Ex Parte Barr et al

Board of Patent Appeals and Interferences

Jun 24, 2009

11378918 (B.P.A.I. Jun. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT K. BARR, JAMES T. FAHEY,
COREY O’CONNOR and JAMES G. SHELNUT
____________

Appeal 2009-002257
Application 11/378,918
Technology Center 1700
____________

Decided:1 June 25, 2009
____________

Before TERRY J. OWENS, JEFFREY T. SMITH, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-002257
Application 11/378,918

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of pending claims 11-15. (Examiner’s Answer entered June 20,
2008, hereinafter “Ans.”). We have jurisdiction pursuant to 35 U.S.C.
§ 6(b).
Representative claim 11 recites:
11. A method comprising:

a) applying an imaging composition on a work piece;

b) selectively applying a computer programmed 3-D
image in the form of laser light on the imaging
composition at intensities to affect a photofugitive
response in the imaging composition such that the
imaging composition changes color or shade from
dark to light at selected portions of the imaging
composition to form a pattern on the imaging
composition, or to affect a phototropic response in
the imaging composition such that the imaging
composition changes color or shade from light to
dark at selected portions of the imaging
composition to form a pattern on the imaging
composition; and

c) modifying the work piece as directed by the
pattern.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Telfer 5,681,676 Oct. 28, 1997

The Examiner rejected claims 11-15 under 35 U.S.C. § 103(a) as
being unpatentable over Telfer. In rejecting the claims on appeal, the
Examiner found that Telfer discloses “projecting a 3-D image onto the
2
Appeal 2009-002257
Application 11/378,918

imaging composition so as to affect a color change in the imaging
composition (col. 3, lines 20-29).” (Ans. 3). The Examiner also stated that
“Appellant does not disclose ‘projecting a 3-D image onto an imaging
composition’ in any of the claims.” (Ans. 6).
Appellants contend that
[t]he Final Rejection at page 2, paragraph 8 alleges
that “Tefler teaches a method of applying an imaging
composition to a substrate (workpiece) and projecting a 3-D
image onto the imaging composition (col.3, lines 20-29).”
This is not correct. No where does column 3, lines 20-29
disclose this method. This section is totally silent on any
type of 3-D imaging.

(App. Br. 8). Appellants also argue “Teller et al. are silent on projecting a 3-
D image with a laser onto an imaging medium.” (App. Br. 9).
The issue is: Have Appellants shown error in the Examiner’s
determination that Telfer discloses applying a 3-D image onto an imaging
composition as recited in the claims on appeal?
Claim 11 recites “selectively applying a computer programmed 3-D
image in the form of laser light on the imaging composition.”
Telfer describes a three-dimensional imaging technique, where:
a plurality of two-dimensional images of the object from
various positions are determined . . . each of these two-
dimensional images is separated into a plurality of strips . . . ,
and one strip from each two-dimensional image . . . is placed
in each of the image areas.

(Col. 5, ll. 28-36). Telfer discloses that the composite image formed from
the image strips is written into a radiation sensitive layer. (Col. 14, ll. 40-56;
col. 22, ll. 27-56). Telfer discloses that an orthoscopic three dimensional
3
Appeal 2009-002257
Application 11/378,918

image is observed by viewing the composite image appearing behind a plane
of a radiation sensitive layer. (Col. 22, ll. 55-62).
We agree with Appellants that claim 11 requires that a 3-D image is
applied to an imaging composition. In contrast, Telfer’s 3-D image is not
applied in the form of laser light on an imaging composition as recited in the
claims, but appears behind the plane of the imaging medium. In addition,
Telfer discloses that two-dimensional images, rather than 3-D images, are
applied to the imaging medium. Therefore, Appellants have demonstrated
that the Examiner reversibly erred in determining that Telfer discloses
applying a 3-D image onto an imaging composition as recited in the claims
on appeal.

ORDER
We reverse the Examiner’s decision rejecting claims 11-15 under 35
U.S.C. § 103(a) as being unpatentable over Telfer.
REVERSED

ssl

ROHM AND HAAS ELECTRONIC MATERIALS LLC
455 FOREST STREET
MARLBOROUGH, MA 01752

4