Ex Parte Birnbaum et al

Patent Trial and Appeal BoardOct 26, 2017

13104129 (P.T.A.B. Oct. 26, 2017)

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. 13/104,129 05/10/2011 Andrew J. Birnbaum 100817-US1 1612 26384 7590 10/26/2017 NAVAL RESEARCH LABORATORY ASSOCIATE COUNSEL (PATENTS) CODE 1008.2 4555 OVERLOOK AVENUE, S.W. WASHINGTON, DC 20375-5320 EXAMINER TRAN, THIEN S ART UNIT PAPER NUMBER 3742 MAIL DATE DELIVERY MODE 10/26/2017 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 ANDREW J. BIRNBAUM and ALBERTO PIQUÉ ____________________ Appeal 2016-004349 Application 13/104,129 Technology Center 3700 ____________________ Before JENNIFER D. BAHR, JOHN C. KERINS, and SEAN P. O’HANLON, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Andrew J. Birnbaum and Alberto Piqué (Appellants)1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1–12. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 According to the Appeal Brief (Mar. 12, 2015; hereinafter “Appeal Br.”), the real party in interest is the Government of the United States of America, as represented by the Secretary of the Navy. Appeal 2016-004349 Application 13/104,129 2 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is the only independent claim and is representative of the claimed subject matter. 1. A method comprising: providing a source of laser energy; providing a substrate; wherein the substrate is transparent to the laser energy; wherein at least a portion of the substrate is coated with a release layer that absorbs the laser energy; wherein a component to be deformed is attached to the release layer opposed to the substrate; and wherein the component has at least one edge in contact with the release layer or substrate; directing the laser energy through the substrate and into a portion of the release layer; vaporizing the portion of the release layer by absorption of the laser energy, releasing a portion of the component from the substrate; and deforming the portion of the component away from the substrate by the vaporization of the release layer such that the at least one edge of the component is no longer in contact with the release layer or substrate, and leaving a second portion of the component still attached to non-vaporized release layer. REJECTIONS I. Claims 1, 2, 6, and 10 stand rejected under 35 U.S.C. § 102(b) as anticipated by Cheng (US 2007/0039933 A1, published Feb. 22, 2007).2 2 Although omitted from the statement of the rejection, claims 2, 6, and 10 are explicitly discussed in the detailed explanation of the rejection. Final Act. 2. Appeal 2016-004349 Application 13/104,129 3 II. Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Cheng and Friedman et al. (US 2003/0052103 A1, published Mar. 20, 2003, hereinafter “Friedman”). III. Claims 3 and 5 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Cheng and Arana et al. (US 2007/0004171 A1, published Jan. 4, 2007, hereinafter “Arana”). IV. Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Cheng and Kanbara et al. (US 6,197,408 B1, issued Mar. 6, 2001, hereinafter “Kanbara”). V. Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Cheng and Nakamura et al. (US 2007/0187674 A1, published Aug. 16, 2007, hereinafter “Nakamura”). VI. Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Cheng and Li (Ji Li and Gary J. Cheng, Multiple-Pulse laser dynamic forming of metallic thin films for microscale three dimensional shapes, J. Appl. Phys. 108, 013107 (2010)). VII. Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Cheng, Li, and Leiser et al. (US 2008/0257871 A1, published Oct. 23, 2008, hereinafter “Leiser”). DISCUSSION Independent claim 1 requires, in pertinent part, providing a substrate coated with a release layer, “wherein a component to be deformed is attached to the release layer” and “has at least one edge in contact with the release layer or substrate”; vaporizing a portion of the release layer by absorption of laser energy; and releasing from the substrate and deforming a Appeal 2016-004349 Application 13/104,129 4 portion of the component by the vaporization, “such that the at least one edge of the component is no longer in contact with the release layer or substrate, and leaving a second portion of the component still attached to non-vaporized release layer.” Appeal Br. 7 (Claims App.). In other words, claim 1 requires that the component have at least one edge in contact with the release layer or substrate prior to a portion of the component being released and deformed by vaporization of the release layer, and that the at least one edge of the component no longer be in contact with the release layer or substrate after the release and deformation. Id. Claims 2–12 depend, directly or indirectly, from claim 1, and, thus, incorporate these limitations of claim 1. Id. at 7–8. Each of the