KONINKLIJKE PHILIPS N.V.

Patent Trials and Appeals Board

Mar 14, 2022

2021000936 (P.T.A.B. Mar. 14, 2022)

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. 15/874,068 01/18/2018 Remco Van Brakel 2013P00442US 2993 24737 7590 03/14/2022 PHILIPS INTELLECTUAL PROPERTY & STANDARDS 1600 Summer Street 5th Floor Stamford, CT 06905 EXAMINER ROBINSON, MICHAEL ART UNIT PAPER NUMBER 1744 NOTIFICATION DATE DELIVERY MODE 03/14/2022 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): marianne.fox@philips.com patti.demichele@Philips.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte REMCO VAN BRAKEL and MARCUS ANTONIUS VERSCHUUREN1 ____________ Appeal 2021-000936 Application 15/874,068 Technology Center 1700 ____________ Before MICHAEL P. COLAIANNI, MICHELLE N. ANKENBRAND, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1-4, 6-15, and 18-23. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. BACKGROUND The subject matter on appeal relates to imprint lithography and, more particularly, to patterned stamps used in imprint lithography processes. E.g., 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Koninklijke Philips Electronics NV. Appeal Br. 2. Appeal 2021-000936 Application 15/874,068 2 Spec. 1; Claim 1. Claim 1 is reproduced below from page 16 (Claims Appendix) of the Appeal Brief (emphasis added to key disputed limitation): 1. A patterned stamp for use in imprint lithography, the patterned stamp comprising: a stamp body, wherein, in a non-stressed state, the stamp body comprises a contoured stamp surface carrying a pattern of relief features, wherein the contoured stamp surface corresponds to a non-planar contour of a receiving surface, wherein the stamp body includes a support layer and a first layer supported by the support layer, wherein the first layer comprises the contoured stamp surface carrying the pattern of relief features, wherein the support layer comprises a different material than the first layer, wherein the first layer comprises a rubber-like layer having a first Young’s modulus, wherein the support layer comprises a rubber-like layer having a second Young’s modulus, and wherein the first Young’s modulus is equal to or larger than the second Young’s modulus. REJECTIONS ON APPEAL The claims stand rejected as follows: 1. Claims 1-4, 6-15, and 18-23 under 35 U.S.C. § 112(a) for failure to comply with the written description requirement. 2. Claims 1-4, 6-15, and 18-23 under 35 U.S.C. § 112(b) as indefinite. 3. Claims 1, 3, 4, 15, and 18-22 under 35 U.S.C. § 103 as unpatentable over Chen (US 2010/0109203 A1, published May 6, 2010). Appeal 2021-000936 Application 15/874,068 3 4. Claims 2, 21, and 22 under 35 U.S.C. § 103 as unpatentable over Chen and Verschuuren (US 2011/0094403 A1, published Apr. 28, 2011). ANALYSIS Rejections 1 and 2 Claim 1 recites, inter alia, that “in a non-stressed state, the stamp body comprises a contoured stamp surface carrying a pattern of relief features.” The Examiner determines that the “non-stressed state” limitation lacks written description support under 35 U.S.C. § 112(a) (Rejection 1) and is indefinite under 35 U.S.C. § 112(b) (Rejection 2). We begin with the § 112(b) rejection (Rejection 2). A claim is indefinite under 35 U.S.C. § 112(b) when it contains words or phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1309 (Fed. Cir. 2014). “[D]uring patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed.” In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). In the Final Action, the Examiner determines that the phrase “in a non-stressed state,” which appears in each claim directly or through claim dependency, renders the claims indefinite because “[i]t is not clear if the term[] refer[s] to the amount of pressure exerted during contact as described on pg. 8 of the instant specification, or refers to a different stress during molding.” Final Act. 3. In the Answer, the Examiner explains that it is also unclear “if outside stress is claimed or internal stresses.” Ans. 6. The Appellant argues that “the phrase ‘in a non-stressed state’ is a well-recognized phrase having a plain meaning that is consistent with the Appeal 2021-000936 Application 15/874,068 4 applicants’ specification and claims.” Appeal Br. 9. The Appellant provides a dictionary definition stating that a “stress” is a “constraining force or influence” such as “a force exerted when one body or body part presses on, pulls on, pushes against, or tends to compress or twist another body or body part.” Id. at 10 (citing the Merriam-Webster Dictionary). The Appellant argues that “the non-stressed state is the ‘ordinary’ shape of the stamp when no pressure is applied to the stamp.” Id. Particularly in view of the Federal Circuit’s instruction that, “during patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed,” Zletz, 893 F.2d at 321, we are not persuaded of reversible error in the Examiner’s rejection. There is no dispute that the Specification does not use the terms “stressed,” “non-stressed,” or “state.” Thus, the Specification does not meaningfully inform whether the term refers to internal stresses, external stresses, or both. Nor does the Appellant’s provided dictionary definition, which refers both to stresses from another body (i.e., external stresses) and to stresses from one “body part” on another “body part” (i.e., internal stresses). The Appellant’s position appears to be that the term refers only to external stresses because internal stresses would include “molecular level” stresses and “would render the applicant’s term ‘un-stressed state’ meaningless.” Reply Br. 2. The Examiner, however, does not rely on “molecular level” stresses, and instead relies on the undisputed fact that some of Figure 2’s layers are under a permanent internal stress because of deformation by a support layer. We agree with the Examiner that it is not adequately clear whether the disputed term is intended to encompass such Appeal 2021-000936 Application 15/874,068 5 internal stresses, particularly in view of the Specification’s failure to use the words “stressed” and “non-stressed.” Accordingly, we affirm the Examiner’s rejection under § 112(b). For similar reasons, we affirm the Examiner’s rejection under § 112(a) (Rejection 1). As noted above, the Specification does not use the words “stressed,” “non-stressed,” or “state,” and thus does not provide express support for the disputed term. The Appellant relies on Figure 2(f) as depicting-and showing possession of-a stamp body “in a non-stressed state” that comprises a contoured stamp surface. Appeal Br. 11-12. However, there does not appear to be any meaningful dispute that, in Figure 2(f), the contoured stamp surface is under a permanent source of stress by way of forces exerted on it by support layer 140. E.g., Spec. 10. Thus, whether or not Figure 2 depicts a stamp body in a “non-stressed state” depends at least in part on whether the term “non-stressed state” encompasses internal stresses. If it does, then Figure 2(f) does not depict or show possession of a stamp body in a “non-stressed state” because Figure 2(f) depicts contoured surface held in a permanently stressed state. On this record, the Appellant has not identified reversible error in the Examiner’s § 112(a) rejection. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections . . . .”); cf. Zletz, 893 F.2d at 321 (“[D]uring patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed.”). Appeal 2021-000936 Application 15/874,068 6 Rejections 3 and 4 We summarily reverse the § 103 rejections due to the lack of claim clarity described above. See In re Steele, 305 F.2d 859, 862 (CCPA 1962). In addition to the ambiguities described above, we also note that it is unclear whether the term “non-stressed state” contemplates stresses such as gravity and/or the upward force of a substrate on a stamp layer. For example, Chen expressly describes “conformal contact without external pressure.” E.g., Chen ¶ 7. The plain language of that disclosure appears to be relevant to the claim recitation “non-stressed state.” However, in Chen’s Figure 3, at least gravity and the upward force of the receiving surface on the stamp surface are involved stresses. It is unclear whether the disputed term encompasses such stresses. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-4, 6-15, 18-23 112(a) Written Description 1-4, 6-15, 18-23 1-4, 6-15, 18-23 112(b) Indefiniteness 1-4, 6-15, 18-23 1, 3, 4, 15, 18-22 103 Chen 1, 3, 4, 15, 18-22 2, 21, 22 103 Chen, Verschuuren 2, 21, 22 Overall Outcome 1-4, 6-15, 18-23 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED