Downing, Kevin R. et al.

Patent Trials and Appeals Board

Jun 8, 2020

2019004434 (P.T.A.B. Jun. 8, 2020)

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.
14/250,553 04/11/2014 Kevin R. Downing MATE 200035US01 4579
27885 7590 06/08/2020
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
EXAMINER
ALLEN, STEPHONE B
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
06/08/2020 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):
uspto@faysharpe.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KEVIN R. DOWNING and IAN S. TRIBICK
_________

Appeal 2019-004434
Application 14/250,553
Technology Center 2800
____________

Before KAREN M. HASTINGS, CHRISTOPHER C. KENNEDY, and
DEBRA L. DENNETT, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–6, 9–14, 19–20, and 22–27. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. The Appellant identifies Materion Corporation as the real party in
interest (Appeal Br. 1).
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CLAIMED SUBJECT MATTER
The claimed subject matter relates to “optical filters” and the
“spectrographic arts” (Spec., para. 2). Claim 26, reproduced below with
emphasis, is illustrative of the claimed subject matter:
26. An apparatus comprising:
an optical filter array comprising optical filter elements,
each optical filter element having a parallelogram shaped cross
section with parallel top and bottom surfaces and parallel slanted
sidewalls, each optical filter element including:
a substrate having a parallelogram-shaped cross-
section with parallel light entrance and light exit surfaces
and parallel slanted sidewalls slanted at an angle, and
an interference filter disposed on one or both of the
light entrance surface of the parallelogram-shaped
substrate and the light exit surface of the substrate having
a parallelogram shaped cross section;
an entrance aperture disposed on the parallel light
entrance surfaces of the optical filter array and having openings
aligned with the light entrance surfaces of the optical filter
elements that allows for the passage of light; and
an exit aperture disposed on the parallel light exit surfaces
of the optical filter array and having openings aligned with the
light exit surfaces of the optical filter elements that allows for the
passage of light;
wherein each interference filter is disposed only on a
corresponding one substrate having a parallelogram shaped cross
section of the optical filter array, and wherein the optical filter
elements are bonded together at the parallel slanted sidewalls.

Independent claims 1, 19, and 26 all recite an apparatus with an
optical filter array, an entrance aperture disposed thereon, and an exit
aperture disposed thereon (Appeal Br. 4; Appeal Br. Claims Appx. 14–18).
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Claim 1 additionally recites an interference filter layer stack with two or
more materials, and where the exit aperture openings are shifted relative to
the entrance aperture openings, among other things. Id. Claim 19
additionally recites an adhesive between optical filter elements. Id.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Fujimura US 2014/0133862 A1 May 15, 2014
Furusawa US 2006/0198576 A1 Sep. 7, 2006
Hashizume US 6,394,607 B1 May 28, 2002

REJECTIONS
Claims 1, 3–6, 9–14, 19–20, and 22–272 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Fujimura and Furusawa.
Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Fujimura and Furusawa and further in view of Hashizume.

