Ex Parte Lin et al

Patent Trial and Appeal Board

Oct 26, 2012

11406030 (P.T.A.B. Oct. 26, 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.
11/406,030 04/18/2006 Pinyen Lin 20050890USNP-XER1199US01 4651
62095 7590 10/26/2012
FAY SHARPE / XEROX - ROCHESTER
1228 EUCLID AVENUE, 5TH FLOOR
THE HALLE BUILDING
CLEVELAND, OH 44115
EXAMINER
PINKNEY, DAWAYNE
ART UNIT PAPER NUMBER
2872
MAIL DATE DELIVERY MODE
10/26/2012 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 PINYEN LIN, LALIT KESHAV MESTHA,
PETER M. GULVIN, and YAO RONG WANG
____________

Appeal 2010-006258
Application 11/406,030
Technology Center 2800
____________

Before MAHSHID D. SAADAT, JASON V. MORGAN,
and BRYAN F. MOORE, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-006258
Application 11/406,030

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Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-3, 5, 6, 8-15, 22, and 24. Claims 4, 7, and 23 have been canceled
and claims 16-21 have been withdrawn from consideration. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Introduction
Appellants’ invention relates to a tunable Fabry-Perot filter and a
system utilizing the same (see Spec. ¶¶ [0016] – [0019]). Claim 1, which is
illustrative of the invention, reads as follows:
1. A tunable Fabry-Perot filter comprising:
a rigid substrate;
a resiliently flexible unitary support body supported by the
substrate, the unitary support body including a transparent support
panel and first and second spaced leg members integrally formed with
the support panel, the support panel being spaced from the substrate
by the first and second spaced leg members;
a first reflector supported on the substrate intermediate the first
and second leg members;
a second reflector supported on the transparent support panel
intermediate the first and second leg members, the first and second
reflectors defining a gap therebetween; and
a driving member which adjusts a size of the gap by
displacement of the support panel to modulate a wavelength of light
output by the filter.

The Examiner’s Rejection
Claims 1-3, 5, 6, 8-11, and 24 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Katagiri (US 4,859,060) and Piehl (US
2004/0217919 A1).
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Claims 12-15 and 22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Katagiri, Piehl, and Miles (US 6,674,562 B1).

