Ex Parte Caldeira et al

Patent Trial and Appeal Board

Aug 2, 2016

12321870 (P.T.A.B. Aug. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/321,870 01/26/2009
44765 7590 08/04/2016
INTELLECTUAL VENTURES - ISF
ATTN: DOCKETING, ISF
3150 - 139th Ave SE
Bldg.4
Bellevue, WA 98005
FIRST NAMED INVENTOR
Kenneth G. Caldeira
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
0408-026-001-COOOOl 7508
EXAMINER
V ARGOT, MATHIEU D
ART UNIT PAPER NUMBER
1742
NOTIFICATION DATE DELIVERY MODE
08/04/2016 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):
ISFDocketlnbox@intven.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH G. CALDEIRA, PETER L. HAGELSTEIN,
RODERICK A. HYDE, MURIEL Y. ISHIKAWA, EDWARD K.Y. JUNG,
JORDIN T. KARE, NATHAN P. MYHRVOLD,
THOMAS J. NUGENT, JR., JOHN BRIAN PENDRY, DAVID SCHURIG,
CLARENCE T. TEGREENE, CHARLES WHITMER, and
LOWELL L. WOOD, JR.
Appeal2014-009402
Application 12/321,870
Technology Center 1700
Before CHUNG K. PAK, JACQUELINE WRIGHT BONILLA, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
1 We cite to the Specification ("Spec.") filed Jan. 26, 2009; Final Office
Action ("Final Act.") mailed Aug. 26, 2013; Examiner's Answer ("Ans.");
and Appellant's Appeal Brief ("App. Br.") and Reply Brief ("Reply Br.").
Appeal2014-009402
Application 12/321,870
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 67-72, 74--76, 78, 80-83, and 85-88. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
BACKGROUND
The subject matter involved in this appeal relates to methods
employing one or more reactive composite materials (RCMs) to form an
"arrangement of artificial structural elements that provide metamaterial
properties to [a] metamaterial component." Spec. 3. Metamaterial
components include optical components, the optical properties of which may
be altered by selectively reacting the RCM in or proximate to a region
defining the optical component. Id. at 2. Sole independent claim 67
illustrates the subject matter on appeal and is reproduced from the Claims
Appendix of the Appeai Brief as foiiows:
67. A method, comprising:
providing a plurality of reactive composite materials
(RCM) in or proximate to a region defining a metamaterial
component; and
forming a particular arrangement of metamaterial
elements by selectively reacting the RCM in or proximate to the
region defining the metamaterial component, wherein the
particular arrangement is selected to correspond to a particular
set of metamaterial properties of the metamaterial component.
2 Appellants identify Searete LLC as an affiliate of The Invention Science
Fund I, LLC and the real party in interest. App. Br. 3.
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Application 12/321,870
REJECTIONS
The Examiner maintained the following grounds of rejection: 3
I. Claims 67-72, 74--76, 78, 80-83, and 85-88 stand provisionally
rejected as unpatentable on the ground of nonstatutory obviousness-type
double patenting over claims 1-7, 9-11, 13-21, 23, and 23 ofthen-
copending Application No. 12/290,016 (now U.S. 8,871,121 B2, issued Oct.
28, 2014).
II. Claims 67-71, 74--76, 78, 80-83, and 85-88 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Blumberg4 and Weihs. 5,6
DISCUSSION
I
Appellants do not contest the Examiner's provisional rejections in this
Appeal. See App. Br. 10-14; Reply Br. 2-3. Accordingly, we summarily
sustain the Examiner's provisionai rejection of claims 67-72, 74--76, 78, 80-
83, and 85-88 set forth in Rejection I.
II
With regard to Rejection II, Appellants argue claims 67-71, 74--76,
78, 80-83, and 85-88 as a group. 7 App. Br. 5-10; Reply Br. 2-3. In
3 Ans. 2-8; Final Act. 2-5.
4 US 2010/0086750 Al, published Apr. 8, 2010 ("Blumberg").
5 US 6,991,855 B2, issued Jan. 31, 2006 ("Weihs").
6 The Examiner's rejection of claim 72 over Blumberg and Weihs was
withdrawn. Ans. 6.
7 Appellants separately argue claim 72. App. Br. 15-16. Those arguments
are moot in light of the Examiner's withdrawal of Rejection II as to that
claim.
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Application 12/321,870
accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select claim 67 as
representative and decide the propriety of Rejection II based on the
representative claim alone.
We sustain the § 103 rejection for the reasons expressed in the Final
