8523926 et al.

Patent Trials and Appeals Board

Apr 7, 2020

96000148 - (D) (P.T.A.B. Apr. 7, 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.
96/000,148 06/06/2016 8523926 NEEVJ11107SE 3404
56549 7590 04/07/2020
Law Office of Richard B. Cates
2629 Manhattan Avenue
PMB-273
Hermosa Beach, CA 90254
EXAMINER
GAGLIARDI, ALBERT J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
04/07/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

JOSEPH NEEV
Patent Owner and Appellant
____________

Appeal 2020-001680
Reexamination Control 96/000,148
U.S. Patent 8,523,926 B2
Technology Center 3900
____________

Before JAMES T. MOORE, RICHARD M. LEBOVITZ, and
MARC S. HOFF, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(b) and 306, Patent Owner1 appeals from
the final rejection of claims 1–68. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM–IN–PART.

1 Patent Owner identifies the real party in interest as Joseph Neev. Appeal
Br. 2.

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STATEMENT OF CASE
This appeal involves U.S. Patent No. 8,523,926 B2 (“Neev ’926”)
which issued Sep. 3, 2013. A Request for Supplemental Examination of
Neev ’926 under 37 C.F.R. § 1.610 was filed June 6, 2016 by Joseph Neev,
the Patent Owner. The Examiner ordered ex parte reexamination of Neev
’926 after determining that the information provided by Patent Owner raised
a substantial new question of patentability. Reexamination Order (entered
Sept. 23, 2016). A Final Rejection in the reexamination was mailed by the
Examiner on August 29, 2018, rejecting claims 1–68, which are all the
claimed subject to the reexamination proceeding. Patent Owner appeals
from the Final Rejection.
The Examiner finally rejected the claims as follows:2
Claims 1 and 2 under pre-AIA 35 U.S.C. § 102(a) as anticipated by
or, in the alternative, under pre-AIA 35 U.S.C. § 103(a) as obvious over US
6,482,199 B1 (issued Nov. 19, 2002) (“Neev ’199”). Final Act. 12.
Claims 3–18, 20–62, 66, and 67 under pre-AIA 35 U.S.C. § 103(a) as
obvious in view of Neev ’199 and Golub (Optics & Photonics News, pp. 37–
41, Feb. 2004) (“Golub”). Final Act. 16.
Claim 19 under pre-AIA 35 U.S.C. § 103(a) as obvious in view of
Neev ’199, Golub, and Marchitto et al. (US 2005/0010198 A1, published
Jan. 13, 2005) (“Marchitto”). Final Act. 48.

2 The Examiner stated in the Examiner’s Answer (“Ans.”) that the
indefiniteness rejection of claim 63 as lacking antecedent basis is withdrawn.
Ans. 3. However, the Examiner repeated the rejection on pages 3–4 of the
Answer. We consider the repeat of the rejection to be an error and have not
considered the rejection.
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Claims 63–65 and 68 under pre-AIA 35 U.S.C. § 103(a) as obvious in
view of Neev ’199, Golub, and Lai (US 5,549,632, issued Aug. 27, 1996)
(Lai”). Final Act. 48.
Claims 5, 15 and 29 under 35 U.S.C. § 112(d) or pre-AIA 35 U.S.C.
§ 112, 4th paragraph, as failing to further limit the claims. Final Act. 7.
Claim 1 is illustrative and reproduced below (underlining and brackets
relative to original claim):
1. A device for treating a region of intact living skin having a
surface and an epidermal/dermal junction, comprising:
an energy source coupled with at least one diffractive
optic; and
a device controller comprising a computer processor,
wherein the device controller is configured to operate the
device, including operation of [that operates] the energy source,
to target and deliver a plurality of beams below the surface of
the skin [and] to create a plurality of cavities below the surface
of the skin in a 3-dimensional pattern within the thickness of
the skin without any thermal damage deeper than 5 μm below
the plurality of cavities and with the plurality of cavities created
in the thickness of the skin with a density of at least 103 cavities
per mm3.

REJECTIONS BASED ON NEEV ’199
The Examiner found that Neev ’199 describes a device for treating
intact living tissue comprising an energy source coupled to a diffractive lens
and a device controller comprising a computer processor, as recited in claim
1, which produces “cavities below the surface of the skin.” Final Act. 12–
14. The Examiner further found the Neev ’199’s device is “inherently
capable” of producing “a 3-dimensional pattern within the thickness of the
skin without any thermal damage deeper than 5 μm below the plurality of
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cavities and with the plurality of cavities created in the thickness of the skin
with a density of at least 103 cavities per mm3” as recited in claim 1. Final
Act. 12–16.

