disputed dispositive limitation under 35 U.S.C. § 103(a)).

Rejection
Claims 1, 4–6, 20, and 21 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being obvious over the combined teachings and suggestions of
Cowan, James J., “The Recording and Large Scale Replication of Crossed
Holographic Grating Arrays using Multiple Beam Interferometry,” (“Cowan
#1”) in view of Cowan et al. (US 6,608,722, B2, issued Aug. 19, 2003)
(“Cowan #2”). See Final Act. 3.
Principal Issue on Appeal
Issue: Is the disputed limitation (“each light beam interferes with
each of the other light beams to form an optical interference pattern that
produces asymmetrical visual effects”) taught or suggested by the cited
combination of Cowan #1 and Cowan #2, within the meaning of
independent claim l, as rejected by the Examiner?3 (Emphasis added).
ANALYSIS
Rejection of Independent Claim 1 under 35 U.S.C. § 103(a)
Appellant contends:
Even if the saw tooth structure in Cowan #2 could be
considered sufficient for producing asymmetrical visual effects,
in combination with the photoresist layer, Cowan #2 still fails
to disclose the features recited in claim 1. For example, in
claim 1, the asymmetrical visual effects are produced by an

3 We give the contested claim limitations the broadest reasonable
interpretation (BRI) consistent with the Specification. See In re Morris, 127
F.3d 1048, 1054 (Fed. Cir. 1997).
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optical interference pattern. That is, the asymmetrical visual
effects are attributed to the optical interference pattern formed.
(Emphasis added).
Appeal Br. 8 (emphasis added).
Appellant additionally contends that the Examiner failed to provide an
articulated reasoning having a rational underpinning to support the
obviousness rejection. In support, Appellant urges:
Cowan #1 is not concerned with diffusers, the
manufacture of diffusers, or the efficiency of diffusers ….
Accordingly, the disclosure of Cowan #1 relates to the
formation of such a pattern using a single, three-beam exposure.
Cowan #1 does not disclose a diffuser, and thus, does not
disclose a diffuser which may be modified to have improved
efficiencies based on the disclosure of Cowan #2, as proposed
by the Examiner. (Emphasis added).
Appeal Br. 11 (emphasis added).
Claim Construction
As an initial matter of claim construction, we turn to the Specification
for context, and find no explicit definition for the recited claim 1 term
“asymmetrical visual effects.” Instead, we find only a description of a non-
limiting, exemplary embodiment:
For example, the phase angle of the beams may be changed to
achieve different diffraction patterns. Also the phase angle can
be changed between two of the three beams to achieve
asymmetrical visual effects.
Spec. ¶ 31 (emphasis added).
We do not find the Specification describes any specific structural
differences imparted by the formed “optical interference pattern” as a result
of “directing three light beams from a coherent light source onto a
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photodefinable surface in a single exposure . . . .” Claim 1; see also Spec.
¶ 31. Although the exposed “photodefinable surface” is positively recited as
being used to produce “the embossing shim from the photodefinable
surface” (claim 1, last step), no details are provided in claim 1 that explain
exactly how this is done.
Dependent claims 4 and 6 further inform our analysis: “the
photodefinable surface is a photoresist surface” (claim 4), and, “the
photodefinable surface is electroplated to form a metal master shim” (claim
6). Under the doctrine of claim differentiation, there is a legal presumption
that these additional limitations are not present in claim 1, from which
claims 4 and 6 directly depend. 4
As an additional matter of claim construction, we conclude the
claim 1 language “each light beam interferes with each of the other light
beams to form an optical interference pattern that produces asymmetrical
visual effects” is a statement of intended use or purpose. (Emphasis added).
Our reviewing court provides applicable guidance: “An intended use or
purpose usually will not limit the scope of the claim because such statements
usually do no more than define a context in which the invention operates.”
Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d
1339, 1345 (Fed. Cir. 2003). Although “[s]uch statements often . . . appear

4 See Phillips v. AWH Corp., 415 F.3d 1303, 1314–15 (Fed. Cir. 2005) (en
banc) (“Differences among claims can also be a useful guide in
understanding the meaning of particular claim terms. For example, the
presence of a dependent claim that adds a particular limitation gives rise to a
presumption that the limitation in question is not present in the independent
claim.”) (Citations omitted); see also Uniroyal, Inc. v. Rudkin-Wiley Corp.,
837 F.2d 1044, 1054–55 (Fed. Cir. 1988).

