Ellin, Alexander David Scott. et al.

Patent Trials and Appeals Board

Sep 30, 2020

12659404 - (D) (P.T.A.B. Sep. 30, 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.
12/659,404 03/08/2010 Alexander David Scott Ellin 119651.01 2209
25944 7590 09/30/2020
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
EXAMINER
PAIK, SANG YEOP
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
09/30/2020 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):
OfficeAction25944@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDER DAVID SCOTT ELLIN,
JAMES REYNOLDS HENSHAW, and
DAVID ROBERTS MCMURTRY
Appeal 2019-0048521
Application 12/659,404
Technology Center 3700
Before EDWARD A. BROWN, CHARLES N. GREENHUT, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–9, 18, and 20–29, which constitute all
the claims pending in this application.3 We have jurisdiction under
35 U.S.C. § 6(b). We REVERSE.

1 Appellant presented oral arguments on August 18, 2020.
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Renishaw PLC as the real party in interest.
Appeal Br. 1.
3 Claims 19 and 30 were cancelled by Appellant. See Appeal Br. (Claims
App.). Claims 10–17 and 31 were cancelled by Examiner’s Amendment.
See Notice of Allowance dated February 14, 2018 at 2; Ans. 11–12.
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CLAIMED SUBJECT MATTER
The claims are directed to producing encoder scales such as “rotary
encoders for use in measurement devices which employ an encoder scale
reader.” Spec. 1:14–16.
Independent claims 1 and 18, reproduced below with emphasis added,
are illustrative of the claimed subject matter.
1. A method of forming an encoder scale for a measurement
device, the method comprising the steps of:
(i) taking a laser;
(ii) taking a non-transparent substrate carrying an etch-
resistant film; and
(iii) using the laser to remove parts of the etch-resistant
film, thereby forming a pattern on the substrate that defines an
encoder scale.
18. A method of forming an encoder scale for a measurement
device, the method comprising the following steps in any suitable
order:
providing a substrate;
providing a substrate treatment device;
providing a control system;
providing a displacement mechanism that provides a
displacement signal indicative of displacement;
operating the displacement mechanism to cause
continuous relative displacement between the substrate and the
substrate treatment device; and
operating the control system to monitor the displacement
signal and cause the substrate treatment device to treat the
substrate at intervals so as to produce a pattern while the
continuous displacement takes place, the control system being
further operated to perform a timing comparison step to
synchronize the displacement signal and the intervals,
wherein the substrate comprises a surface that has
previously been darkened by treating the surface directly by at
least one of etching and anodizing, and
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wherein the substrate treatment device comprises a laser
that marks bright lines directly onto the surface of the substrate.
Appeal Br. (Claims App. A-1, A-3).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Grobitz US 3,573,007 Mar. 30, 1971
Fechter US 3,747,117 July 30, 1973
Domkowski US 4,652,528 Mar. 24, 1987
Veldkamp US 4,846,522 July 11, 1989
Machida US 4,883,710 Nov. 28, 1989
McElroy US 5,053,618 Oct. 01, 1991
Williams US 5,120,927 June 09, 1992
Barenboim US 5,822,211 Oct. 13, 1998
Eisenhauer US 6,501,068 B1 Dec. 31, 2002
Perry US 6,621,040 B1 Sept. 16, 2003
REJECTIONS
I. Claims 1–4, 6–9, 20–23, and 25–28 are rejected under 35
U.S.C. § 103 as unpatentable over Williams, Grobitz, and Veldkamp. Non-
Final Act. 2–5, 11–12.
II. Claim 5 is rejected under 35 U.S.C. § 103 as unpatentable over
Williams, Grobitz, Veldkamp, and Barenboim. Non-Final Act. 5–6.
III. Claims 6, 7, and 29 are rejected under 35 U.S.C. § 103 as
unpatentable over Williams, Grobitz, Veldkamp, and Eisenhauer. Non-Final
Act. 6.
IV. Claim 24 is rejected under 35 U.S.C. § 103 as unpatentable
over Williams, Grobitz, Veldkamp, and Machida or McElroy. Non-Final
Act. 6–7.
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V. Claims 25 and 26 are rejected under 35 U.S.C. § 103 as
unpatentable over Williams, Grobitz, Veldkamp, and Perry. Non-Final Act.
7–8.
VI. Claim 18 is rejected under 35 U.S.C. § 103 as unpatentable
over Williams and Domkowski or Fechter. Non-Final Act. 9–10.

