Ex Parte Sanghera et al

Patent Trial and Appeal Board

Nov 27, 2018

13559936 (P.T.A.B. Nov. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/559,936 07/27/2012
26384 7590 11/27/2018
NAVAL RESEARCH LABORATORY
AS SOCIA TE COUNSEL (PA TENTS)
CODE 1008.2
4555 OVERLOOK A VENUE, S.W.
WASHINGTON, DC 20375-5320
FIRST NAMED INVENTOR
Jasbinder S. Sanghera
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
101277-US2 6874
EXAMINER
PHAM, THOMAS T
ART UNIT PAPER NUMBER
1713
MAIL DATE DELIVERY MODE
11/27/2018 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 JASBINDER S. SANGHERA,
CATALIN M. FLOREA, GUILLERMO R. VILLALOBOS,
ISHWAR D. AGGARWAL, and BRYAN SADOWSKI
Appeal 2018-001551
Application 13/559,936
Technology Center 1700
Before CATHERINE Q. TIMM, MICHAEL P. COLAIANNI, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2018-001551
Application 13/559,936
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134 from a rejection2 of claims
1, 2, and 8. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
CLAIMED SUBJECT MATTER
The claims are for a method "for reducing the losses that occur at the
interface between a spinel-based optical element and the ambient medium."
Spec. ,r 17. The specification describes an embodiment where "a motheye
structure is built on the surface of spinel optics through reactive ion etching
(RIE) of a pattern obtained through photolithography and liftoff." Id. ,r 18.
The specification further describes a "motheye structure, having a periodic
double-dimensional array of objects, such as but not limited to cones, in
which the geometry, dimensions and the spacing of the cones are optimized
to enhance the transmission, for example in the 2 - 5 µm region." Id. ,r 21.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for reducing transmission losses in a spinel-
based optical element comprising:
building a structure on the surface of the spinel-based
optical element, wherein the structure is built to optimize
transmission of the spinel-based optical element at a wavelength
in the near-infrared region from 2 to 5 microns; and
1 The real party in interest is identified as "The Government of the United
States of America, as represented by the Secretary of the Navy. Appeal
Brief of June 14, 2016 ("App. Br."), 2.
2 Final Office Action of July 14, 2015 ("Final Act."). In this opinion, we
also refer to the Examiner's Answer of November 1, 2011 ("Ans."). No
Reply Brief was filed.
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Appeal 2018-001551
Application 13/559,936
wherein the structure 1s built without the use of a
previously prepared master.
Claims Appendix (App. Br. 5).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Maltezos US 2012/0024010 Al Feb. 2, 2012
REJECTIONS
Claims 1, 2 and 8 rejected under pre-AIA 35 U.S.C. I03(a) as being
unpatentable over Maltezos. Final Act. 4.
OPINION
In rejecting Claim 1 3, the Examiner finds that Maltezos discloses
forming a spinel optical element with a diffractive optical structure identical
to those described in the specification at issue here. Final Act. 4--5.
Appellants do not dispute this finding. See App. Br. 2-3. The Examiner
also finds that Maltezos describes that the diffractive optical structure
diffracts light according to an equation and the optical structure also diffract
lights and, it thus "reduces transmission loss for, lights at any wavelength to
some degree" based on variables such as the wavelength of incident light.
Final Act. 5 ( citing Maltezos ,r,r 54, 55). Appellants do not dispute that
Maltezos describes such an equation. See App. Br. 3.
3 Appellants do not present separate arguments for claims 2 and 8. App. Br.
2-3. Claims 2 and 8 therefore stand or fall with claim 1 with respect to the
obviousness rejection. Id.; see also 37 C.F.R. § 4I.37(c)(l)(iv) (2013).
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Appeal 2018-001551
Application 13/559,936
Appellants, however, argue that the Examiner reversibly erred
because "the claims are directed to a method of reducing transmission losses
and not to an optical structure." Id. at 3. "It is well settled that the recitation
of a new intended use for an old product does not make a claim to that old
product patentable." In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
In this case, claim 1 requires no more than the method step of "building a
structure ... to optimize transmission" of an optical element. Appellants do
not dispute that the prior art structure is identical to that described in the
specification, nor do they argue that the prior art structure is not built to
optimize light transmission. Although Appellants point out that Maltezos
does not mention the from 2 to 5 micron wavelength range of claim 1,
Appellants do not address the Examiner's finding that because the equation
in Maltezos may be applied to any wavelength which would include the
recited wavelength range, the recited wavelength of "from 2 to 5 microns" is
suggested. Compare Final Act. 6, with App. Br. 3. Based on the record
before us, no reversible error has been identified here.
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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