Ex Parte Fan et al

Board of Patent Appeals and Interferences

Mar 21, 2012

11627061 (B.P.A.I. Mar. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte XUDONG FAN, ROBERT W. WILSON, and CHUNMEI GUO
_____________

Appeal 2009-014849
Application 11/627,061
Technology Center 2800
______________

Before, KRISTEN L. DROESCH, KALYAN K. DESHPANDE, and
DAVID M. KOHUT, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm the Examiner’s rejection of these claims.

INVENTION
The invention is directed to a method for taking fluorescent
measurements by coupling light into a microcavity resonator, exciting
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fluorescent materials, and detecting the signal. Spec. 2. Claim 1 is
representative of the invention and is reproduced below:
1. A method of taking fluorescent measurements, comprising:
coupling excitation light into multiple resonant modes of a
microcavity resonator;
exciting one or more fluorescent materials using the
multiple resonant modes; and
detecting a fluorescent signal arising from fluorescence of
the one or more fluorescent materials.

REFERENCES
Maleki US 2001/0038651 A1 Nov. 8, 2001

Hunziker US 6,583,399 B1 June 24, 2003

McDevitt US 6,680,206 B1 Jan. 20, 2004

Boyd US 2004/0023396 A1 Feb. 5, 2004

Guo US 2006/0170931 A1 Aug. 3, 2006

REJECTIONS AT ISSUE
Claims 1, 5, 9, 10, and 12 are rejected under 35 U.S.C. § 102(e) as
being anticipated by Guo. Ans. 3-4.
Claims 2 and 4 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Guo and Maleki. Ans. 4.
Claims 3, 15, and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Guo and Hunziker. Ans. 5.
Claims 6-8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Guo and Boyd. Ans. 5-6.
Claim 11 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Guo and McDevitt. Ans. 6-7.
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Claims 13 and 14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Guo. Ans. 7.
ISSUES
Did the Examiner err in finding that Guo discloses coupling excitation
light into multiple resonant modes of a microcavity resonator?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred.
We disagree with Appellants’ conclusion. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Appeal Brief. We
concur with the conclusion reached by the Examiner. In addition, below we
highlight and address specific findings and arguments relating to the
limitation “coupling excitation light into multiple resonant modes of a
microcavity resonator.”
Appellants argue that “Guo does not teach or suggest coupling an
excitation light into multiple modes of a microcavity resonator as recited in
claim 1.” App. Br. 4. Appellants contend that the Examiner’s finding that
Guo teaches multiple resonances since Fig. 3b shows a plurality of periodic
resonances is a mischaracterization of claim 1. App. Br. 4. Instead,
Appellants contend that the issue is whether the light is coupled into
multiple resonant modes at the same time and Guo does not disclose this.
App. Br. 4. However, the Examiner correctly indicates that Appellants’
argument is not commensurate in scope with the claim. Ans. 8. Claim 1
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does not require coupling light into multiple resonant modes at the same
time. Ans. 8.
In response, Appellants argue that under the Examiner’s interpretation
Guo would not disclose using multiple resonant modes to excite one or more
fluorescent materials as also recited in claim 1. Reply Br. 2. However, this
argument raises a new issue not presented before in the Appeal Brief and
will, therefore, not be considered. See 37 C.F.R. § 41.41(a)(2). Even so,
Appellants have not provided sufficient evidence to support Appellants’
argument. Appellants merely restate the limitation and argue that the
reference fails to disclose the limitation. Reply Br. 2. See 37 C.F.R. §
41.37(c)(1)(vii) (“A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.”);
In re Lovin, 99 USPQ2d 1373,1379 (Fed. Cir. 2011) (“we hold that the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”). Thus, we sustain the Examiner’s rejection of claim 1.
Regarding dependent claims 2-16, Appellants repeat the same
arguments asserted in support of independent claim 1. Thus, we sustain the
Examiner’s rejection of these claims for the same reasons as discussed supra
with respect to claim 1.

CONCLUSION
The Examiner did not err in finding that Guo discloses coupling
excitation light into multiple resonant modes of a microcavity resonator.

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SUMMARY
The Examiner’s decision to reject claims 1-16 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)(1)(iv).
AFFIRMED

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