Ex Parte Okabe et al

Patent Trial and Appeal Board

Mar 30, 2016

12965165 (P.T.A.B. Mar. 30, 2016)

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.
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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
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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
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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)).
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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
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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
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