Ex Parte Ouderkirk et alDownload PDFPatent Trials and Appeals BoardMar 28, 201914865394 - (D) (P.T.A.B. Mar. 28, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/865,394 09/25/2015 32692 7590 04/01/2019 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 FIRST NAMED INVENTOR Andrew J. Ouderkirk 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. 76996US002 1236 EXAMINER PICHLER, MARIN ART UNIT PAPER NUMBER 2872 NOTIFICATION DATE DELIVERY MODE 04/01/2019 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDREW J. OUDERKIRK, ZHISHENG YUN, TIMOTHY L. WONG, ERIN A. MCDOWELL, and GREGG A. AMBUR1 (Applicant: 3M INNOVATIVE PROPERTIES COMPANY) Appeal2018-003910 Application 14/865,394 Technology Center 2800 Before BEYERL YA. FRANKLIN, N. WHITNEY WILSON, and WESLEY B. DERRICK, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL 1 Appellant identifies the real party in interest as "3M Company (formerly known as Minnesota Mining and Manufacturing Company) of St. Paul, Minnesota and its affiliate 3M Innovative Properties Company of St. Paul, Minnesota." Appeal Br. 2. Appeal2018-003910 Application 14/865,394 Appellant requests our review under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-3, 6, 7, 9-11, 13, 18-20, and 22-25. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). We reverse. STATEMENT OF THE CASE Claim 1 is illustrative of Appellant's subject matter on appeal and is set forth below: 1. A camera comprising: an aperture; an image recording device; a reflective polarizer disposed between the aperture and the image recording device, the reflective polarizer curved about two orthogonal axes; a partial reflector disposed between the reflective polarizer and the image recording device, the partial reflector having an average optical reflectance of at least 30% in a pre- determined plurality of wavelengths; and a quarter wave retarder disposed between the reflective polarizer and the partial reflector, wherein substantially any chief light ray that passes through the aperture to the image recording device is incident on each of the reflective polarizer and the partial reflector with an angle of incidence relative to a surface normal that is less than 3 0 degrees, wherein the reflective polarizer comprises at least one layer substantially optically biaxial at at [sic] least one first location on the at least one layer away from an optical axis passing through an apex of the reflective polarizer and substantially optically uniaxial at at [sic] least one second location away from the optical axis, the at least one layer at the at least one second location having a first refractive index in a thickness direction, a second refractive index in a second direction orthogonal to the thickness direction, and a third 2 Appeal2018-003910 Application 14/865,394 refractive index in a third direction orthogonal to the thickness direction and to the second direction, an absolute value of a difference in the first and second refractive indices being less than 0.02, an absolute value of a difference in the second and third refractive indices being greater than 0.05. The Examiner relies on the following prior art references as evidence of unpatentability: Togino US 5,517,366 Tanijiri US 6,266,194 B 1 Merrill US 2002/0154406 Al Tanijiri ("Tanijiri 2004") US 2004/0057138 Al Evans US 2009/0290079 Al Weber US 2013/0100530 Al THE REJECTIONS May 14, 1996 July 24, 2001 Oct. 24, 2002 Mar. 25, 2004 Nov. 26, 2009 Apr. 25, 2013 1. Claims 1-3, 6, 7, 9-11, 13, 18, 19, and 24 are rejected under 35 U.S.C. § 103 as obvious over Tanijiri in view of Merrill, and further in view of Weber. 2. Claim 20 is rejected under 35 U.S.C. § 103 as being unpatentable over Tanijiri, in view of Merrill, in view of Weber, and further in view of Tanijiri 2004. 3. Claims 22 and 23 are rejected under 35 U.S.C. § 103 as obvious over Tanijiri in view of Merrill, in view of Weber, and further in view of Evans. 4. Claim 25 is rejected under 35 U.S.C. § 103 as obvious over Tanijiri in view of Merrill, in view of Weber, and further in view of Togino. 5. Claim 25 is rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite. 3 Appeal2018-003910 Application 14/865,394 ANALYSIS Upon consideration of the evidence and each of the respective positions set forth in the record, we find that the preponderance of evidence supports Appellants' position in the record. We thus reverse the Examiner's decision for the reasons provided by Appellant in the record, and add the following for emphasis. Rejections 1-5 On pages 6-7 of the Answer, the Examiner states: Further, regarding Appellant's argument under a) that ii) one of ordinary skill in the art would also recognize that the polarizer of Tanijiri should have a high reflectivity for incident light in a block polarization state and a high transmission in a pass polarization state for all incident angles utilized by the camera, and thus having "a range of reflectivities for differently oriented incident light" would allegedly be undesired in the camera of Tanijiri, the Examiner is not persuaded. Firstly, Counsel's assertion that a "range of reflectivities for differently oriented incident light" would allegedly be undesired in the camera is merely an argument unaccompanied by evidentiary support, and, thus, is insufficient to rebut Examiner's finding of obviousness. However, as Appellant points out on pages 2-3 of the Reply Brief, it is evident from Tanijiri's description of the principle of operation (see, e.g., col. 7, 11. 26-40) that the polarizer of Tanijiri should have a high reflectivity for incident light in a block polarization state, and a high transmission in a pass polarization state for all incident angles utilized by the camera. Appellant further points out that this is made apparent from the figures of Tanijiri (see, e.g., Fig. 10) which shows light being reflected from the polarizer when incident on the polarizer in a block state, and being 4 Appeal2018-003910 Application 14/865,394 transmitted through the polarizer when incident on the polarizer in a pass state (see, e.g., col. 7, lines 26-40). Appellant submits that it is made evident that any light which passes through the polarizer in the block state will degrade the image quality at the fiber plate 3, and it is made evident that any light which reflects from the polarizer in the pass state will reduce brightness at the fiber plate 3. Reply Br. 2. Appellant states that therefore the teachings of Tanijiri imply that "a range of reflectivities for differently oriented incident light" is not employable in the operation of Tanijiri. Id. We are persuaded by such argument, and therefore, contrary to the Examiner's belief, such argument is not mere attorney argument (Ans. 6-7), but is supported by evidence in the record. As such, on this record, there is no apparent reason to modify Tanijiri in the manner proposed by the Examiner. We note that setting forth a prima facie case of obviousness requires establishing that the applied prior art would have provided one of ordinary skill in the art with an apparent reason to modify the prior art to arrive at the claimed invention. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). We therefore reverse Rejections 1--4. Rejection 5 We also reverse Rejection 5 for the reasons provided by Appellant on pages 10-12 of the Appeal Brief, which we incorporate herein. DECISION Each rejection is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation