Ex Parte LI

Patent Trial and Appeal BoardNov 28, 2012

11274241 (P.T.A.B. Nov. 28, 2012)

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. 11/274,241 11/14/2005 Kenneth K. Li WAVIEN 295-I CONT (315-70 5495 38137 7590 11/28/2012 ABELMAN, FRAYNE & SCHWAB 666 THIRD AVENUE, 10TH FLOOR NEW YORK, NY 10017 EXAMINER DOAK, JENNIFER L ART UNIT PAPER NUMBER 2872 MAIL DATE DELIVERY MODE 11/28/2012 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 KENNETH K. LI ____________________ Appeal 2009-013211 Application 11/274,241 Technology Center 2800 ____________________ Before: MARC S. HOFF, CARLA M. KRIVAK, and ELENI MANTIS MERCADER, Administrative Patent Judges. KRIVAK, Administrative Patent Judge DECISION ON APPEAL Appeal 2009-013211 Application 11/274,241 2 Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellant’s claimed invention is directed to a system using substantially “ellipsoidal reflectors for collecting emitted radiation from a radiation source and focusing the collected radiation onto a target” (Spec. ¶ [0002]). 1. An optical device for illuminating a target with rays of electromagnetic radiation comprising: a first reflector having first optical axis and a first and a second focal points on said first optical axis, said rays of electromagnetic radiation being directed substantially proximate to a first focal point of said first reflector to reflect from said first reflector and substantially converge at said second focal point, wherein said rays of radiation originates from a single, non-cascaded source of electromagnetic radiation; and a second reflector having a second optical axis and a first and a second focal points on said second optical axis, said target being located substantially proximate to said first focal point of said second reflector to receive at least a portion of the rays of radiation that pass through said second focal point of said second reflector and are reflected by said second reflector to substantially converge at said first focal point of said second reflector, said second reflector being positioned and oriented with respect to said first reflector such that said second focal point of said first reflector and said second focal point of said second reflector are positioned substantially proximate and said first optical axis and said second optical axis are substantially collinear. Appeal 2009-013211 Application 11/274,241 3 REFERENCE and REJECTIONS The Examiner rejected claims 1-3, 5, 7-9, and 11-15 under 35 U.S.C §102(b) based upon the teachings of Li (U.S. Patent No. 5,707,131). The Examiner rejected claims 4, 6, and 10 under 35 U.S.C §103(a) based upon the teachings of Li. ANALYSIS Claims 1-3, 5, 7-9, and 11-15 Appellant contends the Examiner is incorrect in finding Li teaches all the elements of Appellant’s claimed invention. Appellant asserts Li does not disclose rays of radiation originating from a single, non-cascaded source of electromagnetic radiation; rather, Li discloses rays of radiation from at least two sources of radiation (App. Br. 11). Appellant also contends the Examiner is relying on hindsight and if Li had only a single, non-cascaded source, Li’s intended purpose would become inoperable (App. Br. 12). Lastly, Appellant asserts the term “single” means “one,” thus the Examiner is incorrect in finding Li teaches a single, cascaded source of radiation as the rays of radiation in Li originate from multiple cascaded sources (App. Br. 12-13). We do not agree with Appellant, and adopt the Examiner’s findings as our own. Particularly, we agree with the Examiner finding the system of Li is cascaded. However, as found by the Examiner, the term “single” used in Appellant’s claim, is not disputed as to its definition. That is, “single” used in Appellant’s claim refers to a source of radiation and not a system (Ans. 5- 6). The Examiner also finds the “claim uses ‘comprising’ language, and therefore is open-ended and does not exclude additional, unrecited elements, Appeal 2009-013211 Application 11/274,241 4 . . . Since there is at least one, single source (S1) in the reference, the limitation is met” (Ans. 6). Additionally, with respect to the terms “cascaded” and “non-cascaded,” Appellant has not provided any special definition of these terms. We note Appellant had ample opportunity during prosecution to clarify the claim. During ex parte prosecution, claims must be interpreted as broadly as their terms reasonably allow since Applicants have the power during the administrative process to amend the claims to avoid the prior art. In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989). It is the Appellants’ burden to precisely define the invention, not the USPTO’s. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). Appellants always have the opportunity to amend the claims during prosecution, and broad interpretation by the Examiner reduces the possibility that the claim, once issued, will be interpreted more broadly than is justified. In re Prater, 415 F.2d 1393, 1404- 05 (CCPA 1969). Lastly, the Examiner correctly finds the issues of inoperability and hindsight are not applicable to an anticipation reference and notes Appellant has not provided evidence that Li would be inoperable (Ans. 7-8). For these reasons, we are not persuaded of Examiner error and thus sustain the Examiner’s finding that Li anticipates claims 1-3, 5, and 7-9, and claims 11-15, which were not argued separately (App. Br. 10). Claims 4, 6, and 10 Appellant relies on the arguments presented for Li for the obviousness rejection of claims 4, 6, and 10. As found above, as Li anticipates Appellant’s claims, claims 4, 6, and 10 are also obvious over Li. Appeal 2009-013211 Application 11/274,241 5 DECISION The Examiner’s rejection of claims 1-15 is affirmed. 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 llw/tkl