Ex Parte Nagafuji et al

Patent Trial and Appeal Board

Dec 31, 2014

12881769 (P.T.A.B. Dec. 31, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

Ex parte AKIKO NAGAFUJI, YUSUKE SHIMIZU,
and NORIYUKI JUNI
______________

Appeal 2013-002634
Application 12/881,769
Technology Center 2800
_______________

Before CHUNG K. PAK, CHARLES F. WARREN, and
ROMULO H. DELMENDO, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board under 35 U.S.C. § 134(a) from the
decision of the Primary Examiner finally rejecting claims 1 and 2 under
35 U.S.C. § 103(a): claim 1 over Schmid (DE 10 2006 041 085 A1),1 and
claim 2 over Schmid and Graham (US 5,914,709). App. Br. 4;2 Ans. 5, 7.
We have jurisdiction. 35 U.S.C. § 6(b).
We affirm the decision of the Primary Examiner.
Claim 1, as illustrated by Specification Figures 1 and 3, illustrates
Appellants’ invention of an optical waveguide with a light-emitting element
which can be used in an optical touch panel (claim 2), and is representative
of the claims on appeal:

1 We refer to a translation of Schmid which is of record.
2 We consider the Corrected Appeal Brief filed July 23, 2012.
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Application 12/881,769
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1. An optical waveguide (10) with a light-emitting element (11)
comprising:
a light-emitting element (11); and
an optical waveguide (10) including a core (13) for guiding light
emitted from the light-emitting element (11) to generate a plurality of light
beams,
wherein the core (13) comprises: a main path (14); and a plurality of
branched paths (15) branched at a plurality of branched points (16) from the
main path (14),
the main path (14) has two sides (14a, 14b) faced to each other, in
which one side (14a) has a plurality of branched points (16) and the other
side (14b) does not have any branched points,
the plurality of branched points (16) are provides on a straight line
substantially parallel to a light guiding direction (17) of the main path (14),
the width of the main path (14) becomes narrower as the main path
(14) moves away from the light-emitting element (11),
an angle θ formed by the other side (14b) without a branched point
and the light guiding direction (17) of the main path (14) is 0.3 to 1.7º.
App. Br. 11 (App’x A). Spec. 6:6–27, 10:11–11:10.
We decide this appeal based on claims 1 and 2.
OPINION
We are of the opinion Appellants’ arguments do not establish that the
evidence in the totality of the record weighs in favor of the nonobviousness
of the optical waveguide with a light-emitting element encompassed by
claim 1 and an optical touch screen equipped such an optical waveguide
encompassed by claim 2. In this respect, we are in agreement with the
Examiner’s analysis of the evidence in Schmid and Graham, findings of fact
and conclusions of law, and response to Appellants’ arguments stated in the
Answer, to which we add the following for emphasis with respect to
Appellants’ arguments. Ans. 5–10; App. Br. 4–9; Reply Br. 1–4.
We cannot agree with Appellants’ position that the Examiner erred in
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determining that Schmid would have suggested to one of ordinary skill in
the art an optical waveguide with a light-emitting element which falls within
claim 1. We initially are of the view that Appellants’ contention that
Schmid is not analogous prior art and thus is inapplicable to the optical
waveguide with a light-emitting element as claimed is without merit. App.
Br. 4–7 (citing In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011)); Reply Br.
1-2. We find that Appellants state clearly and unequivocally that “[t]he
present invention relates to an optical waveguide with a light-emitting
element having a novel branched structure for generating a plurality of light
beams from one light-emitting element,” and Schmid describes clearly and
analogously to one of ordinary skill in the art an optical waveguide with a
light-emitting element having a branched structure for generating a plurality
of light beams from one light-emitting element. Spec. 1:2–8. Ans. 9. See
Klein, 647 F.3d at 1348.
Indeed, the Examiner finds that Schmid discloses an embodiment,
illustrated in Schmid’s Figures 4 and 5, which “shows a tapering quality of
the waveguide 58 but does not discuss the exact angle in terms of degree(s),”
and contends that one of ordinary skill in the art . . . would have recognized
that using the same tapering angle (0.3 to 1.7 degrees as claimed) would
have been merely an obvious design choice.” Ans. 6 (emphasis deleted).
The Examiner argues that Appellants have not disclosed that the claimed
angle range of 0.3 to 1.7º “provides an advantage, is used for a particular
purpose, or solves a stated problem,” and that one of ordinary skill in the art
“would have expected [Schmid’s optical waveguide] to perform equally well
with such a range” because Schmid’s Figures 4 and 5 would have disclosed
to one of ordinary skill in the art a tapered waveguide that is at least close to,
if not in, the claimed range. Ans. 6, 9. Appellants submit that a taper is
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illustrated in Schmid’s Figure 4 in an “ambiguous manner” such that it is
impossible to recognize whether Schmid’s Figure 4 discloses a taper having
an angle within the claimed range, and no other description is provided by
Schmid. App. Br. 7–8. Appellants point to disclosure in the Specification
