Ex Parte Padiyath et al

Patent Trial and Appeal Board

Dec 22, 2017

14232781 (P.T.A.B. Dec. 22, 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.
14/232,781 03/27/2014 Raghunath Padiyath 67396US005 1826
32692 7590 12/27/2017
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
PICHLER, MARIN
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
12/27/2017 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAGHUNATH PADIYATH, CHARLES A. MARTTILA, and
BING HAO1
Appeal 2017-006548
Application 14/232,781
Technology Center 2800
Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS, and
JEFFREY R. SNAY, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the real party in interest as 3M Company (formerly
known as Minnesota Mining and Manufacturing Company) of St. Paul,
Minnesota and its affiliate 3M Innovative Properties Company of St. Paul,
Minnesota.
Appeal 2017-006548
Application 14/232,781
STATEMENT OF THE CASE
Appellants request our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1—19, which constitute all the claims
pending in this application. We have jurisdiction over the appeal under 35
U.S.C. § 6(b).
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of Appellants’ subject matter on appeal and is
set forth below (with text in bold for emphasis):
1. A solar light redirecting glazing construction
comprising:
a first glazing substrate having a first major surface and a
second major surface;
a first solar light redirecting layer disposed on the first
major surface of the first glazing substrate, the first solar light
redirecting layer comprising a micro structured surface
forming a plurality of prism structures; and
a second solar light redirecting layer disposed on the
second major surface of the first glazing substrate, the second
solar light redirecting layer comprising a microstructured
surface forming a plurality of prism structures, wherein at least
one of the first or the second microstructured surface
comprises an ordered arrangement of a plurality of
asymmetric refractive prisms,
such that the first solar light redirecting layer and the
second solar light redirecting layer are not identical or are
not mirror images.
2
Appeal 2017-006548
Application 14/232,781
THE REFERENCES
The Examiner relies on the following prior art references as evidence
of unpatentability:
Negishi US 4,657,355 Apr. 14, 1987
Padiyath et al. WO 2011/084391 A2 Dec. 14,2011
(hereafter “Padiyath”)
THE REJECTIONS
1. Claims 3 and 16 are rejected under 35 U.S.C. § 112(b) or 35
U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite.
2. Claims 1—3 and 7—16 are rejected under pre-AIA 35 U.S.C.
§ 102(b) as being anticipated by Negishi.
3. Claim 4—6 and 17—19 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Negishi in view of Padiyath.
ANALYSIS
Rejection 1
At issue in this rejection is whether the term “misregistered” as recited
in claims 3 and 16 is indefinite.
It is the Examiner’s position that this term is a relative term and is not
defined by the claim. The Examiner also states that the Specification does
not provide a standard for ascertaining the requisite degree, and one of
3
Appeal 2017-006548
Application 14/232,781
ordinary skill in the art would not be reasonably apprised of the scope of the
invention. The Examiner also states that this term is not defined in the
Specification with sufficient specificity in order for one of ordinary skill in
the art to determine the meets and bounds of the claims. We refer to pages
4—5 of the Final Office Action regarding the Examiner’s position in its
entirety.
It is Appellants’ position that the definition of the term
“misregistered” is common terminology for one of skill in the art of
structured elements. Appeal Br. 4. Reply Br. 1. Appellants refer to pages 6
and 7 of the Specification which specifically defines this term. Appeal Br. 4.
Appellants also refer to U.S. Patent 9,250,368 which discloses this term.
Appeal B. 4. Reply Br. 1. Appellants further explain that if one has two
arrays of structured repeating elements that are placed parallel to each other,
the arrays are either going to be registered or misregistered (either the
elements of the arrays are going to be aligned or they are going to offset
from each other). Reply Br. 1. Appellants include figures on page 2 of the
Reply Brief to further illustrate what is meant by registered and
misregistered. Appellants explain that Figure 1 shows two patterns that are
registered, point A is in correspondence with point B, and Figure 2 shows
misregistration, point C does not correspond with point D, the two
patterns are not aligned. Appellants further explain how Figures 1 and 2 do
not have any incoming solar light, rather they merely illustrate how two
patterns are arrayed relative to each other. Reply Br. 1.
We are persuaded by Appellants’ stated position in the record as
summarized above, and note that the indefmiteness inquiry asks whether the
claims “circumscribe a particular area with a reasonable degree of precision
4
Appeal 2017-006548
Application 14/232,781