Does Neev ’199 teach or suggest a plurality of cavities beneath the surface
of the skin?
Claim 1 recites that the device is configured “to create a plurality of
cavities below the surface of the skin in a 3-dimensional pattern within the
thickness of the skin.”
Patent Owner contends that Neev ’199 describes “craters” in the skin
and not a plurality of subsurface cavities. Appeal Br. 15.
We are not persuaded by Patent Owner’s argument.
Neev ’199 has the following pertinent disclosure:
Optionally, the target material is substantially transparent
to the linear propagation of the electromagnetic pulses and the
beam is focused below the surface of the target material so that
the beam intensity exceeds the plasma formation threshold only
at approximately the point of focus and the material is
substantially removed at that desired point below the surface. In
this manner, material can be ablated in a manner which forms
caverns or hollow volumes within the material. Thus, cavities
having various different desired shapes may be so formed. This
may be accomplished using either a single pulse, or a plurality
of pulses, as desired.

Neev ’199, col. 9, ll. 10–20.
Neev ’199 expressly teaches in the passage reproduced above that the
beam “is focused below the surface of the target material” (col. 9, ll. 12)
which meets the limitation of claim 1 of operating an energy source “to
target and deliver a plurality of beams below the surface of the skin.” Neev
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’199 further teaches that “material can be ablated in a manner which forms
caverns or hollow volumes within the material.” (col. 9. ll. 16–18). The
teaching that “hollow volumes” are formed “within the material” was
reasonably found by the Examiner to meet the limitation of “cavities below
the surface of the skin.” The term “hollow” indicates an empty space.3
Therefore, because the empty space is “within the material,” one of ordinary
skill in the art would understand that the empty space is beneath the skin
surface as required by the claim.
Although the Examiner cited this section in the Final Action on page
13, Patent Owner did not address it in the Appeal Brief, but chose to delay
arguments until the Reply Brief. Reply Br. 7. The rules do not permit new
arguments in a Reply Brief unless certain conditions are met. Under 37
C.F.R. § 41.41(b)(2):
Any argument raised in the reply brief which was not raised in
the appeal brief, or is not responsive to an argument raised in
the examiner's answer, including any designated new ground of
rejection, will not be considered by the Board for purposes of
the present appeal, unless good cause is shown.

Patent Owner has not shown “good cause” why this argument
regarding the passage at column 9 should be considered now, nor how it is
responsive to an argument made in the Answer, when the rejection in the
Answer is the same as in the Final Office Action. Patent Owner made no
attempt to argue that 37 C.F.R. § 41.41(b)(2) was satisfied.

3 “having a space or cavity inside; not solid; empty: a hollow sphere.”
(https://www.dictionary.com/browse/hollow) (last accessed Mar. 27, 2020).
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Patent Owner argues that “it is clear” from the disclosure in Neev
’199 from column 57, l. 42 to column 60, line 52 that “surface
ablation/modification, and not subsurface cavities” are being discussed.
Appeal Br. 16. Patent Owner directs our attention to Figures 9 and 10a of
Neev ’199, “where tissue is ablated from the surface but without creation of
any subsurface cavities.” Id.
Beginning at column 57, line 42, there is a section entitled “Summary
of Principles of Operation: High Ration of Ablation Volume to Permanently
Modified Volume.” In this section, Neev ’199 considered “the issues
involved in minimization of the zone of thermal damage generated by each
pulse. Id. at col. 9, ll. 44–45. In the first step, referencing Figure 9, Neev
’199 it is disclosed that the “outer layer Xab is ablated which is ejected
away.” Neev 199, col. 9, l. 50.
We agree with Patent Owner that this section in Neev ’199 discloses
forming craters in the surface of the skin and not expressly forming cavities
beneath the skin surface as required by claim 1. However, we cannot ignore
the disclosure at column 9 where a beam is delivered below the surface of
the skin to produce “hollow volumes” within the skin. While it is true that
the section cited by Patent Owner describes ablating portions of the skin
surface, it is well-established that disclosed examples and preferred
embodiments do not constitute a teaching away from a broader disclosure or
non-preferred embodiments. In re Susi, 440 F.2d 442 (CCPA 1971); Merck
& Co v. Biocraft Laboratories, 874 F.2d 804, 807 (Fed. Cir. 1989) (“[A]ll
disclosures of the prior art, including unpreferred embodiments, must be
considered.”). Patent Owner did not provide adequate evidence that the
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disclosure at column 9, reproduced above, would not be understood by one
of skill in the art to teach cavities below the skin surface Thus, while Patent
Owner continues to argue that Neev ’199 describes surface ablation (Reply
Br. 8), a fact we agree with, there is broader disclosure in Neev ’199 at
column 9 (reproduced above) which justifies the Examiner’s rejection.
Nonetheless, as explained below, even absent a teaching in Neev ’199
of making cavities beneath the skin surface, the device in Neev ’199 is
capable of doing so, and therefore anticipates claim 1.

