Ex Parte Dick et al

Patent Trial and Appeal Board

Mar 7, 2016

12376847 (P.T.A.B. Mar. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/376,847 0210912009
95402 7590 03/09/2016
LEYDIG, VOIT AND MA YER
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON A VENUE
CHICAGO, IL 60601
FIRST NAMED INVENTOR
Manfred Dick
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.
810765 1629
EXAMINER
NGUYEN, VIX
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
03/09/2016 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):
chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MANFRED DICK, MATTHIAS REICH, and DIEGO ZIMARE
Appeal2014-001665
Application 12/376,847
Technology Center 3700
Before KEN B. BARRETT, GEORGE R. HOSKINS, and
FREDERICK C. LANEY, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Manfred Dick et al. ("Appellants") 1 appeal under 35 U.S.C. § 134
from the Examiner's decision rejecting claims 14--27 in this application.
The Board has jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
1 The Appeal Brief identifies Carl Zeiss Meditec AG as the real party in
interest. Appeal Br. 1.
Appeal2014-001665
Application 12/376,847
CLAIMED SUBJECT MATTER
Claim 14 is the sole independent claim on appeal, and it recites:
14. A navigation apparatus for optically analyzing an inner
structure of an optical element and for processing the optical
element, the apparatus comprising:
a detection device having an aperture smaller than 0.25;
and
a processing device configured to process the inner
structure and adapted to be guided along or in a fixed relationship
to the inner structure of the optical element.
Appeal Br. 11 (Claims App.).
REJECTIONS ON APPEAL 2
Claims 14, 15, 19, 25, and 26 are rejected under 35 U.S.C. § 102(b) as
anticipated by Zavislan (US 6,577 ,394 B 1, iss. June 10, 2003).
Claims 16 and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Zavislan.
Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Zavislan and Feige (US 7,211,078 B2, iss. May 1, 2007).
Claims 20-24 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Zavislan and Lubatschowski (US 8,221,400 B2, iss. July 17, 2012).
Claim 27 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Zavislan and Sandock (US 5,609,573, iss. Mar. 11, 1997).
2 The Examiner has withdrawn the rejection of claims 22-24 under
35 U.S.C. § 112, first paragraph. Final Act. 2; Ans. 3.
2
Appeal2014-001665
Application 12/376,847
ANALYSIS
A. Anticipation by Zavislan (claims 14, 15, 19, 25, and 26)
In rejecting claim 14 as anticipated by Zavislan, the Examiner finds
Zavislan's processing device 22 is "configured to process the inner
structure" of an optical element, as claimed. Final Act. 3, 6-7; Ans. 7-8. In
particular, the Examiner finds Zavislan's prism 42 corresponds to the
claimed optical element. Final Act. 6-7; Ans. 7-8. According to the
Examiner, claim 14 does not positively recite an inner structure, and
Zavislan's processor 22 is configured to and also is capable of performing
the intended use or function of processing "an inner structure (crystal
structure [ofprism 42], see col. 4, lines 43--47)." Final Act. 6-7; Ans. 7-8
(also citing Zavislan, 4: 13-5:20).
We agree with Appellants' contention that the Examiner errs in
finding Zavislan's processor 22 is configured to process the inner structure
of prism 42. Appeal Br. 5; Reply Br. 3--4. Zavislan discloses a microscope
in which laser light 14 passes through several optical components 18, 20, 32,
42, and 30 to reach a biological sample 12 such as dermatological tissue.
Zavislan, Fig. 1, 3:62---67, 1:14--18. The light reflects from sample 12 and
passes back through the optical components to reach detector 24. Id. at
Fig. 1, 4: 12-24. One of the optical components is "Nomarski or Wollaston
prism" 42, which functions to enhance image quality by providing
interference of light returned from sites in sample 12 that are adjacent to the
imaged section. Id. at 3:20-37, 4:34--36, 5:39--42. Processor 22 performs
two functions: (a) positioning of the optical components including prism 42
to collect selected imaging data from sample 12 (id. at Fig. 1, 1:55-57, 4:26-
3
Appeal2014-001665
Application 12/376,847
31 ), and (b) processing of data collected by detector 24 to construct an
image of sample 12 (id. at Fig. 1, 4:11-15).
Thus, as described in Zavislan, processor 22 analyzes the light which
passes through prism 42 twice (to cancel interference of unwanted data) in
order to generate an image of biological sample 12. Even under a broadest
reasonable interpretation, such an operation is not "process[ing] the inner
structure" of prism 42, as recited in claim 14. Indeed, the inner structure of
prism 42 prevents unwanted portions of the light signal from reaching
detector 42 and thereby being processed by processor 22. The Examiner
further fails to establish, by a preponderance of evidence, how Zavislan's
processor 22 might be capable of processing the inner structure of prism 42,
given Zavislan's disclosure that the laser light 14 passes through prism 42
rather than being reflected by prism 42 as with the imaged sample 12. See
Final Act. 7; Ans. 7-8.
For the foregoing reasons, we do not sustain the rejection of claim 14,
and of claims 15, 19, 25, and 26 depending from claim 14, as anticipated by
Zavislan.
B. Obviousness Rejections
The various rejections of claims 16-18, 20-24, and 27 as unpatentable
over Zavislan either alone or in view of Feige, Lubatschowski, or Sandock
do not cure the deficiency noted above with respect to Zavislan and
claim 14. See Final Act. 4---6. We, therefore, do not sustain these rejections.
DECISION
The Examiner's decision to reject claims 14--27 is reversed.
REVERSED
4