Office Action, the Answer, and below.
Appellants do not dispute the Examiner's finding that Blumberg
discloses arranging a plurality of metamaterial elements, including bonding
the elements to a flexible base, to define a metamaterial optical component.
Compare Ans. 2-3 with App. Br. generally. Appellants also do not dispute
the Examiner's determination that one skilled in the art would have found it
obvious, in light of the teachings of Weihs, to achieve the above-mentioned
bonding by providing and selectively reacting RCMs "in or proximate to the
region defining the metamaterial component ... to manufacture the
metamaterial component in a desired particular arrangement." Compare
Ans. 3 with App. Br. generally. The Examiner interpreted the recited step of
"forming a particular arrangement of metamaterial elements" as
encompassing Blumberg' s step of bonding metamaterial elements in a
predetermined arrangement on the flexible base. Ans. 3. See also Blumberg
i-f 14 ("An optical property of the metamaterial optical component 105 can be
changed by flexing the metamaterial optical component 105."); id. at i-f 24
("To permit a greater range of flexibility of the component 105, it is
preferable for the base layer 160 to be made of a flexible material.").
Appellants' sole argument against Rejection II contends that the
phrase, "forming a particular arrangement of metamaterial elements" as is
recited in claim 67 does not encompass Blumberg's step of bonding the
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Application 12/321,870
metamaterial elements to a flexible base. 8 App. Br. 11-13. In support of
that argument, Appellants point to Figure 5 and the corresponding discussion
at pages 15 and 1 7 of the Specification, which, according to Appellants,
present "an illustrative example of 'forming a particular arrangement of
metamaterial elements' by RCM reaction." Id. at 12. Appellants argue that
the referenced example in the Specification demonstrates that "forming" by
RCM reaction can involve changing conductive or dielectric properties of
elements composing a metamaterial device, whereas in Blumberg the
metamaterial component properties are altered by flexing the bonded
assembly. Id.
Appellants' argument is not persuasive. Appellants do not present
persuasive evidence or reasoning to conclude that one skilled in the art
would have interpreted the claims as restricted to any particular illustrative
example discussed in the Specification. To the contrary, Appellants
expressiy state in their Specification that "embodiments disclosed herein are
for purposes of illustration and are not intended to be limiting." Spec. 21.
Moreover, the Specification explains that "forming a particular arrangement
of artificial structural elements may involve forming adjoining structural
elements," id. at 20, and that metamaterial component properties include
physical, mechanical, and material properties, id. at 16. These disclosures
are consistent with the Examiner's interpretation that the recited step of
"forming a particular arrangement of metamaterial elements" encompasses
8 Appellants' additional arguments against the Examiner's alternative
reasoning based on inherent flexing upon reacting RCMs in Blumberg, App.
Br. 13-14, are moot following the Examiner's withdrawal of that alternative
basis for the rejection, see Ans. 6.
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Application 12/321,870
the formation of a physical arrangement of metamaterial elements, including
Blumberg' s disclosure of bonding an arrangement of metamaterial elements
to a flexible base to yield a metamaterial component exhibiting an optical
property, which may be altered by flexing.
On this record, we agree with the Examiner's interpretation of claim
67 and underlying findings regarding Blumberg or Weihs. The Examiner
has established by a preponderance of the evidence that the subject matter of
claim 67 would have been obvious over Blumberg and Weihs.
Accordingly, we also sustain Rejection II.
DECISION
The Examiner's decision rejecting claims 67-72, 74--76, 78, 80-83,
and 85-88 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended 3 7 C.F .R. § 1.13 6.
AFFIRMED
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