Young Optics Inc.

Patent Trials and Appeals Board

Dec 22, 2021

2021002983 (P.T.A.B. Dec. 22, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
15/940,999 03/30/2018 Yu-Po Chen 76602-US-PA 5510
31561 7590 12/22/2021
JCIPRNET
8F-1, No. 100, Roosevelt Rd. Sec. 2,
Taipei, 100404
TAIWAN
EXAMINER
LE, BAO-LUAN Q
ART UNIT PAPER NUMBER
2882
NOTIFICATION DATE DELIVERY MODE
12/22/2021 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):
Belinda@JCIPGROUP.COM
USA@JCIPGROUP.COM
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YU-PO CHEN, CHUN-CHIEH LI, WEI-SZU LIN, and YI-
HSUEH CHEN

Appeal 2021-002983
Application 15/940,999
Technology Center 2800
____________

Before JAMES C. HOUSEL, CHRISTOPHER C. KENNEDY, and
LILAN REN, Administrative Patent Judges.

REN, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real parties in interest as “the
inventors named in the subject application, and YOUNG OPTICS INC.”
Appeal Br. 1.
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CLAIMED SUBJECT MATTER
Claims 1 and 15, reproduced below, are illustrative of the claimed
subject matter:
1. A manufacturing method of a projection apparatus
comprising:
classifying a plurality of digital micro-mirror devices
(DMDs) into a first group and a second group according to off-
state brightness of each of the DMDs, wherein each of micro-
mirrors of the DMDs has two different tilting axes; and
assembling one of following sets into the projection
apparatus: Set (1): a DMD of the first group with a first aperture
stop; Set (2): a DMD of the second group with a second aperture
stop, wherein off-state brightness of the first group is less than
off-state brightness of the second group, and a light blocking area
of the first aperture stop is less than a light blocking area of the
second aperture stop.
15. A manufacturing method of a projection apparatus
comprising:
putting a light valve on an optical jig;
providing a light beam to the light valve, wherein the light
valve converts the light
beam into an image beam, and the optical jig projects the
image beam onto an image plane;
measuring brightness on the image plane when the light
valve in the off-state;
classifying the light valve according to the brightness on
the image plane;
selecting an aperture stop with a size corresponding to
classification of the light valve;
and
assembling the light valve and the aperture stop to form
the projection apparatus.

Claims Appendix (Appeal Brief filed March 30, 2020, 18).
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REFERENCES
The prior art relied upon by the Examiner are:
Name Reference Date

Kojima US 2013/0038846 Al Feb. 14, 2013
McDonald US 2015/0070749 Al Mar. 12, 2015
Kurtz US 2016/0033757 A1 Feb. 4, 2016
Janssen US 5,442,414 Aug. 15, 1995

REJECTION2
Claims Rejected 35 U.S.C. § Reference(s)/Basis
15, 16, 18 102 Kurtz
1–5, 7–12, 14 103 Kojima, Kurtz, McDonald
6, 13 103 Kojima, Kurtz, McDonald, Janssen
17 103 Kurtz, Kojima
19 103 Kurtz, Janssen
20 103 Kurtz
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf. Ex parte Frye, 2010 WL 889747, *4 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)). After having considered
the evidence presented in this Appeal and each of Appellant’s contentions,
we are not persuaded that reversible error has been identified, and we affirm

2 A rejection of claims 1 and 7 under section 103 over Nall and another
reference has been withdrawn and not before us. Ans. 4, Reply Br. 1; see
also Non-Final Act. 6.
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the Examiner’s §§ 102 and 103 rejections for the reasons expressed in the
Final Office Action and the Answer. We add the following primarily for
emphasis.
Claim 153
Appellant argues that the Examiner reversibly erred because:
Kurtz does not disclose how a projection apparatus is
manufactured when there are different groups of DMDs or
different classes of light valves to be determined so as to be
assembled with an aperture stop of a corresponding size into the
projection apparatus, so that the resulting projection apparatus
can be insured to provide a high image contrast even if there are
production tolerances among the components used.

