Ex Parte Masumura

Patent Trial and Appeal Board

Jun 25, 2018

14708062 (P.T.A.B. Jun. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
141708,062 05/08/2015 Takahiro Masumura
34904 7590 06/27/2018
CANON U.S.A. INC. INTELLECTUAL PROPERTY DIVISION
15975 ALTON PARKWAY
IRVINE, CA 92618-3731
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2000-7594-cont-CINC 6532
EXAMINER
KISH, JAMES M
ART UNIT PAPER NUMBER
3737
NOTIFICATION DATE DELIVERY MODE
06/27/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
skalminov@cusa.canon.com
IPDocketing@cusa.canon.com
mkavetsky@cusa.canon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte T AKAHIRO MASUMURA
Appeal2017-000376
Application 14/708,062
Technology Center 3700
Before JEFFREY N. FREDMAN, DEBORAH KATZ, and
ULRIKE W. JENKS, Administrative Patent Judges.
JENKS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant 1 appeals from Examiner's
decision to reject claims 2 and 4--32 as obvious and on the grounds of non-
statutory obviousness-type double patenting. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant is the Applicant, Canon Kabushiki Kaisha, which, according to
the Brief, is the real party in interest. Br. 3.
Appeal2017-000376
Application 14/708,062
STATEMENT OF THE CASE
In holography, an interference pattern generated by
interference between the modulated light and a reference wave
can be recorded in a holographic material, and also the
interference pattern can be detected by a photodetector, such as
a CCD sensor and a CMOS sensor. A technique to detect the
interference pattern by the photodetector is referred to as digital
holography.
Spec. i-f 33. The Specification also explains that "a phase conjugation of
light can retrace its trajectory." Id. i-f46.
Claims 2 and 4--32 are on appeal, and can be found in the Claims
Appendix of the Appeal Brief. Claims 2 and 17 are representative of the
claims on appeal, and read as follows:
2. An apparatus comprising:
a first irradiation unit configured to irradiate a medium
with an incident wave;
an ultrasound device configured to focus an ultrasound
wave onto a position in the medium such that the incident wave
is modulated into a frequency-shifted wave at the position
where the ultrasound wave is focused by the ultrasound device;
a holographic material;
a second irradiation unit configured to irradiate the
holographic material with a reference wave, a frequency
difference between the reference wave and the incident wave
being exactly or approximately equal to a frequency of the
ultrasound wave focused by the ultrasound device, and to
record information corresponding to an interference pattern
formed by interference between the frequency-shifted wave and
the reference wave by the holographic material, and
a third irradiation unit, after the information is recorded
on the holographic material, configured to irradiate the
holographic material with a reading wave substantially in a
direction opposite to a direction of the reference wave so that
the holographic material generates a reconstructed wave to
irradiate the medium to retrace trajectory of the frequency-
shifted wave to the position where the ultrasound wave is
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focused by the ultrasound device.
1 7. An apparatus comprising:
a first irradiation unit configured to irradiate a medium
with an incident wave;
an ultrasound device configured to focus an ultrasound
wave onto a position in the medium such that the incident wave
is modulated into a frequency-shifted wave at the position
where the ultrasound wave is focused by the ultrasound device;
a first detection unit configured to obtain information
corresponding to an interference pattern generated by
interference between the frequency-shifted wave and a
reference wave;
a second irradiation unit configured to irradiate the first
detection unit with the reference wave, a frequency difference
between the reference wave and the incident wave being
exactly or approximately equal to a frequency of the ultrasound
wave focused by the ultrasound device, and
a generation unit configured to irradiate the medium with
a phase conjugation wave of the frequency-shifted wave to
irradiate the medium to retrace trajectory of the frequency-
shifted wave to the position where the ultrasound wave is
focused by the ultrasound device based on the information
obtained by the first detection unit.
