Ex Parte Banerjee et al

Patent Trial and Appeal Board

Oct 24, 2018

13572071 (P.T.A.B. Oct. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/572,071 08/10/2012 Debasish Banerjee
63796 7590 10/26/2018
DINSMORE & SHOHL LLP
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ATTORNEY DOCKET NO. CONFIRMATION NO.
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EXAMINER
CHANG, AUDREY Y
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
10/26/2018 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):
MichiganPatTM@dinsmore.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEBASISH BANERJEE, MINJUAN ZHANG,
SONGTAO WU, and MASAHIKO ISHII
Appeal 2016-006338
Application 13/572,071
Technology Center 2800
Before JEREMY J. CURCURI, KARA L. SZPONDOWSKI, and
MATTHEW J. McNEILL, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-9, 21, and 22. Oral arguments were heard on
October 16, 2018. A transcript of the hearing will be added to the record in
due course. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 The Appeal Brief states Toyota Motor Engineering & Manufacturing North
America is the real party in interest. App. Br. 1.
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Application 13/572,071
STATEMENT OF THE CASE
Appellants' invention is directed to "an omnidirectional reflector that
is a structural color and is made from materials having relatively low indices
of refraction." Spec. ,r 2. Claim 1, reproduced below with the disputed
limitation in italics, is representative of the claimed subject matter:
1. A process for designing and manufacturing an
omnidirectional structural color (OSC) multilayer stack, the
process compnsmg:
providing a computer with a digital processor;
providing a table of index of refraction values
corresponding to different materials useable for manufacturing
an OSC multilayer stack;
providing an initial design for the OSC multilayer stack,
the initial design OSC multilayer stack having at least one layer
with an index of refraction selected from the table of index of
refraction values;
adding at least one additional layer to the initial design
OSC multilayer stack to create a modified OSC multilayer
stack, the at least one additional layer having the same or a
different index of refraction as the at least one material of the
initial design; and
calculating the thickness of each layer of the modified
OSC multilayer stack using the computer and needle
optimization to optimize a merit function until an optimized
OSC multilayer stack has been calculated, the optimized OSC
multilayer stack operable to reflect a narrow band of
electromagnetic radiation with a width of less than 200
nanometers and a shift of equal to or less than 40 nanometers
when illuminated with broad band electromagnetic radiation in
the form of white light and viewed from angles between O to 45
degrees.
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Application 13/572,071
REJECTI0NS 2
Claims 1, 2, 5-9, 21, and 22 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Falicoff (US
7,859,754 B2; issued Dec. 28, 2010) and Uyama et al. (US 5,700,550; issued
Dec. 23, 1997) ("Uyama").
Claims 3 and 4 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Falicoff, Uyama, and Shirai (US 6,310,905 B 1;
issued Oct. 30, 2001 ).
ANALYSIS
Issue: Did the Examiner err in finding the combination of Falicoff
and Uyama teaches or suggests
calculating the thickness of each layer of the modified OSC
multilayer stack ... the optimized multilayer stack operable to
reflect a narrow band of electromagnetic radiation with a width
of less than 200 nanometers and a shift of equal to or less than
40 nanometers while illuminated with broad band
electromagnetic radiation in the form of white light and viewed
from angles between O to 45 degrees,
as recited in independent claim 1?
The Examiner relies on the combination of Falicoff and Uyama to
teach or suggest the disputed limitation. Final Act. 5---6; Ans. 5-8.
Appellants contend "Falicoff is directed to a wideband dichroic filter
and discloses data only for viewing angles between Oto 25 degrees." App.
Br. 9. According to Appellants, "[ t ]herefore, a shift of less than 40
nanometers when illuminated with broad band electromagnetic radiation in
2 The Examiner withdrew rejections to claims 1-9, 21, and 22 under 35
U.S.C. § 112(a) and 35 U.S.C. § 112(b) in the Answer. Ans. 2.
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Application 13/572,071
the form of white light and viewed from angles between O to 45 degrees is
not disclosed or fairly suggested in this reference." App. Br. 9.
Appellants' argument is not persuasive because the Examiner relies
on both Falicoff and Uyama to teach or suggest this limitation, and
specifically on Uyama to teach viewing angles between O to 45 degrees.
Final Act. 5-6 ( citing Uyama, col. 8; Falicoff, Fig. 3). The Examiner notes
Falicoff only teaches viewing angles between Oto 25 degrees. Final Act. 5.
Appellants' arguments directed solely to Falicoff are, therefore, not
persuasive. See In re Keller, 642 F.2d 413,426 (CCPA 1981) ("[O]ne
cannot show non-obviousness by attacking references individually where ...
the rejections are based on combinations of references.").
With respect to Uyama, Appellants argue:
Uyama et al. is directed to a transparent hologram seal and also
fails to disclose reflection of a narrow band of electromagnetic
radiation with a width of less than 200 nanometers and a shift
of equal to or less than 40 nanometers when illuminated with
broad band electromagnetic radiation in the form of white light
and viewed from angles between O to 45 degrees.
App. Br. 9-10. Specifically, Appellants argue Uyama "is directed to optical
multi-layered films that prevent forgery by changing color," whereas
Appellants' OSC multilayer stack is "angle independent," and therefore,
does not change color when viewed at "angles between O and 45 degrees."
Reply Br. 2. Appellants further argue "[t]he alternating layers 6 and 8
shown in FIG. 1 [ofUyama] below are transparent and do not 'reflect a
narrow band of electromagnetic radiation' as recited in claim 1." Reply Br.
2. Finally, Appellants argue Uyama "teaches 'transparent hologram seal[s]'
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Application 13/572,071
(title) that absorb wavelengths of visible light, not multilayer stacks that
'reflect a narrow band of electromagnetic radiation."' Reply Br. 3.
In the Answer, the Examiner provides a detailed explanation of
the teachings in both Uyama and Falicoff. See Ans. 5-8. For
example, the Examiner finds Uyama's hologram seal includes a
multilayer stack (the transparent evaporated layer 10) having
alternating high refractive and low refractive index layers. Ans. 5
( citing Uyama, Fig. 1 ); see also Final Act. 5---6. The Examiner finds a
change of the optical path length of this Uyama's multilayer stack
creates a color or wavelength shift of the specified wavelength range
that is transmitted or reflected when the multilayer stack is viewed at
different angles. Ans. 5 (citing Uyama, Fig. 1, col. 5:62---6:36). The
Examiner further finds "the multilayer stack can be and is observed
under the illumination of ambient light which is essentially a broad
band electromagnetic radiation in the form of whi[t]e light." Ans. 5.
The Examiner notes the multilayer stack and its color shift properties
are independent from the hologram layer, and it is these specific
teachings that are relied upon for the rejection. Ans. 5.
The Examiner further finds Uyama's multilayer stack reflects or
transmits a narrow electromagnetic radiation bandwidth of less than
100 nm and about 65 to 70 nm when measured at 50% transmittance
or reflectance. Ans. 5---6 (citing Uyama, Figs. 2, 7, 12, 13); see also
Final Act. 5-6. In addition, the Examiner finds Uyama teaches a
wavelength shift of the reflectance peaks from the zero degree
incidence (at 550 nm, solid curve) to 45 degrees incidence (dotted
curve) of less than 40 nm. Ans. 6 (citing Uyama Figs. 1, 7, 12, 13,
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Application 13/572,071
col. 8:1-9, col. 10:63-11:2, col. 15:53-16:7); see also Ans. 7; Final
Act. 5---6.
With respect to Falicoff, the Examiner finds Falicoff teaches an
OSC multilayer stack, which is operated to reflect a narrow band of
electromagnetic radiation with a width of less than 200 nm, when
measured at 50% reflection or transmission. Ans. 6-7 (citing Falicoff,
cols. 10, 11, and Fig. 3); see also Final Act. 5. Specifically, the
Examiner relies on Figure 3 of Falicoff, and finds "Falicoff teaches
that the wavelength shift is about 40 nanometers when the viewing
angle changes from zero degree[s] to about 25 degrees." Ans. 7; see
also Final Act. 5. The Examiner then provides several reasons to
combine the references including reasons to modify Falicoff with the
teachings of Uyama. Ans. 7-8.
In both the Appeal Brief and the Reply Brief, Appellants argue
against Uyama without taking into account the Examiner's reliance on
Falicoff, or, alternatively, do not wholly address the Examiner's
findings with respect to Uyama. For example, Appellants argue
Uyama does not teach or suggest "reflecting a narrow band of
electromagnetic radiation," (Reply Br. 2) but the Examiner also relies
on Falicoff to teach or suggest this limitation (Ans. 6-7). Appellants
have not addressed the Examiner's reliance on Figure 3 of Falicoff.
Similarly, Appellants' argument that Uyama teaches a transparent
hologram seal that absorbs wavelengths of visible light, not multilayer
stacks that "reflect a narrow band of electromagnetic radiation,"
(Reply Br. 3) ignores that the Examiner is not relying on the hologram
seal disclosure in Uyama (Ans. 5), and does not sufficiently address
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Application 13/572,071
the Examiner's reliance on Figures 7, 12, and 13 ofUyama (Ans. 6-7)
which depict transmittance or reflectance percentage in the vertical
axis. Further, Appellants' argument that Uyama's optical multi-
layered film changes color (Reply Br. 2) does not sufficiently address
the Examiner's findings that Falicoff teaches or suggests a shift of
about 40 nm (Ans. 7) and Uyama teaches or suggests a shift of less
than 40 nm (Ans. 6-7). 3 Accordingly, on this record, we do not find
Appellants' arguments persuasive.
Appellants further argue Uyama and Falicoff are not analogous
art. App. Br. 10, Reply Br. 4. We do not find Appellants' arguments
persuasive. A reference is analogous art to the claimed invention if:
(1) the reference is from the same field of endeavor as the claimed
invention ( even if it addresses a different problem); or (2) the
reference is reasonably pertinent to the problem faced by the inventor
( even if it is not in the same field of endeavor as the claimed
invention.) In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992).
The Examiner finds both Falicoff and Uyama "teach multilayer
stacks having the same interference filter structure (i.e. alternating
layers of high and low refractive indices)," which is in the same field
of endeavor as Appellants' invention. Ans. 8. Appellants argue the
field of endeavor of the claimed invention is "omnidirectional
reflectors that are structural colors, i.e., angle independent reflectors
that provide (reflect) a structural (sharp) color." Reply Br. 4.
3 Appellants' Specification describes a "change in color" as a "shift in band
reflection." See Spec. ,r 70. The Examiner finds the term "'omnidirectional'
is understood in the art as none or small wavelength shift in the
reflection/transmission spectrum when the viewing angle changes." Ans. 8.
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According to Appellants, Falicoff's field of endeavor is "wide-band
filters for combining LED-phosphor beams, particularly wide-band
filters for combining a blue LED spectrum with a yellow phosphor
spectrum into a single white output beam" and Uyama's field of
endeavor is "transparent hologram seals that change color when
viewed at different angles." Reply Br. 4.
We agree with the Examiner, and find Appellants have
described Falicoff and Uyama's fields of endeavor too narrowly.
F alicoff is directed to "multilayer interference filters with thin-film
specifications designed by a computer optimization program," which
has alternating layers of high and low refractive index material.
Falicoff, col. 1 :22-24. Similarly, Uyama, and specifically the
teachings the Examiner relies upon in Uyama, is directed to "an
optical multi-layered film" with alternating high and low refractive
index layers. Uyama, col. 1:5---6, 5:62---65. We find these are
sufficiently close to Appellants' field of endeavor of a multilayer
stack that provides omnidirectional structural color and made from
high- and low-refractive materials. Spec. 2-3, 12.
Alternatively, a reference is reasonably pertinent if, even
though it may be in a different field from that of the inventor's
endeavor, it is one which, because of the matter with which it deals,
logically would have commended itself to an inventor's attention in
considering his problem. In re Clay, 966 F. 2d 656, 659 (Fed. Cir.
1992).
The Examiner identifies Appellants' problem as "the
wavelength shift of the interference filter or multilayer stack when
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Application 13/572,071
viewed at different angles." Ans. 8. Appellants argue, "neither
Falicoff nor Uyama et al. are pertinent to the problem of providing a
multilayer stack that reflects an omnidirectional structural color."
Reply Br. 4. Appellants have essentially argued the field of endeavor
and problem faced by applicant are the same. We agree with the
Examiner that the problem faced by the applicant is slightly narrower,
and is directly related to the omnidirectionality of the multi-layer
structure, specifically related to viewing the wavelength shift at
different angles. E.g., Spec. 14. As set forth above, both Falicoff and
Uyama address viewing a multi-layer structure at different angles and,
therefore, would have logically commended themselves to an
inventor's attention in considering this problem. Therefore, we are
not persuaded by Appellants' arguments.
Accordingly, on this record, we are not persuaded the Examiner
erred. We, therefore, sustain the Examiner's 35 U.S.C. § 103(a)
rejection of independent claim 1. For the same reasons, we sustain the
Examiner's 35 U.S.C. § 103(a) rejection of dependent claims 2--4, 9,
21, and 22, which were not argued separately.
With respect to claims 5-8, which recite that "the optimized
OSC multilayer stack has 7 or less total layers," Appellants argue
"Falicoff discloses multilayer stacks having 80 and 82 layers (Tables
1--4) and thus actually teaches away from a multilayer stack having at
most 7 layers." App. Br. 10.
Here, again, Appellants arguments are not persuasive because
the Examiner relies on Uyama, not Falicoff to teach a multilayer stack
having 7 or less total layers. Final Act. 6; Ans. 8 ( citing Uyama, col.
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7:6, col. 10:6, col. 13:5). Appellants have not addressed the
Examiner's reliance on Uyama.
Accordingly, on this record, we are not persuaded the Examiner
erred. We, therefore, sustain the Examiner's 35 U.S.C. § 103(a)
rejection of dependent claims 5-8.
DECISION
We affirm Examiner's 35 U.S.C. § 103(a) rejection of claims 1-9, 20,
and 21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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