Appellants’ Contentions
1. Appellants contend that the Examiner’s proposed combination
of Katagiri and Piehl does not identify how the structure 112 shown in
Figure 1A of Piehl could be formed unitarily, as required in claim 1 (App.
Br. 11-12). Appellants specifically argue that the combination is improper
because:
a. Katagiri includes no suggestion that the various components
of the interferometer shown in Figure 2 may be unitarily made using a
different material (App. Br. 12-13).
b. There is no suggestion to combine Katagiri with Piehl which
requires the flexure 110 as a flexible substrate (App. Br. 13-14).
c. The combination is contrary to the disclosure of Katagiri
which requires different materials of different properties used for the
components shown in Figure 2 (App. Br. 14-15, Reply Br. 5-6).
d. The stated motivation for the proposed combination based
on paragraph 4 of Piehl is unsound (App. Br. 15, Reply Br. 7-8).
e. There is no suggestion for the proposed combination (App.
Br. 15, Reply Br. 6-7).
f. One of ordinary skill in the art would not have found it
obvious to form Katagiri’s structure unitarily based on the references’
disclosure (App. Br. 16-17 (citing KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398)).
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g. There is no enabling disclosure in Piehl for forming the
structure shown in Figure 1A (App. Br. 17, Reply Br. 8-9).
h. The Examiner’s burden to establish a prima facie case of
obviousness has not been met (App. Br. 17, Reply Br. 9).
i. The Examiner’s reliance on Howard vs. Detroit Stove
Works, 150 U.S. 164 (1893) is inappropriate because Katagiri’s
structure requires multiple components of different materials which
cannot be integrally formed as one piece (App. Br. 17-18, Reply Br.
9).
2. Appellants contend that the teachings of Miles, which are
applied against claims 12-15, do not supply the deficiencies of the Katagiri-
Piehl combination (App. Br. 18).
3. With respect to claim 8, Appellants provide arguments similar
to those presented for claim 1 (App. Br. 18-19, Reply Br. 9-10).
4. With respect to claim 14, Appellants rely on the arguments
presented for claim 1 and further contend that no support was provided to
show that the selected filters in the modulator of Miles inherently shift into
the bandwidth outside the visible range to modulate a brightness of the
image pixels (App. Br. 19-20, Reply Br. 10).
5. Appellants further argue the patentability of claim 22 based on
similar arguments presented for claim 1 (App. Br. 20-22, Reply Br. 11).
6. Regarding claim 24, Appellants contend that the proposed
combination includes no suggestion of a support body including notched
regions (App. Br. 22-23). Appellants further assert that the notches shown
in Figure 7C of Piehl do not provide flexing loci, nor any motivation for
incorporating such into a unitary support body (App. Br. 23).
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Issue on Appeal
Has the Examiner erred in rejecting the claims as being obvious over
Katagiri and Piehl and over Katagiri, Piehl, and Miles because the
combination of references does not teach or suggest the disputed claim
features?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions. We adopt as our own the findings and reasons set forth by the
Examiner in the action from, which this appeal is taken and the reasons set
forth by the Examiner in the Examiner’s Answer in response to Appellants’
Appeal Brief (see Ans. 12-18). However, we highlight and address specific
findings and arguments for emphasis as follows.
With respect to the above contentions 1-3 and 5, the Examiner
responds that the disclosed material in Katagiri does not preclude unitarily
forming the support body (Ans. 13). The Examiner further asserts that the
disclosure of Piehl was relied upon to show that forming the support body
member of Katagiri in a unitary form is known (id.). We agree and find that
as pointed out by the Examiner (Ans. 14), using different materials in
Katagiri is not contrary to the proposed combination which does not require
bodily incorporation of the structure of Piehl. In other words, rather than
forming the multi-component of Katagiri as one piece, the teaching value of
Piehl is providing a support body which is unitarily formed using the
appropriate material for such structure, and not converting the support body
of Katagiri into a one-piece body. We also agree with the Examiner’s
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position (Ans. 14-15) that relying on Piehl would have been obvious to one
of ordinary skill in the art to form a unitary support body for the Fabry-Perot
filter of Katagiri because the references are not required to expressly teach
or suggest the claimed features. Indeed, the Supreme Court has indicated
that:
[It is error to] assum[e] that a person of ordinary skill
attempting to solve a problem will be led only to those elements
of prior art designed to solve the same problem. . . . Common
sense teaches . . . that familiar items may have obvious uses
beyond their primary purposes, and in many cases a person of
ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (citation omitted). Further,
as stated by the Examiner (Ans. 15-16), since the processing details for
unitarily forming the support body are not recited in claim 1, we disagree
with Appellants that Piehl lacks an enabling disclosure.
Regarding Appellants’ contention 4, we agree with the Examiner’s
findings (Ans. 11 (citing Miles, columns 7 and 8)) that Miles provides
modulation signals to the plurality of filters causing a shift to outside of the
visible bandwidth range. As shown in Figures 3F and 3G, Miles provides
for the shift in wavelength by modulating the filter response (see Miles, col.
7, l. 55 – col. 8, l. 25).
With respect to the above contention 6, we also agree with the
Examiner’s findings and conclusion that the notches shown in Figure 7C
positioned between the leg members and the end of the support panel
provide the recited flexing loci about which the support panel flexes (see
Ans. 8-10). Contrary to Appellants’ position (App. Br. 23) that Piehl’s
notches do not provide flexing loci because the notches are filled with a
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dielectric material, the notches nonetheless are positioned where the support
body flexes.

CONCLUSION
On the record before us, we conclude that, because the references
teach or suggest all the disputed claim limitations, the Examiner did not err
in rejecting the claims as being obvious over Katagiri and Piehl and over
Katagiri, Piehl, and Miles.

DECISION
The decision of the Examiner rejecting claims 1-3, 5, 6, 8-15, 22, and
24 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

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