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Appellant requests review of the following grounds of rejection2 :
I. Claims 2, 4--13, 15-17, 19, 21-28, and 30-32 as under
35 U.S.C. § 103(a) as unpatentable over Gross3 in view ofYaqoob. 4
II. Claims 14 and 29 under 35 U.S.C. § 103(a) as unpatentable over
Gross in view of Y aqoob and further in view of Huignard. 5
III. Claim 20 under 35 U.S.C. § 103(a) as unpatentable over Gross in
view of Y aqoob and further in view of Suganuma. 6
IV. Claims 4--23 on the ground of non-statutory obviousness-type double
patenting over US 9,057,695 B2 issued June 16, 2015. 7
I. Obviousness over Gross and Yaqoob
The issue is: Does the preponderance of evidence of record support
Examiner's conclusion that the Gross and Yaqoob renders obvious the
2 Examiner has construed claims 2, 3, 5-8, 10, 12, 15-18, 22-24, 26, 27, 31,
and 32 as invoking 35 U.S.C. § 112(±) or pre-AIA 35 U.S.C. § 112, sixth
paragraph. Final Act. 2-5; see Advisory Action 2 (mailed Sept. 21, 2015).
"The claims have been interpreted to cover the corresponding structure
described in the specification that achieves the claimed function and
equivalents thereof." Final Act. 4--5. We note that Appellant directs us to
several points in the Specification that recite various structures, but does not
otherwise rebut or explain why Examiner's claim interpretation is in error.
See Appeal Br. 9-11. We need not address this issue, however, because
neither party identifies any impact of the claim interpretation on the prior art
or double patenting rejections.
3 Gross et al., US 2008/0037367 Al, published Feb. 14, 2008 ("Gross").
4 Yaqoob et al., US 2009/0009834 Al, published Jan. 8, 2009 ("Yaqoob").
5 Huignard et al., US 4,284,324, issued Aug. 18, 1981 ("Huignard").
6 Suganuma, US 6,377,367 Bl, issued Apr. 23, 2002 ("Suganuma").
7 Appellant does not argue the merits of this rejection, but notes that terminal
disclaimer may be submitted once all other issues are resolved. Appeal
Br. 30. We, therefore, summarily affirm this rejection.
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creation of a reading wave substantially in a direction opposite to a direction
of the reference wave as claimed?
Findings of Fact
We agree with Examiner's factual findings and conclusion, as set out
in the Final Office Action8 and Answer which we adopt and incorporate
herein by reference, we highlight the following for emphasis only:
FF 1. Gross teaches an acousto-optic imaging system as shown in Figure 1
reproduced below:
Figure 1 shows an object 1 to be imaged and a piezo-electric
transducer 2 in contact with the object. Gross i-f 72. "The piezo-
electric transducer 2 is also designed to focus on a given area 5 of the
object to be imaged for which optical information is required." Id.
i-f 73. The system contains "a light wave generation device GEN
designed to generate two coherent light waves, frequency-shifted by
approximately the value of the acoustic frequency fa imparted by the
piezo-electric transducer 2 to the area 5 of the object 1 to be imaged."
Id. i-f 75.
8 Final Office Action mailed July 9, 2015 ("Final Act.").
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FF2. Gross teaches that "[t]he light is scattered by the object 1 and
generates a signal wave SIG extending in a wide solid angle behind
the imaged object 1 relative to the direction of application of the
incident wave INC." Gross i-f 83. "[T]he signal wave SIG is applied
to a first side 9a of the photo-refractive crystal 9 .... [A]n image of
the 'rear' side la of the object 1 to be imaged is formed on the side 9a
of the photo-refractive crystal 9." Id. i-f 86. "The pump wave PMP
generated by the generator device GEN ... is applied to the
photorefractive crystal 9 ... orthogonal to the side 9a using a second
optical device such as a reflecting plate 16." Gross i-f 87.
