Ex Parte Sreenivasan et al

Board of Patent Appeals and Interferences

Aug 30, 2012

10264960 (B.P.A.I. Aug. 30, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/264,960 10/04/2002 Sidlgata V. Sreenivasan P48-19-02 5251
25108 7590 08/31/2012
MOLECULAR IMPRINTS
PO BOX 81536
AUSTIN, TX 78708-1536
EXAMINER
VARGOT, MATHIEU D
ART UNIT PAPER NUMBER
1742
MAIL DATE DELIVERY MODE
08/31/2012 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 SIDLGATA V. SREENIVASAN and MICHAEL P.C. WATTS
____________

Appeal 2011-000017
Application 10/264,960
Technology Center 1700
____________

Before CHARLES F. WARREN, PETER F. KRATZ, and
ROMULO H. DELMENDO, 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 10-15, 23-27, and 32-34. We have
jurisdiction pursuant to 35 U.S.C. § 6.

Appeal 2011-000017
Application 10/264,960

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Appellants’ claimed invention is directed to a method of replicating
features having minimal dimensional variability using a substrate that can
have topological variations by forming a volume of a flowable material on a
substrate region, forming from said volume of flowable material plural
features on said substrate region, and transferring the plural features into the
substrate, wherein the region is established so as to have an area that
provides for a maximum substrate region planarity to minimize dimensional
variations among a subset of the transferred features (claims 10 and 25).
The maximum planarity is disclosed as being achieved by selecting a
substrate area that has a location and a minimum substrate area over which
the features (vias) to be replicated can be formed, which substrate region
correspondingly has maximum planarity (Spec. paras 0031 and 0032).
According to Appellants, by such appropriate selection of the substrate
region, including the area thereof, the formed volume of flowable material
can be small enough to allow for an imprinting layer of sufficiently small
thickness (t2) that height differential ( h) of an imprinting layer is
minimized; hence, allowing greater control over the dimensions and
distortions (minimal dimensional variability) of features transferred into the
substrate (Spec. 0029-0032; Figs. 4-11).
Claim 10 is illustrative and reproduced below:
10. A method of arranging features, on a substrate having topological
variations, to replicate features having minimal dimensional variability, said
method comprising:
forming a volume of flowable material on a region of said substrate,
said region having an area associated therewith;
forming, from said volume of flowable material, a plurality of features
on said region; and
transferring said plurality of features into said substrate, defining
transferred features, with said area of said region being established to
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Application 10/264,960

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maximize a planarity of said region in a first direction to minimize
dimensional variations among a subset of said transferred features in a
second direction orthogonal to said first direction.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Napoli US 4,731,155 Mar. 15, 1988
Willson US 6,334,960 B1 Jan. 1, 2002
Shih US 2004/0029041 A1 Feb. 12, 2004

Claims10, 32, and 34 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Napoli. Claims10, 32, and 34 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Shih. Claims 10, 11, 23, 25-27, and 32-34
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Napoli or
Shih. Claims 12-25 and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Napoli or Shih in view of Willson.
We reverse the stated rejections. Our reasoning follows.
The Examiner has the initial burden of establishing a prima facie case
of anticipation by pointing out where all of the claim limitations appear,
either expressly or inherently, in a single reference. See In re Spada, 911
F.2d 705, 708 (Fed. Cir. 1990); Corning Glass Works v. Sumitomo Elec.
U.S.A., Inc., 868 F.2d 1251, 1255-56 (Fed. Cir. 1989); In re King, 801 F.2d
1324, 1327 (Fed. Cir. 1986). Moreover, it is well settled that the Examiner
has the initial burden of establishing a prima facie case of obviousness under
35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)
(“[T]he examiner bears the initial burden, on review of the prior art or on
any other ground, of presenting a prima facie case of unpatentability.”).
Appeal 2011-000017
Application 10/264,960

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As for the anticipation rejections, the Examiner bears the burden to
establish that each of Napoli and Shih expressly or inherently describes a
method that satisfies all of the limitations of the so rejected claims.
Appellants argue that the Examiner has not met this burden at least
because the Examiner has not reasonably established that Napoli or Shih
inherently describe a method wherein “transferred features have their
dimensional variations minimized” as required by independent claim 10 (Br.
4, 6, and 7).
We agree. Even if each of Napoli and Shih describe a method for
transferring features formed in a resin planarizing layer into a substrate as
contended by the Examiner (Ans. 3-7 and 10-13), the Examiner has not
carried the burden to establish that such, by itself, necessarily results in
method(s) that include transferring a plurality of features formed from a
volume of flowable material on a substrate region having an area that is
established to maximize a planarity of the region in a first direction into a
substrate in a manner “to minimize dimensional variations among a subset of
said transferred features. . . .” as required by rejected independent claim 10.
It is well settled that “[i]nherency, however, may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.” Continental Can Co.
USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (quoting
In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)).
Here, the Examiner has not supported, with persuasive evidence
and/or sufficient reasoning, the Examiner’s argued inherency positions.
Instead, the Examiner seems to have taken an unreasonably broad claim
construction together with an incorrect reading of each of the applied
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Application 10/264,960

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references’ disclosures to, at best, establish a probability that the claim
requirements could have been met, but that is not sufficient for showing
inherency.
Accordingly, we reverse the anticipation rejections.
Similarly, the obviousness rejections maintained by the Examiner are
premised on the flawed inherency rationales “discussed supra” (Ans. 7 and
9). Moreover and to the extent the Examiner is asserting a separate
“obviousness” rationale (Ans. 8 and 9), it suffers from an incorrect
interpretation of the claimed subject matter and insufficient facts to establish
that the applied references teach or suggest a method corresponding to the
method required by the rejected claims. In the first stated obviousness
rejection, the Examiner has not established that either of the applied
references inherently teach or would have suggested [to one of ordinary skill
in the art] a method for transferring features into a substrate that includes
forming the features from a volume of flowable material on a region of the
substrate, which region has an area that was established or selected to
maximize the region’s planarity and such that by transferring these features
into the substrate the dimensional variations among a subset of the
transferred features are minimized, as required by independent claims 10 and
25. For example, the Examiner’s reference to a region being predetermined
and the interpretation of the claim 10 limitation advocated by the Examiner
in the first stated obviousness rejection (Ans. 8 and 9) indicates that the
Examiner is applying the references to an overly broad interpretation of or
misconstruction of claim 10. As indicated above, Applicants’ claim 10
process requires the selection of a substrate region for forming features
thereon that has particular attributes including an area [minimum area over
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Application 10/264,960

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which features to be transferred can be formed] that is established to
maximize planarity and minimize dimensional variation among a subset of
transferred features (claim 10; Spec. paras. 0029-0032)).
In the second stated obviousness rejection, the Examiner relies on
Willson for allegedly suggesting features required by certain dependent
claims rather than for suggesting the limitations of the independent claims
(Ans. 9 and 10). Thus, Willson does not remedy the deficiencies in the base
rejection.
On this record, the Examiner has not identified any teachings in the
applied references utilized in the obviousness rejections that teach or suggest
a method corresponding to the claimed method. It follows that we reverse
the Examiner’s obviousness rejections.

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

REVERSED

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