Ex Parte Okabe et alDownload PDFPatent Trial and Appeal BoardMar 30, 201612965165 (P.T.A.B. Mar. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/965,165 12/10/2010 HIROSHI OKABE 22428 7590 04/01/2016 Foley & Lardner LLP 3000 K STREET N.W. SUITE 600 WASHINGTON, DC 20007-5109 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 044499-0422 6253 EXAMINER PAJOOHI GOMEZ, TARAS ART UNIT PAPER NUMBER 2886 NOTIFICATION DATE DELIVERY MODE 04/01/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): ipdocketing@foley.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HIROSHI OKABE, KENICHI MATOBA, and KAZUHIKO OKA Appeal2014-003989 Application 12/965, 165 Technology Center 2800 Before JOSEPH L. DIXON, LINZY T. McCARTNEY, and MELISSA A. RAAP ALA, Administrative Patent Judges. McCARTNEY, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1-3, 7, 8, 10-14, 16, and 19-24. 1 We heard oral argument from Appellants on March 23, 2016. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Although the Final Office Action indicates the Examiner rejected claims 1- 24, the Examiner failed to provide a rejection for claims 4--6, 9, 15, 17, and 18 in the body of the Action. Final Act. 1-12. Appellants raise this issue in their Appeal Brief, but the Examiner does not respond or provide a rejection for these claims in the Answer. See App. Br. 14; Ans. 2-7. Thus, no rejection is before us for these claims. We decline to take a position on whether the claims are allowable, as presumed by Appellants. Appeal2014-003989 Application 12/965, 165 STATEMENT OF THE CASE The present application "relates to a technique for stabilizing measurement of spectropolarization characteristics of an object to be measured by use of a channeled spectrum." Spec. i-f 1. Claim 1 illustrates the claimed subject matter: 1. A method for spectroscopic polarimetry, comprising the steps of: preparing an object to be measured; preparing a polarimetric spectroscope which includes a projection optical system, comprising a light source, a polarizer and a plurality of non-active retarders, where said plurality of non-active retarders includes a non- active retarder mechanically fixed behind the polarizer with respect to the traveling direction of light and having a principal axis oriented differently from the transmission axis of the polarizer, and another non-active retarder mechanically fixed further behind the non-active retarder and having a principal axis oriented differently from the principal axis of the non-active retarder, and the light source, the polarizer and the plurality of non-active retarders are arranged such that light emitted from the light source is irradiated on the object to be measured after passing through the polarizer and the plurality of non-active retarders in this order, an analyzer for allowing light to transmit therethrough, the light having been emitted from the projection optical system and reflected on or transmitted through the object to be measured, and a device for obtaining the spectral intensity of the light having transmitted through the analyzer; and obtaining the spectral intensity of the object to be measured by use of the polarimetric spectroscope. 2 Appeal2014-003989 Application 12/965, 165 REJECTIONS Claims 1-3, 7, 8, 10-14, 16, 19-21, and 23 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Drevillon (US 2004/0130717 Al; July 8, 2004) and Shribak (US 7,202,950 B2; April 10, 2007). Claims 22 and 24 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Drevillon, Shribak, and Wang et al., Optimization of Azimuth Angle Settings in Polarizer-Compensator-Sample-Analyzer Off-Null Ellipsometery, 41 APPLIED OPTICS 38 (2003). ANALYSIS The Examiner found Drevillon discloses a polarimetric spectroscope that includes the recited arrangement of retarders but does not explicitly disclose that the retarders are non-active or mechanically fixed. See Final Act. 2--4 (citing Drevillon Figs. 1, 2; i-fi-158-59); Ans. 3--4. However, the Examiner found Drevillon discloses a "polarimetric system ... [that] is not limited to the use of active retarders such as ... nematic liquid crystals or ferroelectric liquid crystals" and Shribak discloses using "mechanically engaged" non-active retarders depending on the relevant design considerations. Ans. 3 (citing Drevillon i159; Shribak col. 3:36--49); see also Final Act. 3 (same). The Examiner took official notice "of the use of common mechanical fixtures to support optical components, such as non- active retarders on an optical work bench" and separately concluded it would have been obvious to mechanically fix non-active retarders because "such components implicitly require some sort of support holder for alignment and placement in order to function." Final Act. 4; see also Ans. 3--4. Based on these findings and conclusions, the Examiner concluded it would have been 3 Appeal2014-003989 Application 12/965, 165 obvious to combine the teachings of Drevillon and Shribak in the manner recited in claim 1. See Final Act. 2--4; Ans. 3--4. Appellants contend the Examiner's combination of Drevillon and Shribak fails to teach or suggest a polarimetric spectroscope that includes non-active retarders mechanically fixed in the manner recited in claim 1. See App. Br. 7-13; Reply Br. 2--4. Citing a Rule 1.132 Declaration submitted by co-inventor