FF3. Gross teaches:
The use of a photo-refractive crystal 9 makes it
possible to eliminate the noise due to the unmarked
component of the signal wave because the photo-
refractive effect that takes place in the crystal is selective,
and occurs only for the acousto-optic component of the
signal wave SIG. Indeed, the pump wave PMP is at the
same frequency as the acousto-optic component. In these
conditions, only the interference between the pump wave
PMP and the acousto-optic component of the signal wave
SIG remains stable over time .... To make the
interference visible against this continuous background
noise, it is preferable to have an interferogram varying in
time which leads to a temporal modulation of the signal
obtained on the photodiode 12. To this end, one of the
waves involved in generating the interferogram can be
amplitude- or phase-modulated.
Id. i-f 94. One example of phase modulating the incident wave INC is
to apply the acoustic wave generated by the piezo electric transducer.
Id. i-f 95.
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FF4. Yaqoob teaches optical phase processing by using a phase conjugate
mirror (PCM) created with a holographic recording medium. A PCM
is shown in Figure 3, reproduced below.
Figure 3 shows "[a] signal beam 310 meets a holographic
recording medium 360 in a presence of a first beam 370 ....
The resulting interference pattern 3 7 4 represented by slanted
lines is recorded inside the holographic recording medium
360." Yaqoob i-f 40. "[A] second beam 375 and the
interference pattern 374 inside the holographic recording
medium 360, thereby forming the PCM. A conjugate signal
beam 312 is generated in a direction opposite to that of the
signal beam 310." Id. i-f 42.
FF5. Yaqoob teaches an optical phase processing system that allows for
viewing through a biological medium. Figure 4b, reproduced below,
shows such a system.
480
420
Figure 4b shown above teaches that
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[a] second beam 4 7 5 and the interference pattern 4 7 4
interact to generate at least one reconstructed beam 4 7 6
having a phase substantially opposite to a phase of the at
least one scattered beam 472[.] As a result, the at least
one reconstructed beam 4 7 8 is configured to reach a
viewer 425 through the scattering medium 420[,]
for example a biological tissue. Yaqoob i-fi-1 44--45. Visualization of a
reconstructed beam is not limited to the viewer, as suggested in Figure
4b above, but can also be achieved by a detector. See id. i165 ("the
reconstructed beam 1278 reaching the detector 1226").
FF6. Yaqoob teaches that "the reconstructed beam 1278 may be used to
evaluate the scattering characteristics in a scattering medium 1220."
Yaqoob i165. "An interference pattern 1374, recorded in the manner
explained before, bears an information representing the scattering
medium 1320. This information may be used to identify the scattering
medium 1320 itself or track/observe changes occurring in the
scattering medium in time." Id. i1 66.
Principle of Law
"[W]hen 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 combination must do more than yield a predictable result." KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (citing US. v. Adams,
383 U.S. 39, 50-51 (1966)).
Analysis
Examiner finds that Gross teaches all the elements of the claimed
apparatus but for a reconstruction wave that is sent "back through the
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medium, thereby failing to teach an irradiation unit configured to irradiate
the holographic material with a reading wave after the information is
recorded on the holographic material." Final Act. 9. Examiner relies on
Yaqoob to teach "a reconstructing beam 478 [that] passes back through the
medium for visualization purposes." Id. Examiner concludes
[i]t would have been obvious to one of ordinary skill in the art
at the time the invention was made to utilize this method of
reconstruction as an alternative to the use of a photo diode, as is
taught by Gross because Y aqoob teaches that this may be used
in medical imaging "to identify the scattering medium itself or
track/observe changes occurring in the scattering medium in
time (see paragraph 66)." By observing changes occurring in
the scattering medium in time this allows a physician to provide
a diagnosis and as such, this will provide the same outcome
taught by Gross, thereby providing a functional equivalent to
the methods and structural configurations taught by Gross.
Id. at 9-10.
Claim 2
With respect to claim 2, Appellant contends that neither Yaqoob nor
Gross teach "creating a reference wave that retraces the trajectory to the
position where the ultrasound wave is focused." Appeal Br. 14. "Yaqoob
does not suggest or disclose a technical idea of returning a wave to a
position that has been set by the ultrasound device." Id. at 15. "None of the
cited art suggest and disclose an apparatus that separately or in combination
recite an apparatus that is can be configured to produce a wave that retraces
a trajectory in a scattering medium to a position determined by the
ultrasound wave." Reply Br. 3.
