Ex Parte Wang

Patent Trial and Appeal Board

Nov 6, 2014

12298762 (P.T.A.B. Nov. 6, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/298,762 03/25/2009 Baoliang Wang 1074-106-PWH 1638
60597 7590 11/06/2014
HANCOCK HUGHEY LLP
P.O. BOX 6553
PORTLAND, OR 97228
EXAMINER
PAJOOHI GOMEZ, TARA S
ART UNIT PAPER NUMBER
2886
MAIL DATE DELIVERY MODE
11/06/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BAOLIANG WANG
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Appeal 2013-002250
Application 12/298,762
Technology Center 2800
____________

Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and
ELIZABETH M. ROESEL, Administrative Patent Judges.

ROESEL, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s
rejections of claims 1–11 and 14–18. We have jurisdiction under
35 U.S.C. § 6.

1 According to Appellant, the Real Party in Interest is Hinds Instruments,
Inc. App. Br. 3.
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STATEMENT OF THE CASE
The claimed invention is a system for measuring diattenuation in an
optical element, such as a lens. App. Br. 3. Diattenuation is an optical
property exhibited by many optical elements, whereby the intensity of light
transmitted by the optical element is a function of the polarization state of
the incident light. Id.; Spec. ¶ 2. Claims 1 and 10 are representative of the
subject matter on appeal and are set forth below (bold added for emphasis):
1. A system for measuring diattenuation in an optical
element comprising:
a sample rotation stage for securing an optical element
sample;
a light source module for generating a source light beam;
a detector module; the light source module and detector
module being arranged with the sample rotation stage between
them, thereby permitting the source light beam to propagate
through a sample that may be secured in the sample stage and
to the detector module;
linear motion means for controlled linear motion of the
light source module and for controlling linear motion of the
detector module;
first tilt means for controlled tilt of the light source
module and source beam,
rotation means for rotating the sample rotation stage and
second tilt means for tilting the detector module,
thereby to facilitate detection, by the detector module, of light
intensity information corresponding to diattenuation
characteristics of the optical sample secured in the sample
stage.

10. A method of measuring diattenuation in an optical
element comprising the steps of:
securing an optical element sample in a rotatable stage;
generating a polarized and modulated source light beam;
directing the source beam through the sample by
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using linear motion means for controlled linear
motion of the light source module; and
using first tilt means for controlled tilt of the
light source module;
arranging the active area of a detector to detect the source
light beam after it propagates through the sample by
using linear motion means for controlled linear
motion of the detector module; and
using second tilt means for tilting the detector
module; and
determining, from the detected source light, information
corresponding to a diattenuation characteristic of the optical
sample secured in the sample stage.
App. Br. 10, 11–12 (Claims App’x).
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Yanagisawa US 5,636,023 June 3, 1997
Priestley US 6,765,671 B2 July 20, 2004
Wang US 2005/0219528 A1 Oct. 6, 2005
Yokhin US 2006/0062351 A1 Mar. 23, 2006

THE REJECTIONS
1. Claims 1, 3, 4, 9, 10, 14, and 15 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Priestley in view of Yokhin. Final Action,
¶ 6.
2. Claims 8, 17, and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Priestley in view of Yokhin, and further in view of
Yanagisawa. Final Action, ¶ 14.
3. Claims 2, 5–7, 11, and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Priestley in view of Yanagisawa and further in view of
Wang. Final Action, ¶ 18.

