Ex Parte Hesline

Patent Trial and Appeal Board

Nov 4, 2013

10553132 (P.T.A.B. Nov. 4, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/553,132 10/14/2005 Raymond Hesline HESL0101PUSA 1661
97039 7590 11/05/2013
Heslin Pty Ltd.
1/23 Monterey Road
Bilgola, 2107
AUSTRALIA
EXAMINER
CHAPEL, DEREK S
ART UNIT PAPER NUMBER
2872
MAIL DATE DELIVERY MODE
11/05/2013 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
____________

Ex parte RAYMOND HESLINE
____________

Appeal 2011-005488
Application 10/553,132
Technology Center 2800
____________

Before EDWARD C. KIMLIN, CHARLES F. WARREN, and
TERRY J. OWENS, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 13-20. We have
jurisdiction under 35 U.S.C. § 6(b). Claim 13 is illustrative:
13. An optical device comprising a first combination of birefringent
prisms with parallel optic axes for dividing an optical input beam into
polarized beams, a second combination of birefringent prisms with parallel
optic axes for combining polarized beams into an output beam, and a
polarization changer disposed between said first combination of birefringent
prisms and said second combination of birefringent prisms, wherein each
birefringent prism of each said combination of birefringent prisms has
oblique input and output faces.

Appeal 2011-005488
Application 10/553,132

2
The Examiner relies upon the following references as evidence of
obviousness:
Hesline 5,864,428 Jan. 26, 1999
Liu et al. (Liu) US 2003/0020989 A1 Jan. 30, 2003
Zhao et al. (Zhao) US 2003/0113055 A1 Jun. 19, 2003
Pan et al. (Pan) US 2003/0147136 A1 Aug. 7, 2003

Appellant's claimed invention is directed to an optical device
comprising a first combination of birefringent prisms with parallel optic
axes, a second combination of birefringent prisms with parallel optic axes,
and a polarization changer disposed between the first and second
combination of birefringent prisms.
The appealed claims stand rejected under 35 U.S.C. § 103(a) as
follows:
(a) claims 13-16 and 20 over Zhao in view of Hesline,
(b) claims 13, 15, 16, and 18 over Liu in view of Hesline, and
(c) claims 13, 16, 17, and 19 over Pan in view of Hesline.
Appellant does not separately argue any particular claim on appeal.
Accordingly, all the appealed claims stand or fall together.
We have thoroughly reviewed each of Appellant's arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter would have been obvious to one of ordinary
skill in the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner's rejections for the reasons set
forth in the Answer, which we incorporate herein, and we add the following
for emphasis only.
Appeal 2011-005488
Application 10/553,132

3
Appellant does not set forth a substantive argument that rebuts the
Examiner's conclusion of obviousness with respect to the three separate
rejections. Rather, the sole argument advanced by the Appellant is that
Hesline does not qualify as prior art since it is Appellant's own work and
does not describe the claimed invention within the meaning of § 102. It is
Appellant's contention that Hesline only qualifies as prior art to support a
rejection under § 102(b), but Hesline does not qualify as prior art in support
of a rejection under § 103. Appellant erroneously maintains that "[f]or a 35
U.S.C. 103 rejection to be based on 35 U.S.C. 102, . . . , the reference must
anticipate the claim" (Reply Br. 2, last para.). Stated otherwise, Appellant
maintains that "an applicant's own work can only be prior art under 35
U.S.C. § 103(a), if it is also prior art under a statutory category of 35 U.S.C.
102" (Prin. Br. 5, last para.).
The Examiner has properly concluded that Appellant errs in arguing
that an applicant's own patented work is only a statutory bar if a rejection is
based on 35 U.S.C. §102(b) and not on 35 U.S.C. § 103. It is well settled
that prior art available under 35 U.S.C. § 102 is also available as prior art
under 35 U.S.C. § 103 (see MPEP 2141.01, and Ex parte Andresen, 212
USPQ 100, 102 (BPAI 1981). Significantly, Appellant has cited no case law
which supports his position. Accordingly, since there is no dispute that the
Hesline patent qualifies as prior art under 35 U.S.C. § 102(b), it follows that
Hesline is also available as prior art in the § 103 rejections made by the
Examiner. Again, Appellant has made no argument for the nonobviousness
of the claimed subject matter.

Appeal 2011-005488
Application 10/553,132

4

In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims is
affirmed.
The decision of the Examiner 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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