We are not persuaded. Appellant errs in attacking the references
individually, as the rejection is based on a combination of references. See In
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re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The references
cannot be read in isolation, but for what they teach in combination with the
prior art as a whole. See id.
Gross teaches an acousto-optical device that has a light wave
generation device that provides two coherent light waves. FF 1. One wave,
the INC wave, enters the medium containing an object of interest, passes
over the object of interest, and exits the medium as a SIG wave before
entering the holographic crystal. FFl, FF2. A second PMP wave also enters
the holographic medium, at an orthogonal angle, and these two waves (SIG
and PMP) then combine. FF2. Gross explains that the combination of SIG
wave and the PMP wave creates an interference that is stable but generally
not visible against the background noise. See FF3. In order to make the
interference pattern visible against the background, Gross proposes using
phase modulation of the incident wave INC with the piezo electric
transducer. FF3; see Gross i-f 95. This modulated signal exits the
holographic medium and is then processed by photodiode 12. FFl, FF3. As
acknowledged by Examiner "Gross teaches that the reconstruction wave is
sent to a photo diode and not back through the medium, thereby failing to
teach an irradiation unit configured to irradiate the holographic material with
a reading wave after the information is recorded on the holographic
material." Final Act. 9.
Yaqoob teaches visualizing an interference pattern inside the
holographic medium by using a phase conjugate mirror (PCM). FF4.
Yaqoob, similar to the process in Gross, provides two beams to record an
interference pattern between signal beam 310 and first beam 370 in the
holographic medium. FF4. Yaqoob's PCM detects an interference pattern
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inside the holographic medium by applying a beam to the holographic
material so that "[a] conjugate signal beam 312 is generated in a direction
opposite to that of the signal beam 310." FF4. Thereby, Yaqoob teaches a
reconstructed beam having a phase opposite to the phase of the scattered
beam. FF5. The reconstructed beam can be used to evaluate the medium as
well as changes in the medium over time. FF6. Yaqoob teaches that an
image of an illustrative target passed through a scattering medium and then
reconstructed using the spatial information recorded in the holographic
recoding medium provides better visualization of the physical details. See
Yaqoob ,-r 50, Fig. 5c.
It is the combination of Gross and Y aqoob which renders these the
claimed structure obvious because, as Examiner explains, the reconstructing
beam 4 78 of Yaqoob that passes back through the medium for visualization
purposes is a functional visualization equivalent to the photodiode of Gross.
See Final Act. 9-10; see In re Keller, 642 F.2d 413, 425 (CCPA 1981) ("The
test for obviousness is not whether the features of a secondary reference may
be bodily incorporated into the structure of the primary reference; nor is it
that the claimed invention must be expressly suggested in any one or all of
the references. Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art".) As
Examiner explains, the area of Gross that is subjected to the focused
ultrasonic vibrations creates an index grading in the holographic crystal.
Ans. 3.
[W]hen a reconstruction wave [as disclosed in Yaqoob] is sent
to the crystal after the [holographic] crystal has recorded the
interference pattern ... [ t ]he index grating within the
[holographic] crystal will send a reading wave back from where
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it came from, which [in this case] is the area 5 where the
ultrasound was focused.
Id. at 3. Yaqoob teaches that it is "an interaction of a second beam 375 and
the interference pattern 374 inside the holographic recording medium 360,
thereby forming the PCM. A conjugate signal beam 312 is generated in a
direction opposite to that of the signal beam 31 O." Yaqoob i-f 42. We find
no error with Examiner's reliance on Yaqoob's use of PCM mirror to create
a signal in a direction opposite of the signal beam that can be used to
identify aspects of the scattering medium overtime. Final Act. 10 (citing
Yaqoob ,-r 65).