What does “configured to” mean?
A key issue in this rejection is the proper interpretation of “a device
controller comprising a computer processor, wherein the device controller is
configured to operate the device.” The Examiner recognized that Neev ’199
does not explicitly teach certain limitations in the claim, such as limiting
thermal damage to no more than 5 µm below the subsurface cavities, but
found that Neev ’199’s device would be inherently capable of operating in
this way. Final Act. 15. Patent Owner responded to this argument, stating
that the “configured to” limitation in the claim means that the device must be
“specifically ‘designed or constructed to’ to perform” the function recited in
the claim. Appeal Br. 17.
We begin with the language of the claim. Claim 1 recites:
a device controller comprising a computer processor, wherein
the device controller is configured to operate the device,
including operation of [that operates] the energy source, to
target and deliver a plurality of beams below the surface of the
skin [and] to create a plurality of cavities below the surface of
the skin in a 3-dimensional pattern within the thickness of the
skin without any thermal damage deeper than 5 μm below the
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plurality of cavities and with the plurality of cavities created in
the thickness of the skin with a density of at least 103 cavities
per mm3.
The device controller comprising a processor is “configured to”
perform at least two functions in the claim: 1) to target and deliver beams
below the surface of the skin, and, 2) to create the cavities below the surface
without any thermal damage deeper than 5 µm below the cavities. The best
place to understand whether the device controller must be designed or
constructed to perform these functions, or just capable of performing them,
is the Specification. We thus first turn to the Specification to see how these
terms are described.
The term “configured to” does not appear in the Specification as
originally filed. The term appears in claim 2, issued in Neev ’926. Claim 2,
which depends from the device of claim 1, further recites “wherein the
controller is configured to control the plurality of beams such that each beam
has a pulse duration of no more than 10-6 seconds.” This claim was added
October 9, 2012. Patent Owner identified paragraph 45 as support, but
paragraph 45 of the original Specification does not recite the “configured to”
language. The relevance of this paragraph to the claim amendment is not
even understood because paragraph 45 describes the number of subsurface
disruptions.
In the reexamination proceeding, the “configured to” language was
added to claim 1 on February 13, 2018. Patent Owner did not explain why
this amendment was made and did not identify support in the original
Specification for the term, but instead amended the Specification to add this
phrase to it. Response filed Feb. 13, 2018.
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Without guiding us to anything in the Specification that supports their
claim construction that the term “configured to” is more than just a
capability to perform the function, but must be designed or constructed to do
so, Patent Owner instead cites In re Giannelli, 739 F.3d 1375 (Fed. Cir.
2014) to support their interpretation. Appeal Br. 17.
In Giannelli, the claim recited: “comprising an input assembly
including a first handle portion adapted to be moved from a first position to
a second position by a pulling force exerted by a user on the first handle
portion in a rowing motion.” Giannelli, 739 F.3d at 1376.
The Patent Trial and Appeal Board interpreted the term “adapted to”
to mean that the machine cited as prior art against the claim only had to be
capable of exerting the pulling force. Giannelli, 739 F.3d at 1378. The
court disagreed with the Board. The court explained:
The claims of the ’261 application specifically require a “first
handle portion adapted to be moved from a first position to a
second position by a pulling force ... in a rowing motion.”
Response to Office Action, No. 10/378,261, at 2 (Apr. 12, 2006).
We have noted that, “the phrase ‘adapted to’ is frequently used
to mean ‘made to,’ ‘designed to,’ or ‘configured to,’ ...” Aspex
Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349
(Fed. Cir. 2012). Although the phrase can also mean “ ‘capable
of’ or ‘suitable for,’ ” id., here the written description makes clear
that “adapted to,” as used in the ’261 application, has a narrower
meaning, viz., that the claimed machine is designed or
constructed to be used as a rowing machine whereby a pulling
force is exerted on the handles.
Id. at 1379.
The court thus acknowledged that the term “adapted to” could be
construed as “capable of,” but rejected this construction because it was clear
from the application’s written description that it had the narrower meaning
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that the machine must be designed or constructed to perform the recited
function. The court did not assign a rigid meaning to the term “adapted to,”
but rather interpreted the term in view of the written description of the
application. The same standard applies here.4
Patent Owner has not identified to disclosure in the patent’s written
description that would require the device’s controller to be designed or
configured to perform the functions recited in the claim. Indeed, Patent
Owner has not even explained what “designed or constructed to” perform
would specifically mean in the context of claim 1. The claim requires the
device controller to be configured to operate the device; the Examiner
interpreted the device controller to comprise, for example, a processor or
circuit. Ans. 5. Thus, absent Patent Owner’s clarification, we understand
Patent Owner’s argument to be that the processor or circuit contains
programming or circuitry that would perform this function without manual
intervention, instead of the user having to manually operate the energy
source of the device to deliver beams, create cavities without thermal
damage deeper than 5 µm below the plurality of cavities, etc.
Patent Owner had the opportunity in the Appeal Brief to respond to
the Examiner’s rejection by explaining why the Specification would lead
one of ordinary skill in the claim to read the disputed limitation to require

