Ex Parte Lee

Patent Trial and Appeal Board

Mar 24, 2014

12079535 (P.T.A.B. Mar. 24, 2014)

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.
12/079,535 03/27/2008 Junwon Lee K52680 1784
7590 03/25/2014
Edwin Oh
Rohm and Haas Electronic Materials LLC
455 Forest Street
Marlborough, MA 01752
EXAMINER
GRAMLING, SEAN P
ART UNIT PAPER NUMBER
2875
MAIL DATE DELIVERY MODE
03/25/2014 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
____________

Ex parte JUNWON LEE
____________

Appeal 2012-001476
Application 12/079,535
Technology Center 2800
____________

Before CHARLES F. WARREN, PETER F. KRATZ, and
GEORGE C. BEST, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-6. We have jurisdiction pursuant to
35 U.S.C. § 6.

Appeal 2012-001476
Application 12/079,535

2
Appellant’s claimed invention is directed to a light guiding article
comprising a film substrate including a patterned surface having a plurality
of specified discrete surface features.
Claim 1 is illustrative and reproduced below:
1. A light-guiding article comprising: a film substrate that has at least
one patterned surface comprising a plurality of discrete surface
features and an incident edge that is substantially orthogonal to the at
least one patterned surface, wherein each surface feature in the
plurality of discrete surface features extends along a length direction
that is substantially parallel to the incident edge; and wherein, taken in
cross-section along the length direction, each surface feature has a
positively sloped portion, a substantially flat portion, and a negatively
sloped portion and wherein a first widthwise cross-section taken at a
first position through the positively sloped portion, a second
widthwise cross-section taken at a second position through the
negatively sloped portion and a third widthwise cross-section taken at
a third position through the substantially flat portion have the same
widthwise characteristic cross-sectional shape throughout.

The Examiner relies on the following prior art references as evidence in
rejecting the appealed claims:
Wang US 7,618,164 B2 Nov. 17, 2009
Parker US 6,827,456 B2 Dec. 7, 2004

The Examiner maintains the following grounds of rejection:
Claims 1, 3, 5, and 6 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Wang. Claim 2 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wang. Claim 4 stands rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Wang in view of Parker.
We reverse the stated rejections. Our reasoning follows.
Appeal 2012-001476
Application 12/079,535

3
Concerning the anticipation rejection over Wang, the Examiner has
not established that Wang describes a light-guiding article with all of the
features required by the so rejected claims. In this regard, each of the
independent claims (claims 1 and 6) require that the film substrate includes a
patterned surface having a plurality of specified discrete surface features.
The Examiner contends that the prisms 35 of Wang constitute discrete
surface features corresponding to Appellant’s claimed surface features
(Ans. 4). However, and as argued by Appellant, the surface features (prism
blocks) 35 as described by Wang are not discrete individual blocks, rather
“the material of the prism blocks are in a continuum or continuous
monolithic structure” (Wang, col. 5, ll. 60-63).
In this regard, the broadest reasonable construction of the claimed
light-guiding article having a patterned surface with a plurality of discrete
surface features, when read in light of the subject Specification, makes it
plain that Appellant employs the claim term “discrete” in a manner
consistent with the ordinary meaning of this term to limit the claimed
surface features to surface features that are spatially distributed or separate
entities that are not interconnected to each other (see, e.g., Spec. 6, ll. 1-10;
element 26, Figs. 2, 4, 6A-C, 7A, and 7B). Thus, the Examiner has not
established that the essentially monolithic structure of Wang, that is, the
connected irregular prism blocks 35 and/or regular prism blocks 33
described by Wang, describes a structure anticipating the claimed light
guiding article having a “patterned surface comprising a plurality of discrete
surface features” wherein each discrete surface feature of the patterned
surface has a “positively sloped portion, a substantially flat portion, and a
negatively sloped portion” with a widthwise cross-sectional shape taken in a
Appeal 2012-001476
Application 12/079,535

4
length direction as further required by either independent claims 1 or 6 for
reasons argued by Appellant (App. Br. 5, l. 28-6, l. 10; 6, l. 28-7, l. 4).
It follows that we do not sustain the Examiner’s anticipation rejection.
As for the separate obviousness rejections of dependent claims 2 and
4, the Examiner builds the latter rejections on the foundation of the
misplaced anticipation determination and does not articulate how Wang
alone or, in combination, with the other applied reference (claim 4) would
have overcome the deficiency in the base anticipation rejection of claim 1,
from which claims 2 and 4 depend (Ans. 5-6).
Accordingly, we shall also reverse both of the Examiner’s
obviousness rejections on this appeal record.

CONCLUSION
The Examiner’s decision to reject the appealed claims is reversed.

REVERSED

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