We are also not persuaded by Appellant's contention that Examiner
has not provided sufficient motivation to combine the references. See
Appeal. Br. 16. Examiner finds Yaqoob's method teaches observing
changes in the scattering medium overtime. See Ans. 2; FF6. This is the
same method taught by Gross, that looks at changes in the medium overtime
which allows the physician to provide a diagnosis. See Ans. 2. Examiner
finds that these two methods are functional equivalents based on observing
changes in the medium overtime. Id. We find Examiner's identification of
functional equivalence reasonable in finding a motivation for combining the
methods.
We are also not persuaded by Appellant's contention that Examiner is
relying on hindsight. See Appeal Br. 15. Appellant has not identified what
information was relied on by Examiner and could only have been gleaned
from the Specification in order to arrive at the claimed invention. See In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Accordingly, we are not
persuaded by Appellant's contention that the combination of Gross and
Yaqoob does not teach all the elements of the apparatus recited in claim 2.
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We affirm Examiner's rejection with respect to claim 2 based on the
combination Gross and Yaqoob.
Claim 17
With respect to claim 17, Appellant contends that neither Y aqoob nor
Gross teach a "phase conjugated wave [that] is based on information
obtained by the first detection unit. Yaqoob discloses using the interference
pattern in a holographic material that includes information corresponding to
the interference pattern but is not information obtained by a detection
unit." Appeal Br. 18; see Reply Br. 4.
We are not persuaded. Claim 1 7 recites "a first detection unit
configured to obtain information corresponding to an interference pattern
generated by interference between the frequency-shifted wave and a
reference wave." Here, the claim makes clear that the detection unit must
obtain information with respect to the interference pattern. Neither the
Specification nor claim 17, however, define the structure of a detection unit.
Therefore, a detection unit is reasonably interpreted to be something that can
hold information about the interference pattern including for example: CCD
sensor, CMOS sensor, as well as holographic material. See claim 20; see
also claim 30 ("wherein the first detection unit is configured to obtain the
information corresponding to the interference pattern by a phase-shifting
digital holography technique"). Based on these disclosures, we agree with
Examiner that the detection unit of claim 17, just like claim 2, reasonably
encompasses holographic recording materials that can capture the
information about the interference pattern.
Gross teaches a first beam producing a first irradiation unit and a
second irradiation unit, as well as capturing an interference pattern in the
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holographic material, in other words the holographic material records the
interference pattern. See Ans. 4; Final Act. 11-12; FF1-FF3. Examiner
explains that Yaqoob is relied on for teaching the second beam that emits in
a direction opposite to the first beam. Ans. 4; see Final Act. 11-12; FF4-
FF6.
Appellant contends:
Gross does not disclose such a "generation unit". In which the
generation unit is configured to irradiate the medium with a
phase conjugation wave of the frequency-shifted wave to
irradiate the medium to retrace trajectory of the frequency-
shifted wave to the position where the ultrasound wave is
focused by the ultrasound device based on the information
obtained by the first detection unit.
Reply Br. 4.
We are not persuaded by Appellant's contention because this
argument does not take into account the teachings of Yaqoob. See Final Act.
11-12; Ans. 5-6; see Merck, 800 F.2d at 1097. Accordingly, we affirm
Examiner's rejection with respect to claim 17 based on the combination
Gross and Yaqoob.
Claims 7, 9, 24, and 25
Claim 7 ultimately dependents on claim 2 and further recites "wherein
the detection unit is an ultrasound detector configured to detect a
photoacoustic signal output from the medium in response to irradiation of
the reconstructed wave."
With respect to claim 7, Appellant contends that
Gross merely teaches that the transducer used to generate the
ultrasound signal can also be used to create an ultrasound image
using echography. Echography involves producing a sound,
listening for the sound, and then using the delay in receiving the
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sound and the intensity of the sound to produce an image. An
individual skilled in the art would not equate this to the
detection of a photoacoustic signal as suggested by the
[E ]xaminer.
Appeal Br. 19.
