Ex Parte Witzgall

Board of Patent Appeals and Interferences

Jan 9, 2009

09469070 (B.P.A.I. Jan. 9, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HANNA E. WITZGALL

Appeal 2008-2475
Application 09/469,070
Technology Center 2600
____________

Decided: January 9, 2009
____________

Before MAHSHID D. SAADAT, JOHN A. JEFFERY,
and KARL D. EASTHOM, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appeal 2008-2475
Application 09/469,070

Appellant appeals under 35 U.S.C. § 134 from the Examiner’s Final
Rejection of claims 7-9 and 11-13. (Br. 2).1 We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
Appellant claims a color modulator having alternating layers of
dielectric materials and electrodes. Voltages applied to the electrodes alter a
refractive index of the dielectric materials to filter an incident white light
beam into one of at least three colors. (Spec. 3: 7-10; 10: 12-19; 12: 8-16).
Claim 7, illustrative of the invention, follows:
7. A color modulator comprising:
a substrate; and
alternating layers of electrodes and dielectric materials, wherein
voltages applied to said electrodes are operable to alter a refractive index of
said dielectric material between said electrodes to filter an incident white
light beam into a light beam of at least one of at least three colors.

The Examiner relies on the following prior art references to show
unpatentability:
Mochizuki US 5,317,429 May 31, 1994
Taketo2 JP 10-221710 A Aug. 21, 1998

1 The Examiner’s Answer (mailed May 3, 2007) (“Ans.”) and Appellant’s
Brief (filed December 27, 2006) (“Br.”) detail the parties’ positions.
2 Hereinafter, “Taketo” refers to the English translation (sent to Appellant
electronically on January 28, 2008) of this Japanese published patent
application (despite the designation of the inventors as “SHIGERU
YAMAMOTO ET AL” on the title page, and page 2, of the translation).
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Appeal 2008-2475
Application 09/469,070

The Examiner rejected claims 7, 9 and 11 under 35 U.S.C. § 103(a)
based upon the teachings of Taketo.
The Examiner rejected claims 8, 12 and 13 under 35 U.S.C. § 103(a)
based upon the teachings of Taketo and Mochizuki.
ISSUES
Appellant generally contends that Taketo fails to teach or suggest
“wherein voltages applied to said electrodes are operable to alter a refractive
index of said dielectric material between said electrodes,” as set forth in
claim 7. (Br. 5-6). Appellant also contends that the combination of Taketo
and Mochizuki fails to teach a dielectric material of LiNbO3 as set forth in
claim 12. (Br. 6-8). Appellant makes no separate patentability arguments
with respect to the remaining claims. (See Br. 8). Accordingly, we select
independent claims 7 and 12 as representative of the claims on appeal.
The issues before us are:
Does Taketo teach “wherein voltages applied to said electrodes are
operable to alter a refractive index of said dielectric material between said
electrodes,” as set forth in claim 1?
Do Taketo and Mochizuki collectively teach the dielectric material,
LiNbO3, recited in claim 12?

FINDINGS OF FACT (FF)

1. Taketo discloses at least three prior art examples of alternating
layers of dielectric layers and electrodes wherein a voltage alters the
refractive index of the dielectric layers, composed of liquid crystal, to filter
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Appeal 2008-2475
Application 09/469,070