OPINION
Rejection I: Williams, Grobitz, and Veldkamp
Claims 1–4, 6–9, 20–23, and 25–28
The Examiner finds that Williams, in Figure 4 and the associated
disclosure in column 3, lines 29–31 and column 6, lines 55–68, teaches a
method of forming an encoder scale for a measurement device comprising
(i) taking a laser; (ii) taking a non-transparent substrate carrying a magnetic
film or coating; and (iii) using the laser to remove parts of the film, thereby
forming a pattern on the substrate that defines an encoder scale. Non-Final
Act. 2–3, 11. According to the Examiner, “Williams does not explicitly call
for the magnetic film [to be] an etch[]-resistant film [as required in claims 1
and 28] or an etch resist [as required in claim 27].” Id. at 3, 11.
To address this deficiency, the Examiner finds Figures 4 and 5 of
Grobitz teach “it is known to provide an etch-resistant film (13) forming a
pattern on a metal substrate (10).” Id. at 3, 12. The Examiner further finds
Veldkamp’s Figure 5 teaches
it is known to provide a substrate made of a material including
metal wherein the substrate is known to be provided with an etch-
resistant film (522) such as a photo resist film provided with a
metal layer (523), that is partially removed by laser to form a
pattern thereto, and [Veldkamp] further shows etching the
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substrate through the film that has been removed by the laser.
Id.
The Examiner reasons that, in view of the above teachings in Grobitz
and Veldkamp,
it would have been obvious to one of ordinary skill in the art to
adapt Williams with the non-transparent substrate, which can be
made of metal, with an etch-resistant film formed thereon
wherein the pattern is shaped and formed by laser or pulsed laser
that removes the etch-resistant film so that the pattern is formed
directly onto the substrate as the laser removes the film and
exposing the substrate.
Id.
Appellant argues, inter alia, that the Examiner’s findings regarding
the combination of Williams, Grobitz, and Veldkamp are merely conclusory
and “simply consist of describing the supposed result of its proposed
combination.” Appeal Br. 10–11. Appellant contends the Examiner fails
to provide articulated reasoning for the conclusion of obviousness, as
required by KSR. Id. (citing KSR International Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007)). Further, Appellant argues the Examiner has not explained
how the teachings of Grobitz and Veldkamp would be employed in the
method of Williams, which “already teaches a very specific and apparently
effective method of using a laser 14 to inscribe grooves 130 into a magnetic
layer 139 sitting on a substrate 129.” Id. at 11.
In response, the Examiner appears to present an inherency position
regarding the etch-resistant properties of Williams’ magnetic film:
Grobitz and [Veldkamp] are applied to show that a metallic layer
is known to be an etch-resistant film, wherein the magnetic film
of Williams which is also made of metallic film would [] also be
deemed an etch-resistant film where a pattern or groove would
be formed by laser or pulsed laser that removes the etch-resistant
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film as stated in the ground of rejection.
Ans. 12–13 (emphasis added).
In reply, Appellant contends the Examiner’s comparison of the metal
layers in Grobitz and Veldkamp to the magnetic layer in Williams is
improper. Reply Br. 3. First, Appellant argues that not all metal layers are
etch-resistant, as both Grobitz (Fig. 5, layer 10) and Veldkamp (Fig. 5, layer
523) teach etching a metal layer. Id. at 3–4. Second, Appellant contends the
magnetic layer of Williams is chosen for its magnetic properties, not for its
etch-resistant properties. Id. at 4. The types of metals chosen in Grobitz,
according to Appellant, are not magnetic and, thus, are not suitable to use as
the magnetic layer of Williams. Id.
We agree with Appellant that the Examiner’s proffered motivation to
combine the references is merely a restatement of requirements of the claims
without sufficient additional explanation. Thus, the Examiner fails to
provide “some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” KSR, 550 U.S. at 417–18.
Further, the rejection lacks a clear “explanation as to how or why the
references would be combined to produce the claimed invention.”
TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016); see also
Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017)
(holding obviousness determination improper where the record lacked a
“clear, evidence supported account of “how the combination” would work).
The Examiner provides no evidence or explanation of how one of ordinary
skill in the art would “adapt” Williams to use one of the alleged “etch-
resistant films” taught by Grobitz or Veldkamp.
To the extent the Examiner’s finding that “a metallic layer [of Grobitz
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or Veldkamp] is known to be an etch-resistant film wherein the magnetic
film of Williams which is also made of metallic film would [] also be
deemed an etch-resistant film” is an assertion that William’s magnetic layer
is inherently an “etch-resistant” layer (see Ans. 12–13), we agree with
Appellant that the Examiner has failed to provide sufficient evidence of
inherency. Our reviewing Court states, “our early precedent, and that of our
predecessor court, established that the concept of inherency must be limited
when applied to obviousness, and is present only when the limitation at issue
is the ‘natural result’ of the combination of prior art elements.” PAR
Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014).
“The keystone of the inherency doctrine is inevitability. . . . Absent
inevitability, inherency does not follow even from a very high likelihood
that a prior art method will result in the claimed invention.” In re
Montgomery, 677 F.3d 1375, 1384 (Fed. Cir. 2012). The Examiner has not
provided any evidence that the metal materials used in Grobitz or Veldkamp
could be the same materials that comprise the magnetic layer of Williams.
Further, as Appellant persuasively argues (see Reply Br. 3–4), the
Examiner’s suggestion that a person of ordinary skill in the art would find all
metals to be etch resistant is unsupported by the record. Thus, the Examiner
has not shown that the magnetic layer of Williams, in view of metal
materials used in Grobitz or Veldkamp, would have the natural result of
being “deemed” an etch resistant layer.
Accordingly, we do not sustain the rejection of independent claims 1,
27 or 28, or claims 2–4, 6–9, 20–23, 25 or 26 depending from claim 1, as
unpatentable over Williams, Grobitz, and Veldkamp.