Dr. Kazuhiko Oka, Appellants argue prior art spectroscopic polarimetry systems "require mechanically- or actively- controllable polarization analyzing optics because known measurement techniques could not determine multiple unknown parameters from a single spectrum." App. Br. 8 (emphasis added) (citing Declaration Under 37 C.F.R. § 1.132 of Dr. Kazuhiko Oka ("Deel.") i-f 10). In particular, Appellants assert prior art systems such as those disclosed by Drevillon and Shribak must take repeated spectrum measurements, mechanically or electrically adjusting the polarization element settings for each measurement. See id. at 10 (citing Deel. i-f 24); see also Deel. i-f 32; Reply Br. 3. Appellants contend their invention obviates the need for rotating mechanically or electrically adjustable elements such as rotating retarders or electro-optic modulators. See, e.g., App. Br. 11 (citing Spec. i-fi-115, 62; Deel. i-f 28). Therefore, according to Appellants, regardless of whether "mechanically fixing optical components is known in some contexts, it would nevertheless not have been obvious in the context of [the cited art] ... to have mechanically fixed non- active retarders to have arrived at" the invention recited in claim 1. Id. at 13. We disagree. The Examiner effectively found that the cited art teaches or suggests a polarimetric spectroscope that includes non-active retarders that are mechanically fixed in place in the claimed arrangement at 4 Appeal2014-003989 Application 12/965, 165 least while in use. See Final Act. 2--4; Ans. 3--4. The Examiner concluded this suggests non-active retarders mechanically fixed in the fashion recited in claim 1. See Final Act. 2--4; Ans. 3--4. Put differently, the Examiner implicitly concluded that, given its broadest reasonable interpretation in light of Appellants' specification, the terms "non-active retarder mechanically fixed" encompass non-active retarders that are mechanically fixed at least during use. Appellants' arguments assume "non-active retarder mechanically fixed" means a "non-active retarder permanently mechanically fixed," that is, a non-active retarder that never moves relative to the polarimetric spectroscope's other elements. See App. Br. 8-13; Reply Br. 3. But claim 1 does not recite such a limitation. And even if Appellants' specification discloses that their invention renders mechanically moveable elements such as rotating retarders unnecessary, see App. Br. 11 (citing Spec. i-fi-f 15, 62),2 we would disagree this disclosure requires construing claim 1 to exclude all moveable retarders. "Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim." SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Accordingly, these arguments have not persuaded us the Examiner erred. 2 Appellants cite a paragraph from the "BACKGROUND OF THE INVENTION" section that arguably states that prior art methods and systems of spectroscopic polarimetry render mechanically moveable elements such as rotating retarders unnecessary. See Spec. i-f 15 ("According to the foregoing channeled spectroscopic polarimetry, advantages can be obtained .... "(emphasis added)). 5 Appeal2014-003989 Application 12/965, 165 Appellants also contend Drevillon does not suggest using non-active retarders in place of the disclosed ferroelectric and nematic liquid crystals but instead discloses using both crystal types. See Reply Br. 2 (citing Drevillon i-f 59); see also Ans. 3. But the cited portions of Drevillon disclose "[b ]oth embodiments described up to now are provided for illustrative purposes only and should not be used to unduly limit the scope of the present invention." Drevillon i-f 59 (emphasis added). Although the next sentence provides an example of using a "variety of devices combining ferroelectric and nematic liquid crystals," id. i-f 59, this statement does not require that Drevillon's device use non-active retarders, particularly in light of the expansive disclaimer preceding it. As found by the Examiner, Shribak teaches using non-active retarders and explains that "[t]he choice of one optical element over another will be made according to the requirements of the application at hand for measurement speed, size, accuracy cost, complexity and other design criteria that may be relevant." Shribak 3:36- 49; Ans. 3 (citing Shribak 3:36-45). This teaching would have provided one of skill in the art ample reason to modify Drevillon's invention to include non-active retarders. Finally, Appellants assert "that in [Shribak] the retardation of the waveplates [i.e., the retarders] is fixed (not electro-optically changeable), but the waveplates are mechanically moved (exchanged or rotated)." Reply Br. 3 (emphasis added). But as explained above, claim 1 does not preclude retarders that can be mechanically moved; claim 1 encompasses non-active retarders that are mechanically fixed at least during use. For the above reasons, we sustain the Examiner's rejection of claim 1. Because Appellants have not presented separate, persuasive patentability 6 Appeal2014-003989 Application 12/965, 165 arguments for claims 2, 3, 7, 8, 1 0-14, 16, and 19-24, we also sustain the Examiner's rejections of these claims. DECISION For the above reasons, we affirm the rejections of claims 1-3, 7, 8, 10-14, 16, and 19-24. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation