11430352 (P.T.A.B. Jun. 6, 2014)

Ex Parte Hughes et al

Patent Trial and Appeal BoardJun 6, 2014

11430352 (P.T.A.B. Jun. 6, 2014)

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. 11/430,352 05/09/2006 Patrick Joseph Hughes Hughes 1-1-32 (LCNT/12819 6293 46363 7590 06/06/2014 WALL & TONG, LLP/ ALCATEL-LUCENT USA INC. 25 James Way Eatontown, NJ 07724 EXAMINER HAHM, SARAH UH YOUNG ART UNIT PAPER NUMBER 2874 MAIL DATE DELIVERY MODE 06/06/2014 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 PATRICK JOSEPH HUGHES, GRACE MARIE JORDAN, and ALAN MICHAEL LYONS ____________ Appeal 2011-007907 Application 11/430,352 Technology Center 2800 ____________ Before CHARLES F. WARREN, CATHERINE Q. TIMM, and BEVERLY A. FRANKLIN, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent judge FRANKLIN. Opinion Dissenting filed by Administrative Patent Judge TIMM. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Primary Examiner’s rejection of claims 1-5, 7-14, 17, and 19-20. We have jurisdiction under 35 U.S.C. § 6. Appeal 2011-007907 Application 11/430,352 2 STATEMENT OF THE CASE Claim 1 is representative of the subject matter on appeal and is set forth below, with text in bold for emphasis: 1. Apparatus, comprising: a directed energy processing component having associated with it a preferred alignment to one or both of received energy and provided energy; at least one polymer actuator, positioned proximate the directed energy processing component to provide thereto a force adapted to enable the preferred alignment; a detector, for detecting a qualitative parameter associated with the provided energy; and a processor, for adjusting the actuator in a manner tending to improve the detected qualitative parameter; wherein the directed energy processing component comprises a prism having a substantially transparent low modulus material disposed between two substantially transparent plates, at least one plate being positioned into a non-coplanar relationship with the other plate in response to urging by the at least one polymer actuator such that a beam passing through the plates changes direction due to refraction from surfaces not normal to the beam propagation direction; wherein, when the two plates are positioned into a non-coplanar relationship with respect to each other, the transparent low modulus material adapts to space available between the two plates such that a beam passing through the prism only passes through the plates and the transparent low modulus material. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Lessman US 3,337,287 Aug. 22, 1967 Fushimi et al. US 2006/0013535 A1 Jan. 19, 2006 Diemeer EP 1 048 962 A2 Nov. 2, 2000 Appeal 2011-007907 Application 11/430,352 3 THE REJECTION Claims 1-5, 7-14, 17, 19, and 20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Fushimi in view of Lessman and Diemeer. ANALYSIS Issue: Did the Examiner err in determining that the applied art suggests the claimed subject matter of claim 1, in particular the aspects of claim 1 pertaining to a directed energy processing component comprises a prism “having a substantially transparent low modulus material disposed between two substantially transparent plates,” and “wherein . . . the transparent low modulus material adapts to space available between the two plates such that a beam passing through the prism only passes through the plates and the transparent low modulus material”? We answer this question in the affirmative and REVERSE. It is the Examiner’s position that Fushimi teaches the claimed subject matter, but does not expressly disclose that a beam passing through the prism only passes through the plates and the transparent low modulus material. Ans. 4. The Examiner relies upon Lessman for teaching this aspect of the claimed subject matter. The Examiner relies upon Diemeer for teaching the particularly claimed type of actuator. Ans. 4-5. Appellants argue, inter alia, that both Fushimi and Lessman lack a teaching of a low modulus material that adapts to space available between two plates as required by claim 1. App. Br. 16-17. Appellants point out that Appeal 2011-007907 Application 11/430,352 4 Fushimi teaches that the material between the plates of the variable angle prism is “Silicon oil” which is a colorless liquid having a certain refractive index that is not disclosed to have a modulus property. App. Br. 16. Fushimi, para. 0087. Appellants further point out that Lessman discloses a prism filled with “water” which is a transparent fluid that has a suitable index off refraction. App. Br. 17. Lessman col. 3, ll. 22-25. Thus, Appellants dispute that Fushimi and Lessman disclose a low modulus material as required by the claims. In reply, the Examiner recognizes that Fushimi uses “silicon oil” and refers to Woo1 which discloses “silicone oil” as “a high-viscosity low bulk modulus fluid” used in a pressure compensated hydrophone, for the first time in the record, for teaching ‘silicon oil’ as a ‘low bulk modulus fluid’ which “is clearly a ‘low modulus material’”. Ans. 8. Woo para. 0018. Appellants submit that Woo’s “silicone oil” is not Fushimi’s “silicon oil,” arguing that Woo cannot be used to define Fushimi’s “silicon oil.” Reply Br. 3. Appellants further contend that there is no evidence that either oil would be a low modulus material that can adapt to the space available between the two plates as claimed. Reply Br. 3-4. We agree with Appellants. We find no evidence in the record establishing that one of ordinary skill in the art would equate “silicon oil” and “silicone oil” in any respect, and further consider either oil to have a low modulus property that would cause the oil to adapt to the space available between the two plates as claimed. 