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in the claim’s preamble,” In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a
statement of intended use or purpose can appear elsewhere in a claim. Id.
Although the recited “method of making an enhanced optical
interference pattern for an embossing shim” (preamble claim 1) was not
drafted in literal product-by-process dependent claim form (e.g., as “a
product made by the process of claim 1”), we note the last recited step of
claim 1 recites language that essentially realizes a similar result: “producing
the embossing shim from the photodefinable surface” (that was exposed
according to the method of claim 1). (emphasis added).
Thus, the “embossing shim” (product) that is produced by the steps of
method claim 1 is a product that is defined by the process steps by which it
is made, in a manner analogous to a product-by-process claim.5 See e.g.,
Spec. Fig. 4 and ¶ 31.6 In this regard, we find the Cowan #1 description of

5 Cf. MPEP § 2113(I): “[E]ven though product-by-process claims are
limited by and defined by the process, determination of patentability is based
on the product itself.” “The patentability of a product does not depend on its
method of production . . . If the product in the product-by-process claim is
the same as or obvious from a product of the prior art, the claim is
unpatentable even though the prior product was made by a different
process.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985)) (citations
omitted). Accord Amgen Inc. v. F. Hoffman-La Roche Ltd, 580 F.3d 1340,
1369 (Fed. Cir. 2009) (en banc) (“In determining validity of a product-by-
process claim, the focus is on the product and not on the process of making
it.” (Citing Atl. Thermoplastics Co. v. Faytex Corp., 970 F.2d 834, 841
(Fed. Cir. 1992).)

6 Paragraph 31 describes a “first embodiment [that is] shown in FIG. 4
[which] manipulates three beams, 432, 434, 436 in such a way as to create
three (3) large, relatively low energy spots on a large glass plate 38 which is
covered with a thin photosensitive emulsion (“photoresist”). The three
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“[a] nickel master [that] is made from the original photoresist by
electroplating [that is] used to repeatedly emboss the pattern into long plastic
sheets” teaches or suggests the claimed “embossing shim” product that is
made by the method of claim 1. Cowan #1, Abstract.
In reviewing the record, we note the Examiner found that Cowan #1
does not expressly teach “an optical interference pattern that produces
asymmetrical visual effects.” Final Act. 4. To remedy this deficiency, the
Examiner relies upon Cowan #2 (Figure 2D and col. 6, ll. 27–45) which
depicts and describes a modified sawtooth structure with holographically-
produced parabolic surface patterns. See Final Act. 4.
The Examiner notes the lack of an explicit definition in the
Specification for the claim term “asymmetrical visual effects.” See Ans. 2‒
3. We emphasize that because “applicants may amend claims to narrow
their scope, a broad construction during prosecution creates no unfairness to
the applicant or patentee.” In re ICON Health and Fitness, Inc., 496 F.3d
1374, 1379 (Fed. Cir. 2007) (citation omitted).
The Examiner thus relies upon Cowan #2’s unevenly-shaped blazed
diffuser structure (Figure 2D), that has both the sawtooth shape and the
additional hexagonal (honeycomb) patterns, to teach or suggest the
“asymmetrical visual effects” when light is reflected therefrom. See Final
Act. 4.
Upon a close reading of the cited references, we find a preponderance
of the evidence supports the Examiner underlying factual findings and

beams 432, 434, 436 interfere with one another, depending on the angles of
incidence, to form a different diffraction grating pattern 430 on the
photosensitive emulsion of the plate 438.” (Emphasis added).
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ultimate legal conclusion of obviousness. We note the “asymmetrical visual
effects” are formed by “an optical interference pattern,” as recited in
claim 1.
Moreover, we find Cowan #2 creates one or more reflected
“asymmetrical visual effects” using a diffuser in a manner at least suggestive
of the other steps of Appellant’s claimed method:
A second step, which adds the diffusion, or second component,
may be added, for example in the following way. After
appropriately coating the periodic sawtooth structure with a
40 photoresist layer, the diffusing structure may be created by
exposure to appropriate optical patterns and suitable processing
of the photoresist thereafter. These optical patterns
may be generated as an interference pattern of a number of
coherent beams (the sine wave for example), the three-beam
45 honeycomb pattern as described above, or as a result of
scanning the photoresist surface with a focused intensity
modulated light beam (as with a laser).

Cowan #2, col. 6, ll. 36–47.

