Ex Parte Okabe et al

Patent Trial and Appeal Board

Nov 7, 2013

11388205 (P.T.A.B. Nov. 7, 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.
11/388,205 03/24/2006 Hiroshi Okabe 044499-0274 7430
22428 7590 11/08/2013
FOLEY AND LARDNER LLP
SUITE 500
3000 K STREET NW
WASHINGTON, DC 20007
EXAMINER
PAJOOHI GOMEZ, TARA S
ART UNIT PAPER NUMBER
2886
MAIL DATE DELIVERY MODE
11/08/2013 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 HIROSHI OKABE, KENICHI MATOBA, and KAZUHIKO OKA
____________________

Appeal 2011-007889
Application 11/388,205
Technology Center 2800
____________________

Before ERIC S. FRAHM, JOHNNY A. KUMAR, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 28, 29, and 37-39. Claim 30 has been canceled, and claims 1-27 and
31-36 have been withdrawn (App. Br. 4; Ans. 2). Claims 28 and 29 are
independent, with claim 29 being principally argued by Appellants in the
Appeal Brief. An oral hearing was conducted on October 22, 2013. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants disclose an optical device having a projection optical
system including a polarizer P, a first retarder R1, and a second retarder R2
(claim 28), and a light-projection device including a polarizer, a first
retarder, and a second retarder (claim 29), both used for analyzing a sample
D with an analyzer A. (Spec. ¶¶ [0126] and [0134], Figs. 1A and 2). As
shown in Figures 1A and 2, as compared with Figure 1B, Appellants’
disclosed invention reverses the order of the retarders R1 and R2 with
relation to the sample D by rearranging these elements with respect to the
polarizer and analyzer A.
Exemplary Claim
Claims 28 and 29 are the only independent claims, and contain similar
subject matter (e.g., namely the order of the arrangement of the polarizer and
first and second retarders and direction of light passing through the
arrangement, in addition to the relationship of direction of the principal axes
of the first and second retarders). Exemplary independent claim 29 under
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appeal, with emphases added to the disputed portion of the claim, reads as
follows:
29. A light-projection device, comprising a polarizer a
first retarder and a second retarder, wherein
the polarizer, the first retarder and the second retarder
are arranged such that light incident on the polarizer transmits
through the polarizer, the second retarder and the first retarder
in this order, the second retarder has a principal axis oriented
differently from the transmission axis of the polarizer, and the
first retarder has a principal axis oriented differently from the
principal axis of the second retarder, and the direction of the
transmission axis of the polarizer, the direction of the principal
axis of the second retarder and the direction of the principal
axis of the first retarder are relatively fixed.
Examiner’s Rejections
(1) The Examiner rejected claims 28, 29, and 38 as being unpatentable
under 35 U.S.C. § 103(a) over the combination of Menguc (U.S.
2002/0057433 A1) and Sasaki (U.S. 2003/0086033 A1).1 Ans. 3-5.
(2) The Examiner rejected claims 37 and 39 as being unpatentable
under 35 U.S.C. § 103(a) over the combination of Menguc, Sasaki, and
Guoliang Wang et al., Optimization of azimuth angle settings in polarizer-

