Ex Parte Sheth et al

Patent Trial and Appeal BoardNov 25, 2015

11374972 (P.T.A.B. Nov. 25, 2015)

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. 11/374,972 03/15/2006 Sanjay C. Sheth 10-3697-00 9779 105639 7590 11/25/2015 Duane Morris LLP (10/11) Seagate IP Docketing 2475 Hanover Street Palo Alto, CA 94304-1194 EXAMINER SMITH, NICHOLAS A ART UNIT PAPER NUMBER 1754 MAIL DATE DELIVERY MODE 11/25/2015 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 SANJAY C. SHETH AND JAMES S. LEE1 ____________ Appeal 2013-005848 Application 11/374,9722 Technology Center 1700 ____________ Before TERRY J. OWENS, LINDA M. GAUDETTE, and RICHARD M. LEBOVITZ, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON APPEAL This appeal involves claims directed to methods of manufacturing an electrode. The Examiner has finally rejected the claims as obvious under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 134. The Examiner’s rejections are affirmed. STATEMENT OF CASE Claims 11, 16–23, and 29–31 are pending and stand finally rejected by the Examiner as follows: 1. Claims 18–20 and 31 under 35 U.S.C § 102(a) as anticipated by 1 According to Appellants, the real party in interest is Seagate Technology, LLC. Appeal Br. 3. 2 “The ’972 application.” Appeal 2013-005848 Application 11/374,972 2 Yasuda.3 Answer 4. 2. Claims 11, 22, and 23 under 35 U.S.C § 103(a) as obvious in view of Lee,4 Cheng,5 and Yung.6 Answer 5. 3. Claims 16 and 21 under 35 U.S.C § 103(a) as obvious in view of Lee, Cheng, Yung, and JP ’577. 7 Answer 6. 4. Claim 17 under 35 U.S.C § 103(a) as obvious in view of Lee, Cheng, Yung, JP ’577, and Yang.8 Answer 7. 5. Claims 29 and 30 under 35 U.S.C § 112, first paragraph, as failing to comply with the written description requirement. Answer 8. Claims 11 and 18 are representative and read as follows: 11. A method of manufacturing an electrode, the method comprising ablating portions of a dielectric layer by forming a groove pattern in the dielectric layer on a conductive block by a laser or a focused energy beam having a pulse time of a nanosecond or less, wherein the dielectric layer has a lower ablation threshold than that of the conductive block, and wherein the ablating is performed with substantially no ablation of the conductive block. 18. A method of manufacturing an electrode comprising forming a groove pattern on a surface of a conductive block by ablation of portions of the conductive block, wherein the groove pattern comprises grooves having a feature width between 1 to 100 microns, and forming a dielectric material in the groove pattern. 3 Yasuda et al., WO 2005/072098 A2 published Aug. 11, 2005 (“Yasuda”). 4 Lee et al., US 6,379,528 B1 issued Apr. 30, 2002 (“Lee”). 5 Cheng et al., US 6,829,517 B2 issued Dec. 7, 2004 (“Cheng”). 6 Yung et al., US 2004/0084810 A1 published May 6, 2004 (“Yung”). 7 Omura et al., JP53-140577 published Dec. 7, 1978 (“Omura”). 8 Yang et al., US 6,361,928 B1 issued Mar. 26, 2002 (“Yang”). Appeal 2013-005848 Application 11/374,972 3 1. ANTICIPATION BY YASUDA Claim 18 is directed to a method of manufacturing an electrode. The method comprises the steps of 1) “forming a groove pattern on a surface of a conductive block by ablation of portions of the conductive block”; and 2) “forming a dielectric material in the groove pattern.” The Examiner found Yasuda teaches “creating a conductive pattern defined by lands provided by groove machining the electrode substrate surface.” Yasuda ¶ 18; Answer 4. The Examiner found that the “groove machining” could be accomplished by “laser machining” (Yasuda ¶ 20; Answer 4), which meets the first step of claim 1 of forming a groove by ablation. Answer 4. The Examiner also found that Yasuda describes forming a dielectric in the groove patterns, citing to element 4 in Fig. 4C of Yasuda. Id. Appellants contend that Yasuda does not teach ablation as claimed. Appeal Br. 20. The Examiner responded by providing evidence that “ablation” as recited in the claim would be accomplished by “laser machining.” First, the Examiner provided evidence that ablation is defined as the “removal” of material and “loss of a part . . . by melting or vaporization.” Answer 9 (citing from www.merriam-webster.com). The Examiner further cited a dictionary definition that “machining” would also result in removing material from a surface (“See Merriam-Webster’s Dictionary at www.merriamwebster.com, defining ‘machining’ as ‘to process by or as if by machine; especially: to reduce or finish by or as if by turning, shaping, planing, or milling by machine-operated tools.’”). Id. Based on the Appeal 2013-005848 Application 11/374,972 4 dictionary definitions, the Examiner concluded that “laser machining” would remove or reduce material from the surface and constitute “ablation.” In addition, the Examiner noted that the ’972 application discloses that grooves could be made by “laser ablation” (’972 application at ¶ 32), providing further evidence that “laser machining” is a form of ablation. Answer 9. Appellants did not identify a defect in the Examiner’s reasoning. Because we find the reasoning sound and supported by factual evidence, we shall affirm the rejection of claim 18. Claims 19, 20, and 31 were not argued separately and fall with claim 18 and for the reasons set forth by the Examiner. 37 C.F.R. § 41.37(c)(1)(vii). 