Examiner’s rejections is grounded in part on the Examiner’s finding that Cheng satisfies the aforementioned limitations of claim 1. Final Act. 2–11. Specifically, the Examiner finds that Cheng’s “component (workpiece 100, 500) has at least one edge (top edge of component 100 is in contact with the bottom ablative coating 120) in contact with the release layer (ablative coating 120) or the substrate” and that Cheng discloses deforming the portion of the component away from the substrate by the vaporization of the release layer such that at least one edge (workpiece 100) of the component is no longer in contact with the release layer or substrate (0022, causing the workpiece to deform in a direction away from the confining medium), and leaving a second portion of the component still attached to non- vaporized release layer (Figs 3, 4, shows second portion of the component 100 still attached to the non-vaporized release layer 120). Id. at 2–3. According to the Examiner, after removal of laser exposed areas of ablative coating 120 by ablation, “[t]he top edge of component 100 is no Appeal 2016-004349 Application 13/104,129 5 longer in contact with the ablative coating 120 because this coating has been removed by vaporization (ablation).” Id. at 4; Ans. 5. According to the Examiner, “[t]he component of Cheng as show[n] in figure 4 has a top annular edge that surrounds space 300 (0023),” and “before the laser deformation occurs, the top surface of workpiece 100 has a top surface edge that is in contact with the release layer.” Ans. 5. Appellants argue that “Cheng produces a bulge in the component” and that “[s]uch a bulge does not have the . . . claimed edge.” Appeal Br. 3; see Spec. ¶ 26 (emphasizing that the deformation of Appellants’ invention “causes at least one original edge of the component to be lifted from the substrate and release layer along with a portion of the area of the component,” which “differs from merely producing a bulge in the component”). More specifically, Appellants point out that claim 1 requires that “the same edge exists both before and after deformation.” Appeal Br. 4. Appellants also point out, correctly, that the line showing contact between Cheng’s component (workpiece 100) and ablative coating 120 represents a “surface of the component, not an edge.” Id. Appellants submit that, in Cheng, “[t]he portion of the surface that is deformed does not have an edge that is in contact with the substrate before the deformation, as recited in . . . claim 1” because “[t]he annular edge of Fig. 4 does not exist until after the deformation.” Id. Appellants acknowledge that “the component of [Cheng] may have a pre-existing edge around its perimeter (not shown in the drawings) that is initially in contact with the ablative coating,” but contend that “any such edge remains in such contact after the use of the laser.” Id. Appellants’ arguments are persuasive. As illustrated in Cheng’s Figures 1, 3, and 4, which show confining medium 130, ablative coating Appeal 2016-004349 Application 13/104,129 6 120, and workpiece 100 prior to the start of the laser dynamic forming process (Fig. 1), after the laser dynamic forming process has been started (Fig. 3), and after the laser dynamic forming process has been completed (Fig. 4), the top annular edge that surrounds space 300 does not exist prior to the deformation. See Cheng ¶¶ 5, 7, 8 (describing Figures 1, 3, and 4). Thus, this annular edge cannot correspond to the “at least one edge” recited in claim 1. A portion of the top surface of Cheng’s workpiece 100 that is in contact with ablative coating 120 prior to the start of the forming process (Fig. 1) is deformed during the forming process and may, in the event of complete ablation,3 be no longer in contact with ablative coating 120 after the forming process (Fig. 4). However, Cheng gives no indication that the formed portion (i.e., the portion no longer in contact with the ablation coating) includes an edge. See Cheng ¶¶ 21–23 (describing Figures 1, 3, and 4 as depicting “a cross-section of the workpiece” before, during, and after the forming process). For the above reasons, the Examiner does not establish, by a preponderance of evidence, that Cheng discloses the subject matter of claim 1. The Examiner does not articulate any reasoning, or rely on Friedman, Arana, Kanbara, Nakamura, Li, or Leiser for any teaching, that would overcome the aforementioned deficiency in Cheng. See Final Act. 5–11. Accordingly, we do not sustain any of the Examiner’s rejections of claims 1–12. 3 Cheng discloses that “[s]ome of the ablative layer 120 may remain on the formed portion of the workpiece as a result of incomplete ablation.” Cheng ¶ 23. Appeal 2016-004349 Application 13/104,129 7 DECISION The Examiner’s decision rejecting claims 1–12 is reversed. REVERSED