Ex Parte Shr et al

Patent Trial and Appeal Board

Oct 31, 2016

13050501 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/050,501 03/17/2011 Ren Chin Shr
31561 7590 11/02/2016
JIANQ CHYUN INTELLECTUAL PROPERTY OFFICE
7 FLOOR-I, NO. 100
ROOSEVELT ROAD, SECTION 2
TAIPEI, 100
TAIWAN
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.
52118-US-PA 2770
EXAMINER
LUCK,SEANM
ART UNIT PAPER NUMBER
2881
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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):
USA@JCIPGROUP.COM
Belinda@JCIPGROUP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte REN CHIN SHR, TENG CHUN WU,
WEI YUN LIANG, and CHIH WEI KUO
Appeal2015-004435
Application 13/050,501
Technology Center 2800
Before CATHERINE Q. TIMM, DONNA M. PRAISS, and
MICHAEL G. MCMANUS, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL 1
1 In our Decision below we refer to the Specification filed March 17, 2011
(Spec.), the Final Office Action appealed from mailed January 27, 2014
(Final Act.), the Appeal Brief filed August 25, 2014 (App. Br.), the
Examiner's Answer mailed January 8, 2015 (Ans.), and the Reply Brief filed
March 9, 2015 (Reply Br.).
Appeal2015-004435
Application 13/050,501
STATEMENT OF CASE
Appellants2 appeal under 35 U.S.C. § 134 from the Examiner's
decision to reject claims 1--41 under 35 U.S.C. § 103(a) as follows:
1. Claims 1-5, 7-16, 18-27, 29-37, and 39--41 over Hyde3 and Ma;4
2. Claims 6, 17, 28, and 38 over Hyde, Ma, and Zhou;5 and
3. Claims 6, 17, 28, and 38 over Hyde, Ma, and Arnett. 6
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The claims are directed to a device and method of manufacturing a
device for sterilizing an object. Spec. i-f 1. Claim 1 is illustrative:
1. A sterilizing device without plasmon formation, the
sterilizing device comprising:
a light guiding member having a surface; and
an ultraviolet (UV) light source emitting a UV light beam
so that the UV light beam is guided into the light guiding member
based on a total internal reflection, wherein the UV light beam is
totally reflected internally in the light guiding member;
wherein when an object contacts or comes close to the
surface, an evanescent wave from the UV light beam irradiates
on the object.
Claims App'x at App. Br. 13.
Appellants do not separately argue the patentability of independent
claims 1, 12, 23, and 34 and dependent claims 2-11, 13-22, 24--33, and 35-
41. App. Br. 11-12. In accordance with 37 C.F.R. § 41.37(c)(l)(iv), and
2 Appellants identify Industrial Technology Research Institute as the real
party in interest. App. Br. 2.
3 Hyde et al., US 2009/0117001 Al, published May 7, 2009.
4 Ma et al., US 2004/0252091 Al, published Dec. 16, 2004.
5 Zhou, US 6,650,822 Bl, issued Nov. 18, 2003.
6 Arnett et al., US 2008/0278460 Al, published Nov. 13, 2008.
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Application 13/050,501
based upon the lack of arguments directed to the subsidiary rejections,
claims 2--41, will stand or fall together with independent claim 1.
OPINION
Regarding claim 1, the Examiner finds that Hyde teaches a "UV self-
sterilizer ... for the benefit of limiting the undesirable spread of pathogens
by indirect contact with everyday objects." Final Act. 5. The Examiner
further finds that Hyde teaches a light guiding member having a surface, a
UV light source emitting a light beam, the light beam is guided into the light
guiding member based on a total internal reflection, and the light beam
irradiates an object that contacts or comes close to the surface. Id. at 4
(citing Hyde i-fi-19, 24--26, 45). The Examiner also finds that Hyde does not
teach "wherein the light beam is an evanescent wave" and "may not
adequately teach: wherein the UV light beam is totally reflected internally in
the light guiding member." Id. at 4--5. The Examiner finds that "[i]t would
have been obvious to one of ordinary skill in the art at the time of the
invention to combine the frustrated total internal reflection and the
evanescent wave means of distributing light taught in Ma with [the] UV self-
sterilizer taught in Hyde for the benefit [taught by Hyde]." Id. at 5 (citing
Ma i-fi-f 17, 30-31 ). According to Ma,
Total internal reflection permits radiation to be
transmitted substantially without loss between opposing
surfaces of a transparent material. Total internal reflection is
the reflection of electromagnetic radiation from the interface of
a transparent material with larger index of refraction n 1 (such as
glass) with an adjoining medium having a smaller index of
refraction n2 (such as air) when the radiation makes an angle
smaller than the 'critical angle' (sin=l(n2/nl)) to the normal.
When an object such as a human finger is placed in contact with
the interface surface, 'evanescent radiation' extending into a
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Appeal2015-004435
Application 13/050,501
region occupied by contacting object permits energy to flow
across the boundary. This phenomenon is known as frustrated
total internal reflection. When transmission across the
boundary occurs in this manner, the 'total internal reflection'
within no longer total, since some of the transmitted wave
passes through the interface surface at the expense of the
internally reflected light.
Ma i-f 17 (citation omitted).
Appellants contend that the Examiner's rejection of claim 1 is in error
because (1) the combination of Hyde and Ma does not disclose "wherein
when an object contacts or comes close to the surface, an evanescent wave
from the UV light beam irradiates on the object[,]" (2) the combination with
Ma is based on impermissible hindsight because "[t]he Examiner used Ma to
teach the use of evanescent wave" and Ma's touch panel technology "would