incident light into three colors, red, green and blue. (Taketo; Figs. 5-8;
¶¶0015-0017, 0036; see generally ¶¶0023-0043). Nematic liquid crystals
having a positive dielectric anisotropy, or liquid crystals generally, form the
dielectric layers of the embodiments, and each embodiment’s dielectric
layers have a voltage controlled refractive index. (See id.; see also ¶¶0015,
0036, 0038).
2. Taketo discloses a similar apparatus to the prior art examples in
Figure 1. The Figure 1 apparatus similarly employs electrodes 21, 22.
Taketo’s Figure 1 apparatus selectively reflects light colors from three
dichroic mirrors 27G, 27R, and 27B. (Taketo ¶¶ 0049-0061). Taketo’s
Figure 1 embodiment employs less voltage, in a liquid crystal driving means,
than the voltage employed in one of the prior art examples. (Taketo ¶¶ 0067,
0072).
3. Nematic liquid crystals having a positive dielectric anisotropy form
the light-modulating dielectric layers 23M, 23C and 23Y of Taketo’s Figure
1 embodiment. (Taketo ¶¶ 0063, 0064, 0073).
4. Mochizuki discloses an optical switching device employing “any
material whose refractive index can be changed by the electro-optical effect”
including LiNbO3. (Mochizuki, col. 4, ll. 44-50, see also Abstract).
5. Mochizuki also discloses a preferred embodiment using nematic
liquid crystal materials that also have the electro-optical effect. Applying
voltages to the materials causes the refractive index to change so that
incident light reflects or transmits. (Mochizuki, col. 5, l. 10 to col. 6, l. 36).

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Appeal 2008-2475
Application 09/469,070

PRINCIPLES OF LAW
“[T]here must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006). “On appeal to the Board, an applicant
can overcome a rejection by showing insufficient evidence of prima facie
obviousness . . . .” Kahn, 441 at 985-6 (Fed. Cir. 2006) (quoting In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
“[W]hen a patent ‘simply arranges old elements with each performing
the same function it had been known to perform’ and yields no more than
one would expect from such an arrangement, the combination is obvious.”
KSR Int’l Co. v. Teleflex, Inc., 127 S.Ct. 1727, 1740 (2007) (quoting
Sakraida v. Ag. Pro. Inc., 96 S.Ct. 1532 (1976)). “[W]hen a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.” Id. (citing United States v.
Adams, 86 S.Ct. 708 (1966)).
ANALYSIS
Taketo’s dielectric layers in the preferred embodiment, shown in
Figure 1 and cited by the Examiner (Ans. 3), comprise the same material as
Taketo’s prior art examples, nematic liquid crystals having a positive
dielectric anisotropy. (FF 1-3). The prior art examples explicitly describe
controlling the refractive index with voltage. (FF 1). The preferred
embodiment, Figure 1, employs electrodes and the same dielectric material
as light modulating layers. (FF 1, 2). Therefore, Taketo’s dielectric layers,
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Appeal 2008-2475
Application 09/469,070

in both the prior art examples and the preferred embodiment, necessarily
meet the disputed claim element recited in claim 7: “wherein voltages
applied to said electrodes are operable to alter a refractive index of said
dielectric material between said electrodes.”
With respect to claim 12, Mochizuki discloses liquid nematic crystals
similar to those in Taketo, and also teaches using any dielectric material with
a voltage dependent refractive index, including LiNbO3. (FF 3-5).
Therefore, substituting one voltage dependent refractive index dielectric
material, LiNbO3, for another, a nematic liquid crystal material, amounts to a
predictable substitution of prior art elements according to their established
functions, see KSR supra. Both references teach controlling light passage by
applying voltages to dielectric materials to alter the refractive properties
thereof. (See FF 1-5). Such a simple substitution of “. . . ‘old elements with
each performing the same function it had been known to perform’ and
yield[ing] no more than one would expect from such an arrangement,
[renders] the combination . . . obvious.” KSR, 127 S.Ct. at 1740.
Accordingly, for the reasons discussed above, we sustain the
Examiner’s rejection of independent claims 7 and 12, and dependent claims
8, 9, 11, and 13, not separately argued.

CONCLUSION

Taketo teaches “wherein voltages applied to said electrodes are
operable to alter a refractive index of said dielectric material between said
electrodes,” as set forth in claim 7. Taketo and Mochizuki collectively teach
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Appeal 2008-2475
Application 09/469,070

a dielectric material, LiNbO3, recited in claim 12. Therefore, we sustain the
Examiner’s rejection of claims 7-9 and 11-13.

DECISION

We affirm the Examiner's decision rejecting claims 7-9 and 11-13.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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