4 During reexamination of an unexpired patent, the PTO must give claims
their broadest reasonable construction consistent with the specification as
they would be understood by one of ordinary skill in the art. In re Am. Acad.
of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Suitco Surface,
Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010); In re Abbott Diabetes Care Inc.,
696 F.3d 1142, 1148 (Fed. Cir. 2012).
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the device to automatically perform the recited functions, rather than
manually where the circuitry or programming enables the user to manually
perform the recited functions. Patent Owner, however, did not avail
themselves of this opportunity.
The PTO gives claims their broadest reasonable construction
consistent with the specification. See footnote 4. The term “configure”
means “to set up for operation especially in a particular way.”5 The
Examiner therefore reasonably read “a device controller comprising a
computer processor, wherein the device controller is configured to operate
the device” to mean that the controller is set up in such a way that it can be
operated to perform the functions recited in the claim, such as targeting and
delivering the beams to the desired location in the skin to produce cavities
within the skin.” Under this interpretation, the claim covers using the
processor or circuitry manually, or automatically by a fixed program or
circuitry, to operate the energy source to target and deliver the beams to
produce the cavities below the surface of the skin.
In view of this interpretation, we find Patent Owner’s more extensive
arguments in the Reply Brief about why Neev ’199 does not disclose
subsurface cavities (Reply Br. 8, 10, 11) and a 3-dimensional pattern density
(Reply Br. 12) to be superfluous, because the rejection is based on the
capability of Neev ‘199’s device to be used to produce the cavities as
claimed. Patent Owner’s arguments do not address the Examiner’s evidence
cited in the Final Action that Neev ’199’s device has a controller which

5 https://www.merriam-webster.com/dictionary/configure (last accessed
Mar. 27, 2020).
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could be used to operate an energy source to target and deliver beams as
claimed to create the subsurface cavities.

Does Neev ’199 teach or suggest limiting thermal damage to 5 μm below a
plurality of subsurface cavities?
Patent Owner contends that Neev ’199 describes limiting thermal
damage from an ablated crater in the skin, not from subsurface cavities as
required by the claim. Appeal Br. 15. Patent Owner argues that the
“characteristics of thermal dispersion from an ablated crater is substantially
different from that of a plurality of subsurface cavities.” Id. Specifically,
Patent Owner states that the “expulsion of energy directly from the material
with the ablated matter involves a very different mechanism than the
removal of thermal energy from a plurality of subsurface cavities.” Id. at 15,
16. Patent Owner also argues that Neev ’199 describes ablating tissue from
the skin surface “but without creation of any subsurface cavities” as required
by claim 1. Id. at 16.
This argument is not persuasive. Patent Owner has not provided
adequate evidence that limiting thermal damage to cavities below the skin is
not enabled by Neev ’199. Patent Owner provides attorney argument
asserting that limiting thermal energy from surface ablation is “very
different” from limiting it from a 3-D volume of target material under the
skin surface as claimed, but provided no independent evidence to support
this argument, such as expert testimony or scientific publications. Appeal
Br. 15–16. An argument made by counsel in a brief does not substitute for
evidence lacking in the record. Estee Lauder, Inc. v. L’Oréal, S.A., 129 F.3d
588, 595 (Fed. Cir. 1997). In contrast, the Examiner explained that Neev
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’199 discloses the same pulse durations and energies described in Neev ’926
which would achieve the creation of cavities while limiting thermal damage
to no more than 5 μm below the cavities. Final Act. 13, 15. Patent Owner
did not rebut the Examiner’s factual findings.
Patent Owner in the Reply Brief introduces additional arguments as to
why minimizing thermal damage in Neev ’199 is different from the
approach taken in Neev ’926. Reply Br. 6–7. First, as discussed above,
these appear to be new and impermissible arguments 37 C.F.R. § 41.41(b)(2)
against the same rejection set forth in the Final Rejection. Second, as
discussed above, Patent Owner once again is arguing that the dissipation of
thermal energy in Neev ’199 is different from claimed three-dimensional
array. Reply Br. 6.

