Ex Parte Kihara et al

Patent Trial and Appeal BoardFeb 19, 2014

11485312 (P.T.A.B. Feb. 19, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte NOBUHIRO KIHARA,1 Akira Shirakura, and Shigeyuki Baba ________________ Appeal 2011-0130352 Application 11/485,312 Technology Center 2800 ________________ Before BRADLEY R. GARRIS, TERRY J. OWENS, and MARK NAGUMO, Administrative Patent Judges. NAGUMO, Administrative Patent Judge. DECISION ON APPEAL Nobuhiro Kihara, Akira Shirakura, and Shigeyuki Baba (“Sony”) timely appeal under 35 U.S.C. § 134(a) from the Final Rejection3 of claims 1-3, 6, and 7. We have jurisdiction. 35 U.S.C. § 6. We affirm. 1 The real party in interest is listed as Sony Corporation. (Appeal Brief, filed 14 March 2011 (“Br.”), 2.) 2 A request for hearing was waived on 1 January 2014. 3 Office action mailed 18 August 2010 (“Final Rejection”; cited as “FR”). App App A. holo direc Figu {F focu Blur focu elem 4 Ap meth 20 Ju is cit 5 Th prese docu 6 Th dime Kiha proc eal 2011-0 lication 11 Introduc The subj graphic ste tion. The re 6, the m ig. 6 (low sed (conv in the dep sed (i.e., n ent 50.6 plication od, 13 Jul ly 2005. ed as “Spe roughout t nted in bo ment. e generati nsional im ra, cited in ess is not r 13035 /485,312 tion4 ect matter reograms 312 Speci ost releva er half) sho erging and th-wise di on-paralle 11/485,312 y 2006, cla The specif c.” his Opinio ld font, re on of holo ages of an full, infra equired to O on appeal that is said fication ill nt lower p ws a prio diverging medium 5 rection of l) beams im , Hologra ims the be ication is r n, for clar gardless o graphic ste object, is at 5 n.9. understan 2 PINION relates to to reduce ustrates th art of whic r art object ) rays stri 05 on the r the image pinging o phic stere nefit of an eferred to ity, labels f their pres reograms, described A comple d the reso a device f blur in th e origin o h is repro projectio king the ho ight.} is said to a n hologra ogram cre applicati as the “31 to elemen entation in which pro at length te understa lution of th or creating e depth-w f the probl duced belo n portion. lographic rise from m recordin ation devi on filed in 2 Specific ts in figure the origi vide three in prior art nding of t is appeal. ise em in w. Note the recording the g ce and its Japan on ation,” an s are nal - reference hat d App App the 3 (“pa th optic relat lens parti imag med light to th {F eal 2011-0 lication 11 A solutio 12 Specifi {Fig. 4 (lo rallax dire e parallel Slit 14, a al system ive to holo 142 that is cular part es from w ium 50 par gray) port In the cl e face of s ig. 3 show 13035 /485,312 n to this p cation, the wer half; s ction”) vi rays striki t the “con (comprisin graphic re matched of spatial l hich the h allel to on ions of the aimed emb lit 14 as sh s a plano- roblem is most rele hading (ye ew of the p ng the hol jugate pos g lenses 1 cording m to lenses 1 ight modu ologram w e another, diagram. odiment, own in Fi convex len 3 illustrated vant lower llow, ligh rojection ographic r ition” of th 2, 15, and edium 50, 2 and 15 s lator 6, wh ill be mad as shown plano-conv gure 3, rep s 141 atta in Figure half of w t gray) add portion of ecording m e beam-c recording is fitted w uch that ra ich emits e, will stri by the hig ex lens 14 roduced b ched to an 4 of hich is sho ed) show the invent edium 50 ondensing medium 5 ith cylind ys emanat rays from ke the reco hlighted (y 1, which elow, d covering wn below s a side ion. Note , right.} projection 0), rical ing from a a set of rding ellow, is attached slit 14.} : Appeal 2011-013035 Application 11/485,312 4 takes the place of lens 142 set in the opening of slit 14. The plano-convex lens is said to perform the same paralleling function as lens 142. Because the plano-convex lens 141 is in the conjugate position relative to recording medium 50, it is said to perform the same paralleling function as the prior art7 lens assembly in which a paralleling lens is placed immediately adjacent to recording medium 50, as shown in Fig. 7, shown below. (Spec. 4, 1st full para.) {Fig. 7 shows “paralleling” lens 28 next to recording medium 50.} The 312 Specification explains that the inventive arrangement avoids the possibility of damaging the recording medium and the lens. (Spec. 5, 1st full para.) Claim 1 is representative and reads: A holographic stereogram creating device for creating a holographic stereogram by sequentially recording interference fringes between reference light and object light, which is obtained by sequentially spatial-modulating a plurality of images picked up from different observing points, on one hologram recording material as strip or dot elemental holograms, the holographic stereogram creating device comprising: 7 The 312 Specification cites Fig. 9 of U.S. Patent 6,330,088 B1 (2001), issued to Klug et al., as an example of this arrangement. (Spec. 4, 1st full para.) Appeal 2011-013035 Application 11/485,312 5 a slit arranged at a conjugate position of the hologram recording material of an object light projection optical system for irradiating the hologram recording material with the spatially modulated object light for eliminating unnecessary light; and a lens to parallel the spatially modulated object light onto the hologram recording material, the lens having a flat side, the lens attached to a face of the slit along the flat side, and the lens covering the slit. (Claims App., Br. 19; some indentation, paragraphing, and emphasis added.) The Examiner maintains the following ground of rejection:8 Claims 1-3, 6, and 7 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Kihara9 and Goodman.10 B. Discussion Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. Sony urges that the Examiner erred by failing to identify a reason suggested by the prior art to replace the biconvex lens illustrated by Kihara in Fig. 11, shown on the following page, with a plano-convex lens attached 8 Examiner’s Answer mailed 9 June 2011 (“Ans.”). 