Ex Parte Katsuma et al

Board of Patent Appeals and Interferences

Aug 23, 2012

11128279 (B.P.A.I. Aug. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TOSHIAKI KATSUMA, MASAO MORI, TETSUYA ORI, and
YU KITAHARA
____________

Appeal 2010-003384
Application 11/128,279
Technology Center 2600
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Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and
GREGORY J. GONSALVES, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Patent Examiner rejected claims 1, 3-14, and 16. The Appellants
appeal therefrom under 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).

Appeal 2010-003384
Application 11/128,279
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INVENTION
The following claim illustrates the invention on appeal:
1. An objective optical system for focusing light from a
light source onto optical recording media, the objective optical
system consisting of, in order from the light source side along
an optical axis:
a diffractive optical element with the diffractive optical
element being also a lens element having negative refractive
power and having a diffractive surface on at least one side; and
an objective lens having positive refractive power;
wherein
the objective optical system is configured to receive a
collimated light beam of a first wavelength λ1 on its light
source side and focus diffracted light diffracted by the
diffractive surface of the diffractive optical element at a first
numerical aperture NA1 onto a desired portion of a first optical
recording medium having a substrate thickness T1 when the
distance along the optical axis between the diffractive optical
element and the objective lens is a certain distance, to receive a
collimated light beam of a second wavelength λ2 on its light
source side and focus diffracted light diffracted by the
diffractive surface of the diffractive optical element at a second
numerical aperture NA2 onto a desired portion of a second
optical recording medium having a substrate thickness T2 when
the distance along the optical axis between the diffractive
optical element and the objective lens is said certain distance,
and to receive a collimated light beam of a third wavelength λ3
on its light source side and focus diffracted light diffracted by
the diffractive surface of the diffractive optical element at a
third numerical aperture NA3 onto a desired portion of a third
optical recording medium having a substrate thickness T3 when
the distance along the optical axis between the diffractive
optical element and the objective lens is said certain distance.

Appeal 2010-003384
Application 11/128,279
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REJECTIONS
Claims 1, 3-8, 10-14, and 16 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by U.S. Patent Application Pub. No. 2004/0022164 Al
("Nishioka").
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nishioka.

DISCUSSION
Based on the Appellants' arguments, we will decide the appeal of
claims 1, 3-8, 10-14, and 16 on the basis of claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii). We will decide the appeal of claim 9 individually.
The issue before us follows. Did the Examiner err in finding that
Nishioka "receive[s] a collimated light beam of a third wavelength . . . on its
light source side"? (Claim 1 (emphasis added).)
"It is axiomatic that anticipation of a claim under § 102 can be found
only if the prior art reference discloses every element of the claim, and that
anticipation is a fact question . . . ." In re King, 801 F.2d 1324, 1326 (Fed.
Cir. 1986) (citing Lindemann Maschinenfabrik GMBH v. Am. Hoist &
Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)). Of course, anticipation
"is not an 'ipsissimis verbis' test." In re Bond, 910 F.2d 831, 832-33 (Fed.
Cir. 1990) (citing Akzo N.V. v. United States Int'l Trade Comm'n, 808 F.2d
1471, 1479 n.11 (Fed. Cir. 1986)). "An anticipatory reference . . . need not
duplicate word for word what is in the claims." Standard Havens Prods. v.
Gencor Indus., 953 F.2d 1360, 1369 (Fed. Cir. 1991).

Appeal 2010-003384
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Here, we agree with the Examiner's following findings.
Figures 33a-33c clearly illustrate the circumstance where all
three wavelengths of light are incident on the objective optical
system as collimated light (i.e., light that has a source position
of infinity), as evident from the parallel nature of the light
beams. As opposed to Figures 22c, 25c, 30c, and 37c of
Nishioka which illustrate light of 780nm entering the objective
optical system with varying degrees of convergence and/or
divergence, Figure 33c clearly illustrates light of 780nm
(corresponding to the claimed third wavelength) entering the
objective optical system as collimated light.
(Ans. 8.)
The Appellants argue about paragraphs [0267] and [0268] of the
reference. (App. Br. 7.) Neither paragraph, however, changes Figure 33(c),
which follows.

"Figure 33c clearly illustrates light . . . entering the objective optical
system as collimated light." (Ans. 8.)
The Appellants use the Reply Brief to introduce new arguments
about Nishioka's diffractive optical element (Reply Br. 2) and the
preamble of the Appellants' claim 1. (Id. at 2-3.)
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"Any bases for asserting error, whether factual or legal, that are not
raised in the principal brief are waived." Ex parte Borden, 93 USPQ2d
1473, 1474 (BPAI 2010) (informative). See also Optivus Tech., Inc. v. Ion
Beam Appl’ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) ("[A]n issue not
raised by an appellant in its opening brief . . . is waived.") (citations and
internal quotation marks omitted).
Here, the Examiner's findings regarding the anticipation of claim 1 in
the Examiner's Answer (pp. 4-5) are identical to that in the Final Rejection
(pp. 2-3), from which the instant appeal was taken. Because the findings are
identical, we find nothing that would have prompted the new argument in
the Reply Brief. The Appellants could have made the argument in the
Appeal Brief. The term "Reply Brief" is exactly that, a brief in reply to new
rejections or new arguments set forth in an Examiner’s Answer. The
Appellants may not present arguments in a piecemeal fashion, holding back
arguments until an examiner answers the original brief. This basis for
asserting error is waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Rather than arguing the rejection of claim 9 separately, the Appellants
rely on the aforementioned arguments. Unpersuaded by these arguments,
we also affirm the rejection of claim 9.

DECISION
We affirm the rejections of claims 1 and 9 and that of claims 3-8, 10-
14, and 16, which fall therewith.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv).

Appeal 2010-003384
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AFFIRMED

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