Ex Parte Mahnad et alDownload PDFPatent Trial and Appeal BoardFeb 28, 201714319312 (P.T.A.B. Feb. 28, 2017) Copy Citation 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. 14/319,312 06/30/2014 FARAMARZ MAHNAD ORAl 10385-US-CNT-l 2595 81505 7590 ORACLE (Oracle formerly d/b/a Sun Microsystems) 8055 East Tufts Avenue Suite 450 Denver, CO 80237 EXAMINER SULTANA, NAHIDA ART UNIT PAPER NUMBER 1743 NOTIFICATION DATE DELIVERY MODE 03/02/2017 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): ptomail @ mfblaw .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FARAMARZ MAHNAD and JOSEPH J. KOZAK Appeal 2016-003055 Application 14/319,312 Technology Center 1700 Before KAREN M. HASTINGS, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellants1 appeal the Examiner’s decision finally rejecting claims 1—8, 10-15, and 21 under 35 U.S.C. § 103(a). An amendment after final canceled claims 10 and 21 and amended claim 11 to include the limitations of claims 10 and 21 {see, e.g., Reply Br. 4). Thus, the claims on appeal are 1—8 and 11—14 (Amendment After Final filed Jan. 20, 2016, at 1—5). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). 1 The real party in interest is stated to be Oracle International Corporation. (Appeal Br. 1). Appeal 2016-003055 Application 14/319,312 We AFFIRM. Claims 1 and 11 are illustrative of the appealed subject matter (emphasis added to highlight key disputed limitations): I. A method for use in fabricating an embosser drum, comprising: making a plurality of replicas of an embossing master, wherein each of the replicas includes a pattern of nanostructures; bonding the plurality of replicas of the embossing master together in a particular orientation to create a bonded replica structure including a surface having a pattern of nanostructures thereon, wherein the pattern of nanostructures on the surface of the bonded replica structure comprises the combination of the patterns of nanostructures of the plurality of replicas of the embossing master; producing a replica of the bonded replica structure; and generating an embossing plate from the replica of the bonded replica structure. II. A method for producing at least one embosser drum that has a pattern of nanometer-scale grooves formed in an outer surface thereof, the method comprising: producing a plurality of replicas of an embossing master that has at least one surface with the pattern of nanometer-scale grooves therein, wherein each of the replicas of the embossing master comprises at least one surface with the pattern of nanometer-scale grooves therein; bonding the plurality of replicas of the embossing master together to create a bonded replica structure having at least one surface with the pattern of nanometer-scale grooves formed therein, wherein the bonded replica structure comprises at least one bonding seam between adjacent one of the replicas of the embossing master that extends generally parallel to the nanometer-scale grooves, and wherein a surface area of the at least one surface of the bonded replica structure is at least substantially the same as a surface area of the outer surface of the embosser drum to be formed; 2 Appeal 2016-003055 Application 14/319,312 producing a replica of the bonded replica structure; and using the replica of the bonded replica structure to create the embosser drum, wherein the using further comprises: performing an electroforming process on the at least one surface of the replica of the bonded replica structure to create a metallic shim, wherein the metallic shim comprises the pattern of nanometer-scale grooves on at least one surface thereof; and shaping the metallic shim to form the outer surface of the embosser drum. (Appeal Br. 12 (Claims App.); Amendment After Final filed Jan. 20, 2016, at 4). REFERENCE AND REJECTION ON APPEAL The Examiner maintains the rejection of claims 1—8 and 11—14 under 35 U.S.C. § 103(a) as unpatentable over Slafer (US 2008/0106001 Al, published May 8, 2008) (hereinafter “Slafer”).2 With the exception of claims 3—7, Appellants do not make separate substantive arguments in support of patentability of any of the claims (see generally Appeal Br. 3—11; Reply Br. 2—5). Accordingly, our discussion will focus on the obviousness rejection of independent claims 1 and 11. Claims 8 and 12—14 stand or fall with each of their respective independent claims. 37 C.F.R. § 41.37(c)(l)(vii). Claims 3—7 will be addressed separately. 2 In the Examiner’s Second Answer mailed January 20, 2016 (hereinafter “2nd Ans.”), at 3, the Examiner maintains the rejection of claim 15. Appellants, however, canceled claim 15 in the Amendment After Final filed Jan. 20, 2016, at 5. 