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Rejections II–V
Rejections II, III, IV, and V are based on the combination of
Williams, Grobitz, and Veldkamp, and the Examiner does not rely on the
teachings of the additional references in any manner that would remedy the
deficiencies discussed above regarding Rejection I. See Non-Final Act. 5–8.
Accordingly, we do not sustain the rejections of: claim 5 as
unpatentable over Williams, Grobitz, Veldkamp, and Barenboim (Rejection
II); claims 6, 7, and 29 as unpatentable over Williams, Grobitz, Veldkamp,
and Eisenhauer (Rejection III); claim 24 as unpatentable over Williams,
Grobitz, Veldkamp, and Machida or McElroy (Rejection IV); or claims 25
and 26 as unpatentable over Williams, Grobitz, Veldkamp, and Perry
(Rejection V).

Rejection VI: Williams and Domkowski or Fechter
Claim 18
The Examiner finds Williams teaches all of the limitations of
independent claim 18, except “the substrate comprises a surface that has
previously been darkened by treating the surface directly by at least one of
etching and anodizing.” Non-Final Act. 9–10. To address this deficiency
regarding darkening the surface of the substrate, the Examiner finds
Domkowski teaches “it is known to etch a substrate to provide a darkened
surface wherein laser is applied to remove the etched surface.” Id. at 10
(citing Domkowski 4:11–26). The Examiner also finds “Fechter shows a
recording medium that is formed by anodizing on a substrate which would
have been darkened by the anodization, wherein the substrate is further laser
processed to create a pattern.” Id. (no citation to Fechter provided).
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The Examiner reasons that, in view of the above teachings in
Domkowski or Fechter,
it would have been obvious to one of ordinary skill in the art to
adapt Williams with the surface of the substrate that is directly
treated via etching or anodizing to create a darkened surface that
would produce a recording medium for encoding purposes
wherein such film is laser treated to predictably yield a desired
code or pattern formed thereon.
Id.
Appellant argues “there is no ‘articulated reasoning’ to support the
Office’s position; the Office again simply describes the supposed result of its
combination.” Appeal Br. 14; see also Reply Br. 5. Regarding Domkowski,
Appellant contends the Examiner fails to provide an explanation of “how the
method of Domkowski would be applied in the context of the method taught
in Williams,” and that a skilled artisan would not have darkened the
magnetic data layer of Williams by etching because it stores valuable user
data. Id.
Regarding Fechter, Appellant first contends that the Board previously
held in this patent application that “applying a coating is not the same as
treating a surface directly.” Id. Appellant then argues that Fechter is
incompatible with Williams because the oxidation temperatures used in
Fechter would destroy the floppy disc and magnetic layer of Williams. Id. at
14–15.
In response, the Examiner finds
[a]s Domkowski or Fechter shows a substrate that is known to
carry information, Domkowski or Fechter is deemed to be in the
same field of endeavor with that of Williams that also includes a
substrate that carries an encoded information on the substrate,
and the combination Williams with Domkowski or Fechter
would have predictably yielded the claimed invention that
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includes forming an encoded scale by the pattern formed on the
substrate.
Ans. 13.
Appellant’s arguments apprise us of Examiner error with respect to
both Domkowski and Fechter. For each combination, Williams and
Domkowski and Williams and Fechter, we agree that the Examiner fails to
provide the required “articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness.” KSR, 550 U.S. at 417–18.
Each rejection lacks a clear “explanation as to how or why the references
would be combined to produce the claimed invention.” TriVascular, Inc.,
812 F.3d 1066 (Fed. Cir. 2016).
Domkowski teaches “the sides of a length of white TEFLON are
subjected to a chemical etchant resulting in the darkening of [the] sides.”
Domkowski 3:42–44. The Examiner provides no evidence or explanation of
how applying a chemical process intended for TEFLON is applicable to
darkening the substrate of Williams, which the Examiner asserts is metal
(Non-Final Act. 2–3 (“substrate (129), which is made of a non-transparent
material including metal”)).
Regarding Fechter, we agree with Appellant that the Board previously
held the claimed “treating the surface directly to darken the surface” requires
the surface of the substrate itself to be treated and darkened, not the surface
of a layer on top of the substrate. Decision at 7. Fechter teaches forming an
oxide layer on top of a substrate “by first applying the unoxidized metal or
metallic alloy on [the] surface” of the substrate, and then anodically
oxidizing the metal layer. Fechter 3:3–5, 28–30. As Fechter treats a layer
on top of the substrate rather than treating the substrate itself, we agree with
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Appellant that Fechter does not teach “treating the surface directly” to
darken the substrate surface.
Accordingly, we do not sustain the rejection of independent claim 18
as unpatentable over Williams and Domkowski or Fechter.