and particularity. It is here where the definiteness of the language employed
must be analyzed —not in a vacuum, but always in light of the teachings of
the prior art and of the particular application disclosure as it would be
interpreted by one possessing the ordinary level of skill in the pertinent
art.”). See In re Moore, 439 F.2d 1232, 1235 n.2 (CCPA 1971). In the
instant case, Appellants’ stated position satisfactorily explains how the claim
term is definite. Contrary to the Examiner’s stated position, the term is
defined in the Specification on page 6. We thus reverse Rejection 1.
Rejection 2
Claims 1-3, and 7-16 stand rejected under 35 U.S. C. § 102(b) as
being anticipated by Negishi. Appellants submit that Negishi does not
teach each and every element of the claims.
Appellants state that their claim 1 concerns an ordered arrangement
of a plurality of asymmetric refractive prisms arranged to refract light.
Appeal Br. 4. Appellants state that “refraction” is defined in Wikipedia
as follows: “[rjefraction is the change in direction of a wave due to a
change in its transmission medium”. Appeal Br. 4. Appellants state that
thus refraction changes the direction of light only. Id. As such, the
recitations of “redirecting layer”, solar light “redirecting glazing
construction”, and “ordered arrangement of a plurality of asymmetric
refractive prisms” each indicate a change in the direction of light only,
which is distinguished from changing both width and direction of light.
Appellants therefore argue that the arrangement in Negishi does not meet
5
Appeal 2017-006548
Application 14/232,781
these claim requirements because Negishi teaches Fresnel plates which are
lenses for focusing light that changes both light width and direction.
Appeal Br. 4—5. Appellants argue that their claimed solar light redirecting
construction does not involve lenses, and does not involve changing of
light width. Thus, the claimed construction does not have the specific
configuration or elements required of a Fresnel lens; rather the claimed
construction involves an ordered arrangement of refractive prisms for
changing the direction of light (“redirecting” light), without changing the
light width. Appeal Br. 5. Thus, Appellants’ point is that the arrangement
of Negishi is therefore different from the claimed ordered arrangement
involving “redirecting” of light. Appeal Br. 4—5.
The Examiner’s response is set forth on pages 5—9 of the Answer,
which we do not repeat in its entirety herein. Essentially, the Examiner
states that both prisms and lenses act by refraction of light. Ans. 5—6. The
Examiner states that the change in direction due to the refraction utilized is
a matter of design. Ans. 6. The Examiner states that Appellants’ assertion
that Fresnel plates are not prisms but are lenses for focusing light is
attorney argument unaccompanied by evidentiary support. Id. The
Examiner asserts that Negishi’s Fresnel plates do in fact redirect solar light.
Ans. 6.
In reply, Appellants argue that, as they explained in the Appeal
Brief, the presently claimed arrangement of an asymmetrical array of
prisms refracts light only (redirects light), and does not change the width
(i.e., focus light), and that light is not focused because the presently
6
Appeal 2017-006548
Application 14/232,781
claimed construction is “redirecting” sunlight upwards into the room to
provide lighting. Reply Br. 3. Hence, as stated supra, claim terms such as
“redirecting layer” and “solar light redirecting glazing construction”
indicates a change in the direction of light only which is distinguished
from changing both width and direction of light as in Negishi. To further
make this point, Appellants discuss Negishi’s Figure 28 (which the
Examiner relies upon in part in the rejection (Final Act. 6—7)). Reply Br.
4—5. Appellants explain how the structure shown in Figure 28 in fact has
registered arrays, rather than misregistered arrays, indicative of a different
structure affecting different results.2 Reply Br. 4—5. Appellants also point
to multiple teachings in Negishi supporting the position that Negishi’s
Fresnel plates are lenses that focus light. Appeal Br. 4—6. Reply Br. 3—5.
We agree, and note that the Examiner fails to adequately explain why
Negishi’s light-focusing Fresnel plate anticipates the claimed light
redirecting layer in view of the fact that Negishi is a light-focusing lens
and the present claims concern a construction designed to redirect light.
We are thus persuaded by Appellants’ arguments in the record. We
therefore reverse Rejection 2.
2 Thus, contrary to the Examiner’s position that mere attorney argument is
presented, Appellants refer to evidence in the record indicating how the
structure of Negishi does not anticipate Appellants’ claimed solar light
glazing construction.
7
Appeal 2017-006548
Application 14/232,781
Rejection 3
The Examiner does not rely upon the additionally applied references
in Rejection 3 to cure the stated deficiencies of Negishi applied in
Rejection 2. We thus reverse Rejection 3 also.
DECISION
Each rejection is reversed.
REVERSED
8