1 The Examiner (Ans. 3) incorrectly states that claims 28, 29, and 37-39 are
rejected under § 103(a) over Menguc and Sasaki. The rejection only
addresses claims 28, 29, and 38, and fails to discuss the merits of claims 37
and 39 (Ans. 3-5). Claims 37 and 39 are rejected under a different basis
using a third reference to Wang (Ans. 5-6), and the Final Rejection (page 2)
only states that claims 28, 29, and 38 are rejected over Menguc and Sasaki.
Thus, we consider only claims 28, 29, and 38 to be rejected over Menguc
and Sasaki, claims 37 and 39 to be rejected over Menguc, Sasaki, and Wang.
and treat the Examiner’s inclusion of claims 37 and 39 in the heading of the
rejection over Menguc and Sasaki as harmless error.
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compensator-sample-analyzer off-null ellipsometry, APPLIED OPTICS, VOL.
42, NO. 1, pp. 38-44 (January 1, 2003) (hereinafter “Wang”). Ans. 5-6.
Appellants’ Contentions
(1) With regard to claims 28, 29, and 38, rejected under 35 U.S.C.
§ 103(a) over Menguc and Sasaki, Appellants make numerous arguments
(see App. Br. 9-16, Reply Br. 1-3), including:
(a) Menguc does not disclose or suggest the recited order, or
that the directions of the principal axes of the first and second
retarders are relatively fixed (App. Br. 9);
(b) Menguc’s retarders 33 and 34 do not have “fixed” principal
axes (App. Br. 9);
(c) because Menguc operates with changing axes, Menguc
teaches away from any fixing or modification, and Menguc’s retarders
must be rotatable/exchangeable, and not fixed, to obtain experimental
data sets (App. Br. 10; Reply Br. 2-3); and
(d) Menguc and Sasaki fail to disclose or suggest the recited
order and the recited “relatively fixed” axes (App. Br. 15).
(2) With regard to claims 37 and 39, rejected under 35 U.S.C.
§ 103(a) over Menguc, Sasaki, and Wang, Appellants (i) rely on the
arguments made with respect to claim 28, and (ii) contend that Wang fails to
cure the deficiencies of Menguc and Sasaki (App. Br. 16).
Issues on Appeal
Because (i) independent claims 28 and 29 contain similar subject
matter (e.g., namely the order of the arrangement of the polarizer and first
and second retarders and the relationship of direction of the principal axes of
the first and second retarders being relatively fixed), and (ii) Appellants
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argue claim 29 as representative with respect to the group of claims 28, 29,
and 38 rejected over Menguc and Sasaki (see App. Br. 9-15), we select
claim 29 as representative of this group.
Based on Appellants’ arguments in the Appeal Brief (App. Br. 9-16)
and the Reply Brief (Reply Br. 1-3), the following issues are presented on
appeal:
Did the Examiner err in rejecting claims 28, 29, and 38 as being
obvious because the combination of Menguc and Sasaki fails to teach or
suggest the recited “order” of the polarizer and retarders and the “relatively
fixed” axes limitation recited in representative claim 29?
Have Appellants adequately shown that the Examiner erred in
rejecting claims 37 and 39 as being obvious because the combination of
Menguc, Sasaki, and Wang fails to teach or suggest the “order” of the
polarizer and retarders and the “relatively fixed” axes limitation recited in
independent claim 28, from which claims 37 and 39 depend?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions in the Appeal Brief (App. Br. 9-16), the Reply Brief (Reply Br.
1-3), and Oral Hearing that the Examiner has erred. We disagree with
Appellants’ conclusions. With regard to representative claim 29, we concur
with the conclusions reached by the Examiner, and we adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken (Ans. 3-6), and (2) the reasons set forth by the
Examiner in the Examiner’s Answer in response to the Appellants’ Appeal
Brief (Ans. 6-10). We highlight and amplify certain teachings and
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suggestions of the references, as well as certain ones of Appellants’
arguments as follows.
Appellants argue (App. Br. 9) that (i) Menguc’s retarders 33 and 34
do not have “fixed” principal axes, (ii) Menguc and Sasaki fails to disclose
or suggest the recited order and the recited “relatively fixed” axes (App. Br.
15), and (iii) Menguc fails to disclose or suggest axes that are relatively fixed
(App. Br. 9-15; Reply Br. 1-3). However, the Examiner relies upon Sasaki
as teaching the “relatively fixed” limitation, and upon Menguc as teaching
the order limitation. We note that each reference cited by the Examiner
must be read, not in isolation, but for what it fairly teaches in combination
with the prior art as a whole. See In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986) (one cannot show non-obviousness by attacking references
individually where the rejections are based on combinations of references)
(citation omitted).
In this light, Appellants’ argument that Menguc fails to teach
limitations from claim 29, that the Examiner relied upon Sasaki as teaching,
are not persuasive. For similar reasons, Appellants’ argument (App. Br. 15)
that “Menguc and Sasaki fails to disclose or suggest at least these features of
claim 29 in the context of that claim, where for an arrangement of the
polarizer, the second retarder and the first retarder in order, the direction of
the transmission axis of the polarizer, the direction of the principal axis of
the second retarder and the direction of the principal axis of the first retarder
are relatively fixed” (App. Br. 15) is not persuasive. The references are not