We are not persuaded. "[A]pparatus claims cover what a device is,
not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909
F.2d 1464, 1468 (Fed. Cir. 1990). Examiner explains that Gross states that
the system can not only be used to modulate a light source but can also be
used to generate an ultrasound image. Ans. 5; see Gross i-f 92 ("This image
can also be coupled to an image by ultrasound ( echography) simultaneously
formed of the object 1, because the used piezo-electric transducer 2 used can
be of the type of those to generate such an ultrasound image."). In in other
words, Gross teaches that the device itself can be used to detect reflected
sound, thus, as pointed out by Examiner the device is capable of receiving
any signal that produces a sound and this would encompass a photoacoustic
image. See Ans. 5 ("an ultrasound transducer that is used to obtain a
traditional ultrasound image is no different than an ultrasound transducer
that is used to obtain a photoacoustic image").
Accordingly, we are not persuaded by Appellant's contention that the
combination of Gross and Yaqoob does not teach all the elements of the
apparatus recited in claim 7. We affirm Examiner's rejection with respect to
claim 7 based on the combination Gross and Yaqoob. Claims 9, 24, and 25
are not separately argued and fall for the same reasons as claim 7. See
Appeal Br. 19.
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Claims 10, 11, 27, and 28
Claim 10 depends on the apparatus as disclosed in claim 2 and further
recites that "the third irradiation unit includes an electromagnetic wave
source different from the common electromagnetic wave source."
With respect to claim 10, Appellant contends that the claim "recites
that a common source may be used for two different irradiation units, while
a third different irradiation unit may be used for a third irradiation unit"
which is more than mere duplication of parts. Appeal Br. 21.
This argument amounts to no more than quoting the claim language
and stating that it renders the claim patentable; more is required of an appeal
argument. See 37 C.F.R. § 41.37(c)(l)(vii); In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011). Here, Examiner acknowledges that the Yaqoob does
not explicitly state using a separate light source but finds that this would
have been an obvious duplication of parts. Final Act. 10-11 (citing St. Regis
Paper Co. v. Bemis Co., 549 F.2d 833 (7th Cir. 1977)); Ans. 6 ("merely
duplicating a light source (i.e., choosing to add a second light source instead
of utilizing a single light source) lends itself to the same matter of design
choice" (emphasis omitted)). Based on the facts in this record, we find no
error with Examiner's conclusion that using one or multiple light sources to
irradiate a sample from different directions would have been obvious to one
of ordinary skill in the art. See In re Harza, 274 F.2d 669, 671 (CCPA
1960) ("It is well settled that the mere duplication of parts has no patentable
significance unless a new and unexpected result is produced.").
Accordingly, we are not persuaded by Appellant's contention that the
combination of Gross and Yaqoob does not teach all the elements of the
apparatus recited in claim 10. We affirm Examiner's rejection with respect
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to claim 10 based on the combination Gross and Yaqoob. Claims 11, 27,
and 28 are not separately argued and fall for the same reasons as claim 11.
See Appeal Br. 21.
Claims 12 and 13
Claim 12 depends on the apparatus as disclosed in claim 2 and further
recites that "the third irradiation unit include a common electromagnetic
wave source."
With respect to claim 12, Appellant contends that Gross does not
teach an irradiation unit to create a reading wave and "Y aqoob does not
teach a structure corresponding to irradiation units each of which emit a
beam." Appeal Br. 21. Thus, the combination does not arrive at "a reading
wave substantially in a direction opposite to a direction of the reference
wave." Id. at 22.
We are not persuaded. Examiner finds that Gross teaches generating
the first and second beams while Y aqoob teaches the reading wave used to
create the reconstruction beam. Final Act. 11. Based on this combination
Examiner concludes that
it would have been obvious to one of ordinary skill in the art at
the time the invention was made to utilize the same light source
for both of these beams in order to minimize system
components (i.e., to integrate all light generation to a single
system component), thereby decreasing overall size of the
system.