Status of Claims 10–17 and 31
In a previous decision, the Board sustained a rejection of claims 10–
17 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement. Ex Parte Ellin, Appeal No. 2016-001028
(hereinafter, “Decision”) at 3–6 (PTAB Dec. 1, 2017); Non-Final Action
mailed Sept. 25, 2014 at 3–4. That Decision reversed the rejections of
claims 1–9, 18, and 20–29. Decision 6–10.
After the Decision, the Examiner issued a Notice of Allowance stating
that claims 10–17 and 31 were cancelled via an Examiner’s amendment due
to the Board’s affirmance of the § 112 rejection thereof. Notice of
Allowance mailed Feb. 14, 2018 at 2; see also MPEP § 1302.04
(“Examiner’s Amendments and Changes”).4 Subsequently, on June 4, 2018,
Appellant filed a Petition to Withdraw the Application from Issue, which
was granted, and also filed a Request for Continued Examination (“RCE”)
including an Information Disclosure Statement (“IDS”) that cited new prior

4 MPEP § 1302.04 states “With the exception of the following no corrections
or interlineations may be made by the examiner in the body of written
portions of the specification or any other paper filed in the application for
patent, except by examiner’s amendment approved by applicant and as
described hereinafter. (See 37 CFR 1.121.): . . . (E) Amendment and/or
cancellation of claims following a decision by the Patent Trial and Appeal
Board as described in MPEP §§ 1214, 1214.05, and 1214.06.
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art references.5 The Examiner then issued the Non-Final Office Action
(August 14, 2018) from which the present Appeal is taken, including a
rejection of claims 10–17 and 31 under 35 U.S.C. § 103.
MPEP § 1308(III) states “[w]hen an application is withdrawn from
issue, either at the initiative of the applicant or by the Office, and the
application contains an examiner’s amendment, the claims as amended by
the examiner’s amendment are the claims subject to further examination.”
(Emphasis added). Thus, notwithstanding Appellant’s filing of the above-
noted RCE and the Examiner’s subsequent rejection of claims 10–17 and 31,
apparently failing to immediately recognize they had previously been
cancelled by the Examiner, the status of claims 10–17 and 31 after the
application was withdrawn from issue was “cancelled.” The Examiner
apparently recognized the inconsistency of the rejection of claims 10–17 and
31 with the previous cancellation of these claims, and the Examiner
reiterated in the Answer that claims 10–17 and 31 have been cancelled. See
Ans. 11–12; Oral Hearing Transcript 18–19. Accordingly, as claims 10–17
and 31 have been cancelled, no rejection of these claims is before us.

CONCLUSION
The examiner’s rejections are REVERSED.

5 Appellant did not address the rejection sustained in the previous appeal
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1–4, 6–9,
20–23, 25–
28
103 Williams, Grobitz,
Veldkamp
1–4, 6–9,
20–23, 25–
28
5 103 Williams, Grobitz,
Veldkamp,
Barenboim
5
6, 7, 29 103 Williams, Grobitz,
Veldkamp,
Eisenhauer
6, 7, 29
24 103 Grobitz,
Veldkamp,
Machida, McElroy
24
25, 26 103 Williams, Grobitz,
Veldkamp, and
Perry
25, 26
18 103 Williams,
Domkowski,
Fechter
18
Overall
Outcome
1–9, 18,
20–29

REVERSED