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ANALYSIS
The Examiner finds that Priestley discloses a system for measuring
diattentuation that includes all elements of claims 1 and 10, except for the
first and second tilt means for tilting the light source module and detector
module, respectively. Final Action, ¶¶ 7, 11. The Examiner finds that
Yokhin discloses that a source and detector can each be mounted on an
assembly that can be tilted, raised and lowered to assume an appropriate
position. Id. (citing Yokhin, ¶ 75). The Examiner concludes that it would
have been obvious to modify the system of Priestley to control the tilt of the
light source and detector modules, as taught by Yokhin. Id. According to
the Examiner, this modification would allow for more control and more
flexibility in positioning the light source and detector and permit the most
effective capture angle for higher resolution, id. (citing Yokhin, ¶¶ 74, 75),
thereby optimizing measurement of the sample, Advisory Action. See also
Ans. 4.
Appellant challenges the Examiner’s stated reason or motivation for
modifying the prior art, arguing that the Examiner’s rationale for modifying
the system disclosed by Priestley to include a tilt mechanism as disclosed by
Yokhin is not supported by the disclosure of Yokhin. App. Br. 7. Appellant
further argues that there is no rational basis for modifying Priestley’s system
to include Yokhin’s tilt mechanism because Priestley measures light
transmitted through a sample, not light reflected and diffracted from the
surface of a sample, as in Yokhin. Id. at 7–8. We determine that the
Examiner’s articulated reasons for modifying and combining the prior art
teachings are not sufficient to support prima facie obviousness under the
facts of this case.
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Under 35 U.S.C. § 103(a), the Examiner carries the initial burden of
establishing a prima facie case of obviousness. In re Piasecki, 745 F.2d
1468, 147172 (Fed. Cir. 1984). As part of meeting this initial burden, the
Examiner must determine whether the differences between the subject
matter of the claims and the prior art “are such that the subject matter as a
whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art.” 35 U.S.C. § 103(a); Graham v. John
Deere Co., 383 U.S. 1, 13 (1966). To support the legal conclusion of
obviousness, “there must be some articulated reasoning with some rational
underpinning” for combining elements in the manner claimed. KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)).
The Examiner provides the following rationale for modifying the
system of Priestley to include tilt:
It would have been obvious to one having ordinary skill in the
art to also control the tilt of the light source module and
detector module as taught by Yokhin in the system of Priestley,
since Yokhin discloses it will allow for more control and more
flexibility with having the light source and detector being able
to be independently rotated, tilted and moved to the desired
position to capture the most effective angle for higher
resolution.
Final Action, ¶ 7 (citing Yokhin, ¶¶ 74, 75); see also Ans. 3, 4.
We are persuaded that the Examiner’s articulated reasoning for
combining and modifying the teachings of Priestley and Yokhin lacks a
rational underpinning for two reasons.
First, we are persuaded that the Examiner erred in relying on Yokhin’s
teaching regarding effective capture angle and angular resolution of
detection as a reason or motivation for adding a tilt mechanism to the
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measurement system disclosed in Priestley. The Examiner’s finding is not
supported by the disclosure of Yokhin, which teaches that effective capture
angle and angular resolution of detection may be optimized by adjusting the
distance between the detector and the sample, not by adjusting the tilt angle
of the source and detector. Yokin, ¶ 74; see App. Br. 7.
Second, we are persuaded that the Examiner erred in relying on
Yokhin as a providing a basis for modifying the measuring system of
Priestley because, as Appellant argues, the measurements taught by these
two references are significantly different from one another. App. Br. 7–8.
Whereas Priestley discloses a system for measuring birefringence or
transmission of light through a sample (Priestley, Abstract, Fig. 7, 1:19-21),
Yokhin discloses a system for measuring X-rays that are reflected or
diffracted from the surface of a sample (Yokhin, Abstract, ¶¶ 2, 11, 72-73).
Even though Priestley and Yokhin are both either in the field of Applicant’s
endeavor or reasonably pertinent to the particular problem with which
Applicant is concerned, as found by the Examiner (Ans. 5), that is not a
sufficient basis for concluding that it would have been obvious to one of
ordinary skill in the art to rely on the teachings of Yokhin (which relates to
X-ray reflectometry, scattering and diffractometry) to modify the system of
Priestley (which relates to measurement of birefringence). The Examiner
has not directed us to evidence or sound technical reasoning that would
support the obviousness of including a mechanism for tilting both the source
and the detector in a system for measuring birefringence or transmission of
light through a sample. We are, therefore, persuaded that a rational
underpinning is lacking in the Examiner’s finding that providing a
mechanism for tilting the source and detector, as taught by Yokhin, would
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optimize the measurement of birefringence, as taught by Priestley.
We are not persuaded by the Examiner’s assertion that Appellant’s
argument relies upon features that are not recited in the claims. Ans. 3–4. A
conclusion of obviousness must be supported by articulated reasoning with a
rational underpinning for combining prior art elements. KSR, 550 U.S. at
418. But there is no requirement that the reasoning or rational underpinning
relate to limitations of the claims. See KSR, 550 U.S. at 420 (“any need or
problem known in the field . . . can provide a reason for combining the
elements in the manner claimed”). There is likewise no requirement that the
reasoning or rational underpinning for why one of ordinary skill would not
have modified or combined the prior art teachings relate to the limitations of
the claims.
We are also not persuaded by the Examiner’s assertion that it would
have been obvious and well known in the art to rearrange between a
transmission and reflection optical system in order to test different properties
of a sample or depending on the degree of transmissivity or reflectivity of
the sample. Ans. 4. The Examiner provides no citation to Priestley, Yokhin
or other record as support for this assertion. We determine that, even if such
a rearrangement of components would have been obvious, the Examiner has
not sufficiently articulated a reason or motivation for one of ordinary skill to
have modified a system for measuring birefringence, such as that taught by
Priestley, to add a tilt mechanism, such as that taught by Yokhin, which is
the basis for the Examiner’s obviousness rejection.
Thus, the Examiner has not established, by evidence or sound
technical reasoning, a sufficient factual basis that could reasonably support
the conclusion that a skilled artisan would have had reason to modify a
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system for measuring birefringence, such as that taught by Priestley, to
include mechanisms for tilting the source and detector, such as that taught by
Yokhin. Because the Examiner’s rejection is not supported by an adequate
reason to modify and combine the prior art teachings in the manner claimed
by Appellant, we do not sustain the rejection of independent claims 1 and
10. This shortcoming is not remedied by the Examiner’s findings relating to
the additional references (Yanagisawa and Wang) cited in support of the
second and third grounds of rejection. Although Yokhin is not expressly
cited in support of the rejection of dependent claims 2, 5–7, 11, and 16, no
other reference is cited to show the elements of the base claims (independent
claims 1 and 10) relating to tilting the source and detector. Accordingly, we
do not sustain the rejections of any of dependent claims 2–9, 11, and 14–18.

CONCLUSION OF LAW AND DECISION
Because each of the Examiner’s rejections of claims 1–11 and 14–18
fails to provide an adequate reason to combine the teachings of Priestley and
Yokhin, and because each of the Examiner’s rejections relies on this
combination of references, we reverse the Examiner’s decision rejecting
claims 1–11 and 14–18.

REVERSED
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