3 Appeal 2016-003055 Application 14/319,312 ANALYSIS Upon consideration of the appeal record including Appellants’ position in this appeal as set forth on pages 3—11 of the Appeal Brief and pages 2—5 of the Reply Brief, we affirm the rejection for the reasons stated by the Examiner (Final Office Action mailed May 21, 2015, 3—12; Examiner’s Answer mailed November 20, 2015, 2—12; and 2nd Ans. 3—11). We add the following for emphasis. It has been established that “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). With respect to claims 1 and 11, Appellants’ main arguments focus on the Examiner’s alleged failure to demonstrate that Slafer suggests the limitations “producing a replica of the bonded replica structure” and, thereafter, using such a replica of the bonded replica structure to create/generate the embosser drum/plate (Appeal Br. 4—6, 10-11; Reply Br. 2—3, 4). Specifically, Appellants argue that because “Slafer discloses directly forming the welded metal elements 202 of Figure 2B into a cylindrical tool/drum [,]... an ordinary artisan would have no reason to additionally generate an embossing plate from the metal elements 202, and then form such an embossing plate into an embosser drum” (Appeal Br. 6, (citing Slafer Fig. 2B, || 32 and 35); see also Reply Br. 2—3, 4). Appellants further argue the Examiner’s reliance upon 174 of Slafer merely “suggests that, when an electroforming process is formed on the ganged/butted/joined together structure, the generated continuous single strip element would itself 4 Appeal 2016-003055 Application 14/319,312 be an embossing plate” (Reply Br. 2). Therefore, according to Appellants, “there is no disclosure or suggestion that an embossing plate would be generated from the continuous single strip structure” (id. ). We disagree for reasons well stated by the Examiner (Ans. 2-A\ 11— 15). As aptly pointed out by the Examiner, Slafer does not teach forming [a] replica of the bonded replica [in the embodiment disclosed in Figure 2B], however, because Slafer in a different embodiment. . . teaches forming [a] replica of a bonde[d] replica to create at least one embosser drum (or belt), (see [0074]—[0075]), thus it would have been obvious to one ordinary skill in the art at the time of the applicant’s invention to combine the process with further including producing [a] replica of the bonded replica in combination with electroforming, as taught by Slafer, in order to create a continuous or elongated pattern structure with reduced seam.... (2nd Ans. 9-10 (citing Slafer H 47, 74-75)). Under the flexible inquiry set forth by the Supreme Court (see Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009)), the PTO must take account of the inferences that a person of ordinary skill in the art would have made, such as the inference that a (‘“mirror image’) continuous single strip element,” , “can ... be utilized to form a near-seamless pattern on the outer . . . surface of a cylindrical by the transfer of a complementary pattern (by any of the replicating/imprinting methods known to the art, such as thermal embossing, etc.) from a patterned cylinder of larger diameter . . . .” Slafer || 74, 75; see also Fig. 4. Furthermore, Appellants acknowledge that Slafer teaches “forming a first generation copy of an original relief pattem/template, forming a second- generation copy from a first-generation copy, etc.” (Appeal Br. 4 (citing 5 Appeal 2016-003055 Application 14/319,312 Slafer || 36—37)). Based on Slafer’s disclosures, the ordinary skilled artisan would have reasonably inferred that such a mirror image continuous strip could be used to create a ‘“second generation’” replica of the bonded replica, substantially devoid of seams, which could then be used to produce a single metallic shim to create/generate the embosser drum/plate (see Spec. 137; Fig. 3). It is well settled that a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in this art would have reasonably been expected to draw therefrom. See In re Frit eh, 972 F.2d 1260, 126A-65 (Fed. Cir. 1992). Thus, Appellants have not shown reversible error in the Examiner’s determination that one of ordinary skill in the art, using no more than ordinary creativity, would have gleaned from Slafer’s disclosure that one could produce a replica of the bonded replica structure and, thereafter, use such replica of the bonded replica structure to create/generate the embosser drum/plate as required by claims 1 and 11. With respect to claims 3—7, Appellants argue that “the Examiner’s above modification of Figure 2B of Slafer would actually not even reduce the number of seams in the first place” (Appeal Br. 7, 9; Reply Br. 3—4). These arguments are not persuasive of error in the Examiner’s rejection. As set forth above, the Examiner’s modification of Slafer’s Figure 2B would have resulted in a replica of the bonded replica that is substantially devoid of seams. As the Examiner determined, “it would have been obvious to one [of] ordinary skill[] in the art at the time of the applicant’s invention to modify the bonding arrangement in accordance with the specific type of patterns being bonded, for the benefit of forming a seamless[] or improved seam single master” (2nd Ans. 7 (citing Slafer Abstract, 172); see generally 6 Appeal 2016-003055 Application 14/319,312 2nd Ans. at 5—8). We have no doubt that such bonding arrangement modifications would have been within the level of ordinary creativity in the art based on the applied prior art of Slafer. See Perfect Web Techs., Inc. v. Info USA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (“We therefore hold that while an analysis of obviousness always depends on evidence that supports the required Graham factual findings, it also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.”). Thus, we affirm the rejection of claims 1—8 and 11—14. DECISION The appealed rejection is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation