Ex Parte Drabarek

Patent Trial and Appeal Board

Mar 21, 2013

10591502 (P.T.A.B. Mar. 21, 2013)

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.
10/591,502 08/20/2007 INV001Pawel Drabarek 10191/4351 2336
26646 7590 03/22/2013
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
EXAMINER
LYONS, MICHAEL A
ART UNIT PAPER NUMBER
2877
MAIL DATE DELIVERY MODE
03/22/2013 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
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Ex parte PAWEL DRABAREK
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Appeal 2010-011552
Application 10/591,502
Technology Center 2800
____________

Before KARL D. EASTHOM, MICHAEL R. ZECHER, and
BRIAN J. MCNAMARA, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-011552
Application 10/591,502

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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 8-13. App. Br. 2. Claims 1-7 were cancelled. Id. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s Invention
Appellant invented an interferometric measuring system for
measuring shape deviation, position, surface properties, and vibrations of an
object. Spec. 1:1-2. According to Appellant, the disclosed system includes
a transmitting element having a modulation interferometer, a radiation
source for short-coherent radiation, a measuring probe system connected
thereto for supplying the radiation via a common optical path, and a
receiving element that is combined with the transmitting element in a single
transmitter/receiver unit for analyzing the radiation measured by and
returned from the measuring probe system. Id. at 1:3-8.
Illustrative Claim
Claim 8 is the only independent claim and, therefore, is illustrative:
8. An interferometric measuring system for
measuring a shape deviation, position, surface properties, and
vibrations of an object, comprising:
a transmitting element including:
a modulation interferometer, and
a radiation source for short-coherent radiation, the
modulation interferometer being combined with the radiation
source in a transmitter/receiver unit;
a measuring probe system connected to the transmitting
element, the transmitting element supplying radiation via a
common optical path;
a receiving element for analyzing a measuring radiation
returning from the measuring probe system, the receiving
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element being combined with the transmitting element in the
transmitter/receiver unit, wherein:
the measuring probe system includes a plurality of
measuring probes coupled to the common optical path via
respective optical paths; and
a switching device disposed at a coupling point between
the common optical path and the respective optical paths to the
measuring probes, wherein:
the switching device allows the different measuring
probes to be individually brought into a bidirectionally
transmitting connection with the transmitter/receiver unit for
the radiation supplied by the modulation interferometer, on the
one hand, and the measuring radiation, on the other hand.

Prior Art Relied Upon
Balachandran US 6,901,176 B2 May 31, 2005
(filed Oct. 15, 2002)

Rejection on Appeal
Claims 8-13 were rejected under 35 U.S.C. § 103(a) as being
unpatentable over Balachandran. Ans. 3-5.
Examiner’s Findings and Conclusions
The Examiner finds that while Balachandran fails to disclose that the
radiation source, modulation interferometer, and receiving element are
integrated into a single transmitting/receiving unit, it nonetheless would
have been obvious to one with ordinary skill in the art to combine those
elements into a single transmitting/receiving unit. Ans. 5. The Examiner
concludes that such integration would be a matter of obvious design choice
to one with ordinary skill in the art because it would occur without any
change to the functionality of Balachandran’s device, and it would have the
obvious benefit of making Balachandran’s device more compact. Id. at 5-6.
Appeal 2010-011552
Application 10/591,502

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Appellant’s Contentions
Appellant disagrees with the Examiner’s position that it would have
been obvious to combine Balachandran’s radiation source, modulation
interferometer, and receiving element into a single transmitting/receiving
unit in order to teach “the modulation interferometer being combined with
the radiation source in a transmitter/receiver unit,” and “the receiving
element being combined with the transmitting element in the
transmitter/receiver unit,” as recited in independent claim 8. App. Br. 3-4
(emphasis omitted); Reply Br. 1-2. Appellant notes that the omission of an
element and the retention of its function is an indication of nonobviousness.
Reply Br. 2. In this case, Appellant contends that the claimed invention
would not have been obvious because it eliminates the need for
Balachandran’s coupler while still retaining the function of coupling the
measuring probes and the transmitter/receiver unit. Id. at 2-3.

II. ISSUE
Has the Examiner erred in determining that Balachandran teaches the
following claim limitations recited in independent claim 8:
(a) “the modulation interferometer being combined with the
radiation source in a transmitter/receiver unit;” and
(b) “the receiving element being combined with the transmitting
element in the transmitter/receiver unit”?

Appeal 2010-011552
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III. ANALYSIS
Claim 8
Based on the record before us, we do not discern error in the
Examiner’s obviousness rejection of independent claim 8, which recites,
inter alia: (1) “the modulation interferometer being combined with the
radiation source in a transmitter/receiver unit;” and (2) “the receiving
element being combined with the transmitting element in the
transmitter/receiver unit.”
The Examiner’s position with respect to the disputed claim limitations
is based on Figure 3 of Balachandran (Ans. 3), which illustrates a schematic
representation of a multiplexed sensor system. Col. 6, ll. 4-5. Figure 3 of
Balachandran is reproduced below.

