Ex Parte Schulz

Board of Patent Appeals and Interferences

Jun 30, 2009

11591160 (B.P.A.I. Jun. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEPHEN C. SCHULZ
____________

Appeal 2009-002837
Application 11/591,160
Technology Center 2800
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Decided:1 June 30, 2009
____________

Before KENNETH W. HAIRSTON, MAHSHID D. SAADAT,
and ROBERT E. NAPPI, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-002837
Application 11/591,160

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Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-3, 5, and 6. Claims 4 and 7-16 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

STATEMENT OF THE CASE
Appellant’s invention relates to a grating-based biomedical sensor
device which operates based on photonic crystal technology (Spec. 2).
According to Appellant, the lines of the biosensor grating are aligned with
one of the optical axes of a substrate sheet, such that no significant phase
shift may occur for light with polarization, which is important to the
resonance phenomenon when such light travels to or from the grating (Spec.
9). Claim 1, which is illustrative of the invention, reads as follows:
1. A photonic crystal biosensor comprising:

a substrate, the substrate comprising an optically transparent
material having an optical axis; and

a grating applied to the substrate,

wherein the grating comprises features arranged in a plurality of
parallel lines and wherein the lines of the grating are in substantial
alignment with the optical axis of the substrate.

The Examiner relies on the following prior art in rejecting the claims:
Pien US 2003/0077660 A1 Apr. 24, 2003
Murata US 6,618,116 B1 Sep. 9, 2003
Yarussi US 6,665,070 B1 Dec. 16, 2003

Claims 1, 5, and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yarussi and Pien.
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Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yarussi, Pien, and Murata.
Rather than repeat the arguments here, we make reference to the
Briefs and the Answer for the respective positions of Appellant and the
Examiner.
ISSUE
Appellant argues that Yarussi does not disclose a substrate having an
optical axis and that the optical axis 103, cited in Figure 1 of Yarussi by the
Examiner, is not the optical axis of the substrate (App. Br. 9). Appellant
further asserts that the proposed modification to Yarussi, based on the
transparent substrate of Pien, does not result in alignment of an optical axis
of the substrate with the lines of the grating (App. Br. 11-12). Therefore,
Appellant’s contentions present the following issue:
Has Appellant shown that the Examiner erred in combining the
teachings of Yarussi and Pien to arrive at the claimed invention? The issue
specifically turns on whether the combination of references teaches or
suggests alignment of the grating lines with the optical axis of the
transparent substrate.

FINDINGS OF FACT
The following findings of fact (FF) are relevant to the issue involved
in the appeal.
1. The Examiner characterizes the optical axis 103 of Yarussi’s
Figure 1 as an axis of the substrate material 108 that is perpendicular to the
substrate surface (Ans. 7).
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2. The Examiner asserts that since no specific alignment
orientation is defined in claim 1, the lines of the grating in Yarussi are
aligned with axis 103 in a perpendicular direction (id.).
3. Yarussi relates to a metrology device with a rotatable polarizer
that is calibrated to align the transmission axis of the polarizer with the axis
of orientation of a sample, such as a diffraction grating. (Abstract.)
4. As shown in Figure 1 of Yarussi, light source 102 of the
spectrometer 100 generates a light beam along the optical axis 103. The
light beam is directed towards a diffraction grating 106 on a substrate 108.
(Col. 4, ll. 3-10.)
5. Yarussi further discloses that spectrometer 100 is combined
with stage 110 that holds and positions substrate 108 so that diffraction
grating 106 is aligned with the optical axis 103 of spectrometer 100.
(Emphasis added.) (Col. 41, ll. 20-28.)
6. Yarussi discloses in Figure 3 that the lines of the grating are
positioned along the transmission axis of polarizer 114 in spectrometer 100,
as marked and defined by notch 130 on the substrate. (Col. 5, ll. 31-37.)
7. Pien relates to a resonant optical biosensor including a grating
surface structure formed over a substrate of plastic sheet or glass material.
(¶¶ [0027] – [0028] and [0127].)

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis in order to support the legal conclusion
of obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
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Graham v. John Deere Co., 383 U.S. 1, 17 (1966) (stating that 35 U.S.C.
§ 103 leads to three basic factual inquiries: the scope and content of the prior
art, the differences between the prior art and the claims at issue, and the
level of ordinary skill in the art). “[T]he examiner bears the initial burden,
on review of the prior art or on any other ground, of presenting a prima facie
case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992).
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See In re
Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006); In re Young, 927 F.2d 588,
591 (Fed. Cir. 1991); In re Keller, 642 F.2d 413, 425 (CCPA 1981).

ANALYSIS
After reviewing the references, we find that the evidence of record
supports Appellant’s position that the combination of the references does not
teach or suggest alignment of the grating lines with the optical axis of the
transparent substrate. The Examiner’s characterization of axis 103 as an
axis related to the substrate (FF 1) is not based on the teachings of Yarussi.
Yarussi describes axis 103 as the optical axis of spectrometer 100 along
which the light beam from the light source travels towards grating 106 (FF
3-6). Therefore, although axis 103 has a perpendicular relationship with the
grating surface (FF 4), it has nothing to do with the substrate, which has no
optical axis, as it is not an optically transparent substrate.
As argued by Appellant (App. Br. 11-13), we find that even if Yarussi
is modified by using the transparent substrate of Pien, the teachings of
Yarussi do not direct one of ordinary skill in the art to align the grating lines
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with the optical axis of the substrate. While Pien discloses using an
optically transparent substrate (FF 7), no discussion of the optical axis of
such a substrate and its relationship with the lines of the grating can be
found in the reference. Contrary to the Examiner’s argument that no specific
alignment orientation is required by claim 1 (FF 2), the optical axis is recited
to be that of the substrate.
We also agree with Appellant (Reply Br. 4) that the alignment made
in Yarussi is with respect to the arbitrary physical axis of the substrate
defined by notch 130 (FF 6). As further argued by Appellants (id.), the axis
of the substrate is not the optical axis, and in fact, is merely related to the
relative orientation of the grating with respect to the polarizer in
spectrometer 100 (FF 6).
Therefore, we agree with Appellant that, since Yarussi does not align
the lines of grating 106 with any optical axis of a transparent substrate and
Pien provides no teachings with respect to the orientation of the grating, the
proposed combination fails to render obvious claim 1, as well as claim 5
which includes a similar limitation. We also agree with Appellant’s
arguments regarding claims 2 and 3 (App. Br. 14-15) that Murata provides
no teachings to cure the deficiencies of the Yarussi and Pien combination as
discussed above.

CONCLUSION
On the record before us, we find that the Examiner fails to make a
prima facie case that the combination of Yarussi and Pien renders claim 1
obvious since the combination does not teach or suggest alignment of the
grating lines with the optical axis of the transparent substrate. Therefore, in
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view of our analysis above, the 35 U.S.C. § 103 rejection of claim 1, 5, and
6 over Yarussi and Pien cannot be sustained. Additionally, we do not
sustain the 35 U.S.C. § 103 rejection of claims 2 and 3 over Yarussi, Pien,
and Murata since the Examiner has not identified any modification
suggested by Murata to overcome the deficiencies of Yarussi and Pien
discussed above.
ORDER
The decision of the Examiner rejecting claims 1-3, 5, and 6 is
reversed.
REVERSED

bim

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