1 US 2005/0195687 A1, published September 8, 2005. Appeal 2011-007907 Application 11/430,352 5 Accordingly, on this record, the Examiner did not carry the burden of presenting evidence establishing a prima facie case of obviousness with respect to the apparatus containing “a substantially transparent low modulus material” as specified in claim 1. Thus, we are of the view that the Examiner has relied on impermissible hindsight in maintaining the ground of rejection. See, e.g., KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”); In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”); In re Rouffet, 149 F.3d 1350, 1358 (Fed. Cir. 1998) (“hindsight” is inferred when the specific understanding or principal within the knowledge of one of ordinary skill in the art leading to the modification of the prior art in order to arrive at appellant’s claimed invention has not been explained); In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art”); see also, e.g., In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). We therefore reverse the above rejection. Appeal 2011-007907 Application 11/430,352 6 CONCLUSIONS OF LAW AND DECISION The rejection is reversed. REVERSED cdc Appeal 2011-007907 Application 11/430,352 1 TIMM, Administrative Patent Judge, Dissenting. I respectfully dissent from the decision of my colleagues. The basic problem with Appellants’ position is that Appellants nowhere provide any evidence of the scope of materials that meet the definition of being a “substantially transparent low modulus material” that “adapts to space available between the two plates such that a beam passing through the prism only passes through the plates and the transparent low modulus material.” The Specification provides no examples of materials within this genus of materials much less any definition one of ordinary skill in the art could rely on to determine what materials might be included. Appellants contend that the liquid of Fushimi is not a low modulus material because a liquid does not have any property of modulus, i.e., a liquid has no elastic properties (Br. 16), but Appellants provide no evidence in support. The Examiner has maintained through many Office Actions that Fushimi’s silicon oil is a substantially transparent low modulus material (Final Rej. filed Sept. 18, 2008 at 2 and 5; Non-Final Rej. filed Mar. 25, 2009 at 3; Non-Final Rej. Filed Nov. 16, 2009 at 3; Final Rej. Filed Mar. 26, 2010 at 3). Because Appellants provide no evidence to the contrary, I determine that the preponderance of the record, even when not taking into account the Examiner’s newly cited reference to Woo, supports the Examiner’s finding that silicon oil is a low modulus material within the meaning of the claims. The Examiner cites to Woo in response to Appellants’ argument that Fushimi’s liquid is not a low modulus material (Ans. 8). Appellants contend that the Examiner’s reliance on Woo is improper for two reasons: (1) Woo’s Appeal 2011-007907 Application 11/430,352 2 use of the different term “silicone oil” indicates that it is directed to a different material than the “silicon oil” of Fushimi; and (2) it is unclear whether the low bulk modulus property of Woo applies to the term “low modulus material.” (Reply Br. 3.) As to the first contention, Appellants merely cite to the difference in name to support their argument. In many cases this might be enough to carry the day, but here the context of the references leads to the conclusion that silicon oil and silicone oil are both referring to an oil of polysiloxane, a polymer containing alternate silicon and oxygen atoms in its backbone. It is not clear to me what other oil that is silicon-based, transparent, and has a refractive index Fushimi could be referencing. In the absence of evidence supporting the Appellants’ contention, I determine that there is no convincing evidence in the record indicating that Fushimi would have suggested to one of ordinary skill in the art the use of some other different oil. As to the second contention, Appellants’ claim refers to “low modulus.” Bulk modulus is one measurement of modulus. In the absence of a definition excluding bulk modulus, which I do not find in the Specification, I cannot say that the claim excludes materials of low bulk modulus. Moreover, bulk modulus is used to describe “the elastic properties of a solid or fluid when it is under pressure on all surfaces.” Bulk modulus (physics), Britannica.com (last visited June 2, 2014). Compressible fluids have low bulk modulus and thus have low modulus. With regard to the limitation requiring the material adapt to the space available between the two plates such that a beam passing through the prism only passes through the plates and the transparent low modulus material, I Appeal 2011-007907 Application 11/430,352 3 agree with the Examiner’s response to the argument (Ans. 9-12). The point of Fushimi is to pass the laser beam through the glass plates and the liquid to obtain a desired beam deflection and one would have used a volume of liquid and a type of liquid, such as a compressible liquid (e.g., silicon oil), to accomplish that goal. To allow the laser beam to pass through an air pocket would change the deflection of the laser beam in a way not disclosed by Fushimi. For similar reasons, I do not find Appellants’ arguments with respect to claim 17 persuasive. I would affirm the decision of the Examiner as to all the claims.