which describes that “[i]t is difficult to achieve the uniformity in intensity of
light beams emitted from respective branched paths 15” when angle θ is less
than 0.3º, and if angle θ is greater than 1.7º the width of the main path 14
becomes closer to the wide width of main path 44 of an optical waveguide
“having a conventional structure, which makes it impossible to obtain
sufficient advantages in the present invention.” Reply Br. 3 (quoting Spec.
11:11–21 (referencing Spec. Figs. 1, 8)).
On this record, we agree with the Examiner that one of ordinary skill
in the art would have modified Schmid’s optical waveguide with a light-
emitting element having a branched structure for generating a plurality of
light beams from one light-emitting element illustrated in Schmid’s Figures
4 and 5 by routine experimentation motivated by the natural desire to
reasonably select workable or optimum dimensions for Schmid’s branched
structure which would increase its effectiveness. Cf., e.g., In re Peterson,
315 F.3d 1325, 1330, (Fed. Cir. 2003) (“The normal desire of scientists or
artisans to improve upon what is already generally known provides the
motivation to determine where in a disclosed set of percentage ranges is the
optimum combination of percentages.”); In re Aller, 220 F.2d 454, 456-58
(CCPA 1955) (“[W]here the general conditions of a claim are disclosed in
the prior art, it is not inventive to discover the optimum or workable ranges
by routine experimentation.”); see, e.g., KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 417-18 (2007) (“[A]nalysis [of whether the subject matter of a
claim would have been obvious] need not seek out precise teachings directed
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to the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.”); KSR, 550 U.S. at 421 (“A person of ordinary skill
is also a person of ordinary creativity, not an automaton.”); Transocean
Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc.,
617 F.3d 1296, 1304 (Fed. Cir. 2010); In re Sovish, 769 F.2d 738, 742-43
(Fed. Cir. 1985) (skill is presumed on the part of one of ordinary skill in the
art).
Indeed, Appellants’ contentions with respect to the criticality of the
angle θ range specified in claim 1 as compared to a conventional waveguide
illustrated in Specification Figure 8 as disclosed in the Specification, does
not compare the claimed optical waveguide with a light-emitting element
having a branched structure for generating a plurality of light beams from
one light-emitting element with Schmid’s optical waveguide with a
light-emitting element having the same or similar branched structure for
generating a plurality of light beams from one light-emitting element, and
thus does not patentably distinguish the over Schmid. See, e.g., In re Hoch,
428 F.2d 1341, 1343-44 (CCPA 1970) (evidence must provide an actual
comparison of the properties of the claimed invention with the disclosure of
the reference).
Accordingly, we affirm the ground of rejection of claim 1 over
Schmid under 35 U.S.C. § 103(a).
Turning now to the ground of rejection of claim 2, we cannot agree
with Appellants’ position that the Examiner erred in determining that the
combination of Schmid and Graham would have suggested to one of
ordinary skill in the art that Graham’s optical touch panel can be modified
by using Schmid’s optical waveguide with a light-emitting element having a
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branched structure for generating a plurality of light beams from one light-
emitting element in place of Graham’s optical waveguide optical waveguide
with a light-emitting element having a branched structure in the reasonable
expectation of improving the functionality of the optical touch panel. Ans.
7–8; App, Br. 8–9; Reply Br. 4. We are unconvinced by Appellants’
contentions that Schmid does not address a problem that is reasonably
pertinent to an optical touch panel because Graham discloses that optical
waveguide optical waveguide with a light-emitting element having a
branched structure are known to be used in optical touch panels, and indeed,
Appellants acknowledge that such an arrangement of an optical touch panel
equipped with an optical waveguide optical waveguide with a light-emitting
element having a branched structure is conventional in the prior art. Spec.
1:10–17. Thus, on this record, an contrary to Appellants’ contentions, the
Examiner has provided the rational establishing that one of ordinary skill in
the art would have combined Schmid and Graham leading to a touch screen
panel falling within claim 2. See, e.g., KSR, 550 U.S. at 415–16 (“The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.”); In re Kahn,
441 F.3d 977, 985–88 (Fed. Cir. 2006); Sovish, 769 F.2d at 743; In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is . . .
what the combined teachings of the references would have suggested to
those of ordinary skill in the art.”); see also, e.g., Pfizer, Inc. v. Apotex, Inc.,
480 F.3d 1348, 1364 (Fed. Cir. 2007) (“the expectation of success need only
be reasonable, not absolute”); In re O’Farrell, 853 F.2d 894, 903–04 (Fed.
Cir. 1988) (“For obviousness under § 103, all that is required is a reasonable
expectation of success.” (citations omitted)).
Accordingly, we affirm the ground of rejection of claim 2 over
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Schmid and Graham under 35 U.S.C. § 103(a).
The Primary Examiner’s decision 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