Ex Parte Nagafuji et alDownload PDFPatent Trial and Appeal BoardDec 31, 201412881769 (P.T.A.B. Dec. 31, 2014) Copy Citation 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. Appeal 2013-002634 Application 12/881,769 2 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 Appeal 2013-002634 Application 12/881,769 3 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 Appeal 2013-002634 Application 12/881,769 4 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 Appeal 2013-002634 Application 12/881,769 5 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 Appeal 2013-002634 Application 12/881,769 6 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 Appeal 2013-002634 Application 12/881,769 7 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 Copy with citationCopy as parenthetical citation