required to each individually teach or suggest all of the features of claim 29,
rather Menguc must teach the recited order, and Sasaki must teach the
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recited “relatively fixed” axes relationship, and the combination of the
collective teachings of the references upon which the Examiner relies must
teach or suggest to one of ordinary skill in the art at the time of Appellants’
effective filing date. We agree with the Examiner that this test (for a prima
facie case of obviousness) has been met.
Appellants admit (App. Br. 9) that Menguc teaches some order of
arrangement for the polarizer and first and second retarders, and only dispute
this feature of claim 29 by asserting that “Menguc and Sasaki fails to
disclose or suggest at least these features of claim 29 in the context of that
claim, where for an arrangement of the polarizer, the second retarder and the
first retarder in order, the direction of the transmission axis of the polarizer,
the direction of the principal axis of the second retarder and the direction of
the principal axis of the first retarder are relatively fixed” (App. Br. 15). For
reasons already discussed, this argument is not persuasive of Examiner
error.
Menguc discloses a light-projection device 10 having the order recited
in claim 29 (see Fig. 1) of a polarizer 32, first retarder 34, and a second
retarder 33 for analyzing a sample 29 with an analyzer 23. Sasaki discloses
(see Fig. 1) a polarizer 2 attached to two retarders A and B with an adhesive
3 causing the retarders to have relatively fixed directions of their principal
axes as recited in claim 29. The term “relatively fixed” as used in claim 29
broadly encompasses what is disclosed by Sasaki.
We agree with the Examiner’s findings with respect to the individual
references (Ans. 3-6), and with the Examiner’s determination that it would
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have been obvious to combine the references based on the rationale set forth
by the Examiner (Ans. 5-10), including “to adhere together the polarizer and
two retarders as taught by Sasaki based on the optimum settings of the
polarizer and two retarders for a specific sample as taught by Menguc, since
a single optical element comprising a polarizer and two retarders will
provide many advantages in an optical system, such as limit errors due to
aligning fewer optical elements within a system, reduce dust and other
particles from collecting on the surfaces of the optical element and provide
for a more compact system” (Ans. 7-8; see also Ans. 5 citing Sasaki,
¶ [0029]).
Appellants have not shown the Examiner’s articulated reasoning for
the combination of references (i.e., that modifying Menguc with the
relatively fixed retarder axes feature of Sasaki would simplify structure and
avoid dust) is in error. Similarly, Appellants have not shown that one of
ordinary skill in the art, when viewing Menguc’s optical device 10, would be
discouraged from providing a “relatively fixed” relationship between the
principal axes of directions of first and second retarders in order to simplify
the structure and reduce the collection of dust, as taught by Sasaki.
Although Menguc discloses a preference for providing adjustable optical
axes of the retarders 33 and 34 in order to optimize the apparatus (see ¶
[0044]), once the values of the optical axes of the retarders are optimized
they are then fixed (e.g., the orientation angle of the quarter wave retarder 34
can be set at a fixed value 45 degrees, and the orientation angle of the half
wave retarder 33 can be set at a fixed value of 90 degrees (¶ [0080])).
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In view of the foregoing, we sustain the Examiner’s obviousness
rejection of representative claim 29, as well as claims 28 and 38 containing
similar limitations (i.e., the order and the “relatively fixed” axes).
With regard to the rejection of claims 37 and 39, Appellants merely
argue that Wang fails to cure the deficiencies of the other base references
(App. Br. 16), and rely on the arguments presented as to the first rejection
concerning the base combination of Menguc and Sasaki. Therefore, we
sustain the rejection of claims 37 and 39 for the same reasons provided supra
with respect to claims 28, 29, and 38 (based on representative claim 29).
Thus, we sustain both of the obviousness rejections based on the recited
order and “relatively fixed” axes being taught or suggested by the
combination of Menguc and Sasaki for the reasons given by the Examiner
(Ans. 3-5 and 6-9).
The inventions recited in claims 28, 29, and 37-39 have not been
shown to be patentably distinguishable from the combined teachings of the
applied prior art.

CONCLUSIONS
(1) The Examiner has not erred in determining that the combination of
Menguc and Sasaki teaches or suggests the ordered arrangement for the
polarizer and first and second retarders and the “relatively fixed” directions
of the principal axes of the first and second retarders as recited in
representative claim 29, and claims 28 and 38 grouped therewith.
(2) Appellants have not adequately shown that the Examiner has erred
in determining that the combination of Menguc, Sasaki, and Wang teaches
or suggests the subject matter of claims 37 and 39.
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DECISION
The Examiner’s rejections of claims 28, 29, and 37-39 under
35 U.S.C. § 103(a) are affirmed.
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)(iv).

AFFIRMED

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