Ex parte Urino et al.

Board of Patent Appeals and Interferences

Mar 20, 1998

08007511 (B.P.A.I. Mar. 20, 1998)

Application for patent filed January 22, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte YUTAKA URINO and
TOMOKI SAITO
_____________
Appeal No. 96-0346
Application 08/007,5111
______________
ON BRIEF
_______________
Before THOMAS, JERRY SMITH and TORCZON, Administrative Patent
Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-0346
Application 08/007,511
2
Appellants have appealed to the Board from the examiner’s
final rejection of claims 1 and 2, which constitute all the
claims remaining in the application.
We reproduce below only the last clause of independent claim
1 on appeal:
said first birefringent element of said
second optical isolator having an optic axis
rotated by 90 degrees in a direction of
rotation of said polarization rotators
relative to an optic axis of said third
birefringent element of said first optical
isolator, whereby said ordinary ray of said
third birefringent element of said first
optical isolator is said extraordinary ray of
said first birefringent element of said
second optical isolator, thereby providing an
optical path of the same length for all said
rays between said input beam of said first
optical isolator and said output beam of said
second optical isolator.
The following reference is relied on by the examiner:
Chang 4,974,944 Dec. 4, 1990
Claims 1 and 2 stand rejected under 35 U.S.C. § 103. As
evidence of obviousness, the examiner relies upon Chang alone.
The examiner takes the view that Chang teaches the claimed
invention except for having a second optical isolator. On the
basis of St. Regis Paper Co. v. Bemis Co. Inc., 549 F.2d 833, 193
USPQ 8 (7th Cir. 1977), the examiner reasons that it would have
been obvious to duplicate the optical isolator of Chang by
Appeal No. 96-0346
Application 08/007,511
3
placing two of them in series as individually taught by this
reference because the examiner views this case as holding that
the mere duplication of parts for a multiplied effect would have
been obvious to the artisan within 35 U.S.C. § 103.
Rather than repeat the positions of the appellants and the
examiner, reference is made to the briefs and the answer for the
respective details thereof.
OPINION
We reverse the outstanding rejection.
We understand St. Regis as being heavily fact dependent and
conclude that the examiner within 35 U.S.C. § 103 has over-relied
upon the thinking processes the court set forth in that case.
The first embodiment shown in Figs. 1A and 1B appears to be
structurally similar to the subject matter of any one of the two
optical isolators set forth in independent claim 1 on appeal.
The other embodiments set forth in Figs. 4A, 5A, 6A and 7A in
Chang appear to teach different numbers of elements of a singular
rather than a serial duplicated arrangement of optical isolators.
The summary paragraph at the bottom of col. 8 of Chang
appears to come the closest to suggesting to the artisan the
reasoning advanced by the examiner, where it says at lines 62
through 67 that “[o]bviously more than 5 anisotropic crystal
Appeal No. 96-0346
Application 08/007,511
4
members and more than four Faraday rotators arranged with at
least one rotator between any two anisotropic crystal members may
be constructed in accordance with the principles of this
invention.” Even if we assume that this teaching would have
indicated to the artisan to have constructed a single optical
isolator employing 6 anisotropic elements, each with a Faraday
rotator therebetween, we would still not end up with the claimed
total number of elements comprising both optical isolators
arranged as recited in independent claim 1 on appeal.
In light of this latter teaching in Chang as well as the
examiner’s reasoning, we find that there would have been no
reason within the examiner’s reasoning or that which would have
been derived from the teachings and suggestions of Chang for the
artisan within 35 U.S.C. § 103 to have forward rotated the
claimed first birefringent element of the second optical isolator
in the manner set forth in the above quoted language at the end
of claim 1 on appeal. The mere duplication in series of Chang’s
Fig. 1A embodiment would not necessarily have led to this
rotation. It appears that by the rotation set forth in the above
quoted language at the end of claim 1 on appeal, a change in
function essentially results in the first and second recited
optical isolator combination as expressed functionally in this
Appeal No. 96-0346
Application 08/007,511
5
noted language. Therefore, this second optical isolator, even
though it is structurally identical to the first optical
isolator, does not alone clearly duplicate the function of the
first, contrary to the position set forth by the examiner in the
answer and is, therefore, as well factually distinguishing over
the situation in St. Regis.
We also find no teaching or suggestion or line of reasoning
advanced by the examiner, other than that expressed on the basis
of St. Regis, for the artisan to have placed two of any one of
the optical isolators of Chang’s five embodiments in series.
Thus, we find the record deficient of any reasoning or
motivation in the art provided to have two optical isolators in
series, with the first birefringent element of the second optical
isolator having an optical axis rotated by 90 degrees in a normal
direction of rotation, which effectively causes the ordinary and
extraordinary rays to have equal optical path lengths. Simply
stated, additional evidence or references are necessry for us to
agree with the examiner’s conclusion of obviousness within 35
Appeal No. 96-0346
Application 08/007,511
6
U.S.C. § 103 of the subject matter of independent claim 1 on
appeal.
As such, we must reverse the rejection of claims 1 and 2
under 35 U.S.C. § 103.
Therefore, the decision of the examiner is reversed.
REVERSED
)
JAMES D. THOMAS )
Administrative Patent Judge )
)
Appeal No. 96-0346
Application 08/007,511
7
)
) BOARD OF PATENT
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
RICHARD TORCZON )
Administrative Patent Judge )
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