Ex Parte Harris

Board of Patent Appeals and Interferences

Nov 29, 2010

09692075 (B.P.A.I. Nov. 29, 2010)

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.
09/692,075 10/19/2000 Ken Harris 22176.17 6304
29127 7590 11/30/2010
HOUSTON ELISEEVA
420 BEDFORD ST
SUITE 155
LEXINGTON, MA 02420
EXAMINER
ANGEBRANNDT, MARTIN J
ART UNIT PAPER NUMBER
1722
MAIL DATE DELIVERY MODE
11/30/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte KEN HARRIS
________________

Appeal 2010-002411
Application 09/692,075
Technology Center 1700
________________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
LINDA M. GAUDETTE, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-002411
Application 09/692,075

2
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 26, 28, 32-36, 43, and 44. The subject matter of claims
29 and 37-42 has been indicated as containing allowable subject matter.
(Final Rejection 1; App, Br. 1). We have jurisdiction under
35 U.S.C. § 6(b).2
The Invention
Appellant’s invention is directed to a method of transferring data from
a holographic master to another surface. Claims 26 and 28 are illustrative:
26. A method of transferring data from a holographic
master to another surface via a seamless transfer medium
comprising a polyimide material, the method comprising the
steps of
(a) providing the seamless transfer medium by casting
the polyimide material on the holographic master containing the
data so that an impression of diffraction gratings of the
holographic master is made on the cast polyimide material;
(b) removing the seamless transfer medium with the
impression of the diffraction gratings from the holographic
master;
(c) heat curing the seamless transfer medium; and
(d) using the seamless transfer medium to emboss the
data to another surface.

2 In rendering this decision we have considered the Appellant’s submissions
filed on July 6, 2005, and June 13, 2007. We have also considered the
Examiner’s position as set forth in the Examiner's Answer dated September
15, 2008.
Appeal 2010-002411
Application 09/692,075

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28. A method of embossing data from a seamless
embossing surface to another surface, said method comprising
the steps of:
(a) spin coating a photodefinable polyimide material on a
roller and heat precuring the polyimide material to form said
seamless embossing surface of a target thickness;
(b) cooling said seamless embossing surface to ambient
temperature;
(c) profiling said seamless embossing surface by two
interfering laser beams to form diffraction patterns to define
said data on said seamless embossing surface;
(d) wet developing said data on said seamless embossing
surface by using a solution;
(e) heat curing of the seamless embossing surface; and
(f) embossing said another surface with said data by said
seamless embossing surface.
The Examiner relies on the following references in rejecting the
appealed subject matter:
Sassmannshausen et al. 5,104,768 Apr. 14, 1992
Shvartsman 5,279,689 Jan. 18, 1994
Hino et al. 5,374,469 Dec. 20, 1994
Abraham 5,452,282 Sept. 19, 1995
McGrew 5,521,030 May 28, 1996
Hagen et al. 6,010,825 Jan. 4, 2000
Kataoka et al. JP 08-039572 Feb. 13, 1996
Fan et al. EP 0766142 A1 Feb. 4, 1997
Thermally Induced Surface Relief Holograms, 30 IBM TECHNICAL
DISCLOSURE BULLETIN 1392 (1987). (herein after IBM)
Claim 26 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over IBM, in view of Shvartsman and Kataoka.
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Application 09/692,075

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Claims 28, 33, 35, and 43 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Sassmannshausen in view of
IBM, Shvartsman, Kataoka, Fan and McGrew.
Claims 28, 32, 33, 35, and 43 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Sassmannshausen in view of
IBM, Shvartsman, Kataoka, Fan, McGrew and Abraham.
Claims 28, 33-36, 43, and 44 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Sassmannshausen in view of
IBM, Shvartsman, Kataoka, Fan, and McGrew, and further in view of
Hino and/or Hagan.

OPINION
The dispositive issue for the rejection on appeal is the following:
Did the Examiner err in determining that the combination of IBM,
Shvartsman, and Fan as well as the other cited references renders the subject
matter of independent claims 26, 28, and 43 obvious under § 103?

After thorough review of the respective positions provided by
Appellant and the Examiner, we agree with Appellant that the combination
of cited references does not render the subject matter of independent claims
26, 28, and 43 obvious within the meaning of § 103.
As to claim 26, Appellant argues that IBM does not teach the
holographic master transferring the already existing holographic diffraction
grating onto a casted polyimide and neither Shvartsman nor Kataoka
disclose casting a polyimide material onto a holographic master. Thus,
Appeal 2010-002411
Application 09/692,075

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Appellant concluded that the combination of IBM, Shvartsman and Kataoka
does not describe or suggest all the elements of claim 26. (Reply Br. 2-3).
As to claims 28 and 43, Appellant argues that the goal of IBM is to
eliminate the web development processing; Shvartsman is directed to stamp-
embossing processes; and Fan relates to photopolymerized thermoplastic
materials which are different from the photodefinable polyimide required by
the claimed invention. Appellant argues that the combination of IBM,
Shvartsman, and Fan as well as the other cited references provides the
utilization of different materials and different methods, including some
which would not be combinable with one another. (Reply Br. 4-7). Thus,
Appellant concluded that the combination of IBM, Shvartsman and Fan as
well as the other cited references do not provide a suggestion of the
combination necessary to render the claimed subject matter obvious and the
Examiner has not provided an adequate explanation as to why a person of
ordinary skill in the art would have made the selections necessary to render
the claimed invention obvious. (Id.).
The Examiner’s responses to Appellant’s arguments have been fully
considered but are not persuasive. The Examiner’s citation to the various
prior art references as well as the analysis provided in the Examiner’s
Answer are insufficient to establish obviousness within the meaning of
§ 103.
During examination, the Examiner bears the initial burden of
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
Appeal 2010-002411
Application 09/692,075

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conclusion of obviousness.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
“[T]he analysis that ‘should be made explicit’ refers not to the teachings in
the prior art of a motivation to combine, but to the court’s analysis.” Ball
Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993
(Fed. Cir. 2009).
For the foregoing reasons we reverse the Examiner’s stated rejections.

DECISION
The 35 U.S.C. § 103 rejections of claims 26, 28, 32-36, 43, and 44 are
reversed.

REVERSED

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HOUSTON ELISEEVA
420 BEDFORD ST
SUITE 155
LEXINGTON, MA 02420