2. OBVIOUSNESS IN VIEW OF LEE, CHENG, AND YUNG Claim 11 is drawn to a method of manufacturing an electrode. The method comprises “ablating portions of a dielectric layer by forming a groove pattern in the dielectric layer on a conductive block by a laser or a focused energy beam.” The “dielectric layer has a lower ablation threshold than that of the conductive block” and “the ablating is performed with substantially no ablation of the conductive block.” The “laser or a focused energy beam” has “a pulse time of a nanosecond or less.” The Examiner found Lee describes all the steps of the claimed method, but not the pulse time of the laser. Answer 5. For the laser’s pulse time, the Examiner relied upon the teachings of Cheng, stating that it would have been obvious to have used Cheng’s pulse time in Lee’s process. Id. at 5–6. The Examiner acknowledged that Lee and Cheng do not explicitly describe that the “dielectric layer has a lower ablation threshold than that of Appeal 2013-005848 Application 11/374,972 5 the conductive block,” but found that Yung describes a dielectric layer has a lower ablation threshold than that of the conductive material. Id. at 6. The Examiner determined it would have been obvious to have used Yung’s “ablation threshold in order to effectively remove the dielectric material without damaging the conductive material.” Id. Appellants assert that Lee does not teach or suggest the claimed limitation of “wherein the ablating is performed with substantially no ablation of the conductive block.” Appeal Br. 11. Appellants argue: Lee teaches improving the cooling of a gas turbine by increasing the surface area of a shroud. The surface area of the shroud is increased by forming surface roughness elements on the shroud using an electrode. The electrode is formed using a laser ablation method to remove part of a dielectric insulating material on the electrode surface. However, Lee does not teach laser ablation of the dielectric coating wherein the ablating is performed with substantially no ablation of the conductive block, as claimed, and thus no substantial ablation of the electrode. Furthermore, Applicants respectfully assert that, if any laser ablation of the electrode were to occur, it would increase the surface area of Lee’s shroud during further processing, thus increasing the effective cooling area of the shroud. As a result, Lee would have no motivation to ensure that there was no ablation of the electrode. Id. at 12. Appellants’ argument is not supported by a preponderance of the evidence. Lee describes the “electrode surface” as “initially entirely coated with the dielectric insulating material.” Lee, col. 2, ll. 53–55. Next, Lee teaches that “[p]art of the coating is then removed [from the electrode surface], for example, by using a laser ablation method, to Appeal 2013-005848 Application 11/374,972 6 form . . . random or patterned array of insulating and non-insulating portions on the electrode.” Lee, col. 2, ll. 55–59. These steps describe removing the insulating coating by laser ablation, and not ablation of the conductive block upon which the insulating coating rests. Lee teaches that the electrode is subsequently used to create “roughness elements” on the opposing shroud surface by electrochemical machining using an electrolyte and current. Id. at col. 3, ll. 1–20; col. 4, ll. 29–51. The electrochemical machining removes metal from the shroud surface (id. at col. 4, ll. 35–37) and thus does not satisfy the claim limitations which require “ablating portions of a dielectric layer.” Lee describes the non-insulated, laser ablated, portions of the electrode as enabling electrolyte, and a current passed through it, in the electrochemical machining process, to remove metal and form spaces 26 between raised elements 28 in the shroud surface. Id. at col. 4, ll. 28–39. The electrically insulated portions of the electrode are described by Lee as “block[ing] the current flow from the electrode 20 toward the opposing surface 12 such that the metal of the surface 12 in registration with the insulated portions 22 is not removed.” Id. at col. 4, ll. 42–46. Since Lee requires insulated and non-insulated regions of the electrode to create the roughness elements on the shroud surface, there would be no reason to further ablate the non-insulated electrode surface and Lee does not disclose it as noted by the Examiner. Appellants contend that “if any laser ablation of the electrode were to occur, it would increase the surface area of Lee’s shroud during further processing” (Appeal Br. 12), but Appellants do not explain how further Appeal 2013-005848 Application 11/374,972 7 ablating the non-insulated portions of the electrode (i.e., the spaces between the insulated regions) would result in increased surface area. The surface area would be the same, although the spaces between the insulated regions would be deeper. Appellants have not demonstrated that the Examiner erred in rejecting claim 11 as obvious in view of Lee, Cheng, and Yung. Consequently, we affirm the rejection of claim 11. Claims 22 and 23 were not argued separately by Appellants (Appeal Br. 14) and fall with claim 11 and for the reasons set forth by the Examiner. 37 C.F.R. § 41.37(c)(1)(vii). REJECTIONS 3 AND 4 Appellants contend that claims 16, 21 (Appeal Br. 15), and 17 (id. at 16) are patentable for same unpersuasive reasons argued for claim 11. We affirm Rejections 3 and 4 of these claims for the same reasons as for claim 11. WRITTEN DESCRIPTION REJECTION Appellants argue that the amendment to claim 29 clarifies the scope of the claim and addresses the rejection. Id. at 17. However, the claim amendment was not entered. Advisory Action dated June 13, 2012. Consequently, because Appellants have not identified a defect in the Examiner’s rejection of claims 29 and 30, we affirm the rejection. Appeal 2013-005848 Application 11/374,972 8 TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED bar