At a minimum, we find Cowan #2 teaches or at least suggests the
claimed “asymmetrical visual effects” recited in claim 1, particularly given
the breadth of the claim term, which we conclude encompasses any visual
effect that is asymmetrical. Buttressing the Examiner’s findings, see also
Cowan #2, at col. 11, ll. 4–8: “in some applications it may be desirable to
achieve non-uniform scattering. One can modify the processes to create
blazed diffusers that have a wide range of scattering properties.”
Given this evidence, we find non-uniform scattering (id.) teaches or
suggests the “asymmetrical visual effects” recited in claim 1. The
asymmetrical visual effects produced by the diffuser in Cowan #2 result
from both the specific structure of the blazed diffuser, which can have varied
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visual appearances when viewed microscopically from different angles, as
well as from various designed light scattering properties.7

Combinability of Cowan #1 and Cowan #2
Appellant further contends the cited references have been improperly
combined by the Examiner:
the Examiner takes the position that “[i]t would have been
obvious for one having ordinary skill in the art at the time the
invention was made to modify the method of Cowan # 1 by
creating the asymmetrical sawtooth pattern as taught by Cowan
#2 in order to create a holographic blazed diffuser that has
improved efficiencies compared to prior art diffusers.” See,
Final Official Action, page 4. However, the Examiner’s
rationale is insufficient to explain how or why an ordinarily
skilled artisan would have sought to modify Cowan #1 to create
a diffuser or how or why an ordinarily skilled artisan would
have fanned a optical pattern generated as an interference
pattern directly in the periodic sawtooth structure of Cowan #2,
as opposed to the second structure 5. As such, the Examiner
has failed to provide the articulated reasoning with some
rational underpinning required to support a prima facie case of
obviousness.
Reply Br. 6.
We note our reviewing court guides that obviousness does not depend
on “whether the features of a secondary reference may be bodily

7 Our reviewing court emphasizes that “the question under 35 USC 103 is
not merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was
made.” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir.
1989) (emphasis added) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA
1976)); see also MPEP § 2123.

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incorporated into the structure of the primary reference.” In re Keller, 642
F.2d 413, 425 (CCPA 1981). Moreover, for a prima facie case of
obviousness, the reference need not recognize the same problem solved by
the Appellant (In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996)), because
“neither the particular motivation nor the avowed purpose” of the
[Appellant] controls” in an obviousness analysis. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 419 (2007).
Here, the Examiner only relies upon Cowin #2 for a teaching or
suggestion of the claimed “asymmetrical visual effects.” See Final Act. 4.
Moreover, Appellant provides no persuasive evidence that combining the
teachings of Cowan #1 with the diffused non-uniform scattering of light
taught by Cowan #2 (i.e., “asymmetrical visual effects”) would have realized
more than a predictable result.
“[W]hen a patent ‘simply arranges old elements with each performing
the same function it had been known to perform’ and yields no more than
one would expect from such an arrangement, the combination is obvious.”
KSR, 550 U.S. at 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282
(1976)).
Hindsight
Appellant additionally contends the Examiner has engaged in
impermissible hindsight reasoning. Reply Br. 11.
Although we are fully aware that hindsight bias often plagues
determinations of obviousness, Graham v. John Deere Co. of Kansas City,
(383 U.S. 1, 36 (1966)), we are also mindful that the Supreme Court has
clearly stated that the “combination of familiar elements according to known
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methods is likely to be obvious when it does no more than yield predictable
results.” KSR, 550 U.S. at 401 (citation omitted).
Here, Appellant has not identified knowledge gleaned only from the
present application that was not within the level of ordinary skill at the time
the claimed invention was made. See In re McLaughlin, 443 F.2d 1392
(CCPA 1971). Moreover, Appellant has not provided any objective
evidence of secondary considerations (e.g., unexpected results) which our
reviewing court guides “operates as a beneficial check on hindsight.”
Cheese Systems, Inc. v. Tetra Pak Cheese and Powder Systems, Inc., 725
F.3d 1341, 1352 (Fed. Cir. 2013).
Therefore, on this record, and based upon a preponderance of the
evidence, we are not persuaded of error regarding the Examiner’s underlying
factual findings and ultimate legal conclusion of obviousness regarding the
Examiner’s rejection of independent representative claim 1.
Accordingly, we sustain the Examiner’s obviousness rejection of
independent representative claim 1. For the same reasons, we also sustain
the Examiner’s obviousness rejection of the remaining grouped dependent
claims 4–6, 20, and 21 (not argued separately), which fall with claim 1. See
37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION
The Examiner did not err in rejecting claims 1, 4–6, 20, and 21, as
being obvious under pre-AIA 35 U.S.C. § 103(a), over the combined
teachings and suggestions of the cited references.

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DECISION SUMMARY
FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED

Claims
Rejected
35 U.S.C. § Reference(s)Basis Affirmed Reversed
1, 4–6, 20, 21 103(a) Cowan #1, Cowan
#2
1, 4–6,
20, 21