Id. (citing elements 670 and 675 in Yaqoob Figure 6).
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Yaqoob Figure 6 is reproduced below:
6()3 860
/
~: }-------------'~-
L: :·::· ~
----;~ ~C~~G(,
r/ : " c• :)
610 : ,, c ,,
/
620
(a/
~60 t=Â¥'" 675
620 620
(b) (c)
FIG. 6 shows a transmissive arrangement to illuminate a
scatterer. The transmissive arrangement may also target a
scatterer. In a three-step process, a signal beam 610 enters a
scattering medium 620 including scatterers 603 in FIG. 6(a).
Some of the scatterers 603 may be strong scatterers. The
forward scattered beam 672 travels through the scattering
medium 620 towards a holographic recording medium 660, as
shown in FIG. 6(b ). At least one scattered beam 672 is
transmitted to the holographic recording medium 660 in a
presence of a first beam 670, preferably a plane wave. An
interference pattern 674 is recorded in the holographic
recording medium 660 as described in FIG. 6(b ). In a presence
of a second beam 675, preferably a plane wave, oriented
substantially in an opposite direction to the direction of the first
beam 670, at least one reconstructed beam 673 is generated
from the interference pattern 674. The reconstructed beam 673
travels through the scattering medium 620 to illuminate the
scatterer 603.
Yaqoob i-f 52 (emphasis added). Here, Yaqoob shows a first beam 670
pointing up in the Figure while the second beam 675 points down. This
would be two beams in opposite directions. Further, Y aqoob discusses that
these beams are plane waves creating a reconstructed beam. Based on these
disclosures in Yaqoob, we agree with Examiner that it would be reasonable
that light beams 670 and 675 could be generated from the same source in
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order to minimize system requirements. Appellant has not provided
persuasive arguments or directed us to persuasive evidence that would
indicate using the same light source as proposed by Examiner would not
work in the application. We find Examiner's proposed reason for modifying
the structures namely to minimize the overall size is a reasonable rationale
for making the modifications. See Final Act. 11 ("utilize the same light
source for both of these beams in order to minimize system components (i.e.,
to integrate all light generation to a single system component), thereby
decreasing overall size of the system").
Accordingly, we are not persuaded by Appellant's contention that the
combination of Gross and Y aqoob does not teach all the elements of the
apparatus recited in claim 12. We affirm Examiner's rejection with respect
to claim 12 based on the combination Gross and Yaqoob. Claim 13 is not
separately argued and falls for the same reasons as claim 12. See Appeal
Br. 22.
Claim 21
Claim 21 depends on the apparatus as disclosed in claim 1 7 and
further recites that "wherein the generation unit comprises a spatial light
modulator."
With respect to claim 21, Appellant contends that "[a Jn individual
skilled in the art would understand that the modulation would have to be
applied uniformly across the entire SIG or PMP wave. An individual skilled
in the art would not be motivated to use spatial light modulator." Appeal
Br. 23.
We are not persuaded. As Examiner explains that a "spatial light
modulator (SLM) is a device used to modulate the intensity, the phase, or
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both the intensity and phase of light." Final Act. 12. Moreover, as
Examiner explains "claim 21 is an apparatus claim and it merely states that
the generation unit comprises a spatial light modulator but does not require
the use of such a component (as such would be intended use or functional
language in an apparatus claim that fails to positively limit the structure
itself)." Ans. 7. We see no error with Examiner's conclusion that adding an
SLM into Gross's apparatus is obvious, especially since there are no
locational requirements for the modulator.
Claim 30
With respect to claim 30, Appellant contends that Gross does not
suggest or discloses "phase-shifting digital holography technique."
Appeal Br. 23.