Does Neev ’199 teaches or suggests generating a 3-dimensional array of
subsurface cavities having a density of at least 10, 102, 103 or 106 cavities
per mm3?
The Examiner identified specific disclosure in Neev ’199 that the
Examiner found would make Neev ’199’s device capable producing cavities
with the claimed density. For example, the Examiner found the Neev ’199
describes focus beam spot size as small as 0.1 µm, citing column 45, lines
55–56. Final Act. 13. The Examiner also cited the disclosure at column 44,
lines 33–36 of Neev ’199 (“Making further use of non-linear absorption
which are very sensitive to the beam power density distribution,
modification cross section as small as 100 or even 10 nanometer can be
envisioned”) as evidence that small cavities can be made and packed into
arrays of 103 or greater. Final Act. 14.
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Patent Owner argues that “substantial modification would be required,
including reprogramming the control from creating 1-D patterns (e.g.,
lines/rows/columns) to creating 3-D patterns, as well as modifying the pulse
rates, pulse energy, pulse duration, focus, targeting, etc., and other energy
delivery parameters with specific values to create such 3-D patterns at the
desired densities (e.g., 103/mm3) all while limiting thermal damage to 5μm.”
Appeal Br. 18.
This argument does not persuade us the Examiner erred. The
Examiner found, as discussed above, the Neev ’199 describes spot size and
beam power density that would be effective to produce a 3-dimensional
array with the claimed density of cavities. Final Act. 13–14. Patent Owner
did not address the Examiner’s factual findings. Patent Owner, instead,
argues that substantial reprograming would be necessary to create the
patterns. However, the claim, as properly interpreted, does not require that
the processor or circuitry be programmed to perform the functions without
manual intervention. Therefore, this argument is unavailing. Patent Owner
did not challenge the Examiner’s factual findings that Neev ’199 could be
used to produce the claimed 3-dimensional array with the claimed density.

Summary
For the reasons set forth above, the anticipation rejection of claim 1 is
reversed. Claim 2 was not argued separately, and falls with claim 1.

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Patent Owner did not provide separate arguments for the obviousness
rejection of claims 3–10, 24–40, 42–48, 55–62, 66, and 67 over Neev ’199
and Golub or for the obviousness rejection of claims 63–65 and 68 over
Neev ’199 and Golub and Lai. Appeal Br. 18. These rejections are
therefore affirmed.

CLAIMS 11–23, 41, and 49–54
Patent Owner argues claims 11–23, 41, and 49–54 separately which
are rejected as obvious in view of Neev ’199 and Golub.
Independent claim 11 is reproduced below (underlining and brackets
relative to the original claim):
11. A method of modifying a region of skin, comprising:
providing a device comprising a beam generator to
produce a plurality of beams with at least one diffractive optic;
targeting the plurality of beams below the surface of the
[t] skin with a device controller comprising a computer
processor; and
creating, with the plurality of beams, a plurality of
cavities below the surface of the skin in a plurality of layers
within the thickness of the skin in a 3-dimensional pattern
within the thickness of the skin without causing any thermal
damage deeper than 5 μm below the plurality of cavities,
wherein [whereby] the plurality of cavities comprise [create]
scattering centers [to] that decrease the amount of light
penetrating the skin, wherein the plurality of cavities are created
at a density of at least 10 cavities per mm3 within the thickness
of the skin.

