Ex Parte Snee et al

Patent Trial and Appeal Board

Mar 28, 2014

11288321 (P.T.A.B. Mar. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL
AND APPEAL BOARD
____________

Ex parte PRESTON T. SNEE, YIN THAI CHAN,
DANIEL G. NOCERA, and MOUNGI G. BAWENDI
____________

Appeal 2011-013030
Application 11/288,321
Technology Center 2800
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Before TERRY J. OWENS, MICHAEL P. COLAIANNI, and
GEORGE C. BEST, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1-23 and 41-43. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b).
We REVERSE.
Appellants’ invention is directed to optical feedback structures (Spec.
1:14).
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Claim 1 is illustrative:
1. An optical resonator comprising: a microsphere
disposed on a substrate; and a composite disposed over the
microsphere and the substrate, the composite including a matrix
and a chromophore.
Appellants appeal the following rejections:
1. Claims 1-5 and 12-17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over An (US 2002/0080842 A1, published Jun. 27,
2002) in view of Yao(US 6,873,631 B2, issued Mar. 29, 2005).
2. Claims 6, 8-10, 18, 20-23, and 43 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over An in view of Yao, and Sundar (US
2004/0017834 A1, published Jan. 29, 2004).
3. Claims 7, 11 and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over An in view of Sundar and Vetrovec (US 6,339,605
B1, issued Jan. 15, 2002).
ISSUE
Did the Examiner reversibly err in concluding that the combined
teachings of An and Yao would have suggested the subject matter of claim 1
that requires a microsphere on a substrate and a composite disposed over the
microsphere and the substrate, the composite including a matrix and a
chromophore, absent impermissible hindsight? We decide this issue in the
affirmative.
FINDINGS OF FACT & ANALYSIS
The Examiner’s findings and conclusions regarding An and Yao are
located on pages 5-6 and 14-15 of the Answer. The Examiner finds that An
teaches a microsphere cavity 110 coated with a gain medium 120, but fails
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to teach that the microsphere is disposed on a substrate (Ans. 5). The
Examiner finds that Yao teaches a microsphere 940 formed on a substrate
901 (Ans. 6). The Examiner concludes that it would have been obvious to
“form the microsphere of An on a substrate as disclosed by Yao in order to
support the microsphere and to a make it easier to integrate the microsphere
with other components such as a waveguide” (Ans. 6).
Appellants argue that the combination of An and Yao fails to teach or
to suggest the gain medium (i.e., composite) of An to be disposed over the
substrate of Yao (App. Br. 4). Appellants contend that by combining Yao’s
and An’s teachings, one of ordinary skill in the art would not have obtained
a substrate and microsphere with a composite disposed over them (App.
Br. 4).
We agree with Appellants’ arguments. The Examiner’s conclusion
that the combined teachings would have suggested placing An’s microsphere
on a substrate and coating the substrate and microsphere with a composite
material is based on impermissible hindsight. The Examiner fails to explain
how or why the teachings of An and Yao would have led one of ordinary
skill to place a microsphere on a substrate and then coat the substrate and the
microsphere. As found by the Examiner, An teaches using a coated
microsphere and Yao teaches forming a microsphere on a substrate, but such
teachings would not have suggested placing a microsphere on a substrate
and coating the substrate and microsphere absent hindsight. Nothing in
either reference teaches or suggests coating a substrate with same gain
medium (i.e., composite) used to coat An’s microsphere.
While the Examiner attempts to bolster the rejection over An and Yao
by citing Stintz US 2002/0114367 A1, published August 22, 2002, this
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evidence is raised for the first time in the Response to Arguments section of
the Answer (Ans. 15). As Stintz was not cited in the statement of the
rejections on appeal, we shall not consider such evidence. In re Hoch, 428
F.2d 1341, n.3 (CCPA 1970) (“Where a reference is relied on to support a
rejection, whether or not in a ‘minor capacity,’ there would appear to be no
excuse for not positively including the reference in the statement of the
rejection.”).
On this record and for the above reasons, we reverse the Examiner’s
§ 103 rejections.
DECISION
The Examiner’s decision is reversed.
ORDER
REVERSED

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