9 Nobuhiro Kihara, Holographic stereogram exposure apparatus, method thereof, and holographic stereogram generation system, U.S. Patent Application Publication 2002/0018255 Al (2002) (now U.S. Patent 6,747,770 (2004)). This appears to be earlier work by the present lead inventor. 10 Douglas S. Goodman et al., Modular optical print head assembly, U.S. Patent 6,011,577 (2000). Appeal 2011-013035 Application 11/485,312 6 to and covering the slit as required by claim 1. (Br. 13, 15.) More particularly, Sony argues that [t]he examiner-alleged modification would not change the operational characteristics of the device described in Kihara. That is, by replacing the cylindrical lens 80 with a lens having a flat side, and then moving the lens having a flat side from the slit to a front surface of the slit, no further optical improvements would be provided in Kihara. (Id. at 13, 3d para.) {Kihara Fig. 11 is shown below} {Kihara Fig. 11 shows cylindrical lens 80 fit into slit 72 to cause parallel rays (yellow, light grey) to strike hologram recording medium 42.} Thus, in Sony’s view, “there is no recognized reason to perform the examiner-alleged modification in Kihara.” (Id.) Sony also argues that Goodman describes covering a [round] hole 161, not a slit, with plano-convex lens (id. at 14, 1st full para.); that Goodman uses lens 124 to converge collimated light, which is opposite to the effect of “parallel[ing] spatially modulated object light onto a hologram Appeal 2011-013035 Application 11/485,312 7 recording material” sought by Kihara (id. at sentence bridging 14-15); and that Goodman does not use a cylindrical lens, as required by Kihara (id. at 15, 1st full para.). As the Examiner explains (FR 6-7; Adv.11 2; Ans. 8-12), Sony appears to have misapprehended the rejection. The Examiner finds that the holographic stereogram creating device described by Kihara differs from the claimed device in that Kihara uses a biconvex lens, not a plano-convex lens, and that the biconvex lens is set in the aperture of the slit, not attached to the face of the slit. The Examiner takes Official Notice that “plano-convex lenses and biconvex lenses are functionally equivalent” (FR 4, 3d full para.)—a statement that Sony (correctly) “understands as being capable of having substantially similar optical qualities.” (Br. 13, 1st full para.) Thus, we understand the Examiner to hold that it would have been obvious to substitute a plano-convex lens for biconvex lens 80 illustrated by Kihara in Figure 11, reproduced supra. We do not understand Sony to challenge this Official Notice. Indeed, Sony appears to urge that such substitutions were well understood in the art, but that the particular substitution suggested by the Examiner would not have been obvious because it would not have resulted in an improvement in optical performance. It is well established, however, that a motivation for substituting one element for another does not require that the substitution result in an improvement. Rather, all that is required is a reasonable expectation that the aims of the prior art device would have been obtained once the substitution was made. Thus, Sony’s 11 Advisory Action mailed 17 November 2010 (“Adv.”). Appeal 2011-013035 Application 11/485,312 8 argument supports the obviousness of the proposed substitution of a plano- convex lens for the biconvex lens. Sony’s criticisms of the Examiner’s findings regarding Goodman are misplaced, as Goodman stands as evidence that it would have been obvious to attach the planar side of a plano-convex lens to an aperture to obtain the benefits of mechanical stability in the final product while retaining the ability to adjust the position of the lens during assembly. The Examiner does not suggest that a person having ordinary skill in the art would have selected a lens to focus light as taught by Goodman for use as a substitute for lens 80 of Kihara.12 Rather, the Examiner relies on Goodman as evidence supporting the Official Notice that the attachment of the planar face of a plano-convex lens to a flat sheet bearing an opening was a well-established procedure in the relevant arts. (Adv. 2, ll. 10-15; Ans. 10, ll. 2-7.) We conclude that Sony has not demonstrated harmful error in the appealed rejection. C. Order We affirm the rejection of claims 1-3, 6, and 7. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 12 The routineer would have substituted a cylindrical plano-convex lens for the cylindrical biconvex lens 80 indicated by Kihara in Fig. 11. Appeal 2011-013035 Application 11/485,312 9 cdc