OPINION
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning

2 The Final Office Action rejects claims 1, 3–14, and 19–27. Final Act. 1.
In a Response After Final Rejection dated Sept. 14, 2018 (entered by the
Examiner on the same date), Appellant amended claim 19 to incorporate the
limitations of claim 21, and canceled claims 7, 8, and 21, leaving claims 1,
3–6, 9–14, 19, 20, and 22–27 pending.
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with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), quoted with
approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Upon consideration of the evidence of record and each of Appellant’s
contentions as set forth in the Appeal Brief, as well as the Reply Brief, we
conclude that the preponderance of the evidence supports Appellant’s
position that the Examiner has not met the burden in this case for
substantially the same reasons as set forth by Appellant in the Briefs.
Accordingly, we reverse the Examiner’s § 103 rejections of all the claims on
appeal.
We add the following primarily for emphasis.
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Translogic
Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). See also In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (The scope of the claims in
patent applications is not determined solely on the basis of the claim
language, but upon giving claims their broadest reasonable construction in
light of the specification as it would be interpreted by one of ordinary skill in
the art.); Cf. Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005).
(“[T]he specification ‘is always highly relevant to the claim construction
analysis. Usually, it is dispositive; it is the single best guide to the meaning
of a disputed term.’” (citation omitted)).
We agree with Appellant that the broadest reasonable interpretation of
“an entrance aperture disposed on the parallel light entrance surfaces”
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having openings that allow for the passage of light and “an exit aperture
disposed on the parallel light exit surfaces” having openings that allow for
the passage of light as recited in claim 26 and consistent with the
Specification does not encompass the unchipped surface areas of the optical
filter’s base substrate of Fujimura, as proposed by the Examiner (Final Act.
3–12; Appeal Br. 7–10; Ans. 6–10; Reply Br. 7–12).
As pointed out by Appellant, the Examiner construes Fujimura’s
effective area Y through which beam S2 travels as an aperture, but this
effective area is not “disposed on” the parallel light entrance surface, but
rather is integral with the base substrate 21 and denotes an unchipped area of
the substrate surface (Appeal Br. 6–9; Reply Br. 10–11, referring to Figure
2B of Fujimura). Further, Appellant contends that because the effective area
Y is an area of the solid base substrate 21 it cannot be described as “having
openings” as required by the recited entrance or exit apertures in claim 26.
Id.
The Examiner uses the plain meaning of the word “aperture” as
“opening or open space” and finds this usage ambiguous (Ans. 6–9). While
the Examiner contends that he is giving the claim term “aperture” the
broadest reasonable interpretation (Ans. 6–9), this plain usage results in a
contradictory arrangement of elements — an open space (an absence of
material) is then “disposed on” a surface (Ans. 8 (the Examiner contends
that “‘aperture’ as disclosed is ambiguous”)), the open space itself “having
openings” (Appeal Br. 18; Claims Appx.).
We are mindful that:
[t]he correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification is not
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whether the specification proscribes or precludes some broad
reading of the claim term adopted by the examiner. And it is not
simply an interpretation that is not inconsistent with the
specification. It is an interpretation that corresponds with what
and how the inventor describes his invention in the
specification, i.e. an interpretation that is “consistent with the
specification.”

In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017) (citation
omitted); see also In re Baker Hughes, Inc., 215 F.3d 1297, 1303 (Fed. Cir.
2000) (the PTO cannot adopt a construction that is “beyond that which was
reasonable in light of the totality of the written description” in the
Specification). Consequently, the Examiner’s position that an aperture can
be broadly construed as an opening so as to encompass the effective area of
Fujimura’s substrate is an unreasonably broad interpretation when
considered in light of the Specification and the ambiguity that interpretation
introduces. This interpretation clearly does not correspond “with what and
how the inventor describes his invention” (Smith, 871 F.3d at 1383),
resulting in an interpretation inconsistent with the Specification.
Notably, the Specification discloses that the entrance and exit
apertures are elements separate from the surfaces of the filter array (Appeal
Br. 5–6). However, the Examiner relies upon the base substrate 21 of the
Fujimura reference as both the claimed optical filter element’s substrate, the
entrance aperture disposed on the light entrance surfaces, and the exit
aperture disposed on the light exit surfaces (Final Act. 10–11). There is
nothing in the claim language or in the Specification to indicate that these
elements can be the same structure. On the contrary, “[w]here a claim lists
elements separately, ‘the clear implication of the claim language’ is that
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those elements are ‘distinct component[s]’ of the patented invention.”
Becton, Dickinson and Company v. Tyco Healthcare Group, LP, 616 F.3d
1249, 1254 (Fed. Cir. 2010) (citing Gaus v. Conair Corp., 363 F.3d 1284,
1288 (Fed. Cir. 2004); Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398,
1404–05 (Fed. Cir. 1996)). The Examiner further erred by relying on the
single element 21 of Fujimura to teach multiple elements recited in the
claim.
Therefore, we agree with Appellant that it is unreasonable to rely
upon the areas on either side of the base substrate of Fujimura to teach an
entrance aperture and an exit aperture disposed on respective entrance or exit
surfaces, each of these apertures having openings. We agree with Appellant
that the claimed entrance and exit apertures must be interpreted to be
separate elements disposed on separate surfaces as claimed and described in
the Specification. The Examiner’s reliance on the base substrate 21 in
Fujimura’s Figure 2B to teach or suggest these elements is unfounded.
The Examiner does not proffer sufficient reasoning or rely upon any
other reference to cure these deficiencies. Accordingly, we reverse the
rejection of claims 1, 3–6, 9–14, 19–20, and 22–27, which all rely upon the
Examiner’s flawed interpretation of the claim language.

CONCLUSION
The rejection of claims 1, 3–6, 9–14, 19–20, and 22–27 under 35
U.S.C. § 103(a) is reversed.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–6, 9–14,
19, 22–27
103 Fujimura,
Furusawa
1, 3–6, 9–
14, 19, 22–
27
20 103 Fujimura,
Furusawa,
Hashizume
20
Overall
Outcome
1, 3–6, 9–
14, 19–20,
22–27

REVERSED