Appeal Br. 6.
Appellant’s argument is unpersuasive because it is incommensurate in
scope with the plain language of claim 15 which does not require, for
example, that “that the resulting projection apparatus can be insured to
provide a high image contrast even if there are production tolerances among
the components used.” See id.
Appellant’s argument is unpersuasive also because it merely disagrees
with the Examiner’s conclusion without addressing the Examiner’s fact
findings based on the cited portions of Kurtz including paragraphs 36–43,
45, 48–50, 52–58 and 60 as well as various figures. Compare id., with Final
Act. 3 (citing these and other portions of Kurtz in support of the rejection).
To prevail in an appeal to this Board, Appellant must adequately explain or
identify reversible error in the Examiner’s anticipation rejection. See 37

3 Appellant does not separately argue for claims 16 and 18. See Appeal Br.
5–8. These claims stand or fall with claim 15. See id.; see also 37 C.F.R.
§ 41.37(c)(1)(iv).
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C.F.R. § 41.37(c)(1)(iv); see also In re Jung, 637 F.3d 1356, 1365 (Fed. Cir.
2011). “[M]ere statements of disagreement . . . do not amount to a developed
argument.” SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312,
1320 (Fed. Cir. 2006). Appellant’s argument is unpersuasive also because it
is not supported by evidence. “Attorneys’ argument is no substitute for
evidence.” Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989).
Appellant also argues that the Examiner reversibly erred because
Kurtz does not disclose “the feature ‘a class of the light valve corresponding
to a brightness range having greater brightness corresponds to an aperture
stop having a smaller aperture’ as recited in claim 15.” Appeal Br. 6.
Appellant’s argument is unpersuasive again because it is incommensurate in
scope with the claim language. As the Examiner points out, claim 15 does
not recite such a limitation. We sustain the anticipation rejection of claim 15.
Claim 14
Appellant argues that the Examiner reversibly erred because none of
the prior art references
discloses how a projection apparatus is manufactured when
there are different groups of DMDs or different classes of light
valves to be determined so as to be assembled with an
aperture stop of a corresponding size into the projection
apparatus, so that the resulting projection apparatus can be
insured to provide a high image contrast even if there are
production tolerances among the components used.

Appeal Br. 9.