With respect to the limitation that “the plurality of cavities comprise
scattering centers that decrease the amount of light penetrating the skin,” the
Examiner found that Neev ’199 “allows for the creation of cavities that can
range in size from 0.1 μm and larger, the cavities would inherently comprise
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scattering centers that decrease the amount of light penetrating the skin.”
Final Act. 21; Ans. 17.
Patent Owner argues that, “[a]s is widely known in the relevant art,
while cavities within a continuous medium can cause scattering of light
energy, such scattering can be forward, sideways, backwards, etc., and may,
in fact, actually enhance light penetration into the skin.” Appeal Br. 19.
Patent Owner further argues that Neev ’199 “teaches generation of cavities,
but such cavities will not necessarily, in and of themselves, decrease light
penetration – and their light-scattering ability may vary widely.” Id. Patent
Owner further asserts that a group of cavities may even increase light
penetration into the tissue. Id.
The Examiner bears the initial burden of presenting a prima facie case
of unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); In
re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). Unlike claim 1, which is
directed to a device, claim 11 is a method claim reciting a step of creating
cavities beneath the surface of the skin where the plurality of cavities
comprise light scattering centers that decrease the amount of light
penetration into the skin. The Examiner did not provide adequate evidence
that Neev ‘199 describes producing the recited density of cavities below the
surface of the skin that would produce light scattering centers. The
Examiner only found that Neev ’199’s device would be capable of being
used to create such scattering centers below of the surface of the skin, but
did not provide evidence that this step is performed or suggested by Neev
’199. Consequently, we are compelled to reverse the rejection of claim 11,
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and claims 12–23, 41, and 49–54, each which recite the same substantially
the same limitation.

REJECTION UNDER 112, FOURTH PARAGAPH
The Examiner found that claims 5, 15, and 29 recite specific spacing
between the edges of cavities, but found the cavity densities recited in the
claims upon which these claims depend, would limit the spacing to less than
the full spacing range recited in the claims. Final Act. 7–8.
Patent Owner responds that the Examiner “appears to confuse or
conflate the two different concepts of (1) densities and (2) spacing lengths.”
Appeal Br. 14. Patent Owner states that the Examiner erroneously assumed
that the spacing must be equal and equally dispersed. Id. Patent Owner
further states, without evidence or rebutting the Examiner’s finding to the
contrary, “Densities of 10 per mm3, or even of 103 per mm3, can provide for
edge-to-edge spacings which fall within the range of 0.1 μm to 5 mm cited
in claims 5, 15, and 29.” Id. at 15.
The Examiner responded that “it is quite well understood that density
and spacing are inversely related such that as the spacing lengths (between
cavities, for example) increase, the density per unit volume necessarily
decreases.” Ans. 44–45. The Examiner further explains that “if a person of
ordinary skill in the art wanted to create a 3-dimensional pattern of cavities
with a particular density per unit volume, one of the first steps would
probably be to determine the maximum average spacing between cavities
that would allow for achieving the desired density.” Id. at 45.
Patent Owner responded to the Examiner’s additional calculations set
forth in the Answer. Reply Br. 5. However, we did not find these
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calculations necessary to support the rejection, but rather found the
Examiner’s initial finding to be an adequate basis to reject the claims,
namely that the recited densities would not allow the full breadth of spacing
recited in the dependent claims. Patent Owner did not identify a defect in
the Examiner’s initial reasoning nor did Patent rebut the Examiner’s finding
that density and spacing are inversely related. Consequently, we affirm the
rejection of claims 5, 15, and 29.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2 102 Neev ’199 1, 2
3–18, 20–
62, 66, 67
103 Neev ’199, Golub 3–10, 24–
40, 42–48,
55–62, 66,
67
11–18, 20–
23, 41, 49–
54
19 103 Neev ’199, Golub,
Marchitto
19
63–65, 68 103 Neev ’199, Golub,
Lai
63–65, 68
5, 15, 29 112(d) or
112, 4th
paragraph
Failure to further
limit dependent
claims
5, 15, 29
Overall
Outcome
1–10, 15,
24–40, 42–
48, 55–68
11–14, 16–
23, 41, 49–
54

Appeal 2020-001680
Reexamination Control 96/000,148
U.S. Patent 8,523,926 B2

19
TIME PERIOD FOR RESPONSE
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED-IN-PART

tc

LAW OFFICE OF RICHARD B. CATES
2629 Manhattan Avenue, PMB-273
Hermosa Beach, CA 90254