We are not persuaded. In the Answer, Examiner provides more detail
and explains how Gross meets "the acoustic frequency as a function of first
and second spatial modulators" limitations of the claim. Ans. 7. Moreover,
Examiner explains that:
The disclosure of Gross makes it clear that the frequency
difference between the incident wave and the pump wave
(equivalent to the incident and reference of the application) is
equal to the acoustic frequency (see paragraph 79 as well as
paragraph 111 - "the frequency difference fa= 2 MHz between
the carrier component of the signal wave and the pump wave
PMP. ''). Therefore, these are the same equation. Furthermore,
paragraph 111 of Gross states that TP x fa>> 1. It is noted that
the time needed to form the index is equivalent to N/fc (i.e., the
number of measurements divided by the frame rate). By simple
substitution, this equation from paragraph 111 of Gross
becomes Nlfc x fA >> 1. When re-arranged, this becomes fA >>
fc!N. Therefore, it can be seen that the acoustic frequency is
much larger than fc/N, thereby making this value negligible,
which is why equation ( 1) on page 24 of the Brief states that the
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difference between the frequencies of the reference wave and
the incident wave is approximately equal to the acoustic
frequency plus this other value (because the other value is
negligible compared to FA).
Id. at 8.
In the Answer, Examiner rebuts Appellant's contentions presented in
the Appeal Brief. Examiner provides a detailed explanation of why Gross
teaches the elements of claim 30 that Appellant's do not rebut this
explanation in the Reply Brief. Based on the disclosure presented in the
Answer in conjunction with the teachings Gross and Y aqoob we find that
Examiner has identified sufficient evidence to support a prima facie case
based on the combined teaching.
Having considered all of Appellant's arguments and having found
them to be unpersuasive, we affirm Examiner's rejection of claims 2, 4--13,
15-17, 19, 21-28, and 30-32 as described above in conjunction with the
reasons of record.
II. Obviousness over Gross, Yaqoob, and Huignard
With respect to claim 14, Appellant contends that Huignard "teaches
away from the use of a spatial filter" because it discloses a system that does
not use a filter. Appeal Br. 27.
We are not persuaded. As explained by Examiner, Huignard is used
to teach conventional filters and not the particular ultrasound system recited
in the reference.
Huignard states that a diffracted optical beam (which is an
ultrasound shifted beam) passes through the filter which
enables this portion of the light to be isolated. As such, this
teaches that a conventional method to isolate an ultrasound
modulated optical beam in these types of devices is to utilize a
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spatial filter. Huignard provides an additional method by which
this separation may occur.
Ans. 9. Examiner is not relying on Huignard's ultrasound to be incorporate
into Gross. Id.
III. Obviousness over Gross, Yaqoob, and Suganuma
With respect to claim 20, Appellant contends that Suganuma "teaches
away from Gross in which a faster single pixel detector 12 (photodiode) is
used. . . . Suganuma instead discloses using the CCD to detect information
in the reproduced reference beam that was stored in the hologram." Appeal
Br. 29.
We are not persuaded. Even if better alternatives exist in the prior art,
that "does not mean that an inferior combination is inapt for obviousness
purposes." In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012). As
explained by Examiner, the recognition that certain detectors may have
advantages in certain situations would not detract from the teaching that they
could both be used to gather data. Ans. 9-10. Here, Examiner relies on a
design choice analysis that one of ordinary skill in the art would understand
the shortcomings of the various detectors and choose the one that is best
suited for a particular system. Id. at 10; see also KSR, 550 U.S. at 417
("[W]hen a patent 'simply arranges old elements with each performing the
same function it had been known to perform' and yields no more than one
would expect from such an arrangement, the combination is obvious.").
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SUMMARY
We affirm the rejection of claims 2, 4--13, 15-17, 19, 21-28, and 30-
32 as under 35 U.S.C. § 103(a) over Gross and Yaqoob.
We affirm the rejection of claims 14 and 29 under 35 U.S.C. § 103(a)
over Gross, Yaqoob, and Huignard.
We affirm the rejection of claim 20 under 35 U.S.C. § 103(a) over
Gross, Y aqoob, and Suganuma.
We summarily affirm the rejection of claims 4--23 on the ground of
non-statutory obviousness-type double patenting over US 9,057,695 B2
issued June 16, 2015.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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