not use UV light, because it would be harmful to a user[,]" (3) "Hyde
utilizes either direct irradiation or plasmon formation for sterilization and
avoids forming evanescent wave for the same" because, Appellants assert,
"one of ordinary skill in the art would not believe that the evanescent wave
can be used to sterilize pathogens around the sterilizer" since it "exhibits
exponential decay from the boundary at which the evanescent wave was
formed[,]" and (4) "[t]here is no teaching, suggestion, or motivation, let
alone even a hint to substitute the contact region 101 [of Hyde] with the
touch panel of Ma" because "Hyde teaches a constant UV energy emitted
from the contact region 101" and Hyde's FTIR bio sensor is beside the
contact region, not on the contact region shown in Figure 4 of Hyde,
therefore "Hyde would not have been able to combine an FTIR effect with
the contact region because it would cause the contact region 101 with the
metal/dielectric surface to be inoperable." App. Br. 6-9.
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Application 13/050,501
The Examiner responds that Hyde teaches "the desire to limit
exposure to UV radiation as too much can be harmful" and "the fact that UV
light can be transmitted via total internal reflection (TIR) device" but lacks
specifically describing an embodiment using a TIR surface specification and
teaches a preferred plasmon generating metal-dielectric layer. Ans. 3 (citing
Hyde i-fi-125, 50). The Examiner finds that incorporating the surface taught
by Ma "in lieu of the metal-dielectric layer of Hyde would aid in preventing
the spread of pathogens since it would provide an additive means of
incorporating this device into [an] every day object." Id. The Examiner
further finds that "surface plasmons exponentially decay away from the
surface in a similar fashion to evanescent waves" and that "the incorporation
of TIR and FTIR devices in Hyde does indicate towards the combination of
a TIR/FTIR device for the whole of the contact region, especially with the
relationship between surface plasmons and evanescent waves." Id. at 5---6.
In the Reply Brief, Appellants acknowledge that Hyde teaches a
device that uses TIR, but assert that "[i]t is clear in Hyde that an evanescent
wave from a UV light beam does not irradiate on the object. The TIR device
of Hyde is only for coupling UV energy to the contact region 101. The UV
light coming out [from] the contact region 101 is constant, or based on a
sensor or timer, not because of an evanescent wave and contact from an
object." Reply Br. 2. Appellants further assert that there are differences
between evanescent waves and surface plasmons, but do not dispute the
Examiner's finding that both exponentially decay away from the surface. Id.
at 4--5. Appellants also illuminate that their argument that the combination
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Application 13/050,501
of Hyde and Ma would be harmful to users refers to users' eyes being
constantly exposed to UV light by touching the touch screen of Ma. Id. at 3.
We are not persuaded by Appellants' arguments and find that the
preponderance of the evidence supports the rejection of claim 1 for the
reasons provided by the Examiner in the Final Action and the Answer. Final
Act. 2-5; Ans. 2-9. We add the following for emphasis.
Hyde explicitly teaches a self-sterilizing article that has a light guiding
structure through which UV energy is delivered and the "[l]ight-guiding
structures 102 may, for example, include a total internal reflection (TIR)
device." Hyde i-f 25. Hyde further teaches that the light-guiding structure is
suitable to transport UV energy from the UV generator. Id. at i-f 24. Ma
evidences that it was known that a transparent material such as glass was a
suitable material for a TIR structure and that "evanescent radiation" is a
"phenomenon" of TIR when an object comes in contact with the interface of
the transparent material. Ma i-f 17. This phenomenon is also described in the
Specification, which states "[t]ypically, when there is a total [reflection], an
evanescent wave is formed at the boundary." Spec. 8. Therefore, Hyde does
disclose a self-sterilizing article having a UV light source, a light guiding
member that is suitable for TIR and, as evidenced by Ma, the phenomenon
of evanescent radiation, as required by claim 1. Claim 1 does not preclude
the use of sensors. Indeed, dependent claim 7 recites "a sensor configured to
sense when the object contacts or comes close to the surface." Claims
App'x at App. Br. 14. Claim 1 also does not preclude the additive element
of a plasmon-supporting metal grating structure for delivering UV energy
from the UV light source that is taught by Hyde as another example of a
light-guiding structure (Hyde i-f 25). Furthermore, claim 1 recites "wherein
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Application 13/050,501
when an object contacts or comes close to the surface, an evanescent wave
from the UV light beam irradiates on the object." The antecedent basis for
"surface" is the surface of the light guiding member. Therefore, Appellants'
argument that the TIR structure disclosed in Hyde is the light-guiding
structure rather than the contact region does not distinguish Hyde over claim
1.
In sum, Appellants have not persuaded us of a reversible error in the
Examiner's finding that the phenomenon of an evanescent wave from the
UV light beam of Hyde's self-sterilizer would occur in view of Ma's
teaching that such a phenomenon would occur with material suitable for
TIR.
CONCLUSION
We sustain the Examiner's rejection.
DECISION
The Examiner's decision is affirmed.
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)(l).
AFFIRMED
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