Ex Parte Kim et al

Patent Trial and Appeal Board

Mar 18, 2013

10897015 (P.T.A.B. Mar. 18, 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.
10/897,015 07/23/2004 INV001Ui-yol Kim 1793.1364 1059
21171 7590 03/18/2013
STAAS & HALSEY LLP
SUITE 700
1201 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
TRAN, THANG V
ART UNIT PAPER NUMBER
2686
MAIL DATE DELIVERY MODE
03/18/2013 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 UI-YOL, TAE-KYUNG, CHONG-SAM
and PYONG –YONG SEONG
____________________

Appeal 2010-008736
Application 10/897,015
Technology Center 2600
____________________

Before ALLEN R. MacDONALD, BRYAN F. MOORE and
TRENTON A. WARD, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-008736
Application 10/897,015

2
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-22 and 39-42. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Exemplary claim 1 under appeal read as follows (emphasis added):
1. A compatible optical pickup, comprising:
an optical unit emitting a short wavelength light for a high-
density recording medium and a long wavelength light for a low-
density recording medium, directing the short and long wavelength
light to a corresponding one of the high-density recording medium
and the low-density recording medium, receiving lights reflected by
the corresponding recording medium, and detecting an information
reproduction signal and/or an error signal from the received lights;
and
a focusing unit focusing the short and long wavelength light
received from the optical unit to form a light spot on a recording
surface of the corresponding recording medium and diffracting the
short wavelength light into a zero order light and the long wavelength
light into a second order light to be used for recording and/or
reproduction so that the high-density recording medium and the low-
density recording medium having different thicknesses are usable with
the compatible optical pickup.

Rejection on Appeal
1

1. The Examiner rejected claims 1-22 and 39-42 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Komma
(US 7,245,407 B2) and Ohtaki (US 6,449,095 B1).

1
Separate patentability is not argued for claims 2-22 and 39-42. Except for
our ultimate decision, these claims are not discussed further herein.
Appeal 2010-008736
Application 10/897,015

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Appellants’ Contentions
1. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a), because:
Ohtaki clearly notes that: "However, the diffraction grating
according to the present invention is adapted to use not the
zero-order diffracted beam of red and blue, but the blue
secondary diffracted beam and the red primary diffracted beam,
which is lower in order by one than the secondary." Ohtaki,
7:52-7:57.
It is well settled that that prior art is interpreted not to teach an
invention particularly when stated objectives of the prior art
reinforced this interpretation. See WMS Gaming Inc. v.
International Game Tech., 184 F.3d 1339, 51, USPQ2d 1385
(Fed. Cir. 1999). In the present case, Ohtaki expressly teaches
to not use the zero-order diffracted beam. Accordingly, it is
respectfully submitted that combination with Komma, which
does use the 0-th order diffracted light (see Komma, Abstract),
is therefore improper.
(App. Br. 13).
2. Appellants also contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a), because “there is no motivation that the use of a
second-order light of the long wavelength light in Ohtaki be applied to
Komma.” (App. Br. 12).
3. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a), because “there is no motivation to combine the
use of a second-order light of the long wavelength light in Ohtaki to Komma
because the technical solution in Komma is different form in Ohtaki.” (App.
Br. 12).
4. Appellants present seven additional arguments that there is no
teaching, suggestion, or motivation to combine the references. (App. Br.
13-14 and Reply Br. 4-6).
Appeal 2010-008736
Application 10/897,015

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Issues on Appeal
Did the Examiner err in rejecting claim 1 as being obvious?

ANALYSIS
As to Appellants’ above contention 1, we disagree. Although
Appellants point to language in Ohtaki, Appellants do not explain what in
Ohtaki meets the requirements of a teaching away from the invention
claimed. “A reference may be said to teach away when a person of ordinary
skill, upon reading the reference...would be led in a direction divergent from
the path that was taken by the applicant.” In re Haruna, 249 F.3d 1327,
1335 (Fed. Cir. 2001)(citation omitted). A reference does not teach away if
it merely expresses a general preference for an alternative invention from
amongst options available to the ordinarily skilled artisan, and the reference
does not discredit or discourage investigation into the invention claimed. In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). We do not find teaching
away in the situation before this Board.
As to Appellants above contentions 2-4, Appellants present a host of
ill-advised lack of a teaching, suggest, and motivation to modify arguments.
Appellants fail to acknowledge the Court’s explicit rejection in KSR of the
rigid requirement that the art provide a teaching, suggestion, or motivation
for a modification. KSR Int'l Inc. v. Teleflex Inc., 550 U.S. 398, 415
(2007)(“We begin by rejecting the rigid approach of the Court of Appeals.”).
The Examiner’s rejection is structured as a mere substitution of one
known and used light order for another. The Court stated that “when a
patent claims a structure already known in the prior art that is altered by the
mere substitution of one element for another known in the field, the
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Application 10/897,015

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combination must do more than yield a predictable result.” KSR, 550 U.S. at
416. The proper issue here is whether the substitution has a predictable
result and if not, has the Examiner provided “some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988
C.A.Fed.2006)).
We treat Appellants’ various lack of a teaching, suggestion, and
motivation to modify arguments as an argument that the result is not
predictable and therefore the Examiner has not provided the required
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness. We agree that the prior art cited does not show
predictable results if only one of the short and long wavelength pair is
changed. Rather, the references themselves show the complex interaction of
the lens structures and the particular orders of short and long wavelength
pairs that are selected. Given this complex relationship, we find insufficient
the Examiner’s statement that it would be obvious to modify “by using a
second order diffracted light of the long wavelength light for recording
and/or reproduction data on/from the DVD in order to obtain another
alternative embodiment that can read and write information on optical discs
or surfaces that employ different wavelengths.” (Ans. 4). Such a limited
articulated reasoning is only appropriate where the predictable result is
self-evident or has been explained by the Examiner. We find neither here.
Appeal 2010-008736
Application 10/897,015

6
CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1-22 and 39-42 as being unpatentable under 35 U.S.C. § 103(a).
(2) On this record, claims 1-22 and 39-42 have not been shown to be
unpatentable.

DECISION
The Examiner’s rejections of claims 1-22 and 39-42 are reversed.

REVERSED

ELD