4 Appellant does not separately argue for claims 2, 4, 5, 7–9, 11, 12, and 14.
See Appeal Br. 8–12. These claims stand or fall with claim 1. See id.; see
also 37 C.F.R. § 41.37(c)(1)(iv).
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Appellant’s argument is unpersuasive. From the outset, unlike an
anticipation rejection which requires a prior art reference to disclose every
claim element within the four corners, an obviousness rejection requires an
inquiry into whether “each and every limitation of the claim is described or
suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art.” In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988). Appellant’s argument that the prior art references do
not “disclose” certain features (Appeal Br. 9) is therefore unpersuasive for
applying an incorrect obviousness analysis. Moreover, Appellant’s argument
is unpersuasive because it is incommensurate in scope with the plain
language of claim 1 which does not require, for example, that “that the
resulting projection apparatus can be insured to provide a high image
contrast even if there are production tolerances among the components
used.” See id.
Appellant’s argument is unpersuasive also because it merely disagrees
with the Examiner’s conclusion without addressing the Examiner’s fact
findings based on the cited portions of the prior art references such as
Kojima paragraphs 39–48 and figures 4 and 7, Kurtz paragraphs 37, 39, 43,
45, 48, 55, 58 as well as Figure 7c, and McDonald paragraphs 55 and 56.
Compare id., with Final Act. 5. As explained above, to prevail in an appeal
to this Board, Appellant must adequately explain or identify reversible error
in the Examiner’s obviousness rejection. See 37 C.F.R. § 41.37(c)(1)(iv); see
also In re Jung, 637 F.3d at 1365. “[M]ere statements of disagreement . . .
do not amount to a developed argument.” SmithKline Beecham Corp., 439
F.3d at 1320. Appellant’s argument is unpersuasive also because it is not
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supported by evidence. “Attorneys’ argument is no substitute for evidence.”
Johnston, 885 F.2d at 1581.
Appellant’s argument that the prior art references do not teach or
suggest “a relationship between the brightness/light collection efficiency of
the DMD and the size of the aperture/light blocking area of the aperture stop
when the device [is] in the OFF-state” (Appeal Br. 10) (emphases removed)
is likewise unpersuasive for at least some of the same reasons. Namely, the
argument is unpersuasive because the plain language of claim 1 does not
require such a limitation, because Appellant does not support the argument
with evidence, and because Appellant does not specifically address the cited
potions of the references on which the Examiner’s fact findings are based.
Compare id., with Final Act. 5.
Claims 3 & 10
Claim 3 depends from claim 1 and additionally recites: “wherein the
DMDs are classified by an optical jig, and the optical jig comprises a lens
with a constant aperture to project light from each of the DMDs onto an
image plane.” Claim 10 depends from claim 8 and recites an identical claim
limitation as claim 3.
Appellant argues that Kurtz does not teach or suggest this particular
claim limitation because Kurtz teaches “measuring the light collection
efficiency of a light having a constant intensity as it passes through a
plurality of DMDs with different aperture sizes.” Appeal Br. 11 (emphases
removed). Appellant, however, does not respond to the Examiner’s finding
that “Kurtz teaches that each DMD is measured for different aperture sizes”
and that a skilled artisan would have understood that “the same aperture
settings would be maintained for all testing and measuring of all DMDs for
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the purpose of comparing and sorting the DMDs by diffraction
characteristics.” Compare Reply Br. 1–16, with Ans. 12. The Examiner’s
finding is supported by evidence in the record and, therefore, the rejection of
claims 3 and 10 is sustained.
We further note that Appellant’s briefing – specifically with regard to
claims 3 and 10 – does not comply with 37 C.F.R. § 41.37(c)(1)(iv), which
requires that “any claim(s) argued separately or as a subgroup shall be
argued under a separate subheading that identifies the claims by number.”
Claim 17
With regard to claim 17, Appellant argues that “Kurtz teaches
differently from both the claimed feature ‘a class of the light valve
corresponding to a brightness range having greater brightness corresponds
to an aperture stop having a smaller aperture’ and the teachings of Kojima.”
Appeal Br. 12. This argument is unpersuasive because the Examiner
acknowledges that “Kurtz does not explicitly teach each class of the light
valve corresponds to a different brightness range, and a class of the light
valve corresponding to a brightness range having greater brightness
corresponds to an aperture stop having a smaller aperture” and relies on
Kojima for the teaching. Final Act. 9. Appellant’s argument does not address
Kojima—in fact, Appellant seems to acknowledge that Kojima teaches this
particular limitation (see Appeal Br. 12) and the Examiner’s findings are
supported by the record. The rejection of claim 17 is sustained.
Arguments Raised in Reply Brief
Appellant raises for the first time, in the Reply Brief, various
arguments with regard to claims 1, 5, 8, and 15. For example, Appellant
notes that “[t] he Examiner on page 5 of the Final Office Action dated on
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September 30, 2019 cited paragraphs [0055]-[0056] of McDonald to
disclose the feature ‘wherein each of micro-mirrors of the DMDs has two
different tilting axes’ as set forth in claim 1 of the application.” Reply Br.
12. Appellant argues that combining Kurtz, Kojima, and McDonald would
lead to an unpredictable result. Id. at 13.
An argument raised for the first time in a Reply Brief can be
considered waived if Appellants do not explain why it could not have been
raised previously. See Ex parte Nakashima, 93 USPQ2d 1834 (BPAI 2010)
(informative) (explaining that arguments and evidence not timely presented
in the principal Brief will not be considered when filed in a Reply Brief,
absent a showing of good cause explaining why the argument could not have
been presented in the Principal Brief); Ex parte Borden, 93 USPQ2d 1473,
1477 (BPAI 2010) (informative) (“Properly interpreted, the Rules do not
require the Board to take up a belated argument that has not been addressed
by the Examiner, absent a showing of good cause.”).
In this case, Appellant does not explain why these arguments could
not have been raised in the opening brief. A new argument advanced in such
a manner has not afforded the Examiner an opportunity to respond to the
new argument. We, therefore, base our decision on those arguments raised in
the opening brief.
Remaining Claims
Appellant does not appeal the remaining rejections. Namely, the
obviousness rejection of claims 6, 13, 19, and 20. Appeal Br. 4 (listing the
“Grounds of rejection to be viewed on appeal” which is limited to the
anticipation rejection and the obviousness rejections of claims 1–5, 7–12, 14,
and 17). These rejections are summarily affirmed.
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CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
15, 16, 18 102 Kurtz 15, 16, 18
1–5, 7–12,
14
103 Kojima, Kurtz,
McDonald
1–5, 7–12,
14

6, 13 103 Kojima, Kurtz,
McDonald, Janssen
6, 13
17 103 Kurtz, Kojima 17
19 103 Kurtz, Janssen 19
20 103 Kurtz 20
Overall
Outcome
1–20
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED