Ex Parte Lerner et al

Board of Patent Appeals and Interferences

Nov 29, 2010

11149605 (B.P.A.I. Nov. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SCOTT LERNER and JAMES W. RING
____________________

Appeal 2009-009480
Application 11/149,605
Technology Center 2800
____________________

Before ALLEN R. MacDONALD, THOMAS S. HAHN, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-009480
Application 11/149,605

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STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134 from a non-final rejection of
claims 1-4, 7, 10-12, 16-18, 21, and 22. We have jurisdiction under 35
U.S.C. § 6(b).

Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows:
1. A light modulator assembly, comprising:
first, second, and third light modulators;
first and second dichroic mirrors, said first dichroic mirror
being located at an optical pupil of said assembly and being
configured to split a beam of light into a first component beam and an
intermediate beam and to transmit said first component beam to said
first light modulator and to reflect said intermediate beam to said
second dichroic minor, said second dichroic mirror being configured
to split said intermediate beam into second and third component
beams and to direct said second component beam to said second
modulator and said third component beam to said third modulator; and
a third dichroic mirror configured to reflect an output of said
first light modulator and to pass outputs of said second and third light
modulators to display optics.

Rejections
1. The Examiner rejected claims 1-4, 7, 10-12, 16-18, 21, and 22
as being unpatentable under 35 U.S.C. § 103(a) over the combination of
Shimizu (5,420,655) and Kang (7,172,287).
Appeal 2009-009480
Application 11/149,605

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2. The Examiner rejected claims 1-4, 7, 10-12, and 16-18 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Aoto
(6,454,416) and Kang.2

Appellants’ Contentions
1. As to claim 1, Appellants contend that Shimizu and Kang do
not support a rejection based on obviousness because:
(A) “No mention is made whatsoever in Shimizu of dichroic
mirrors, only dichroic filters which often include polarizing
elements.” (App. Br. 17).
(B) “[N]one of the cited references teach or suggest the claimed
assembly comprising three dichroic mirrors.” (App. Br. 17).
(C) “Appellant has eliminated the need for the relatively
expensive and bulky prisms and polarizers that characterize the prior
art, including the prior art of record.” (App. Br. 18).
2. As to the remaining claims, at pages 18-21 of the Appeal Brief,
Appellants quote language of claims 8-10, 13, and 16, and without further
explanation contend that Shimizu and Kang do not support a rejection based
on obviousness. These claims stand or fall with claim 1 as “[a] statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.” 37 C.F.R. §
41.37(c)(1)(vii).

2 At best, the rejection based on Aoto and Kang is cumulative to the
rejection based on Shimizu and Kang. Therefore, we vacate the rejection
based on Aoto and Kang.
Appeal 2009-009480
Application 11/149,605

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Issue on Appeal
Did the Examiner err in rejecting claim 1-4, 7, 10-12, 16-18, 21, and
22 as being obvious because the Shimizu and Kang references fail to teach
or suggest the limitations at issue?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred.
We disagree with Appellants’ conclusions. 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.

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-4, 7, 10-12,
16-18, 21, and 22 as being unpatentable under 35 U.S.C. § 103(a) based on
Shimizu and Kang.
(2) Claims 1-4, 7, 10-12, 16-18, 21, and 22 are not patentable.

DECISION
The Examiner’s rejection of claims 1-4, 7, 10-12, 16-18, 21, and 22
based on Shimizu and Kang is affirmed. The Examiner’s rejection of claims
1-4, 7, 10-12, and 16-18 based on Aoto and Kang is vacated.
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)(v).
Appeal 2009-009480
Application 11/149,605

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AFFIRMED

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