Ex parte CHAN et al.

Board of Patent Appeals and Interferences

May 26, 1998

08382432 (B.P.A.I. May. 26, 1998)

Application for patent filed February 2, 1995. According1
to appellants, the application is a division of Application
08/048,575, filed April 15, 1993, now U.S. Patent No. 5,414,555,
issued May 9, 1995, which is a continuation of Application
07/820,010, filed January 13, 1992, now abandoned.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte GILBERT Y. CHAN and KENNETH G. PRESTON
________________
Appeal No. 97-1703
Application 08/382,4321
________________
ON BRIEF
________________
Before McQUADE, NASE and CRAWFORD, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 9 through
12, all of the claims pending in the application.
Appeal No. 97-1703
Application 08/382,432
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The invention relates to a method for forming the primary
and tertiary mirrors of a three-mirror optical system. Claim 9
is illustrative and reads as follows:
9. A method of fabricating the primary and tertiary
mirrors of a three-mirror optical system having a primary mirror,
a second mirror and a tertiary mirror, the primary and tertiary
mirrors having different surface contours, the method comprising
the steps of:
a) selecting a pre-shaped substrate of suitable material
and defining a common vertex on said substrate for said primary
and tertiary mirrors;
b) turning said substrate about an axis through said
vertex and applying a cutting tool to a selected surface of said
substrate;
c) controlling the axial position of said cutting tool
while moving said cutting tool radially relative to said axis to
form a selected surface shape of said primary mirror;
d) controlling the axial position of said cutting tool
while continuing to move said cutting tool radially relative to
said axis to form a selected surface shape of said tertiary
mirror; thereby leaving a unitary substrate having said primary
and tertiary mirrors formed integrally thereon.
The references relied upon by the examiner as evidence of
obviousness are:
Douglass et al. (Douglass) 4,343,206 Aug. 10, 1982
Korsch 4,737,021 Apr. 12, 1988
Appeal No. 97-1703
Application 08/382,432
In the final rejection (Paper No. 6), claims 9 through 122
also were rejected under 35 U.S.C. § 112, second paragraph. Upon
reconsideration, the examiner has withdrawn this rejection (see
the advisory action dated July 30, 1996, Paper No. 10).
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Claims 9 through 12 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Douglass in view of Korsch.2
Reference is made to the appellants’ main and reply briefs
(Paper Nos. 14 and 16) and to the examiner’s answer (Paper No.
15) for the respective positions of the appellants and the
examiner with regard to the merits of this rejection.
Douglass discloses a method and apparatus for machining
nonaxisymmetric surfaces on a workpiece mounted on a rotating
spindle. As described by Douglass,
the machine tool comprises a generally T-shaped base 18
upon which an X slide 20 and a Y slide 22 are mounted
in a suitable conventional manner for displacement in
any desired manner along planes disposed perpendicular
to one another as conventionally practiced. The Y
slide 22 is provided with a conventional spindle
mechanism generally shown at 24 and which is rotated by
a suitable drive motor shown at 26.
A third slide or auxiliary slide referred to
herein as the Z slide is shown at 28 and is movably
mounted on the X slide 20. The Z slide 28 is shown
supporting a conventional tool holder 30 and metal-
working tool 32 for machining the surface 12 of the
workpiece 10 upon contact therewith.
Appeal No. 97-1703
Application 08/382,432
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To machine one or more nonaxisymmetric sector
surfaces, such as shown at 16 in FIGS. 1 and 2 or the
entire surface as shown at 17 in FIG. 3, in a workpiece
being rotated about a central axis of rotation, the
auxiliary slide 28 is displaced at a relatively rapid
rate toward or away from the surface of the workpiece
in accordance with a predetermined program so as to
provide the off-axis sector [column 3, line 47 through
column 4, line 1].
Korsch discloses a “three-mirror optical system having a
real, accessible entrance (or exit) pupil making it particularly
suitable for use as a collimator but which may also be used as a
telescope and where the primary and tertiary mirrors are off-
centered from the optical axis” (column 1, lines 7 through 12).
The Korsch specification indicates that the primary and tertiary
mirrors are differently contoured and that the specific
parameters of the system are of paramount importance in achieving
the foregoing objective.
As conceded by the examiner (see page 3 in the answer), the
Douglass reference does not meet the limitations in independent
claims 9 and 11 relating to the fabrication on a unitary
substrate of differently contoured primary and tertiary mirrors
of a three-mirror optical system. Although the Korsch reference
discloses a three-mirror optical system having differently
Appeal No. 97-1703
Application 08/382,432
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contoured primary and tertiary mirrors, it does not teach or
suggest that these mirrors be formed on a unitary substrate. The
examiner’s conclusion that it would have been obvious to one of
ordinary skill in the art to combine these two references so as
to arrive at the subject matter recited in claims 9 and 11 (see
pages 3 and 4 in the answer) is not well taken. Douglass’
disclosure of a general method for machining nonaxisymmetric
surfaces on a workpiece or substrate has little, if any,
meaningful relevance to the formation of the primary and tertiary
mirrors in Korsch’s three-mirror optical system. In this light,
it is evident that the only suggestion for combining these two
references so as to arrive at the methods recited in independent
claims 9 and 11, and in claims 10 and 12 which depend therefrom,
stems from hindsight knowledge derived from the appellants’
disclosure. The use of such hindsight knowledge to support a
conclusion of obviousness is, of course, impermissible.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 103 rejection of claims 9 through 12 as being unpatentable over
Douglass in view of Korsch.
Appeal No. 97-1703
Application 08/382,432
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The decision of the examiner is reversed.
REVERSED
JOHN P. McQUADE )
Administrative Patent Judge )
)
)
)
JEFFREY V. NASE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 97-1703
Application 08/382,432
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Leonard Tachner
3990 Westerly Place
Suite 295
NewPort Beach, CA 92660