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Figure 3 of Balachandran indicates that the disclosed system connects
a Superluminescent Light Emitting Diode (“SLD”) source 38 to a read-out
interferometer 22 built-in to an Integrated Optical Circuit (“IOC”) phase
modulator 36. Col. 9, ll. 2-5. Balachandran also discloses that the IOC
phase modulator 36 and corresponding read-out interferometer 22 connect to
a photo detector 28 via an optical coupler 34. Col. 9, l. 12-18. The
Examiner finds that Balachandran’s SLD source 38 constitutes the claimed
“radiation source,” the IOC phase modulator 36 containing the read-out
interferometer 22 constitutes the claimed “modulation interferometer,” and
the photo detector 28 constitutes the claimed “receiving element.” Ans. 3-4.
Based on those findings, the Examiner concludes that it would have been
obvious to one with ordinary skill in the art to integrate Balachandran’s SLD
source 38, the IOC phase modulator 36 containing the read-out
interferometer 22, and the photo detector 28 into a single
transmitting/receiving unit because such integration is a matter of obvious
design choice. Ans. 5. We agree with the Examiner.
As the Examiner correctly indicates (Ans. 5), integrating multiple
parts into a single unit is merely a matter of engineering choice and would
have been obvious to one with ordinary skill in the art. In re Larson, 340
F.2d 965, 968 (C.C.P.A. 1965) (the court held “that the use of a one piece
construction instead of the structure disclosed in [the prior art] would be
merely a matter of obvious engineering choice.”). Appellant has not
persuasively shown that combining Balachandran’s SLD source 38, the IOC
phase modulator 36 containing the read-out interferometer 22, and the photo
detector 28 into a single transmitting/receiving unit is not an obvious
extension of the teachings of Balachandran, let alone beyond the level of an
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ordinary skilled artisan. Moreover, Appellant has not shown that
Balachandran’s SLD source 38, the IOC phase modulator 36, the read-out
interferometer 22, and the photo detector 28, in combination, do not perform
the same functions as each part would perform separately.
We are also not persuaded by Appellant’s argument that that the
claimed invention would not have been obvious because it eliminates the
need for Balachandran’s optical coupler 34 while still retaining the function
of coupling the measuring probes and the transmitter/receiver unit. Reply
Br. 2-3. Appellant’s argument is predicated on the notion that
Balachandran’s optical coupler 34 is omitted from the claimed invention
without a corresponding loss of function and, therefore, the omission
patentably distinguishes the claimed invention over Balachandran. Cf., In re
Edge, 359 F.2d 896, 899 (CCPA 1966) (“While . . . mere omission of an
element together with its function does not produce a patentable invention, it
may also be unobvious to omit an element while retaining its function.”
(emphasis added)). Although the omission of a prior art feature can
patentably distinguish a claimed invention over the prior art, independent
claim 8 simply does not preclude the use of a coupler such as
Balachandran’s optical coupler 34.
Moreover, even assuming independent claim 8 precludes the use of a
coupler, Appellant has not shown that such an omission is an unobvious
improvement over the cited prior art. For instance, Appellant has not
demonstrated that incorporating the functionality of Balachandran’s optical
coupler 34 into the optical switch 34, thereby connecting the fiber tip based
Fabry-Perot sensors 12 to the single transmitting/receiving unit, would not
have been a predictable improvement to Balachandran’s system. See KSR
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Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“If a person of ordinary
skill can implement a predictable variation, § 103 likely bars its
patentability.”); Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157,
1162 (Fed. Cir. 2007) (holding the claimed invention unpatentable because,
in part, the “combination is . . . the adaptation of an old idea or invention . . .
using newer technology that is commonly available and understood in the
art.”).
The Examiner has presented sufficient evidence to warrant a finding
that Balachandran teaches “the modulation interferometer being combined
with the radiation source in a transmitter/receiver unit,” and “the receiving
element being combined with the transmitting element in the
transmitter/receiver unit,” as recited in independent claim 8. It follows that
the Examiner has not erred in determining that Balachandran renders
independent claim 8 unpatentable.
Claims 9-13
Appellant does not provide separate and distinct arguments for
patentability with respect to dependent claims 9-13. App. Br. 4. Therefore,
we accept Appellant’s grouping of these dependent claims with independent
claim 8. Id. Consequently, dependent claims 9-13 fall with independent
claim 8. See 37 C.F.R. § 41.37(c)(1)(vii).

IV. CONCLUSION
For the foregoing reasons, the Examiner has not erred in rejecting
claims 8-13 as being unpatentable under 35 U.S.C. § 103(a).

Appeal 2010-011552
Application 10/591,502

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V. DECISION
We affirm the Examiner’s decision to reject claims 8-13.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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